Inter Partes Litigation Within the U.S. Patent and Trademark Office: New Opportunities for Specialists?

Theodore H. Davis Jr.

©2015. Published in Landslide, Vol. 8, No. 1, September/October 2015, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

For much of the country’s history, inter partes disputes within the U.S. Patent and Trademark Office (USPTO) have not attracted the attention of those more accustomed to litigating the validity of patents and trademarks in the courts. Nevertheless, following their authorization by the America Invents Act (AIA) in 2011, inter partes review and post-grant review proceedings before the Patent Trial and Appeal Board (PTAB) have become increasingly important. Although it occurred in a reexamination proceeding initiated prior to the AIA, one reason for this is the Federal Circuit’s 2013 holding in Fresenius USA, Inc. v. Baxter Int’l, Inc.1 that the PTAB’s invalidation of a patent under the preponderance-of-the-evidence standard of proof can trump an Article III court’s finding of validity under the clear-and-convincing-evidence standard. Another is a series of opinions from the Supreme Court between 2014 and 2015 making litigation in federal district court decidedly less attractive for patentees.2

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