Appeals from the PTAB: Laying the Groundwork for the Federal Circuit

February 6, 2014
IP Owners Association, IP Chat Channel

The panel includes a former Federal Circuit judge, in-house counsel and Oblon's Scott McKeown. These panelists, all of whom are deeply involved in post-grant proceedings, will consider:

  • What happens to prior art that was ruled redundant by the PTAB? In the interest of streamlining its cases and meeting deadlines set by statute, the PTAB often prunes back petitions and declines to rule on many pieces of prior art. These pieces of prior art remain “in the background,” say some experts, and could mean the PTAB decision is not a final judgment. Will such cases be remanded back to the PTAB? Could such remands constitute an orphan class of post-grant proceedings that fall outside of the statutory deadlines?
  • How will issues regarding litigation estoppel play out and will they trigger more litigation? Complications have already arisen in IPR petitions that involve different parties where one has indemnified the other from a claim of patent infringement. It is unclear if the existence of a contract/indemnification clause creates privity between the contracting parties under the IPR statutes, or if it renders an indemnitor a real-party-in-interest with respect to the indemnified party. While analyzing the legal and institutional landscape, our panelists will advise companies currently involved or soon-to-be-involved in post-grant proceedings at the PTAB how they can act now to maximize their success on appeal at the Federal Circuit.