Sedona Conference Guidance on Parallel Litigation and PTAB Proceedings

The pithily named publication, “Commentary on Patent Litigation Best Practices: Parallel USPTO Proceedings Chapter (“Stage One”),” lays out 33 “best practices” and is available here. Those practices contain several that relate to competency and so I thought they’d be of interest:

  • Parties should be familiar with the limited categories of discovery available in postgrant proceedings.
  • Parties seeking additional discovery in a post-grant proceeding should identify the material sought with particularity and make a required showing why additional discovery should be granted.
  • Parties seeking additional discovery should explore whether each side might want and benefit from certain discovery beyond what is normally permitted by the PTAB; and, if so, then the parties should consider voluntarily exchanging such discovery.
  • Litigation counsel should not be barred from litigating patentability in the PTAB.
  • Parties seeking a litigation stay during post-grant proceedings should promptly provide the district court with complete information about: the patents-in-suit; the parties; the claims; the defenses; any other existing cases involving any of the patents-in-suit or the same parties; the instituted, pending, or forthcoming PTAB review petitions involving the patents-in-suit; and any timing or jurisdictional issues that may arise.
  • The district court should consider asking key questions relevant to stays for all patent cases at the earliest possible stage of the litigation. .
  • If a PTAB review petition has been or is likely to be filed, parties should confer with opposing counsel as early as possible regarding possible joint stipulations for a stay of district court litigation.
  • The patentee should disclose as early as possible to the district court any intent to amend asserted claims in post-grant proceedings.
  • Parties to a litigation who avail themselves of the PTAB should be required to disclose as early as possible to the district court all real parties-in-interest to the PTAB proceedings, and make an effort to disclose any parties in privity.
  • Parties to joint defense groups should confer as early as possible about which defendants, if any, will petition for an IPR proceeding; and, if moving for a stay of the district court litigation, the parties should agree to be estopped on any ground that is raised or that could reasonably be raised before the PTAB to maximize the chances of obtaining a stay.
  • Parties seeking a litigation stay should demonstrate to the district court how potential estoppel may simplify the issues.
  • If a party requests a litigation stay, the district court should determine whether a post-grant proceeding will simplify the issues with respect to the asserted claims and the prior art. .
  • If a party requests a litigation stay, the district court should inquire whether all codefendants, including those not participating in the post-grant proceedings at the PTAB, will agree to a limited estoppel on any ground actually raised and adjudicated in exchange for granting the stay.
  • If a petitioner files an IPR or a PGR concurrently with a declaratory judgment action, the district court should strongly consider maintaining the automatic stay pursuant to statute.
  •  If PTAB review has been instituted before the filing of a district court infringement action on the claims, the court may consider this as weighing in favor of a stay. .
  • A litigation stay request after a CBM proceeding has been instituted may weigh in favor of a stay.
  • A litigation stay request filed before the institution of a post-grant proceeding may weigh against a stay, but the district court may instead deny without prejudice so that the party can refile its request if and when institution occurs.
  • If a post-grant proceeding would likely result in cancellation of all claims at issue in the district court before a final judgment, this may weigh heavily in favor of a stay.
  •  If a party requests a litigation stay, the district court should consider ruling on the motion as soon as possible, and to the extent that the defendant unreasonably delays in filing the motion, that should weigh against a stay.
  • If a party requests a litigation stay, the district court should consider denying the stay if Markman proceedings are substantially complete, or if discovery is already closed.
  • A potential of a loss of evidence over time may weigh against a stay, but the risk must be demonstrated, serious, and not otherwise preventable.
  • If the lack of full and complete discovery may unduly prejudice a party before the PTAB on critical issues, this may weigh against a stay.
  • If the parties are direct competitors, this may weigh against a stay due to potential prejudice to the patentee.
  • A post-grant proceeding that will likely require additional time to fully resolve the issues may weigh against a stay.
  • Throughout any post-grant proceeding, and especially at its conclusion, the parties to a stayed litigation should meet and confer to reassess settlement positions, the terms for having the stay lifted, and the means to streamline the case going forward.
  • Upon lifting a stay, the district court may consider a conference with the parties to evaluate the case going forward. .
  • The district court should consider issuing a detailed written decision on any stay motion, and seek to have opinions published such that they are available to the public as this area of law develops.
  • Parties considering post-grant proceedings should consider the extent of the estoppel created by each type of post-grant proceeding.
  • Parties should consider, where appropriate, forgoing PGR and IPR proceedings to avoid the risk of being estopped from raising unasserted invalidity theories that they “reasonably could have raised” in the PGR or IPR.
  • Potential estoppels arising from PGR, CBM, and IPR proceedings should be considered claim-by-claim.
  • Those with a potential interest in the outcome of a post-grant proceeding should evaluate if they would likely be considered to be a real party-in-interest or in privity with the petitioner.
  • Parties to a joint defense group or an indemnitor-indemnitee relationship should consider the possibility that estoppel (whether legal or practical) will apply notwithstanding their lack of direct participation in the post-grant proceeding.
  • The potential for remand should be considered before lifting a stay to apply PGR, CBM, and IPR estoppels where the Final Written Decision of the PTAB has been appealed to the Federal Circuit.