Proskauer - The Patent Playbook

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Firm Profile: Proskauer Rose LLP
Eleven Times Square
(Eighth Avenue & 41st Street)
New York, NY 10036-8299, United States
Phone: 212.969.3000
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Novo Nordisk v. Mylan: Method of Treatment Claims Must Be Aligned with Label

Method-of-treatment (“MoT”) claims can be powerful tools for pharmaceutical companies seeking to extend market exclusivity for their products after the original composition-of-matter patents expire. However, the District of… more
 /  Intellectual Property

Crypto Unlocked: New Patent Eligibility Guidance on Blockchain Technology  

The U.S. gave crypto one of its biggest regulatory jolts in years. With the signing of the Guiding and Establishing National Innovation for U.S. Stablecoins (“GENIUS”) Act stablecoins now have a legal framework. The GENIUS Act… more
 /  Intellectual Property, Science, Computers, & Technology

Federal Circuit Lifts § 101 Barrier on Smart Dumbbells

On August 11, 2025, the Federal Circuit reversed the District of Utah’s ruling that all but one of the claims in PowerBlock Holdings, Inc.’s U.S. Patent No. 7,578,771 were invalid under 35 U.S.C. § 101. PowerBlock Holdings,… more
 /  Civil Procedure, Intellectual Property, Science, Computers, & Technology

Federal Circuit Reverses $4.7M Verdict in Labcorp v. QIAGEN: Claim Scope and Doctrine of Equivalents in the Crosshairs

The Federal Circuit recently reversed a $4.7M verdict in a patent lawsuit involving two patents concerning next-generation sequencing methods—U.S. Patent Nos. 10,017,810 and 10,450,597. Both patents concern DNA preparation using… more
 /  Civil Procedure, Civil Remedies, Intellectual Property, Science, Computers, & Technology

PTO Defends its Recent Policy Changes Regarding Discretionary Denials

In the past few months, the U.S. Patent and Trademark Office (“PTO”) Acting Director has made substantial changes to the process for, and factors considered in, exercising discretion to deny institution of an inter partes review… more
 /  Constitutional Law, Intellectual Property

PTO Creates New Expectations Regarding Discretionary Denials

On the heels of the U.S. Patent and Trademark Office Acting Director’s recent decision to deny institution of iRhythm Technologies’ inter partes review petition, the PTO has now issued additional decisions clarifying the role of… more
 /  Administrative Law, Intellectual Property, Science, Computers, & Technology

Federal Circuit Vacates $300 Million Verdict Against Apple, Orders Third Trial in LTE Patent Dispute

In a pivotal ruling for patent damages and standard-essential patent (SEP) litigation, the Federal Circuit vacated a $300 million award against Apple in a long-standing dispute with Optis Cellular Technology, LLC. See Optis… more
 /  Civil Procedure, Intellectual Property, Science, Computers, & Technology

Eyes Open to the Past: Federal Circuit Holds Prosecution History Is Claim Construction Evidence

The Federal Circuit’s decision in Eye Therapies, LLC v. Slayback Pharma, LLC provides further insight into the tools available for patent claim construction. The Federal Circuit had previously held that a patent’s specification… more
 /  Intellectual Property

AI, Algorithms and Abstract Ideas: Federal Circuit Reinforces Limits in Recentive v. Fox

In April, the Federal Circuit issued a significant patent law ruling involving artificial intelligence. In Recentive Analytics, Inc. v. Fox Corp, the Court addressed a core question facing many AI-driven businesses: When are… more
 /  Intellectual Property, Science, Computers, & Technology

Discretionary Denials in Action: iRhythm Technologies Inc. v. Welch Allyn Inc.

The U.S. Patent and Trademark Office (“USPTO”) Acting Director’s recent decision to deny institution of inter partes review (“IPR”) in iRhythm Technologies Inc. v. Welch Allyn Inc. offers valuable lessons for both patent owners… more
 /  Administrative Law, Alternative Dispute Resolution (ADR), Civil Procedure, Intellectual Property

Impact of the Leadership in Critical Technologies Act on U.S. Artificial Intelligence, Semiconductors and Quantum Computing

On the heels of the recent reintroduction of the PERA and PREVAIL Acts of 2025, a bipartisan group of lawmakers in Congress has introduced the Leadership in Critical and Emerging Technologies (“CET”) Act. The goal of the… more
 /  Administrative Law, Intellectual Property, Science, Computers, & Technology

Interesting Recent § 101 Cases – Structural Components Are Not Enough

Your Package Could Not Be Delivered – District of Delaware Strikes Electronic Storage Room Claims as Patent Ineligible - Judge Choe-Groves of the United States Court of International Trade granted Defendant’s Motion to… more
 /  Intellectual Property, Science, Computers, & Technology

EcoFactor v. Google: The Federal Circuit Clarifies Damages Expert Admissibility

Admissibility standards for patent damages experts has come under scrutiny. Previously, we highlighted the EcoFactor v. Google case regarding Google’s petition for rehearing en banc to address the admissibility of EcoFactor’s… more
 /  Civil Procedure, Commercial Law & Contracts, Intellectual Property

A New Dawn for Patent Owners? Breaking Down the PERA and PREVAIL Acts of 2025

In a move that could reshape the U.S. patent landscape, Congress has reintroduced two major pieces of legislation: the Patent Eligibility Restoration Act (PERA) of 2025 and the Promoting and Respecting Economically Vital… more
 /  Administrative Law, Intellectual Property, Science, Computers, & Technology

Ingenico Inc. v. IOENGINE, LLC: Federal Circuit Resolves the IPR Estoppel Split

In what is certain to become a landmark decision, the Federal Circuit has resolved a long-standing question that divided patent litigators and judges alike: does IPR estoppel apply to physical systems (“system art”) described in… more
 /  Administrative Law, Civil Procedure, Intellectual Property
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