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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
2023 was a busy year at the Patent Trial and Appeal Board, as post-grant practice continued to evolve at a rapid pace. At the United States Patent and Trademark Office, there were big developments in Director Review and...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
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
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
Precedential Federal Circuit Opinions - In Re MCDONALD [OPINION] (2021-1697, 8/10/2022) (Newman, Stoll, and Cunningham) - Cunningham, J. The Court affirmed a PTAB decision rejecting reissue claims under 35 U.S.C. §...more
[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...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
[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
The estoppel statute precludes a defendant who has challenged a claim in an IPR reaching final written decision from later challenging that claim on any ground that it raised or reasonably could have raised during the IPR...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
NETWORK-1 TECHNOLOGIES, INC. v. HEWLETT-PACKARD COMPANY, HEWLETT PACKARD ENTERPRISE COMPANY - Before Prost, Newman, and Bryson. Appeal from the United States District Court for the Eastern District of Texas. Summary: A...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
A district court has ruled that the statutory estoppel arising from an inter partes review (IPR) proceeding does not apply to anticipation and obviousness defenses that rely significantly on a physical device. The court also...more
Chief Judge Stark granted a patent owner’s motion for summary judgment of inter partes review (IPR) estoppel, holding that obviousness defenses based on a prior art product could not be asserted because a prior art...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
A district court in California has granted-in-part a Plaintiff’s motion for summary judgment of no invalidity under 35 U.S.C. § 103 due to inter partes review (IPR) estoppel. During the pendency of the litigation, Defendants...more
In an action by Apotex for compensation from Sanofi and Schering under the Ontario Statute of Monopolies, U.K. Statute of Monopolies and the Trade-marks Act, the Ontario Court of Appeal has overturned a motion judge’s...more
In an April 12, 2018 decision, the District Court for the District of Delaware held that a change in the primary reference of an obviousness combination that was denied institution by the Patent Trial and Appeal Board (PTAB)...more
In an order issued on April 4, 2018, Judge Lynn granted plaintiff ZitoVault’s motion for summary judgment under 35 U.S.C. 315(e)(2), holding that defendant IBM is estopped from asserting invalidity defenses based on prior art...more
In Solutran, Inc. v. U.S. Bancorp & Elavon, Inc., No. 13:cv-02637, 2018 WL 1276999 (D. Minn. Mar. 12, 2018), the court denied the plaintiff’s Motion in Limine and held that CBM estoppel does not apply to related applications...more
Our report includes discussions of six of the precedential cases decided in the past week and will include the other three cases in next week’s report. In Aylus v. Apple, the panel finds prosecution disclaimer in a...more
In Parallel Networks Licensing, LLC v. International Business Machines Corporation, No. 1:13-cv-02072, Dkt. No. 366 (D. Del. Feb. 22, 2017) (Slip Op.), the court held IBM was estopped from asserting obviousness under §103...more
Medtronic, Inc. v. Robert Bosch Healthcare (No. 2015-1977, -1986, -1987, 10/20/16) (Lourie, Dyk, Hughes) - Dyk, J. Denying petition for rehearing and confirming the Court's earlier order. “The Board's vacatur of its...more