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Since the enactment of the AIA, Kilpatrick Townsend has represented clients in more than 120 IPR, CBM and PGR proceedings. Kilpatrick Townsend has become the number one firm in blocking institutions of IPRs for patent owners* and Law.com recognizes us as one of the top law firms in total IPR institutions for petitioners. Our experience representing patent owners allows us to anticipate attacks on the petition when representing petitioners, and vice-versa. The Post-Grant Proceedings Team at Kilpatrick Townsend consists of more than 50 attorneys focused specifically on patent reexaminations and the new IPR and post-grant review (PGR) proceedings. We bring a wealth of legacy inter partes and ex parte reexamination experience and have an intimate familiarity with U.S. Patent and Trademark Office (USPTO) rules and procedures, as well as technical expertise in all patented subject areas.
IPR and PGR proceedings introduce court-like elements to USPTO proceedings, injecting new strategic considerations and requiring additional experience and skill sets for effective USPTO advocacy. Therefore, our Post-Grant Proceedings Team includes not only patent prosecutors with deep reexamination experience, but also patent litigators having vast experience in federal court proceedings involving patents in all areas of technology. Our reputation for focused and efficient discovery, courtroom mastery, insightful cross examinations, and winning oral arguments makes us uniquely qualified when handling IPR and PGR proceedings. Our team is also well adept handling European opposition proceedings that function similarly to the new U.S. proceedings.
About the AIA
In 2011, the AIA established the Patent Trial and Appeal Board (PTAB) to oversee two new inter partes dispute options — IPR and PGR — to help reduce patent litigation. Along with ex parte reexaminations (EPR) and CBM reviews, these new dispute proceedings provide more options to challenge a patent at the USPTO before going to court. Patentability may be challenged in an IPR only on a ground raised under 35 U.S.C. §§ 102 (novelty) or 103 (obviousness), and only on the basis of prior art consisting of patents or printed publications. The PTAB will institute an IPR if it finds a reasonable likelihood that the petitioner would prevail under at least one challenged patent claim, and if the final determination will occur within one year (extendable by six months for good cause). IPR is available for a patent issued at any time after the later of (a) nine months after the issuance or reissuance of the patent or (b) termination of any PGR instituted for the patent.
*Law.com reports that Kilpatrick Townsend “helped patent owners beat back 10 out of 17 petitions without a trial” and the chart shows a higher success rate than any other firm that has done a significant number of IPRs.