Patent Trial and Appeal Board (PTAB) Practice

Latham & Watkins provides clients with innovative, market-leading approaches to PTAB proceedings, securing success for clients at an exceptional rate.

Why Latham

Pioneering Paths Through PTAB

PTAB proceedings at the US Patent and Trademark Office (USPTO) are complicated and quick moving — guaranteed to complete within 12 months from institution. Latham helps petitioners and patent owners successfully navigate the PTAB’s complex procedural rules for Inter Partes Review (IPR), Post Grant Review (PGR) and Covered Business Method (CBM) proceedings.

Because PTAB proceedings are more akin to litigation than patent prosecution, Latham has been exceptionally successful in representing patent owners and petitioners. Latham pioneered a litigation approach to these proceedings, leveraging strong writing, deposition oral advocacy skills and litigation strategy honed through years of successfully trying patent cases.

Delivering a Powerful PTAB Team

Latham PTAB attorneys have focused on PTAB proceedings since the board’s inception, but also bring clients insights based on significant experience before the district courts. Latham provides a robust team of PTAB lawyers, leveraging the skills of experienced patent litigators, technical specialists and dedicated PTAB paralegals.

As a losing party will often appeal high-stakes PTAB proceedings to the US Court of Appeals for the Federal Circuit, the firm’s PTAB lawyers draw on the complementary experience of a top-ranked appellate practice, led by a former US Solicitor General and numerous former clerks from the US Supreme Court and Federal Circuit. This wealth of experience delivers a formidable combination of appellate and PTAB experience to help clients succeed.

Delivering Comprehensive Litigation/PTAB Strategies

Latham offers both petitioners and patent owners effective and efficient PTAB representation, based on early insights into the entire case strategy coupled with persuasive advocacy.

PTAB proceedings often arise from parallel district court or International Trade Commission litigation. Latham PTAB specialists are involved from the outset to craft and execute a closely coordinated strategy for a client’s success. More specifically, the Latham litigation and PTAB teams overlap, leveraging knowledge and strategy for prior art searches, claim constructions, invalidity contentions, expert witness selection, cross examination and overall case presentation.

Blocking Patent Strategy

PTAB proceedings may also arise without litigation, particularly with so-called “blocking patents.” The Latham PTAB team draws on its experience to clear the way for market entry by removing such patents. Alternatively, Latham helps clients fortify their key patents by hardening them against anticipated attacks from competitors.

Awards & Rankings

  • Latham Again Named Washington, D.C. Intellectual Property Litigation Department of the Year - May 27, 2020
  • For Tenth Consecutive Year, Silicon Valley Partner Honored Among Top IP Lawyers in California - March 19, 2020
  • David Callahan Named Illinois Outstanding Intellectual Property Litigator of the Year - April 10, 2019
  • Latham's Intellectual Property Litigation Practice Earns Two Prestigious Honors - May 29, 2018
  • Latham Again Ranks as a Top Innovator - December 17, 2017

“Strong PTAB, district court and ITC trial capabilities backed up by a number of experienced appellate advocates.”

Chambers USA 2018

Events

Webcast – The Interplay Between Parallel District Court and PTAB Proceedings: NHK Spring One Year LaterWebcast – How to Win Section 101 Arguments at the PTAB and the Federal Circuit18th Annual Berkeley - Stanford Advanced Patent Law Institute

Media Coverage

The 2020 D.C. Litigation Departments of the Year: Intellectual Property Winner - Latham & WatkinsSkilled in the Art: Latham Beats Heart Monitor SuitTop Intellectual Property Lawyers: Douglas E. Lumish

News

Latham Again Named Washington, D.C. Intellectual Property Litigation Department of the YearSilicon Valley Partner Honored Among Top IP Lawyers in CaliforniaJennifer Barry Honored for Intellectual Property Work

Thought Leadership

Federal Circuit: A Party Cannot Join Itself in Existing PTAB Proceeding Appointment of Administrative Patent Judges Held UnconstitutionalStrategic Implications of Recent Changes in PTAB Proceedings

Webcasts & Podcasts

The Interplay Between Parallel District Court and PTAB Proceedings: NHK Spring One Year LaterPatentability: How to Win Section 101 Arguments at the PTAB and the Federal CircuitKeeping Tabs on the PTAB: New Pilot Program for Motions to Amend