Posts Tagged: estoppel


CAFC: Parties Joined in IPRs are Not Estopped from Raising New Invalidity Grounds in District Court

On September 24, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed-in-part and reversed-in-part the U.S. District Court for the Eastern District of Texas’…
By IPWatchdog
28 days ago 0

Federal Circuit Affirms District Court’s Summary Judgment of NonInfringement Under the Doctrine of Equivalents

On November 22, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the District of Nevada granting summary judgment of noninfringement under …
By Nancy Braman
11 months ago 0

VirnetX Wins Another Round: USPTO Terminates Reexamination Proceedings Requested by Apple

On October 16, the U.S. Patent and Trademark Office (USPTO) issued two decisions granting renewed petitions filed by patent owner VirnetX to terminate inter partes reexamination proceedings …
By Steve Brachmann
1 year ago 3

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 …
By Nancy Braman
1 year ago 4

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 …
By IPWatchdog
2 years ago 0

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. …
By J. Derek Mason
2 years ago 2

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 …
By Ryan Kenny
2 years ago 5

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 …
By Robert Stoll
2 years ago 5

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 …
By Gene Quinn
3 years ago 7

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 …
By Hyunseok Park
3 years ago 16