The America Invents Act (AIA) created exciting new opportunities for challenging patents that have been issued by the U.S. Patent and Trademark Office (USPTO). In addition to traditional ex parte reexamination, third parties may now request that the USPTO review issued patents via post-grant review (PGR), inter partes review (IPR), and the transitional program for review of covered business method patents (CBM).
Many challengers are already utilizing IPR and CBM proceedings, often in conjunction with district court litigation. These new proceedings provide an opportunity to quickly resolve a patent dispute at a fraction of the cost of a full-blown litigation. Many district court cases have been stayed pending the outcome of these post-grant review proceedings, which are structured to be completed within 18 months of filing a petition requesting review.
At their heart, PGR, IPR, and CBM are conducted as limited "trials," and the proceedings include many "court-like" aspects, such as discovery, cross-examination, and oral arguments, in addition to traditional USPTO prosecution aspects such as the amending of claims and distinguishing over prior art. Accordingly, taking full advantage of these proceedings requires a combination of patent prosecution and litigation skills. Crowell & Moring has developed a strong team of IP attorneys adept at navigating both aspects of post-grant proceedings, and has adeptly deployed those teams at the forefront of several complex IPRs. These teams have a comprehensive understanding of the new regulations, and the manner in which they have been implemented to date by the Patent Trial & Appeal Board (PTAB). Our post-grant team has handled proceedings across a wide range of technologies, including image processing, automotive systems, electrical and mechanical systems, and pharmaceuticals. We have successfully represented clients in narrowing and even invalidating their competitors' patents, and defended our clients' own valuable patents from attack. In addition, we are continually helping our clients navigate the evolving rules and strategies of IPR proceedings.
Post-grant proceedings can be a "game changer" in patent litigation. Therefore, it is no surprise that post-grant proceedings have become an important consideration in developing any overall offensive or defensive litigation strategy. Crowell & Moring understands how and when these procedures can be used to our clients' benefit.