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Avoiding Estoppel Is Not Good Cause To Withdraw Grounds After Institution

Avoiding Estoppel Is Not Good Cause To Withdraw Grounds After Institution

by Matthew Johnson | May 23, 2018 | CBMs, Estoppel, Motions Practice, PTAB Trial Basics

By: Sue Gerber and Matt Johnson We recently reported some early observations about possible trends at the PTAB in the wake of the Supreme Court’s decision in SAS Institute Inc. v. Iancu.  See Observations:  Three Weeks After Supreme Court’s SAS Institute Decision.  On...
Have Cake, Eat Cake: Declaratory Judgment Strategy For Accused Infringers

Have Cake, Eat Cake: Declaratory Judgment Strategy For Accused Infringers

by John Marlott | Apr 11, 2018 | Estoppel

By: John Marlott The AIA prohibits institution of a post-grant proceeding when the petitioner previously “filed a civil action challenging the validity of a claim of the patent.”  35 U.S.C. § 315(a)(1).  PGR petitions (including CBM petitions) are subject to the same...
Avoiding Estoppel Is Not Good Cause To Withdraw Grounds After Institution

Statutory Estoppel Only Applies To The Same Patent Claims

by Sue Gerber | Apr 3, 2018 | Estoppel, PGR

By: Sue Gerber While claims among patents in the same family can be very similar, such similarities are not enough for the statutory estoppel provision of 35 U.S.C. §325(e)(1) to apply.  In Telebrands Corp. v. Tinnus Enterprises, LLC, the PTAB interpreted the scope of...
Stop What You Are Doing: Collateral Estoppel At The PTAB

Stop What You Are Doing: Collateral Estoppel At The PTAB

by Jones Day's PTAB Team | Mar 16, 2018 | Claim Construction, Estoppel, Federal Circuit, PTAB Trial Basics

By: Rich Graham and Matt Johnson On March 13, 2018, in Nestlé USA, Inc. v. Steuben Foods, Inc., 2017-1193 (Fed. Cir. Mar. 13, 2018), the Federal Circuit confirmed that collateral estoppel may preclude the need to revisit an issue that had already been resolved against...
The Scope Of IPR Petitioner Estoppel For Non-Petitioned Grounds Remains Uncertain

The Scope Of IPR Petitioner Estoppel For Non-Petitioned Grounds Remains Uncertain

by John Marlott | Mar 2, 2018 | Estoppel

By: Tom Ritchie and John Marlott Petitioner Estoppel There is no doubt that “the potential for estoppel is one of the important considerations for defendants in deciding whether or not to file an [inter partes review (“IPR”)] petition.”  Shaw Indus. Grp., Inc. v....
The Scope Of IPR Petitioner Estoppel For Non-Petitioned Grounds Remains Uncertain

Court Grants Rehearing In Light Of Wi-Fi One

by Carl Kukkonen | Feb 5, 2018 | Estoppel, Federal Circuit, Federal Circuit Appeal, Request for Reconsideration

By: Amanda Leckman and Carl Kukkonen Eleven days after the Federal Circuit’s en banc opinion in Wi-Fi Onc, LLC v. Broadcom Corp., Nos. 15-1944, -1945 & -1946 (Fed. Cir. Jan. 8, 2018), a three-judge panel granted a petition by patent owner Click-to-Call...
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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.