News & Analysis as of

Prior Art CAFC Inter Partes Review (IPR) Proceeding

McDermott Will & Emery

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

McDermott Will & Emery on

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

MoFo Life Sciences

Is Your Claim Open or Closed? Claim Construction Takes on a New Meaning in Eye Therapies, LLC v. Slayback Pharma, LLC

MoFo Life Sciences on

On June 30, 2025, the Federal Circuit issued a precedential decision in Eye Therapies, LLC v. Slayback Pharma, LLC, reversing the Patent Trial and Appeal Board’s (PTAB’s) claim construction of the phrase “consisting...more

McDonnell Boehnen Hulbert & Berghoff LLP

Eye Therapies LLC v. Slayback Pharma, LLC (Fed. Cir. 2025)

Patent law in many respects has its own language and idiosyncratic expressions, and one such respect involves so-called "transitional" words or phrases (discussed in greater depth in the Manual of Patent Examination Procedure...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

Knobbe Martens

Keeping PACE With CRISPR

Knobbe Martens on

AGILENT TECHNOLOGIES, INC. v. SYNTHEGO CORP. - Before Prost, Linn, and Reyna. Appeal from the Patent Trial and Appeal Board. Obviousness does not require all claimed limitations to be expressly disclosed in a primary prior...more

McDermott Will & Emery

CRISPR Clarity: Enablement Is Analyzed Differently Under §§ 102 and 112

McDermott Will & Emery on

In a decision underscoring the distinct standards governing enablement under §§ 102 and 112, the US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s finding that a prior art reference was...more

A&O Shearman

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

A&O Shearman on

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

WilmerHale

Federal Circuit Patent Watch: An Enabling Anticipatory Prior Art Reference Need Only Enable a Single Embodiment of the Claim

WilmerHale on

Precedential and Key Federal Circuit Opinions - ALNYLAM PHARMACEUTICALS, INC. v. MODERNA, INC. [OPINION] (2023-2357, 06/04/2025) (Taranto, Chen, Hughes) - Taranto, J. The Court affirmed the district court’s claim...more

McDonnell Boehnen Hulbert & Berghoff LLP

Agilent Technologies, Inc. v. Synthego Corp. (Fed. Cir. 2025)

An argument could be made that one of the most significant Supreme Court decisions in U.S. patent law in the last thirty years was Dickinson v. Zurko.  In that case the Court held that the Federal Circuit was bound by the...more

Irwin IP LLP

Seeing Double?  Similar Claim Terms Could Be Trouble  

Irwin IP LLP on

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

Jones Day

Federal Circuit: Plans for Future Activity Created a Substantial Risk of Future Infringement

Jones Day on

Restem filed a petition for inter partes review of U.S. Patent No. 9,803,176, directed to stem cells obtained from umbilical cord tissue and isolated through a two-step process to create a specific cell marker expression...more

DLA Piper

What is a “Clear and Unmistakable” Prosecution History Disclaimer?

DLA Piper on

The Federal Circuit’s March 21, 2025 decision in Maquet Cardiovascular LLC v. Abiomed Inc. et al. (No. 2023-2045) and the recent Patent Trial and Appeal Board (PTAB) Delegated Rehearing Panel decision in SynAffix B.V. v....more

McDermott Will & Emery

X-Ray Vision: Court Sees Through Implicit Claim Construction

The US Court of Appeals for the Federal Circuit reversed the Patent Trial & Appeal Board’s final determination that challenged patent claims were not unpatentable, finding that the Board’s decision relied on an erroneous...more

A&O Shearman

Federal Circuit Rejects PTAB’s Implicit And Incorrect Claim Construction Of “Between 1 And 10”

A&O Shearman on

On May 23, 2025, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued a precedential opinion reversing a final written decision from the U.S. Patent Trial and Appeal Board (“PTAB”) finding the challenged...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

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Provides Clarity on Use of Applicant Admitted Prior Art (“AAPA”) in IPRs

Qualcomm Incorporated v. Apple Inc., No. 23-1208 (Fed. Cir. 2025)—On April 23, 2025, the Federal Circuit reversed the Patent Trial and Appeal Board’s finding that claims of Qualcomm’s U.S. Patent No. 8,063,674 (“the ’674...more

Jones Day

Federal Circuit: Petitioner Estoppel Does Not Apply to Product Prior At Grounds

Jones Day on

In IOENGINE, LLC v. Ingenico Inc. (Fed. Cir. 2025), the Federal Circuit narrowed the scope of IPR estoppel under 35 U.S.C. § 315(e)(2), which precludes an IPR petitioner from asserting in court that a patent claim “is invalid...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

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: Qualcomm Inc. v. Apple Inc.

Qualcomm Inc. v. Apple Inc., Appeal Nos. 2023-1208, -1209 (Fed. Cir. Apr. 23, 2025) - For a second time in this case, the Federal Circuit considered the proper role of “Applicant Admitted Prior Art” in an inter partes...more

A&O Shearman

Federal Circuit Affirms PTAB Decision On Unpatentability, With The PTO Stepping In After Appellee Withdrew

A&O Shearman on

On April 15, 2025, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) affirmed the Patent Trial and Appeal Board’s (“Board”) decision finding all challenged claims of Sage Products, LLC’s patents anticipated based on...more

Jones Day

Another Bite? CAFC Allows Expansion of Arguments in Reply

Jones Day on

In a recent decision, the Federal Circuit found no abuse of discretion by the Board when it allowed Apple to expand its analogous art contention in its IPR reply, finding that the Board’s decision did not run afoul of the...more

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