Tagged with assignor estoppel

PTO Designates Precedential its Athena Automation Decision on Assignor Estoppel in IPR

Author: Jason E. Stach
Editor: James D. Stein 

The PTAB designated as precedential its Institution Decision in Athena Automation Ltd. v. Husky Injection Moldings Systems Ltd., IPR2013-00290, Paper No. 18 (Oct. 25, 2013). According to the Patent Office’s message announcing this new precedential designation, “[t]his decision determines that the doctrine of assignor estoppel is not an exception to 35 U.S.C. § 311(a), which allows ‘a person who is not the owner of a patent’ to file a petition for inter partes review.” Continue reading

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Federal Circuit Provides Two-Part Analysis for Determining Reviewability of PTAB Institution Decisions

Author: Anthony A. Hartmann
Editor: James D. Stein

The Federal Circuit in Husky Injection Molding Systems, Inc. v. Athena Automation Ltd., No. 2015-1726 (Fed. Cir. Sep. 23, 2016) recently dismissed Husky’s appeal from a final written decision in IPR. The court found it “lack[ed] jurisdiction to review the Board’s determination on whether assignor estoppel precludes it from instituting inter partes review.” Slip op. at 19.

Assignor estoppel generally prevents an assignor of a patent from later asserting that the patent is invalid. Here, a co-inventor of the patent at issue was Husky’s former owner and president, who had assigned the patent to Husky. After assigning the patent, he formed Petitioner Athena and alleged unpatentability of the patent in IPR. The Board found that assignor estoppel does not apply in an IPR, instituted review, and found certain claims unpatentable.

On appeal to the Federal Circuit, after reviewing the prevailing case law, the court identified a two-part framework to determine whether it may review a challenge to an institution decision:

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