Law.com Subscribers SAVE 30%

Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.

IP News

By Jeff Ginsberg and George Soussou
November 02, 2017

Federal Circuit: Collateral Estoppel Can Apply to Patents With Claims Similar To Those in Previously Litigated, Related Patents

On Oct. 3, 2017, a Federal Circuit panel of Judges Newman, Clevenger, and Chen issued a per curium decision in In re Lakshmi Arunachalam, No. 2016-1607 (Fed. Cir. 2017). Because claims of a later patent were not “materially different” than claims of a previously litigated patent, the patent owner was barred from re-litigating the issues due to collateral estoppel.

Lakshmi Arunachalam (Arunachalam) owns U.S. Patent No. 6,212,556 (the '556 patent), which is a continuation-in-part of U.S. Patent No. 5,987,500 (the '500 patent). Arunachalam appealed the Patent Trial and Appeal Board's (PTAB) ruling that certain claims of the '556 patent were unpatentable as either anticipated or obvious. The Federal Circuit found that the claims of the '556 patent were “not materially different” from claims of the '500 patent that were previously invalidated by a district court. Id. at 2. The Federal Circuit also noted that those claims were not “materially different from other patent claims of Dr. Arunachalam's in which [the court] applied collateral estoppel to bar her from challenging a prior Board unpatentability decision.” Id.

This premium content is locked for Entertainment Law & Finance subscribers only

  • Stay current on the latest information, rulings, regulations, and trends
  • Includes practical, must-have information on copyrights, royalties, AI, and more
  • Tap into expert guidance from top entertainment lawyers and experts

For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473

Read These Next
Major Differences In UK, U.S. Copyright Laws Image

This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.

The Article 8 Opt In Image

The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.

Strategy vs. Tactics: Two Sides of a Difficult Coin Image

With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.

Legal Possession: What Does It Mean? Image

Possession of real property is a matter of physical fact. Having the right or legal entitlement to possession is not "possession," possession is "the fact of having or holding property in one's power." That power means having physical dominion and control over the property.

The Stranger to the Deed Rule Image

In 1987, a unanimous Court of Appeals reaffirmed the vitality of the "stranger to the deed" rule, which holds that if a grantor executes a deed to a grantee purporting to create an easement in a third party, the easement is invalid. Daniello v. Wagner, decided by the Second Department on November 29th, makes it clear that not all grantors (or their lawyers) have received the Court of Appeals' message, suggesting that the rule needs re-examination.