A Surge to the PTAB? Filing and Litigation Strategy Now

The USPTO announced earlier this month that inter partes review, post-grant review, and covered
business method patent proceedings will switch from the current broadest reasonable interpretation claim construction standard to the same standard used by district courts, the Phillips standard, starting on 13 November. Soon after the announcement, many experts began to predict a rush of petitioners to the Patent Trial and Appeal Board. The surge is expected because litigants may try to preserve the flexibility now allowed by differing standards in the different forums by acting to institute proceedings before the change occurs.

The panel will discuss how the move to Phillips at the PTAB is likely to change optimal litigation strategies going forward for both petitioners and patent owners. Issues that will be discussed include:

• Will institution rates at the PTAB be changed by the switch to the Phillips standard?
• Will district court judges be less likely to grant stays now that a PTAB claim construction will be more of a true preview of a Markman finding?
• Advantages and disadvantages of delaying an IPR filing.
• The timing of PTAB and district court decisions — and the potential for collateral estoppel.
• The additional complications involved in multi-defendant litigation.