The America Invents Act (AIA), enacted in 2011, has dramatically changed how third parties can challenge the validity of issued U.S. patents. The AIA created the Patent Trial and Appeal Board (PTAB), an administrative tribunal at the U.S. Patent and Trademark Office, to handle new fast-track validity proceedings. These reviews can slash the cost of patent litigation while providing a more level playing field where the challenger faces a lower standard of proof, claim language is interpreted broadly, and there is no presumption of patent validity.
In the right hands, these new proceedings also serve as a strategic tool to limit and define issues in concurrent patent litigation. Post-issuance proceedings before the PTAB require representation from an attorney with strategic foresight, as well as extensive knowledge of patent law and the Patent Office’s ever-changing procedural landscape.
Leadership in the Field
Husch Blackwell attorneys have taken the lead in using these new tools to address the validity of issued patents. Husch Blackwell initiated the first pharmaceutical-related Inter Partes Review, securing a decision invalidating all 58 of the challenged claims on behalf of our client. Our attorneys also submitted the first petitions granted under the newly created post-grant review proceedings for client American Simmental Association, leading to final decisions that all of the claims in the challenged patents were unpatentable.
Most post-issuance proceedings are linked to claims of patent infringement through ongoing litigation. As such, a carefully planned approach is required to navigate the strictures of post-issuance proceedings, including considerations of timing and estoppel, the ability to stay concurrent litigation, and a consistent approach with any concurrent litigation involving the subject patents.
Husch Blackwell’s Post-Issuance Proceedings team includes patent litigators and prosecutors with vast scientific backgrounds. But just as important is their skill at navigating the complex strategic, procedural and substantive issues present in all post-issuance proceedings.