IP Counsel Exchange on Post-Grant Patent Challenges at the PTAB

Finnegan partners Aaron J. Capron and Linda J. Thayer were interviewed by Momentum Event Group, host of the “IP Counsel Exchange on Post-Grant Patent Challenges at the PTAB” conference, to get their thoughts on trials and the litigation of patent claims before the PTAB. In the interview, they discussed unique procedural nuances of the PTAB; how patent claims are handled at the PTAB compared to federal district court proceedings; and filing considerations for clients when contemplating filing a claim with the PTAB vs. filing in federal district court.

As co-lead counsel for one of the first covered business method (CBM) proceedings instituted under the American Invents Act (AIA) [CRS Advanced Technologies, Inc. v. Frontline Technologies, Inc.], Capron describes his experience. The petition was filed on September 16, 2012—the same day that the AIA went into effect. In the district court litigation, the judge stayed the case, pending the outcome of the CBM proceeding. Once the CBM proceedings was instituted, Capron recalls working with the Board and learning early on to be prepared to discuss anything regarding claim construction issues, procedures, and deadlines. Capron also discusses the differences in how patent claims are handled at the PTAB compared to district court. Some of these nuances include more focused discovery, the change in claim construction standards, and the construction of “means plus function” terms.

Thayer discussed her thoughts on the PTAB as a venue for efficiently resolving high stakes patent claims. She believes that it’s an ideal forum for resolving validity because the judges are technology savvy and they truly understand patent law. She describes the proceedings as fast, streamlined, and cost effective in comparison to litigation. Thayer also provides insight into how she helps clients who are considering filing at the PTAB. For petitioners looking to challenge patents, she first determines which post-grant procedure the client may be eligible to use. She also looks at the claims and the art to assess what invalidity argument may exist. For patent owners, she tells her clients to expect the possibility that the defendants will challenge their patent in front of the PTAB and that they should identify any obvious issues before initiating litigation. If any issues with the patent are found, Thayer then counsels the clients on how to fix the issues before filing the district court action.