News & Analysis as of

Drafting Intellectual Property Agreements: Best Practices From a Litigator’s Perspective

As intellectual property licensing continues to grow more prevalent, legal practitioners and business personnel are being asked to craft and negotiate agreements that can significantly impact a business’s ability to compete...more

IPR estoppel might not be so scary

The rules for post-grant proceedings established by the America Invents Act (AIA) provide that once the Patent Trial & Appeal Board (Board) renders a final written decision, a petitioner in an inter partes review (IPR) is...more

Estoppel Versus Discretion: How is the PTAB Deciding Multiple Petitions Against the Same Patent?

The PTAB has denied petitions filed by the same petitioner against the same claims, even where the subsequent petition relied upon completely different prior art (IPR2014-00506), reasoning that a petitioner should not hold...more

Plaintiff Avoids Headache of Having Its Thermometer Patent Invalidated at Summary Judgment

In a recent District of Massachusetts case, a defendant attempted to use the crucible of summary judgment to invalidate the plaintiff’s body temperature detection patents. But, as shown in the Court’s ruling, sometimes that...more

PTAB Refuses to Honor “No-Challenge” Clauses

Thankfully, that patent case you litigated a few years back is long gone in the rear-view mirror. As the plaintiff, you received a nice lump sum payment and a going forward royalty. Even better, the defendant agreed to never...more

En Banc Federal Circuit Maintains Laches Defense With Post-Suit Twist (SCA V. First Quality)

Today, in SCA v. First Quality, the Federal Circuit sitting en banc ruled that the equitable doctrine of laches remains a valid defense in patent infringement actions notwithstanding the Supreme Court’s recent decision in...more

PTAB Limits Scope Of Estoppel To Not Include Grounds Denied As Redundant

In a recent Inter Partes Review (“IPR”) institution decision, Apotex v Wyeth (IPR2015-00873, Paper No. 8), the USPTO’s Patent Trial and Appeal Board (the “Board”) found that some previously-asserted grounds of invalidity were...more

Inter Partes Review Proceedings: A Third Anniversary Report

When inter partes review (IPR) proceedings became effective in September 2012, few people would have predicted the transformative effect it would have on patents and the litigation landscape. Three years in, IPR has become...more

Petitioners Only Get One Bite at the Same Part of the Apple - Alcohol Monitoring Systems, Inc. v. Soberlink, Inc.

In a decision to institute inter partes review (IPR), the Patent Trial and Appeal Board (PTAB or Board) determined that the petitioner was estopped from challenging several claims of the patent-in-question as a consequence of...more

Changes in the Law Can Open the Door for Follow-On Petitions - Westlake Services LLC v. Credit Acceptance Corp.

In an order issued on a patent owner’s motion to terminate in connection with a second petition for covered business method (CBM) patent review, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or...more

ITC Finds Nokia Does Not Infringe Interdigital Patents, So Does Not Address FRAND Issues (337-TA-613)

On Friday, the U.S. International Trade Commission issued a Notice on its review of Judge Essex’s decision in the InterDigital v. Nokia investigation and found that Nokia did not infringe InterDigital’s 3GPP patents (see our...more

Estoppel After Final Written Decisions in IPR and PGR Proceedings

The past few months have shed some light on the Patent Trial and Appeal Board’s approach to estoppel in post-grant proceedings. Estoppel, under 35 U.S.C. §§ 315(e)(1) (for inter partes review) and 325(e)(1) (for post-grant...more

Seventh Circuit Issues Stern Warning For Insurers That Reject Their Duty to Defend

The first line of the Seventh Circuit’s opinion says it all: “This case provides a warning for insurance companies who refuse to defend their insureds.” As the court’s admonishment suggests, insurers that improperly refuse to...more

Seventh Circuit warns insurance companies who refuse to defend their insureds

The Seventh Circuit Court of Appeals recently issued “a warning for insurance companies who refuse to defend their insureds.” In National American Insurance Company v. Artisan and Truckers Casualty Company, No. 14-2694, 2015...more

An Invalidity Argument Without a Home? The PTAB's Discretion to Ignore Grounds for Invalidity

By Shaun R. Snader[1] & George C. Beck The post-grant proceedings established by the America Invents Act – inter partes review (IPR), covered business method (CBM) review, and post-grant review (PGR) –promise faster,...more

In an IPR, Issue Preclusion Does Not Attach Until Appeal Rights Are Exhausted - SDI Technologies, Inc., v. Bose Corp.

Addressing issue preclusion in the context of an inter partes review (IPR), the Patent Trial and Appeal Board (PTAB or Board) allowed the patent owner to present patentability and admissibility arguments from a related IPR,...more

PTAB Decisions Add Some Clarity to Estoppel in AIA Post-Grant Proceedings

The Leahy-Smith America Invents Act (“AIA”) created three new mechanisms for members of the public, including competitors, to challenge the validity of an issued U.S. Patent. As of June 30, 2015, 3,160 petitions for inter...more

Where’s the Beef Part II: Court Refuses To “Butcher” EEOC’s Religious Discrimination Claim

Our loyal blog readers may recall a post we authored in October 2013 regarding EEOC v. JBS USA, LLC (the “Nebraska Case”), where Chief Judge Laurie Smith Camp of the U.S. District Court for the District of Nebraska entered...more

CBM Claims Not Addressed in the PTAB's Final Decision May Be Challenged in a Follow-On CBM Proceeding

Last week, the Patent Trial and Appeal Board added a decision declining to apply estoppel under 35 USC 325(e)(1) to dismiss a follow-on CBM proceeding in Westlake Services LLC v. Credit Acceptance Corp., CBM2014-00176 to the...more

Real Party-in-Interest and Privy of the Petitioner: Part 2 in Estoppel Analysis

Last week we outlined our suggestions as to what an IPR petitioner should assert in an IPR action to avoid triggering the "could have raised" estoppel in a later filed district court action. But what if the party involved in...more

AT&T “Prisoners” Can’t Escape Common Sense: D.C. Circuit Shackles NLRB T-shirt Decision

In a refreshing decision for employers, the D.C. Circuit Court of Appeals earlier this month tossed an eyebrow-raising NLRB decision which permitted AT&T customer-facing and publicly visible technicians to wear faux prison...more

Board Guidance on its View of Petitioner Estoppel: Westlake Services v. Credit Acceptance Corp:

Last week, the Board provided an opinion to offer guidance on its view of the scope of petitioner estoppel. The Westlake Services v. Credit Acceptance Corp. decision relates to the scope of estoppel to a Petitioner following...more

Florida Court Rules Borrowers Who Surrender Property in Bankruptcy Can't Later Take it Back

Thanks to several recent United States Bankruptcy Court decisions in Florida, mortgage servicers should now expect borrowers who surrender their real property in bankruptcy to not contest foreclosure later. Since the...more

Breaching the Duty to Defend: Remedy for Recovering Peace of Mind

Given the American Law Institute’s recent discussion at its May 2015 meeting, regarding Preliminary Draft No. 1 of the Restatement on Liability Insurance, Chapter 2, Sections 20 and 21, I would like to add my voice to those...more

Recent Case Law, PTAB Decisions Provide Clarity on Exceptions to "Could-Have-Raised" Estoppel

35 USC §315(e)(2) prohibits a petitioner (or real party in interest or privy of the petitioner) in an Inter Partes Review (IPR) of a patent claim from asserting in district court litigation that "the claim is invalid on any...more

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