The cost of defending against a patent infringement suit regularly starts at $1 million (before trial) and may total in excess of $2 million through trial. Further, district court litigation almost always involves large amounts of costly discovery and a lay judge presiding over the suit with little or no technical background. Given those figures and obstacles, it is easy to see why so many companies large and small choose to settle rather than challenge patent infringement claims—even when they believe they have done nothing wrong.
In view of the shortcomings of patent infringement suits, proceedings to challenge the validity of patents before the U.S. Patent and Trademark Office have become an extremely popular vehicle to defend against claims of infringement. Such proceedings often provide speedier and less costly alternatives to litigation, as well as the potential to stay the litigation in many cases. As such, a company that faces litigation by a competitor or a non-practicing entity with questionable patents now has more options to consider in bringing or defending against such claims.
Lewis Roca Rothgerber Christie employs teams of prosecution and litigation attorneys to prosecute and defend against post-grant proceedings before the USPTO’s Patent Trial and Appeal Board (PTAB). Our prosecution attorneys, agents and specialists all have substantial technical and industry experience that allows them to efficiently evaluate the patent, prosecution history and prior art, and to focus communications with costly expert witnesses. Our litigators work closely with our prosecutors to effectively communicate with the PTAB, and to defend and cross-examine expert depositions and other limited discovery that may be allowed under the particular proceeding.
The professionals at Lewis Roca Rothgerber Christie have strong experience in the various avenues available for post grant review of patents before the PTAB, including the following:
Ex Parte Reexamination: Available since the 1980’s, ex parte reexamination of a patent by a USPTO Examiner can be initiated by any member of the public that submits prior art and a statement describing how the prior art raises a substantive new question of patentability. Through such a proceeding, patent claims may possibly be cancelled or narrowed.
Inter Partes Review: Newly available under the America Invents Act (AIA), inter partes review is a trial proceeding before the new Patent Trial and Appeal Board (PTAB) where a party may challenge the validity of a patent based on prior art. In effect as of September 16, 2012, the goal is for the PTAB to handle a proceeding and reach a final determination within 1 year after institution of a trial. The total period from filing of an initial petition for inter partes review until a final decision from the PTAB is approximately 18 months.
Post Grant Review: Post grant review is another trial proceeding that is newly available under the AIA. In addition to prior art, this proceeding allows for patent challenges on bases such as lack of written description, enablement, indefiniteness, and whether the patentee was actually the first-inventor-to-file. Post grant review proceedings are available if filed with 9 months of the issuance of a patent. Like the inter partes review, the PTAB expects to resolve a post grant review proceeding within 18 months after the filing of an appropriate petition.
Covered Business Method Review: Yet another new proceeding conducted by the PTAB, the transitional proceedings for business methods are similar to post grant review. The petitioner (or its real party in interest) must have been sued or charged with infringement of a business method patent.
Derivation: Another new trial proceeding before the PTAB, a derivation proceeding determines whether an inventor of an earlier application derived the invention from another, later-filing inventor and was therefore unauthorized to file the earlier application. A petition to initiate such proceedings may only be filed within 1 year of publication of the earlier filed application.
The availability of such proceedings reflect the understanding that individuals and entities working in innovation industries may have knowledge and access to materials useful to the USPTO in assessing patentability of pending patent applications, as well as ensuring that issued patents do indeed meet the standards for patentability (e.g., novelty, non-obviousness). Lewis Roca Rothgerber Christie’s attorneys, agents and specialists have vast experience dealing with inventors, examiners and experts day in and day out, and can provide a valuable upper hand to your company in such proceedings.