Coordinating PTAB Proceedings with Parallel District Court Patent Litigation

Summary

One of the most impactful changes to U.S. patent litigation as a consequence of the America Invents Act of 2011 (AIA) was the provision of trial proceedings to address patent validity before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). Most petitions for a PTAB trial are filed against patents that are the subject of pending district court litigation. Since PTAB proceedings and district court actions often run in parallel, effective management of both proceedings is necessary to achieve favorable outcomes. This practice note discusses key aspects of PTAB trials, how PTAB trials impact concurrent district court patent litigation and strategies to manage and coordinate the two proceedings.