News & Analysis as of

Inter Partes Review (IPR) Proceeding Patent Infringement Appeals

Jenner & Block

Inter Partes Review Invalidity Finding Does Not Collaterally Estopell Assertion of Unchallenged Claims in Same Patent

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In a February 10, 2025 order, the Federal Circuit Court of Appeals rejected the application of the collateral estoppel doctrine to patent claims asserted in a district court infringement action where other claims in the same...more

Venable LLP

Regeneron and Biocon Settle Litigation over EYLEA® Biosimilar Yesafili™

Venable LLP on

On April 15, 2025, Biocon announced it reached a settlement agreement with Regeneron, dismissing CAFC Appeal No. 24-2002 and Case No. 1:22-cv-00061 (N.D.W. Va.) / MDL 1:24-md-03103 (N.D.W. Va.) and allowing the...more

Alston & Bird

Patent Case Summaries | Week Ending April 18, 2025

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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

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

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

Jones Day

Federal Circuit Reverses District Court’s Application Of Collateral Estoppel

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Kroy IP Holdings, LLC sued Groupon, Inc., alleging infringement of 13 claims of U.S. Patent No. 6,061,660 (“’660 patent’), which relates to incentive programs over computer networks. Those claims were invalidated via...more

Sheppard Mullin Richter & Hampton LLP

You Snooze, You Lose: Federal Circuit Emphasized Once Again the Importance of Preserving Issues for Appellate Review

AliveCor, Inc. v. Apple, Inc., No. 23-1512 (Fed. Cir. 2025) – On March 7, 2025, the Federal Circuit affirmed the Patent Trial and Appeal Board’s inter partes review (“IPR”) decisions invalidating all claims of three AliveCor...more

McDermott Will & Emery

The Clear and Unmistakable Standard for Applying Prosecution Disclaimer

The US Court of Appeals for the Federal Circuit found that a district court misconstrued claim terms based on a misapplication of the clear and unequivocal disavowal standard and vacated its noninfringement decision. Maquet...more

Jones Day

PTAB Announces Bifurcated Process for Consideration of Discretionary Denial Issues

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A new interim process for the Director to exercise discretion as to whether to institute an inter partes review(IPR) or a post grant review (PGR) was announced on March 26, 2025, in which discretionary considerations and...more

Alston & Bird

Patent Case Summaries | Week Ending March 21, 2025

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AMP Plus, Inc. v. DMF, Inc., No. 2023-1997 (Fed. Cir. (PTAB) Mar. 19, 2025). Opinion by Reyna, joined by Lourie and Bryson. DMF owns a patent directed to a compact recessed lighting system that can be installed in a standard...more

McDonnell Boehnen Hulbert & Berghoff LLP

DNA Genotek Inc. v. Spectrum Solutions LLC (Fed. Cir. 2025)

Sometimes important contributions to innovation can come from the mundane rather than the extraordinary. One (perhaps apocryphal) example comes from the story of the early development of television by Philo Farnsworth (the...more

ArentFox Schiff

Federal Circuit Refuses to Extend IPR Estoppel to Unadjudicated Patent Claims

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In Kroy IP Holdings, LLC v. Groupon, Inc., 127 F.4th 1376 (Fed. Cir. 2025), the Federal Circuit held that patentees in district court are not collaterally estopped from asserting claims that were not immaterially different...more

Jones Day

Federal Circuit Rules That Order Of Steps Sometimes Does Matter

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Back in May of 2020, European patent-licensing company Sisvel filed a flurry of lawsuits against a dozen tech companies who had allegedly infringed Sisvel’s portfolio of wireless communication and networking patents. A...more

Knobbe Martens

Federal Circuit Review | February 2025

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In HD Silicon Solutions LLC V. Microchip Technology Inc., Appeal No. 23-1397, the Federal Circuit held that  all but one patent claim were invalid as obvious because the claimed material, as properly construed, was disclosed...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: Apple Inc. v. Gesture Technology Partners

Apple Inc. v. Gesture Technology Partners, LLC, Appeal Nos. 2023-1475, -1533 (Fed. Cir. Mar. 4, 2025) Our Case of the Week is a high-stakes appeal from an inter partes review concerning a patent titled “Camera Based...more

Jones Day

PTAB Retains Jurisdiction Of Expired Patents

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The Federal Circuit rejected a recent argument that the PTAB does not have inter partes review (IPR) jurisdiction over expired patents. Because even expired patents involve the grant of public rights, the court explained that...more

Hudnell Law Group

Differing Burdens of Proof Limits Estoppel Effect of PTAB Final Written Decision

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On February 10, 2025, the United States Court of Appeals for the Federal Circuit issued a decision in Kroy IP Holdings, LLC v. Groupon, Inc., reversing and remanding a district court ruling that had dismissed Kroy’s patent...more

Jones Day

Two Separate Analyses: Nonobviousness vs Enablement

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Recently, a Director Review was granted where Director Vidal vacated the Patent Trial and Appeals Board’s (“PTAB”) Final Written Decision and remanded back to the PTAB for further consideration of enablement.  Duration Media...more

McDermott Will & Emery

Collateral Estoppel Doesn’t Apply to Unchallenged IPR Claims

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The US Court Appeals for the Federal Circuit found that despite a Patent Trial & Appeal Board determination that certain challenged patent claims were unpatentable based on a preponderance of the evidence standard, the patent...more

Fitch, Even, Tabin & Flannery LLP

Federal Circuit Clarifies Patent Claim Assertion After PTAB Unpatentability Decisions

On February 10, the Federal Circuit held in Kroy IP Holdings, LLC v. Groupon, Inc. that a final written decision of the Patent Trial and Appeal Board (PTAB) concluding that certain claims are unpatentable does not prevent the...more

Knobbe Martens

Collateral Estoppel Does Not Apply When the Prior Proceeding Applies a Lower Burden of Proof

Knobbe Martens on

Because there are different burdens of proof in IPRs and district court, collateral estoppel does not preclude a patent owner from asserting claims that are immaterially different from claims canceled in an IPR....more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Case: Kroy IP Holdings, LLC v. Groupon Inc.

After an inter partes review finds certain claims of a patent unpatentable, may the patentee assert other claims, immaterially different, in district court without being collaterally estopped? This was the question presented...more

Haug Partners LLP

Federal Circuit Limits Use of PTAB Unpatentability Rulings to Estop Patentees From Asserting Claims

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On February 10, 2025, the Federal Circuit issued a precedential decision in Kroy IP Holdings, LLC v. Groupon, Inc., where the Court held that a “a prior final written decision of the [PTAB] of unpatentability on separate...more

Knobbe Martens

Federal Circuit Review | January 2025

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In Honeywell International Inc. v. 3G Licensing, S.A., Appeal No. 23-1354, the Federal Circuit held that under the obviousness standard of 35 U.S.C. § 103, the motivation to modify prior art does not need to be the same as...more

WilmerHale

Federal Circuit Patent Watch: FDA Filing Can Create Personal Jurisdiction; “Compelling” Arguments that Reverse Doctrine of...

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Precedential and Key Federal Circuit Opinions - STEUBEN FOODS, INC. v. SHIBUYA HOPPMANN CORPORATION [OPINION] (2023-1790, 1/24/2025) (Moore, Hughes, Cunningham) - Moore, Chief J. The Court reversed the district...more

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