After the Grant

Powerful and Effective Procedures to Eliminate Problem Patents

Congress provided parties with access to powerful administrative procedures to contest the validity of U.S. patents via the Leahy-Smith America Invents Act (AIA). These administrative proceedings include post grant review (PGR), inter partes review (IPR) and derivation proceedings. A panel of three Administrative Patent Judges of the Patent Trial and Appeal Board (PTAB) at the U.S. Patent and Trademark Office (USPTO) adjudicates these proceedings and evaluate the patentability of the challenged patent.

Compared to litigation, PTAB proceedings provide an inexpensive and effective mechanism for challenging the patentability of issued patents. Because the statutory presumption of validity does not apply in these proceedings, it is easier to prove unpatentability at the PTAB than it is to invalidate a patent in court. And because of the statutory deadlines under the AIA, these proceedings are completed within 18 months. After the PTAB issues its final written decision, the decision is appealed directly to the U.S. Court of Appeals for the Federal Circuit. 

When representing petitioners, Armstrong Teasdale’s PTAB team works closely with our clients to identify each and every problematic claim and then develops a comprehensive strategy for eliminating these claims. When representing patent owners, we work quickly to identify and exploit weaknesses in the petition to protect our client’s issued patents from attack. Our PTAB team works closely with our clients throughout the proceeding to maximize the likelihood of achieving success. We have represented petitioners and patent owners through all phases of PTAB proceedings—from the petition and trial phases at the PTAB to appeals at the Federal Circuit and post-appeal PTAB proceedings after remand.

Experienced Professionals

Having filed more than 9,900 patent applications over the past six years, of which over 4,500 were originally drafted and filed, Armstrong Teasdale has the bench depth to help companies across industries defend their business critical innovations. We represent clients across a variety of technologies and subject matters including biopharma and life sciences, chemical, design, electrical, computer and mechanical areas.

Armstrong Teasdale has a robust PTAB practice led by established patent litigators with extensive experience using these proceedings—as an alternative to, or in parallel with, district court litigation—to achieve our clients’ goals. Our PTAB team also includes numerous patent attorneys and patent scientists with advanced technical degrees spanning a variety of disciplines.

Armstrong Teasdale has successfully represented both patent owners and petitioners before the PTAB. When representing patent owners, Armstrong Teasdale crafts strategies to protect our clients’ patents from the validity challenge with the goal of not only weathering the challenge, but also emerging from the PTAB proceeding with strengthened patent rights better protecting our clients’ inventions. When representing petitioners, our team invests significant time up-front by conducting a thorough analysis in order to prepare a petition aimed at fully eliminating the threat posed by invalid patents owned by our clients’ competitors.

Recent Successes

  • We successfully defended a financial institution in a patent lawsuit brought by a large patent-assertion firm by defeating multiple asserted patents in inter partes review proceedings and successfully defending these victories at the U.S. Court of Appeals for the Federal Circuit.
  • In two simultaneous inter partes proceedings filed against a major developer of systems architecture and technology solutions, our team filed successful Patent Owner Responses. By combining a targeted expert declaration with a focus on the underlying prosecution history of the patent, our attorneys secured a dismissal of the petitioner’s validity challenge.
  • We represented a steel manufacturer whose patent rights were challenged by an inter partes review petition filed by a large competitor. We defeated the petition and upheld our client's patent rights on remand after a successful appeal to the U.S. Court of Appeals for the Federal Circuit.

+Source: USPTO (Sept. 16, 2012 to Sept. 30, 2019)

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