Denver Colorado PTAB Proceedings (Inter Partes & Ex Parte) Attorney
Patent disputes are not always decided in federal district courts. Often, the most critical battles regarding the validity of a patent are fought before a highly specialized administrative tribunal within the USPTO: the Patent Trial and Appeal Board (PTAB). PTAB proceedings are fast-paced, highly technical, and procedurally demanding trials conducted before a panel of three experienced Administrative Patent Judges (APJs).
At Williams Intellectual Property, we represent patent owners and challengers in high-stakes PTAB proceedings across Denver, Colorado, and nationwide. As registered patent attorneys with deep technical expertise and extensive litigation experience, we handle Inter Partes Review (IPR), Ex Parte Reexaminations, and Post-Grant Reviews (PGR) — providing the sophisticated representation required to defend your patent’s validity or dismantle a competitor’s overreaching claims.
Get a Free PTAB Strategy Session
The Strategic Power of PTAB Proceedings in Patent Disputes
PTAB proceedings have revolutionized patent litigation. Since the passage of the America Invents Act (AIA), defendants in federal patent infringement lawsuits regularly turn to the PTAB to challenge the validity of the plaintiff’s patent claims.
Filing an Inter Partes Review (IPR) at the PTAB offers several massive advantages over fighting patent validity in federal district court:
- Faster Decisions: By federal law, the PTAB must issue a final decision within 12 months of instituting an IPR, whereas federal court trials can drag on for years.
- Lower Costs: Litigating validity before the PTAB is significantly less expensive than a full-scale federal district court trial.
- Specialized Judges: PTAB cases are decided by Administrative Patent Judges who are themselves registered patent attorneys with advanced technical degrees, ensuring a highly sophisticated review of complex technology.
- District Court Stays: Federal district court judges will often put an active infringement lawsuit on hold (stay) while the PTAB evaluates the patent’s validity, saving the defendant from expensive discovery costs.
Our PTAB Litigation Services
We provide comprehensive representation for both patent owners and challengers in all Board actions:
1. Inter Partes Review (IPR)
We represent patent challengers in preparing and filing IPR petitions, using prior art patents and printed publications to demonstrate that the issued patent’s claims are invalid as obvious or lacking novelty. We also represent patent owners in defending their patents against IPR challenges — drafting powerful Preliminary Responses to convince the Board not to institute the trial, and navigating the trial phase to preserve the allowed claims.
2. Ex Parte Reexamination
Unlike IPRs, which are highly adversarial trials, an Ex Parte Reexamination is a non-trial proceeding where we request the USPTO to reexamine an issued patent based on a “substantial new question of patentability” raised by prior art. This is a powerful, lower-cost tool that can be filed anonymously to challenge a competitor’s patent or by a patent owner to proactively strengthen their own patent before litigation.
3. Post-Grant Review (PGR)
A PGR allows a challenger to contest the validity of a patent on a broader range of legal grounds than an IPR (including enablement, written description, and subject-matter eligibility) but must be filed within a strict 9-month window of the patent’s issuance. We represent clients in filing and defending PGR petitions.
Comparing PTAB Validity Challenges
We help you select the most effective administrative strategy to challenge or defend a patent:
Feature | Inter Partes Review (IPR) | Ex Parte Reexamination | Post-Grant Review (PGR) |
|---|---|---|---|
Filing Deadline | Anytime after issuance (or within 1 year of being sued in federal court). | Anytime during the enforceability of the patent. | Must be filed within 9 months of the patent’s issuance. |
Legal Grounds | Limited to novelty and obviousness based on patents and printed publications. | Limited to novelty and obviousness based on patents and printed publications. | Broad; covers novelty, obviousness, enablement, written description, and eligibility. |
Adversarial Trial? | YES — Active, two-party litigation with discovery and oral arguments. | NO — The challenger files the request, then the USPTO and patent owner negotiate privately. | YES — Active, two-party litigation with discovery and oral arguments. |
Estoppel Effect | YES — You cannot raise the same arguments in federal court if you lose at the PTAB. | NO — No estoppel; you can raise the same arguments in federal court. | YES — Strong estoppel; blocks you from raising any ground you could have raised at the PTAB. |
Frequently Asked Questions (FAQs)
An IPR does not automatically begin when a petition is filed. First, the PTAB conducts a preliminary review to decide whether to “institute” the trial. To secure institution, the challenger must demonstrate in their petition that there is a “reasonable likelihood” that they will win the case and invalidate at least one of the patent’s claims. We focus heavily on this phase — drafting powerful petitions to secure institution or robust patent owner responses to defeat it early.
Estoppel is a legal rule designed to prevent challengers from getting “two bites at the apple.” If the PTAB institutes an IPR and issues a final written decision, the challenger is legally barred (estopped) from raising any arguments in a concurrent federal court lawsuit that they raised, or reasonably could have raised, during the PTAB proceeding.
Yes, but the process is highly regulated. Patent owners can file a Motion to Amend during an IPR to propose substitute claims that narrow the scope of the patent to avoid the challenger’s prior art. We guide patent owners through this delicate process to ensure the substitute claims remain commercially valuable and legally defensible.
PTAB cases are decided by a panel of three Administrative Patent Judges (APJs). APJs are highly experienced registered patent attorneys employed by the USPTO who specialize in specific technology areas (such as software, mechanical engineering, or biotechnology), ensuring a technically sophisticated and legally precise evaluation of your case.
Yes. Any party dissatisfied with a final written decision of the PTAB has the legal right to appeal the decision directly to the Court of Appeals for the Federal Circuit (CAFC) in Washington, D.C. Ben Williams is fully admitted to practice before the CAFC, allowing our firm to represent you from the initial PTAB trial through the final federal appeal.
Sophisticated Patent Advocacy before the USPTO
Do not navigate the complex rules of the PTAB without an experienced registered patent attorney in your corner. Partner with Williams Intellectual Property to challenge overreaching patents or defend your hard-won innovations.
Schedule Your Free PTAB Strategy Session Today
FREE CONSULTATION
TESTIMONIALS
“William Intellectual Property assisted in my trademark registration. I was very pleased with the team’s results. Ben and team did a great job walking me through the process, expected costs, and were very quick to respond to any official responses from the US Patent & Trademark Office. I would recommend and use them again!”
Chris R