The decision by the US Supreme Court in B&B Hardware v. Hargis involves a trademark opposition running in parallel with a trademark infringement lawsuit. The court held that a final decision by the USPTO’s Trademark Trial and Appeal Board (TTAB) can serve as issue preclusion to collaterally estop a court from rejudging already-decided issues.
What will be the impact on patent law of that decision? The same reasoning that led the Supreme Court to its decision in B&B regarding the TTAB and issue preclusion may well apply to determinations made during inter partes and post grant review proceedings at the PTAB. Issue preclusion applies to individual decisions of fact or law and thus may be important regarding claim construction, scope and content of the prior art, and level of skill in the art. However, the U.S. Supreme Court recognized that issue preclusion does not apply to agency
decisions when Congress so indicates. Do the estoppel provisions in the IPR/PGR statutes suggest that Congress has opted out of the issue preclusion arena for these decisions? Our panel includes a leading patent practitioner with experience in post-grant proceedings and two top appellate specialists.
For more information and a link to the recording, visit the event page at ipo.org.