Category Archives: Estoppel

IPR Estoppel Provisions May Not Be That Scary After All

By Yue (Joy) Wang IPR petitioners wary of the statutory estoppel under 35 U.S.C. § 315(e)(2) may have reason to be cautiously optimistic.   Judge Sue Robinson of the Federal District Court of Delaware recently held that Toshiba is not estopped … Continue reading

Posted in America Invents Act, Anticipation/Obvious, Appeals, Court of Appeals Fed Circuit, District Court, Estoppel, Federal Circuit, Final PTAB Decision, Instittion Decision, Post Grant Review, Section 315(e) bar | Tagged , , , , , , , , , , , ,

Estoppel Does Not Attach When Petitioner’s Grounds Are Denied As Redundant

By Reza Mollaaghababa Under 35 U.S.C. 315(e)(1), a petitioner in an inter partes review of a claim in a patent that has resulted in a final written decision by the Board may not request or maintain a proceeding before the … Continue reading

Posted in America Invents Act, Anticipation/Obvious, Court of Appeals Fed Circuit, Estoppel, Instittion Decision, Inter Partes Review, Trial Tactics, USPTO | Tagged , , , , , , , , , , , , ,

Affirmative Defense of Invalidity As Part of a Motion to Intervene Does Not Bar Filing of a Subsequent IPR Petition

By Reza Mollaaghababa According to 35 U.S.C. §315(a), an inter partes review may not be instituted if, before the date on which the petition for such a review is filed, the petitioner or real party in interest filed a civil … Continue reading

Posted in America Invents Act, District Court, Estoppel, Instittion Decision, Inter Partes Review, Motion to Intervene, Section 315(a) bar, Trial Tactics | Tagged , , , , , , , , , ,

Patent Trial and Appeal Board Adds Two More Cases to its List of Precedential and Informative Decisions

By Tom Engellenner Earlier this month, the Patent Trial and Appeal Board (PTAB) added two decisions to its list of “precedential” opinions for the USPTO’s new proceedings for challenging patents under the America Invents Act. The list (which now consists … Continue reading

Posted in America Invents Act, Covered Business Methods, Estoppel, Inter Partes Review, Post Grant Review, PTAB Procedure | Tagged , , , , , , , , , , , , , ,

No Second Bite Of The Apple for Square, Inc. – PTAB Applies Estoppel Provision Of 35 U.S.C. §325(e)(1) TO CBM Review

By Reza Mollaaghababa In the case of Square, Inc. v. Unwired Planet, LLC (CMB2015-00148), the PTAB held that the grounds raised by Square, Inc. (Petitioner) to challenge the validity of claims 1-4 of Unwired Planet’s U.S. Patent No. 7,711,100 could … Continue reading

Posted in America Invents Act, Anticipation/Obvious, Covered Business Methods, Estoppel, Post Grant Review, PTAB Procedure, USPTO | Tagged , , , , , ,