Estoppel

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Obvious Variants and the Hand of Fate

By Sandip H. Patel on Posted in Appeals, Estoppel, Inter Partes Review, IPR
Collateral estoppel is a resource-saving shortcut. Judges consider it when an issue previously received sufficient judicial attention. And they apply it when the issue was resolved against the party now seeking, in some way, to circumvent that resolution. In the absence of some intervening change in the law or new evidence, resolution likely would be … Continue Reading

This Seems Absurd, but …

By Sandip H. Patel on Posted in Estoppel, Inter Partes Review, IPR
Last year, a district court applied the doctrine of collateral estoppel to dismiss an infringement suit after the Patent Trial and Appeal Board decided to cancel the asserted patent’s claims in an inter partes review. In the ensuing appeal of the court’s decision, the Federal Circuit granted the patent owner’s (Jump Rope’s) unopposed motion for … Continue Reading

Rigidly Interpreting Precedents May Foreclose an Equitable Doctrine

By Sandip H. Patel on Posted in Estoppel, Inter Partes Review, IPR
The Federal Circuit’s Judge Bryson has been presiding over two district court cases where he decided an important and recurring issue regarding collateral estoppel. In a consolidated order, he refused to apply collateral estoppel to certain fact-finding by the Patent Trial and Appeal Board on what prior art publications disclose relative to patent claims the … Continue Reading

Estoppel Evolves

By Sandip H. Patel on Posted in Estoppel, Inter Partes Review, IPR
Back in 2016, the Federal Circuit held that a petitioner retains the ability, after an adverse Patent Trial and Appeal Board decision, to assert un-instituted invalidity grounds it presented in its petition. The court reasoned that when the Board chooses not to institute certain petitioned grounds (e.g., due to redundancy), the petitioner could not have … Continue Reading

Assignor Estoppel Does Not Prevent Reliance on PTAB Decision Canceling Claims

By Michael R. Weiner on Posted in Estoppel, Inter Partes Review, IPR, Trial Procedures
In Hologic, Inc. v. Minerva Surgical, Inc., Case 19-2054 (Fed. Cir. Apr. 22, 2020), the Federal Circuit held that an assignor of a patent may rely on a PTAB unpatentability decision as a defense in infringement litigation, although the equitable doctrine of “assignor estoppel” prevents the assignor from directly challenging validity in the litigation. In … Continue Reading

Game Not Over – No Estoppel Where Service Is Deemed Insufficient

By Julianne M. Hartzell on Posted in Estoppel, Inter Partes Review, IPR, Trial Procedures
In a case involving online gaming, the Federal Circuit affirmed the PTAB’s decision that 35 U.S.C. § 315(b) did not bar instituting an IPR where the patent owner failed to preserve its arguments that service was perfected. Game and Technology Co., Ltd. v. Wargaming Group Limited, ___ F.3d __, 2019 WL 6121449 (Fed. Cir. Nov. … Continue Reading

Estoppel May Not Apply When Petitioner Lacks Standing to Appeal IPR Decision

By Michael R. Weiner on Posted in Appeals, Estoppel
In AVX Corp. v. Presidio Components, Inc., No. 2018-1106 (Fed. Cir. May. 13, 2019), the Federal Circuit determined that a manufacturer did not have standing to appeal an adverse decision in an IPR challenging a competitor’s patent, because the petitioner did not have a present or nonspeculative interest in engaging in conduct arguably covered by … Continue Reading

Estoppel Remains Malleable

By Sandip H. Patel on Posted in Estoppel, Inter Partes Review, IPR
A few months ago, in BTG International Ltd. v. Amneal Pharmaceuticals LLC, the Federal Circuit invited the Patent Office’s views on the scope of the petitioner estoppel under 35 U.S.C. § 315(e)(2). We noted then that this is an estoppel a district court may apply, but the Patent Office may not. In response to the … Continue Reading

Federal Circuit Invites Patent Office to Open Pandora’s Box

By Sandip H. Patel on Posted in Estoppel, Inter Partes Review
It is puzzling, if not troubling, that the Federal Circuit recently invited (link) the Patent Office to submit a brief expressing its views on the scope of the petitioner estoppel under 35 U.S.C. § 315(e)(2), a veritable Pandora’s Box. It is puzzling because only the judiciary can apply this estoppel provision, the Patent Office cannot. … Continue Reading

IPR Estoppel Does Not Apply to ITC Investigative Staff

By Julianne M. Hartzell on Posted in Estoppel, Inter Partes Review, IPR
Judge Cheney of the United States International Trade Commission held that ITC Investigative Staff are not estopped from asserting invalidity of a patent based upon prior art that was previously asserted by a respondent in an IPR. See In the Matter of Certain Magnetic Tape Cartridges and Components Thereof, Inv. No. 337-TA-1058 at *106-107. While … Continue Reading

IPR and Estoppel after SAS Institute

By Julianne M. Hartzell on Posted in Estoppel, Inter Partes Review, Post Grant Review, Trial Procedures
The Supreme Court held on April 24, 2018 that if the Patent Office institutes and inter partes review (IPR) proceeding, it must issue a final written decision with respect to the patentability of every patent claim challenged by the petitioner. SAS Institute, Inc. v. Iancu, (discussed in greater detail here). Within days, the Patent Office … Continue Reading

Supreme Court Decides that IPR Final Decisions Must Address All Challenged Claims

By Sandip H. Patel and Michael R. Weiner on Posted in Covered Business Method, Estoppel, Institution / Denial, Inter Partes Review, IPR, Post Grant Review, Trial Procedures
On April 24, 2018, the Supreme Court issued its decision in SAS Institute, Inc. v. Iancu, holding that if the Patent Office institutes an inter partes review (IPR) proceeding, it must issue a final written decision with respect to the patentability of every patent claim challenged by the petitioner. The Court reversed the Federal Circuit’s … Continue Reading

Patent Owner Estoppel May Apply When Patent Owner Cancels Claims Before IPR Institution

By Michael R. Weiner on Posted in Estoppel, Institution / Denial, Inter Partes Review, Trial Procedures
In Arthrex, Inc. v. Smith & Nephew, Inc., No. 2017-1239 (Fed. Cir. Jan. 24, 2018), the Federal Circuit affirmed the PTAB’s entry of adverse judgment against Patent Owner Arthrex, before instituting inter partes review. Specifically, the PTAB entered judgment after Arthrex had disclaimed all challenged claims, but before the PTAB decided whether to institute a … Continue Reading

Enactment of the STRONGER Patents Act Would Severely Limit PTAB Proceedings

By Sharon M. Sintich, Ph.D. on Posted in Amendments, Appeals, Discovery, Estoppel, Institution / Denial, Inter Partes Review, IPR, Legislation, Post Grant Review, Real Party-in-Interest, Stays, Trial Procedures
The STRONGER (Support Technology & Research for Our Nation’s Growth and Economic Resilience) Patents Act of 2017 was recently introduced in the Senate.  The Act is an updated version of the STRONG Patents Act of 2015 that stalled in Congress.  Like its predecessor, the STRONGER Patents Act is designed to significantly modify the AIA trial … Continue Reading

Joinder Does Not Prevent Application of IPR Estoppel Provision

By Ryan J. Schermerhorn on Posted in Appeals, Estoppel, Inter Partes Review, IPR, Joinder, Sections 102/103
A little more than a month after the Delaware district court narrowly interpreted the IPR estoppel provision to suggest that it may not be necessary to include all known grounds so as to avoid estoppel in district court litigation, the same court issued a decision suggesting that the IPR estoppel provision may not be so … Continue Reading

Purdue Not Estopped From Raising Invalidity Contentions at Trial That Were Submitted But Not Instituted During IPR

thumbnail image of DNA strandBy Katherine L. Neville, Ph.D. on Posted in Biotechnology, Estoppel, Inter Partes Review, Sections 102/103
Recently, the Federal District Court for the District of New Jersey allowed Purdue Pharma to assert invalidity arguments in the litigation that were previously submitted in an IPR petition, but upon which IPR review was not instituted. See Depomed Inc. v Purdue Pharma LP, Civil Action 13-571, Order (D.N.J. Nov. 4, 2016). The Court rejected … Continue Reading

District Court Interprets the IPR Estoppel Provision Narrowly

By Sandip H. Patel on Posted in Estoppel, Inter Partes Review
Update (Jan. 13, 2017): The Delaware district court issued a short order on Jan. 11, 2017, maintaining the court’s earlier decision discussed in the post below. An AIA trial is a relatively-inexpensive, partial substitute for challenging the validity of a patent. Yet, prospective AIA trial petitioners routinely struggle with the potential estoppel effect of not raising prior … Continue Reading

The Possibility of Inconsistent Results Inherent to Congress’s Design of AIA Trial Reviews

By Sandip H. Patel on Posted in Estoppel, Institution / Denial, Inter Partes Review, IPR, Joinder, Legislation, Trial Procedures
In Cuozzo Speed Technologies, LLC v. Lee, the Supreme Court recognized that a “district court may find a patent claim to be valid, and the agency may later cancel that claim in its own review.”  The Court also recognized that because of the different evidentiary burdens in court versus before the agency—the Patent Office—“the possibility … Continue Reading
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