The Leahy-Smith America Invents Act enacted in 2011 drastically changed the landscape for challenging the validity of issued patents. The America Invents Act created several trial-like proceedings that may be implemented post issuance of a patent. These proceedings include Inter Partes Review and Post-Grant Review proceedings. By instituting one of these proceedings, a patent challenger can petition for the Patent Trial and Appeal Board of the U.S. Patent & Trademark Office to adjudicate certain validity issues of an issued patent. Given that trials under the America Invents Act are often faster than district court litigation and involve limited types of discovery, the Patent Trial and Appeal Board is a key battleground for validity challenges. In addition to providing opportunities to invalidate a patent, proceedings under the America Invents Act allow patent claims to be amended in certain situations.
Recognizing that proceedings under the America Invents Act combined elements of traditional patent litigation with elements of patent prosecution and administrative law, when handling such matters, Thomas|Horstemeyer assembles teams comprising attorneys that have experience in patent litigation and patent prosecution. As a result, we have successfully represented patent owners and patent challengers in proceedings under the America Invents Act, often in conjunction with concurrent district court litigation. Our attorneys are also experienced in handling appeals of decisions rendered under the America Invents Act before the Court of Appeals for the Federal Circuit and subsequent remand procedures. In fact, the attorneys at Thomas|Horstemeyer crafted procedures that were ultimately adopted by the Patent Trial and Appeal Board for handling decisions on cases remanded from the Federal Circuit.
The attorneys at Thomas|Horstemeyer handle the following types of post-grant patent proceedings: