A defendant facing a patent infringement lawsuit must decide early in the case which path to follow: expensive but comprehensive litigation in district court, or less expensive but more limited proceedings before the Patent Trial and Appeals Board. With considerable experience treading both paths open to clients, our attorneys can comprehensively review a case, recommend a strategy, and act quickly to protect client interests while minimizing the financial impact, regardless of the path chosen.
The 2012 America Invents Act (AIA) created the inter partes review (IPR) and covered business method (CBM) procedures enabling a defendant to challenge the validity of asserted patents in a trial proceeding before the Patent Trial and Appeals Board (PTAB). While district court litigation may be the more desirable option in some cases, the IPR/CBM path on average is considerably less expensive because it involves only limited discovery and focuses solely on validity issues.
McGuireWoods’ IPR/CBM team, which combines the experience of the firm’s patent litigators and patent prosecution attorneys, spans multiple offices and has the depth and flexibility to thoroughly evaluate − within days of the filing of the lawsuit − whether an IPR/CBM procedure is a client’s best option. Moreover, once a client has decided to take the IPR/CBM path, the team can prepare and file IPR/CBM petitions within weeks. This diligence pays dividends in several patent litigation venues in which it is possible, early in the case, to secure a stay of the litigation pending the PTAB’s decision on whether to institute review. In other venues where securing a stay is not likely until after the PTAB has decided to institute review, getting IPR/CBM petitions on file early still reduces the amount of discovery and other litigation work that must be completed before the PTAB institutes review.
For example, in one of McGuireWoods’ recent cases, a client was sued for patent infringement in the Eastern District of Virginia. The IPR/CBM team was able to prepare and file CBM petitions concerning the patents-in-suit before the court had conducted a scheduling conference. Immediately thereafter, the team successfully secured a stay of the litigation pending the PTAB’s decision on whether to institute review. The PTAB ultimately instituted review, finding that it was more likely than not that the patents were invalid. The court then extended the stay until after the review is complete. The ability of the team to work rapidly in evaluating and effectuating CBM review in this case significantly reduced the cost of defense for the client and protected the client from the substantial business interruption inherent in full-scale district court litigation and discovery.