Interface Between PTAB Contested Proceedings and District Court Litigation

 

Most contested proceedings before the Patent Trial & Appeal Board involve patent claims in parallel litigation in the district courts. Often the district court action is stayed pending completion of the contested proceeding, at least at the PTAB stage before appeal to the Federal Circuit.  This creates a multitude of issues that will be addressed in this webinar.  For example, the different burdens of proof and claim construction standards between the two parallel proceedings will be examined.  The district court analysis in granting or denying a stay will be addressed along with the complex estoppel rules affecting PTAB proceedings and district court actions.  The limited discovery in PTAB proceedings and the possible use of discovery from the district court in the PTAB proceeding will be examined. Protective orders in both proceedings and the limited ability to treat evidence confidential in contested proceedings make evidentiary consistency between the proceedings problematic.  The real party in interest and privity rules in contested proceedings and the timing requirements for bringing a contested proceeding after service of the complaint in the district court will be addressed. These and other important cutting edge issues will be discussed by top experts:  Donald R. Banowit, chapter editor of Chapter 16 (Office-District Court Interface) of Patent Office Litigation (Thomson Reuters West), a very experienced patent office litigator, and Jamie H. McDole, Haynes and Boone, LLP, a highly experienced patent litigator, will be interviewed by Robert Greene Sterne, Editor-in-Chief of Patent Office Litigation (TRW).