News & Analysis as of

Patents Collateral Estoppel Intellectual Property Protection

Hudnell Law Group

Differing Burdens of Proof Limits Estoppel Effect of PTAB Final Written Decision

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On February 10, 2025, the United States Court of Appeals for the Federal Circuit issued a decision in Kroy IP Holdings, LLC v. Groupon, Inc., reversing and remanding a district court ruling that had dismissed Kroy’s patent...more

Robins Kaplan LLP

Purdue Pharma L.P v. Accord Healthcare Inc. - OxyContin® (oxycodone HCl)

Robins Kaplan LLP on

Case Name: Purdue Pharma L.P v. Accord Healthcare Inc., Civ. No. 22-913-WCB, 2024 WL 4120717 (D. Del. Sept 9, 2024) (Bryson, J.) Drug Product and Patent(s)-in-Suit: OxyContin® (oxycodone HCl); U.S. Patent No. 11,304,908 (“the...more

Wilson Sonsini Goodrich & Rosati

The PTAB Review - October 2024

The PTAB Review begins by exploring collateral estoppel from unpatentability determinations in inter partes review (IPR) proceedings. Next, it summarizes recent developments at the U.S. Patent and Trademark Office relevant to...more

McDermott Will & Emery

Got Pillaged? Not If You Didn’t Follow the APA and FTCA

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit affirmed a district court decision dismissing claims under the Administrative Procedure Act (APA) and Federal Tort Claims Act (FTCA) against the US Patent & Trademark Office...more

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

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - October 2023 #2

Finjan LLC v. SonicWall, Inc., Appeal No. 2022-1048 (Fed. Cir. Oct. 13, 2023) In the Federal Circuit’s only precedential opinion this week, a majority affirmed summary judgment of non-infringement on appellant Finjan’s...more

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

PTAB Strategies and Insights Newsletter - May 2023: Beware of Collateral Estoppel at the PTAB

When thinking about estoppel and the PTAB, the § 315(e) estoppels—relating to grounds a petitioner raised or reasonably could have raised—are likely the first to come to mind. However, other types of estoppel, such as...more

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

PTAB Strategies and Insights Newsletter - May 2023

The PTAB Strategies and Insights newsletter provides quarterly updates and insights into how best to handle PTAB trial proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at...more

Haug Partners LLP

Can Different Theories of Patent Invalidity Be Deemed Different Issues for Collateral Estoppel Purposes?

Haug Partners LLP on

The doctrine of issue preclusion, or collateral estoppel, prevents a party who unsuccessfully litigated an issue to a final decision in one proceeding from relitigating the same issue in future proceedings. In the patent...more

Jones Day

Claim Construction Clash Leads to Invalidity Reprieve

Jones Day on

In XR Communications, LLC v. D-Link Systems, Inc. Et. Al., a judge in the Central District of California found that certain asserted claims claiming to wireless communication technology were barred by the doctrine of...more

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

2021 PTAB Year in Review: Analysis & Trends

[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

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

Jones Day

PO Collaterally Estopped From Asserting Related Patents

Jones Day on

A recent case in the Northern District of Illinois addressed the issue of collateral estoppel in connection with patents that were similar to those previously cancelled by the PTAB: In Think Prods., Inc. v. Acco Brands...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - September 2019 #2

Curver Luxembourg, SARL v. Home Expressions Inc., Appeal No. 2018-2214 (Fed. Cir. Sept. 12, 2019) In a significant case in the field of design patents, the Federal Circuit clarified the scope of design patent infringement...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - December 2018 #3

PATENT CASE OF THE WEEK - VirnetX Inc. v. Apple, Inc., Appeal Nos. 2017-2490, -2494 (Fed. Cir. Dec. 10, 2018) The Federal Circuit affirmed two final written decisions of the Patent Trial and Appeal Board (“PTAB”), which...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Clarifies Burden of Proof on Challenges to Identification of Real Parties-in-Interest in IPR Proceedings

In Worlds Inc. v. Bungie, Inc., the Federal Circuit remanded an appeal from an inter partes review (“IPR”) instructing the Patent Trial and Appeal Board (“Board”) to reweigh the evidence in a manner that placed the ultimate...more

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