Posts Tagged: "estoppel"

The U.S. Court of Appeals for the Federal Circuit (CAFC) ruled yesterday in Uniloc v. Facebook, Inc., WhatsApp, Inc. that the “no appeal” provision of 35 U.S.C. § 314 does not preclude the court from reviewing a Patent Trial and Appeal Board (PTAB) finding that a petitioner is not estopped from maintaining an IPR proceeding under the IPR estoppel provision of 35 U.S.C. § 315(e)(1). However, the court noted that its decision was based on the particular facts of this case, where “the alleged estoppel-triggering event occurred after institution.”

On November 20, the Federal Circuit issued a modified opinion following a petition for panel rehearing filed by Network-1. The petition came after the CAFC affirmed-in-part and reversed-in-part a district court’s claim construction and remanded the case to the district court on September 24, 2020, in Network-1 Technologies, Inc. v. Hewlett-Packard Company. In the revised opinion, the CAFC said that it would not consider Network-1’s alternative grounds for granting a judgment as a matter of law (JMOL) on validity nor its new trial motion in the first instance.

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’s claim construction and remanded to the district court in Network-1 Technologies, Inc. v. Hewlett-Packard Company. In particular, the CAFC concluded that the district court erred in construing the claim term “main power source” and held that a party joined to an inter partes review (IPR) proceeding is not estopped from raising new invalidity grounds in district court, since the joinder provision does not allow parties to raise grounds not already instituted. The CAFC ultimately affirmed-in-part, reversed-in-part, vacated and remanded the district court’s judgment for a new trial on infringement.

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 the doctrine of equivalents. Pharma Tech Solutions, Inc. (Pharma Tech) sued LifeScan, Inc. (LifeScan) for infringement of U.S. Patent Nos. 6,153,069 (the ‘069 patent) and 6,413,411 (the ‘411 patent). The patents are directed toward home use, blood glucose monitoring systems for individuals with diabetes. Previous monitoring systems determined blood glucose concentration from the Cottrell current drawn and measured from a patient’s oxidized blood sample. The specification of the ‘069 and ‘411 patents claims to improve on these systems by “eliminating several of the critical operator dependent variables that adversely affect the accuracy and reliability” of the previous systems. The invention performs multiple Cottrell current measurements (opposed to just the one) and converts these into analyte concentrations. It then compares the results for better accuracy, notifying the user if the results fall outside of an acceptable range of each other to indicate a system error. Ultimately, the CAFC found that because LifeScan’s meter does not convert diffusion limiting current readings to analyte concentration measurements and then compare the measurements to detect errors, and because Pharma Tech is barred in its infringement argument by prosecution history estoppel, LifeScan did not infringe Pharma Tech’s ‘069 or ‘411 patents.

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 at the USPTO that were petitioned by consumer electronics giant Apple. The decisions terminating the reexaminations with respect to many of VirnetX’s patent claims are based on estoppel provisions arising from the previous adjudication of infringement findings against Apple upheld on appeal to the U.S. Court of Appeals for the Federal Circuit. VirnetX’s success on its recent petitions to terminate reexamination proceedings is the latest bit of positive news for the patent owner in a legal battle which has taken many turns since VirnetX won $368 million in a district court infringement case against Apple back in November 2014.

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 a new set of rules (the “New Rules”), which will come into force on October 30, 2019. While not all of the changes are “traps,” practitioners should be wary of traps that could affect their practice, and ensure deadlines are updated in preparation of the changes.

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 have no standing, as there is no present indication that the challenger would face a patent infringement suit in future. Under these circumstances, would the IPR statutory estoppel provision, 35 U.S.C. § 315(e), prevent the petitioner from asserting the challenges it brought against the upheld claims if the patent owner were to assert those claims against the petitioner in future? Note that under these circumstances, if estopped, the petitioner would have sought judicial review, but the merits of the challenges would not have been reviewed by an Article III court. This was one of the questions before the Federal Circuit in Avx Corporation v. Presidio Components, Inc. 2018-1106 (Fed. Cir. May 13, 2019) (“Avx Corp.”). Although the court declined to answer the question, as there were no adversarial presentations on this question, it clarified that the operation of estoppel was not a foregone conclusion under these facts, which, the court indicated, may fall under one of the exceptions to issue preclusion.

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 the long-running case of VirnetX Inc. v. Apple Inc., Cisco Systems, Inc. The case relates to three inter partes reexaminations maintained by Apple and Cisco. The PTAB found that Apple could proceed with its reexaminations under the America Invents Act (AIA) and held that claims of VirnetX’s patent numbers 7,418,504 (“the ’504 patent”) and 7,921,211 (“the ’211 patent”) were unpatentable as anticipated/obvious. These patents were directed to methods for “establishing a secure communication link between [computers] over a computer network, such as the Internet” and are “built on top of the existing Internet protocol.” Basically, the patents claim a way to create secure communication links via domain name service (DNS) systems.

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 every Friday. This week, the patent spat between Apple and Qualcomm heats up at the PTAB; China’s intellectual property court at Beijing shows signs of heightened requirements in trademark appeals for foreign entities; and the European Union delays debate on copyright reforms that would affect major tech firms that aggregate news and videos online.

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. district courts to prevent a first party assigning a patent to a second party from then challenging the validity of the patent they had just assigned. In a November 9, 2018 decision, the U.S. Court of Appeals for the Federal Circuit ruled that the doctrine of assignor estoppel does not apply in the inter partes review (IPR) context (see Arista Networks, Inc. v. Cisco Systems, Inc., (Fed. Cir. 2018). This raises intriguing possibilities regarding how companies might be able to protect themselves. One possibility might be to revise their employment agreements for signing by new employees.

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 estoppel did not bar Arista Networks (“Arista”) from attempting to invalidate a patent belonging to Cisco Systems (“Cisco”).  Arista’s founder, Dr. David Cheriton, was the inventor on the patent Arista wanted to invalidate and had previously assigned the patent to Cisco while employed by Cisco. See Arista Networks, Inc. v. Cisco Sys., Nos. 2017-1525, 2017-1577, 2018  (Fed. Cir. Nov. 9, 2018) (Before Prost, Schall, and Chen, J.) (Opinion for the court, Prost, J.).

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 hear an appeal by a non-defendant petitioner from an adverse final written decision in an inter partes review (“IPR”) proceeding, on the basis of a lack of a patent-inflicted injury-in-fact, when Congress has statutorily created the right for “dissatisfied” parties to appeal to the Federal Circuit.

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 estimated to cost more because of their broader discovery rules.  If cost is a major factor, IPRs are a less-expensive option due to restricted allowance of discovery, the most expensive aspect of patent litigation… If the invalidating arguments or art are not strong, an IPR may be a better option due to its lower threshold for institution.  The same prior art arguments that failed in a petition for a PGR may have succeeded in an IPR petition due to the lower standard.

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 with a very large verdict for infringement of the patent in court. Then, four months after the verdict the same patent is challenged at the PTAB again by a consortium that has some relationships to TCL.