Estoppel Doctrine in China's Patent System
In 2016, the Federal Circuit expressed doubt that claim constructions from the PTAB could give rise to estoppel in later litigation because “the [PTAB] applies the broadest reasonable construction of the claims while the...more
The Federal Circuit recently issued a decision in SoftView LLC v. Apple Inc. clarifying the scope of patent owner estoppel set forth in 37 C.F.R. § 42.73(d)(3)(i). 2024 WL 3543902 (Fed. Cir. July 26, 2024). The regulation...more
Precedential and Key Federal Circuit Opinions - 1. BACKERTOP LICENSING LLC [OPINION] (23-2367, 23-2368, 24-1016, 24-1017 Prost, Hughes, and Stoll) - Hughes, J. The Court affirmed the District Court’s orders (1)...more
Recently, District Court Judge Thomas S. Zilly in the Western District of Washington granted Ironburg Inventions Ltd.’s (“Ironburg”) motion for inter partes review (“IPR”) estoppelpursuant to 35 U.S.C. § 315(e)(2), which...more
In GeigTech East Bay v. Lutron Electronics, patent owner GeigTech argued that Lutron should be estopped under 35 U.S.C. § 325(e)(2) from asserting two prior art grounds that it said Lutron could have reasonably raised in its...more
Cell therapy products in the U.S. are estimated to be worth approximately $4.5 billion currently and expected to grow to over $30 billion in the next ten years. As market value increases litigation is bound to heat up....more
The Patent Trial and Appeal Board held all challenged claims of IGT’s patent unpatentable as obvious over two prior art patents. Zynga Inc. v. IGT, IPR2022-00199-32. In doing so, the PTAB further held that, contrary to...more
The Federal Circuit has issued an opinion on the burden of proof for establishing estoppel in a case involving an inter partes review (IPR) petition. The case is Ironburg Inventions Ltd. v. Valve Corp....more
Who Bears the Burden of Proof for IPR Estoppel? In Ironburg Inventions Ltd. v. Valve Corp., Appeal No. 21-2296, the Federal Circuit held that the patentee has the burden of proving that invalidity grounds not raised in a...more
Four subjects stood out in patent litigation in Texas in April 2023: (1) applicability of the customer-suit exception to the first-to-file rule; (2) the level of ties a reasonable royalty methodology must have to the facts of...more
The Patent Trial and Appeal Board (PTAB) has denied VLSI’s motion to terminate Intel’s involvement in an inter partes review (IPR) of a VLSI patent. VLSI and Intel are engaged in a legal war across several jurisdictions....more
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
On April 3, 2023, the Federal Circuit issued an opinion in Ironburg Inventions Ltd. v. Valve Corp., addressing the scope of what invalidity grounds are subject to estoppel pursuant to 35 U.S.C. § 315(e)(2) and the burden of...more
In the April 3, 2023 decision in Ironburg Inventions Ltd. v. Valve Corporation, 21-2296, Doc. 66, the Federal Circuit provides crucial guidance regarding inter partes review (IPR) estoppel under 35 U.S.C. § 315(e)(2). In...more
Yesterday, in Ironburg Inventions Ltd. v. Valve Corp., Case No. 21-2296 (Fed. Cir. Apr. 3, 2023), the Federal Circuit held that for estoppel to apply under 35 U.S.C. § 315(e)(2), a patent holder must prove, by a preponderance...more
IRONBURG INVENTIONS LTD. v. VALVE CORP. Before Lourie, Clevenger, and Stark. Appeal from the United States District Court for the Western District of Washington. Summary: The patentee has the burden of proving that...more
Speakers will offer updates, case summaries, and analysis of the significant 2022 PTAB guidance, actions, and rulings. Topics include: the Director’s 2022 Fintiv guidance, PTAB discretionary denial, the use of applicant...more
Caltech sued Broadcom and Apple for infringement, asserting three of its data transmission patents against Broadcom’s WiFi chips and certain Apple products that incorporate those chips. Apple then filed IPR petitions...more
As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more
We are committed to providing insightful commentary on IP developments from around the world to our Japanese clients. In light of that effort, we are continuing our free monthly webinar series, McDermott IP Focus. During...more
In conjunction with the release of the firm's year-in-review report, speakers will offer case summaries and analysis of the significant 2022 appellate rulings discussed in the report. Topics of the featured intellectual...more
In China, we indeed have estoppel doctrine, but it is not provided in the Patent Law. However, in the Judicial Interpretations of the Supreme People's Court (SPC) about hearing the patent infringement litigation, the estoppel...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
Before Stoll, Schall, and Cunningham. Appeal from the United States District Court for the Western District of Texas....more
For most of us, we’re stuck in the August heat, on delayed European vacations, or hopefully just hanging out at the beach. But for the Court it still was work as usual, including a return trip to the Federal Circuit for the...more