Issue Preclusion in Parallel Patent Proceedings

Shook Partner Sharon Israel has authored “Navigating Issue Preclusion in Parallel Patent Proceedings” for the State Bar of Texas Litigation Section’s The Advocate. The article was submitted as part of the organization’s Spring 2019 Intellectual Property Symposium.
Patent issues can be tried before both the Patent Trial and Appeal Board and district courts, Israel explains, and she predicts that the common law doctrine of issue preclusion or collateral estoppel will become more significant for patent proceedings. “When a patent is the subject of a civil or administrative judgment, parties to later proceedings may have opportunities to assert issue preclusion based on the earlier judgment and related patents or applications may be impacted, too,” she notes. “The application of issue preclusion may lead to surprising outcomes in some cases and it makes managing co-pending matters more challenging.”
Israel considers a number of issues, including the effects of PTAB determinations on district court or appeals proceedings as well as the effects of court proceedings on PTAB decisions. “Practitioners and patent owners should understand which proceedings might have preclusive effects on others and what impact those proceedings might have,” she concludes. “Parties on all sides of patent disputes should understand these stakes, carefully manage proceedings, and prepare accordingly.”