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Posts Tagged: "IPR estoppel"

CAFC Weighs in Again on IPR Joinder Estoppel, Affirms PTAB Holding that Uniloc Patent Claims are Obvious

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.”

District Court Blocks Attempt to Bar New Prior Art References Based on IPR Estoppel

The U.S. District Court for the District of Massachusetts on May 4 denied a motion for partial summary judgment by Palomar Technologies, Inc., holding that the estoppel bar relating to inter partes review (IPR) proceedings did not apply to two prior art references that had not been raised in a prior IPR hearing at the Patent Trial and Appeal Board (PTAB). Palomar brought suit against MRSI Systems, LLC in the Southern District of California on July 6, 2015 for infringement of Palomar’s U.S. Patent No. 6,776,327. In October of 2015, MRSI petitioned the PTAB for IPR of all 48 claims of the ‘327 Patent on the grounds of anticipation or obviousness based on five prior art references. The PTAB instituted and ultimately upheld 47 of the 48 claims.