The America Invents Act (“AIA”) introduced several new post-grant procedures and made changes to existing procedures at the U.S. Patent and Trademark Office which add several new weapons to the arsenal of potential patent defendants. In particular, they offer cost-competitive routes to raise technically-complex validity challenges without the complications of effectively communicating such arguments to laypersons, or the presumption of validity that are present in district court litigation. Whether post-grant review makes sense is a fact-specific analysis depending on many factors including the patent in issue, how it is being read, the accused products, and the forum in which any district court litigation is pending.
Our firm routinely evaluates the suitability of litigated patents for post-grant review as a part of assessing and handling district court cases, and advises clients regarding the advantages and disadvantages of post-grant procedures with respect to particular patents. Our team members have been especially successful drafting Inter Partes Review petitions in such cases. For example, one patentee offered to drop the asserted patent against the firm’s client, with prejudice, soon after seeing the IPR filed by the firm.
Contact us to learn more about these proceedings, and how we have been able to use them to our clients’ advantage.