In competitive markets, innovative companies are often defending the validity of their patents or challenging the validity of their competitor’s. Proceedings to review a patent office’s decision to grant a patent are complex and often involve parallel litigation, requiring counsel to have a deep understanding of the interplay between proceedings and how to optimize the overall strategy for success across each forum. Whether through post-grant review before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), opposition before the Patent Division of the German Patent and Trademark Office (DPMA) or the European Patent Office (EPO), or nullity action before the Federal Patent Court in Germany, Finnegan is one of the most experienced firms representing clients in these proceedings. Our experience spans not only volume, but also variety, as we have represented more than 200 clients across industries and with varying strategic goals.
Our balanced practice representing both petitioners and patent owners has been consistently recognized through awards and rankings, as well as journalists seeking insight and commentary from our practitioners. We succeed by knowing the forums, the rules, the trends, and the procedures. On our At the PTAB Blog, we publish a subset of the USPTO’s PTAB data we track monthly. We also publish a subset of our cumulative PTAB data here.
Our attorneys are encouraged to have blended practices involving litigation in courts and government agencies as well as handling appeals. This experience from all angles of patent law and in key jurisdictions enables us to make split-second decisions during conferences with judges regarding issues that may be pivotal to the case. It also allows us to bring global litigation insight to business decisions on assertion or defensive strategies. Finnegan’s decades of litigating in patent forums and prosecuting applications makes the firm particularly well suited for handling patent invalidity cases. Our attorneys are particularly well suited to analyze the likelihood of success for each possible issue on appeal, counsel clients on which issues to raise, and provide the best overall appeal strategy to succeed and meet our clients’ business needs.
Protecting and promoting innovation and market trust is a foundational tenet for Finnegan. Through maintaining a culture of service and leadership in professional bar and legal associations, we collaborate with colleagues in industry and government in promoting IP rights and high professional standards. Organizations we are involved with include Federal Circuit Bar Association (FCBA); Institute of Professional Representatives before the European Patent Office (epi); and PTAB Bar Association.
Derivation proceedings provide an exception to the otherwise absolute first-to-file provisions of the America Invents Act (AIA).
Interferences remain viable for many patent applications containing claims entitled to filing dates prior to the America Invents Act (AIA) effective date–March 16, 2013.
In Germany, the validity of a patent can be challenged only by means of a nullity action with the Federal Patent Court or, if still admissible, in an opposition with the Patent Office.
Patent opposition or revocation procedures offer third parties an opportunity to attack a European or German patent within a limited time after grant.
Reexamination allows anyone to test the validity of a U.S. patent.
Trial strategy and procedures differ significantly in proceedings before the Patent Trial and Appeal Board (PTAB) depending on your position—as a petitioner challenging a patent's validity or as a patent owner defending your rights.
Anyone can file a third-party observation against an application or patent for which proceedings are pending at patent offices in Europe, Germany, and the UK.
337-TA-1367, ITC, Judge Moore
2:23-cv-10783, C.D. Cal., Judges Anelle-Rocha, Eick
IPR2023-01414, PTAB, Judges Abraham, Cass, Hamann
2:22-cv-00486, E.D. Tex., Judge Gilstrap
6:23-cv-00456, W.D. Tex., Judge Albright
IPR2023-00890, -00934, -01017,-01049, -01190, -01191, PTAB, Judges Droesch, Flax, Petravick, Wood
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
Award/Ranking
Finnegan Ranks at the Top of the Managing Intellectual Property IP Stars Rankings
June 28, 2024
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