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ARTICLE · 31 MARCH 2021

Estoppel Estopped For Remanded Claims

Jones Day
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In General Access Sols., Ltd. v. Sprint Spectrum, et al., No. 2:20-cv-00007-RWS, ECF No. 128 (E.D. Tex. Dec. 1, 2020), the Eastern District of Texas denied a motion to strike invalidity defenses as barred by IPR estoppel for patent claims ...

United StatesIntellectual Property
Marlee Hartenstein
Marlee Hartenstein
Matthew Johnson
Matthew Johnson
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In General Access Sols., Ltd. v. Sprint Spectrum, et al., No. 2:20-cv-00007-RWS, ECF No. 128 (E.D. Tex. Dec. 1, 2020), the Eastern District of Texas denied a motion to strike invalidity defenses as barred by IPR estoppel for patent claims whose validity was initially upheld at the PTAB, but vacated and remanded on appeal.

The case has a somewhat complicated procedural history. General Access sued Sprint in May 2016, alleging infringement of three of its patents. Sprint petitioned for, and the PTAB instituted, inter partes review of the patents. The PTAB ultimately invalidated two of General Access' patents but upheld the validity of several claims of the third. On appeal, the Federal Circuit vacated the PTAB's final written decision as to all but two of the surviving claims of the third patent, remanding the remaining claims for further proceedings. The PTAB's decision on remand is forthcoming.

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