On September 29, 2021, Senator Patrick Leahy introduced a bipartisan bill aimed at narrowing the use of discretionary denials by the Patent Trial and Appeal Board (PTAB). The bill also addresses provisions on estoppel, grounds for invalidation, and deadlines. Law360 interviewed Finnegan partner Barbara McCurdy, who believes the new estoppel provisions could have a huge impact on patent litigation.
The new bill includes multiple proposed changes to estoppel provisions. Under current law, if the PTAB refused to invalidate the patent in its final written decision, a challenger cannot raise the same invalidity arguments in district court litigation. This petitioner estoppel begins when the final written decision is issued; however, the new bill would wait until all appeals have been exhausted. While a district court may be willing to wait a year or two for PTAB proceedings before it hears a case, Barbara said it's less likely the court will stay a case for three or more years, which means district court litigation could increase.
Another provision would prevent the U.S. Patent and Trademark Office (USPTO) from giving the patent owner a new patent based on the invalidated invention. Barbara said this would provide stability and end what she calls “winner estoppel,” which is when a petitioner who wins at the PTAB is barred from raising those same winning arguments in the district court.
Read “More Than Fintiv: What to Know About the PTAB Revision Bill”
