Understanding the Impact of IPR Estoppel and PTAB Discretionary Denials — Patents: Post-Grant Podcast
Estoppel Doctrine in China's Patent System
Recently, an ITC Administrative Law Judge applied IPR statutory estoppel under 35 U.S.C. § 315(e)(2) in denying a Respondent’s motion for summary determination of invalidity in Certain Audio Players and Components Thereof,...more
On May 7, 2025, the Federal Circuit issued a precedential decision in Ingenico Inc. v. IOENGINE, LLC that narrows the scope of inter partes review (IPR) estoppel under 35 U.S.C. § 315(e)(2), resolving a longstanding district...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
An ITC Administrative Law Judge (ALJ) recently issued an initial determination holding that PGR estoppel prevented GMG Products LLC (Respondent) from raising two prior-art products in the ITC....more
Inter partes review (IPR) proceedings raise complex estoppel issues that courts are grappling with and patent litigants must consider. Because patent challengers can assert invalidity in three different tribunals (the...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
Mere Potential for Future Appeal Does Not Prevent Triggering Estoppel of Inter Partes Reexamination When Party Fails to Seek Relief in the First Instance - In Virnetx Inc. v. Apple Inc., Appeal Nos. 2017-1591, -1592,...more
The Federal Circuit again reviewed a determination of infringement under the doctrine of equivalents, in this instance by the International Trade Commission (ITC), again finding that one of the Supreme Court's exceptions to...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
In an Initial Determination finding that Fujifilm violated Section 337 by infringing two patents held by Sony, ALJ Cheney found another patent invalid after ruling that inter partes review (“IPR”) estoppel does not apply to...more
The Commission has determined to review an initial determination finding that Respondent Ford is estopped under 35 U.S.C. § 315(e)(2) from asserting certain invalidity defenses previously adjudicated by the Patent Trial and...more
The inter partes review estoppel provision (35 U.S.C. § 315(e)) says that a petitioner (or real party in interest) in an IPR that results in a final written decision on a patent claim may not assert validity in a U.S. Patent...more
Since their introduction, inter partes review (“IPR”) proceedings have had a close association with district court litigation. Indeed, litigation defendants are often the petitioners who initiate IPR proceedings. Therefore,...more
Clare v. Chrysler Group LLC (No. 2015-1999, 3/31/16) (Prost, Moore, Wallach) - Moore, J. Affirming summary judgment of non-infringement of patents related to storage compartment for pickup trucks. The Court rejected...more
By Shaun R. Snader[1] & George C. Beck The post-grant proceedings established by the America Invents Act – inter partes review (IPR), covered business method (CBM) review, and post-grant review (PGR) –promise faster,...more