Inter partes review (also referred to by the abbreviation “IPR”) is a trial proceeding conducted in the United States Patent and Trademark Office (or “PTO”) before the Patent Trial and Appeal Board (“PTAB”) to review the patentability of one or more claims in a patent based on prior art consisting of patents or printed publications. IPR proceedings began in 2012 and since then have played an increasingly significant role in patent disputes. The vast majority of IPRs are filed in parallel with ongoing patent litigation in federal court.
The Porter Hedges team is experienced with navigating parallel proceedings and the unique procedural challenges they present, whether on behalf of a petitioner or a patent owner. Our patent litigators and patent prosecutors leverage their combined extensive trial and patent prosecution experiences to prepare thorough and meticulously crafted IPR petitions challenging the patentability of weak patents and employ the same skills to deftly respond to petitions on behalf of patent owners who seek to defend their issued patents against challenge.
Our PTAB practitioners understand and have a practiced, working knowledge of the procedural, technical, and litigation-like aspects of IPRs, including initial strategies, claim construction, working with technology experts, taking and defending depositions, and presenting or defending the invalidity challenge at oral hearings before the PTAB.