Estoppel

News & Analysis as of

Issue Three: Keeping Tabs on the PTAB

The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more

A reminder to get replies to enquiries right

The High Court decision in First Tower Trustees Limited v. CDS (Superstores International) Limited [2017] EWHC B6 (Ch) is a salutary reminder of some of the pitfalls to avoid when providing replies to pre-contract enquiries...more

PTAB Avoids Triggering Estoppel by Issuing Concurrent Final Written Decisions

The Patent Trial and Appeal Board issued concurrent final written decisions upholding the validity of all challenged claims of U.S. Patent No. 8,141,154 in Palo Alto Networks, Inc. v. Finjan. Inc. IPR2015-01979, Paper 62...more

MBHB Snippets: A review of developments in Intellectual Property Law - Volume 15, Issue 1

In 2011, the Leahy-Smith America Invents Act (“AIA”) established new post-issuance procedures for challenging the validity of a granted patent before the Patent Trials and Appeal Board (“PTAB” or “Board”). Inter partes...more

Post-Grant Review Estoppel – Looking Forward by Looking Back at Estoppel in Inter-Partes and Covered-Business-Method Review

In 2011, the Leahy-Smith America Invents Act (“AIA”) established new post-issuance procedures for challenging the validity of a granted patent before the Patent Trials and Appeal Board (“PTAB” or “Board”). Inter partes...more

Intellectual Property Newsletter - March 2017

Shearman & Sterling’s IP litigation team has published its quarterly newsletter. The newsletter covers a wide range of current IP topics: updated predictions on patent policy under the Trump administration; recent happenings...more

Where Party Joined Pending IPRs, Delaware Takes Broad View of § 315 Estoppel

In Parallel Networks Licensing, LLC v. International Business Machines Corporation, No. 1:13-cv-02072, Dkt. No. 366 (D. Del. Feb. 22, 2017) (Slip Op.), the court held IBM was estopped from asserting obviousness under §103...more

What Petitioners and Patent Owners Need to Know About the Scope of IPR Estoppel

Judge Sue L. Robinson of the U.S. District Court for the District of Delaware recently identified a logical fallacy in the “statutory estoppel” jurisprudence with respect to 35 U.S.C. § 315(e)(1). According to the...more

The shifting standard for IPR estoppel: Where are we now?

There is no doubt that inter partes review proceedings (IPRs) are now the favored mechanism for invalidating patents. The Patent Trial and Appeal Board (Board) is the single largest venue for U.S. patent disputes, beating out...more

Under the Same Precedent, Different Estoppel Standards Have Developed in the PTAB and the District Courts

While Congress was debating the provisions of the America Invents Act (AIA), some lawmakers proposed that inter partes review (IPR) and post-grant review (PGR) should be a substitute for invalidity challenges at district...more

Someone Forgot to Tell the PTAB That There is No IPR Estoppel

In Great West Casualty Co. v. Intellectual Ventures II LLC, [IPR2016-01534] (February 15, 2017), the PTAB declined to institute an IPR because petitioners were estopped by their prior challenge to U.S. Patent No. 7,516,177....more

District Court Stays Case Pending Inter Partes Review After Non-Petitioning Defendant Agrees to be Bound by Estoppel Provisions

In a previous order, the district court granted a motion to stay pending Inter Partes Review ("IPR") but deferred ruling on the Motion to Stay with respect to EMC Corporation "until EMC Corporation has filed a Notice with the...more

IPR Estoppel Provisions May Not Be That Scary After All

IPR petitioners wary of the statutory estoppel under 35 U.S.C. § 315(e)(2) may have reason to be cautiously optimistic. Judge Sue Robinson of the Federal District Court of Delaware recently held that Toshiba is not estopped...more

Setting Up the Scope of IPR Estoppel for the Federal Circuit

On January 11, Judge Sue L. Robinson issued her final decision on statutory estoppel in district court post-inter partes review (“IPR”) proceeding, confirming her decision on summary judgement of invalidity and cross motion...more

IPR Estoppel Extends Only to Instituted (and Subsumed) Grounds; Arguments in Support of a Motion to Stay, Amidst Developing Law,...

On January 19, 2017, Judge Susan Illston of the Northern District of California granted-in-part and denied-in-part a group of plaintiffs’ (collectively, “Plaintiffs”) motion to strike portions of defendant Ariosa Diagnostic,...more

Patent Owner Files Petition for Writ of Mandamus to Federal Circuit Regarding PTAB Estoppel

Although we typically focus our posts on biosimilar-specific issues, we wanted to highlight a recent IPR-related filing that is likely of interest to many of our readers. The scope of estoppel that attaches to a...more

11th Circuit Affirms Decision that Insurer Is Not Estopped from Denying Pre-Tender Costs

In EmbroidMe.com, Inc. v. Travelers Prop. Cas. Co. of Am., No. 14-10616, 2017 U.S. App. LEXIS 368 (11th Cir. Jan. 9, 2017), the Eleventh Circuit had occasion to consider whether an insurer had an obligation to reimburse its...more

Issue One: Keeping Tabs on the PTAB

The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more

District Court Denies Motion to Stay Pending Ex Parte Reexamination Where Defendant Did Not Pursue Inter Partes Review

After filing an ex parte reexamination with the Patent Office, the defendant filed a motion to stay the action pending the ex parte reexamination. In analyzing the request to stay the action, the district court noted...more

An Examination “Off-Ramp” For Motions To Amend Still Raises Hopes and Questions

During the first three years of implementing the America Invents Act (AIA), Patent Trial and Appeal Board (PTAB) decision-making created a perception that a patent owner’s ability to amend claims during a post-grant...more

Quality Built Homes Revisited: The Court of Appeals Weighs In On Critical Issues

If you happen to work in local government, are a developer who has worked with a local government, or simply have an interest in the world of municipal water and sewer services, you are no doubt aware of the North Carolina...more

Reduced Scope of Post-IPR Estoppel Imperils Litigation Stays

In Depomed, Inc. v. Purdue Pharma LP et al., 3-13-cv-00571 (NJD November 4, 2016, Mem. Op. Dkt. 238) (Bongiovanni, MJ), the Court analyzed and applied recent Federal Circuit decisions limiting the scope of post-IPR estoppel...more

IPR Estoppel Narrowed Even Further in D. Delaware Ruling

Despite the astounding success for patent challengers to date in IPR proceedings, are you one who has been worried about the effects of the IPR estoppel in future litigation? Has this concern dissuaded you from considering...more

Court Declines To Vacate No Willfulness Opinion And Laches/Estoppel Trial Is Scheduled

Stark, C.J. Plaintiff’s motion to vacate summary judgment of no willfulness is denied. Additional issues addressed in a status letter are resolved. A jury trial was held January 11-26, 2016. The court previously, based...more

Washington Court Rejects Bad Faith Coverage by Estoppel Because Insured Was Insulated from Liability

This week, the Division I Washington Court of Appeals granted partial relief to an insurer and held that if an insured is legally insulated from any exposure to a tort victim, the presumption of harm in a bad faith claim...more

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