PTAB Trials

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The America Invents Act (AIA) created several proceedings for challenging patent validity at the U.S. Patent and Trademark Office. These proceedings, which are held before the Patent Trial and Appeal Board (PTAB), include inter partes review (IPR), post‑grant review (PGR), and the transitional program for covered business method patents (CBM).

MBHB attorneys are uniquely qualified to handle proceedings before the PTAB. Indeed, not only do our attorneys have extensive litigation experience and comprehensive knowledge of the underlying technologies, but we also interact with the U.S. Patent and Trademark Office on a daily basis. Moreover, we have decades of experience handling cases before the PTAB and its predecessor, the Board of Patent Appeals and Interferences. With this specialized blend of skills, we know exactly what it takes to represent clients in all aspects of PTAB proceedings— from pre-institution strategy through oral hearing (and beyond).

Our attorneys are also dedicated to monitoring the latest developments at the PTAB, which puts us in the best possible position to educate and advise our clients on this quick-paced alternative to district court patent litigation. The News & Events and Publications tabs contain presentations and articles we have authored on topics relating to PTAB litigations.

Please join our PTABTrials group on LinkedIn for the latest information on IPRs, PGRs, CBMs and CAFC appeals relating to these PTAB trial proceedings.

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Upcoming Events

February 22, 2017

Past Event

January 19, 2017
MBHB Partners Dr. Michael Borella, Dr. Kevin Noonan and Dr. Donald Zuhn Are Featured Presenters
January 17, 2017
MBHB Partner Kirsten Thomson Is a Featured Presenter
November 15, 2016
November 8, 2016
MBHB Partner Dr. Kevin Noonan Is a Featured Co-Speaker
November 8, 2016
MBHB Partner Kirsten Thomson Is a Featured Presenter

Publications

Fall 2016 (snippets)
The Trans-Pacific Partnership was the latest in a series of multination international agreements aimed at reducing trade barriers and promoting global free trade. However, the subject matter scope of this agreement and the secrecy with which it was negotiated have engendered deep suspicions from a variety of groups regarding whether its goal is truly free trade or whether there are more nefarious motivations behind it. And with the election of Donald Trump, these efforts have apparently amounted to nothing.
Fall 2016 (snippets)
Since the Supreme Court decided Alice Corp. v. CLS Bank Int’l in 2014, patent practitioners and the courts alike have struggled to find clarity in the patent eligibility framework of 35 U.S.C. § 101. For the Federal Circuit in particular, applying the two-step framework set forth in Mayo v. Prometheus and Alice with any consistency has proven difficult, as the lines between abstract and non-abstract ideas, between step one and step two of the framework, and between eligibility (§ 101) and patentability (§§ 102, 103, or 112) have grown fainter.
Fall 2016 (snippets)
September 16, 2016, marked the fourth anniversary of the effective date for the invalidity proceedings before the Patent Trial and Appeal Board created by the America Invents Act (AIA). These new AIA proceedings, particularly covered business method reviews and inter partes reviews, had an almost immediate impact on litigation defense strategies in the financial services and technology fields. The impact in the bio/pharma field was slower at the beginning, but the number of AIA petitions for review of bio/pharma patents has steadily increased over the past four years.
December 6, 2016 (snippets Alert)
MBHB snippets Alert - December 6, 2016

On December 6, 2016, the Supreme Court ruled unanimously, in an opinion by Justice Sotomayor, that an award of total profits for infringing a design patent need not be calculated based only on the end product sold to an ordinary consumer. More particularly, in the case of a multicomponent product, the damages award may be calculated based on subcomponents of the end product. In Samsung v. Apple, the Supreme Court applied this rule to reverse Apple’s $400 million damages award against Samsung.
Summer 2016 (snippets)
By analyzing USPTO data about the number of requests, the pendency of proceedings, and the frequency of finding a substantial new question of patentability (“SNQP”), this article seeks to identify trends that will help patent owners thoughtfully weigh the risks and rewards of supplemental examination.
Summer 2016 (snippets)
Despite potential costs, startups can benefit from obtaining IP rights. Not only can IP protection potentially block others from negatively impacting the startup, it can also be seen as valuable property rights by investors. A startup can even potentially monetize IP rights through licenses or sales.
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