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Supreme Court Requests Solicitor General’s Views On Important PTAB Estoppel Issue

Supreme Court Requests Solicitor General’s Views On Important PTAB Estoppel Issue

by John Marlott | Mar 16, 2023 | Estoppel, Other News

By John Marlott and Sachin Patel* – What invalidity grounds is a petitioner barred from raising in parallel district court or ITC litigation after the petitioner previously challenged the patent and the PTAB has issued a final written decision?  The U.S. Supreme...
Director Vacates PTAB Adverse Judgments in Precedential Director Review

Director Vacates PTAB Adverse Judgments in Precedential Director Review

by Matthew Johnson | Feb 2, 2023 | Estoppel, PTAB News

By Misti Blount and Matt Johnson – Director Vidal’s sua sponte Director Review decision of Apple Inc. v. Zipit Wireless, Inc. (IPR2021-01124, -01125, -01126, -01129) was recently designated as precedential.  The decision dealt an immediate setback for Apple and...
Ex Parte Reexamination Barred Based on Earlier IPR

Ex Parte Reexamination Barred Based on Earlier IPR

by Josh Nightingale | Dec 5, 2022 | Estoppel, PTAB News

By Dhohyung Kim and Josh Nightingale – On November 16, 2022, the United States Patent and Trademark Office (“PTO”) vacated a reexamination proceeding because the patent challenger relied on unpatentability grounds that reasonably could have been raised in an...
Petitioner Estopped On “Uninstituted” Claim

Petitioner Estopped On “Uninstituted” Claim

by Matthew Johnson | Oct 18, 2022 | Estoppel, PTAB News

By Hannah Mehrle and Matt Johnson – Click-to-Call (Plaintiff/Patent Owner) filed an infringement suit against Ingenio (Defendant/Petitioner) and others.  Defendant filed an IPR challenging the asserted claims.  In the IPR petition, Petitioner asserted multiple...
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...
The Board Declines To Apply Interference Estoppel

The Board Declines To Apply Interference Estoppel

by Josh Nightingale | Jul 27, 2022 | Estoppel, PTAB News

By Ryan Camp,* Sachin Patel, and Josh Nightingale – On June 14, 2022, the Board instituted Zynga Inc.’s (“Zynga”) petition for IPR against U.S. Patent No. 7,168,089 (the “’089 patent”), rejecting Patent Owner IGT’s argument that interference estoppel should preclude...
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