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ARTICLE · 10 NOVEMBER 2015

PTAB To Purchasers: "Caveat Emptor"

McDermott Will & Emery
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The PTAB found that the patent owner failed to provide sufficient support for its contention that the Board is authorized to consider assignor estoppel under 35 U.S.C. §§ 314, 316 when deciding institution decisions.

United StatesIntellectual Property
Ryan Vachon
Ryan Vachon
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Esselte AB v. DYMO B.V.B.A.

In a decision to institute inter partes review (IPR) in four separate but related matters, the Patent Trial and Appeal Board (PTAB or Board) found that the patent owner failed to provide sufficient support for its contention that the Board is authorized to consider assignor estoppel under 35 U.S.C. §§ 314, 316 when deciding institution decisions. Esselte AB v. DYMO B.V.B.A., Case Nos. IPR2015-00766, IPR2015-00771, IPR2015-00779, IPR2015-00781 (PTAB, Aug. 28, 2015) (Parvis, APJ).

The challenged technology relates generally to printing devices and methods used to print an image on a tape. In its initial analysis, the PTAB found that the petitioner had demonstrated a reasonable likelihood of prevailing in showing the unpatentability of the challenged claims. However, the real "meat" of the decision to institute came in the Board's examination of assignor estoppel.

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