Practice Areas

PTAB Trials

Since the America Invents Act (AIA) was enacted in 2012, Mr. Lindner has maintained an active docket of AIA matters and has represented clients in over 40 AIA proceedings. The inter partes review (IPR) has become an increasingly important tool in patent litigation in recent years. Because the timeline of an IPR (typically less than 1.5 years from Petition to Final Written Decision) is accelerated compared to common times to trial in federal court, the strategic importance of IPR proceedings is elevated. Peak Access IP is well-positioned to handle IPR matters effectively and efficiently. Seth’s technical acumen and tenacity for staying on the cutting edge of the law in this quickly developing area are valued by his clients. He has handled IPR matters from start to finish representing both Petitioners and Patent Owners. If you are considering filing an IPR petition, or a petition has already been filed challenging the validity of one of your patents, time is of the essence, and Peak Access IP can help.

PTAB Expertise

Seth’s PTAB trials practice builds upon his vast experience as a patent litigator in district court and his deep technical expertise in the areas of semiconductors, circuit design, communications, and machine learning. Seth’s educational background—Master’s degree in electrical engineering—and his industry experience, including several years in integrated circuit fabrication, circuit design, and computational image processing, allow him to quickly grasp the technical concepts that matter. Seth has worked extensively on behalf of both petitioners and patent owners and is able to quickly identify opportunities and weaknesses to improve his clients’ outcomes.

When representing patent owners, Seth understands that winning quickly (e.g., securing a denial of institution) often turns on finding a weakness in the petition that pertains to each ground for challenge. Denial of institution can put a patent owner in a significantly stronger strategic position, especially in light of the PTAB’s increasing reluctance to allow serial petitions for IPR. Seth also has a keen eye for identifying legal defects in a petition and leveraging those to his clients’ advantage. In one instance, for example, a petitioner relied upon a piece of alleged prior art consisting of a conference paper that came from the personal files of petitioner’s expert witness, who attested that he had personally attended the conference. At first glance, it appeared that there was no effective way to challenge that conference paper as prior art. However, upon further investigation, Seth formulated a strategy for attacking the paper’s status as a “printed publication,” since the petitioner had failed to provide legally sufficient evidence of how widely distributed the paper was. As a result, the client was able to secure a denial of institution, avoiding an additional year of the PTAB proceeding.

When representing petitioners, a strong petition combines both exceptional prior art and careful structuring of each ground of attack. Since the Supreme Court’s momentus 2018 decision in SAS Institute v. Iancu (and the Federal Circuit’s clarifying interpretation in AC Technologies v. Amazon), any final written decision by the PTAB must address every ground in a petition. This means, for example, that if petitioner raises five grounds for challenging claims of a patent, the board will institute even if it believes that only one of those grounds is reasonably likely to succeed. Petitioners are well served, in Seth's experience, by structuring their grounds such that no single attack can defeat all grounds simultaneously.

 Over his nearly decade-long experience with PTAB trials, Seth has developed a network of subject matter experts, and knows how to use expert testimony to strengthen his clients’ arguments. Seth is also particularly adept at cross-examining opposing experts to elicit admissions that are helpful to his clients’ arguments.

PTAB Results

Since 2012, the PTAB has denied institution of just 19% of all petitions filed. In Seth’s matters, when representing the patent owner, institution was denied 59% of the time (as of March 15, 2023, according to statistics compiled by Lex Machina), which means that Seth’s patent owner clients have avoided institution more than three times as often as the average patent owner facing a PTAB petition. On the flip side, when representing the petitioner, Seth’s matters have resulted in trial being instituted 88% of the time, which is much higher than the average institution rate of 52% over the same time period.