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Estoppel

PTAB / Estoppel / PTAB Procedures and Rules / Supreme Court

Supreme Court rejects PTAB “partial institution” practice in IPR proceedings

Yesterday, the Supreme Court issued its decision in SAS Institute Inc. v. Iancu, rejecting the Patent Office’s practice of instituting IPR proceedings for some, but not all, claims challenged in a petition. In a 5-4 decision, the Supreme Court held that when the Patent Office institutes an IPR, it must decide the patentability of all […]

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PTAB / Estoppel / Federal Circuit / PTAB Procedures and Rules

Federal Circuit affirms Board’s grant of adverse judgment based on pre-institution disclaimer

Today, the Federal Circuit affirmed a Board decision of adverse judgment against a Patent Owner based on the pre-institution disclaimer of challenged claims. In IPR2016-00917, Arthrex (Patent Owner) filed a preliminary response requesting denial of the petition based on the disclaimer of all challenged claims  and specifically stating that it was not requesting adverse judgment. In […]

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PTAB / District Court / Estoppel

Patent Owner sinks infringement theory with statements made in IPR

An IPR petition that results in a final written decision finding all challenged claims unpatentable is unquestionably a success. But that’s not the only measure of success for IPR proceedings. In IPR2017-00588 (Nokia v. Huawei), T-Mobile, a real-party-in-interest to the IPR, appears to have found success long before the final written decision. On September 9, 2017, […]

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PTAB / District Court / Estoppel

Is IPR estoppel losing even more teeth? District Court finds it applies only to instituted grounds

In a December 19, 2016 decision, Judge Robinson (D. Del.) held that, under current Federal Circuit law, IPR estoppel can only apply to references on which the PTAB institutes trial. Judge Robinson’s decision was in response to plaintiff Intellectual Ventures’ motion for summary judgment that defendant Toshiba is estopped from raising invalidity grounds that it did […]

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