On March 17, 2016, Leech Tishman intellectual property partner Jeffrey Sheldon participated in the first inter partes review (“IPR”) hearing held by the San Jose branch of the U.S. Patent and Trademark Office Patent Trial and Appeal Board (“USPTO”). The patent at issue was asserted against Leech Tishman’s client Tre Milano LLC, in District Court. Tre Milano is an innovative Southern California company developing and marketing hair styling devices. Leech Tishman was able to get the District Court case stayed in favor of the IPR. If Leech Tishman is successful in the IPR, a lot of money will be saved for Tre Milano since IPR proceedings are much less expensive than District Court patent infringement cases.

IPR hearings are a relatively new proceeding at the USPTO, held as part of several patent reforms that were enabled by the America Invents Act (“AIA) signed into law on September 16, 2011. The purpose of these hearings is to adjudicate the validity of issued patents.

The hearings are held before a panel of three administrative patent judges. The petitioner and patent owner are both given an hour to summarize their positions. The Board has the opportunity to ask questions about the respective parties’ positions. Parties may reserve some of their hour for rebuttal time. During the hearing, the Board considers arguments related to claim construction, the validity of the challenged claims and occasionally, amended claims submitted by the patent owner.

These proceedings are meant to be led by highly-skilled and experienced patent petitioners. In order to succeed in the hearing, it is essential for the attorney representing the patent owner to have an in-depth knowledge of patent office procedure, the patent record at issue and the patent prosecution process.

For more information about Jeff Sheldon’s experience at the first inter partes hearing in San Jose, CA please read this article recently published in Law360.

Questions about the inter partes hearing process can be directed to Jeffrey G. Sheldon, a Partner in Leech Tishman’s Intellectual Property Practice Group. He is based in the Pasadena office. Jeff can be reached at 626.796.4000 or jsheldon@leechtishman.com.

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Leech Tishman Fuscaldo & Lampl is a full-service law firm dedicated to assisting individuals, businesses, and institutions. Leech Tishman offers legal services in alternative dispute resolution, bankruptcy & creditors’ rights, construction, corporate, employee benefits, employment, energy, environmental, safety & toxic torts, estates & trusts, family law, government relations, immigration, insurance coverage & corporate risk mitigation, intellectual property, internal investigations, international legal matters, litigation, real estate, and taxation. Headquartered in Pittsburgh, PA, Leech Tishman also has offices in Chicago, Los Angeles, New York and Wilmington, DE. For more information call 412.261.1600 or visit us at www.leechtishman.com.