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Patent Infringement Patent Invalidity Estoppel

Jones Day

Estoppel Trumps Substance: ITC Bars Respondent’s Invalidity Grounds Raised in IPR

Jones Day on

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

Jones Day

Federal Circuit: Petitioner Estoppel Does Not Apply to Product Prior At Grounds

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In IOENGINE, LLC v. Ingenico Inc. (Fed. Cir. 2025), the Federal Circuit narrowed the scope of IPR estoppel under 35 U.S.C. § 315(e)(2), which precludes an IPR petitioner from asserting in court that a patent claim “is invalid...more

McDermott Will & Emery

Breaking New Grounds to Limits of IPR Estoppel

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In a matter of first impression, the US Court of Appeals for the Federal Circuit found that inter partes review (IPR) estoppel does not preclude a petitioner from relying on the same patents and printed publications as...more

A&O Shearman

The CAFC Holds That IPR Estoppel Does Not Shield Patentees From System Prior Art

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On May 7, 2025, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) affirmed a decision by the U.S. District Court for the District of Delaware (“district court”) that found claims of two IOENGINE, LLC (“IOENGINE”)...more

Jones Day

Reverse Engineered Search Insufficient For IPR/PGR Estoppel

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In GeigTech East Bay v. Lutron Electronics, patent owner GeigTech argued that Lutron should be estopped under 35 U.S.C. § 325(e)(2) from asserting two prior art grounds that it said Lutron could have reasonably raised in its...more

Jones Day

PTAB Doubles Down on Interference Estoppel Issue

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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

Knobbe Martens

Federal Circuit Review - April 2023

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Who Bears the Burden of Proof for IPR Estoppel? In Ironburg Inventions Ltd. v. Valve Corp., Appeal No. 21-2296, the Federal Circuit held that the patentee has the burden of proving that invalidity grounds not raised in a...more

Fish & Richardson

Texas Patent Litigation Monthly Wrap-Up: April 2023

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Four subjects stood out in patent litigation in Texas in April 2023: (1) applicability of the customer-suit exception to the first-to-file rule; (2) the level of ties a reasonable royalty methodology must have to the facts of...more

WilmerHale

Federal Circuit Adopts “Skilled Searcher” Standard for IPR Estoppel

WilmerHale on

On April 3, 2023, the Federal Circuit issued an opinion in Ironburg Inventions Ltd. v. Valve Corp., addressing the scope of what invalidity grounds are subject to estoppel pursuant to 35 U.S.C. § 315(e)(2) and the burden of...more

Knobbe Martens

Who Bears the Burden of Proof for IPR Estoppel?

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IRONBURG INVENTIONS LTD. v. VALVE CORP. Before Lourie, Clevenger, and Stark.  Appeal from the United States District Court for the Western District of Washington. Summary: The patentee has the burden of proving that...more

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

[Webinar] 2022 PTAB Year in Review: Analysis and Trends - February 28th, 1:00 pm - 2:00 pm EST

Speakers will offer updates, case summaries, and analysis of the significant 2022 PTAB guidance, actions, and rulings. Topics include: the Director’s 2022 Fintiv guidance, PTAB discretionary denial, the use of applicant...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions: California Institute of Technology v. Broadcom...

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

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

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

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

[Webinar] Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions - February 2nd, 1:00 pm - 2:00 pm EST

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

Morrison & Foerster LLP - Federal Circuitry

Last Week In The Federal Circuit (August 8 – August 12): Taking A Round Trip On The Assignor Estoppel Express

For most of us, we’re stuck in the August heat, on delayed European vacations, or hopefully just hanging out at the beach. But for the Court it still was work as usual, including a return trip to the Federal Circuit for the...more

Jones Day

PGR Estoppel Continues to be Broad and Onerous

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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

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

2021 PTAB Year in Review: Analysis & Trends: The Resurgence and Perils of Ex Parte Reexaminations

Ex parte reexaminations have re-emerged as an increasingly important component of patent litigation and licensing negotiations. With the passage of the America Invents Act (“AIA”) and the advent of inter partes reviews...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

Goldberg Segalla

Federal Circuit Clarifies IPR Estoppel and Vacates $1.1 Billion Verdict in Favor of Caltech Due to Improper Damages Theory

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On February 4, 2022, the Federal Circuit clarified that IPR estoppel extends to all claims and invalidity grounds that the petitioner could have reasonably asserted in its IPR petition. ...more

Knobbe Martens

Supreme Court Upholds, but Limits, Patent Infringement Defense of “Assignor Estoppel”

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The U.S. Supreme Court recently decided a case resolving a patent dispute between two medical device companies, Hologic, Inc. and Minerva Surgical.  The opinion was closely watched because it raised the question of whether an...more

Blank Rome LLP

Supreme Court Sets Limits for Assignor Estoppel

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The Supreme Court’s recent decision in Minerva Surgical Inc. v. Hologic, Inc. has drastically limited the doctrine of assignor estoppel, requiring patent practitioners to reconsider assignment and other contractual provisions...more

McCarter & English, LLP

“You Can’t Challenge This (Unless)”—SCOTUS Upholds But Limits 140-Year-Old Doctrine Of Assignor Estoppel

The doctrine of assignor estoppel bars an inventor who assigns a patent to a third party from later arguing that the assigned patent is invalid. The Supreme Court has now upheld this doctrine but has limited its scope,...more

Buckingham, Doolittle & Burroughs, LLC

Assignor Estoppel is Alive and Well after Minerva v. Hologic

The Supreme Court clarified the doctrine of assignor estoppel in its June 29th Minerva v. Hologic opinion. In doing so, the Court vacated the Federal Circuit’s opinion estopping Minerva from arguing that Hologic’s patent is...more

Williams Mullen

Supreme Court Upholds but Narrows Assignor Estoppel: What This Means For Your Company and its Employees

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On June 29, 2021, the Supreme Court published its divisive opinion in Minerva Surgical, Inc. v. Hologic, Inc., Et. Al. The 5-4 decision penned by Justice Kagan upheld the centuries-old doctrine of Assignor Estoppel, while...more

Fitch, Even, Tabin & Flannery LLP

Supreme Court Sets Boundaries for Assignor Estoppel in Minerva Surgical v. Hologic

The U.S. Supreme Court’s June 29 decision in Minerva Surgical, Inc. v. Hologic, Inc. has important implications for inventors who assign patent rights, employers to whom employees assign patent rights, other assignees, and...more

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