The article discusses the request by some patent owners to ask the Patent Trial and Appeal Board to kill claims in their own patent. Requesting an adverse judgment can save resources and may provide strategic advantages for patent owners.
In the article, Shah discusses the benefits of requesting adverse judgment in the existing inter partes review (IPR) proceedings to avoid IPR Joinder. “By eliminating the first-filed IPR through an adverse judgment, a patent owner has an opportunity to prevent the second-filed petition from joining the first-filed petition,” said Shah. “And then, obviously, if it’s statutorily barred you’ve avoided, at least vis-à-vis those defendants, the opportunity for them to challenge those claims through an IPR.”
Shah is co-chair of post grant proceedings at Brooks Kushman and serves as the firm’s chief diversity officer. Her practice primarily focuses on post-grant challenges and patent opinions. She represents several Fortune 500 clients, providing strategic counseling and guidance on their global IP portfolios.
The full article can be found on the Law360 website here.