Federal Circuit Clarifies Statutory Estoppel in Litigations with Co-Pending IPRs

Posted by Claire Schuster on Feb 22, 2022

Claire Schuster

Section 315(e)(2) states that once a final decision issues in an IPR challenging a claim, the Petitioner “may not assert either in [court or the ITC] that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” In California Institute of Technology v. Broadcom Ltd., Nos. 2020-2222, 2021-1527, the Federal Circuit clarified the scope of statutory estoppel, making it harder for some patent challengers to preserve invalidity arguments for litigation.

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Topics: Petitioners, Patent Owners, IPR Estoppel, "Federal Circuit", IPR, PTAB

Uniloc “Locking” LG & Facebook Out? Not So Fast. CAFC Upholds Board’s “No Estoppel” Finding in Uniloc 2017 LLC v. Facebook Inc.

Posted by Alexandra Kim on May 12, 2021

Alexandra Kim

Joinder may allow a party to challenge patent claims with an IPR even if the one-year time bar in Section 315(b) would otherwise preclude the party from filing a petition for IPR. In Uniloc 2017 LLC v. Facebook Inc., Nos. 19-1688, -1689 (Fed. Cir. 2021), the Federal Circuit resolved whether the joining party can continue the challenge even if the original petitioner no longer can due to estoppel.

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Topics: Petitioners, Patent Owners, "Federal Circuit", Joinder

The PTAB’s Flexibility In Its Decisions – The Federal Circuit Weighs In

Posted by Susmita Gadre on May 10, 2021

Susmita Gadre

On appeal of a PTAB decision that all claims in a patent on compressing video files were unpatentable, the Federal Circuit clarified two issues. This post considers the second addressed issue – is the PTAB limited to the arguments made by Petitioners? The Federal Circuit found that it is.

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Topics: Petitioners, Prior Art, Obviousness, "Federal Circuit"

The One-Year Time Bar Strikes Again

Posted by Stuart Duncan Smith on Apr 8, 2021

Stuart Duncan Smith

The time bar in Section 315(b) says that IPR may not be instituted if the petition was filed more than one year after the petitioner was “served with a complaint alleging infringement of the patent.” A recent PTAB decision illustrates that petitioners should be wary of stepping over that line, even if there is a dispute about the patent owner’s proof of service.

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Topics: Petitioners, Patent Owners, "Federal Circuit", IPR, PTAB

Federal Circuit Declines to Take Up Winning-Petitioner Estoppel

Posted by Scott Forman on Aug 5, 2019

Scott Forman

The Federal Circuit recently declined to consider whether a successful IPR petitioner is estopped from making its winning invalidity arguments in district court. If a winning petitioner does face estoppel, its arguments may be limited to those which could not have been brought through IPR when parallel litigation on the same patent proceeds pending rehearing or appeal of the IPR decision. This view of estoppel would shake up the carefully choreographed interplay between district court litigation and FDA approval of a generic manufacturer’s ANDA envisioned by the Hatch-Waxman Act. However, in BTG International Ltd. v. Amneal Pharmaceuticals LLC, the court found the issue moot after upholding the PTAB’s decision finding the challenged claims obvious.

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Topics: Petitioners, IPR

Motions to Amend: The Board Invites Alice to the IPR Party

Posted by Nathan Speed on Jan 25, 2019

Nathan Speed

One strategy that a patent owner can pursue in an IPR trial is to file a motion to amend seeking to replace one or more of the challenged claims with substitute claims that neither enlarge the scope of the claims nor introduce new subject matter. When a patent owner files such a motion, the petitioner is permitted to oppose the motion and argue why the substitute claims are not patentable. In a recent decision, the Board reaffirmed that the grounds available for a petitioner to attack the patentability of substitute claims are not limited to anticipation or obviousness, but rather can include other sections under the Patent Statute, including § 101.

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Topics: Petitioners, IPR, patent

Who Bears the Burden in IPR? It Depends on the Argument

Posted by Stuart Duncan Smith on Oct 23, 2018

Stuart Duncan Smith

A hallmark of IPR proceedings is that the petitioner—not the patent owner—has the burden to prove that the challenged claims are unpatentable. This hallmark is statutory as section 316(e) of the American Invents Act (which created IPRs) provides that “the petitioner shall have the burden of proving a proposition of unpatentability.” And yet, a recent decision from the Federal Circuit confirms IPR nonetheless applies the traditional rule that can shift a burden to the patent owner to rebut the petitioner’s prima facie case of obviousness. Patent owners thus cannot blindly rely upon section 316(e) and, in certain circumstances, should consider submitting evidence to defend the claims.

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Topics: Petitioners, Patent Owners

In IPR Petitions, Paste Makes Waste

Posted by Tom Chlebeck on Feb 26, 2018

Tom Chlebeck

The PTAB recently signaled a warning to petitioners about the dangers of third party submissions made during patent prosecution—even during prosecution of a separate but related patent. For patent holders, this warning serves as an opportunity to protect their patents in similar situations. In PGR2017-00038, Live Nation Entertainment, Inc. filed a petition to institute post-grant review of U.S. Patent No. 9,466,035. Live Nation’s arguments were that the claims were patent ineligible under 35 U.S.C. 101 and would have been obvious under 35 U.S.C. 103.

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Topics: Petitioners, Patent Owners

Supreme Court May Let IPRs Continue

Posted by Elizabeth Hudson on Dec 8, 2017

Elizabeth Hudson

Last week, the Supreme Court heard oral arguments in Oil States Energy Services v. Greene’s Energy Group—a case that addresses whether inter partes review unconstitutionally usurps the federal courts’ authority to adjudicate the validity of patents. An examination of the Justices’ questions provides hints of how they are thinking and suggests that IPRs may survive constitutional review.

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Topics: Petitioners, Patent Owners

Supreme Court Suggests a Partial Solution to Partial Institutions

Posted by Elizabeth Hudson on Dec 4, 2017

Elizabeth Hudson

Last week, the U.S. Supreme Court heard oral arguments in two patent cases concerning IPRs. The first case (Oil States Energy Services v. Greene’s Energy Group) has garnered much of the attention because it concerns the constitutionality of IPRs, but the second case (SAS Institute Inc. v. Matal) may actually have a bigger impact on how IPRs work. In SAS, the Supreme Court considered the PTAB’s practice of selecting which challenged claims it reviews, rather than, once it institutes a trial, issuing a final decision on the patentability of all claims challenged in the petition. The oral arguments suggest how the Justices are approaching the case.

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Topics: Petitioners, Patent Owners

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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.