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

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

by Matthew Johnson | May 21, 2025 | Estoppel, PTAB News, PTAB Trial Basics

By Evan Tassis and Matt Johnson – 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,...
Federal Circuit: Petitioner Estoppel Does Not Apply to Product Prior Art Grounds

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

by Matthew Johnson | May 15, 2025 | Estoppel, Prior Art Issues, PTAB News, PTAB Trial Basics

By Omar Jishi and Matt Johnson – 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 on...
Federal Circuit Reverses District Court’s Application Of Collateral Estoppel

Federal Circuit Reverses District Court’s Application Of Collateral Estoppel

by Matthew Johnson | Apr 11, 2025 | Estoppel, Federal Circuit

By Zac Hardy and Matt Johnson – Kroy IP Holdings, LLC sued Groupon, Inc., alleging infringement of 13 claims of U.S. Patent No. 6,061,660 (“’660 patent’), which relates to incentive programs over computer networks.  Those claims were invalidated via successful...
PREVAIL Act Passes Committee

PREVAIL Act Passes Committee

by Matthew Johnson | Dec 18, 2024 | District Court, Estoppel, PTAB News, PTAB Trial Basics

By Levent Herguner, Derek Walker, and Matt Johnson – The Promoting and Respecting Economically Vital American Innovation Leadership (“PREVAIL”) Act has moved to the Senate for a full vote after passing the Senate Judiciary Committee vote 11-10 on November 21,...
District Court Not Persuaded System Prior Art Evades IPR Estoppel

District Court Not Persuaded System Prior Art Evades IPR Estoppel

by Matthew Johnson | Nov 26, 2024 | Estoppel, Evidentiary Issues, Prior Art Issues

By Dalton Earich,* Matt Modderman, and Matt Johnson – On October 25, 2024, the United States District Court for the Eastern District of Pennsylvania ordered Comcast Corporation (“Comcast”) to identify the date on which it learned of each patent, patent...
Secondary Considerations Arguments Precluded By Prior Nexus Testimony

Secondary Considerations Arguments Precluded By Prior Nexus Testimony

by Matthew Johnson | Sep 20, 2024 | Estoppel, Evidentiary Issues, Final Written Decisions, PTAB News

By Fabian Bramwell,* Daniel Sloan, Jen Bachorik, and Matt Johnson – On June 6, 2024, the PTAB issued a Final Written Decision concluding claims 1-6 of U.S. Patent No. 8,899,655 B1 (“the ’655 patent”) unpatentable.  Yita LLC v. MacNeil IP LLC, IPR2023-00172,...
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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.