Category Archive: Estoppel

Dec 23

IPR Estoppel Narrowed Even Further in D. Delaware Ruling

Despite the astounding success for patent challengers to date in IPR proceedings, are you one who has been worried about the effects of the IPR estoppel in future litigation? Has this concern dissuaded you from considering filing an IPR in the past? Fear no more, another decision from a federal court has taken a severely narrow …

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Aug 27

More Fun with the One-Year Time Bar of § 315(b)

The nuances of the time bar of 35 U.S.C. § 315(b) continue to be explored in various IPR decisions.  In Amneal Pharmaceuticals, LLC v. Endor Pharmaceuticals Inc., IPR2014-00360, Paper 15, Patent Owner asserted that the Petition for Inter Partes Review was time-barred under § 315(b) because Petitioner received an amended complaint in co-pending litigation, asserting the …

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Nov 25

Dismissal of District Court Case, Without Prejudice, Removes Time Bar of 35 USC § 315(b)

Challenging claims of a patent which it had already previously challenged, Ariosa Diagnostics was able to get six challenged claims of an Isis Innovation patent into a trial for inter partes review in a case styled as Ariosa Diagnostics v. Isis Innovation, Ltd., (IPR2013-00250), involving U.S. Pat. No. 6,258,540. The Board began by noting that …

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May 10

32 for 33: PTAB Again Allows Re-Argument of Grounds Denied in Earlier Reexamination

The PTAB continued its trend of not providing any deference in an inter partes review to previous actions by the Patent Office with respect to a previously-challenged patent in a case styled Vestcom Int’l, Inc. v. Grandville Printing Co. (IPR2013-00031), involving US Pat. No. 8,020,765. Three of the fourteen challenge grounds were granted, with the Board finding …

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