' Something Like Deference: PTAB and 1-Way Issue Preclusion | MTTLR

Something Like Deference: PTAB and 1-Way Issue Preclusion

The patent law system currently has an interesting parallel track open for those seeking to oppose a patent. That parallel track runs through both litigation in the district courts and Inter Partes Review [IPR] at the Patent Trial and Appeals Board [PTAB], a part of the Patent and Trademark Office [PTO]. A little under one year ago, the Supreme Court decided Oil States Energy, in which it stated that IPRs were not unconstitutional. There is an open question as to how much interaction there is between decisions decided in the federal courts and those decided in the PTAB. While the two proceedings are treated similarly by many litigants (and both are appealed to the Federal Circuit), their differences may actually justify the Federal Circuit’s current practice of providing issue preclusion with respect to issues decided through the PTAB, but not the other way around.

Questions of whether a patent claim is obvious are often at the heart of invalidity contentions, and are therefore also at the heart of infringement defenses. While this question is rooted in factual inquiries about what one of ordinary skill in the art would deem obvious at the time of invention, it is well-established that the ultimate question of patent validity is a question of law. So why are decisions of validity made through an IPR afforded preclusion, where decisions made through infringement litigation are not? There are a few reasons for this—a simple one being that preclusion is largely attached to adverse parties, and while the Patent and Trademark Office will be party in only one of these situations, the patent owner will be party to both.

However, there may be another possible justification found within the decision upholding the constitutionality of IPRs (though note that the Federal Circuit’s decisions on issue and claim preclusion were made before this case was decided). That is simply that IPRs are considered to be a reconsideration of the granting of a patent. The PTO decides patent validity under different standards, but it also has the technological expertise that justifies the special deference given to agencies in interpreting laws and creating rules. On issues of patentability, who better to decide what is novel and non-obvious than those who have an understanding of the technical field? The Federal Circuit, with its legal expertise, makes sure that important policies surrounding patentability are satisfied with these patent grants. However, in a way, this one-way preclusion is an acknowledgement that the PTAB is in a better decision to make patentability determinations than district courts.

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