Contested proceedings before the Patent Trial and Appeal Board, including inter partes review, post-grant review, and related petitions, run in lockstep with the district-court litigation and the business decision behind it.
A patent fight is increasingly decided twice, once in court and once inside the Patent Office. The Patent Trial and Appeal Board, or PTAB, conducts trial-like proceedings that can cancel claims faster and on a different record than a district-court jury, which is why so many infringement disputes now turn on what happens at the Board. For the party challenging a patent asserted against it, and for the owner defending one, the Board proceeding is often the main event.
These contests reward preparation and timing over volume. A challenger has a one-year window after being sued to file inter partes review, a narrow nine-month window for post-grant review, and one chance to frame the strongest grounds before estoppel narrows what can be argued elsewhere. A patent owner, in turn, must defend the claims that issued while protecting the broader portfolio and the litigation that depends on it. The decisions made in the first weeks tend to set the outcome.
We treat a PTAB matter as one front in a larger dispute. The forum, the grounds, the timing, the relationship to any parallel court case, and the path to the Federal Circuit are weighed together, with a single partner accountable for the whole. Where a matter requires registered patent counsel or deep technical knowledge, we coordinate with registered counsel and technical experts so the right people are in the room without fragmenting the strategy.
Petitions and patent-owner responses in IPR proceedings, challenging or defending issued claims on patents-and-printed-publications grounds, with the prior art, claim construction, and expert proof assembled into a coherent record.
Post-grant review petitions, filed within nine months of a patent's issuance to reach the broader invalidity grounds, eligibility and written description among them, that an inter partes review cannot. The covered-business-method program closed to new petitions in 2020.
Early decisions on whether to file, which proceeding to use, and how to frame the grounds, made against the deadlines, the estoppel consequences, and the parallel litigation before momentum forecloses the better option.
Aligning the Board proceeding with district-court patent litigation through stay motions, discovery sequencing, and estoppel management, so positions in one forum reinforce rather than undercut the other.
Briefing, expert declarations, depositions, and oral argument before the panel of administrative patent judges, prepared so the record carries through to the Board's final written decision.
Appeals of final written decisions to the U.S. Court of Appeals for the Federal Circuit, prepared from the outset so the positions taken before the Board are ones that can be defended on review.
A petition strong on the merits can still be refused. The Board may decline to institute because the parallel district-court case is near trial, or because the same art or arguments were already before the examiner, and that refusal cannot be appealed. The petition is written for the institution decision first and the merits second.
An IPR petition generally must be filed within a year of being served, and PGR within nine months of issuance. Miss the window and the Board challenge is gone for good.
A final written decision can estop a party from raising grounds it could have brought, so the choice of what to argue at the Board carries consequences far beyond that proceeding.
An inter partes review petition is capped at 14,000 words and must carry every ground, every claim construction and the supporting expert declaration, because new theories cannot be added in reply. Since 2018 the Board construes claims as a district court would, so a construction argued at the Board is one conceded in court.
The Board has its own admission and registration requirements for counsel; we coordinate with registered patent counsel and technical experts where required, without ceding the litigation strategy.
The Federal Circuit upholds the Board's findings of fact if substantial evidence supports them and reviews its legal conclusions afresh, so the declarations and the cross-examination transcript are what win or lose the appeal. Since 2021 a losing party may also ask the Director to review the final written decision before appealing.
Before anything is filed, the clock is read: the one-year service bar for IPR, the nine-month PGR window, and the estoppel each vehicle carries. Prior art is culled to the two or three grounds strong enough to survive, because whatever is left out may be argued once, or never.
The petition is the trial in miniature, with claim constructions, expert declarations, and mapped prior art fixed before the patent owner answers. The patent owner's preliminary response contests institution itself, including discretionary-denial arguments tied to the parallel court case, and the Board's institution decision is the gate the whole matter passes through.
Once instituted, the statutory schedule governs: patent-owner response, expert cross-examination by deposition, any motion to amend the claims, and petitioner reply, while stay motions and estoppel positions in the district court are managed in lockstep.
Oral argument before the panel of administrative patent judges leads to a final written decision on every challenged claim. That decision triggers estoppel in court and at the Board, and the record beneath it, assembled with this in mind from day one, is what the Federal Circuit reviews.
At the Board you argue your strongest grounds once, and estoppel keeps the receipt.
Patent office litigation is the contest over a patent's validity inside the U.S. Patent and Trademark Office rather than a district court, chiefly in the trial-like proceedings of the Patent Trial and Appeal Board, or PTAB. Through inter partes review, post-grant review, and related petitions, a challenger asks the Board to reconsider whether claims should have issued, and the patent owner defends them, on an accelerated schedule before a panel of administrative patent judges.
Inter partes review (IPR) challenges issued claims on patents-and-printed-publications grounds and can generally be filed nine months or more after a patent issues. Post-grant review (PGR) is broader, since it can reach additional grounds such as eligibility and written description, but it must be filed within nine months of issuance. Choosing the right vehicle, and the right timing, is one of the first decisions in a Board challenge, and we make it with the litigation as a whole in view.
They are two cases about one patent, and each constrains the other. A district court asked to stay its case weighs how far discovery has gone, whether the Board's decision will simplify the trial and whether the patent owner is prejudiced by the wait; the Board, asked to institute, weighs how close that trial is. Since 2018 both forums construe the claims under the same standard, so a position taken in one is a position taken in both. A final written decision then bars the petitioner from repeating in court any ground it raised or reasonably could have raised, which is why the petition is drafted with the trial in view.
Lead and back-up counsel before the PTAB are subject to the Board's admission and registration requirements. We coordinate with registered patent counsel and technical experts where required, and pair that representation with the litigation strategy, claim-construction judgment, and dispute management our clients retain us for.
Timing drives everything. A petitioner sued for infringement generally must file an IPR petition within one year of being served, post-grant review carries its own nine-month window, and once a trial is instituted the Board works to a statutory schedule that ends in a final written decision about a year later. Missing a window can forfeit the forum entirely, so we map the deadlines at the outset.
Yes. A final written decision of the Board can be appealed to the U.S. Court of Appeals for the Federal Circuit, and the record built before the PTAB largely determines what can be argued there. We prepare the proceeding with the appeal in mind, so the positions taken before the Board are ones that can be defended on review.
Infringement and validity disputes in the district courts, the court-side counterpart to a Board challenge, coordinated so the two forums work together.
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Explore →Reviewed by Jonathan D. Herpy, Sr., Senior Partner · Last updated October 2026 · Educational overview · Not legal advice
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