Understanding the Impact of IPR Estoppel and PTAB Discretionary Denials — Patents: Post-Grant Podcast
New Developments in Obviousness-Type Double Patenting and Original Patent Requirements — Patents: Post-Grant Podcast
Inter Partes Review: Validity Before the PTAB
On July 31, 2025, Acting USPTO Director Coke Morgan Stewart released a memo instructing the agency “that applicant admitted prior art (AAPA), expert testimony, common sense, and other evidence that is not ‘prior art...more
On July 31, the US Patent and Trademark Office (USPTO) issued a new memorandum announcing that it will begin enforcing 37 C.F.R. § 42.104(b)(4) that requires petitioners in inter partes review (IPR) proceeding to “specify...more
iRhythm Technologies, Inc., v. Welch Allyn, Inc., IPR2025-00363, IPR2025-00374, IPR2025-00376, IPR2025-00377, IPR2025-00378 (P.T.A.B. June 6, 2025) - On June 6, 2025, United States Patent and Trademark Office (“USPTO”)...more
This Federal Circuit Opinion analyzes invalidity based on anticipation and obviousness, more specifically based on implicit claim construction of the claim limitation and inherent disclosures....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
The Federal Circuit recently clarified the scope of statutory estoppel that applies in District Court after the PTAB issues a final written decision in a related inter partes review (IPR). Ingenico Inc. v. IOENGINE, LLC, No....more
On May 7, 2025, the Federal Circuit issued a decision in Ingenico, Inc. v. IOENGINE, LLC, effectively holding that 35 U.S.C. § 315(e)(2) estoppel cannot preclude an IPR petitioner from advancing in a district court trial an...more
On August 22, 2024, Hulu, LLC (“Hulu”) filed two separate petitions for inter partes review (“IPR”) of U.S. Patent No. 11,463,768 (“the ’768 Patent”), assigned to Piranha Media Distribution, LLC (“Piranha”). The ’768 Patent...more
Qualcomm Inc. v. Apple Inc., et al., Nos. 2023-1208, -1209 (Fed. Cir. (PTAB) Apr. 23, 2025). Opinion by Reyna, joined by Lourie and Prost. Qualcomm owns a patent related to integrated circuit devices using multiple power...more
Contour IP Holdings, LLC, v. GoPro, Inc., Case No. 17-cv-04738-WHO (N.D. Cal. March 24, 2025) - The estoppel provision of the American Invents Act (AIA) (35 U.S.C. § 315(e)(2)) prevents a petitioner in an inter parties...more