Understanding the Impact of IPR Estoppel and PTAB Discretionary Denials — Patents: Post-Grant Podcast
Estoppel Doctrine in China's Patent System
Recently, an ITC Administrative Law Judge applied IPR statutory estoppel under 35 U.S.C. § 315(e)(2) in denying a Respondent’s motion for summary determination of invalidity in Certain Audio Players and Components Thereof,...more
In IOENGINE, LLC v. Ingenico Inc. (Fed. Cir. 2025), the Federal Circuit narrowed the scope of IPR estoppel under 35 U.S.C. § 315(e)(2), which precludes an IPR petitioner from asserting in court that a patent claim “is invalid...more
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
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
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
On October 25, 2024, the United States District Court for the Eastern District of Pennsylvania ordered Comcast Corporation (“Comcast”) to identify the date on which it learned of each patent, patent application, and printed...more
In GeigTech East Bay v. Lutron Electronics, patent owner GeigTech argued that Lutron should be estopped under 35 U.S.C. § 325(e)(2) from asserting two prior art grounds that it said Lutron could have reasonably raised in its...more
The Patent Trial and Appeal Board held all challenged claims of IGT’s patent unpatentable as obvious over two prior art patents. Zynga Inc. v. IGT, IPR2022-00199-32. In doing so, the PTAB further held that, contrary to...more
The Federal Circuit recently held, for the first time, that patent owners bear the burden of proof for an Inter Partes Review (“IPR”) Estoppel affirmative defense that an alleged infringer failed to include prior art in a...more
Yesterday, in Ironburg Inventions Ltd. v. Valve Corp., Case No. 21-2296 (Fed. Cir. Apr. 3, 2023), the Federal Circuit held that for estoppel to apply under 35 U.S.C. § 315(e)(2), a patent holder must prove, by a preponderance...more
IRONBURG INVENTIONS LTD. v. VALVE CORP. Before Lourie, Clevenger, and Stark. Appeal from the United States District Court for the Western District of Washington. Summary: The patentee has the burden of proving that...more
Speakers will offer updates, case summaries, and analysis of the significant 2022 PTAB guidance, actions, and rulings. Topics include: the Director’s 2022 Fintiv guidance, PTAB discretionary denial, the use of applicant...more
Caltech sued Broadcom and Apple for infringement, asserting three of its data transmission patents against Broadcom’s WiFi chips and certain Apple products that incorporate those chips. Apple then filed IPR petitions...more
As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more
We are committed to providing insightful commentary on IP developments from around the world to our Japanese clients. In light of that effort, we are continuing our free monthly webinar series, McDermott IP Focus. During...more
In conjunction with the release of the firm's year-in-review report, speakers will offer case summaries and analysis of the significant 2022 appellate rulings discussed in the report. Topics of the featured intellectual...more
In a recent decision, 25 F.4th 1035 (Fed. Cir. 2022), the Federal Circuit dismissed for lack of jurisdiction an appeal of the PTAB’s decision that estopped a Petitioner from maintaining a third IPR that challenged the same...more
An ITC Administrative Law Judge (ALJ) recently issued an initial determination holding that PGR estoppel prevented GMG Products LLC (Respondent) from raising two prior-art products in the ITC....more
Ex parte reexaminations have re-emerged as an increasingly important component of patent litigation and licensing negotiations. With the passage of the America Invents Act (“AIA”) and the advent of inter partes reviews...more
Ordered To Agree: Binding Settlement Agreement Provision Found Despite Absence of Singular, Executed Agreement - In Plasmacam, Inc. v. Cncelectronics, LLC Appeal No. 21-1689, the Federal Circuit held that an agreement on...more
[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more
The patent fight between Caltech and Broadcom/Apple made waves this month when the Federal Circuit vacated the $1.1 billion infringement award that Caltech had won in district court....more
On February 4, 2022, the Federal Circuit clarified that IPR estoppel extends to all claims and invalidity grounds that the petitioner could have reasonably asserted in its IPR petition. ...more
[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more
The Federal Circuit issued numerous precedential opinions last week, two of which answered long simmering questions about inter partes reviews (IPRs). Below we discuss a case addressing whether admissions of prior art in the...more