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Patent Litigation Patent Applications Appeals

McDermott Will & Schulte

Claims barred by laches: Prosecution delay doesn’t pay, nor does skipping evidence of concrete injury

The US Court of Appeals for the Federal Circuit affirmed a district court’s judgment for the US Patent & Trademark Office (PTO) on application of prosecution laches in an action under 35 USC § 145. The Federal Circuit also...more

McDermott Will & Schulte

Derivation proceedings highlight race to file under AIA

In one of the first decisions regarding derivation proceedings under the America Invents Act (AIA), the US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s finding that an application...more

BakerHostetler

Federal Circuit Decides Its First-Ever Derivation Proceeding

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In Glob. Health Sols. LLC v. Selner, the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) addressed its first-ever derivation proceeding under the Leahy-Smith America Invents Act of 2011 (AIA). Prior to passage...more

Knobbe Martens

Derivation ≠ Interference: First to File Keeps Rights if Conception Was Independent

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GLOBAL HEALTH SOLUTIONS LLC v. SELNER - Before Stoll, Stark, and Goldberg (sitting by designation). Appeal from the Patent Trial and Appeal Board. The Federal Circuit affirmed the Board’s rejection of a derivation challenge,...more

Morrison & Foerster LLP

Federal Circuit Pushes Back on Prosecution Laches

In October 2023, we reported on the district court decision in Sonos, Inc. v. Google LLC. The decision was notable for reviving the prosecution laches doctrine to render unenforceable a continuation patent filed 13 years...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

White & Case LLP

The Federal Circuit clarifies AIA derivation standards: Independent conception is key

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In its first precedential review of an AIA derivation proceeding, the Federal Circuit held that to prove derivation, a petitioner has the burden of showing that the petitioner conceived the claimed subject matter and...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: Global Health Solutions LLC v. Selner

Global Health Solutions LLC v. Selner, Appeal No. 2023-2009 (Fed. Cir. Aug. 26, 2025) - In our Case of the Week, the Federal Circuit conducted its first review of a derivation proceeding under the America Invents Act that...more

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

Federal Circuit Issues First Decision on Litigated AIA Derivation Proceeding

In Global Health Solutions LLC v. Selner, the Federal Circuit addressed for the first time an appeal from a derivation proceeding litigated before the Patent Trial and Appeal Board (PTAB) under the America Invents Act (AIA)....more

Haug Partners LLP

Swiss Court Signals More Lenient Approach to AI Inventions

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On June 26, 2025, the Swiss Federal Administrative Court (“Court”) issued its decision in case B-2532/2024, resolving a high-profile dispute over whether an artificial intelligence (“AI”) system can be named as an inventor...more

Knobbe Martens

Cancellation of a Closely Related Claim During Prosecution Can Trigger Prosecution History Estoppel

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COLIBRI HEART VALVE LLC v. MEDTRONIC COREVALVE, LLC - Before Taranto, Hughes, and Stoll. Appeal from the United States District Court for the Central District of California. The Federal Circuit reversed a $106 million...more

Knobbe Martens

Not So Cozy: Prosecution History Disclaimer for Design Patents

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TOP BRAND LLC v. COZY COMFORT CO. LLC - Before Dyk, Reyna, and Stark. Appeal from the United States District Court for the District of Arizona. Summary: Arguments presented during prosecution of a design-patent application...more

Cooley LLP

Federal Circuit Strengthens Prosecution History Estoppel Principles in Colibri Heart Valve LLC v. Medtronic CoreValve, LLC

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On July 18, 2025, the US Court of Appeals for the Federal Circuit reversed a lower court ruling in Colibri Heart Valve LLC v. Medtronic CoreValve, LLC, holding that prosecution history estoppel barred the patentees’ doctrine...more

McDermott Will & Schulte

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

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

DLA Piper

Purdue Appeals Federal Circuit Obviousness Decision to the Supreme Court

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Purdue Pharma (Purdue) has filed a petition for a writ of certiorari challenging a recent Federal Circuit decision upholding the invalidation of several Purdue patents on grounds of obviousness....more

MoFo Life Sciences

A Tip for Improving Your “Improved” Jepson Claim: Include Written Description Support

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The Federal Circuit issued a precedential opinion in In re: Xencor, Inc.concerning written support for Jepson claims. The decision affirms the decision of the Appeals Review Panel (ARP) of the USPTO, which held that the...more

Lathrop GPM

Claim Construction Matters: Federal Circuit Decision Highlights the Significance of Lexicography in Patent Drafting

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A precedential ruling by the U.S. Court of Appeals for the Federal Circuit on June 4 affirmed that Moderna’s mRNA-based COVID-19 vaccine SPIKEVAX® does not infringe two patents owned by Alnylam Pharmaceuticals, upholding a...more

ArentFox Schiff

Designers Beware: Prior Utility Patent Lacking Written Support Can Anticipate Later-Filed Design Patents

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In its recent In re Floyd opinion, the US Court of Appeals for the Federal Circuit upheld a decision by Patent Trial and Appeal Board (PTAB) to reject a design applicant’s priority claim to an earlier utility filing for...more

Fish & Richardson

Navigating Change at the USPTO

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While it may seem like the only constant at the United States Patent and Trademark Office (USPTO) is change, that sentiment rings especially true in 2025. With a new presidential administration in the White House and numerous...more

A&O Shearman

Court Of Appeals For The Federal Circuit Holds That Conception Does Not Require Certainty of Success

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On May 12, 2025, the Court of Appeals for the Federal Circuit vacated-in-part and remanded a Patent Trial and Appeal Board (“PTAB”) decision in an interference proceeding concluding that the Broad Institute, Inc. (“Broad...more

Parker Poe Adams & Bernstein LLP

Life Sciences Companies Have New Avenue to Challenge Patent Applications After Federal Court Ruling

Drugmakers and other companies in the life sciences industry seeking to invalidate patents have another arrow in their quiver thanks to a recent federal court decision....more

Wilson Sonsini Goodrich & Rosati

Federal Circuit Revives CRISPR-Cas9 Patent Priority Dispute

The CRISPR-Cas9 patent landscape remains complex and unsettled. The Federal Circuit’s latest decision in University of California v. Broad Institute1 revived the high-stakes dispute between UC2 and Broad3 over foundational...more

Bracewell LLP

Recentive v. Fox: Machine-Learning Claims Fail to Make the Grade

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The patent eligibility of claims involving the use of machine learning (ML) was recently considered by the US Court of Appeals for the Federal Circuit (CAFC) in Recentive Analytics, Inc. v. Fox Corp., Case No. 2023-2437 (Fed....more

Fish & Richardson

Federal Circuit Clarifies Limits of Patent Eligibility for Machine Learning Claims

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In a decision with implications for machine learning-related patent filings, the Federal Circuit in Recentive Analytics, Inc. v. Fox Corp., No. 2023-2437 (Fed. Cir. Apr. 18, 2025), affirmed the District of Delaware’s...more

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