News & Analysis as of

Prior Art Estoppel Claim Construction

Sheppard Mullin Richter & Hampton LLP

Don’t Get Lazy, Timely Complete Your Arguments

This Federal Circuit Opinion analyzes statutory estoppel under 35 U.S.C. § 315(e)(1) and examines offensive and defensive arguments related to § 103 obviousness.  Gesture Technology Partners, LLC is the owner of U.S....more

Fish & Richardson

EPRx 201: The Risks and Rewards of Ex Parte Reexamination

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Ex parte reexamination (EPRx) comes with risks and rewards for both patent challengers and patent owners. Patent challengers enjoy a lower threshold for institution and avoid the estoppel risk of other post-grant proceedings...more

Knobbe Martens

Federal Circuit Review | July 2024

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In Natera, Inc v. Neogenomics Laboratories, Inc., Appeal No. 24-1324 the Federal Circuit held that  preliminary injunction may be valid if a substantial question of invalidity was not raised, even if the asserted patent is...more

Knobbe Martens

Federal Circuit Review - February 2022

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Ordered To Agree: Binding Settlement Agreement Provision Found Despite Absence of Singular, Executed Agreement - In Plasmacam, Inc. v. Cncelectronics, LLC Appeal No. 21-1689, the Federal Circuit held that an agreement on...more

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

2021 PTAB Year in Review: Analysis & Trends: Editors' Introduction

Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed patent litigation. In its first...more

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

2021 PTAB Year in Review: Analysis & Trends

[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - February 2022

The Federal Circuit issued numerous precedential opinions last week, two of which answered long simmering questions about inter partes reviews (IPRs). Below we discuss a case addressing whether admissions of prior art in the...more

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

PTAB Strategies and Insights - May 2021: Federal Circuit Starts to Clarify Section 325(e)(2) Estoppel

In Olaplex, Inc. v L’Oréal USA, Inc. the Federal Circuit addressed, among other issues, PGR estoppel in subsequent district court litigation. Here, the Court addressed the timing to raise estoppel regarding written...more

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

PTAB Strategies and Insights - May 2021

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

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

PTAB Strategies and Insights - August 2019: PTAB Extends Discretionary Denial Factors to Parallel ITC Proceedings

In IPR2019-00567 (Paper 23 at 29-30) and IPR2019-00568 (Paper 22 at 23-24), the PTAB, for potentially the first time, denied institution partially based on the Petitioner raising the same issues in its Petition that had been...more

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

2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions

In 2018, the U.S. Court of Appeals for the Federal Circuit docketed close to 600 appeals from the U.S. Patent and Trademark Office (USPTO). That is the second highest number since starting to hear post-American Invents Act...more

Jones Day

After SAS, Indefinite Claims Can Be A Definite Problem For IPR Petitioners

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The definiteness requirement for patent claims is set forth in Section 112(b), mandating that a patent specification conclude with one or more claims “particularly pointing out and distinctly claiming subject matter which the...more

Jones Day

The Scope Of IPR Petitioner Estoppel For Non-Petitioned Grounds Remains Uncertain

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There is no doubt that “the potential for estoppel is one of the important considerations for defendants in deciding whether or not to file an [inter partes review (“IPR”)] petition.” Shaw Indus. Grp., Inc. v. Automated Creel...more

Morgan Lewis

2017 PTAB Digest: The Latest Trends and Developments in Post-Grant Proceedings

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Recent patent reform legislation, rule changes, and court rulings are expected to have a significant impact on the strategies of both patent owners and petitioners....more

Knobbe Martens

Federal Circuit Review | October 2016

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Withdrawal of Claims During Prosecution Can Trigger Prosecution History Estoppel In UCB, Inc. v. Yeda Research and Development Co., Ltd., Appeal No. 2015-1957, the Federal Circuit held that prosecution estoppel can apply even...more

Knobbe Martens

Federal Circuit Review | April 2016

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Federal Circuit Upholds Broad Scope of CBM Review and Explains that an Internet Reference Must be Indexed by a Search Engine to Qualify as a Prior Art Publication - In Blue Calypso, LLC v. Groupon, Inc., Appeal Nos....more

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