Challenging a patent before the Patent Trial and Appeal Board (PTAB) in an Inter Partes Review (IPR) or Post-Grant Review (PGR) proceeding can impact patent infringement litigation for both the patentee and the accused infringer. Statutory estoppel bars a Petitioner from raising invalidity arguments as a defense to district court patent infringement claims that were raised or reasonably could have reasonably been raised in an IPR or PGR. Patent Owner estoppel prohibits a patent applicant or owner from taking action inconsistent with an adverse judgment an IPR or PGR, including obtaining in a patent claim that is not patentably distinct from a finally refused or canceled claim.

The doctrine of dollateral estoppel can bar a patentee or accused infringer from taking positions in district court litigation inconsistent with a PTAB final written decision. This presentation will provide an overview of important estopel statutes, regulations and decisions. We will also discuss strategic considerations for both patentees and patent challengers for parallel PTAB and litigation proceedings, including how to minimize potential negative impacts of estoppel or use estoppel for strategic advantage.

Moderator:
Shruti Costales, Managing Member, Shruti Law PLLC

Speakers:
Jonathan R. Bowser, Partner, Haynes and Boone
Blaine M. Hackman, Counsel, Dechert LLP
Peter Sullivan, Partner, Foley Hoag
Ryan North Miller, Partner, Fox Rothschild

Please note there is a cost to attend. CLE credits are available.