IPR Estoppel One Year After SAS (RECORDING)
In SAS v. Iancu, the U.S. Supreme Court required the PTAB to decide the patentability of every claim challenged in a petition for inter partes review. SAS did not directly address IPR estoppel, but its holding has indirectly broadened this doctrine. This development is now playing itself out in the courts, with significant consequences for all those involved.
This seminar will address how district courts have applied IPR estoppel in the year since SAS was decided. Panelists will not only highlight recent cases, but will also provide tactics for both plaintiffs and defendants to make arguments about the proper scope of IPR estoppel in district court litigation. This is ever more important because of the large shift in district court fights to a case-by-case analysis to determine what art “reasonably could have been raised.”
The panel will include the post-grant proceedings director of a major patent owner and two law firm attorneys with vast experience before the PTAB, district courts, and the Federal Circuit. The topics they will address include:
- SiOnyx v. Hamamatsu Photonics (D. Mass.) and the principle that “after SAS [a narrow view of AIA estoppel] cannot be correct”
- Oil-Dri Corp. of America v. Nestle Purina Co. (N.D. Ill.) and the increasing importance of on-sale prior art that can be used in district court, but that could not have been raised in the IPR
- The pending Federal Circuit appeal in BTG International Ltd. et al. v. Amneal Pharmaceuticals LLC et al. and whether the America Invents Act stops patent challengers who won at the PTAB from pursuing their winning arguments in court
- Grantland Drutchas, McDonnell Boehnen Hulbert & Berghoff LLP
- James Hietala, Intellectual Ventures Management, LLC
- Eliot Williams, Baker Botts LLP
McDonnell Boehnen Hulbert & Berghoff LLP
is a founder and current managing partner of McDonnell Boehnen Hulbert & Berghoff LLP. He has more than 20 years of experience in the practice of IP law, with a particular emphasis on litigation, licensing, and client counseling. Grant serves as chair of the firm’s PTAB Trials Practice Group, its Licensing Practice Group, and its Litigation & Appeals Practice Group. His experience includes both jury and bench trials, as well as arguing before the U.S. Court of Appeals for the Federal Circuit. He is a vice chair of IPO’s Pharmaceutical and Biotechnology Issues committee.
Intellectual Ventures Management LLC
is director of post-grant proceedings at Intellectual Ventures Management LLC. He has, at times, managed 30 simultaneous cases at the PTAB. He also plays an influential role at his company in setting the strategic direction on post-grant (IPR, CBM, and reexam) proceedings involving mechanical and electrical technology. Previously, James worked in private practice. He is a member of the IPO Post-Grant Patent Office Practice committee.
Baker Botts LLP
Eliot Williams is head of the IP practice in the Palo Alto office of Baker Botts and chair of its firm wide PTAB practice. Eliot is actively involved in Arthrex-spurred matters on behalf of clients.