IPRs and Post-Grant Proceedings
Overview
There are important distinctions between patent infringement actions in federal court and proceedings before the Patent Trial and Appeal Board (PTAB), including inter partes reviews (IPRs) and post-grant reviews (PGRs). Unlike most district court judges and jurors, administrative patent judges (APJs) on the PTAB have scientific or engineering backgrounds, which they draw on in considering the technical arguments advanced by counsel. The APJs’ understanding of the underlying technology is a significant factor in determining the outcome of the proceeding.
Arguments that are persuasive to the PTAB are often different from what works in district court. While the parties’ motives and intent often come into play in patent infringement actions in federal court, APJs at the PTAB typically find such facts irrelevant to the issue of patentability in IPRs and PGRs. Instead, APJs focus on a technical understanding of the patented invention, the scientific literature at the time of invention (i.e., “prior art”), and how the patented invention is different from approaches taken by others in the prior art.
As a technology-first firm, Volpe Koenig's technical acumen sets it apart from others. Volpe Koenig’s attorneys have backgrounds in an array of scientific and technology driven disciplines that give them significant technical depth in most fields. Volpe Koenig’s attorneys are adept at understanding and explaining the details of complex technologies so as to lay the foundation for effective advocacy at the PTAB, which has led to a record of success.
Partnerships
IPRs often proceed in parallel with district court litigation, and while the two may have different areas of focus, the strategy advanced in the IPR must align with that of the overall district court case. Volpe Koenig’s IPR attorneys are team-oriented and collaborate with litigation counsel at other firms as well as the client to ensure that issues like claim construction and validity/invalidity contentions are presented consistently across all venues. Volpe Koenig’s IPR attorneys have substantial experience in district court litigation, which enables them to communicate effectively and efficiently with litigation counsel.
Using a separate law firm to focus on IPRs also has distinct advantages. IPRs are typically commenced after a litigation has begun, at a time when the litigation team has formed impressions about a strategy going forward. Engaging separate counsel for the IPRs can provide new perspectives for approaching aspects of the case.
