News & Analysis as of

Issue Preclusion Inter Partes Review (IPR) Proceeding

McDermott Will & Emery

Beware Equitable Doctrine of Issue Preclusion in Multiparty, Multivenue Patent Campaigns

Addressing for the first time whether an invalidity order merges with a voluntary dismissal for purposes of finality, the US Court of Appeals for the Federal Circuit held that an interlocutory order merges with the final...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

[Webinar] Developments in IPR Estoppel - December 5th, 1:00 pm - 2:00 pm EST

Director Jason A. Fitzsimmons and Counsel Richard A. Crudo will present the “Developments in IPR Estoppel” webinar on Tuesday, December 5, 2023, at 1:00 PM ET. The possibility of being estopped from asserting prior art in...more

McDermott Will & Emery

Since Vacatur Seeks Equitable Relief, Clean Hands Matter

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In an opinion related to its 2021 ruling that a decision in earlier inter partes reexaminations of related patents had a preclusive effect that collaterally estopped the Patent Trial & Appeal Board (Board) from making new...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions: SynQor, Inc. v. Vicor Corp., 988 F.3d 1341 (Fed....

SynQor, Inc. appealed the inter partes reexamination decision of the Patent Trial and Appeal Board (Board) holding un- patentable as obvious original claims 1–19, 28, and 31 of SynQor’s patent, U.S. Patent No. 7,072,190 as...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[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

Sterne, Kessler, Goldstein & Fox P.L.L.C.

[Webinar] Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions - February 17th, 1:00 pm - 2:00 pm EST

Sterne, Kessler, Goldstein & Fox invites you to a webinar, "Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions," on Thursday, February 17, 2022. In conjunction with the release of the firm's...more

Haug Partners LLP

In SynQor, Inc. v. Vicor Corp., Federal Circuit Applies Collateral Estoppel to Related Inter Partes Reexamination Proceedings

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On February 22, 2021, the Federal Circuit addressed for the first time whether collateral estoppel (i.e., issue preclusion) was applicable in inter partes reexamination proceedings. The case is SynQor, Inc. v. Vicor Corp.,...more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (February 22-26): Who Needs Cross Examination? Issue Preclusion Before the PTAB

All eyes are on Arthrex this week, right?  So of course we decided to take a look at a Board decision, and one that—so says the dissent—creates a circuit split.  Below we provide our usual weekly statistics and our case of...more

Knobbe Martens

Federal Circuit Review - June 2020

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Non-Infringement Need Not Be “Actually Litigated” To Shield Accused Products From Infringement Liability In Subsequent Actions - In In Re Personal Web Technologies LLC, Appeal No. 19-1918, the Federal Circuit ruled that the...more

Jones Day

SCOTUS Says “Fresenius/Simmons Preclusion Principle” Stays Alive

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The Supreme Court recently denied Chrimar Systems, Inc. (Chrimar)’s petition for certiorari seeking to overturn the Federal Circuit’s “Fresenius/Simmons preclusion principle,” under which Chrimar’s district court victory...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals From The PTAB: Summaries of Key 2019 Decisions: Papst Licensing GMBH & Co. v. Samsung Elec. Am., Inc., 924...

Samsung successfully petitioned for inter partes review (IPR) of several of Papst’s patents, including U.S. Patent No. 9,189,437. Prior to the Patent Trial and Appeal Board (PTAB) finding the claims of the ’437 patent...more

Akin Gump Strauss Hauer & Feld LLP

PTAB: Collateral Estoppel Precludes Patent Owner from Advancing Arguments Previously Rejected in IPRs Involving Different but...

A recent ruling from the Patent and Trial Appeal Board (PTAB) highlights the critical role that collateral estoppel (also known as issue preclusion) can play in inter partes review (IPR) proceedings. In a final written...more

Akin Gump Strauss Hauer & Feld LLP

Forum Selection Clause, on Its Own, Does Not Bar PTAB from Instituting IPR Petition

The Patent Trial and Appeal Board has rejected a patent owner’s argument that a forum selection clause found in a Non-Disclosure Agreement (NDA) barred the Board from instituting a petition for inter partes review (IPR). ...more

Mintz - Intellectual Property Viewpoints

Collateral estoppel does not attach to PTAB invalidity determination pending appeal

Recently, in Sanofi-Aventis v. Mylan, 2:17-cv-09105-SRC-CLW, Judge Stanley Chesler of the United States District Court, District of New Jersey, denied a motion by defendant Mylan for summary judgment of invalidity of asserted...more

Knobbe Martens

Disclaimed Patent Claims Fail to Give Rise to an Article III Case or Controversy

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SANOFI-AVENTIS U.S., LLC v. FRESENIUS KABI USA, LLC - Before Lourie, Moore, and Taranto. Appeal from the United States District Court for the District of New Jersey. Summary: District courts lack the authority to...more

McDermott Will & Emery

Pre-Institution Merger Creates Time Bar Under § 315(b)

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Addressing for the first time whether real-parties-in-interest (RPIs) are evaluated at the time a petition is filed or at the time of institution for purposes of § 315(b), the US Court of Appeals for the Federal Circuit held...more

McDermott Will & Emery

Dropping Appeal on the Eve of Oral Argument Leads to Preclusion of Another

Addressing the applicability of issue preclusion in inter partes review (IPR) proceedings, the US Court of Appeals for the Federal Circuit found that a patent owner’s arguments on appeal were precluded based on similar...more

Jones Day

Post-Filing, Pre-Institution Merger Time-Bars Inter Partes Review

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In Power Integrations v. Semiconductor Components, the Federal Circuit ruled that privy and real-party-in-interest (RPI) relationships arising after a petition is filed but before institution may bar institution under section...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit clarifies that a post-filing change in RPI status can trigger the § 315(b) time-bar

Federal Circuit clarifies that a post-filing change in RPI status can trigger the § 315(b) time-bar and that there are exceptions to issue preclusion in IPR appeals - On June 13, 2019, the Court of Appeals for the Federal...more

Vedder Price

The Federal Circuit Applies Issue Preclusion to IPRs (And Further Calls Into Question Long-Standing Precedent Against Issue...

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On May 23, 2019, the U.S. Court of Appeals for the Federal Circuit decided Papst Licensing GmbH v. Samsung Elec. America, Inc. In that case, the Federal Circuit confirmed, based on the issue preclusion principles laid out...more

WilmerHale

Federal Circuit Patent Updates - September 2018

WilmerHale on

Hyatt v. Pato (No. 2017-1722, 9/24/18) (Reyna, Wallach, Hughes) - Hughes, J. Reversing dismissal for lack of subject matter description stating, “the exclusive jurisdiction of this court and the Eastern Virginia district...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - September 2018: Best Strategies for ITC Respondents When Considering a PTAB Action

When faced with allegations of patent infringement at the International Trade Commission (ITC), a respondent must quickly evaluate whether or not to request an AIA review (hereinafter, inter partes review for convenience) at...more

Jones Day

Federal Circuit: PTAB Affirmance Estops All Pending Actions Involving Patent

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In XY, LLC v. Trans Ova Genetics, L.C., Nos. 2016-2054, 2016-2136 (Fed. Cir. May 23, 2018), an appeal from the District of Colorado, the Federal Circuit gave preclusive effect to a PTAB finding, something it has done several...more

Foley & Lardner LLP

Collateral Estoppel at the Federal Circuit for Inter Partes Review Proceedings

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In Maxlinear, Inc. v. CF CRESPE, LLC, slip op. 2017-1039, the Federal Circuit remanded to the Patent Trial and Appeal Board (“Board”) an inter partes review (“IPR”) proceeding to evaluate the patentability of certain...more

Morrison & Foerster LLP - MoFo@ITC

3D Cinema Systems: ITC Declines to Apply Issue Preclusion Based on PTAB’s IPR Decision

In 3D Cinema Systems (Inv. 939), the Commission issued an opinion that explained why it did not give deference to a decision of invalidity by the Patent Trial and Appeal Board (PTAB) in an inter partes review (IPR)....more

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