The America Invents Act (AIA) has created several new post-grant proceedings for third parties to challenge the validity of issued U.S. patents before the U.S. Patent and Trademark Office (USPTO). These proceedings have game-changing potential for challengers, providing a quicker and less expensive way to invalidate patents than district court litigation. Our attorneys can help clients chart a course through this evolving landscape.
The advantages of the new post-grant proceedings include the use of a standard that is more favorable to the challenger and involvement of a technically trained administrative law judge who hears such challenges. These proceedings also do not entail excessive discovery.
Ballard Spahr's Post-Grant Team is made up of experienced patent litigators and patent lawyers who hold Ph.D.s in a variety of fields and have experience handling both district court litigation and various post-grant proceedings. Our work includes helping clients use post-grant proceedings as part of a preemptive strategy to challenge patents before a product launch.
Even when other counsel has been hired to handle related district court litigation, Ballard Spahr has been engaged to conduct post-grant proceedings. Our attorneys have handled numerous USPTO proceedings, including the new procedures. In addition, we are well versed in internationally based post-grant and opposition proceedings.
Experience
- Represented a luxury golf equipment company in a bet-the-farm patent infringement case against a sports equipment company in Federal Court in Arizona, and in 18 related IPRs before the Patent Trial and Appeal Board. The case involved head-to-head competitors seeking to enforce their respective patents against the other. The case involved the company's innovative product line that made a substantial impact on the golf industry. The case was favorably settled following over one year of high pace litigation.
- Representing a global engineering, repair, and logistics company in a patent infringement case against its competitor. This case involves two district court litigations, a Federal Circuit appeal, and two petitions for inter partes review.
- Act as trial counsel to defend a chemical company in a patent infringement suit. The plaintiff filed a patent infringement suit against our client, asserting several patents. We vigorously denied infringement and are challenging the validity of the patents. The case was recently stayed pending the outcome of a related IPR before the Patent Trial and Appeal Board.