COSTA MESA, CALIF.—A recent ruling in federal court holds that assignor estoppel, which prevents former owner of a patent from challenging the patent’s validity, is not valid in inter partes review before the Patent Trial and Appeal Board.

Womble Bond Dickinson attorney Brent Babcock discussed the PTAB assignor estoppel ruling with Law360. Babcock has represented clients in assignor estoppel issues before the PTAB and he said there is no evidence to suggest Congress considered this issue when the America Invents Act (AIA) was drafted.

“The intent [of Congress] is unknown because it wasn’t considered,” he tells Law360. “I’m not saying the [Federal Circuit’s] answer is wrong; I can see both sides of it. But I don’t think that this is analytically satisfying to simply point to language in the statute and say it’s clear.”

Babcock said more discussion on the issues at stake—particularly the invalidation of questionable patents versus the value of an assignment—should take place.

Click here to read “Fed. Circ. Puts PTAB Assignor Estoppel to Rest” at Law360 (subscription required).

Brent Babcock represents high-technology clients in every aspect of intellectual property disputes, focusing on federal district court litigation throughout the country, trials and post-grant patent proceedings before the USPTO's Patent Trial and Appeal Board and alternative dispute resolution (ADR) proceedings, including domestic and international arbitrations. His practice also includes pre-litigation counseling, pre-interference and post-grant proceeding consulting, and appellate briefing and oral argument before the United States Court of Appeals for the Federal Circuit.