News & Analysis as of

Appeals Estoppel

Troutman Pepper Locke

Federal Circuit Ruling Broadens Reach of Prosecution History Estoppel to Include Canceled Claims

Troutman Pepper Locke on

Prosecution history estoppel typically arises when a claim is rejected during prosecution and is then amended (narrowed) to overcome the rejection. However, in Colibri Heart Valve LLC v. Medtronic CoreValve, LLC, No....more

Lathrop GPM

Federal Circuit Says Claim Cancellation Can Create Prosecution History Estoppel

Lathrop GPM on

In a July 18 precedential decision in Colibri Heart Valve LLC v. Medtronic CoreValve LLC, the U.S. Court of Appeals for the Federal Circuit overturned a $106 million jury verdict against Medtronic for infringement of a patent...more

McDermott Will & Schulte

Valve turned: Prosecution history estoppel applies to closely related claims

The US Court of Appeals for the Federal Circuit reversed a jury’s infringement finding, concluding it was precluded by prosecution history estoppel. Colibri Heart Valve LLC v. Medtronic CoreValve LLC, Case No. 23-2153 (Fed....more

Knobbe Martens

Finding Common Ground? — Federal Circuit Clarifies IPR Estoppel

Knobbe Martens on

INGENICO INC. v. IOENGINE, LLC Before Dyk, Prost, and Hughes. Appeal from the United States District Court for the District of Delaware. IPR estoppel does not preclude reliance on public-use evidence that is substantively...more

Troutman Pepper Locke

Understanding the Impact of IPR Estoppel and PTAB Discretionary Denials — Patents: Post-Grant Podcast

Troutman Pepper Locke on

In this episode of the Post-Grant Podcast, Andy Zappia, Nick Gallo, and Bryan Smith explore the evolving landscape of estoppel in inter partes review (IPR) and post-grant review (PGR) proceedings at the Patent Trial and...more

ArentFox Schiff

Federal Circuit Narrows Scope of IPR Estoppel, Resolving District Court Split

ArentFox Schiff on

The Federal Circuit recently clarified in Ingenico Inc. v. IOENGINE, LLC that inter partes review (IPR) estoppel does not extend to physical systems described in prior art patents or printed publications....more

K&L Gates LLP

Estoppel Estopped?

K&L Gates LLP on

The Federal Circuit recently resolved a split among the district courts whether patent infringement defendants who bring inter partes review (IPR) challenges are estopped from raising new prior art challenges in a co-pending...more

Goodwin

New York’s Highest Court Agrees To Hear Constitutional Challenge to Estoppel Provision of FAPA

Goodwin on

On May 20, 2025, the New York Court of Appeals agreed to hear constitutional challenges to one aspect of New York’s Foreclosure Abuse Prevention Act (FAPA). ...more

Foley Hoag LLP

Reshaped IPR Landscape: Narrower Estoppel and Fewer New Cases

Foley Hoag LLP on

Key Takeaways - - A recent Federal Circuit decision in a case involving an inter partes review (IPR) significantly narrowed a patentee’s ability to rely on estoppel to block a defendant from raising invalidity grounds. -...more

McGinnis Lochridge

Production Disputes and Estoppel Claims Cloud Lease Termination in Milam County

McGinnis Lochridge on

In this lease termination case (Pruett v. River Land Holdings, LLC, No. 03-22-00478-CV, 2024 WL 1745652, at *1 [Tex. App.—Austin Apr. 24, 2024, no pet.]), the Austin Court of Appeals was tasked with examining a cessation of...more

McDermott Will & Schulte

Breaking New Grounds to Limits of IPR Estoppel

In a matter of first impression, the US Court of Appeals for the Federal Circuit found that inter partes review (IPR) estoppel does not preclude a petitioner from relying on the same patents and printed publications as...more

Morgan Lewis

Public Use and Estoppel Reexamined: Strategic Lessons from Ingenico

Morgan Lewis on

This LawFlash details strategic takeaways and practical lessons from the recent US Court of Appeals for the Federal Circuit case on IPR estoppel, evidence of public use, and jury instructions on specific issues....more

WilmerHale

Federal Circuit Provides Guidance on Scope of IPR Estoppel

WilmerHale on

In its recent decision in Ingenico Inc. v. IOENGINE, LLC, the Federal Circuit affirmed the district court’s decision to allow Ingenico to introduce certain prior art at trial, finding that inter partes review (IPR) estoppel...more

Sheppard Mullin Richter & Hampton LLP

A Line in the Sand: Federal Circuit Bounds IPR Estoppel in Ingenico v. IOENGINE

In a significant development for patent litigants, the Federal Circuit in Ingenico Inc. v. IOENGINE, LLC, affirmed an important limitation on the scope of IPR estoppel under 35 U.S.C. § 315(e)(2). Specifically, the court held...more

A&O Shearman

The CAFC Holds That IPR Estoppel Does Not Shield Patentees From System Prior Art

A&O Shearman on

On May 7, 2025, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) affirmed a decision by the U.S. District Court for the District of Delaware (“district court”) that found claims of two IOENGINE, LLC (“IOENGINE”)...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Ingenico: Federal Circuit Narrows the Scope of IPR Estoppel Under § 315(e)(2)

On May 7, 2025, the Federal Circuit issued a precedential decision in Ingenico Inc. v. IOENGINE, LLC that narrows the scope of inter partes review (IPR) estoppel under 35 U.S.C. § 315(e)(2), resolving a longstanding district...more

Proskauer - The Patent Playbook

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...more

Sheppard Mullin Richter & Hampton LLP

Don’t Get Lazy, Timely Complete Your Arguments

This Federal Circuit Opinion analyzes statutory estoppel under 35 U.S.C. § 315(e)(1) and examines offensive and defensive arguments related to § 103 obviousness.  Gesture Technology Partners, LLC is the owner of U.S....more

ArentFox Schiff

Federal Circuit Refuses to Extend IPR Estoppel to Unadjudicated Patent Claims

ArentFox Schiff on

In Kroy IP Holdings, LLC v. Groupon, Inc., 127 F.4th 1376 (Fed. Cir. 2025), the Federal Circuit held that patentees in district court are not collaterally estopped from asserting claims that were not immaterially different...more

Gray Reed

NPRI Plaintiff Survives Affirmative Defenses

Gray Reed on

Boren Descendants et al v. Fasken Oil and Ranch, LTD, offers something to talk about beyond interpretation of the fixed-or-floating NPRI question.  At issue was this reservation, expressed as a double fraction, in a 1933...more

Ervin Cohen & Jessup LLP

Equitable Estoppel Can Be Invoked By a Non-Signatory Joint Employer to Compel Arbitration

Tell me if you have heard this one before: ten companies are sued by a former employee as “joint employers”, even though the employee technically worked for, and signed a binding arbitration agreement with, only one of them....more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Upholds USPTO Authority to Estop Patentees from Obtaining Patent Claims 'Not Patentably Distinct' from Previously...

The Federal Circuit recently upheld the USPTO’s authority under the estoppel provision 37 C.F.R. § 42.73(d)(3)(i) to prohibit a patent owner from obtaining patent claims that are not patentably distinct from claims previously...more

White & Case LLP

Arbitration and Insolvency: A Comparative View from England & Wales, Singapore and Hong Kong

White & Case LLP on

If the agreement between a creditor and debtor refers disputes to arbitration, what limits should be placed on the creditor to pursue winding-up proceedings based on an unpaid debt under that agreement? Should a court simply...more

McDermott Will & Schulte

Same Product in Different Packaging May Constitute Separate Market for Antitrust Purposes

Addressing an issue of first impression, the US Court of Appeals for the Second Circuit concluded that two medications that contain the same ingredients but are packaged in different forms constitute separate markets for...more

Proskauer - Minding Your Business

Ninth Circuit Clears Airline’s Arbitration by Estoppel Argument for Takeoff

Earlier this month, in Herrera v. Cathay Pacific Airways Ltd., a divided Ninth Circuit panel reversed the district court’s order denying Cathay Pacific Airways Ltd.’s motion to compel arbitration of a putative class action...more

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