Estoppel

News & Analysis as of

MAG Aerospace Industries, Inc. v. B/E Aerospace, Inc. (Fed. Cir. 2016) - Equitable Assignor Estoppel Doctrine Expanded by Federal...

Arcane aspects of the law are frequently analogized as constituting "traps for the unwary," and patent law seems to have more than its share of minutiae that fall within that characterization. The equitable principle of...more

First PGR Final Written Decisions – Look a Lot Like IPR/CBM Decisions

Despite the overwhelming popularity of IPR proceedings since their inception, about three and a half years ago, Post Grant Review has, to date, been little used. There are probably valid reasons for this low popularity,...more

The PTAB Review - June 2016

Post-Grant Review Proceeding Filings Ramp Up In addition to inter partes review (IPR) and covered business method (CBM) review proceedings, the America Invents Act (AIA) provides for post-grant review (PGR) proceedings. PGR...more

Third Circuit Holds No Estoppel In Light of Reservation of Rights Letters

In its recent decision in Nationwide Prop. & Cas. Ins. Co. v. Shearer, 2016 U.S. App. LEXIS 9635 (3d Cir. 2016), the United States Court of Appeals for the Third Circuit, applying Pennsylvania law, had occasion to consider...more

IPR Proactive Defense Measures – Strategies and Considerations for Patent Owners

Many patent owners have not yet had to defend against an inter partes review (IPR), but the popularity of this proceeding increases the chances that they will encounter it down the road if they have not already faced one....more

CAFC Affirms Finacea Gel Infringement Under Doctrine of Equivalents

In Intendis GmbH v. Glenmark Pharmaceuticals Inc., USA, the Federal Circuit affirmed the district court decision that found infringement under the doctrine of equivalents. This case shows that the doctrine of equivalents...more

Fourth Circuit Considers Whether Arbitration Agreement Was Binding Where Parties Modified Contract Through Conduct

In early April, the Fourth Circuit Court of Appeals considered whether an arbitration agreement was “a written provision” for purposes of the Federal Arbitration Act where the parties modified the contract through their...more

CR&B Alert - Commercial Restructuring and Bankruptcy News - May 2016, No. 2

Can A Bank-Appointed Director Block A Bankruptcy Filing By A Borrower? The scenario is fairly typical. A loan goes into default and the bank and the borrower enter into a Forbearance Agreement. One of the conditions of...more

Federal Circuit Review | April 2016

Federal Circuit Upholds Broad Scope of CBM Review and Explains that an Internet Reference Must be Indexed by a Search Engine to Qualify as a Prior Art Publication - In Blue Calypso, LLC v. Groupon, Inc., Appeal Nos....more

Federal Circuit Patent Updates - April 2016

Mankes v. Vivid Seats Ltd. (No. 2015-1909, 4/22/16) (Taranto, Schall, Chen) - Taranto, J. Vacating judgment on the pleadings dismissing cases for inadequately pleading divided infringement and remanding for...more

Patent Owners Now Estopped From Relying On PTAB Estoppel

A recent Federal Circuit decision on a writ of mandamus as to the scope of the estoppel provided in 35 U.S.C § 315(e) appears to be contrary to the scope that practitioners and the legislators had in mind when the America...more

Florida Appellate Court Bolsters Statutory HOA Safe Harbor

A significant opinion from the Florida Third District Court of Appeal further clarifies the extent of the Florida statutory homeowners association (HOA) “safe harbor.” In the end, entities that obtain title through judicial...more

District Court Strikes Affirmative Defenses of Laches, Waiver, Estoppel and Acquiescence for Lack of Sufficient Detail

After the plaintiff filed a Second Amended Complaint against Fieldpiece Instruments, Inc. ("Defendant") for patent infringement, the Defendant filed its an answer raising a series of affirmative defenses to Plaintiff's...more

Strategic Considerations of Estoppel for IPRs After Shaw Industries Group v. Automated Creel Systems

When a patent is challenged in an inter partes review and a final written decision has been issued, a statutory estoppel will prevent certain subsequent proceedings. The scope of the estoppel, which applies to both Patent and...more

Estoppel is Not Invoked Simply Because Prior Art is Cumulative

After an Inter Partes Review (IPR) at the United Stated Patent and Trademark Office (USPTO) is completed, validity and/or infringement of the patent may subsequently be determined by a U.S. district court. This situation...more

Estoppel Does Not Attach When Petitioner’s Grounds Are Denied As Redundant

Under 35 U.S.C. 315(e)(1), a petitioner in an inter partes review of a claim in a patent that has resulted in a final written decision by the Board may not request or maintain a proceeding before the Patent Office with...more

Pennsylvania Supreme Court holds estoppel by deed applies to oil and gas leases

In the Court’s first decision on oil and gas issues since three new justices were elected, the Pennsylvania Supreme Court recently held that the doctrine of estoppel by deed applies to oil and gas leases. In Shedden v....more

What "Reasonably" Could Have Been Raised in an Inter Partes Review?

Since their introduction, inter partes review (“IPR”) proceedings have had a close association with district court litigation. Indeed, litigation defendants are often the petitioners who initiate IPR proceedings. Therefore,...more

We’ll Say it Again: Redundancy is not Reviewable

In HP Inc., v. MPHJ Technology Investments, LLC, [2015-1427] (April 5, 2016) the Federal Circuit affirmed the PTAB Final Written Decision in IPR2013-00309, agreeing that all but one challenged claim (claim 13) of U.S. Patent...more

Federal Circuit Recognizes an Exception to Inter Partes Review Estoppel Provisions

On March 23, the US Court of Appeals for the Federal Circuit issued a decision endorsing an exception to the estoppel provisions for inter partes review (IPR) under 35 U.S.C § 315(e). Shaw Industry Group, Inc. v. Automated...more

Stent Contract Collapses Standing Argument - TriReme Med., LLC v. AngioScore, Inc.

Addressing the issue of when patent rights are assigned under a contract, the US Court of Appeals for the Federal Circuit overturned the district court’s finding that a prospective inventor had surrendered his rights to an...more

PA Opinion Reassures Stakeholders That Estoppel By Deed Applies to Oil and Gas Leases

The Supreme Court of Pennsylvania has recently confirmed that the doctrine of estoppel by deed applies to oil and gas leases and does not require detrimental reliance. See Shedden v. Anadarko, No. 103 MAP 2014, --- Pa. ---...more

Second Time Is The Charm For Kyle Bass Challenges Of Ampyra Patents

The USPTO Patent Trial and Appeal Board (PTAB) has decided to institute inter partes review (IPR) proceedings against the Ampyra patents based on the second set of petitions filed by Kyle Bass and the Coalition for Affordable...more

Federal Circuit Carves Out Exception to IPR Estoppel Provisions

The Federal Circuit recently held that petitioners will not be estopped from raising in subsequent proceedings any noninstituted grounds deemed “redundant” by the Board or otherwise denied without meritorious consideration....more

The Estoppel Effects of IPR May Be Significantly Limited

A recent case at the Federal Circuit seems to significantly limit the estoppel effect of an Inter Partes Review (IPR) that is instituted on some grounds, but not all. The case adds another arrow in the strategic quiver of...more

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