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Estoppel

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Upholds USPTO Authority to Estop Patentees from Obtaining Patent Claims 'Not Patentably Distinct' from Previously...

The Federal Circuit recently upheld the USPTO’s authority under the estoppel provision 37 C.F.R. § 42.73(d)(3)(i) to prohibit a patent owner from obtaining patent claims that are not patentably distinct from claims previously...more

White & Case LLP

Arbitration and Insolvency: A Comparative View from England & Wales, Singapore and Hong Kong

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If the agreement between a creditor and debtor refers disputes to arbitration, what limits should be placed on the creditor to pursue winding-up proceedings based on an unpaid debt under that agreement? Should a court simply...more

Rumberger | Kirk

Viewpoint: Early Action Key to Mitigating Risk in Professional Liability Claims

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Professional liability claims impact a multitude of professions, including those in the legal, medical, financial and insurance industries. Claims for malpractice, breach of contract, breach of fiduciary duty and related...more

Jones Day

PTAB Claim Construction May Be Binding In Later Litigation

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In 2016, the Federal Circuit expressed doubt that claim constructions from the PTAB could give rise to estoppel in later litigation because “the [PTAB] applies the broadest reasonable construction of the claims while the...more

Jones Day

Federal Circuit Clarifies Scope of Patent Owner Estoppel

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The Federal Circuit recently issued a decision in SoftView LLC v. Apple Inc. clarifying the scope of patent owner estoppel set forth in 37 C.F.R. § 42.73(d)(3)(i). 2024 WL 3543902 (Fed. Cir. July 26, 2024). The regulation...more

Walkers

Enforcement of foreign arbitral awards by the Grand Court of the Cayman Islands

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The circumstances in which an unsuccessful party in arbitration may resist enforcement of an award in the Cayman Islands are limited in number and narrow in scope. The judiciary are alive to the risk that parties may run...more

Knobbe Martens

Federal Circuit Review | July 2024

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In Natera, Inc v. Neogenomics Laboratories, Inc., Appeal No. 24-1324 the Federal Circuit held that  preliminary injunction may be valid if a substantial question of invalidity was not raised, even if the asserted patent is...more

A&O Shearman

Federal Circuit Provides Guidance On Estoppel Provision Under 37 C.F.R. § 42.73(d)(3)(i)

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On July 26, 2024, the Court of Appeals for the Federal Circuit (“CAFC”) issued a precedential opinion reversing-in-part decisions from the U.S. Patent Trial and Appeal Board (“PTAB”) in two inter partes reexamination...more

AEON Law

Patent Poetry: Federal Circuit Upholds IPR Estoppel Provisions

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The Federal Circuit has affirmed a decision by the Patent Trial and Appeal Board (PTAB or Board) concerning the application of 37 CFR § 42.73(d)(3)(i)’s estoppel provisions in invalidating amended patent claims....more

Knobbe Martens

Estoppel Does Not Apply to Previously Issued Claims

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Before Bryson, Lourie, and Reyna. Appeal from the United States Patent and Trademark Office (“PTO”), Patent Trial and Appeal Board (“Board”). Summary: Estoppel under 37 C.F.R. § 42.73(d)(3)(i) only applies to obtaining new...more

Dinsmore & Shohl LLP

Estoppel Principles in Patent Office Proceedings

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On July 26, 2024, in a precedential decision, the U.S. Court of Appeals for the Federal Circuit (CAFC) upheld and expounded on the estoppel provision set forth in 37 C.F.R. § 42.73(d)(3)(i). The CAFC confirmed that the Patent...more

WilmerHale

Federal Circuit Patent Watch: Ordering In-Person Appearance to Testify Regarding Potential Fraud on the Court is within Court's...

WilmerHale on

Precedential and Key Federal Circuit Opinions - 1.  BACKERTOP LICENSING LLC [OPINION] (23-2367, 23-2368, 24-1016, 24-1017 Prost, Hughes, and Stoll) - Hughes, J. The Court affirmed the District Court’s orders (1)...more

Jones Day

IPR Estoppel in Action

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Recently, District Court Judge Thomas S. Zilly in the Western District of Washington granted Ironburg Inventions Ltd.’s (“Ironburg”) motion for inter partes review (“IPR”) estoppelpursuant to 35 U.S.C. § 315(e)(2), which...more

King & Spalding

Take No Notice and Wa(i)ve Goodbye to Claims

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Takeaways From a Recent English Court Case on Notice Obligations - Many construction contracts provide that the contractor’s entitlement to an extension of time and/or additional cost is conditional upon the service of a...more

Goodwin

Moderna Litigation Against BioNTech and Pfizer Stayed Pending IPR

Goodwin on

We previously reported on the litigation brought by ModernaTX, Inc. and Moderna US, Inc. (collectively, “Moderna”) against BioNTech SE, BioNTech Manufacturing GmbH, BioNTech US Inc. (collectively, “BioNTech”), and Pfizer Inc....more

McDermott Will & Emery

Same Product in Different Packaging May Constitute Separate Market for Antitrust Purposes

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Addressing an issue of first impression, the US Court of Appeals for the Second Circuit concluded that two medications that contain the same ingredients but are packaged in different forms constitute separate markets for...more

Proskauer - Minding Your Business

Ninth Circuit Clears Airline’s Arbitration by Estoppel Argument for Takeoff

Earlier this month, in Herrera v. Cathay Pacific Airways Ltd., a divided Ninth Circuit panel reversed the district court’s order denying Cathay Pacific Airways Ltd.’s motion to compel arbitration of a putative class action...more

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

2023 PTAB Year in Review: Analysis & Trends: The Changing Contours of IPR Estoppel Law

As any PTAB practitioner knows, the possibility of being estopped from asserting prior art in district court is a significant risk that must be considered when filing an IPR. Section 315(e)(2) prevents a petitioner, following...more

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

2023 PTAB Year in Review: Editors’ Introduction

A review of 2023 reveals it was an active and impactful year in shaping the policy and practice before the Patent Trial and Appeal Board (PTAB or Board) at the U.S. Patent and Trademark Office (USPTO). In fact, all three...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

Rivkin Radler LLP

New York Insurance Coverage Law Update — Compilation 2023

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The owners hired a general contractor (GC) insured by Amerisure to build a movie theatre, and the GC hired a masonry subcontractor (Sub) insured by Selective under a primary and umbrella policy...more

Fish & Richardson

2023 Post-Grant Annual Report

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2023 was a busy year at the Patent Trial and Appeal Board, as post-grant practice continued to evolve at a rapid pace. At the United States Patent and Trademark Office, there were big developments in Director Review and...more

Patterson Belknap Webb & Tyler LLP

Judge McMahon Rejects Estoppel Argument Based on Lack of Reasonableness and Diligence in Prior Art Searching

On December 21, 2023, Judge McMahon (S.D.N.Y.) denied GeigTech East Bay LLC’s (“GeigTech”) motion to preclude Lutron Electronics Co. (“Lutron”) from raising an affirmative defense of invalidity based on 35 U.S.C. § 325(e)(2),...more

Akin Gump Strauss Hauer & Feld LLP

District of Delaware Holds That IPR Estoppel Does Not Apply to Device Art

Federal Circuit Judge William Bryson, sitting by designation in the District of Delaware, ruled on summary judgment that inter partes review (IPR) estoppel does not apply to device art, even if the device is cumulative of...more

Allen Matkins

Court Of Appeal Discusses But Declines To Decide Whether RULLCA Or The Beverly-Killea Act Applies

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Eleven years ago, I foretold potential issues arising from California's repeal of the Beverly-Killea Limited Liability Company Act in favor the California Revised Uniform Limited Liability Company Act.   Since that gloomy...more

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