Discretionary Denial at the PTAB Based on Parallel Litigation

Posted by Stuart Duncan Smith on Mar 4, 2021

Stuart Duncan Smith

(Co-authored by Elisabeth Hunt)

Discretionary denial has been a hot topic at the PTAB. On Wednesday, February 24th, Wolf Greenfield hosted a webinar to discuss discretionary denial at the PTAB, and in particular, discretionary denial based on parallel infringement litigation in district court or the ITC.

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Topics: ITC, PTAB, Discretionary Denial

IPR Estoppel May Apply to Product-Based Defenses

Posted by Anant Saraswat on Sep 4, 2019

Anant Saraswat

Under the estoppel provisions of 35 U.S.C. § 315(e), if an IPR results in a final written decision, the petitioner is barred from raising invalidity arguments in court or the ITC based on any grounds the petitioner “raised or reasonably could have raised” in the IPR, which may in practice mean any grounds based on patents or printed publications. Thus, petitioners involved in parallel litigation sometimes assert backup invalidity defenses based on prior art products. Two recent cases demonstrate that while such defenses can avoid estoppel, courts may reject perceived attempts to dodge estoppel by simply repackaging a publication-based ground as a product-based ground.

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Topics: IPR Estoppel, ITC, IPR

ITC v. PTAB: Is Winning in IPR Enough to Avoid an ITC Exclusion Order?

Posted by Stuart Duncan Smith on Aug 30, 2017

Stuart Duncan Smith

Parties accused of patent infringement often turn to IPRs to invalidate the asserted patents, and winning in an IPR can mean relief from whatever remedy would be imposed as a consequence of a finding of infringement. That strategy came under examination in a recent decision from the International Trade Commission (ITC), which declined to get rid of an exclusion order (i.e., an injunction) even after the PTAB found the infringed claims unpatentable. That does not mean, however, that the party found to infringe is without options.

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Topics: ITC

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This blog is intended to promote thought and debate on developing areas of the law. The opinions, commentary and characterizations of cases provided on this blog are not legal advice and do not represent the opinions of Wolf Greenfield or its clients.