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Parallel Patent Proceedings After Murata, Skyhawke and Shaw: Navigating Claim Construction, Estoppel, RPI, Stays and More

Recording of a 90-minute premium CLE webinar with Q&A

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Conducted on Wednesday, January 4, 2017

Recorded event now available

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This CLE course will provide guidance to patent counsel involved in challenging or defending patent validity on the impact of concurrent proceedings at the USPTO and in the courts on claim construction, estoppel, real-parties-in-interest (RPI) and stays. The panel will offer best practices for dealing with concurrent litigation and USPTO proceedings.


PTAB trial proceedings have emerged as a parallel front in patent litigation, rather than as the alternative envisioned by the America Invents Act. A slew of decisions from the Federal Circuit have established that neither the PTAB nor the district court owe the other any particular discretion and may conduct their respective proceedings entirely independently. For example:

  • Murata Machinery v. Daifuku Co., in which the Federal Circuit held that district courts have broad discretion in deciding whether to stay litigation when an IPR is pending.
  • Skyhawke Tech. v. Deca Int’l, in which the Federal Circuit held that district courts are not bound by PTAB claim constructions (and Power Integrations v. Lee, in which they found the converse as well).
  • Shaw Indus. v. Automated Creel, in which the Federal Circuit held that PTAB redundant grounds are not estopped in district court.

Consequently, patent counsel must consider the impact of conducting PTAB review and federal court proceedings concurrently when developing litigation strategies. Recent decisions have raised concerns about obtaining stays, introducing evidence from one proceeding in the other, navigating divergent claim constructions, identifying the correct parties to the action, and defining the scope of estoppel that results both from PTAB institution and non-institution. Patent counsel also should consider the relative timing of a litigation and a PTAB proceeding to influence how simultaneous appeals to the Federal Circuit will play out.

Counsel must prepare to address the problem that arose in SAS Institute Inc. v. ComplementSoft LLC (Fed. Cir. June 2016), where the Federal Circuit remanded the matter so the PTAB could hear from the parties on the new claim construction. The PTAB had changed the claim construction in its final decision without giving the parties a chance to brief it first. Is there any way for the district court to make use of the PTAB’s expertise in claim construction despite the different construction standards and the concern raised in ComplementSoft that PTAB claim construction may be a moving target?

Listen as our authoritative panel including a retired district court judge, a former PTAB judge, and a patent attorney seasoned in both types of proceedings examines the interplay between IPR and PGR proceedings and federal court proceedings. The panel will discuss the impact on claim construction as well as estoppel, stays, and the practical considerations when filing an IPR petition. The panel will offer best practices for dealing with concurrent litigation and post-grant proceedings.



  1. Interplay between the post-grant and federal court proceedings
    1. Claim construction
    2. Stays
    3. RPI
    4. Estoppel
  2. Lessons from recent USPTO actions and litigation
  3. Best practices for dealing with concurrent litigation and PTAB proceedings


The panel will review these and other key issues:

  • What litigation tactics can counsel employ to challenge or defend patent validity?
  • What are the implications for claim construction and estoppel when patents are challenged in concurrent proceedings?
  • What difficulties do counsel face when challenging or defending patent validity in concurrent proceedings?


Kenneth R. Adamo
Kenneth R. Adamo

Kirkland & Ellis

Mr. Adamo has extensive trial experience as lead counsel in jury and nonjury cases before state and federal courts and...  |  Read More

Honorable Faith Hochberg
Honorable Faith Hochberg

Hon. Hochberg is a nationally recognized Federal Judge and former U.S. Attorney known for her broad expertise in...  |  Read More

Scott E. Kamholz, M.D., Ph.D.
Scott E. Kamholz, M.D., Ph.D.

Foley Hoag

Dr. Kamholz has rejoined the firm after several years of service as an Administrative Patent Judge (APJ) on the...  |  Read More

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