IPR Petitioner Estopped On Grounds That Could Have Been Raised Earlier
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...
ITC: No Issue Preclusion Where Asserted Patent Found Unpatentable in IPR
On August 23, 2016, the International Trade Commission ("ITC") issued the public version of its Final Opinion in Certain Three-Dimensional Cinema Systems and Components Thereof, Inv. No. 337-TA-939, clarifying the effect of Inter Partes Review (IPR) proceedings on...
Federal Circuit Rules Inter Partes Review Estoppel Does Not Apply to Invalidity Grounds Not Instituted on Basis of Redundancy by PTAB
On March 23, 2016, the United States Court of Appeals for the Federal Circuit issued a decision in Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., 817 F.3d 1293, holding that the PTAB’s decision not to institute IPR review on petitioned grounds on the...
Federal Circuit Holds That PTAB Cannot Shift Burden onto Patent Owner to Prove Non-obviousness
On July 25, 2016, the U.S. Court of Appeals for the Federal Circuit issued a decision in In re Magnum Oil Tools International, Ltd., reversing the U.S. Patent Trial and Appeal Board’s (“PTAB”) decision in an inter partes review and holding that the PTAB improperly...
Federal Circuit Opens the Door to Use of Evidence by the Patent Trial and Appeal Board (PTAB) Beyond the Four Corners of the Petition
Current understanding of the PTAB process holds that a party’s petition challenging a patent must contain all evidence and arguments for institution that the party plans to present; otherwise, anything not included in the petition is forfeited. This understanding may...