Estoppel Doctrine in China's Patent System
The Federal Circuit recently held, for the first time, that patent owners bear the burden of proof for an Inter Partes Review (“IPR”) Estoppel affirmative defense that an alleged infringer failed to include prior art in a...more
In the companion district court case to the Supreme Court’s 2019 Thryv v. Click-to-Call decision regarding the scope of review for inter partes review (IPR) decisions, the US Court of Appeals for the Federal Circuit addressed...more
In a recent decision, 25 F.4th 1035 (Fed. Cir. 2022), the Federal Circuit dismissed for lack of jurisdiction an appeal of the PTAB’s decision that estopped a Petitioner from maintaining a third IPR that challenged the same...more
Ordered To Agree: Binding Settlement Agreement Provision Found Despite Absence of Singular, Executed Agreement - In Plasmacam, Inc. v. Cncelectronics, LLC Appeal No. 21-1689, the Federal Circuit held that an agreement on...more
Addressing inter partes review (IPR) estoppel after the Supreme Court of the United States’ 2018 decision in SAS Institute, Inc. v. Iancu, the US Court of Appeals for the Federal Circuit overruled its decision in Shaw...more
[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
The Federal Circuit issued numerous precedential opinions last week, two of which answered long simmering questions about inter partes reviews (IPRs). Below we discuss a case addressing whether admissions of prior art in the...more
The US Court of Appeals for the Federal Circuit vacated the district court’s grant of judgment as a matter of law (JMOL) of non-infringement where substantial evidence supported the jury’s verdict of induced infringement by...more
On March 9, in Uniloc 2017 LLC v. Facebook Inc., the Federal Circuit held that the no-appeal provision of 35 U.S.C. § 314(d) does not preclude appellate review of the PTAB’s estoppel determination under section 315(e)(1) when...more
Whether you are pursuing patents on your new technology, thinking about bringing patent infringement litigation or defending patent infringement claims in court, knowing the important developments in patent law will help you...more
Network-1 sued HP, among others, for patent infringement. Another defendant then filed an inter partes review (IPR) petition. Following institution, HP filed its own petition on different grounds and a motion to join the...more
[co-author: Kathleen Wills] Last year, the global COVID-19 pandemic created unprecedented challenges for American courts. By making several changes, however, the U.S. Court of Appeals for the Federal Circuit was able to...more
PATENT CASE OF THE WEEK - Apple Inc. v. Voip-Pal.com, Inc., Appeal No. 2018-1456, -1457 (Fed. Cir. Sept. 25, 2020) - In our Case of the Week, the Federal Circuit addressed two novel issues following inter partes review...more
The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more
PATENT CASE OF THE WEEK - Hologic, Inc. v. Minerva Surgical, Inc., Appeal No. 2019-2054, et al. (Fed. Cir. Apr. 22, 2020) - This week’s Case of the Week features a new precedential decision dealing with the doctrine of...more
The Federal Circuit continued its recent willingness to affirm findings of infringement under the doctrine of equivalents (see, e.g., "Eli Lilly & Co. v. Hospira, Inc. (Fed. Cir. 2019)"), in Galderma Laboratories, L.P. v....more
In a case involving at-home glucose monitoring systems, the US Court of Appeals for the Federal Circuit found the patent owner was estopped from asserting a doctrine of equivalents theory of infringement based on subject...more
Mere Potential for Future Appeal Does Not Prevent Triggering Estoppel of Inter Partes Reexamination When Party Fails to Seek Relief in the First Instance - In Virnetx Inc. v. Apple Inc., Appeal Nos. 2017-1591, -1592,...more
In the latest round of the Apple/VirnetX saga, the US Court of Appeals for the Federal Circuit held to its precedents in determining when 35 USC § 317(b) estoppel is triggered against inter partes re-examinations. VirnetX...more
RPX petitioned for inter partes review of ChanBond’s ’822 patent. The Board instituted the IPR and determined that RPX did not show any challenged claim to be unpatentable. RPX appealed the final written decision to the...more
When an IPR petition results in a final written decision, the IPR petitioner (or the petitioner’s real party in interest or privy) is estopped from asserting in a civil litigation or an ITC action that “the claim is invalid...more
The US Court of Appeals for the Federal Circuit recently held en banc that the one-year time bar under 35 USC § 315(b) applies even when a properly served infringement complaint is dismissed without prejudice, thus barring...more
On August 3, 2018, the U.S. Court of Appeals for the Federal Circuit dismissed an appeal from the USPTO Patent Trial and Appeal Board (PTAB) in JTEKT Corporation v. GKN Automotive Ltd. on the basis that the appellant lacked...more
PATENT CASE OF THE WEEK - WesternGeco LLC v. Ion Geophysical Corp., Appeal Nos. 2016-2099, -2100, -2101, -2332, -2333, -2334 (Fed. Cir. May 7, 2018) - In an appeal from an inter partes review, the Federal Circuit...more
At this point, several cases have examined the appealability of the Board’s institution decisions in inter partes review (“IPR”) proceedings. See, e.g., Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2015) (holding...more