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 is ranked No. 8 among the top-performing law firms nationwide in Patexia Inc.’s 2019 IPR Intelligence Report. The IPR Intelligence Report evaluates more than 1,100 law firms and 5,000 attorneys in the intellectual property space on activity and performance. The firm is also ranked No. 3 among the top 100 law firms representing Petitioners. Having built one of the nation’s deepest PTAB practices, Polsinelli serves 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.
Learn more about PTAB strategies, licensing and patent prosecution on our Post Grant blog