Questions raised by Appellants: 1. “Whether ‘an assignor can circumvent the doctrine of assignor estoppel by attacking the validity of a patent claim in the Patent Office’—even though the assignor may not ‘do the same in district court’—and then returning to district court to assert collateral estoppel based on the Patent Office’s finding of invalidity.” 2. “Whether the Court should ‘revisit [its] construction of the America Invents Act and reevaluate [its] interpretation of the statute as prohibiting the doctrine of assignor estoppel,’ or alternatively ‘change the application of the doctrine in district court.’”
Questions raised by Cross-Appellant: 1. “[W]hether assignor estoppel bars an inventor-assignor from asserting lack of enablement and lack of written description when the assignee broadened claims after assignment.” 2. “[W]hether a patent specification must include an explicit ‘disclaimer’ before claim terms are construed as used in the specification.”
