Estoppel Trumps Substance: ITC Bars Respondent’s Invalidity Grounds Raised in IPR
By Evan Tassis and Matt Johnson - Recently, an ITC Administrative Law Judge applied IPR statutory estoppel under 35 U.S.C. § 315(e)(2) in denying a Respondent’s motion for summary determination of invalidity in Certain Audio Players and Components Thereof,...
Trial Date Drives PTAB’s Denial of IPR Institution
By Mike Lavine - On April 16, 2025, the Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR) for several claims of U.S. Patent No. 7,187,307, owned by Universal Connectivity Technologies, Inc. HP Inc., Dell Technologies Inc., Dell Inc.,...
Federal Circuit: Petitioner Estoppel Does Not Apply to Product Prior Art Grounds
By Omar Jishi and Matt Johnson - In IOENGINE, LLC v. Ingenico Inc. (Fed. Cir. 2025), the Federal Circuit narrowed the scope of IPR estoppel under 35 U.S.C. § 315(e)(2), which precludes an IPR petitioner from asserting in court that a patent claim “is invalid on any...
PTAB Denies Institution of IPRs in Apple v. Haptic
By Carl Kukkonen - In two recent decisions, the Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR) proceedings sought by Apple Inc. against Haptic, Inc. regarding U.S. Patent No. 9,996,738 B2. These decisions—IPR2024-01475 and...
INFORMATIVE: Acting Director Rescinds Institution Where Claims Held Invalid in District Court Case
By David Linden, Dave Maiorana, and Sue Gerber - On August 22, 2024, Hulu, LLC (“Hulu”) filed two separate petitions for inter partes review (“IPR”) of U.S. Patent No. 11,463,768 (“the ’768 Patent”), assigned to Piranha Media Distribution, LLC (“Piranha”). The ’768...