Post-Grant Proceedings: Defending and Challenging Patents at the Ptab

A patent challenger that files an inter partes review petition must demonstrate that there is a reasonable likelihood that at least one challenged claim is unpatentable over prior art patents or printed publications, and post-grant proceedings counsel advising on IPR strategy must evaluate whether the prior art identified for the petition clearly anticipates or renders obvious each challenged claim under the preponderance of the evidence standard and whether the petition's claim construction arguments align with the most reasonable interpretation of the claim terms.

A post-grant review petition filed within nine months of a patent's issuance can challenge the patent on any ground of invalidity available under Title 35, including lack of written description, enablement, definiteness, and subject matter eligibility under Section 101, in addition to the prior art grounds available in IPR, and patent counseling counsel advising on PGR strategy must evaluate whether the patent presents Section 101 or written description vulnerabilities that would be most efficiently challenged through PGR rather than IPR and whether the nine-month filing window can be preserved while the challenger conducts sufficient invalidity analysis.

A patent owner that receives an IPR petition must file a preliminary response giving the PTAB sufficient reasons to deny institution, and patent infringement litigation counsel advising on IPR defense must evaluate whether the petition's prior art arguments fail to establish the required reasonable likelihood of unpatentability and whether the petition should be denied on discretionary grounds under the Fintiv factors because parallel district court litigation is at an advanced stage.

A patent owner that is aware of prior art that might be used to challenge its patent can initiate an ex parte reexamination to have the USPTO examine the patent in light of that prior art and issue a reexamination certificate that fortifies the patent against future attacks, and patent prosecution and portfolio management counsel advising on ex parte reexamination strategy must evaluate whether the prior art identified for the reexamination request presents a substantial new question of patentability that the USPTO is likely to accept and whether the claims can be amended during reexamination to distinguish the prior art while preserving commercially valuable coverage.

A patent challenger that has filed both a district court invalidity defense and a PTAB petition challenging the same patent must develop a coordinated strategy that manages the risk that a PTAB institution decision will influence the district court's willingness to grant a stay, and technology patent law counsel advising on PTAB and district court coordination must evaluate whether the district court litigation schedule is sufficiently advanced to trigger the Fintiv discretionary denial factors and whether the invalidity arguments to be presented in district court overlap significantly with those raised in the PTAB petition.

A petitioner who has received a final written decision in an IPR proceeding is estopped from asserting in district court any invalidity ground it raised or reasonably could have raised during the IPR, and intellectual property counsel advising on estoppel risk management must evaluate whether any prior art or invalidity arguments the challenger intends to preserve for district court are genuinely unavailable through the IPR process and whether prior art systems or non-printed-publication evidence should be reserved for district court to avoid the IPR estoppel bar.

A patent challenger and patent owner who are simultaneously engaged in district court litigation and PTAB proceedings have significant incentives to negotiate a global settlement that resolves all pending disputes, and technology licensing and IP transactions counsel advising on PTAB settlement strategy must evaluate whether the PTAB's preliminary guidance on claim construction and patentability provides a reliable basis for assessing each party's litigation risk and whether the PTAB is likely to approve the parties' joint motion to terminate the proceeding based on the terms of their settlement agreement.

A party that is dissatisfied with the PTAB's final written decision in an IPR or PGR may appeal the decision to the Court of Appeals for the Federal Circuit, which reviews the PTAB's legal determinations de novo and its factual findings for substantial evidence, and patent maintenance and appellate counsel advising on Federal Circuit appeals must evaluate whether the PTAB's claim construction adopts a legally erroneous interpretation that the Federal Circuit is likely to reverse and whether the PTAB's prior art findings are supported by substantial evidence or rest on clearly erroneous factual determinations that provide a basis for reversal.