Law360 Publishes Akin IP Lawyers’ Article on Potential Considerations of Collateral Estoppel of Related Patents

“Lessons In Navigating Collateral Estoppel Of Similar Patents,” an article by Akin intellectual property partner Rubén Muñoz, senior counsel Jason Weil and associate Karina Moy, has been published by Law360. The article explores the potential considerations of collateral estoppel in inter partes review (IPR) proceedings involving related patents.

The authors state that companies holding patents involved in litigation often own portfolios of related patents, subject to challenges in separate IPR proceedings, and note the importance of understanding how the Patent Trial and Appeal Board’s findings in one proceeding may affect others of related patents. The authors elaborate on a particular decision as an example, highlighting the lessons learned from the case, emphasizing the importance of practitioners making comprehensive arguments and preserving positions in IPR proceedings, especially for patent owners with large portfolios of related patents.

Rubén, Jason and Karina further discuss key considerations for patent owners, such as developing arguments for dependent claim limitations and stressing differences between claims challenged in IPRs to avoid collateral estoppel. As demonstrated in a previous Federal Circuit decision, well-supported arguments are critical for success. The article also advises parties to anticipate collateral estoppel arguments, even though they may not “ripen” until later in a proceeding. Finally, if collateral estoppel applies, the authors suggest parties focus on recognizing the issues instead of challenging the correctness of the previous IPR decision.

To read the full article, click here.