America Invents Act Post-Grant Oppositions After Two Years: A Case End-to-End: What Wins? What Loses?

In honor of the three year anniversary of the signing of the America Invents Act (AIA), Bloomberg BNA asked stakeholders to comment on post-grant opposition proceedings, specifically what works, what doesn't, strategies for filing, and what the PTAB might do to improve its procedures. Bloomberg BNA contacted Finnegan attorneys Eric Raciti, Anthony Hartmann, and Mark Feldstein for their thoughts.

Raciti discussed the importance of coordination in filing an IPR petition in parallel with a litigation. He noted that in cases where a stay is desired, filing the IPR early is a key to success, and it also puts pressure on the patent owner. Feldstein pointed out that filing multiple IPR petitions against the same patent has become a common tactic due to the PTAB’s strict policy on page limits. On the topic of filing a preliminary response while waiting for the PTAB to reach a decision on patentability, Feldstein suggests that it may be more strategic and cost effective not to file a preliminary response unless there is a glaring issue in the petition or specific claim construction issue that needs to be addressed. Regarding trial, Hartmann addressed the issue of confidentiality as a result of the PTAB’s limited discovery policy.