Michael Best Partner Marshall Schmitt will present as a panelist for the webinar titled, “Assignor Estoppel: The Current State of the Law,” hosted by the Intellectual Property Owners Association’s IP Chat Channel, on Thursday, August 30 from 1:00 PM – 2:00 PM Central.
Confusion can result if agencies and courts address similar legal issues. A case in point is the current muddle over the common law doctrine of assignor estoppel in patent litigation, where disputes over patent validity often proceed in parallel before the USPTO’s Patent Trial and Appeal Board and federal district courts. The doctrine, which prevents an inventor or patent owner who assigns a patent to another party from later challenging the validity of the patent, plays a role in a significant number of high-profile patent disputes. The Federal Circuit gives assignor estoppel a wide scope, while the PTAB has determined that assignor estoppel does not apply to AIAinter partes review (IPR) proceedings. The panel will also consider such corporate concerns as inventor mobility and patent sales in light of assignor estoppel.