PTAB Proceedings (IPR and PGR)

HKW represents clients in PTAB proceedings before the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board, including inter partes review (IPR) and, where applicable, post-grant review (PGR). We handle PTAB matters for both petitioners and patent owners, and we approach PTAB strategy as a litigation discipline: record-driven, schedule-intensive, and tightly aligned to business objectives.

Lead Attorneys

For PTAB proceedings, clients often begin with: Steven G. Hill and David K. Ludwig.

Why HKW for PTAB Proceedings

• PTAB as litigation discipline: our petitions and responses are engineered for decisional clarity—tight claim construction, clean prior-art mapping, and credible expert support.
• Experience on both sides: we represent petitioners and patent owners, tailoring strategy to institution risk, evidentiary posture, and business objectives.
• Discretionary denial and gatekeeping focus: early analysis of time bars, RPI/privity, and discretionary denial posture to manage avoidable PTAB risk.
• Parallel-proceeding integration: consistent claim construction and technical themes across PTAB and district court, with stay posture treated as a venue- and judge-specific strategy decision.
• Appeal-proof record: record development designed to preserve the best issues for rehearing/Director review and Federal Circuit appeal when needed.

Integrated PTAB Strategy

PTAB outcomes are frequently decided by a small number of issues: claim construction, prior-art mapping, motivation to combine, expert credibility, and how clearly the papers present (and rebut) the key merits narrative. HKW’s approach emphasizes:

• Petition architecture that is readable, decisive, and proof-ready
• Early assessment of time bars, real-party-in-interest/privity, and discretionary denial posture
• Claim construction positions that remain coherent across parallel proceedings
• Expert declarations and cross-examination planning built around what the Board must decide
• A record designed to preserve issues for rehearing/Director review and Federal Circuit appeal, if needed

Petitioner Representation

For petitioners, PTAB proceedings are often used to challenge validity efficiently on prior-art grounds. Our petitioner-side work focuses on selecting the right claims and grounds, presenting the strongest prior art, and framing the issues to maximize institution likelihood and final written decision outcomes—while also managing downstream estoppel and parallel-litigation considerations.

Patent Owner Representation

For patent owners, PTAB defense is a fast-moving, paper-intensive process that requires strategic discipline. We focus on defeating institution where possible, preserving claim scope and commercial value, and using record-driven argumentation to rebut obviousness/anticipation theories. In appropriate cases, we also handle motions to amend and associated evidentiary support where amendment strategy aligns with business objectives.

Parallel District Court Litigation

PTAB proceedings frequently run alongside district court litigation. We regularly coordinate PTAB posture with district court strategy, including:

• Consistent positions on claim construction and technical themes
• Scheduling and stay considerations that are venue- and judge-specific
• Managing discovery and confidentiality while keeping the record clean
• Coordinating expert strategy and avoiding contradictions that erode credibility
• Planning for how PTAB outcomes affect settlement leverage and case valuation

Technology Scope

HKW’s PTAB practice spans a wide range of technical subject matter, including:

• Computer systems, software, and networking technologies
• Electronics and firmware/BIOS-level functionality
• Telecommunications and signal-processing concepts
• Consumer devices and accessory ecosystems
• Medical devices, healthcare technology, and life sciences
• Mechanical and industrial systems

The objective is always the same: build a PTAB record that is technically credible and legally decisive.

Related IP Litigation Capabilities

HKW coordinates strategy across related IP proceedings and appeals. See also:

• Patent Litigation
• Federal Circuit Patent Appeals
• Intellectual Property Litigation

Representative PTAB Matters

Apple Inc. v. R.N. Nehushtan Trust Ltd.

IPR2023-00230; IPR2023-00231

Represented patent owner in IPRs challenging cellular-device anti-hacking/anti-cloning security technology (device-unique authentication and access controls); PTAB denied institution.

Spin Master Inc. v. Interactive Play Devices LLC

IPR2021-00314; IPR2021-00316; IPR2021-00317

Represented patent owner in IPRs involving interactive toy/play-device technology; proceedings terminated pre-institution following settlement.

Nested Bean, Inc. v. Big Beings USA Pty Ltd

IPR2020-01234

Represented patent owner in IPR involving infant sleepwear/swaddling products; Director review modified the final written decision, preserving patentability of the independent claim and related dependent variants.

Syrinix, Inc. v. Blacoh Fluid Control, Inc.

IPR2018-00414; IPR2018-00415

Represented patent owner in IPRs involving pressure-monitoring and fluid-control systems; final written decisions upheld certain claims and granted a motion to amend in part.

Cradlepoint, Inc. v. Sisvel International S.A.

IPR2020-01071

Represented petitioner challenging cellular-network signaling patents (cell reselection / connection rejection messaging); final written decision found the challenged claims unpatentable.

TV Management, Inc. v. PerDiemCo LLC

IPR2016-01061; IPR2016-01064; IPR2016-01278

Represented petitioner challenging location-information/GPS tracking patents; final written decisions found the challenged claims unpatentable.

American Megatrends, Inc. v. Kinglite Holdings Inc.

Represented petitioner in 16 different IPR proceedings on BIOS and related power management remote systems; final written decisions found the challenged claims unpatentable.

Strategic Questions for PTAB Proceedings (IPR / PGR)

Should a party file an IPR or PGR, or litigate validity only in district court?
Not every patent dispute belongs at the PTAB. The right answer usually turns on the quality of the prior art, the claims that actually matter commercially, the timing constraints, and whether a PTAB result will materially change leverage in the district court case. When the art is strong and the petition can be filed on a disciplined schedule, PTAB proceedings can narrow the case quickly and reset settlement posture. When the filing is late, forced, or built on marginal grounds, the better course may be to preserve resources for district court and avoid unnecessary estoppel.

What makes a PTAB petition likely to be instituted?
Most institution decisions turn less on volume than on clarity. The Board responds to petitions that identify the right claims, present one or two strong grounds, tie claim construction to the merits, and make the prior-art mapping easy to follow. Petitions lose force when they try to do too much: too many grounds, too many references, or expert opinions that ask the Board to fill in gaps. HKW approaches petition drafting as decisional writing; if the Board cannot see a clean path to institution, the petition is already in trouble.

How do timing, discretionary denial, and real-party-in-interest issues affect PTAB strategy?
Many PTAB matters are won or lost before the merits. A disciplined strategy starts with the threshold issues: one-year bar dates, related-party and control questions, indemnity relationships, parallel-litigation timing, and any facts that could support discretionary-denial arguments. Those issues should be audited before a petition is drafted. A petition with a strong merits theory can still fail if the timing is wrong or the petitioner relationships are not handled cleanly.

How should patent owners defend an IPR?
Patent owners usually get the most leverage by attacking the petition where it is structurally weak, not by answering every sentence in equal depth. In practice, the best defenses focus on a few decisive points: why institution should be denied, why the claim construction is wrong, why the prior art does not actually teach the claimed combination, and why the petitioner’s expert has overreached. Consistency matters as much as substance. If the patent owner is also litigating in district court, every PTAB filing should fit within one coherent merits story.

When does a motion to amend make strategic sense?
A motion to amend is not a cosmetic fallback. It makes sense only when the amended claims preserve real commercial value, have clear written-description support, and avoid the best prior art without creating new vulnerability. The amendment strategy also has to work beyond the PTAB. If the claims survive, they still need to benefit licensing, enforcement, and any parallel litigation. HKW treats motions to amend as business-critical claim drafting, not just an end-stage procedural move.

How should PTAB and district court positions be coordinated?
Parallel proceedings create opportunity only if the positions actually line up. Claim construction, technical characterization, expert opinions, and stay posture should be coordinated from the start. A party that says one thing to the Board and another thing to the district court usually loses credibility in both places. The most effective PTAB strategy is integrated strategy: every filing should improve the client’s position across forums, not solve one problem by creating another.

What should clients expect after institution or after a Final Written Decision?
Once a case is instituted, the pace is fast and the record is largely paper-driven. Every declaration, cross-examination, and demonstrative should be built with the final written decision, and possible Federal Circuit review, in mind. After a final written decision, the next step is not automatic. The real question is whether the best point is a merits issue, a procedural issue, or an issue better suited for rehearing, Director review, or appeal. Strong post-decision strategy starts long before the decision issues.