The Conundrum of Bifurcated Patent Litigation: A Few Thoughts More

In a few earlier posts, I had shared my thoughts on bifurcated patent litigation, but there is one aspect which I did not touch upon. In bifurcated patent litigation, one forum is seized with the issue of patent infringement and the other with the issue of patent validity. This creates a few more practical difficulties which I did not deal with in my earlier posts.

One such difficulty is that the court, which has to decide on the issue of infringement, has to also comment on the issue of credible challenge posed to the validity of the patent by the defendant. If the Court does indeed form an opinion on patent validity, even if prime facie and inconclusive, it is bound to affect the objectivity with which the IPAB approaches the issue of patent validity.

It is possible for the defendant/applicant for revocation of the patent, to invite the IPAB to draw adverse inferences against the patent on the basis of the court’s observations with respect to the issue of credible challenge. This could and ought to be avoided, however, if the IPAB as a matter of practice recognises that its jurisdiction on the issue of validity is independent and ought not to be affected by any observation the court makes on the issue.

That said, if the patentee’s stance before the court itself creates an estoppel, the IPAB would be well within its rights to take cognizance of such stance. To avoid such pitfalls, it would help if there’s a single forum which decides both validity and infringement, preferably a forum with technical expertise.