News & Analysis as of

Patent Invalidity Appeals CAFC

Morgan Lewis

USPTO Tightens Limits on AAPA Use in IPRs Following Qualcomm Precedent

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A recent memo from the acting director of the US Patent and Trademark Office directs the Patent Trial and Appeal Board (PTAB) to reject inter partes review (IPR) petitions that use “applicant admitted prior art (AAPA), expert...more

Bradley Arant Boult Cummings LLP

The Federal Circuit Calls for a Replay Allowing Sonos Another Opportunity at Google

The Federal Circuit’s recent decision in Google LLC v. Sonos, Inc. (24-1097) offers a compelling look at the evolving doctrine of prosecution laches, the written description requirement, and the practical realities of patent...more

A&O Shearman

Federal Circuit Finds Claims of Selectorized Dumbbell Weight Patent Not Directed to an Abstract Idea

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On August 11, 2025, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion reversing the decision of the U.S. District Court for the District of Utah that found certain claims of a selectorized dumbbell...more

A&O Shearman

Federal Circuit Affirms Patent Invalidity, Emphasizes Need For Substantive Expert Testimony

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On August 19, 2025, the U.S. Court of Appeals for the Federal Circuit issued an opinion affirming the U.S. District Court for the Eastern District of Louisiana’s grant of summary judgment that claims of Wilco Marsh Buggies &...more

McDermott Will & Schulte

Specification controls: Written description must be clear

The US Court of Appeals for the Federal Circuit reversed a district court’s decision upholding patent validity, finding that the subject patent’s specification clearly established that the written description failed to...more

Knobbe Martens

Deleted Specification Portions Undermine Claim Construction

Knobbe Martens on

FMC Corp. v. Sharda USA, LLC - Before Moore, Chen, and Barnett. Appeal from the Eastern District of Pennsylvania. The district court erred by construing a claim term based on disclosures made in a provisional application and...more

Knobbe Martens

An Examiner’s Allowance Does Not Create an “Especially Weighty” Presumption of Written-Description Support

Knobbe Martens on

MONDIS TECHNOLOGY LTD., HITACHI MAXELL, LTD., NKA MAXELL HOLDINGS, LTD., MAXELL, LTD.  v.  LG ELECTRONICS INC., LG ELECTRONICS USA, INC. - Before Taranto, Clevenger, and Hughes.  Appeal from the United States District Court...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: Mondis Tech. Ltd. v. LG Electronics Inc.

Mondis Tech. Ltd. v. LG Electronics Inc., Appeal Nos. 2023-2117, -2116 (Fed. Cir. Aug. 8, 2025) Our Case of the Week focuses on the written description requirement, and, in particular, how that requirement is considered...more

Brownstein Hyatt Farber Schreck

Federal Circuit: Claim Construction Missteps Can Be Fatal for Preliminary Injunctions

In a decision that should make every patent litigator pause before filing for preliminary relief, the Federal Circuit has vacated a preliminary injunction in FMC Corp. v. Sharda USA, LLC, No. 2024-2335 after finding that the...more

McDermott Will & Schulte

Dim damages methods can doom bright ideas

In a mixed ruling on evidentiary exclusions and damages methodology, the US Court of Appeals for the Federal Circuit affirmed in part, reversed in part, vacated in part, and remanded a district court’s decision that excluded...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: Jiaxing Super Lighting Electric Appliance, Co. Ltd. v. CH Lighting Technology Co., Ltd.

Jiaxing Super Lighting Electric Appliance, Co. Ltd. v. CH Lighting Technology Co., Ltd., Appeal No. 2023-1715 (Fed. Cir. July 28, 2025) In our Case of the Week, the Federal Circuit addressed three issues arising from a...more

Knobbe Martens

Applicant Admitted Prior Art Can (Sometimes) Show Obviousness

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SHOCKWAVE MED., INC., V. CARDIOVASCULAR SYS., INC. - Before Lourie, Dyk, and Cunningham.  Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2019-00405. In inter partes review...more

McDermott Will & Schulte

Applicant-admitted prior art may inform but can’t be basis for IPR challenges

The US Court of Appeals for the Federal Circuit clarified that while applicant-admitted prior art (AAPA) may be cited as evidence of general background knowledge in inter partes review (IPR) proceedings, it cannot serve as...more

Haug Partners LLP

Federal Circuit Provides Further Guidance on Obvious Type Double Patenting For Patents Sharing Common Priority

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On June 9th, 2025, the Federal Circuit issued a decision in Acadia Pharms. Inc. v. Aurobindo Pharma Ltd., affirming the district court’s grant of summary judgment of no invalidity for obviousness-type double patenting (OTDP)...more

A&O Shearman

Federal Circuit Vacates $300 Million Damages Award Due To Flawed Verdict Form

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On June 16, 2025, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) vacated a $300 million damages award because the district court used a flawed verdict form, which included only a single, blanket question as to...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

A&O Shearman

Federal Circuit Affirms Patent Trial And Appeal Board Decision, Finding Claims Of Patents Covering CRISPR Guide RNA Technology As...

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On June 11, 2025, the United States Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board (PTAB) decision invalidating two patents owned by Agilent Technologies. The patents at issue, U.S. Patent...more

Irwin IP LLP

Seeing Double?  Similar Claim Terms Could Be Trouble  

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When prosecuting a patent with similar language across various claims make sure your claim terms have different meanings, otherwise, during litigation you may lose the strategic opportunity to keep some claims valid if others...more

Sheppard Mullin Richter & Hampton LLP

Undetectable Amount of Magnification IS Magnification

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

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

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

Venable LLP

Federal Circuit Interprets IPR Estoppel Under 35 U.S.C. § 315(e)(2) to Permit at Trial Invalidity Theories Based on Prior Use or...

Venable LLP on

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

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

BakerHostetler

[Podcast] A New Test: Landmark Decision Overrules Framework for Design Patent Obviousness

BakerHostetler on

The legal landscape quaked, and clients and counsel continue to navigate the tremors. More than 40 years of precedent was upended in May 2024 when a federal circuit court struck down the Rosen-Durling test for assessing...more

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