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Patent Litigation Judicial Estoppel

Akin Gump Strauss Hauer & Feld LLP

Accused Infringer Not Judicially Estopped from Asserting Claim Construction Different from that Previously Presented to PTAB

During a Markman hearing, a judge in the Eastern District of North Carolina denied a plaintiff’s request that the defendant be judicially estopped from arguing claim constructions that were different from positions the...more

Patterson Belknap Webb & Tyler LLP

Judge Glasser Holds Judicial Estoppel Does Apply Retroactively

On October 5, 2020, United States District Judge I. Leo Glasser (E.D.N.Y.) denied plaintiff Alexsam, Inc.’s (“Alexsam”) motion for reconsideration of the court’s June 17, 2020 summary judgment ruling....more

Akin Gump Strauss Hauer & Feld LLP

N.D. Ill.: Neither Statutory Estoppel nor “Misleading” Statements Regarding Its Scope Sufficient to Knock Out Invalidity Defenses

A district court has ruled that the scope of IPR estoppel under 35 U.S.C. § 315(e)(2) did not apply to invalidity grounds that relied on physical products. The court also declined to apply judicial estoppel, notwithstanding...more

Jones Day

On-Again, Off-Again Inventorship

Jones Day on

Deciding who invented patents can be “one of muddiest concepts in the muddy metaphysics of the patent law.” Mueller Brass Co. v. Reading Industries, Inc., 352 F. Supp. 1357, 1372 (E.D. Pa. 1972). But identifying who...more

Knobbe Martens

Inventor Removed From Patent May Be Restored Due to Claim Construction

Knobbe Martens on

EGENERA, INC. v. CISCO SYSTEMS, INC. Before Prost, Stoll, and Reyna. Appeal from the United States District Court for the District of Massachusetts. Summary: A patentee that successfully petitioned to correct a patent’s...more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (August 24-28): No Judicial Estoppel from Inventorship About-Face

Last week the summer was winding down and the Federal Circuit was gearing up for its September argument session. But the Court still found time to hand down a number of decisions—17 in total. Below we provide our usual weekly...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Casts Doubt on Judicial Estoppel Challenge at Institution Stage of IPR But Does Not Foreclose it for Trial

The Patent Trial and Appeal Board (PTAB) has rejected a patent owner’s argument that judicial estoppel should prevent a petitioner from making obviousness arguments in support of its petition for inter partes review (IPR)....more

Akin Gump Strauss Hauer & Feld LLP

Ever-Changing Inventorship Dispute Heads to Bench Trial

In a case of twisting facts, a trial judge has denied a plaintiff’s motion to correct inventorship to add an inventor to a patent because that plaintiff previously asked the PTO to remove that same inventor from the patent...more

Proskauer - New England IP Blog

Court Sends Networking Patent Inventorship Dispute to Bench Trial

In order to qualify as an inventor on a U.S. patent, a person must contribute to the conception of the invention as embodied in one or more of the claims—merely building or implementing the already-conceived technology is not...more

Akin Gump Strauss Hauer & Feld LLP

IPR Estoppel Extends Only to Instituted (and Subsumed) Grounds; Arguments in Support of a Motion to Stay, Amidst Developing Law,...

On January 19, 2017, Judge Susan Illston of the Northern District of California granted-in-part and denied-in-part a group of plaintiffs’ (collectively, “Plaintiffs”) motion to strike portions of defendant Ariosa Diagnostic,...more

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