News & Analysis as of

Patent Validity Assignor Estoppel Patent Infringement

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

American Conference Institute (ACI)

[Event] Paragraph IV Disputes Conference - November 9th - 10th, New York, NY

Join the conference that the “who’s who” of Hatch-Waxman litigators have designated as the forum which sets the standards for Paragraph IV practice. ACI’s Paragraph IV Litigation Conference is returning LIVE & IN-PERSON to...more

Kilpatrick

Assignor Estoppel Comes with Limits: Consistency is Key

Kilpatrick on

In earlier posts, we reported that the Supreme Court granted Minerva Surgical, Inc.’s petition for a writ of certiorari on the question of “whether a defendant in a patent infringement action who assigned the patent, or is in...more

Fitch, Even, Tabin & Flannery LLP

Supreme Court Hears Arguments in Minerva Surgical v. Hologic

On April 21, the U.S. Supreme Court heard oral arguments in Minerva Surgical, Inc. v. Hologic, Inc., a case involving whether the doctrine of assignor estoppel should be retained, abolished, or limited. In general, assignor...more

McDonnell Boehnen Hulbert & Berghoff LLP

Oral Argument in Minerva Surgical Inc. v. Hologic, Inc.

The Supreme Court heard oral argument last week in Minerva Surgical Inc. v. Hologic, Inc. over the issue of assignor estoppel. As a reminder, the case arose in an infringement suit over U.S. Patent Nos. 6,782,183 and...more

Kilpatrick

What Is The Future Of The Doctrine Of Assignor Estoppel In Patent Validity Challenges?

Kilpatrick on

On January 8, 2021, the Supreme Court granted a petition for a writ of certiorari filed by Minerva Surgical, Inc. on September 30, 2020. The question presented is “whether a defendant in a patent infringement action who...more

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

2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions: Arista Networks, Inc. v. Cisco Sys., Inc.,...

The inventor on the patent, Dr. Cheriton, was employed by Cisco as a technical advisor and chief product architect at the time he filed the application that led to the patent. Dr. Cheriton assigned all rights to the...more

Knobbe Martens

Perhaps Assignor Estoppel Survives at the PTAB…via the District Court

Knobbe Martens on

A preliminary decision in the District Court of Delaware introduces the possibility that a patentee’s victory on assignor estoppel in the district court could quash a co-pending IPR proceeding at the PTAB. Assignor estoppel...more

Knobbe Martens

Federal Circuit Review - December 2018

Knobbe Martens on

Assignor Estoppel Does Not Apply in the IPR Context - In Arista Networks, Inc. v. Cisco Systems, Inc., Appeal Nos. 2017-1525, 2017-1577, the Federal Circuit held that the plain language of 35 U.S.C. § 311(a) unambiguously...more

Foley & Lardner LLP

An Opportunity for Clarity on Assignor Estoppel: Mentor Graphics v. EVE-USA

Foley & Lardner LLP on

In patent litigation, assignor estoppel is a common law doctrine that can dramatically alter the rights of both parties involved – when applicable it is dispositive on the issue of patent validity. However, despite the import...more

Mintz - Intellectual Property Viewpoints

PTAB Invalidates Two Cisco Patents Found Valid and Infringed at the ITC

The Patent Trial and Appeal Board (“PTAB”) issued Final Written Decisions regarding Cisco’s U.S. Patent Nos. 6,377,577 (the “’577 Patent”) and 7,023,853 (the “’853 Patent”) on May 25, 2017 and U.S. Patent No. 7,224,668 (the...more

McDermott Will & Emery

Willfulness Can Be Predicated on Brief Between Declaratory Judgment Filing and Counterclaim

In a complex 42-page decision, the US Court of Appeals for the Federal Circuit addressed issues of assignor estoppel, claim indefiniteness, subject matter eligibility, claim preclusion, willfulness and lost profits damages...more

12 Results
 / 
View per page
Page: of 1

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
- hide
- hide