Understanding the Impact of IPR Estoppel and PTAB Discretionary Denials — Patents: Post-Grant Podcast
Estoppel Doctrine in China's Patent System
The US Court of Appeals for the Federal Circuit affirmed a decision by the Patent Trial & Appeal Board, concluding that inter partes review (IPR) estoppel under 35 U.S.C. § 315(e)(1) does not apply to ongoing ex parte...more
The U.S. Patent and Trademark Office (“USPTO”) recently proposed rules governing inter partes review (“IPR”). If adopted, these requirements would...more
In Re: Gesture Technology Partners, LLC, Appeal No. 2025-1075 (Fed. Cir. Dec. 1, 2025) - In our Case of the Week, the Federal Circuit affirmed the denial of a motion to terminate ex parte reexamination proceedings on a...more
Last Week in our BLOG article: “It’s Unanimous – The Fourth Department Joins the Other Departments and Confirms the Retroactive Application of FAPA,” we again discussed FAPA and noted that on November 25, 2025, the New York...more
DUKE UNIVERSITY, ALLERGAN SALES, LLC v. SANDOZ INC. [OPINION] (2024-2078, 11/18/2025) (Dyk, Stoll, Stark) - Stark, J. The Federal Circuit found a patent claim invalid because the patent lacked written description support...more
On November 25, the New York Court of Appeals issued a pair of decisions — Art. 13 LLC and Van Dyke — that provide definitive guidance on the hotly contested and heavily litigated issue of the Foreclosure Abuse Prevention...more
The terrain of inter partes review (IPR) strategy shifted meaningfully on November 17, 2025. On that date, the USPTO issued a memorandum authorizing voluntary Search Disclosure Declarations (SDDs), positioning them as a...more
Our Real Property, Title Insurance, & Financial Services Update offers a weekly overview of notable court decisions impacting property rights, title issues, the banking industry, and related litigation. Each edition...more
Are you planning on challenging a competitor’s patent at the US Patent and Trademark Office (USPTO)? The policies of the new director of the USPTO may cause you to rethink your strategy. The USPTO has recently proposed a new...more
In this edition of The Precedent, we outline the decision in IGT v. Zygna Inc. This case affirms an obviousness finding by the Patent Trial and Appeal Board (“the Board”) in an inter partes review (IPR) proceeding filed after...more
Recently, the New York Court of Appeals heard arguments on the consolidated appeal of two cases that are expected to significantly impact the landscape for mortgage foreclosures in New York. It was certainly a “hot bench” of...more
As of October 2025, United States Patent and Trademark Office (USPTO) Director John A. Squires has reclaimed authority to decide all patent review institution proceedings. This responsibility was previously delegated to...more
Under President Trump, the U.S. Patent and Trademark Office has sought to encourage the issuance of more patents and limit the ability to challenge them in post-grant proceedings; since John Squires was sworn in as Director,...more
The US District Court for the Northern District of Iowa issued an instructive decision clarifying the scope of statutory estoppel under the Leahy-Smith America Invents Act (AIA) following post-grant review (PGR) proceedings...more
On May 7, the U.S. Court of Appeals for the Federal Circuit held in Ingenico Inc. v. Ioengine LLC that inter partes review estoppel does not extend to arguments that the claimed invention is invalid because it was known or...more
In this edition of The Precedent, we outline the Federal Circuit's decision in Colibri Heart Valve LLC v. Medtronic CoreValve, LLC. Overview - This case addresses prosecution history estoppel and the doctrine of equivalence....more
In a setback for automakers, the Patent Trial and Appeal Board (PTAB) has once again upheld the validity of Neo Wireless’s U.S. Patent No. 10,447,450, rejecting challenges brought by several major automakers. The most recent...more
The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board unpatentability determination during an inter partes review (IPR) proceeding, concluding that the Board’s decision to not apply...more
The estoppel provision of 35 U.S.C. § 315(e)(1) had largely prevented requesters from challenging claims of a patent via ex parte reexamination after an inter partes review (IPR) that resulted in a final written decision...more
In the mid-2000s, the U.S. Patent Office (USPTO) determined that reexaminations would be more consistent and legally correct if performed by a centralized set of experienced and specially trained Examiners. As a result, the...more
Prosecution history estoppel typically arises when a claim is rejected during prosecution and is then amended (narrowed) to overcome the rejection. However, in Colibri Heart Valve LLC v. Medtronic CoreValve, LLC, No....more
In a July 18 precedential decision in Colibri Heart Valve LLC v. Medtronic CoreValve LLC, the U.S. Court of Appeals for the Federal Circuit overturned a $106 million jury verdict against Medtronic for infringement of a patent...more
The US Court of Appeals for the Federal Circuit reversed a jury’s infringement finding, concluding it was precluded by prosecution history estoppel. Colibri Heart Valve LLC v. Medtronic CoreValve LLC, Case No. 23-2153 (Fed....more
The Appellate Court of Illinois recently reminded insurers that they may be estopped from raising coverage defenses through their misleading acts or statements, including silence. In Monroy-Perez v. Sentry Select Ins. Co.,...more
Under the Foreclosure Abuse Prevention Act (“FAPA”), effective as of December 30, 2022, a lender in a New York foreclosure or quiet title action can be estopped from asserting that the subject mortgage loan was not validly...more