In Egenera, Inc. v. Cisco Sys., 2020 U.S. App. LEXIS 27447 (Fed. Cir. Aug. 28, 2020), the Federal Circuit found that a party is not estopped from changing its position on inventorship between IPR and litigation so long as no court or court-like tribunal relied on the earlier position, and reversed the district court. The Federal Circuit applied the law of the regional circuit (First Circuit here) which follows the following three-factor test for estoppel: (1) whether a party's earlier and later positions are clearly inconsistent—that is, mutually exclusive; (2) whether the party succeeded in persuading a court to accept the earlier position; and (3) whether the party would derive an unfair advantage or impose an unfair detriment on the other side if not estopped.
The Federal Court found all three prongs unsatisfied:
- With respect to the first prong, the Federal Circuit reasoned that multiple corrections to inventorship could be justified by the claim construction or the district court’s factual findings.
- With respect to the second prong, the Court found that PTAB was not convinced to apply the earlier conception date and that the PTO was not acting as a court or court-like tribunal when it accepted the inventorship change, thus Egenera did not succeed in persuading a court to accept the earlier position.
- And, with respect to the third prong, the Court found no unfair advantage because the IPR was denied on a basis other than swearing-behind.
Accordingly, the finding of invalidity was reversed. However, the Federal Circuit noted, in dicta, that if the PTAB had accepted the change of inventorship in denying the IPR, then estoppel would likely apply.
The full opinion is accessible via http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-2015.OPINION.8-28-2020_1644541.pdf