Assignor Estoppel

News & Analysis as of

Federal Circuit Patent Updates - May 2016

Ruckus Wireless, Inc. v. Innovative Wireless Solutions (No. 2015-1425, 1438, 5/31/16) (Prost, Reyna, Stark) - May 31, 2016 3:11 PM - Reyna, J. Affirming summary judgment of non-infringement of patents based on...more

Federal Circuit Flushes Appeal Relating to Infringement of Airline Toilet Patents; Waives-Off Challenge to Finding of Assignor...

On March 23, 2016, the Federal Circuit in MAG Aerospace Indus., Inc. v. B/E Aerospace, Inc., Nos. 2015-1370, -1426, upheld a decision concerning U.S. patents directed to vacuum toilets found on commercial aircraft. In its...more

Assignor Estoppel Bars an Invalidity Challenge in District Court but is Not Available as a Defense in an Inter Partes Review...

On March 23, 2016, the United States Court of Appeals for the Federal Circuit issued a decision in MAG Aerospace Industries, Inc., NKA MAG Aerospace Industries, LLC v. B/E Aerospace, Inc., No. 2015-1370. One of the issues...more

Assignor Estoppel is Still A Thing

In Mag Aerospace Industries, Inc. v, B/E Aerospace, Inc., [2015-1370, 1426] (March 23, 2016), the Federal Circuit affirmed summary judgment of non-infringement, and the district court’s ruling that the doctrine of assignor...more

PTAB to Purchasers: “Caveat Emptor” - Esselte AB v. DYMO B.V.B.A.

In a decision to institute inter partes review (IPR) in four separate but related matters, the Patent Trial and Appeal Board (PTAB or Board) found that the patent owner failed to provide sufficient support for its contention...more

An Unforeseen Obstacle: Consultants Can Prevent Validity Challenges Through the Use of the Assignor Estoppel Doctrine

Imagine hiring a consultant who designs a process, only to find that the process infringes a patent invented by the same consultant owned by someone else. How much worse would it be if your use of that consultant prevented...more

No Assignor Estoppel in AIA Inter Partes Review

The popularity of IPR proceedings will likely increase as assignor estoppel does not apply to IPRs. Inter Partes Review (IPR) proceedings have become a very popular method of challenging patent validity for actual and...more

IP Update, Vol. 16, No. 2, -- February 2013

In This Issue: Patents - Supreme Court: State Court Has Jurisdiction over a Legal Malpractice Claim; Nothing Non-Obvious About Applying Pre-Existing Technology to the Internet; The Federal Circuit Is Not the...more

Patent Watch: Semiconductor Energy Lab. Co. v. Nagata

"[Neither the Declaratory Judgment Act nor Federal Circuit jurisprudence creates] a federal cause of action for assignor estoppel." On February 11, 2013, in Semiconductor Energy Lab. Co. v. Nagata, the U.S. Court of...more

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