IPR Estoppel One Year After SAS

MBHB managing partner Grantland Drutchas is a featured speaker for an IPO IP Chat Channel webinar entitled, “IPR Estoppel One Year After SAS,” which is set for 1:00 p.m. CT on April 25, 2019.

Event Description

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 involved.

This webinar 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 lead counsel who are veterans of PTAB, district court and Federal Circuit litigation. 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.

View registration details here