Author: John Rondini

Federal Circuit Rules that Assignor Estoppel Does Not Apply to IPR Petitions

Arista Networks, Inc. v. Cisco Systems, Inc., Case No. 2017-1525 (Fed. Cir. Nov. 9, 2018) The Federal Circuit recently ruled that a petition for inter partes review is not barred by assignor estoppel when the petitioner is in privity with a co-inventor who had assigned his rights to the current patent owner. The court adopted a broad interpretation of 35 U.S.C. § 311(a), finding a congressional intent to make IPR petitions available to all persons […]

Federal Circuit Reverses PTAB, Reaffirms Requirement That Anticipating Reference Disclose Every Element of Claimed Invention

Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., Case No. 2016-1900 (Fed. Cir. Mar. 14, 2017). The Federal Circuit reversed the Patent Trial and Appeal Board’s final written decision that a challenged claim in a patent relating to systems for controlling torque in electromagnetic motors was unpatentable due to anticipation. The petitioner, Zhongshan Broad Ocean Motor Co., Ltd. (“Broad Ocean”), filed a petition for inter partes review of claim 21 of U.S. Patent No. 7,208,895 […]

Federal Circuit Rules That Not All Petitioners Have Standing to Appeal Adverse IPR Results

The Federal Circuit recently dismissed an appeal from an inter partes review proceeding where the appellant/petitioner failed to establish that it had constitutional standing to maintain an appeal. Phigenix, Inc. v. Immunogen, Inc., No. 2016-1544, 2017 WL 74762 (Fed. Cir. Jan. 9, 2017). The appeals court ruled that a IPR petitioner must demonstrate constitutional standing with some admissible evidence in order to appeal an adverse PTAB result, and established the standard for meeting that burden. […]