News & Analysis as of

§315(e) Patent Litigation

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights Newsletter - May 2023: Beware of Collateral Estoppel at the PTAB

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

Morgan Lewis

Federal Circuit Clarifies IPR Estoppel Burden

Morgan Lewis on

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

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2021 PTAB Year in Review: Analysis & Trends: IPR Estoppels: A Power Imbalance for Plaintiffs and Defendants

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

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2021 PTAB Year in Review: Analysis & Trends

[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

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - October 2020: Joinder Petitioner Has Different § 315(e)(2) Estoppel Than Original Petitioner

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

Mintz - Intellectual Property Viewpoints

Joinder to the Rescue: Federal Circuit holds that joinder of instituted IPRs does not result in estoppel under § 315(e)

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

Knobbe Martens

Joining an IPR Triggers IPR Estoppel Only for Instituted Grounds

Knobbe Martens on

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

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - September 2020: Snap Shot Summer 2020 - Recent Trends in Applying 315(e)/325(e) Estoppel

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

Jones Day

Federal Circuit Tightens Standing Requirements For IPR Appeal

Jones Day on

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

Jones Day

EDTX Interprets Federal Circuit Precedent Narrowly, Recommends Applying §315 Estoppel Broadly

Jones Day on

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

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