The USPTO Post-Grant Patent Trials Landscape: Practical Tips and Strategies to Avoid Pitfalls

Peter regularly represents clients in inter partes review proceedings (IPRs) before the Patent Trial and Appeal Board (PTAB).  He has worked on matters involving a variety of technologies, including nutraceuticals, automotive technology, and medical devices.  Peter has extensive experience in every step of the IPR process, from crafting IPR petitions and patent owner responses to arguing motions and final Oral Hearings. 

Peter has developed a particular expertise in IPR procedure, helping clients to navigate the complexities of parallel district court and IPR proceedings.  Peter also has participated in many IPR appeals, including recently helping a client convince the Federal Circuit to reverse and remand an IPR decision involving mechanical technology.

With nearly 15 years of experience, James has a diverse practice spanning all areas of patents, including postgrant proceedings (e.g., inter partes review and reexamination), strategic counseling, prosecution, litigation, and transactions. James particularly focuses on post-grant procedures before the Patent Trial Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO), having been involved in over 80 proceedings on behalf of both petitioners and patent owners. James frequently speaks and writes on PTAB topics, and co-authored the second edition of The Practitioner’s Guide to Trials Before the Patent Trial and Appeal Board, published by the American Bar Association. James has been recognized by Managing Intellectual Property magazine for his experience in PTAB trials.

James also helps companies build and expand patent portfolios through drafting and prosecution of patent applications across different technologies. James helps companies add value to their portfolios by strategically targeting claims to competitor activity and technical standards. James also oversees and manages large portfolios for clients, having prosecuted or overseen the prosecution of hundreds of applications in his career.

In his counseling practice, James advises on the potential risks posed by third-party patents and applications, rendering invalidity and noninfringement opinions for clients.

James also has significant experience in IP transactions, including through his role on AOL’s patent technical team in the 2012 $1.1B sale of its patent portfolio to Microsoft. Before entering private practice, James served as a patent examiner for the USPTO, examining patent applications directed to optical waveguide technology.