Washington, D.C. intellectual property lawyer Matt Phillips talks about his approach to working with litigation counsel when handling an IPR. He explains that his team frequently collaborates with litigation counsel from other firms when handling inter partes reviews (IPRs), and that close coordination is essential—especially when it comes to aligning strategies and positions, such as claim construction. This alignment is crucial whether representing the patent owner or the petitioner.

In many cases today, he notes, prosecution bars restrict the degree to which litigation counsel can participate in IPR proceedings. Those situations often prompt his firm’s involvement, as they are brought in to provide focused post-grant expertise. Even when no such restrictions exist, litigation teams frequently seek his assistance because of his deep familiarity with the Patent Trial and Appeal Board (PTAB) and the procedural complexities of AIA trials.

He emphasizes, however, that his firm offers far more than procedural know-how. Their strength lies in understanding which arguments truly influence outcomes—knowing which issues to press, which to drop, and how to frame those arguments in a way that resonates with PTAB judges. He points out that advocacy before the PTAB requires a distinct approach compared to district court litigation, where judges may be less technically focused.

According to him, tactics that might be effective in district court often fail—or even backfire—before the PTAB. His firm’s experience allows them to tailor strategies precisely to the forum, ensuring that each position presented is both technically sound and strategically impactful.