Intellectual Property Owners Association

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Intellectual Property Owners Association’s weekly
one-hour webinar series on current topics in IP


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Hosted and produced by
journalist Pamela Sherrid

2018 Scheduled Webinars

After RPX: Privity, RPI, and Estoppel in AIA- Post Grant Proceedings

Thursday, 23 August 2018 2:00PM- 3:00PM ET

The issues of privity, real parties in interest (RPI), and estoppel are becoming ever more important in the post-grant context.  The recent Federal Circuit decision in Applications in Internet Time (AIT) v. RPX, an appeal from a PTAB inter partes review decision, found that the PTAB took an “impermissibly shallow” look at evidence presented by the patent owner about the relationship between the petitioner and another party.  Our panel of experts will discuss how this decision is a significant addition to the Federal Circuit’s oversight of the PTAB and what the resulting implications are for practitioners.

They will also discuss the relationship of these issues with the time bar under Section 315(b) and the ongoing impact of the en banc Federal Circuit decision in Wi-Fi One v. Broadcom Corporation.  That decision held “that time-bar determinations under §315(b) are reviewable by this court,” reversing the original Federal Circuit panel that had cited the Court’s holding in Achates that such judicial review was prohibited.

Questions of RPI and privity are woven throughout the AIA.  Its estoppel provisions involving district court and ITC litigation apply not only to entities that are directly involved in adversarial proceedings, but also to privies.  Likewise, in many IPRs, questions of RPI and/or privity are not limited to the business model of defensive groups, but are also raised by common fact patterns in supplier-customer relationships, indemnities, mergers & acquisitions, and use of the same counsel.

Our panel includes a PTAB specialist with extensive experience representing patent owners, a veteran patent litigator, and an appellate lawyer who recently represented a client at the Supreme Court in a case that changed PTAB practice.  They will discuss:

  • How patent owners can take advantage of RPX decision and what changes may it require in the business models of some frequent IPR petitioners
  • The options for patent owners who previously lost on privity issues at the PTAB or were denied discovery
  • The widely reported expectation that Wi-Fi One will file a petition for certiorari with the U.S. Supreme Court – as well as its efforts before the PTAB to raise the issue of a relationship alleged to be subject to the 315(b) time bar.


  • Gregory Castanias, Jones Day
  • Craig Countryman, Fish & Richardson P.C.
  • Eldora Ellison, Sterne Kessler Goldsteing & Fox, PLLC

The Tangled Law of Assignor Estoppel

Thursday, 30 August 2018 at 2:00 PM-3:00pm ET

Confusion can result if agencies and courts address similar legal issues. A case in point is the current muddle over the common law doctrine of assignor estoppel in patent litigation, where disputes over patent validity often proceed in parallel before the USPTO’s Patent Trial and Appeal Board and federal district courts. The doctrine, which prevents an inventor or patent owner who assigns a patent to another party from later challenging the validity of the patent, plays a role in a significant number of high-profile patent disputes. The Federal Circuit gives assignor estoppel a wide scope, while the PTAB has determined that assignor estoppel does not apply to AIAinter partes review (IPR) proceedings.

It appeared as if this conflict might be resolved soon, but that possibility has seemingly evaporated. EVE-USA/Synopsys petitioned the Supreme Court for certiorari, after assignor estoppel was applied against it in its case against Mentor Graphics. The Supreme Court asked for the views of the Solicitor General on the petition. But the parties stipulated to dismissal of the case in July.

Our panelists – two litigators both recently involved in significant cases involving assignor estoppel, as well as in-house counsel at a tech company, will discuss the fluid state of the law. The Federal Circuit in Husky Injection Molding Systems Ltd. v. Athena Automation Ltd. held that it lacked jurisdiction to review the PTAB’s determination that IPR challenges are not barred by assignor estoppel. But that decision relied on Achates, an earlier Federal Circuit decision which the Court has since overturned. The panel will also consider such corporate concerns as inventor mobility and patent sales in light of assignor estoppel.


  • Mark Miller, O’Melveny & Myers LLP
  • Marshall Schmitt, Michael Best & Friedrich LLP
  • Marian Underweiser, IBM Corp.