Exploring the Intersection of Litigation and Post Grant Proceedings at the USPTO: A Comprehensive Analysis of Concurrent Proceedings

One of the most significant changes in U.S. patent litigation due to the America Invents Act of 2011 (AIA) was the introduction of trial proceedings for addressing patent validity before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). Typically, petitions for PTAB trials are filed against patents that are also involved in ongoing district court litigation. As PTAB proceedings and district court cases often run simultaneously, managing both effectively is crucial for achieving favorable outcomes. This webinar will cover key aspects of PTAB trials, their impact on concurrent district court patent litigation, and strategies for managing and coordinating both proceedings. Topics will include stays in litigation, district court factors affecting the institution of proceedings, and handling the impact of denials of Inter Partes Review (IPR) based on factors in district court litigation

We will also delve into five critical areas where district court litigation and IPRs differ practically and how to leverage these differences effectively. Given the complexities of these parallel proceedings, Ms. Mojica will address:

• Legal Standards
• Timing
• Settlement
• Discovery
• Trials
• Appellate Standards of Review

Learning Objectives:

1. Review the differences between district court and PTAB proceedings to determine the best fit for your case
2. Gain insight into the practical implications of legal standards in both types of proceedings
3. Acquire strategies to effectively navigate and leverage the interplay between these proceedings for a successful outcome