Intellectual Property Owners Association

Serving the Global Intellectual Property Community

IP Chat Channel


Intellectual Property Owners Association’s weekly one-hour webinar series on current topics in IP are
produced in cooperation with host Pamela Sherrid, former editor of IP Law & Business magazine.
Listen to presentations by experts who will answer your questions immediately!


Registration Fee: $130 per user Government/Academic Rates are available upon written request to

2014 Scheduled Webinars

Estoppel and Privity in Post-grant Proceedings and Parallel Litigation
Thursday, December 18 at 2:00pm ET

How are the estoppel provisions of of the 2011 America Invents Act already affecting parallel U.S. district court litigation? And how will the estoppel provisions play out as more final trial decisions from AIA proceedings are issued from the PTAB? Those questions are opportune because the majority of the nearly 1,000 new PTAB trials instituted in the past few years are still moving through the PTAB. Questions of privity are closely entangled because determining who is estopped may require the PTAB and courts to scrutinize who are the parties-in-interest in a particular inter partes review (IPR), covered business method review (CBM), or post-grant review (PGR).

The expert panelists at this webinar will quickly review the estoppel provisions in the AIA law and the PTAB Trial Rules and Practice Guide. Then they will consider PTAB decisions that already touch on estoppel and privity, and discuss the many important questions that remain open. These include:

  • When a petition is filed against a patent owner by a lawsuit-protection entity, who is estopped? Only that entity or also its members?
  • Could a PTAB petition filed by one member of a joint defense group open the group to discovery by the patent owner?
  • Does estoppel apply to all the issues “raised” or “reasonably could have been raised” by the petitioner, or just grounds on which the PTAB proceeds?

Are there situations in which estoppel in district court from PTAB proceedings is less to be feared?


Nicholas Groombridge, Paul, Weiss, Rifkind, Wharton & Garrison LLP
Mark Matuschak, Wilmer Cutler Pickering Hale and Dorr, LLP
Jon Wright, Sterne, Kessler, Goldstein & Fox, PLLC


IP Chat Channel webinars are available on-demand two days after the live webinar. A webinar can be viewed one-time only, either immediately or up to 14 days after payment. Topics are searchable within each of the categories below.

IPO’s IP CHAT CHANNEL HOST PamelaHeadshot082812

Pamela Sherrid Former editor of IP Law & Business magazine and a reporter and writer at FortuneForbes and U.S. News & World Report.

Contact Us

For general inquiries or if you would like to be notified of future IP Chat Channel webinars or meetings, e-mail your contact information to or call (202) 507-4500.

Continuing Legal Education (CLE) Credit CLE will be available for registered attendees only.  Registered attendees must login under their attendee ID in order to verify attendance.  Once an attendee completes a course, a completed certificate of attendance must be submitted to IPO in order to receive credit (CofAs are provided by IPO once attendance is verified – usually 2-3 business days). LIVE WEBINARS:  IPO is applying for CLE for all live programs in the majority of the states that require CLE.  IPO will not be applying for CLE in the states of Florida, Ohio, South Carolina, or Texas (attorneys in TX may submit up to 5 hours of self-study credit). ON-DEMAND WEBINARS: For webinars recorded February 14, 2013 to present date, IPO is applying for CLE credit in CA, NJ, PA and VA.  At this time, IPO is not applying in any other states.  For webinars recorded prior to February 14, 2013, IPO will not be applying for CLE credit. For questions regarding which states IPO will apply to or other CLE related questions, contact or call (202) 507-4500.

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