The Federal Circuit dismissed an appeal of a final written decision in an IPR based on issue preclusion where a district court had dismissed a complaint finding the patent claims subject-matter ineligible. The patentee had...more
The Patent Trial and Appeal Board rejected a patent owner’s argument that the Board should exercise its discretion to deny a petitioner’s inter partes review (IPR) petition because Petitioner failed to name a time-barred real...more
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
In a decision denying summary judgment, the District of Massachusetts weighed in on an unsettled issue: whether after receiving a final written decision in an inter partes review, a patent challenger is permitted to raise...more
A judge in the District of Delaware has ruled that an estoppel under 35 U.S.C. § 315(e)(2) does not apply to prior-art products, even if those products are “cumulative” of prior-art patents or printed publications that were...more
The Eastern District of Texas has rejected a plaintiff’s argument that if a patent owner concedes in an inter partes review (IPR) that a prior art reference discloses all elements of a patent claim, the reference necessarily...more
During a Markman hearing, a judge in the Eastern District of North Carolina denied a plaintiff’s request that the defendant be judicially estopped from arguing claim constructions that were different from positions the...more
In the last two years, the Patent Trial and Appeal Board has issued two precedential decisions (in NHK and Fintiv) that set forth the board’s test for determining whether to deny an inter partes review (IPR) petition based on...more
12/23/2020
/ §314(a) ,
Claim Construction ,
Denial of Institution ,
Inter Partes Review (IPR) Proceeding ,
Parallel Proceedings ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Precedential Opinion ,
Trial Practice Guidance
A district court has ruled that the scope of IPR estoppel under 35 U.S.C. § 315(e)(2) did not apply to invalidity grounds that relied on physical products. The court also declined to apply judicial estoppel, notwithstanding...more
A district court has ruled that the statutory estoppel arising from an inter partes review (IPR) proceeding does not apply to anticipation and obviousness defenses that rely significantly on a physical device. The court also...more
The District Court for the Northern District of West Virginia recently found method of treatment claims directed to treating a specific disease at a specific dose invalid for lack of written description based on the context...more
7/6/2020
/ Evidence ,
Hatch-Waxman ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Prosecution History ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Treatment Method Patents ,
Written Descriptions
Declaratory judgment (“DJ”) actions have fallen out of favor in patent cases in recent years. In 2011, DJ complaints made up approximately 11 percent of all patent cases filed that year. Last year, they made up less than 5...more
An accused infringer in a district court case could not take advantage of a prior claim construction ruling from an inter partes review (IPR) proceeding involving unasserted claims of the same patent. The Patent Trial and...more
When bringing a lawsuit for a declaratory judgment of non-infringement of a patent, careful pleading may allow plaintiffs to avoid the restrictions against later seeking inter partes review (IPR) of that patent, while also...more
A federal judge in the Northern District of California recently rejected an argument that would have expanded inter partes review (IPR) estoppel seemingly beyond the plain reading of 35 U.S.C. § 315(e)(2). The plaintiff had...more
Chief Judge Stark granted a patent owner’s motion for summary judgment of inter partes review (IPR) estoppel, holding that obviousness defenses based on a prior art product could not be asserted because a prior art...more
2/3/2020
/ Estoppel ,
Evidence ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patents ,
Printed Publications ,
Prior Art ,
Summary Judgment
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
12/27/2019
/ Claim Preclusion ,
Defense Strategies ,
Intellectual Property Protection ,
Manufacturers ,
Motion for Summary Judgment ,
Noninfringement ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patents ,
Suppliers
A district court has denied a patent owner’s motion to strike wholesale a defendant’s affirmative defense of invalidity. The key issue in the motion to strike was the application of the estoppel provision of 35 U.S.C. §...more
11/13/2019
/ Affirmative Defenses ,
Estoppel ,
Evidence ,
Final Written Decisions ,
FRCP 12(f) ,
Inter Partes Review (IPR) Proceeding ,
Motion To Strike ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Pleadings ,
Post-Grant Review ,
Prior Art ,
Question of Fact ,
Section 101
A magistrate judge determined that a prevailing party in a district court litigation could be entitled to an award of attorneys’ fees based solely on conduct during an inter partes review (IPR) proceeding.
In September...more
A Central District of California judge has clarified his prior ruling on summary judgment that estoppel under 35 U.S.C. § 315(e)(2) that applies to certain obviousness invalidity grounds raised by Defendants. In the prior...more
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
9/9/2019
/ Appeals ,
Claim Preclusion ,
Disclaimers ,
Judicial Authority ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents ,
Vacated
The Federal Circuit has ruled that neither the exhaustion nor permissible repair doctrines allow manufacture of new replacement components covered by design patents.
The Automotive Body Parts Association (ABPA) sued Ford...more
The Patent Trial and Appeal Board (the “Board”) vacated its institution decision and terminated an inter partes review (IPR) filed by Mylan Pharmaceuticals, Inc. (“Mylan”) based on Mylan’s prior counterclaim seeking a...more
4/15/2019
/ Counterclaims ,
Declaratory Judgments ,
Inter Partes Review (IPR) Proceeding ,
Joinder ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents ,
Time-Barred Claims ,
Vacated ,
Voluntary Dismissals
The Federal Circuit reversed an inter partes review (IPR) decision holding that the Patent Trial and Appeal Board (the “Board”) incorrectly applied the standard for an inventor to prove diligence in reducing the invention to...more
In Ruiz Food Products, Inc. v. MacroPoint LLC, the Patent Trial and Appeal Board (PTAB) considered whether the time-bar provision of 35 U.S.C. § 315(a)(1) was triggered when a real party-in-interest had previously filed an...more
3/1/2019
/ Counterclaims ,
Declaratory Judgments ,
Dismissals ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prejudice ,
Real Party in Interest ,
Subject Matter Jurisdiction ,
Time-Barred Claims