Shook, Hardy & Bacon Seattle Managing Partner Bart Eppenauer provided commentary for Managing Intellectual Property on the first two years of Patent Trial and Appeal Board (PTAB) proceedings and the next round of patent reform legislation. Titled "They Tried to Make Me Go to PTAB…," the article quotes Eppenauer on the strategic challenges facing PTAB petitioners who are also involved in district court litigation. "There is a dynamic where you are moving the ball on two fronts and that can create some additional leverage depending on the case," explains Eppenauer. "Most of the time the conventional wisdom is that you want to try to get a stay but every case is unique and there might be a good reason to put added pressure on with a parallel proceeding at the district court."
Eppenauer also discusses potential changes to estoppel provisions that could benefit petitioners. "The provision says in a district court or another proceeding the party is estopped from using evidence actually used or that reasonably could have been raised," he notes. "That's been a real concern for quite a few years. That's why it is front and center in the patent reform legislation, particularly the next round."