With nearly a decade of proceedings behind it, the Patent Trial and Appeal Board (PTAB) has established a record. Medtech companies can learn from it.
Timothy P. McAnulty and Daniel F. Klodowski, Finnegan
One of the key aspects of a strong patent is the owner’s ability to enforce it. And when a patent is asserted against an accused infringer in court, two core issues always arise: whether the patent is infringed, and whether it is valid. Because there can be no infringement if the patent is not valid, attacking a patent as invalid (or “unpatentable”) is one of the primary defenses for every alleged infringer.
Patent validity can be challenged in several forums, including in court as part of an infringement litigation. It’s also possible to challenge validity through various “post-grant” procedures at the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB). The PTAB was created in 2012 and has become a popular forum, receiving over 10,500 patent challenges to date. The PTAB provides a relatively fast, focused, and cost-effective mechanism for resolving validity issues, and patent challengers face a lower evidentiary burden at the PTAB than in court.
While every patent and PTAB proceeding is unique, medical device companies can learn several lessons from the past several years of PTAB decisions. The lessons can apply equally to companies building a patent portfolio (such as for investment, acquisition, or enforcement) and companies challenging patents as unpatentable.