Post-Grant
Understanding the PTAB and What’s at Stake
The Patent Trial and Appeal Board (PTAB), established under the America Invents Act in 2012, is the adjudicative arm of the U.S. Patent and Trademark Office for post-grant patent challenges. Its proceedings—primarily inter partes review (IPR) and post-grant review (PGR)—enable companies to contest the validity of issued patents through an administrative process designed to be faster and more cost-effective than federal litigation.
PTAB trials are high-stakes matters with wide-ranging implications. An unfavorable PTAB ruling can result in partial or complete invalidation of a patent, directly impacting litigation strategy, licensing leverage, product exclusivity, and asset valuation. The financial consequences can be substantial—jeopardizing damages sought in infringement cases, royalty streams, market exclusivity, or acquisition value. Conversely, a successful defense at the PTAB can preserve core IP rights, strengthen the validity of your patent, protect revenue, and deter parallel challenges in district court or at the ITC.
For accused infringers, the PTAB offers a critical opportunity to challenge patent validity early in the dispute. A well-timed IPR can shift litigation momentum, reduce potential liability, and force early resolution on favorable terms. It may also serve to narrow issues in co-pending district court actions or eliminate exposure entirely if the challenged claims are invalidated. Strategic use of PTAB proceedings can thus serve not only as a defensive measure, but as a means to control risk, manage litigation costs, and undermine the enforcement leverage of weak or overly broad patents.
These proceedings are procedurally demanding and technically rigorous, often unfolding in parallel with ongoing litigation. A misstep can affect estoppel, impact damages, and shape settlement posture. As such, PTAB strategy must be carefully integrated with broader IP enforcement, freedom-to-operate planning, and commercial objectives.
Inter Partes Review: A Strategic Overview
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Filing the Petition
Inter partes review (IPR) is a trial proceeding conducted before the Patent Trial and Appeal Board (PTAB) to assess the validity of issued patent claims based on prior art consisting of patents and printed publications. Created under the America Invents Act, IPR has become a cornerstone of U.S. patent litigation strategy, offering a streamlined, cost-effective alternative to challenging patents in federal court.
The process begins when a petition is filed outlining specific grounds for invalidity under 35 U.S.C. §§ 102 and 103. This petition must be supported by detailed arguments, prior art references, and often expert declarations. The patent owner may submit a preliminary response, after which the PTAB evaluates whether the petition demonstrates a reasonable likelihood of success
Institution Decision
If the petition meets the threshold, the Board will institute trial. This institution decision, while not determinative, often shifts the dynamics of any related litigation or licensing discussions, and may immediately influence the value and enforceability of the patent in dispute. In one recent matter, our client sought to neutralize an overly broad patent asserted in concurrent district court litigation. The PTAB’s decision to institute all challenged claims reshaped the settlement posture within weeks.
Trial Phase and Discovery
Once instituted, the matter proceeds on an accelerated schedule. The trial phase includes briefing, limited discovery, and expert testimony. Unlike traditional litigation, discovery is narrow, and evidentiary procedures are tightly controlled. Success in this phase requires clear, technically grounded arguments and persuasive expert declarations prepared in strict adherence to PTAB rules. In one IPR involving advanced semiconductor packaging, our team worked closely with engineers and industry experts to simplify complex technical issues—leading to a final decision that invalidated key claims and cleared the path for product launch.
Oral Hearing
An oral hearing occurs near the conclusion of the proceeding, offering parties an opportunity to summarize their positions before the Board. While no new evidence is introduced, this stage provides a focused forum to reinforce key arguments and address questions from the administrative judges. In a recent matter, a concise and well-structured oral argument helped clarify the petitioner’s position on claim construction, which the Board ultimately adopted in its written decision.
Final Written Decision and Strategic Implications
The final written decision, typically issued within eighteen months of the petition filing, determines the patentability of each challenged claim. The outcome carries significant weight. A successful challenge can neutralize litigation risk, eliminate potential damages exposure, and shift settlement leverage. Conversely, an adverse ruling may limit future defenses due to estoppel, which bars the petitioner from raising in court any grounds that were or reasonably could have been raised during the IPR.
Litigation Alignment and Tactical Planning
Because PTAB trials often run in parallel with district court or International Trade Commission proceedings, they must be managed with careful coordination to ensure consistency and preserve strategic optionality. Tactical considerations such as timing, claim selection, expert preparation, and estoppel risk must be evaluated in the broader context of IP enforcement, product strategy, and potential licensing outcomes.
A Disciplined Tool for Patent Strategy
IPR offers meaningful cost advantages compared to district court litigation but is by no means routine. It demands focused, technically competent advocacy and strategic discipline from the outset. When used effectively, it serves as a powerful mechanism to challenge patents that obstruct business objectives—or to defend those that support market leadership and enterprise value.
Schmeiser Olsen provides strategic counsel in PTAB matters across a broad range of industries and technologies. To learn how our attorneys can support your post-grant strategy, contact us for a confidential consultation.
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