PTAB Proceedings
PTAB Proceedings as an Alternative to Federal Litigation
Thrive IP® practices before the Patent Trial and Appeal Board (PTAB) at the United States Patent and Trademark Office (USPTO). Our PTAB practice includes appeals from final rejections during patent prosecution, petitions for reexamination, derivation proceedings, Inter Partes Review (IPR), and Post Grant Review (PGR).
Defendants accused of patent infringement should consider PTAB proceedings as part of a comprehensive litigation strategy. Likewise, patent owners asserting their rights must be prepared to defend their patents before the PTAB and in related USPTO proceedings.
Petitions for Reexamination
Petitions for Ex Parte Reexamination provide a cost-effective mechanism at the USPTO to challenge the validity of an issued patent based on prior art patents and printed publications. Any person, including accused infringers and other interested parties, may request reexamination, prompting the USPTO to re-evaluate the patent’s claims in light of the newly cited prior art. Thrive IP® assists both petitioners and patent owners in evaluating whether reexamination is appropriate, preparing or responding to petitions, and coordinating reexamination strategies with parallel PTAB and federal court litigation.
Inter Partes Review (IPR)
Since the implementation of the America Invents Act (AIA) in 2012, patent challengers (petitioners) have often realized significant cost savings relative to federal litigation and benefited from a lower burden of proof to invalidate patents.
IPR is a trial-like invalidity proceeding before the PTAB. It is a streamlined, tightly scheduled process intended to serve as an alternative to federal district court litigation for challenging a patent’s validity. Any decision by a defendant to file an IPR – or a patent owner’s effort to defend its patent – must account for recent U.S. Supreme Court and PTAB decisions, evolving regulations, estoppel implications, and strict timing requirements, making experienced PTAB counsel such as the attorneys at Thrive IP® essential.
Post Grant Review (PGR)
PGR is similar to IPR but is available only for post-AIA patents. Compared to IPR, PGR allows a broader range of patentability challenges, including certain issues not available in IPR, but it is subject to a much narrower filing window.
A PGR petition must be filed by a third-party on or before the date that is nine months after the grant of the patent or issuance of a reissue patent. Thrive IP® advises both petitioners and patent owners on whether PGR is appropriate, how to position key issues during this short window, and how to coordinate PGR proceedings with any co-pending litigation.
Derivation Proceedings
A derivation proceeding is a trial conducted at the PTAB to determine (i) whether an inventor named in an earlier application derived a claimed invention from an inventor named in the petitioner’s application, and (ii) whether the earlier application claiming the invention was filed without authorization.
An applicant subject to the AIA’s first-inventor-to-file provisions may file a petition to institute a derivation proceeding within one year of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim. The petition must be supported by substantial evidence that the claimed invention was derived from an inventor named in the petitioner’s application. Thrive IP® represents parties in derivation proceedings, from evaluating potential derivation claims through trial and appeal.
Comprehensive PTAB Strategy and Support
Thrive IP® Registered Patent Attorneys guide both challengers and patent owners through all phases of PTAB practice, including reexamination, IPR, PGR, derivation, and appeal proceedings.
We are litigators who work with clients to determine whether PTAB proceedings are suitable alternatives or supplements to conventional district court litigation, and to help patent owners navigate PTAB challenges when their patents are attacked. Our firm understands the complex interaction between USPTO procedures, PTAB proceedings, and related federal litigation.
We are experienced in claim construction and leverage our federal patent litigation background to either invalidate or defend patent claims, depending on our client’s objectives. Our Registered U.S. Patent Attorneys can also assist general practice litigators with complex scientific and technological issues and provide consultation to other firms managing concurrent litigation involving PTAB and district court actions.