PTAB pioneers representing both petitioners and patent owners
Having handled more than 1,200 cases—inter partes review (IPR), post-grant review (PGR), and covered business method review (CBM)—before the Patent Trial and Appeal Board (PTAB) at the U.S. Patent and Trademark Office (USPTO), including IPRs involving design patents and 70+ CBMs, we know our way around the PTAB’s unique procedures and potential pitfalls. There are many opportunities for a procedural misstep or strategic miscalculation. The administrative patent judges are patent attorneys with science and technology backgrounds. They can and often do get into the weeds about the patented technology, prior art, and PTAB procedures. A detailed understanding of both the technology and the law is essential when arguing before the Board. While we have been recognized as the most experienced firm in representing petitioners, a distinguishing feature of our practice is that we also devote a significant portion of our practice to defending patent owners. Our experience on both sides of the table allows us to be an objective resource for clients facing post-grant challenges.
Our close scrutiny of the rules, requirements, and nuances of each proceeding, as well as the PTAB’s evolving guidelines, allows us to counsel clients on the best tools for challenging the patents at issue, or likewise, fending off attacks. We approach cases with lean teams of attorneys that bring a mix of experience in the proceedings (including with nonpatentable subject matter challenges often brought in CBM proceedings), knowledge of the technology at issue, and experience briefing and arguing cases before the PTAB. This integrated, team approach has allowed Finnegan to provide effective, efficient representation of its clients in more than 70 CBMs, more than 25 PGRs (relatively few have been filed), and over 1,100 IPR proceedings.
In a rare rehearing proceeding, successfully represented petitioner Incyte in an inter partes review (IPR) challenging the validity of Concert’s patent before the Patent Trial and Appeal Board (PTAB). Continued representation of appellee Incyte before the Federal Circuit and secured a unanimous affirmance of the PTAB’s obviousness determination.
IPR2017-01256, PTAB, Judges Fitzpatrick, Hulse, Yang, Smith, Franklin
19-2011, Fed. Cir., Judges Hughs, Linn, Stark
2:22-cv-00507, E.D. Tex., Judge Gilstrap
2:22-cv-0318, E.D. Tex., Judge Gilstrap
1:23-cv-00756, N.D. Ill., Judge Kocoras
IPR2023-00815, -00816, -00817, PTAB
337-TA-1267, ITC, Judge Bhattacharyya
IPR2021-01321, -01531, PTAB, Judges Baer, Fenick, Iftikhar
2:21-cv-00054; -00172, E.D. Tex., Judge Gilstrap
2:22-cv-00291, E.D. Tex., Judge Gilstrap
IPR2022-01593, IPR2023-00143, -00144, -00183, -00184, -00829, PTAB, Judges Dirba, Droesch, McMillin, White, Zecher
22-2012, Fed. Cir., Judges Hughes, Reyna, Stark
IPR2021-00181, PTAB, Judges Deshpande, Hagy, Wieker
1:20-cv-01907, N.D. Ga., Judge Grimberg
1:21-cv-00030, D. Del., Judge Bryson
IPR2022-01200, PGR2022-00051, PTAB, Judges Newman, Snedden, Wisz
22-2232, Fed. Cir.
At the PTAB Blog
IPR and PGR Statistics for Final Written Decisions Issued in March 2024
April 30, 2024
At the PTAB Blog
USPTO Releases Notice of Proposed Rule Making Codifying Several Precedential Case Factors
April 25, 2024
At the PTAB Blog
IPR and PGR Statistics for Final Written Decisions Issued in February 2024
April 16, 2024
Media Mention
Women in Business Law Americas Awards 2024: Three Finnegan Attorneys Shortlisted
April 7, 2024
Award/Ranking
Managing IP Americas Awards 2024: Finnegan Shortlisted for Nine Awards, Including Firm of the Year
March 12, 2024
Award/Ranking
Asian Legal Business Names Finnegan “International IP Law Firm of the Year”
November 10, 2023
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