Invalidity Defenses Raised but not Instituted During IPR Are not Barred by Statutory or Judicial Estoppel
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...
Judges Recommend En Banc Reconsideration of Federal Circuit Holding in Achates
By Joe Sauer In a November 17, 2016 non-precedential decision, a Federal Circuit panel again considered whether its holding in Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) remains binding in view of the Supreme Court’s ruling in...
USPTO Presents Results of Post Grant Outcomes Pilot
In April 2016, the PTO launched its Post Grant Outcomes Pilot, an initiative to inform Examiners of relevant PTAB proceedings regarding patents related to an application (e.g., a continuation, divisional, continuation-in-part) that they are currently examining....
PTAB Hand Slapped for Overeager Exclusion of Reg Synthetic Evidence
By Matt Johnson On Nov. 8, the Federal Circuit reversed a PTAB decision to exclude certain allegedly hearsay Reg Synthetic evidence submitted in an attempt to antedate a prior art reference because the Circuit panel found that the evidence was not submitted for the...
Judge Gilstrap Denies Motion to Stay Because Defendant Relying on Third Party IPR Would Not Agree to be Fully Bound by Statutory Estoppel of 35 U.S.C. § 315
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...