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
A recent Federal Circuit opinion clarified that patent owners carry the burden of proving that inter partes review (IPR) estoppel applies to invalidity grounds not included in their IPR petitions. The Federal Circuit also...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
In Network-1 Technologies, Inc. v. Hewlett-Packard Company, the Federal Circuit vacated and remanded the district court’s holding that joinder petitioner Hewlett Packard (“HP”) (1) could have tried to raise new grounds in its...more
In Network-1 Techs., Inc. v. Hewlett-Packard, No. 18-2338, the Federal Circuit reversed and vacated multiple aspects of the district court’s final judgment holding that Hewlett-Packard (HP) did not infringe U.S. Patent No....more
NETWORK-1 TECHNOLOGIES, INC. v. HEWLETT-PACKARD COMPANY, HEWLETT PACKARD ENTERPRISE COMPANY - Before Prost, Newman, and Bryson. Appeal from the United States District Court for the Eastern District of Texas. Summary: A...more
This month we first refresh our readers on Shaw and SAS, and then we will look at two recent exemplary cases that we feel are illustrative of the current trends for petitioner estoppel. We will show that the trend in the...more
The Federal Circuit recently tightened the standing requirements for an IPR appeal in AVX Corp. v. Presidio Components, Inc., No. 18-1106, 2019 WL 2079178 (Fed. Cir. May 13, 2019). AVX previously challenged the validity of...more
In Biscotti Inc. v. Microsoft Corp., Magistrate Judge Payne recommended that estoppel under §315(e) apply broadly against Microsoft in an upcoming patent infringement trial scheduled for early June 2017. No....more