News & Analysis as of

Inter Partes Review (IPR) Proceeding Obviousness

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

Venable LLP

Spotlight On: Actemra® (tocilizumab) / Tofidence™ (tocilizumab-bavi) / Tyenne® (tocilizumab-aazg) / Avtozma® (tocilizumab-anoh) -...

Venable LLP on

Tocilizumab Challenged Claim Types in IPRs: Claims are counted in each IPR, so claims from the same patent challenged in multiple IPRs are counted more than once. Within each IPR, claims are counted only once, whether they...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

Akin Gump Strauss Hauer & Feld LLP

Claim Construction Issues and Large Number of Claims Not Enough to Institute a Second Petition for Inter Partes Review

The Patent Trial and Appeal Board recently declined to institute a petition for IPR that was filed on the same day that the petitioner filed another petition challenging the same claims of the same patent. The board was not...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

Morrison & Foerster LLP

The Rise of System Art: The Federal Circuit Shelters System Art From IPR Estoppel

Prior art patents and publications have long been the primary source for anticipation and obviousness assertions by defendants in IP litigation. System art—an actual system or device—is a less common source of prior art due...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

Jones Day

PTAB Denies Institution of IPRs in Apple v. Haptic

Jones Day on

In two recent decisions, the Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR) proceedings sought by Apple Inc. against Haptic, Inc. regarding U.S. Patent No. 9,996,738 B2. These...more

Jones Day

INFORMATIVE: Acting Director Rescinds Institution Where Claims Held Invalid in District Court Case

Jones Day on

On August 22, 2024, Hulu, LLC (“Hulu”) filed two separate petitions for inter partes review (“IPR”) of U.S. Patent No. 11,463,768 (“the ’768 Patent”), assigned to Piranha Media Distribution, LLC (“Piranha”). The ’768 Patent...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

Jones Day

PTAB Institutes IPR Despite Concurrent Ex Parte Reexamination

Jones Day on

In Thermaltake Technology Co., Ltd. et al v. Chien-Hao Chen et al, IPR2024-01230, Paper 12 (PTAB Feb. 19, 2025), the PTAB granted the institution of inter partes review (“IPR”) while an ex parte reexamination (“EPR”) on the...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

Irwin IP LLP

Cut! GoPro Can’t Keep Cameras Rolling After IPR Estoppel.

Irwin IP LLP on

Contour IP Holdings, LLC, v. GoPro, Inc., Case No. 17-cv-04738-WHO (N.D. Cal. March 24, 2025) - The estoppel provision of the American Invents Act (AIA) (35 U.S.C. § 315(e)(2)) prevents a petitioner in an inter parties...more

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

PTAB Issues Additional Information on New Pre-Institution Discretionary Briefing

On April 25, 2025, the USPTO issued additional information in response to frequently asked questions (FAQs) about the “Interim Processes for PTAB Workload Management” memorandum issued on March 26, 2025. As discussed in our...more

Jones Day

PTAB Allows Three Concurrent IPR Petitions for Unusual Patent Claims

Jones Day on

Recently, the Patent Trial and Appeal Board (“the Board”) was persuaded to consider the merits of three out of seven concurrent petitions for an inter partes review of a single patent due to the patent’s complicated claiming...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

Knobbe Martens

No Error: The Board Committed No Procedural Error by Relying on Evidence Outside of the Prior Art Reference

Knobbe Martens on

SAGE PRODUCTS, LLC v. STEWART [OPINION] - Before Reyna, Cunningham, and Stark. Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board. The Board did not abuse its discretion by relying on...more

Proskauer - The Patent Playbook

Navigating Parallel Proceedings: Lessons Learned As Time Runs Out for AliveCor in its Apple Smartwatch Patent Dispute

On March 7, 2025, the Federal Circuit issued a decision resolving the ongoing patent litigation between AliveCor and Apple concerning methods of cardiac monitoring purportedly employed in certain of Apple’s Watches. The...more

McDonnell Boehnen Hulbert & Berghoff LLP

Sage Products, LLC v. Stewart (Fed. Cir. 2025)

When a prevailing challenger withdraws from an appeal in post-grant proceedings, the Director can intervene under 35 U.S.C. § 143, which is what happened in an appeal in Sage Products, LLC v. Stewart after Challenger Becton...more

Venable LLP

Spotlight On: Actemra® (tocilizumab) / Tofidence™ (tocilizumab-bavi) / Tyenne® (tocilizumab-aazg) / Avtozma® (tocilizumab-anoh) -...

Venable LLP on

Tocilizumab Challenged Claim Types in IPRs: Claims are counted in each IPR, so claims from the same patent challenged in multiple IPRs are counted more than once. Within each IPR, claims are counted only once, whether they...more

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

Recent Updates at the U.S. Patent Trial and Appeal Board

Recent changes at the U.S. Patent Trial and Appeal Board (PTAB) have brought uncertainty to inter partes review and post-grant review practitioners before the U.S. Patent and Trademark Office (PTO). These procedural and...more

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