Posts Tagged: estoppel
Beware of Traps in the New Canadian Patent Rules
The Government of Canada is changing the current Patent Act and Patent Rules to modernize the Canadian patent regime. The current Patent Rules will be replaced with …
Federal Circuit Ruling in Avx v. Presidio Clarifies Operation of IPR Estoppel and Issue Preclusion
An inter partes review (IPR) petitioner appeals the final written decision of the Patent Trial and Appeal Board (PTAB) as to claims upheld but is found to …
VirnetX Scores Partial Win in Its Latest Federal Circuit Case with Apple
The United States Court of Appeals for the Federal Circuit last week affirmed-in-part, vacated-in-part, and remanded a decision of the Patent Trial and Appeal Board (PTAB) in …
Other Barks & Bites: IP News to Watch, January 25, 2019
Today marks the return of our Other Barks & Bites feature, which will profile a collection of news headlines from around the IP world and across practice areas …
Assignor Estoppel and IPRs: Possible Impact of Arista v. Cisco on Employment or Assignment Agreements
The doctrine of assignor estoppel has been around for over a century and most often applied in the U.S. International Trade Commission (ITC) and U.S. …
Federal Circuit says Assignor Estoppel Has “No Place” in IPR Proceedings
The Federal Circuit recently found that assignor estoppel has “no place in IPR proceedings,” affirming a holding of the Patent Trials and Appeal Board (“Board”) that assignor …
Can the Federal Circuit Refuse an Appeal by a Non-defendant Petitioner in an IPR?
JTEKT Corp. v. GKN Automotive Ltd., No. 2017-1828 (Fed. Cir. 2018) raises the important question of whether the Court of Appeals for the Federal Circuit can refuse to …
Which Invalidity Avenue to Take: Inter Partes Review Verses Post-Grant Review
The United States Patent and Trademark Office (USPTO) provides invalidity tools via inter partes review (IPR) and post-grant review (PGR), but which route is better? ... PGRs are …
More Bites at the Apple?
After TCL lost its IPRs against Ericsson in a written decision at PTAB, it was barred from filing subsequent IPRs against the ‘510 patent. TCL was then hit …
Disclaimer Before Institution of IPR Results In Adverse Judgment And Estoppel
A disclaimer of challenged patent claims before an IPR is instituted may result in a final adverse judgment against the patent owner, triggering estoppel provisions that preclude …
Patent Owners Faring Better in PTAB Proceedings
A new study of proceedings before the Patent Trial and Appeal Board (PTAB) shows that, despite the initial reputation of Inter Partes Review (IPR) proceedings being that …
Parties Agreement to Settle Issues Does Not Extinguish Board’s Ability to Determine Patentability
However, what if the Board refuses to terminate an IPR despite a joint request by both parties based on a settlement and proceeds to a final written …
Prepare for More Estoppel if the Supreme Court Reverses Federal Circuit on Partial IPR Institutions
Partial institutions lessen the value of estoppel because the petitioner avoids estoppel on claims that were challenged but not instituted. The PTAB never issues a final written …
Recent court rumblings about a narrow scope of IPR estoppel
An Inter Partes Review (IPR) is an important tool for companies that face frequent patent infringement challenges. An IPR is essentially a mini-litigation focusing solely on patent …
Rule 36, Collateral Estoppel and Unequal Treatment at the Federal Circuit
IntegraSpec was denied the opportunity to make its case here because of collateral estoppel based on the reasoning that they already had a full and fair opportunity …
