Bar Exam Toolbox Podcast Episode 148: Listen and Learn -- Claim and Issue Preclusion (Civil Procedure)
JONES DAY TALKS®: Women in IP: 2020 in Review and a Look Toward 2021
The US Court of Appeals for the Federal Circuit reversed a district court order excluding expert validity testimony based on collateral estoppel stemming from an inter partes review (IPR) proceeding of a related patent,...more
Precedential and Key Federal Circuit Opinions - WISCONSIN ALUMNI RESEARCH FOUNDATION v. APPLE INC. [OPINION] (2022-1884, 8/28/2024) (Prost, Taranto, and Chen) - Prost, J. The Court affirmed two final judgments of the...more
The Court of Appeals for the Federal Circuit has sparked debate following a recent ruling on the Patent Trial and Appeal Board's (PTAB) application of estoppel provisions in invalidating amended claims in inter partes...more
Addressing for the first time whether an invalidity order merges with a voluntary dismissal for purposes of finality, the US Court of Appeals for the Federal Circuit held that an interlocutory order merges with the final...more
In ZyXEL, the petitioner unexpectedly received a second chance to argue against the patentability of the patentee’s substitute claims, even though the U.S. Patent Trial & Appeal Board (PTAB) had already found those claims...more
In a recent opinion, the Federal Circuit added several new wrinkles to amendment practice in inter partes review proceedings. The court affirmed the Patent Trial and Appeal Board’s determination that most of the original...more
The US Court of Appeals for the Federal Circuit dismissed an appeal from a final written decision in an inter partes review (IPR) proceeding, finding that the petitioner lacked standing because it suffered no injury in fact....more
When thinking about estoppel and the PTAB, the § 315(e) estoppels—relating to grounds a petitioner raised or reasonably could have raised—are likely the first to come to mind. However, other types of estoppel, such as...more
On December 8 2022, the Federal Circuit in Google LLC v. Hammond Development Int’l, Inc. affirmed in part and reversed in part the PTAB’s final written decision of an IPR holding that Google failed to prove that certain...more
Precedential Federal Circuit Opinions - 1. GOOGLE LLC v. HAMMOND DEVELOPMENT INTERNATIONAL, INC. [OPINION] (21-2218, 12/8/2022) (Moore, Chen, and Stoll) - Moore, Chief J. Reversing in part and affirming in part...more
The US Court of Appeals for the Federal Circuit considered whether a dependent claim invalidated by collateral estoppel also invalidates its parental independent claim. Google LLC v. Hammond Devel. Int’l, Inc., Case No....more
GOOGLE LLC v. HAMMOND DEVELOPMENT INTERNATIONAL, INC. - Before Moore, Chen, and Stoll. Appeal from the Patent Trial and Appeal Board. - Summary: Collateral estoppel applies to IPRs where differences in claims do not...more
Google LLC v. Hammond Development International, Inc., Appeal No. 2021-2218 (Fed. Cir. Dec. 8, 2022) - In the only precedential patent decision this week, the Federal Circuit issued a decision concerning the effect of...more
Inter partes review (IPR) proceedings raise complex estoppel issues that courts are grappling with and patent litigants must consider. Because patent challengers can assert invalidity in three different tribunals (the...more
[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more
SynQor, Inc. appealed the inter partes reexamination decision of the Patent Trial and Appeal Board (Board) holding un- patentable as obvious original claims 1–19, 28, and 31 of SynQor’s patent, U.S. Patent No. 7,072,190 as...more
[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more
Sterne, Kessler, Goldstein & Fox invites you to a webinar, "Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions," on Thursday, February 17, 2022. In conjunction with the release of the firm's...more
A panel of the Patent Trial and Appeal Board instituted inter partes review of a patent, rejecting the patent owner’s assertion that the petitioner’s obviousness arguments were collaterally estopped by a district court’s...more
In a nonprecedential decision, the Federal Circuit gave a mixture of success and failure to the parties in four separate inter partes review decisions by the Patent Trial and Appeal Board, in C.R. Bard, Inc. v. Medline...more
Inter partes review (IPR) proceedings can give rise to statutory and collateral estoppel. But these two bases for estoppel attach at different times, which can lead to asymmetrical outcomes in related district court...more
On February 22, 2021, the Federal Circuit addressed for the first time whether collateral estoppel (i.e., issue preclusion) was applicable in inter partes reexamination proceedings. The case is SynQor, Inc. v. Vicor Corp.,...more
In an appeal from an inter partes re-examination of a patent having both original and newly presented claims, the US Court of Appeals for the Federal Circuit ruled that a decision in earlier inter partes reexaminations of...more
SynQor, Inc. v. Vicor Corp., Appeal No. 2019-1704 (Fed. Cir. Feb. 22, 2021) - In this week’s Case of the Week, the Federal Circuit held that common law collateral estoppel could arise from a factual determination made in...more
The written description requirement has had a twenty-five year renaissance, particularly in the chemical and biotechnology arts as a way of restricting claim scope to what an inventor has actually invented (see Regents of the...more