There are arguments that you could simply never present and win effectively in a jury trial that you can present at the U.S Patent Trial and Appeal Board (PTAB). The Board has rocketed to a leading role very quickly as a venue for raising patent challenges. The panels of three judges at the PTAB are digging into the merits of patent validity disputes in a way that you can't find in any other forum.In a typical invalidity case, there are very important technical engineering arguments and technical and complex legal arguments that are not well suited to presentation to a lay jury. If you go to the PTAB, on the other hand, the matter will be reviewed before three judges who have technical training and also have tremendous experience in patent law.
One of the big reasons the PTAB is a “game changer” is the change in the cost of defending yourself against a patent assertion. It literally changes the balance of power in negotiating a resolution to one of these disputes, so by pulling out the issue of patent validity and dealing with that first and separately - -there can be limited discovery with limited disruption to clients and executives, and with limited cost and disruption to retrieve key documents.
In short, setting aside the issues of infringement, damages and other issues that can be a huge burden on a company really changes the cost of defending yourself against a patent charge.
At Ropes & Gray, we have a unique hybrid of lawyers who have both courtroom experience and deep PTAB understanding. We put a team on the field that other firms cannot match.