There are arguments that you could never present and win effectively in a jury trial that you can present at the U.S Patent Trial and Appeal Board (PTAB). The board has rocketed to a very leading role even in this first year alone in patent challenges. The panel of three judges at the PTAB are digging in - in a way that you can't find in any other forum.
There are very important and technical engineering arguments and technical and complex legal arguments that are not well suited to a lay jury. If you go to the Patent Trial and Appeal Board on the other hand, the matter will be reviewed before three judges who have technical training and also have tremendous experience in patent law.
One of the big reasons the PTAB is a game changer is the change in the cost of defending yourself against a patent assertion. It literally changes the balance of power in negotiating a resolution to one of these disputes, so by pulling out the issue of patent validity and dealing with that first and separately there can be limited discovery and limited disruption to our clients and executives and limited cost and disruption in trying to retrieve key documents.
In short, setting aside the issues of infringement, damages and other issues that can be a huge burden on a company really changes the cost of defending yourself against a patent charge.
At Ropes & Gray, we have a unique hybrid of lawyers who have both courtroom experience and deep patent office understanding. It lets us put a team on the field that really other firms can't.
Originally published April 22, 2014
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