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 from presenting invalidity grounds at trial that it did not raise in an earlier IPR. … Continue reading IPR Estoppel Provisions May Not Be That Scary After All

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 Patent Office with respect to that claim on any ground that the petitioner raised or … Continue reading Estoppel Does Not Attach When Petitioner’s Grounds Are Denied As Redundant

PTAB Strikes Down Patent Claims — Despite Settlement and Request from Parties to Terminate Proceeding

By Tom Engellenner Last week we reported on a case (Blackberry v. MobileMedia Ideas) in which a PTAB panel refused to terminate an inter partes review proceeding with respect to the patent owner despite a settlement reached by the parties.  This was not the first instance of the PTAB deciding to continue a review on … Continue reading PTAB Strikes Down Patent Claims — Despite Settlement and Request from Parties to Terminate Proceeding

The More the Merrier – Joinder under the AIA

By Ben Snitkoff Under the America Invents Act (AIA), parties to an Inter Partes Review (IPR) or Post Grant Review (PGR) may move to join pending IPR or PGR proceedings. See 37 C.F.R. § 42.122 (for IPR), and 37 C.F.R. § 42.222 (for PGR). The regulations provide, in part: (b) Request for joinder. Joinder may … Continue reading The More the Merrier – Joinder under the AIA