News & Analysis as of

Patent Applications Prosecution History Estoppel

McDermott Will & Emery

Don’t get too comfy: Prosecution disclaimer also applies to design patents

McDermott Will & Emery on

Concluding that the principles of prosecution history disclaimer apply to design patents, the US Court of Appeals for the Federal Circuit reversed a district court’s denial of judgment as a matter of law and entry of a jury...more

McDonnell Boehnen Hulbert & Berghoff LLP

Colibri Heart Valve LLC v. Medtronic Corevalve, LLC (Fed. Cir. 2025)

The doctrine of equivalents (DOE), a creation of the Supreme Court in Graver Tank & Mfg. v. Linde Air Products (1950), is balanced by the concept of prosecution history estoppel (PHE), the contours of which were delineated...more

McDonnell Boehnen Hulbert & Berghoff LLP

ToolGen Files Reply to CVC Opposition to ToolGen Substantive Motion No. 1

On July 15th, Junior Party the University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier (collectively, "CVC") filed its opposition to Senior Party ToolGen's Substantive Motion No. 1 for benefit...more

McDonnell Boehnen Hulbert & Berghoff LLP

Sherwin-Williams Co. v. PPG Industries, Inc. (W.D. Pa. 2020)

Earlier this month, in Sherwin-Williams Co. v. PPG Industries, Inc., Special Master Henry M. Sneath issued a Report and Recommendation in the U.S. District Court for the Western District of Pennsylvania that a motion by...more

Cozen O'Connor

The Tangential Exception to the Presumption of Prosecution History Estoppel

Cozen O'Connor on

The Federal Circuit has consistently described the “tangential” exception to the presumption of prosecution history estoppel as “very narrow.” Only a few Federal Circuit decisions have found proof of the tangential exception...more

Knobbe Martens

The Tangential Exception to Prosecution History Estoppel

Knobbe Martens on

ELI LILLY AND COMPANY v. HOSPIRA, INC. Before Lourie, Moore, and Taranto. Appeal from the District Court for the Southern District of Indiana. Summary: A narrowing claim amendment does not necessarily surrender all...more

Mintz - Intellectual Property Viewpoints

Effect of A Restriction Requirement on Prosecution History Estoppel

The decision whether to issue a Restriction Requirement during patent prosecution lies with the patent examiner, not the patent applicant. A Restriction Requirement can nevertheless trigger prosecution history estoppel that...more

Knobbe Martens

Advantek Marketing, Inc., v. Shanghai Walk-Long Tools Co.

Knobbe Martens on

Federal Circuit Summary - Before Newman, Clevenger and Chen. Appeal from the United States District Court for the Central District of California. Summary: Prosecution history estoppel does not bar enforcement of a...more

Morgan Lewis

Federal Circuit Weighs in on Prosecution History Estoppel Applied to Design Patents

Morgan Lewis on

Applicants should consider how including multiple embodiments in a design patent application may later impact the scope of protection....more

Mintz - Intellectual Property Viewpoints

Lessons about Prosecution History Estoppel and Design Patents from Advantek Marketing, Inc. v. Shanghai Walk-Long Tools Co.

Patent practitioners are probably well familiar with circumstances in which prosecution history estoppel can limit the scope of a U.S. utility patent’s claims. Examples include claim amendments and statements made by the...more

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