A recent dispute between BTG International Limited and several generics companies has raised an interesting question regarding the role of estoppel arising from successful inter partes review (IPR) challenges—specifically, the question of whether a petitioner, who is successful in invalidating patents in IPR proceedings, is estopped from raising those same arguments in pending district court litigation.
The Court held that the federal government is not a “person” within the meaning of the AIA and is therefore ineligible to pursue the post-grant patent challenges authorized by that act, including inter partes review (IPR), post-grant review (PGR), and covered business method (CBM) review.
Navigating Uncertainty—Addressing Purely Functional Claim Limitations in a Post-Williamson World with Ongoing PTAB Climate Change
Patent litigants on both sides of the docket struggle with claim limitations that do not expressly recite “means for” language yet define the scope of the invention in terms of functionality rather than structure. In the wake of Williamson v. Citrix Online, LLC, tribunals have increasingly found that claim limitations reciting so-called nonce words overcome the legal presumption against § 112, ¶ 6 (or means-plus-function) treatment. This Article briefly discusses the Williamson decision, its legal and practical effect, and strategic considerations for petitioners and patent owners at the PTAB.
Fish attorneys David Hoffman and Kenneth Darby recently secured a win for client The Heil Co. (d/b/a Heil Environmental) at the Patent Trial and Appeal Board (PTAB) when the Board found that a patent covering a system for tracking garbage cans that Heil challenged was invalid.
Michael Hawkins Quoted in Law360 Article “PTAB Rulings Show Potential New Way To Defeat AIA Reviews”
Fish Principal Michael Hawkins has been quoted in a recent Law360 article discussing the implications of two PTAB decisions declining to institute IPR of patents because the petitioner was likely to succeed in invalidating only two of 20 or more challenged claims.