Estoppel

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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 the same as before. Addressing the issue anew would therefore be a waste of everyone’s resources. So, the judge bars that party from re-litigating the issue and applies the consequences of the prior resolution. Collateral estoppel’s logical simplicity is manifest, but its application is sometimes complicated.Continue Reading Obvious Variants and the Hand of Fate

The Chaos of Too Many Rules | Angry boss shout in chaos office because of failure deadline. Stressed vector cartoon characters.

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 summary affirmance. Jump Rope Sys., LLC v. Coulter Ventures, LLC, Appeal 22-1624 (Fed. Cir. June 28, 2022). Jump Rope presented the unopposed motion after the Federal Circuit denied its motion that the court go en banc.  Jump Rope had sought a determination by the court as a whole that parallel civil litigation seeking to enforce those canceled claims was not moot and could proceed, potentially to an infringement judgment and consequent remedy. Jump Rope has since presented the same argument to the Supreme Court in a petition for a writ of certiorari. Brief of Petitioner, Jump Rope Sys., LLC v. Coulter Ventures, LLC, Sup. Ct. Dkt. 22-298 (Sept. 26, 2022).Continue Reading This Seems Absurd, but …

Rigidly Interpreting Precedents May Foreclose an Equitable Doctrine - Cutting Expenses
Rigidly Interpreting Precedents May Foreclose an Equitable Doctrine – Cutting Expenses

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 patent owner contends are infringed. IOENGINE, LLC v. PayPal Holdings, Inc., Nos. 18-cv-452-WCB and 18-cv-826-WCB, Dkts. 511 and 450, respectively (D. Del. June 15, 2022) (Memorandum Opinion and Order). Until the Federal Circuit clearly addresses this issue, his decision may influence district judges facing the same issue.
Continue Reading Rigidly Interpreting Precedents May Foreclose an Equitable Doctrine

Hands up STOP - Estoppel Evolves

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 raised those grounds during the AIA trial and, therefore, cannot be estopped from pursuing those attacks in later litigation. Shaw Indus. Grp. v. Automated Creel Sys., 817 F.3d 1293, 1300 (Fed. Cir. 2016).
Continue Reading Estoppel Evolves

Double arrowsIn 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 Additional Views, Judge Stoll suggests that the en banc court reconsider the issue of assignor estoppel, because the court’s precedent permits an assignor of a patent to “circumvent the doctrine of assignor estoppel by attacking the validity of a patent claim in the Patent Office.”
Continue Reading Assignor Estoppel Does Not Prevent Reliance on PTAB Decision Canceling Claims

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. 19, 2019). However, the Court disagreed with the PTAB’s view that it “does not ‘have the authority…to deem service to have occurred and overlook errors in service’” where no district court has deemed service to have occurred.
Continue Reading Game Not Over – No Estoppel Where Service Is Deemed Insufficient

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 the patent. The decision leaves open the question of whether a petitioner that lacks standing to appeal would be bound by petitioner estoppel under 35 U.S.C. § 315(e).
Continue Reading Estoppel May Not Apply When Petitioner Lacks Standing to Appeal IPR Decision

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 court’s invitation, the Patent Office said that a court may apply this statutory estoppel not only to petitioners who lose an IPR, but also to those who prevail. The Office conceded that estopping prevailing IPR petitioners “leads to the counterintuitive result that a district court would not be able to consider invalidity arguments that the Board found persuasive.” But the Office said that this will have no practical effect in most cases.
Continue Reading Estoppel Remains Malleable

In an unusual fact situation, Judge Andrews of the U.S. District Court for the District of Delaware held that estoppel stemming from a Final Written Decision of the PTAB could arise even if issued after trial where the court has not yet entered final judgment on the relevant ground. Novartis Pharmaceuticals Corp. v. Par Pharmaceutical Inc., Case No. 14cv1289 (D. Del. April 11, 2019).
Continue Reading Estoppel May Arise After Trial

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. It is troubling not necessarily because the Patent Office unsurprisingly accepted the court’s invitation, but because it then answered in the affirmative a broad question the court did not pose: “whether section 315(e)(2) bars a successful inter partes review petitioner from making the same arguments in district court that it prevailed on in the inter partes review.” By inviting the court to conclude as much, the Patent Office has identified a statutory gaffe that may require parties to reevaluate the risks and rewards in pursuing inter partes review in parallel with district court actions.
Continue Reading Federal Circuit Invites Patent Office to Open Pandora’s Box

Resources & Info

Arthrex and the Supreme Court Resource Center

In United States v. Arthrex, Inc., the Supreme Court has heard whether 125+ PTAB decisions rendered through October 2019 must be remanded for new decisions. Read about how that issue developed through our post.

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Our Team

PTABWatch, provided by Marshall, Gerstein & Borun LLP, analyzes and reports recent developments concerning Post-Grant Proceedings at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), including Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Method (CBM) proceedings.