Inter Partes Review (IPR)
With the newly enacted America Invents Act (AIA) of 2012, a new type of litigation was introduced – Patent Trial and Appeal Board (PTAB) litigation. Dr. Cole has been at the forefront of getting involved with PTAB cases since their inception and finds that his real-world experience is invaluable when it comes to these cases, including Inter Partes Review (IPR). Dr. Cole has worked on both sides of an IPR, for the petitioner and for the patent owner, and understands the nuances that come with both sides.
Case Study 1: Patent Owner – While on the stand at trial testifying for a patent infringement case, opposing counsel took note of Dr. Cole’s exceptional expertise and knowledge as an expert witness, and after the infringement case had closed and any potential conflicts had ended, he was contacted by opposing counsel to work on several IPRs with them. The client the firm represented was the patent owner in multiple recently filed IPR cases. In addition to writing his declaration for the case, he also provided information to the attorneys about how to handle certain technological issues in their responses to the petitions. In all of the IPRs, institution was denied, and the patents were upheld.
Case Study 2: Petitioner – On the other side of the spectrum, Dr. Cole has worked with several petitioners on IPRs. Dr. Cole helps many firms and their clients with their IPR cases. On a recent case, he was brought in by a firm to help with claim construction and initial review of the technology and prior art. He also helped explain the technology in great detail to the attorneys who were not as well versed in security jargon. This, combined with Dr. Cole’s declaration, helped the attorneys when writing the technical portions of their petition. This case was ultimately a success for the client – all claims were found unpatentable.