Ashe P.C. - Intellectual Property Attorneys - About Us

About Ashe, P.C

 

ASHE, P.C. is unique in its ability to bring to the table years of lead counsel experience before the Patent Trial and Appeal Board ("PTAB," formerly the Board of Patent Appeals and Interferences).  In-house and outside counsel routinely retain ASHE, P.C. to assist in the evaluation and execution of complex strategies involving proceedings before the PTAB, which often concurrently involve foreign and domestic prosecution, foreign opposition proceedings, district court litigation, and other post-grant proceedings at the USPTO.  As a small firm, ASHE, P.C. can be efficiently integrated into existing in-house and/or outside legal teams to provide high-caliber and cost-effective representation and advise.

What role does ASHE, P.C. play in the cases in which it is involved?

Mr. Ashe routinely serves as lead counsel or backup lead counsel in proceedings before the Patent Trial and Appeal Board and in appeals to the Court of Appeals for the Federal Circuit.  In this capacity, Mr. Ashe develops a global case strategy, taking into account related patents and applications (foreign and domestic), post-grant proceedings at the USPTO, and/or district court proceedings.  Additionally, in his capacity as lead or backup lead counsel, Mr. Ashe develops and executes motions strategies, including the development of appropriate documentary and testimonial evidence, depositions, and oral presentations to administrative patent judges at various stages of the proceeding. 

Mr. Ashe also routinely serves in an advisory capacity.  For example, although not making an official appearance in the case, Mr. Ashe is often retained to assist lead counsel in developing and executing case strategy, reviewing draft pleadings, and preparing for presentations to one or more administrative patent judges. In other cases, Mr. Ashe is retained by third parties to evaluate active or potential proceedings before the PTAB and to provide insights into the course of the proceedings.  Mr. Ashe is also often retained to serve as a panelist for mock hearings before the PTAB, thereby preparing lead counsel for the procedural and substantive issues that might arise at oral arguments.   

ASHE, P.C. also routinely advises clients regarding cases before or after involvement in a proceeding at the PTAB.  For example, ASHE, P.C. routinely advises clients regarding various claim-copying strategies related to interference (and derivation) proceedings under 35 U.S.C.  § 135.

Are the new proceedings available under the America Invents Act similar to interference proceedings?

Yes, there are significant similarities between interference proceedings and the AIA proceedings (see chart comparing PTAB proceedings).

Issues of patentability are routinely raised and decided in interference proceedings and these patentability issues are often dispositive in interference proceedings before the issue of priority of invention is ever briefed or decided.  The new proceedings under the AIA provide similar opportunities to challenge the patentability of patent claims.  For example, Inter Partes Review (IPR) proceedings can be used by third parties to challenge patent claims based on patents and printed publications.  Post-grant review (PGR) proceedings can be used by third parties to challenge qualified patent claims based on patents, printed publications, and a variety of other patentability grounds.  Therefore, substantively, essentially the same issues of patentability that can be raised in the inter partes context of an interference proceeding may be raised in one or more of the proceedings available under the AIA.

Procedurally, the post-grant proceedings available under the AIA are grounded in procedures that have been developed over the past fifteen years of interference proceedings.  In 1998, the Trial Section of the Board of Patent Appeals and Interferences was created and marked the beginning of a concerted administrative effort to streamline the timing and efficiency of interference proceedings.  In 2004, the USPTO implemented a significant restructuring of the rules governing contested cases before the Board and, simultaneously, created the framework for new inter partes proceedings such as those available under the AIA. 

Bottom line: Although the new AIA proceedings mark a very significant development in U.S. patent law and have provided seemingly limitless opportunities for discussion and postulation by numerous members of the legal community, the rules and orders that govern these AIA proceedings are heavily grounded in the experience and philosophy of the Board over the past fifteen years in interference proceedings.  Therefore, the insights of counsel who have practiced before the Board during this time period have proven to be an invaluable asset for in-house or outside counsel contemplating involvement in the AIA proceedings.     

What do clients like about ASHE, P.C.?

ASHE, P.C. works almost exclusively with corporate legal departments and their outside law firms, i.e., individuals who have a lot of experience dealing with lawyers.  Far and away, the strongest and most consistent feedback we receive is directed to the quality of our service.  Clients value the fact that Mr. Ashe will be the individual who reads the case file, who personally develops and executes the case strategy, and with whom the client will speak directly regarding the case.  Likewise, clients value Ms. Nguyen’s monitoring and maintenance of all case files and the timely and complete reporting of case activity.  ASHE, P.C. strives to maintain a balanced caseload so that each case for which we are retained receives our fullest attention.   ASHE, P.C.’s business model is not grounded on a desire to accept every case that comes to our door but, rather, on a desire to do the best work possible on each case for which we are retained.  Almost 100% of our work is based on referrals from in-house counsel, outside co-counsel, and (quite remarkably) opposing counsel, with (or against) whom we have worked in the past.  

Does ASHE, P.C work with other law firms to assist in the representation of clients?

Yes, ASHE, P.C. routinely works with other law firms in the representation of clients.  For example, ASHE, P.C. often serves as lead counsel in PTAB proceedings, while another law firm serves as backup lead counsel, or vice-versa.  Often, the other law firm has a pre-existing relationship with the client as a result of ongoing prosecution and/or litigation.  This is a beneficial arrangement for a number of reasons: the client obtains efficient and effective counseling while preserving the knowledge of the case vested in its pre-existing counsel; pre-existing counsel maintains an ongoing relationship with its client; and ASHE, P.C. has an opportunity to develop a relationship with a new client and law firm. 

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