Following the enactment of the America Invents Act (AIA), an increasing number of companies are turning to patent validity challenges before the Patent Trials and Appeals Board (PTAB) as an alternative to more traditional validity challenges before the district courts. Designed as a lower cost and timelier alternative to district court litigation, Inter Partes Review (IPRs), Covered Business Method Review (CBMs), and Post-Grant Review (PGRs) proceedings before the PTAB have emerged as the go-to strategy for many companies faced with patent assertion threats.

Data provided by the PTAB shows that more than 65% of instituted claims that reach a final decision are ultimately cancelled. With such high invalidity rates, it is no surprise that over 1,600 new patent validity challenges have been filed in each of the past three years. Given this new reality, understanding how the use of patent validity challenges before the PTAB can advance your strategic goals has become an absolute necessity.

Polsinelli has built one of the nation’s deepest PTAB practices, serving clients in a wide range of technical areas. Unlike many firms, Polsinelli actively works with both Petitioners looking to challenge patent validity and Patent Owners who are trying to preserve their patents. We work closely with our clients to understand their business objectives and then formulate a plan that aligns their PTAB strategy with their overall litigation, licensing, or patent prosecution goals.

The practice’s robust patent team is made up of a combination of patent litigators, patent prosecutors and technical experts, including a former Director of the USPTO. This depth enables us to navigate the complex procedural, substantive and strategic issues posed by PTAB proceedings to deliver superior results for our clients.
  • Represented a Fortune 100 consumer device company in post grant proceedings resulting in the cancellation of all claims asserted against client.
  • Successfully defended portfolio of fourteen patents from eight different families related to networking technology in post grant challenges brought by direct competitor. Upheld claims were found to be infringed in companion litigation leading to a verdict over $100M for our client. 
  • Represented a publicly traded consumer electronics company in multiple post grant proceedings related to antenna design, resulting in a settlement on favorable terms.
  • Assisted in formulating and implementing strategy at publically traded bio-tech company to deal with influx of licensing demands through aggressive use of post grant proceeding. Results have substantially reduced client's expected licensing costs resulting in increased profitability for multiple product lines. 
  • Represented a publicly traded consumer electronics company in multiple post grant proceedings related to network infrastructure and design, resulting in a settlement on favorable terms. 
  • Filed one of the first inter partes review (IPR) petitions for a large multi-national technology company that helped establish the case law for when a Petitioner was estopped from filing an IPR, due to prior service of infringement complaint. Case resolved with favorable settlement for client.
  • Represented a publicly traded consumer electronics company in multiple post grant proceedings related to mobile phone features and design, resulting in a settlement on favorable terms. 
  • Defended a medical device company in multiple post grant proceedings related to sleep apnea devices, resulting in a settlement on favorable terms. 
  • Represented a publicly traded consumer electronics company in multiple post grant proceedings related to graphical user interface design, resulting in a settlement on favorable terms.
  • Represented a publicly traded consumer electronics company in multiple post grant proceedings related to semiconductor design, resulting in a settlement on favorable terms. 
  • Successfully represented a publicly traded energy company in post grant proceedings related to behavioral science in energy consumption. The matter resulted in the Patent Owner entering an adverse judgment against itself.