News & Analysis as of

Claim Preclusion Patents

Sterne, Kessler, Goldstein & Fox P.L.L.C.

[Webinar] Developments in IPR Estoppel - December 5th, 1:00 pm - 2:00 pm EST

Director Jason A. Fitzsimmons and Counsel Richard A. Crudo will present the “Developments in IPR Estoppel” webinar on Tuesday, December 5, 2023, at 1:00 PM ET. The possibility of being estopped from asserting prior art in...more

Haug Partners LLP

The Many Flavors of Inter Partes Review Estoppel: A Review and Update

Haug Partners LLP on

I. Introduction - The Leahy-Smith America Invents Act (“AIA”) was years in the making.  From the first patent reform bill introduced by Representative Lamar Smith in June 20052 until the final House and Senate debates in...more

Knobbe Martens

Federal Circuit Review - July 2023

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Can’t Stop a Bull: Limits of Claim Preclusion - In Inguran, LLC Dba Stgenetics v. Abs Global, Inc., Genus Plc, Appeal No. 22-1385,  the Federal Circuit held that claim preclusion does not bar an induced infringement claim...more

AEON Law

Patent Poetry: Federal Circuit Reverses Dismissal Based on Patent Claim Preclusion

AEON Law on

The Federal Circuit has ruled that claim preclusion doesn’t apply to allegations of induced infringement based on an earlier finding of direct infringement. The patent at issue, US Patent No. 8,206,987 titled...more

Akin Gump Strauss Hauer & Feld LLP

PTAB: Unidirectional Language of AIA Estoppel Dooms Common-Law Claim Preclusion Argument Based on District Court’s Final Judgment...

The Patent Trial and Appeal Board has denied a patent owner’s motion to terminate an inter partes review proceeding finding that the unidirectional nature of estoppel under 35 U.S.C. § 315(e) renders common-law claim...more

Jones Day

PTAB Clarifies Claim Preclusion Standards

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On June 2, 2023,the PTAB held the standard enunciated in Astoria Federal Sav. & Loan Ass’n v. Solimino, 501 U.S. 104 (1991) applies to claim preclusion determinations. This was yet another decision in the ongoing battle...more

Morrison & Foerster LLP - Federal Circuitry

Last Week In The Federal Circuit (July 3 – July 7): Three Lawsuits, Still No Claim Preclusion

Fans of civil procedure will want to check out our case of the week, which offers an interesting discussion of the requirements for claim preclusion in patent infringement suits—and a reminder about the distinctions between...more

McDermott Will & Emery

Not on the Merits: Claim Preclusion Doesn’t Bar Inducement Claims After Direct Infringement Case

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Applying Seventh Circuit law to determine whether the dismissal of patent infringement claims should be upheld on the basis of claim preclusion, the US Court of Appeals for the Federal Circuit reversed a district court ruling...more

Knobbe Martens

Can’t Stop a Bull: Limits of Claim Preclusion

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INGURAN, LLC, DBA STGENETICS v. ABS GLOBAL, INC., GENUS PLC - Before Lourie, Bryson, and Reyna. Appeal from the United States District Court for the Western District of Wisconsin. Summary: Claim preclusion does not bar...more

Patterson Belknap Webb & Tyler LLP

No Two Bites at the Apple: Judge Gorenstein Finds Claim Preclusion Prevents Lawsuit

On June 21, 2022, Judge Gabriel W. Gorenstein (S.D.N.Y.) granted Defendant Verifone System Inc.’s (“Verifone”) motion to dismiss the complaint of Plaintiff Chikezie Ottah (“Ottah”) yet again. Ottah alleged that Verifone...more

Robins Kaplan LLP

Horizon Medicines LLC v. Dr. Reddy’s Labs., Inc.

Robins Kaplan LLP on

Case Name: Horizon Medicines LLC v. Dr. Reddy’s Labs., Inc., No. 15-3324 (SRC), 2022 WL 577957 (D.N.J. Feb. 24, 2022) (Chesler, J.) Drug Product and Patent(s)-in-Suit: Vimovo® (naproxen/esomeprazole magnesium); U.S. Patents...more

Miller Canfield

IP Litigation Quarterly Update: Q3 2020

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In a relatively quiet third quarter of 2020, the Federal Circuit decided issues on joinder, estoppel, claim preclusion, and importantly, upheld the Patent Trial and Appeal Board process finding that cancellation of patent...more

Fox Rothschild LLP

Judge Connolly Grants Plaintiffs’ Request To Preclude Defendant From Maintaining Its Invalidity Defense Based On An Undisclosed...

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By Memorandum Order entered by The Honorable Colm F. Connolly in Pharmacyclics LLC et al. v. Cipla Limited, et al., Civil Action No. 18-192-CFC/CJB (D.Del. November 10, 2020) (Consolidated), the Court granted Plaintiffs’...more

McDermott Will & Emery

Check Step One: It’s Not Ova until the Court Compares Claims

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The US Court of Appeals for the Federal Circuit reversed a district court’s decision finding a patent directed to a method of sorting particles using flow cytometry technology ineligible under 35 U.S.C. § 101. The Federal...more

Knobbe Martens

Improvements to Operation of an Apparatus Were Not Abstract

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XY, LLC v. TRANS OVA GENETICS, LC - Before Wallach, Plager, and Stoll. Appeal from the United States District Court for the District of Colorado. Summary: Claims directed to improving a method of operating an apparatus...more

Knobbe Martens

Federal Circuit Review - June 2020

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Non-Infringement Need Not Be “Actually Litigated” To Shield Accused Products From Infringement Liability In Subsequent Actions - In In Re Personal Web Technologies LLC, Appeal No. 19-1918, the Federal Circuit ruled that the...more

Troutman Pepper

Federal Circuit Review - Issue 269

Troutman Pepper on

269-1. Federal Circuit Confirms Amazon’s Customers are Protected from Lawsuit via the Kessler Doctrine, Despite the Previous Case being Voluntarily Dismissed with Prejudice. ...more

Mintz - Intellectual Property Viewpoints

The Federal Circuit Broadens Application of the Kessler Doctrine

Last week, the Federal Circuit invoked the Kessler doctrine in ruling that a district court’s dismissal of the plaintiff’s patent infringement suit against Amazon barred the plaintiff’s subsequent lawsuits against Amazon and...more

Knobbe Martens

Non-Infringement Need Not Be “Actually Litigated” to Shield Accused Products From Infringement Liability in Subsequent Actions

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In Re Personal Web Technologies LLC - Before Wallach, Bryson, and Taranto. Appeal from the United States District Court for the Northern District of California. Summary: The Kessler doctrine is not limited to cases...more

Akin Gump Strauss Hauer & Feld LLP

Patent Infringement Suit Against Product Manufacturer Partially Doomed by Prior Suit Against Component Supplier

Chief Judge Saris of the District of Massachusetts has granted-in-part a product manufacturer’s motion seeking summary judgment of claim preclusion based on patentee’s prior assertion of the same patent against a component...more

McDermott Will & Emery

No Concrete Controversy if There Are No Claims

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In reversing a district court decision as to whether a validity issue remained justiciable after the challenged claims were disclaimed, the US Court of Appeals for the Federal Circuit explained that the patent owner’s...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit: Statutory Disclaimer Results in No Case or Controversy

The Federal Circuit ruled that statutory disclaimer terminates the case or controversy between the parties in an infringement suit as to those claims, and immediately deprives the district court of the authority to take...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - August 2019: PTAB Extends Discretionary Denial Factors to Parallel ITC Proceedings

In IPR2019-00567 (Paper 23 at 29-30) and IPR2019-00568 (Paper 22 at 23-24), the PTAB, for potentially the first time, denied institution partially based on the Petitioner raising the same issues in its Petition that had been...more

Knobbe Martens

Issue Preclusion at the ITC: New Developments for Trademark-Based Claims

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Investigations at the International Trade Commission (“ITC”) often involve intellectual property disputes that may also be the subject of parallel litigation in district court. This parallel litigation is often stayed pending...more

McDermott Will & Emery

Copyright Infringement Claims Precluded by Plaintiff’s Own Patent Lawsuit

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The US Court of Appeals for the Ninth Circuit affirmed in part and reversed in part the district court’s dismissal of claims of copyright infringement, violation of the Digital Millennium Copyright Act (DMCA) and breach of...more

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