News & Analysis as of

Prior Art Inter Partes Review (IPR) Proceeding Appeals

Venable LLP

Federal Circuit Affirms PTAB’s Unpatentability Findings in Gene Therapy Hemgenix® IPRs

Venable LLP on

On May 22, 2025, the CAFC affirmed the PTAB’s (Board) Final Written Decisions in Pfizer’s IPR2021-00925 and IPR2021-00926 finding all challenged claims of uniQure’s U.S. Patent No. 9,982,248 (“the ’248 patent”) unpatentable...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

Alston & Bird

Patent Case Summaries | Week Ending May 23, 2025

Alston & Bird on

EcoFactor, Inc. v. Google LLC, No. 2023-1101 (Fed. Cir. (W.D. Tex.) May 23, 2025). En banc opinion by Moore, joined by Lourie, Dyk, Prost, Taranto, Chen, Hughes, and Stoll. Opinion concurring in part and dissenting in part by...more

K&L Gates LLP

Estoppel Estopped?

K&L Gates LLP on

The Federal Circuit recently resolved a split among the district courts whether patent infringement defendants who bring inter partes review (IPR) challenges are estopped from raising new prior art challenges in a co-pending...more

Foley Hoag LLP

Reshaped IPR Landscape: Narrower Estoppel and Fewer New Cases

Foley Hoag LLP on

Key Takeaways - - A recent Federal Circuit decision in a case involving an inter partes review (IPR) significantly narrowed a patentee’s ability to rely on estoppel to block a defendant from raising invalidity grounds. -...more

Morrison & Foerster LLP

Discretionary Denials—Act II

On March 26, 2025, the Acting Director of the United States Patent and Trademark Office fundamentally changed how the Patent Trial and Appeal Board (“PTAB”) initially considers petitions in post grant proceedings under the...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

McDermott Will & Emery

Breaking New Grounds to Limits of IPR Estoppel

McDermott Will & Emery on

In a matter of first impression, the US Court of Appeals for the Federal Circuit found that inter partes review (IPR) estoppel does not preclude a petitioner from relying on the same patents and printed publications as...more

Morgan Lewis

Public Use and Estoppel Reexamined: Strategic Lessons from Ingenico

Morgan Lewis on

This LawFlash details strategic takeaways and practical lessons from the recent US Court of Appeals for the Federal Circuit case on IPR estoppel, evidence of public use, and jury instructions on specific issues....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

Sheppard Mullin Richter & Hampton LLP

A Line in the Sand: Federal Circuit Bounds IPR Estoppel in Ingenico v. IOENGINE

In a significant development for patent litigants, the Federal Circuit in Ingenico Inc. v. IOENGINE, LLC, affirmed an important limitation on the scope of IPR estoppel under 35 U.S.C. § 315(e)(2). Specifically, the court held...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

Vinson & Elkins LLP

Federal Circuit Defines Scope of IPR Estoppel

Vinson & Elkins LLP on

In Ingenico Inc. v. IOENGINE, LLC, the Federal Circuit defined for the first time the scope of inter partes review (“IPR”) estoppel in district court and International Trade Commission (ITC) proceedings: IPR estoppel applies...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

Paul Hastings LLP

Federal Circuit Clarifies the Scope of IPR Estoppel

Paul Hastings LLP on

The Federal Circuit recently clarified the scope of statutory estoppel that applies in District Court after the PTAB issues a final written decision in a related inter partes review (IPR). Ingenico Inc. v. IOENGINE, LLC, No....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

McDonnell Boehnen Hulbert & Berghoff LLP

Valve Corp. v. Ironburg Inventions Ltd. (Fed. Cir. 2025)

On April 23, 2025, the Federal Circuit rendered an opinion in Valve Corp. v. Ironburg Inventions Ltd. surrounding U.S. Patent No. 9,289,688 (the '688 patent").  This marks the second time that the Federal Circuit has weighed...more

Alston & Bird

Patent Case Summaries | Week Ending April 25, 2025

Alston & Bird on

Qualcomm Inc. v. Apple Inc., et al., Nos. 2023-1208, -1209 (Fed. Cir. (PTAB) Apr. 23, 2025). Opinion by Reyna, joined by Lourie and Prost. Qualcomm owns a patent related to integrated circuit devices using multiple power...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

Alston & Bird

Patent Case Summaries | Week Ending April 18, 2025

Alston & Bird on

Recentive Analytics, Inc. v. Fox Corp., et al., No. 2023-2437 (Fed. Cir. (D. Del.) Apr. 18, 2025). Opinion by Dyk, joined by Prost and Goldberg (sitting by designation). Recentive sued Fox for infringing four patents that...more

McDermott Will & Emery

Transatlantic Terminology: Skilled Artisan Could Equate UK, US Word Meanings

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board unpatentability determination, finding that a skilled artisan would have found the term “sterile” in a UK publication to mean the same as...more

Proskauer - The Patent Playbook

Federal Circuit Affirms Stem Cell Product-by-Process Claims: Lessons in Claim Construction and Inherency from Restem LLV v. Jadi...

The Federal Circuit issued a precedential opinion on March 4, 2025, that serves as valuable guidance for product-by-process claims, particularly in the context of inherency in claim construction. In Restem, LLC v. Jadi Cell,...more

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