News & Analysis as of

Estoppel

Commission to Weigh in on IPR Estoppel

by Jones Day on

The Commission has determined to review an initial determination finding that Respondent Ford is estopped under 35 U.S.C. § 315(e)(2) from asserting certain invalidity defenses previously adjudicated by the Patent Trial and...more

Sanofi, Sanofi-Aventis U.S., LLC V. Watson Labs. Inc., Sandoz, Inc.

by Knobbe Martens on

Federal Circuit Summaries - Before PROST, WALLACH, and TARANTO.  Appeal from the District of Delaware Summary: (1) A party may not avoid inducement based on “substantial non-infringing uses,” and (2) prosecution history...more

Hydraulic Fracturing Services: New York Appellate Court Addresses Whether Field Invoice Terms Limit Damage Claims

The Supreme Court of the State of New York (Appellate Division) (“Court”) in a November 9th Memorandum and Order (“Order”) addressed whether field invoices provided to a customer for the performance of hydraulic fracturing...more

The hidden exposure of tenant estoppels and SNDAs

by Thompson Coburn LLP on

You have signed a lease as a tenant. The negotiations were long and convoluted, but the lease has been signed and the space has been built-out. You have moved your company into the space, paid the security deposit, and are...more

District Courts Split on Admissibility of Patent Owner IPR Victories

by Jones Day on

In an opinion dated October 12, 2017, the U.S. District Court for the Eastern District of Wisconsin granted a motion in limine to exclude evidence that a challenged patent had survived twenty post-issuance proceedings,...more

Oil States Energy and SAS Institute: SCOTUS to Review Inter Partes Reviews

by Revision Legal on

As we recently discussed with respect to the proposed STRONGER Patents Act of 2017, legal debate continues to swirl around inter partes reviews. The US Supreme Court has entered the ring recently by accepting certiorari on...more

MoFo IP Newsletter - October 2017

by Morrison & Foerster LLP on

8 Ways To Avoid Inter Partes Review Estoppel - Inter partes review has become an enormously popular method of challenging patents. One important downside of filing for IPR, however, is that, if the petitioner loses, it...more

Non-Signatories Succeed In Compelling Arbitration In State Courts

The high courts of two states have allowed non-signatories to compel arbitration in recent weeks. The cases show courts are addressing non-signatory issues using different standards and raise important drafting issues for...more

The Eastern District of Texas Again Broadly Applies IPR Estoppel and Finds a Joined Party in the IPR Is Also Subject to Estoppel

by Knobbe Martens on

A magistrate judge in the Eastern District of Texas recommended in Network-1 Technologies, Inc. v. Alcatel-Lucent USA, Inc. Case No. 6:11-cv-492 (E.D.Tex. September 25, 2017) that Hewlett-Packard (“HP”) should be estopped...more

An update on the shifting standard for IPR estoppel

by Thompson Coburn LLP on

Inter partes review (IPR) proceedings continue to be as popular as ever. Filings before the Patent Trial and Appeal Board (“Board”) are up year-over-year, and the trend doesn’t appear to be slowing. While the advantages of...more

Issue Eight: PTAB Trial Tracker

by Goodwin on

A Surprise Move Designed to Shield Patents from IPR - On September 8, 2017, Allergan announced that it had assigned its patents covering Restasis®, a dry eye treatment with a reported $1.4B in sales last year, to the Saint...more

E.D. Tex. Finds that Prior Art Estoppel Applies to References Rather than Specific Combinations of References

Defendant Hewlett Packard filed a Petition for IPR challenging claims of U.S. Patent No. 6,218,930 as invalid in view of two prior art references. On the same day Defendant requested joinder with an earlier filed IPR that...more

Doctrine of Equivalents and Prosecution History Estoppel Around the World

Please see full Doctrine of Equivalents Chart for Countries around the World. ...more

Washington Bad Faith Law At A Glance

by Sedgwick LLP on

In all insurance matters, all persons owe a duty of good faith, to abstain from deception, to practice honesty and equity, and to preserve inviolate the integrity of insurance. RCW 48.01.030; Appendix A. A cause of action...more

Eastern District of Texas Judge Holds that Statements Made to PTAB Constitute Disclaimer

On September 9, 2017, an Eastern District of Texas magistrate judge issued a report and recommendation holding that a plaintiff was estopped from asserting its patent infringement claims because statements made in response to...more

Global Patent Prosecution Newsletter - September 2017

Worldwide Doctrine of Equivalents and Prosecution History Estoppel - The doctrine of equivalents (DOE) arises in the context of a patent infringement action where the accused product or process does not literally infringe...more

Case Law Suggests Use Of Expert Opinion For Determining IPR Estoppel Of Grounds That Petitioner "Reasonably Could Have Raised"

by Brinks Gilson & Lione on

Under 35 U.S.C. § 315(e), a final written decision in an inter partes review (“IPR”) by the Patent Trial and Appeal Board (“PTAB”) results in estoppel of certain actions by the petitioner. Specifically, under 35 U.S.C. §...more

Another Example of Practical Estoppel in IPR Practice

Earlier this year, the Federal Circuit held that statements made by patentees in an inter partes review (IPR) can constitute prosecution disclaimer. Aylus Networks, Inc. v. Apple Inc., No. 2016-1599 (Fed. Cir. May 11, 2017)....more

Blog: Court of Appeal holds that a failure to exercise a “duty to speak” can form the basis of an estoppel

by Cooley LLP on

In Ted Baker PLC v (1) AXA Insurance UK PLC (2) Fusion Insurance Services Ltd (3) Tokio Marine Europe Insurance Ltd [2017] EWCA Civ 4097 Ted Baker PLC (TB) suffered significant business interruption losses as a result of...more

8 Ways To Avoid Inter Partes Review Estoppel

by Morrison & Foerster LLP on

Inter partes review has become an enormously popular method of challenging patents. One important downside of filing for IPR, however, is that, if the petitioner loses, it faces an estoppel that could prevent it from raising...more

3 Key Takeaways: Navigating the Post-Grant Landscape

Kilpatrick Townsend’s John Alemanni, Allison Dobson, Matthew Holohan, and Wab Kadaba recently presented on navigating the Post-Grant landscape. Here are three key takeaways from their presentation. The STRONG Patents Act...more

District Court Addresses IPR Estoppel of Nonpetitioned Grounds and Appoints Expert to Determine Whether Skilled Artisan Could Have...

In Oil-Dri Corporates of America v. Nestle Purina Petcare Company, the court recently held that a defendant who has filed a parallel inter partes review (IPR) petition is estopped from raising invalidity grounds in the...more

Early Summary Judgment Denied in Stapler Patent Lawsuit

Judge Gorton in the District of Massachusetts recently denied an early summary judgment motion filed in a patent infringement suit, holding the motion to be premature on two grounds. First, a scheduled claim construction...more

Issue Seven: PTAB Trial Tracker

by Goodwin on

Parallel Proceedings - In In re Certain Network Devices and Related Software and Components Thereof, No. 337-TA-935, the U.S. International Trade Commission (“ITC”) had issued a limited exclusion order (“LEO”) and a cease...more

District Court Finds Estoppel for Non-Petitioned Grounds but not for Dicta

by Jones Day on

Since the Federal Circuit’s decision in Shaw Indus. Grp., Inc. Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir. 2016), district courts have been finding no estoppel in court proceedings for invalidity positions that were...more

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