When is winning an IPR a handicap in District Court litigation? One District Court issued—in its own words—a “counterintuitive” result allowing the patent owner to try claims invalidated by the PTAB in a FWD while prohibiting the accused infringer from challenging the validity of those same claims.

 

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SPEAKERS

Wayne Stacy, Travis Jensen

 

Wayne Stacy  00:00

Welcome, everyone to the Berkeley Center for Law and Technology's Expert Series podcast. I'm Wayne Stacy, the Executive Director for BCLT and your host today. Today's topic is the world of PTAB estoppel. And some of the odd outcomes that are impacting litigations with me to go over this topic is Travis Jensen, one of the country's top patent litigators from Orrick. So, Travis, thank you for joining us today. I look forward to hearing your thoughts on this odd case.

 

Travis Jensen  00:31

My pleasure. Thanks for having me.

 

Wayne Stacy  00:33

So the the case have been hinting at here is that the trust ID versus Next Caller case out of Delaware chat a little bit of write up and a little bit of head scratching. So tell us why this case is of any interest to people?

 

Travis Jensen  00:49

Well, I think it's because the case contrasts two aspects of PTAB related estoppel. And those are the statutory IPR estoppel provision and the equitable doctrine of collateral estoppel and it analyzed these in the same order and reached what the district court itself characterized as a counterintuitive result. It's something that I think a lot of practitioners kind of instinctively felt, you know, perhaps was unfair. And let me just read, I think, one statement from the the court's order that that highlights this, the court said, "The court understands that allowing plaintiffs to proceed at trial on claims that have been found by the PTAB to be invalid, while at the same time preventing defendant from asserting prior art defenses against these claims based on estoppel under 315 E2 seems counterintuitive. That said it is a permissible result that follows from the statute and relevant case law. So I think it's really the contrast of those two different types of estoppel that caught people's attention. Perhaps standing alone, you know, either of the court's rulings may not have been quite as interesting.

 

Wayne Stacy  02:07

So we're 10 years into the AIA and this estoppel provision, you know, doesn't seem to me that when Congress drafted the original estoppel provision, they were contemplating this particular result. Not sure what, what exactly they were contemplating on this interplay. But, but why are we still talking about estoppel, 10 years into this?

 

Travis Jensen  02:31

I think that's a fair question. And, you know, certainly the statutory estoppel provisions have received a lot of attention and airtime and have been, you know, the subject of numerous court decisions. But even those issues aren't fully resolved. Right, the Federal Circuit has yet to weigh in, at least in a definitive matter on the scope of the statutory estoppel. And, you know, what is reasonably could have raised mean, you know, on the collateral estoppel front here, the issue preclusion, you know, I think that's received a lot less attention for a few different reasons. You know, number one is, you know, in the early days, you know, the, the IPR's we're essentially validating a lot of patents, and so they wouldn't come back to the district court. Right, which is the only place or the primary place where this issue would would come up o