Patent challenges before the Patent Trial and Appeal Board (PTAB) are an essential feature of modern patent litigation. When engaged to handle a matter before the PTAB, Sidley’s nationally recognized IP Litigation practice, as it does in any patent litigation, focuses first on learning our client’s commercial objectives and then building a strategy to meet those objectives. Knowing what a win is for our clients allows us to guide our work and find the fastest and most cost-efficient path for achieving that win.
Sidley has an extensive practice before the PTAB, spanning nearly every field of technology and type of PTAB proceeding. Since 2012, Sidley lawyers have appeared in more than 440 inter partes, post-grant, or covered business method reviews, with most involving patents being asserted in parallel district court litigation. Many of these proceedings raise novel issues with strategic consequences, requiring our lawyers to draw on their broad litigation experience, scientific and technical know-how, and deep familiarity with PTAB procedures.
“Inter-Partes Review Firm of the Year” (2021)
“Post-Grant Proceedings Attorney of the Year” (2020 and 2021)
LMG Life Sciences
“Impressive patent litigation outfit with seasoned trial lawyers, recommended for high-value patent disputes in the hi-tech, life sciences, and software sectors. Represents a strong choice of counsel for USPTO proceedings, particularly post-grant reviews. Noted experience on IPR matters and covered business review proceedings.”
Chambers USA 2022: Nationwide, Intellectual Property
Our lawyers bring value to clients in the following ways:
- We staff our PTAB matters with patent litigators who run PTAB matters with the same focus and rigor as any other patent litigation. Our success in PTAB proceedings on behalf of our clients derives from the fact that we are patent litigators first and foremost.
- We devise an accessible storyline at the start of the case, and then develop and frame the evidence to fit that storyline. Doing that not only positions us to prevail before the PTAB, but also allows us to exploit developments in the PTAB proceedings in concurrent patent litigation against the same adversary.
- We are well-versed in crafting a PTAB strategy that aligns with positions being advanced in parallel district court or International Trade Commission (ITC) litigation, and which positions the case for a favorable outcome in appeals of the PTAB or related decisions by the Federal Circuit.
- Our extensive experience in both challenging and defending patents in the PTAB has taught us how to effectively frame our pleadings to maximize the likelihood of success before the PTAB, leveraging our insights into what is feasible to prove and themes that will be compelling to PTAB panels.