Watch Your Words - Above the Law

"While I will let the proverbial dust settle for a bit on the big news out of the USPTO regarding changes to the IPR scheme, there is no doubt that seismic change is afoot. The fallout promises to impact everyone up and down the patent ecosystem's food chain, from patent owners, to defendants, and the entire universe of vendors, funders, and counsel that has been developed over the past decade to deal with parallel litigation in patent cases between district courts and the USPTO's PTAB. But there will be plenty of time to see what changes going forward, even as the heads of many have already been spinning for much of this year based on the implementation of a more robust discretionary denial gauntlet for IPR petitioners to navigate through."

"The case in question, Barrette Outdoor v. Fortress Iron, came to the Federal Circuit out of the Northern District of Texas after a claim construction ruling that the plaintiff agreed made it impossible to prove their case of infringement. As a result of that stipulation, the district court entered a final judgment of no infringement of any of Barrette's four asserted patents, with Barrette appealing that judgment to the Federal Circuit."

A Federal Circuit precedential opinion in Barrette Outdoor v. Fortress Iron affirmed a district court judgment of noninfringement after the patent owner stipulated to a claim construction that made proving infringement impossible. The district court entered final judgment of no infringement for all four asserted patents, and the Federal Circuit rejected the defendants' cross-appeal on indefiniteness. The opinion emphasizes that statements or concessions by patent owners or their counsel can produce prosecution disclaimer and thus limit patent scope and value. The decision reinforces the need for careful claim language and litigation strategy while broader IPR reforms proceed.

Read at Above the Law