News & Analysis as of

Patents Claim Amendments Patent Infringement

Hudnell Law Group

Federal Circuit Rejects Formalistic Shield to Prosecution History Estoppel

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On July 18, 2025, the U.S. Court of Appeals for the Federal Circuit reversed a $106 million jury verdict in Colibri Heart Valve LLC v. Medtronic CoreValve, LLC, No. 2023-2153, finding that Colibri’s infringement claim under...more

International Lawyers Network

The Supreme Court’s Adjudication on Whether a Post-grant Amendment of a Granted Patent Constitutes an Amendment of the Litigation...

When granted with a patent right, the patentee may file a request for amending the description, claim(s) or drawing(s) of the granted patent.  Hence, once an alleged infringer has presented prior evidence sufficient to...more

McDonnell Boehnen Hulbert & Berghoff LLP

Baxalta Inc. v. Genentech, Inc. (Fed. Cir. 2020)

The Federal Circuit recently vacated a District Court decision by Federal Circuit Judge Dyk, sitting by designation, based on erroneous claim construction in Baxalta Inc. v. Genentech, Inc...more

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

PTAB Strategies and Insights - December 2019: Amending Claims in IPR: Objective Indicia May Be a Strategic Guide Post

As PTAB practitioners know, statistics on successful motions to amend are quite dismal. But in a recent case, the PTAB shed light on what may be a successful strategy for patent owners to amend their claims in an Inter Partes...more

Knobbe Martens

Prosecution History Estoppel Bars Infringement Claim Under Doctrine of Equivalents

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PHARMA TECH SOLUTIONS, INC. v. LIFESCAN, INC. Before Moore, Reyna, and Stoll. Appeal from the United States District Court for the District of Nevada. Summary: Claims for infringement under the doctrine of equivalents...more

Jones Day

Trial Court Denies Amendment of Contentions To Add Reexam Claims Following Successful IPR

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What happens when patent claims are found unpatentable in inter partes review (“IPR”) and new claims are subsequently added to that patent through ex parte reexamination? The District Court for the Northern District of...more

Foley & Lardner LLP

Doctrine Of Equivalents Not Barred By Claim Amendments

Foley & Lardner LLP on

Recent Federal Circuit decisions demonstrate that the doctrine of equivalents is alive and well, and not always barred by claim amendments. In both Ajinomoto Co. v. ITC and Eli Lilly and Co. v. Hospira, Inc., the Federal...more

Knobbe Martens

The Tangential Exception to Prosecution History Estoppel

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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

Federal Circuit Review - July 2018

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Determining Whether a Claim Element or Combination of Elements Would Have Been Well-Understood, Routine, and Conventional Is a Question of Fact - In Aatrix Software, Inc. v. Green Shades Software, Inc., Appeal No....more

Bradley Arant Boult Cummings LLP

Federal Circuit Finds General Allegations of Infringement Sufficient under Iqbal/Twombly

After having its complaint for patent infringement dismissed for failure to state a claim and being denied its request to file an amended complaint in the Middle District of Georgia, Disc Disease Solutions turned to the...more

Knobbe Martens

John Bean Technologies Corporation v. Morris & Associates, Inc

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Federal Circuit Summaries - Before Prost, Reyna, and Wallach. Appeal from the United States District Court for the Eastern District of Arkansas. Summary: Pre-reexamination conduct cannot be a basis for equitable...more

Knobbe Martens

Federal Circuit Review - January 2018

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Where Parties Raise an Actual Dispute Regarding Claim Scope, the Court Must Resolve It In Nobelbiz, Inc. v. Global Connect, L.L.C., Appeal Nos. 2016-1104, 2016-1105, the Federal Circuit held that where parties raise an actual...more

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

Federal Circuit Holds En Banc That The PTAB’s Determination on Whether The One Year Time-Bar is Triggered in Inter Partes Review...

On January 8, 2018, the Federal Circuit issued its long-awaited en banc decision in Wi-Fi One, LLC v. Broadcom Corporation, No. 2015-1944, 2018 WL 313065 (Fed. Cir. Jan. 8, 2018). The issue before the en banc Court was the...more

Knobbe Martens

Federal Circuit Review - November 2017

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Fractured Federal Circuit Holds Patent Owner Does Not Bear Burden of Persuasion in IPR Motions to Amend - In Aqua Products, Inc. v. Matal, Appeal No. 2015-1177, the Federal Circuit, sitting en banc, held that a patent...more

Proskauer - New England IP Blog

Amended Contentions Deemed Timely Served Due to Parties’ Misunderstanding

Under some circumstances, party error can excuse late-filed amendments to infringement and invalidity contentions, according to a recent decision by Judge F. Dennis Saylor IV. Approximately five years ago, plaintiff DataTern,...more

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