Let the Petitioner Beware: Clearing a path by proactively challenging patents in an IPR may result in a lack of standing to appeal an adverse decision

A recent decision by the United States Federal Circuit (AVX Corporation v Presidio Components, Inc (Fed Cir, No 2018-1106, 13 May 2019)) has clarified the requirements for standing to appeal from an inter partes review (“IPR”) before the Patent Trial and Appeal Board (“the Board”), but has left open the issue of estoppel.   AVX

Prosecution history estoppel again rejected

The Australian courts have again rejected the notion that what the applicant says during prosecution can be held against the patentee during later litigation.   In Bradken Resources Pty Ltd v Lynx Engineering Consultants Pty Ltd, [2015] FCA 1100, the judge was asked to consider the meaning of the claim term “integrally formed” for the purposes of infringement. The defendant pressed upon the judge