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Prosecution History Estoppel United States Patent and Trademark Office

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: Top Brand LLC v. Cozy Comfort Company LLC

Top Brand LLC v. Cozy Comfort Company LLC, Appeal No. 2024-2191 (Fed. Cir. July 17, 2025) In this week’s Case of the Week, the Court of Appeals for the Federal Circuit held that prosecution history disclaimer applies to...more

McDonnell Boehnen Hulbert & Berghoff LLP

Sherwin-Williams Co. v. PPG Industries, Inc. (W.D. Pa. 2020)

Earlier this month, in Sherwin-Williams Co. v. PPG Industries, Inc., Special Master Henry M. Sneath issued a Report and Recommendation in the U.S. District Court for the Western District of Pennsylvania that a motion by...more

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

MarkIt to Market® - January 2020: That's Not My [Sur]name

In a non-precedential opinion issued this month, the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board affirmed the refusal to register Jos. A. Magnus & Co., LLC’s mark MAGNUS for “whiskey, gin, and...more

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

The Goods on IP - October 2019: Curver Luxembourg v. Home Expressions: Words Can Matter in a Design Patent

Claim construction for a design patent is mainly focused on the drawings, which show the ornamental design that is protected by the patent. But the Federal Circuit recently identified one situation where the drawings weren’t...more

Jones Day

Verbal Aspect of Claim Limits Design Patent Scope in Curver Luxembourg v. Home Expressions

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The Federal Circuit affirmed dismissal of design patent infringement claims under an estoppel theory triggered by amendments made to meet patentability requirements in Curver Luxembourg, SARL v. Home Expressions Inc., No....more

Jones Day

ITC Rejects Sofa Design Patent Infringement On Prosecution History Estoppel Grounds

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While design patents follow many of the same rules as utility patents, the application of those rules in determining design patent infringement can be less than straightforward. But a recent Initial Determination by ALJ...more

Knobbe Martens

Federal Circuit Review - June 2019

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One-year Clock for Filing IPR Petition Applies to Litigants and Parties that Become Privies of the Litigant Prior to Institution. In Power Integrations, Inc v. Semiconductor Components, Appeal No. 2018-1607, the Federal...more

McDermott Will & Emery

In the Doghouse: Prosecution History Estoppel, Design Claim Scope Are Different Inquiries

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Addressing the intersection of claim scope and prosecution history estoppel for design patents, the US Court of Appeals for the Federal Circuit found that prosecution history estoppel does not preclude enforcing a broader...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench - August 2018

PATENT CASE OF THE WEEK - JTEKT Corporation v. GKN Automotive Ltd., Appeal No. 2017-1828 (Fed. Cir. Aug. 3, 2018) The Federal Circuit dismissed an appeal from an inter partes review, holding that, although JTEKT...more

Mintz - Intellectual Property Viewpoints

Lessons about Prosecution History Estoppel and Design Patents from Advantek Marketing, Inc. v. Shanghai Walk-Long Tools Co.

Patent practitioners are probably well familiar with circumstances in which prosecution history estoppel can limit the scope of a U.S. utility patent’s claims. Examples include claim amendments and statements made by the...more

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