Since the inception of post-grant review proceedings resulting from the America Invents Act (AIA), Finnegan has been setting the pace before the Patent Trial and Appeal Board (PTAB). We were the first firm to file a covered business method review (CBM) petition, the first to argue at an oral hearing, and the first to win a trial before the PTAB. Since that first trial, we have maintained our position as a leader in PTAB trial practice with a majority of our patent attorneys working on inter partes review (IPR) and post-grant review (PGR), including CBM, cases. Finnegan is a leading firm in terms of volume practicing before the PTAB, having represented clients—petitioners and patent owners—in more than 500 IPRs, PGRs, and CBMs.
By design, our attorneys have blended practices between patent prosecution, litigation in district courts and before the U.S. International Trade Commission, and appeals to the U.S. Court of Appeals for the Federal Circuit. More than 200 are registered to practice before the U.S. Patent and Trademark Office (USPTO), and they have a wealth of experience in all aspects of patent office practice, including representing clients in interference proceedings. This experience from all angles of patent law enables us to make split-second decisions during hearings with the Board regarding issues that may be pivotal to the case. It also means that we can step into cases that are underway and quickly come up to speed.
The Interplay of Litigation and PTAB Strategies
Post-grant review proceedings have been a game changer when it comes to patent litigation strategy. Most patent infringement cases today involve not only a U.S. district court or the International Trade Commission, but also the PTAB. Before bringing suit, patent owners must be prepared to respond to one or more petitions for review challenging the asserted patent, and accused infringers must carefully consider defensive and offensive strategies to avoid moves in one venue that may hamstring positions in another.
Our understanding of patent litigation, combined with our patent prosecution and patent challenge experience before the USPTO, provides our clients with a significant advantage when coordinating IPR/PGR/CBM proceedings against a litigation backdrop. It is critical for the litigation and PTAB teams to be in synch so strategies are cohesive and align for the client’s position in each case—whether it is the asserting party/patent owner or accused infringer/petitioner. And with one of the most highly regarded appellate practices in the country for handling patent appeals to the Federal Circuit, our attorneys are acutely aware of the importance of setting the record for likely appeal of either or both cases.
IPR, PGR, and CBM
Having handled well over 500 cases before the PTAB, including IPRs involving design patents and 60+ CBMs, we know our way around the unique procedures and potential pitfalls. There are many opportunities for a procedural misstep or strategic miscalculation. The administrative patent judges are patent attorneys with science and technology backgrounds. They can and often do get into the weeds about the patented technology, prior art, and PTAB procedures. A detailed understanding of both the technology and the law is essential when arguing before the Board. While we have been recognized as the most experienced firm in representing petitioners, a distinguishing feature of our practice is that we also devote a significant portion of our practice to defending patent owners. Our experience on both sides of the table allows us to be an objective resource for clients facing post-grant challenges.
Our close scrutiny of the rules, requirements, and nuances of each proceeding—IPR, PGR, and CBM—as well as the PTAB’s evolving guidelines, allows us to counsel clients on the best tools for challenging the patents at issue, or likewise, fending off attacks. We approach cases with lean teams of attorneys that bring a mix of experience in the proceedings (including with nonpatentable subject matter challenges often brought in CBM proceedings), knowledge of the technology at issue, and experience briefing and arguing cases before the PTAB. This integrated team approach has allowed Finnegan to provide effective, efficient representation of its clients in more than 60 CBMs, nearly 10 PGRs (relatively few have been filed), and well over 400 IPR proceedings.
Although the first-to-file provision of the AIA effectively removed the option of an interference for most new patent applications, interferences remain viable for many patent applications containing claims entitled to earlier filing dates. Many of the PTAB’s rules build on prior interference practice, and several of the PTAB judges were on the predecessor Board of Patent Appeals and Interferences. For decades, Finnegan has counseled and represented clients in patent interferences, establishing one of the most highly regarded interference practices in the country. Our attorneys are adept at navigating through complicated priority fact patterns and the transitional AIA provisions to advise whether an interference is an appropriate tool. Known as priority contests to decide who was first to invent, interferences have also long provided an opportunity to contest patentability of a competitor’s claims under a lower standard of proof than is available in district court. Our extensive practice covers all technology disciplines and all degrees of complexity from simple, two-party interferences involving priority to more difficult cases involving multiple parties and multiple issues of priority and patentability.
Derivation proceedings provide an exception to the otherwise absolute first-to-file provisions of the AIA. For patent applications having an effective filing date on or after March 16, 2013, the derivation proceeding is available to an inventor who believes that an earlier-to-file patent applicant derived the invention without authorization. Although derivation proceedings are new, derivation of an invention is an often-raised issue in interferences in cases involving some element of collaboration. Who conceived the invention and when are important components of both priority of invention and derivation of an invention. Finnegan’s extensive interference experience well prepares us to advise clients regarding the opportunities afforded by derivation proceedings when a competitor derives an invention and is first to file.
Appeals of PTAB Trial Decisions
PTAB decisions are appealed directly to the Federal Circuit, where Finnegan attorneys have briefed and argued more cases than any other law firm. We are widely known for the quality of our briefs and oral arguments. With only one or two briefs and 15 minutes of oral argument to make your case, Finnegan brings the type of experience that can make all the difference.
As the body of case law develops around PTAB trials, we are monitoring the Federal Circuit’s decisions as well as the PTAB decisions considered on appeal, and we use those insights for developing case strategies. Our attorneys are particularly well suited to analyze the likelihood of success for each possible issue on appeal, counsel clients on which issues to raise, and provide the best overall appeal strategy to succeed and meet our clients' business needs.