Patent Attorneys Pivot Focus After Tumultuous Tribunal Changes

For the past five years, patent lawyer Steve McBride focused on clients fending off validity challenges at a US Patent and Trademark Office tribunal. But after sweeping agency changes threatened that workload, he began searching for a new job.

McBride left his Patent Trial and Appeal Board-focused law firm in October for more district court-focused work at Villegas & Cefo.

McBride is one of more than half a dozen lawyers who told Bloomberg Law they’re adjusting to the new patent landscape after a year of tumultuous change. Attorneys said they’re polishing up old skills specific to other patent-law venues and marketing themselves more broadly in response to PTO leadership’s efforts to curb the number of patent challenges taken up by the PTAB.

“We’re starting to see an industry shift,” said Kevin McNish, a Maine-based PTAB practitioner who represents both patent owners and challengers.

When the America Invents Act took effect in 2012, lawyers began carving out specialties attacking or defending patents in administrative proceedings called inter partes reviews before the PTAB’s technical judges—so much so that a specialized practitioners’ organization sprung up. The PTAB Bar Association now has more than 700 members.

But since President Donald Trump took office in January, the agency has rolled out a series of changes to the IPR process. Challenges are now filtered through an approve-or-deny decision by the agency’s director before any review on the merits, and many have been turned away for reasons including the length of the patent’s existence or the pace of parallel district court litigation.

Where 65.4% of IPR petitions advanced toward trial in 2024, since June 2025 that institution number is 30%, according to a Bloomberg Law review of PTO records.

Lawyers say they’re rolling with the punches.

“Patent practitioners will be fine. They can do district court litigation and have more billable hours in the aggregate,” said Kit Crumbley, a former PTAB judge who practices before the tribunal. “It’s the system and the litigants that’ll be worse off.”

Ex-Parte Pivot

Validity challenges attacking patents’ weaknesses are a key strategy for defendants sued for infringement. Such issues can also be raised in district court, but practitioners say they’re highly technical and can be hard for jurors to understand.

Over the last 13 years, IPRs have been the go-to forum where defendants make their cases on validity.

With that avenue increasingly unavailable, they’re turning to an older type of proceeding that predates the PTAB: ex parte reexamination. Any person or company can ask the PTO to reexamine a patent based on an earlier invention or combination of inventions that render the patent obvious.

Patent-infringement defendants are now requesting reexams in record numbers, often in lieu of IPRs, according to filing data analyzed by law firm Ice Miller. That’s led patent owner-side attorneys to increase attention toward reexam responses, which will cushion the impact of any potential decrease in IPR work, said Kenneth Weatherwax, managing partner at Lowenstein & Weatherwax, a PTAB-focused firm.

“Given the situation where it’s a significant practice for us, it behooves us to try to have strategies where it’s not our only source,” Weatherwax said.

IPR work hasn’t completely “fallen off a cliff,” said Joshua Goldberg, who previously led Finnegan’s PTAB trials section, which works with both patent owners and petitioners. The total volume of work for his practice group has gone up, “contrary to what you might expect,” he said, pointing to the combination of previously instituted IPR cases and the surge in reexam work.

Unlike with IPRs, where the patent challenger and owner square off in trial-like proceedings, a reexam is between only an examiner and the patent owner. The proceedings frequently end with the patent owner tweaking the language of one or more patent claims to distinguish them from the “prior art” flagged by the requester.

That means the workload drop is starker for defense-side lawyers representing companies accused of infringement.

“There’s not a whole heck of a lot to do as a requester” of a reexam, McNish said. “You file the request, and basically you’re done.”

“Reexam work will keep counsel for patent owners busier, even though it’s not quite as much work as an IPR,” he added.

District Court

Lawyers who shifted to PTAB practices after experience with district court litigation or patent applications should be dusting off those old skills, McNish said. “Flexibility in what you’re doing is going to be paramount.”

Several practitioners noted that new patent-infringement suits in federal courts have ramped up, even as new IPR activity has diminished. There’ve been 4,351 patent-infringement lawsuits filed nationally through December 15, a 19% increase from the same period last year.

McBride said he’s taken on more district court litigation since leaving Carmichael IP and joining Villegas & Cefo, which meant brushing up on discovery procedures and damages calculations.

“It is potentially a problem for a lot of practitioners that have come up in the PTAB or former patent judges,” he said. “I don’t know how well that skill set translates to district-court litigation.”

Though new IPR petitions are down—682 were filed from June through November of 2024, compared with 602 for the same period this year—companies haven’t abandoned the procedure.

That continued interest may reflect a bet that federal courts could still undo some of the PTO’s more aggressive efforts to scale back IPRs, Goldberg said.

He noted that patent suit defendants have filed 12 challenges to the PTO’s IPR-institution changes in the form of requests for writs of mandamus at the Federal Circuit this year. Six have been rejected, and six are pending.

“There’s still companies on the defense side who look at what’s been happening, and take the view that it’s wrong and at some point a court may step in and adjust what’s happening,” Goldberg said.