August 15, 2020

Volume X, Number 228

August 14, 2020

Subscribe to Latest Legal News and Analysis

August 13, 2020

Subscribe to Latest Legal News and Analysis

August 12, 2020

Subscribe to Latest Legal News and Analysis

Fairchild (Taiwan) Corp. v. Power Integrations, Inc.

In my last post, I discussed estoppel in the context in inter partes review, in which defendant filed for IPR after losing in the courts. The Board found the claims-in-suit to be obvious. The Federal Circuit affirmed that the courts and the PTAB could reach different conclusions about patentability.

In Fairchild (Appeal no. 17-1002 (Fed. Cir., April 21, 2017)), the Federal Circuit found the asserted claims to be valid. Power Integrations had earlier filed for inter partes reexamination, using the same references it used in the District Court suit. The Federal Circuit ordered the PTAB to vacate and dismiss the reexamination of the claims found to be valid. Note that this decision rests on the provisions of 35 USC s. 317, which prevents a defendant that lost on invalidity in the courts from bringing the same challenge via inter partes reexamination. Section 317 (pre-AIA) is worded differently than Section 315(e)(2), relating to inter partes review estoppel. Post-AIA, defendant can lose at the district court but faces broad estoppel if it pursues IPR –although, (as in Novartis v. Noven) it can still prevail even if the records are identical (!) My head hurts!

© 2020 Schwegman, Lundberg & Woessner, P.A. All Rights Reserved.National Law Review, Volume VII, Number 114

TRENDING LEGAL ANALYSIS


About this Author

Warren Woessner, Registered Patent Attorney, Schwegman Lundberg Law firm
Shareholder

Warren Woessner is a registered patent attorney and a founding shareholder of Schwegman, Lundberg & Woessner. His practice focuses on chemical patent law, including biotechnology, pharmaceuticals, vaccines, medical treatments, diagnostics, and biofuels and agricultural chemistry, including related opinion and licensing matters.

Warren received his B.A. in chemistry (1966) from Cornell University, his Ph.D. (organic chemistry, 1971) and his law degree (J.D., cum laude, 1981) from the University of Wisconsin...

612-373-6900