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America Invents Act › Assignor Estoppel

The Leahy-Smith America Invents Act is a United States federal statute enacted in 2011 aimed at simplifying the U.S. patent system and allowing inventions to be brough to market sooner. The AIA makes significant... more +
The Leahy-Smith America Invents Act is a United States federal statute enacted in 2011 aimed at simplifying the U.S. patent system and allowing inventions to be brough to market sooner. The AIA makes significant changes to the patent system, including changing from a first-to-invent scheme to a first-to-file scheme, eliminating interference proceedings and developing post-grant opposition.  less -
Haug Partners LLP

You Use It, You Lose (Protection Over) It: Federal Circuit Clarifies Public-Use Bar Requirements

Haug Partners LLP on

I. Minerva Surgical v. Hologic: Background - The United States Court of Appeals for the Federal Circuit issued a precedential opinion earlier this year in Minerva Surgical, Inc. v. Hologic, Inc. clarifying the “in public...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions: Introduction

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

Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no exception. It briefly returned to live...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

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

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

McDonnell Boehnen Hulbert & Berghoff LLP

Oral Argument in Minerva Surgical Inc. v. Hologic, Inc.

McDonnell Boehnen Hulbert & Berghoff LLP on

The Supreme Court heard oral argument last week in Minerva Surgical Inc. v. Hologic, Inc. over the issue of assignor estoppel. As a reminder, the case arose in an infringement suit over U.S. Patent Nos. 6,782,183 and...more

McDermott Will & Emery

Assignor Estoppel Does Not Apply to AIA Challenges

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit reiterated that while assignor estoppel prevents a party that assigned a patent to another party from later challenging the validity of the assigned patent in district court, it...more

Mintz - Intellectual Property Viewpoints

Federal Circuit Finds IPRs Can Circumvent Assignor Estoppel

Mintz - Intellectual Property Viewpoints on

On Wednesday, the Federal Circuit held that while assignor estoppel is applicable in district court proceedings, petitions for inter partes review continue to not be subject to the equitable remedy. Assignor estoppel is an...more

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

PTAB Strategies and Insights - December 2018: Federal Circuit Holds No Assignor Estoppel in AIA Proceedings

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

Recently, the Federal Circuit held that an ex-employee (of Cisco) who founded a competitor (Arista) can challenge their own assigned patent, finding that, after assignment, they are not the patent owner. The Court held that...more

Fox Rothschild LLP

Federal Circuit: Even The Inventor Can Challenge Patent’s Validity

Fox Rothschild LLP on

Historically, inventors who assign a patent to a company or other entity have been barred from later challenging the patent’s validity under the doctrine of “assignor estoppel.” This common-law doctrine has been in place for...more

McDonnell Boehnen Hulbert & Berghoff LLP

Arista Networks, Inc. v. Cisco Systems, Inc. (Fed. Cir. 2018)

McDonnell Boehnen Hulbert & Berghoff LLP on

AIA Post-grant Reviews Not Precluded by Assignor Estoppel - On Friday, November 9, 2018, the Federal Circuit handed down its decision in Arista Networks, Inc. v. Cisco Systems, Inc., deciding that the Board had erred in...more

Latham & Watkins LLP

No Assignor Estoppel in AIA Inter Partes Review

Latham & Watkins LLP on

The popularity of IPR proceedings will likely increase as assignor estoppel does not apply to IPRs. Inter Partes Review (IPR) proceedings have become a very popular method of challenging patent validity for actual and...more

McDermott Will & Emery

IP Update, Vol. 16, No. 2, -- February 2013

McDermott Will & Emery on

In This Issue: Patents - Supreme Court: State Court Has Jurisdiction over a Legal Malpractice Claim; Nothing Non-Obvious About Applying Pre-Existing Technology to the Internet; The Federal Circuit Is Not the...more

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