By Scott A. McKeown
| August 2, 2017

Assignor Estoppel Not an Exception to 311(a)


The Patent Trial & Appeal Board (PTAB) has designated the following decision as precedential: Athena Automation Ltd v. Husky Injection Molding System Ltd., IPR2013-00290, Paper 18 (PTAB Oct. 25, 2013), Section II.A. (here)

Athena holds 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. This decision was later left undisturbed by a split-panel of the Federal Circuit.  The majority found review of assignor estoppel precluded by operation of the appeal bar (35 U.S.C. § 314(d), relying upon the Court's earlier decision in Achates Reference Publishing.  Of course, the continued viability of Achates is being reconsidered, en banc, in in Wi-Fi One LLC v. Broadcom (here).  As such, this agency precedent might be revisited by the CAFC down the line.
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