Anna Brook and Larry Kass in Law360: PTAB Reveals Route To IPR Institution Denial In Parallel Cases

Law360 recently published an article authored by Culhane Meadows’ New York partners, Anna Brook and Larry Kass, about strategizing for venue in patent cases based on recent decisions by the PTAB.

Here’s a short synopsis of the article:

Who’s got dibs to decide a patent validity dispute is a question increasingly being asked of the Patent Trial and Appeal Board.

In 2011, the Leahy-Smith America Invents Act created an inter partes review process that often led to patent validity battles on two fronts: litigations in district court and IPRs before the PTAB.

Early on, district courts commonly stayed cases in favor of pending IPRs. Increasingly, patent owners are asking that the PTAB deny instituting IPRs in favor of pending district court proceedings. So, who’s got dibs?

It’s no secret that patent owners generally prefer to litigate in district court, while patent challengers generally prefer IPRs, which require a lower standard of proof to invalidate patents. A request for the PTAB to use its discretion to deny instituting an IPR under Title 35 of the U.S. Code, Section 314(a), is one tool patent owners are increasingly using to shut down IPRs in favor of district court proceedings.

On March 12, the U.S. Court of Appeals for the Federal Circuit held in Mylan Laboratories Ltd. v. Janssen Pharmaceutica NV that it does not have appellate jurisdiction over PTAB decisions denying IPR institution,[1] which means patent owners and challengers have one chance to argue which tribunal gets dibs.

The PTAB’s March 2020 precedential decision in Apple Inc. v. Fintiv Inc.,[2] or Fintiv I, as well as two decisions made precedential in December 2020, and several others provide guidance regarding when a request to deny institution in favor of a parallel court case may succeed or fail, and how parties can improve their chances of a favorable outcome.

Read the entire article HERE.

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