Estoppel Doctrine in China's Patent System
The Federal Circuit recently resolved a split among the district courts whether patent infringement defendants who bring inter partes review (IPR) challenges are estopped from raising new prior art challenges in a co-pending...more
In a significant development for patent litigants, the Federal Circuit in Ingenico Inc. v. IOENGINE, LLC, affirmed an important limitation on the scope of IPR estoppel under 35 U.S.C. § 315(e)(2). Specifically, the court held...more
In what is certain to become a landmark decision, the Federal Circuit has resolved a long-standing question that divided patent litigators and judges alike: does IPR estoppel apply to physical systems (“system art”) described...more
The Patent Trial and Appeal Board has denied a patent owner’s motion to terminate an inter partes review proceeding finding that the unidirectional nature of estoppel under 35 U.S.C. § 315(e) renders common-law claim...more
Equitable estoppel is an affirmative defense that generally prevents one party from misleading another to the other’s detriment or to the misleading party’s own benefit....more
Year-End Analysis and Future Forecasts on the Most Significant Developments Impacting Post-Grant Proceedings. Attend ACI’s inaugural PTAB Practice Briefing virtually on December 2nd for in-depth discussions and year-end...more
Ownership status in a closely-held business is the first and most vital box almost every business divorce petitioner must check....more
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...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
There is no doubt that “the potential for estoppel is one of the important considerations for defendants in deciding whether or not to file an [inter partes review (“IPR”)] petition.” Shaw Indus. Grp., Inc. v. Automated Creel...more
The PTAB denied Apple’s motion to withdraw both its IPR petition and concurrent motion for joinder to prevent Apple from circumventing potential estoppel ramifications in Apple Inc. v. Papst Licensing GmbH & Co. KG,...more
When a patent is challenged in an inter partes review and a final written decision has been issued, a statutory estoppel will prevent certain subsequent proceedings. The scope of the estoppel, which applies to both Patent and...more
A recent case at the Federal Circuit seems to significantly limit the estoppel effect of an Inter Partes Review (IPR) that is instituted on some grounds, but not all. The case adds another arrow in the strategic quiver of...more