Strategic Patent Challenges Before the PTAB
Inter partes review (IPR) is one of the most effective mechanisms for challenging the validity of issued U.S. patents. Conducted before the Patent Trial and Appeal Board (PTAB), IPR proceedings allow challengers to contest patent claims based on prior art patents and printed publications. When instituted, IPRs offer a faster and more cost-efficient alternative to district court litigation.
Banner Witcoff represents both petitioners and patent owners in IPR proceedings, delivering strategic advocacy grounded in deep technical knowledge and extensive procedural experience.
Our IPR Approach
Strategic Early Case Assessment
We analyze prior art, claim scope, and procedural posture to assess the viability of filing or defending an IPR and to develop an effective strategy. Given the evolving nature of PTAB institution practices, we remain closely aligned with current legal standards and precedents to provide timely, informed guidance.
Petition and Response Strategy
Our team prepares detailed petitions and patent owner responses designed to meet the PTAB’s rigorous and evolving requirements, with a focus on clarity, technical precision, and persuasive legal argument.
PTAB Trial Advocacy
We bring a deep bench of practitioners with the technical background and litigation experience necessary to advocate effectively throughout all phases of an IPR proceeding.
Director Review and Panel Rehearing
Our team has significant experience pursuing and responding to Director review and panel rehearing requests following institution decisions and final written decisions.
Parallel Proceeding Coordination
We align IPR strategy with parallel litigation and enforcement efforts, recognizing that success is measured across forums. Our integrated approach is designed to maximize the likelihood of favorable outcomes both before the PTAB and in court.
Appellate Strategy
Many IPR decisions are appealed to the U.S. Court of Appeals for the Federal Circuit. We identify the issues most likely to succeed on appeal and represent clients throughout the appellate process.
Industries We Serve
Our IPR experience spans a wide range of industries, including:
- Software, electronics, and semiconductors
- Power systems and telecommunications
- Mechanical and consumer products
- Medical devices and life sciences
- Automotive technologies and chemicals
- Design-related innovations
Ex Parte Reexamination
Strengthening or Challenging Patents Through USPTO Review
Ex parte reexamination allows the U.S. Patent and Trademark Office to reevaluate the validity of issued patent claims based on prior art. It may be initiated by patent owners seeking to refine, clarify, or strengthen their patent rights, or by third parties—including those wishing to remain anonymous—seeking to challenge those rights.
Banner Witcoff guides clients through every stage of the reexamination process, applying deep prosecution and litigation experience to address both technical and legal complexities.
Our Approach
Strategic Evaluation
We assess whether reexamination is the most effective procedural option in light of the client’s objectives, the relevant prior art, and any parallel proceedings.
Request Preparation
We develop detailed prior art analyses and legal arguments to support reexamination requests. For third-party requesters, we craft submissions that anticipate potential patent owner responses and claim amendments, given the requester’s limited role after initiation.
Prosecution Advocacy
We engage directly with USPTO examiners through interviews and written submissions to manage claim amendments, advance legal arguments, and guide prosecution strategy—particularly for patent owners.
Coordinated Portfolio Strategy
Reexamination efforts are aligned with broader enforcement strategies and long-term portfolio development to maximize overall value.
Industries We Serve
Our reexamination work spans industries including:
- Software, electronics, and semiconductors
- Power systems and telecommunications
- Mechanical technologies and consumer products
- Medical devices and life sciences
- Automotive technologies and chemicals
- Design-focused innovations
Derivation and Interference Proceedings
Resolving Patent Priority and Inventorship Disputes
Derivation and interference proceedings address disputes over entitlement to patent rights, including issues of priority of invention and improper derivation. While less common under current patent laws, these proceedings remain critical in certain circumstances—particularly for pre-AIA patents and complex inventorship disputes.
Banner Witcoff provides strategic counsel and advocacy in these technically demanding and procedurally complex matters.
Our Approach
Procedural Strategy
We assess timing, evidentiary requirements, and procedural considerations to develop an effective approach tailored to each matter.
Evidence Development
Our team builds comprehensive records—including documentary, technical, and testimonial evidence—to support priority and inventorship positions.
Advocacy
We represent clients through all phases of these proceedings, including motion practice, discovery, and hearings before the USPTO.
Integrated IP Strategy
We coordinate derivation and interference matters with broader prosecution, litigation, and business strategies to ensure alignment with overall objectives.
Industries We Serve
Our experience includes matters across:
- Software, electronics, and semiconductors
- Power systems and telecommunications
- Mechanical technologies and consumer products
- Medical devices and life sciences
- Automotive technologies and chemicals
- Design-related innovations
