by David Cochran | Feb 20, 2017 | Estoppel, Trial Institution
By Rich Graham and Dave Cochran The Federal Circuit’s decision in Shaw[1] affirmed the PTAB’s policy that a Petitioner was not estopped from requesting inter partes review (“IPR”) based on prior art previously included in a petition for IPR, but for which institution...
by Geoffrey Gavin | Jan 27, 2017 | Estoppel
By Geoffrey Gavin In Verinata Health, Inc. v. Ariosa Diagnostics, Inc., No. 3:12-cv-05501-SI, Dkt. No. 319 (N.D. Cal. Jan. 19, 2017) (Slip Op.), Judge Illston in the Northern District of California addressed the scope of statutory estoppel under § 315 in the context...
by Doug Pearson | Jan 18, 2017 | Estoppel
By Doug Pearson Among the thorny questions for an IPR petitioner is how estoppel may affect invalidity positions asserted by the petitioner/litigant in a parallel district court proceeding, given the grounds of unpatentability asserted by the petitioner in an IPR...
by Lisamarie LoGiudice | Nov 28, 2016 | Estoppel, Pharmaceutical
By Lisamarie LoGiudice and Patrick Elsevier In Depomed, Inc. v. Purdue Pharma L.P. et al, 3-13-cv-00571, the District of New Jersey held that neither statutory nor judicial estoppel bars Purdue from continuing to assert invalidity defenses that were not instituted...
by Geoffrey Gavin | Nov 17, 2016 | Estoppel, Stay
By Geoffrey Gavin In Intellectual Ventures II LLC v. Kemper Corporation (accessible here), No. 6:16-cv-00081, Dkt No. 57 (E.D. Tex. Nov. 7, 2016) (Slip Op.), Judge Gilstrap made clear that a defendant in East Texas seeking a stay based on a third party petitioner’s...
by Jones Day's PTAB Team | Sep 19, 2016 | Estoppel
In IPR2016-00781, the PTAB denied institution on the grounds that the petitioner was estopped with respect to the claims of U.S. Patent No. 8,846,112 (“the ‘112 patent”). In an earlier proceeding brought by the petitioner, IPR2015-00529, the PTAB issued a Final...
