Estoppel Doctrine in China's Patent System
In a precedential opinion entered on May 7, 2025, the United States Court of Appeals for the Federal Circuit affirmed a jury verdict invalidating claims of two patents for anticipation and obviousness over the prior art....more
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
Key Takeaways - - A recent Federal Circuit decision in a case involving an inter partes review (IPR) significantly narrowed a patentee’s ability to rely on estoppel to block a defendant from raising invalidity grounds. -...more
Recently, an ITC Administrative Law Judge applied IPR statutory estoppel under 35 U.S.C. § 315(e)(2) in denying a Respondent’s motion for summary determination of invalidity in Certain Audio Players and Components Thereof,...more
In IOENGINE, LLC v. Ingenico Inc. (Fed. Cir. 2025), the Federal Circuit narrowed the scope of IPR estoppel under 35 U.S.C. § 315(e)(2), which precludes an IPR petitioner from asserting in court that a patent claim “is invalid...more
In a matter of first impression, the US Court of Appeals for the Federal Circuit found that inter partes review (IPR) estoppel does not preclude a petitioner from relying on the same patents and printed publications as...more
This LawFlash details strategic takeaways and practical lessons from the recent US Court of Appeals for the Federal Circuit case on IPR estoppel, evidence of public use, and jury instructions on specific issues....more
In its recent decision in Ingenico Inc. v. IOENGINE, LLC, the Federal Circuit affirmed the district court’s decision to allow Ingenico to introduce certain prior art at trial, finding that inter partes review (IPR) estoppel...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
On May 7, 2025, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) affirmed a decision by the U.S. District Court for the District of Delaware (“district court”) that found claims of two IOENGINE, LLC (“IOENGINE”)...more
On May 7, 2025, the Federal Circuit issued a precedential decision in Ingenico Inc. v. IOENGINE, LLC that narrows the scope of inter partes review (IPR) estoppel under 35 U.S.C. § 315(e)(2), resolving a longstanding district...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
Contour IP Holdings, LLC, v. GoPro, Inc., Case No. 17-cv-04738-WHO (N.D. Cal. March 24, 2025) - The estoppel provision of the American Invents Act (AIA) (35 U.S.C. § 315(e)(2)) prevents a petitioner in an inter parties...more
Estoppel certification in reexamination prevents relitigation of resolved issues....more
This Federal Circuit Opinion analyzes statutory estoppel under 35 U.S.C. § 315(e)(1) and examines offensive and defensive arguments related to § 103 obviousness. Gesture Technology Partners, LLC is the owner of U.S....more
Ex parte reexamination (EPRx) comes with risks and rewards for both patent challengers and patent owners. Patent challengers enjoy a lower threshold for institution and avoid the estoppel risk of other post-grant proceedings...more
In Kroy IP Holdings, LLC v. Groupon, Inc., 127 F.4th 1376 (Fed. Cir. 2025), the Federal Circuit held that patentees in district court are not collaterally estopped from asserting claims that were not immaterially different...more
In response to a lawsuit for patent infringement, often a defendant will file an inter partes review (IPR) challenging the validity of the asserted claims. How can a patentee avoid this scenario?...more
On October 25, 2024, the United States District Court for the Eastern District of Pennsylvania ordered Comcast Corporation (“Comcast”) to identify the date on which it learned of each patent, patent application, and printed...more
Amongst the many decisions an attorney makes throughout litigation, there is one choice that can shape the outcome of a case way before filing a motion, setting discovery and trial strategy, or even calling a witness: venue,...more
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
On July 26, 2024, the Court of Appeals for the Federal Circuit (“CAFC”) issued a precedential opinion reversing-in-part decisions from the U.S. Patent Trial and Appeal Board (“PTAB”) in two inter partes reexamination...more
On July 26, 2024, in a precedential decision, the U.S. Court of Appeals for the Federal Circuit (CAFC) upheld and expounded on the estoppel provision set forth in 37 C.F.R. § 42.73(d)(3)(i). The CAFC confirmed that the Patent...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