Parties Must Tell PTAB of Key Developments in Parallel Proceedings

The Patent Trial and Appeal Board (PTAB) has issued a general order requiring parties to promptly disclose relevant updates from parallel litigation. The move, which affects hundreds of inter partes and post-grant review proceedings, is seen by practitioners as a strategic effort to ensure consistency and transparency in decision-making.

Finnegan partner Forrest Jones emphasized the importance of the order for administrative patent judges with IAM by stating that, “They need to pay attention to what's going on in the parallel cases and specifically address them if they think that there could be any conflict.”

Forrest also noted the broader implications of the PTAB’s approach.

“All of this might have to do with the PTAB trying to insulate itself for appeals, giving explicit reasons why their decision is not inconsistent with whatever happened in a parallel litigation or if it is inconsistent, why they are right and the parallel litigation is wrong.”

To further highlight the practical impact of the policy on parties involved in proceedings, Forrest added, “If you file a petition, there is a Markman hearing that happens after the PTAB has instituted the IPR. Whoever wins or loses on a particular term is probably going to want to get that evidence of decision in front of the PTAB and argue that they should be making the same decision.”

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