While IPR petitioners may only challenge patent claims based upon patents and printed publications (§§ 102 and 103), the PTAB trial record can be leveraged in parallel district court proceedings on related issues. For example, PTAB fact findings on claim construction have been adopted by district courts on motions for summary judgment.
Full Answer
Can the district court and the patent appeal board reach different conclusions on the validity of a patent?
Recently, the Federal Circuit confirmed that it is permissible for the district courts and the Patent Trial and Appeal Board (PTAB) to reach different conclusions on the validity of challenged patents, even when presented with substantially the same evidence. Inconsistent post-grant validity determinations may arise due to ...
Did the PTAB commit legal error?
Given these considerations, the Federal Circuit held that the PTAB did not commit legal error. Id. Novartis therefore provides an example of where the PTAB and the courts may arrive at different results. In this instance, the PTAB was not bound by the district court’s determination that the claims were not invalid.
Does Baxter's aspirational statement mandate that the PTO reach the same conclusion as a district?
The Federal Circuit also explained that Baxter’s aspirational statement—that the PTO “ideally should not arrive at a different conclusion” if presented with the same evidence that was considered by the district court—does not mandate that the P TAB must reach the same conclusion as a district court. On the contrary, the Federal Circuit explained ...
Description
The AIA offers alternative procedures to challenge patents. However, use of these procedures does not eliminate civil litigation and makes it more likely that the parties will be involved in concurrent USPTO and court proceedings regarding a patent's validity.
Faculty
Mr. Kiklis focuses on post-grant counseling, patent litigation and patent prosecution. With an extensive... | Read More
Access Anytime, Anywhere
Strafford will process CLE credit for one person on each recording. All formats include course handouts.