Event Session
Navigating Parallel Patent Challenges at the PTAB and in Federal Court
January 28, 2025 @ 9:30 AM EST
9:30 AM ET
January 28, 2025
Navigating Parallel Patent Challenges at the PTAB and in Federal Court
Navigating parallel proceedings is fraught with risk. What you do say in one tribunal can and will be used—for better or for worse—in front of other tribunals. And what judges in one tribunal decide can and will be used by the parties in front of other tribunals. And what is the state of interplay between proceedings before district courts and the Patent Trial and Appeal Board, or in other words where do we currently stand on the continuing viability of Fintiv, and what happens when the PTAB adopts a claim construction that contradicts the claim construction already adopted in federal district court in a parallel proceeding?
The panel will also spend time discussing argument consistency and making sure that what you say in one forum is consistent, or consistent enough to not feel contradictory, which can at times be a real challenge. Often you do not know the metes and bounds of the claim, but you think you know that the claim—regardless of construction—reads on the prior art. How can this needle be threaded to avoid inconsistent arguments, or at least the appearance of inconsistent arguments.
Another issue the panel will discuss is how often times district courts like to streamline complaints and narrow issues, which means not every claim of every patent will be litigated. But which claims will the district court allow to go forward? One of the most troubling issues with parallel proceedings is that you never get to the point quick enough in the district court to know which claims you really need to challenge at the PTAB, so you wind up needing to attack more than you normally would (or should) at the PTAB.
The panel will also discuss the impact of stays and what happens with cross assertion situation.
Materials
SCOTUS Passes on Intel’s Bid to Overturn Fintiv
Federal Circuit Upholds PTAB Claim Construction Conflicting with Parallel District Court Proceedings
Survey
? Navigating parallel proceedings is fraught with risk. What you do say in one tribunal can and will be used—for better or for worse—in front of other tribunals. And what judges in one tribunal decide can and will be used by the parties in front of other tribunals. And what is the state of interplay between proceedings before district courts…
Session Speakers
Todd Walters
Shareholder, Chair, Patent Office Litigation Practice and Co-Chair, IP Section
Buchanan Ingersoll & Rooney
Thank You to Our Sponsors!
