Prosecution History Crucial for Claim Interpretation of “Remote”

The Federal Circuit has again highlighted the importance of prosecution history for patent claim interpretation. In Baker v. Microsoft Corp., No. 2017-2357 (Fed. Cir. Apr. 9, 2018) the Federal Circuit upheld a district court claim… Read More

CBM Estoppel Limited to Substantially Identical References

A district court recently held the scope of estoppel from covered-business-method (CBM) review encompasses the references used in the CBM as well as almost-identical references. (Solutran, Inc. v. U.S. Bancorp et al. (D. Minn. 201… Read More

When to Convert a CIP Patent Application into a Divisional

The Federal Circuit recently clarified the limits of the safe harbor provision of 35 USC §121. In In re: Janssen Biotech, Inc., New York University, No. 2017-1257 (Fed. Cir. Jan. 23, 2018), the Federal Circuit upheld a Patent Tri… Read More

No Estoppel for Art in Contentions but Not IPR Petition

Earlier this month in Koninklijke Philips N.V. v. Wangs Alliance Corp., Civil Action No. 14-12298-DJC (D. Mass. Jan. 2, 2018), the District of Massachusetts added another case to the majority view of the scope of inter partes revi… Read More

IPR Estoppel Remains Elusive for Patent Owners

In Finjan v. Blue Coat Systems, LLC, No. 15-cv-03295-BLF, (N.D. Cal. July 28, 2017), the court took the majority view on the scope of Inter Partes review estoppel, finding no estoppel for grounds of invalidity not included in a pe… Read More

Estoppel, or Lack Thereof, in Inter Partes Reexaminations

The Federal Circuit recently clarified the scope of estoppel for inter partes reexaminations, ruling in a pair of decisions that a district-court decision only estops arguments against individual claims of a patent and that a dism… Read More

Broad Estoppel for IPR Petitioner Asserting Prior Art in District Court

Uncertainty over IPR estoppel continues. In Douglas Dynamics, LLC v. Meyer Products LLC, the Western District of Wisconsin recently ruled that grounds of invalidity left out of a petition for inter partes review are estopped and c… Read More

Judge Robinson Revisits IPR Estoppel, Seeking Federal Circuit Clarification

A district court recently reaffirmed its ruling that statutory estoppel does not apply to grounds of invalidity that could have been included in a petition for an inter partes review but weren’t, clearing the way for the defenda… Read More

Narrow Estoppel for IPR Petitioner Asserting Prior Art in District Court

A district court recently interpreted the statutory estoppel from an Inter Partes Review (IPR) to not apply to prior art that was publicly available at the time of the petition. Intellectual Ventures I LLC et al. v. Toshiba Corp.… Read More

Upcoming Webinar

Functional Claiming: Pitfalls and How To’s
October 18, 2018 at 12:00 pm EDT
Recent decisions under 35 U.S.C. §§ 101, 112, and 103 come into focus when viewed through a common lens. During the October webinar, Daniel Hegner of Bejin Bieneman discusses the convergence of federal court and PTAB decisions questioning funct…Register

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