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IPR Estoppel in Action

IPR Estoppel in Action

by Matthew Johnson | Jun 28, 2024 | District Court, Estoppel, Federal Circuit, PTAB News

By Sabrina Bellantoni and Matt Johnson – 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...
PTAB Terminates Institution in Netflix v. ???

PTAB Terminates Institution in Netflix v. ???

by Matthew Johnson | Apr 2, 2024 | District Court, PTAB News

By Daniel Sloan and Matt Johnson – The Patent Trial and Appeal Board (PTAB) recently dismissed and terminated inter partes review challenging claims of U.S. Patent No. 8,495,167 (“the ’167 patent”).  Netflix, Inc. v. Owner, IPR2022-01568, Paper 29 (PTAB March...
Reverse Engineered Search Insufficient For IPR/PGR Estoppel

Reverse Engineered Search Insufficient For IPR/PGR Estoppel

by Tom Ritchie | Jan 31, 2024 | District Court, Estoppel, PTAB News

By Tom Ritchie – 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 post-grant review...
PTAB Reiterates Requirements for Additional Discovery

PTAB Reiterates Requirements for Additional Discovery

by Carl Kukkonen | Dec 21, 2022 | Discovery, District Court, PTAB News

By Carl Kukkonen – The PTAB in a recent PGR proceeding: SWM International, LLC et al v. DynaEnergetics Europe GmbH (PGR2021-00097), reiterated the requirements for additional discovery.  In particular, in this matter, the petitioner, having access to excerpts...
IPR Estoppel A Paper Tiger?

IPR Estoppel A Paper Tiger?

by John Evans, Ph.D. | Aug 26, 2022 | District Court, Estoppel, PTAB News

By Lisa Furby, John Evans, and Michelle Smit – After a final written decision issues, an IPR petitioner is statutorily estopped from going back to the district court and arguing that the same claims are “invalid on any ground that the petitioner raised or...
Patent Owner Ordered To Produce Infringement Contentions

Patent Owner Ordered To Produce Infringement Contentions

by Matthew Johnson | Jul 13, 2022 | Discovery, District Court, PTAB News

By Connor Scholes,* Evan Jones, and Matt Johnson – On May 3, 2022, a panel of three PTAB administrative patent judges granted a motion for additional discovery in TCL Industries Holdings Co., Ltd. v. Parkervision, Inc., IPR2021-00985, (PTAB 2022), in which the...
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    The opinions expressed are those of the authors and do not necessarily reflect the views of Jones Day or its clients. The posts and information provided are for general information purposes and are not intended to be and should not be taken as legal advice.