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 Dickey 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 Dickey 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.
Inter Partes Review
Few things have changed the face of patent litigation like the arrival of Inter Partes Reviews in 2012. The benefits for patent challengers are clear: reduced costs to file petitions, a lower burden of proof to invalidate, and broader claim scope interpretation, among other benefits. There may be no greater opportunity to attack a competitor’s patent than an IPR.
While the initial Final Written Decisions were decidedly in favor of Petitioners (a 96.4% cancellation rate as of March 16, 2014), more recent decisions have increasingly sided with Patent Owners, bringing down the total number of canceled claims to 82%. Critics of IPR proceedings try to argue the various ways in which the proceedings are skewed toward Petitioners.
It is becoming increasingly clear, however, that the IPR process has added an efficient and cost-effective avenue to test the patentability of patent claims outside of expensive District Court litigation.
A list of exemplary cases follows below:
Exemplary Petitioner Cases:
Laird Techs., Inc. v. GrafTech Int’l Holdings Inc. Represented the petitioner in three IPR proceedings that returned Final Decisions invalidating all claims as unpatentable under Section 103.
Wahoo Fitness, LLC v. Blackbird Tech LLC Represented the petitioner, with co-counsel, to render unpatentable the claims that were asserted by non-practicing entity in co-pending litigation.
Cosmax USA v. Amorepacific US, Inc. Represented the petitioner in an IPR proceeding that led to favorable settlement before Decision to Institute.
We are currently representing the petitioner in 21 additional IPR matters that have not been concluded. In addition, we have prepared at least 11 IPR petitions that were never filed because, upon sending those petitions to Patent Owners, the cases settled favorably for our clients pursuant to settlement discussions.
Exemplary Patent Owner Cases:
Microsoft v. Proxyconn Represented the patent owner in obtaining a Federal Circuit decision reversing the PTAB’s claim construction and vacating its unpatentability findings, marking the first time that the Board was reversed in an IPR.
Facebook v. Bruce Zak Successfully defended the patent owner against four IPR Petitions brought by the social media giant. The PTAB denied institution of trial on all claims.
South-Tek Systems, LLC and Potter Electric Signal Company v. Engineered Corrosion Solutions, LLC Successfully defended all claims of our client’s patent on fire sprinkler system technology against two IPR challengers, securing an all-out victory before the Board.
Positec USA v. Stanley Black & Decker Highlighting the hidden complexity of a seemingly simple invention, we successfully defended two claims before the Board and beat the remaining challenges on appeal before the Federal Circuit, thereby saving all four of the patent holder’s claims at issue.
LKQ Corporation v. Clearlamp, LLC Represented the patent owner in one of the first three cases in which patent claims survived the IPR “Death Squads.” The second of the three cases is Microsoft v. Proxyconn, noted above.
DaVincia, LLC. v. Enco Systems, Inc. Enco Systems sued a competitor for infringing their patent covering a closed captioning technology. The competitor countered by filing a petition for Inter Partes Review, which was denied by the Patent Trial and Appeal Board thanks in part to the hard work of Harness Dickey’s PTAB experts.
Post Grant Review
Closely mirroring Inter Partes Reviews, Post Grant Reviews have the potential to expand and extend the already profound legacy of IPR. PGR has a similar format to IPR, but with a higher cost, additional patentability challenges to implement, and a narrower timeframe to file, among other differences.
Many of the lessons of IPR can, therefore, be applied to PGR proceedings. To date, however, few PGR proceedings have been filed, likely due, at least in part, to the limited population of patents that are eligible for PGR proceedings (only post-AIA) patents.