PTAB Proceedings

Proceedings before the Patent Trial and Appeal Board have become a popular strategy to combat assertions of patent infringement. Plaintiffs who assert their rights should be prepared to defend their patent in a PTAB proceeding, while defendants must consider using Inter Partes Reviews as part of any litigation strategy. In some cases, filing can be the difference between defeating infringement allegations and suffering a business-crippling loss. In view of recent PTAB decisions, changes in regulations, and general trends, however, the decision of whether and when to file an IPR has become increasingly more complicated.

Harness IP delivers the experience, insight, and resourcefulness needed to gain the edge when guiding patent owners and challengers through Inter Partes and Post Grant Reviews. We work with our clients to balance both the risks and rewards of effectively leveraging IPR and PGR proceedings. We have found that, when employed properly, such proceedings can allow for a more cost-effective and expeditious way to eliminate weak patents and obtain freedom to operate in a particular field.

Success at the PTAB begins with close collaboration and consideration of every angle:

• Define objectives and set clear litigation and PTAB positions
• Identify the weaknesses and oversights of opponents
• Avoid legal or technical pitfalls that might create opportunities for opponents
• Use PTAB proceedings as part of a patent clearance strategy to eliminate competitor patents
• Use PTAB proceedings — with or without the threat of co-pending litigation — to open new markets and generate market share
• Explore alternative invalidity defenses at trial

Pioneers in PTAB Proceedings

Harness IP attorneys are pioneers and experts in Patent Trial and Appeal Board proceedings. Our attorneys were lead counsel for the Patent Owner in two of the first three Final Written Decisions where the Patent Trial and Appeal Board upheld one or more claims. Since then, we have handled dozens of IPRs for our clients as dedicated PTAB litigators and as consultants for other firms who are managing concurrent litigation.

We draw from our expertise as a Top Ten patent firm to understand proper claim construction, and we leverage our experience in patent litigation — including having handled more than 200 patent infringement lawsuits and 85 PTAB matters since 2012 — to know everything about attacking and defending claims in the courtroom. Where general practice litigators stumble over complex scientific details, we always appoint registered patent attorneys with experience in practically every scientific and technological discipline to represent our clients. Our collective experience allows us to build persuasive arguments based on the technical details of the case and the applicable laws surrounding it.

Clients receive the additional support of nearly 100 registered patent attorneys who prepare more than 3,500 patent applications each year. Few law firms can offer a similar depth of relevant experience in contested matters, patent claim construction, and USPTO procedures, and fewer still can offer the depth of knowledge we possess across numerous industries, competitive markets, and technology areas.

Strategies for PTAB Success

When we pursue a challenge, we offer far more than just an immediate and aggressive attempt at unpatentability. We establish our clients’ footing in multiple, on-the-record positions that draw attention to important distinctions or contradictions that highlight our position. We leverage PTAB proceedings in support of pending litigation stays, as well as gain advantages through negotiation and potential settlement.

Devising a clear course of action at the onset of a matter allows us to continuously evaluate both litigation and PTAB positions. Because we understand all aspects of the strategic interplay of PTAB proceedings and federal court litigation, as well as Patent Office procedure, we are able to identify and capitalize on the weakness and oversights of our opponents who may be less well versed in these intricate areas of the law. We are particularly adept at steering clear of pitfalls that might create opportunity for our opponent.

We also regularly maintain our successes after appeal to the Federal Circuit. As experts in both federal court litigation and PTAB proceedings, we offer a comprehensive skill set with which we develop cohesive strategies with big picture factors in mind. Many of our clients come to us to handle or consult on their PTAB matters because of our demonstrated expertise in this practice area.