by Marc S. Blackman | Dec 21, 2018 | Estoppel
By Marc Blackman – The Federal Circuit recently affirmed final written decisions in two inter partes reviews by holding that the patent owner was collaterally estopped from relitigating the threshold issue of whether a prior art reference was a...
by Carl Kukkonen | Nov 26, 2018 | Estoppel, Petitions
By Jocelyn Yu Ph.D. and Carl Kukkonen Assignor estoppel is a long-established, common-law doctrine of equity, which prevents a party who assigns a patent to another from later challenging the validity of the assigned patent. The doctrine also applies to parties in...
by David Maiorana | Nov 19, 2018 | Estoppel
By: David Maiorana In In re Certain Magnetic Tape Cartridges and Components Thereof, 337-TA-1058 (ITC October 2, 2018, Order), Administrative Law Judge Cheney ruled that even if a respondent is estopped from raising certain invalidity challenges because it failed to...
by John Marlott | Sep 9, 2018 | Estoppel
By: John A. Marlott The definiteness requirement for patent claims is set forth in Section 112(b), mandating that a patent specification conclude with one or more claims “particularly pointing out and distinctly claiming subject matter which the applicant regards as...
by Kenneth Luchesi | Sep 9, 2018 | Estoppel
By: Kenneth S. Luchesi As the boundaries of estoppel post-SAS continue to unfold, one court has found that if a petitioner’s time for appealing a PTAB partial-institution decision had not yet run out at the time that SAS was handed down, then the failure to appeal...
by Matthew Johnson | Aug 17, 2018 | Estoppel, Federal Circuit
In Click-To-Call Tech. v. Ingenio, Inc., 2015-1242, slip op. (Fed. Cir. Aug. 16, 2018) (en banc), the Federal Circuit found that the PTAB’s treatment of voluntary dismissal without prejudice of a district court litigation as resetting the IPR...