' Brianna Potter | 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...

The Reach of Sovereign Immunity in IPRs

How does one balance the rights of sovereigns residing within a greater jurisdiction with fundamental rules of fairness? This question was recently decided by the Federal Circuit in the context of Inter Partes Review (IPR) in the case of St. Regis Mohawk Tribe. The St. Regis Mohawk tribe gained national attention when Allergan sold their patent rights to the tribe in exchange for money and an exclusive license to the drug. The lawyer orchestrating this transaction openly admitted that his purpose was to take advantage of the tribe’s sovereign immunity and avoid the easier-to-file-than-a-regular-lawsuit IPRs. This open attempt to beat the system is perhaps one reason why the Patent Trial and Appeal Board (PTAB) stated that tribal immunity didn’t apply to their proceedings. The Federal Circuit agreed, stating that IPRs are different enough from Article III adjudication to not trigger tribal immunity. At the end of their opinion, the court said that they would “leave for another day the question of whether there is any reason to treat state sovereign immunity differently.” But the court’s analysis in the decision may already answer that question. The test for attachment of sovereign immunity in agency proceedings hinges on the similarity between said proceeding and civil litigation. The question then is, does an IPR look like civil litigation? On the one hand, the Supreme Court has stated that IPRs “mimic[] civil litigation.” However, in Oil States, the case where the Supreme Court declared IPRs not unconstitutional, the Court described the proceedings as being a “reconsideration of the Government’s decision to grant a public franchise.” With these in mind, the Federal Circuit, in...