• Home
  • Advertise
  • Contact Us
  • Subscribe
  • Digital Edition
  • Books
  • Events
  • Products
  • RSS Feeds

Home › This Week”s Issue › Consider the Benefits of Contested Review Proceedings

Font Size: increase font decrease font

Special Report: Intellectual Property

Previous

  • 1
  • 2

Consider the Benefits of Contested Review Proceedings

January 14, 2013

  •    
  •    
  •    
  •      
 

Many parties will wait until the 12-month deadline approaches, hoping to use a patentee's broad claim-construction proposals against it at PTAB. Other parties will request review earlier to maximize their chances of staying the simultaneous district court litigation. Each strategy will make sense in an appropriate case depending on the patent, the venue and the aggressiveness of the patent-holder's infringement positions.

• Experts: One issue for legal departments on both sides to consider is whether to rely on expert declarations. The PTAB does not require expert testimony, but failure to employ an expert may be a mistake.

The U.S. Court of Appeals for the Federal Circuit held in Invitrogen Corp. v. Clontech Labs Inc. (2005) that "unsubstantiated attorney argument regarding the meaning of technical evidence is no substitute for competent, substantiated expert testimony." Thus, for the foreseeable future, parties considering PTAB review should plan on engaging expert witnesses. Otherwise, they run the risk that their arguments will not receive their due weight during the proceeding.

• Planning costs: Inter partes review is designed to be substantially less expensive than district court litigation. Firsthand experience will provide better estimates in the future, but for now a crude estimate would be to expect the total cost of inter partes review to be about 15 percent of the cost of corresponding litigation through trial.

A petitioner for inter partes review bears much of the cost up front: the prior art search, preparation of the petition, expert evaluation and the filing fees. Some of these costs would arise in the litigation anyway as part of preparing an invalidity defense. Shifting these expenditures to an earlier stage of the case is a consideration for companies that frequently find themselves to be patent defendants. Such businesses likely will use PTAB review as a way to resolve cases early and reduce litigation expenses overall.

The new regime of PTAB review appears to offer an efficient approach to resolving validity in patent disputes. Early adopters of inter partes review, as indicated by the public records, tend to be entities with experience in re-examination that are willing to undertake diligent, early investigation of patents to perhaps minimize their total spend on patent assertions.

David L. McCombs is partner in Haynes and Boone in Dallas and chairs the firm's technology law practice. Theodore Foster and Thomas B. King are associates with the firm in Dallas and Orange County, Calif., respectively.

Previous

  • 1
  • 2


Subscribe to Texas Lawyer

You must be signed in to comment on an article

Find similar content

Companies, agencies mentioned

    
  • Patent Trial and Appeal Board
  • Clontech Labs
  • U.S. Court of Appeals for the Federal Circuit
  • Invitrogen Corporation
  • U.S. Patent and Trademark Office

Key categories

    
  • In-House Counsel and Corporate Law Departments

Most viewed stories

    
  1. Former State Bar of Texas Employee Pleads Guilty to Theft
    •         
      • Subscription Required
  2. Sanction Reversed; Filing of Sexually Explicit Chat OKd
    •         
      • Subscription Required
  3. Judges Spar, But Fake Lawyer's Conviction Stands
    •         
      • Subscription Required
  4. Litigator of the Week: Dog Bites Man
    •         
      • Subscription Required
  5. Bankruptcy Booms, Energy Expands for Texas Law Firms
    •      
lawjobs.com

TOP JOBS

MORE JOBS

POST A JOB

From the Law.com Network

EEOC Gets Tough With Companies on Genetic Privacy

Retailers Facing Employment Law Vulnerabilities

Amid Spy Scandal, Russia Boots Baker & McKenzie Lawyer

Survey: Firm Leaders Admit Downturn's Permanent Impact

Contrite Companies Can Win Forgiveness in Bribery Cases
  •      
    • Subscription Required

Plaintiffs Want to See Toyota's 'Crown Jewels'
  •      
    • Subscription Required

Cisco E-Book Delivers Ethics on the Go

Collaboration Is Key to Defending Cyberattacks

Prolific ADA Plaintiff Faces Nemesis in Harassment Suit

Ullyot Exit Closes Chapter for Facebook

Fla. Attorneys Lead Force-Placed Insurance Fight

Lawsuit Names Missing Fla. Attorney for Alleged Fraud
  •      
    • Subscription Required

Loaner Judges Helping Essex Cope With Persistent Vacancies
  •      
    • Subscription Required

Surrogate Faces Suspension for Political Activity, Drunken Driving
  •      
    • Subscription Required

The Affordable State-Specific Practice Solution
Available in NY, NJ, PA and CT editions - research, draft and prepare even the most complex cases with ease.

Court System, Counties Agree on 3 Court Facility Upgrades

Guardian Who Delayed Final Account Must Pay Referee Fee
  •      
    • Subscription Required

Perelman's Case Against Arlin Adams Thrown Out

McVay Wins Superior Court Nod With Western Turnout
  •      
    • Subscription Required

Law Schools Are Looking Beyond LSATs, Says Mich. Dean

Is Freezing Your Eggs the Solution?

Advising Clients on Weather and the Workplace
  •      
    • Subscription Required

Texas Sues BP, Transocean, Halliburton, Anadarko Entities
  •      
    • Subscription Required

Insurer Beats Bid By Bilked Client
  •      
    • Subscription Required

Barnes Asks For Court-Appointed Lawyer To Help Defend Brooks

Corporate Bribery Case Part Of National Trend
  •      
    • Subscription Required

Court Continues To Grant Lawyers Fraud Immunity
  •      
    • Subscription Required

 
About texaslawyer.com  |  Contact texaslawyer.com  |  Advertise with Us  |  Sitemap
  • About |
  • ALM Properties |
  • ALM Reprints |
  • Customer Support |
  • Privacy Policy |
  • Terms & Conditions |
  • ALM User License Agreement
ALM Media