News & Analysis as of

Issue Preclusion Patent Infringement

Sheppard Mullin Richter & Hampton LLP

Precluded, Not Repeated: WARF & Apple Continue to Shape our Understanding of Issue Preclusion in Patent Law

This case addresses the application of issue preclusion in scenarios where two closely related cases allege patent infringement against different versions of the same technology. Specifically, this case discusses whether a...more

Morrison & Foerster LLP - Federal Circuitry

Last Week In The Federal Circuit (September 6 – September 9): Repeating Litigation, Again

Usually in American courts, parties get one chance to litigate a single legal claim. Courts enforce that principle in a variety of ways – at the back end, through rules like claim and issue preclusion; and at the front end,...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

Knobbe Martens

Federal Circuit Review - June 2020

Knobbe Martens on

Non-Infringement Need Not Be “Actually Litigated” To Shield Accused Products From Infringement Liability In Subsequent Actions - In In Re Personal Web Technologies LLC, Appeal No. 19-1918, the Federal Circuit ruled that the...more

Troutman Pepper

Federal Circuit Review - Issue 269

Troutman Pepper on

269-1. Federal Circuit Confirms Amazon’s Customers are Protected from Lawsuit via the Kessler Doctrine, Despite the Previous Case being Voluntarily Dismissed with Prejudice. ...more

Mintz - Intellectual Property Viewpoints

The Federal Circuit Broadens Application of the Kessler Doctrine

Last week, the Federal Circuit invoked the Kessler doctrine in ruling that a district court’s dismissal of the plaintiff’s patent infringement suit against Amazon barred the plaintiff’s subsequent lawsuits against Amazon and...more

Knobbe Martens

Non-Infringement Need Not Be “Actually Litigated” to Shield Accused Products From Infringement Liability in Subsequent Actions

Knobbe Martens on

In Re Personal Web Technologies LLC - Before Wallach, Bryson, and Taranto. Appeal from the United States District Court for the Northern District of California. Summary: The Kessler doctrine is not limited to cases...more

Akin Gump Strauss Hauer & Feld LLP

Forum Selection Clause, on Its Own, Does Not Bar PTAB from Instituting IPR Petition

The Patent Trial and Appeal Board has rejected a patent owner’s argument that a forum selection clause found in a Non-Disclosure Agreement (NDA) barred the Board from instituting a petition for inter partes review (IPR). ...more

Mintz - Intellectual Property Viewpoints

Collateral estoppel does not attach to PTAB invalidity determination pending appeal

Recently, in Sanofi-Aventis v. Mylan, 2:17-cv-09105-SRC-CLW, Judge Stanley Chesler of the United States District Court, District of New Jersey, denied a motion by defendant Mylan for summary judgment of invalidity of asserted...more

McDermott Will & Emery

Pre-Institution Merger Creates Time Bar Under § 315(b)

McDermott Will & Emery on

Addressing for the first time whether real-parties-in-interest (RPIs) are evaluated at the time a petition is filed or at the time of institution for purposes of § 315(b), the US Court of Appeals for the Federal Circuit held...more

Jones Day

Post-Filing, Pre-Institution Merger Time-Bars Inter Partes Review

Jones Day on

In Power Integrations v. Semiconductor Components, the Federal Circuit ruled that privy and real-party-in-interest (RPI) relationships arising after a petition is filed but before institution may bar institution under section...more

WilmerHale

Federal Circuit Patent Updates - September 2018

WilmerHale on

Hyatt v. Pato (No. 2017-1722, 9/24/18) (Reyna, Wallach, Hughes) - Hughes, J. Reversing dismissal for lack of subject matter description stating, “the exclusive jurisdiction of this court and the Eastern Virginia district...more

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

PTAB Strategies and Insights - September 2018: Best Strategies for ITC Respondents When Considering a PTAB Action

When faced with allegations of patent infringement at the International Trade Commission (ITC), a respondent must quickly evaluate whether or not to request an AIA review (hereinafter, inter partes review for convenience) at...more

Jones Day

Federal Circuit: PTAB Affirmance Estops All Pending Actions Involving Patent

Jones Day on

In XY, LLC v. Trans Ova Genetics, L.C., Nos. 2016-2054, 2016-2136 (Fed. Cir. May 23, 2018), an appeal from the District of Colorado, the Federal Circuit gave preclusive effect to a PTAB finding, something it has done several...more

Knobbe Martens

Federal Circuit Review - February 2018

Knobbe Martens on

Improperly Drafted Employment Agreement Leads to Dismissal of Patent Case Due to Lack of Standing - In Advanced Video Technologies LLC v. HTC Corporation et al., Appeal Nos. 2016-2309, 2016-2310, 2016-2311, the Federal...more

WilmerHale

Federal Circuit Patent Updates - August 2015

WilmerHale on

The Dow Chemical Company v. Nova Chemicals Corporation (No. 2014-1431, -1462, 8/28/15) (Prost, Dyk, Wallach). Dyk, J. Reversing award of supplemental damages. "We hold that the intervening change in the law of...more

Foley & Lardner LLP

Nautilus Standard Sinks Dow Patents

Foley & Lardner LLP on

Dow Chemical Company (“Dow”) lost a ruling that competitor NOVA Chemical Corporation and NOVA Chemicals Inc. (collectively “NOVA”) infringed claims of two Dow patents when the Federal Circuit applied the U.S. Supreme Court’s...more

Kelley Drye & Warren LLP

ITC Finds Nokia Does Not Infringe Interdigital Patents, So Does Not Address FRAND Issues (337-TA-613)

On Friday, the U.S. International Trade Commission issued a Notice on its review of Judge Essex’s decision in the InterDigital v. Nokia investigation and found that Nokia did not infringe InterDigital’s 3GPP patents (see our...more

McDermott Will & Emery

In an IPR, Issue Preclusion Does Not Attach Until Appeal Rights Are Exhausted - SDI Technologies, Inc., v. Bose Corp.

Addressing issue preclusion in the context of an inter partes review (IPR), the Patent Trial and Appeal Board (PTAB or Board) allowed the patent owner to present patentability and admissibility arguments from a related IPR,...more

Akin Gump Strauss Hauer & Feld LLP

IP Newsflash - May 2015 #4

DISTRICT COURT CASES - Eastern District of Virginia Grants Summary Judgment of Noninfringement to Adobe - On May 7, 2015, Judge Brinkema of the United States district court for the Eastern District of Virginia...more

Akin Gump Strauss Hauer & Feld LLP

IP Newsflash - March 2015 #4

U.S. SUPREME COURT CASES - B&B Hardware, Inc. v. Hargis Industries, Inc., Potential Issue Preclusion on Likelihood of Confusion Rulings - On March 24, 2015, the United States Supreme Court ruled that that a...more

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