Congratulations to our associate A.J. Wenn for recently getting an article published with the Ohio State Bar Association. A.J. wrote about Papst Licensing GMBH & Co. v. Samsung Elecs. Am., which applied the principle of issue preclusion to an ongoing Patent Trial and Appeals Board (PTAB) case. Papst owned a family of three patents which were directed to interface devices for communication between data devices and host computers. After Papst sued Samsung for infringement, Samsung responded by filing separate inter partes review (IPR) proceedings at the PTAB for each of the three patents. In each IPR proceeding, the PTAB found the claims of asserted patents obvious and ruled in favor of Samsung.

In response, Papst appealed each IPR proceeding in an attempt to overturn the verdict. After the issues were fully briefed, and shortly before oral argument, Papst dropped two related IPR appeals from the PTAB. In dropping the related appeals, the earlier PTAB decisions became final, non-appealable judgments, thereby triggering issue preclusion and stopping Papst’s other ongoing appeal. This case should serve as a precautionary note to those who are faced with similar interrelated issues on appeal. While dismissal may be an option, an analysis of potential issue preclusion is necessary to prevent a patentee from missing out on their second bite at the apple.

To read the full article, please visit the Ohio Bar website here.

If you have any questions about proceedings at the PTAB, please feel free to reach out to SpencePC. Our attorneys have experience successfully representing clients in post-grant review, as well as IPRs. We are happy to discuss any IP issues you may face, including patent litigation, patent applications and prosecution, trademark applications and prosecution, copyright filings, trade secrets, or other complex litigation matters.

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