Alston & Bird attorneys in the firm’s Intellectual Property Post-Grant Practice have written a new book for navigating post-grant proceedings of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB).
Edited by Alston & Bird IP partner Ben Pleune and senior associate Christopher Douglas and published by Wolters Kluwer, the USPTO Post-Grant Trials Handbook explores post-grant proceedings introduced by the American Invents Act (AIA) for challenging the validity of an issued patent: inter partes review, post-grant review and covered business method review.
These procedures have experienced tremendous popularity and are widely considered the most impactful elements of the AIA, which was enacted in 2012 as the most significant U.S. patent reform in more than 50 years. Since then, the PTAB has demonstrated its willingness to invalidate patents at a very high rate, with more and more companies using the post-grant proceedings to challenge the validity of patents they are accused of infringing or that could potentially block the introduction of products or technology down the road. The book is a timely addition to the literature on patent law and indispensable to anyone who recognizes the benefit of these procedures in patent disputes, or who find themselves on the receiving end of a challenge to a patent in their portfolio.
The book draws on the direct experience of Alston & Bird attorneys in successfully representing clients before the PTAB. In addition to providing a history of the AIA, the book serves as a comprehensive resource guide, offering specifics on the nuts and bolts of preparing for each stage of trial, insights into applying both precedent and statutory interpretation to form successful strategies for navigating a post-grant trial proceeding and guidance on how to apply each rule to achieve a particular result.
In addition to Pleune and Douglas, a team of Alston & Bird patent litigators and prosecutors comprised the book’s editorial committee: Kirk Bradley, Natalie Clayton, Ryan Koppelman, Jitty Malik, James Abe, Pamela Councill and Christopher Kelly.
They were joined by the following Alston & Bird attorneys who served as book contributors: Robert Caison, David Caplan, Linda Chang, David Easwaran, Zack Higbee, Joseph Janusz, Brianna Kadjo, Andrew Ligotti, Sam Merritt, Dan O’Connor, Nicholas Tsui, Joshua Weeks, Yi Wen Wu and Chris Ziegler.