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Patent-Eligible Subject Matter › Estoppel

Patent-Eligible Subject Matter refers to the types of inventions that can be legally patented. The criteria for patentability varies depending on the jurisdiction. In the United States, for instance, if a... more +
Patent-Eligible Subject Matter refers to the types of inventions that can be legally patented. The criteria for patentability varies depending on the jurisdiction. In the United States, for instance, if a researcher discovers a naturally occurring substance, the substance itself cannot be patented. This issue was examined in a United States Supreme Court case, AMP v. Myriad, in regard to the patentability of human genes.  less -
Knobbe Martens

Federal Circuit Review | July 2024

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In Natera, Inc v. Neogenomics Laboratories, Inc., Appeal No. 24-1324 the Federal Circuit held that  preliminary injunction may be valid if a substantial question of invalidity was not raised, even if the asserted patent is...more

WilmerHale

Federal Circuit Patent Watch: Ordering In-Person Appearance to Testify Regarding Potential Fraud on the Court is within Court's...

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Precedential and Key Federal Circuit Opinions - 1.  BACKERTOP LICENSING LLC [OPINION] (23-2367, 23-2368, 24-1016, 24-1017 Prost, Hughes, and Stoll) - Hughes, J. The Court affirmed the District Court’s orders (1)...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

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As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

WilmerHale

Federal Circuit Patent Watch: Assignor estoppel applies to claims that are not "materially broader" than the originally assigned...

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Precedential Federal Circuit Opinions - In Re MCDONALD [OPINION] (2021-1697, 8/10/2022) (Newman, Stoll, and Cunningham) - Cunningham, J. The Court affirmed a PTAB decision rejecting reissue claims under 35 U.S.C. §...more

Jones Day

PGRs Still Rare – Is Estoppel The Reason?

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A Post-Grant Review can be used to challenge newly-issued patents on wide-ranging grounds, but PGRs remain relatively unpopular: statutory estoppel may be a reason why....more

Knobbe Martens

Federal Circuit Review - March 2021

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Corresponding Structure Snafu: Lack of Algorithm Renders Claims Indefinite - In Rain Computing, Inc. v. Samsung Electronics Co. Ltd., Appeal No. 20-1646, the Federal Circuit held that the structure for performing a...more

Harris Beach PLLC

Important 2020 Patent Law Decisions from the Court of Appeals for the Federal Circuit

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Whether you are pursuing patents on your new technology, thinking about bringing patent infringement litigation or defending patent infringement claims in court, knowing the important developments in patent law will help you...more

Jones Day

PGR Estoppel Applies to Unasserted Art

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Due to the relatively low number of post-grant reviews (“PGR”) filed to date, not many district courts have spoken on the scope of PGR estoppel. In GREE, Inc. v. Supercell Oy, No. 2:19-cv-00071 (E.D. Texas), Magistrate Judge...more

Goodwin

Issue Twenty-Nine: PTAB Trial Tracker

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The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more

Jones Day

Motion To Strike Invalidity Defense Denied… For Now

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On February 28, 2019, GREE, Inc. (“GREE”) filed a Complaint against Supercell Oy (“Supercell”) for patent infringement of U.S. Patent No. 9,597,594 (the “’594 Patent”), directed to a method for controlling a computer to...more

Akin Gump Strauss Hauer & Feld LLP

Invalidity Defenses Will Not Be Stricken at Pleading Stage Despite Defendant’s Earlier PGR Petition

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A district court has denied a patent owner’s motion to strike wholesale a defendant’s affirmative defense of invalidity. The key issue in the motion to strike was the application of the estoppel provision of 35 U.S.C. §...more

Knobbe Martens

Federal Circuit Review - August 2019

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Mere Potential for Future Appeal Does Not Prevent Triggering Estoppel of Inter Partes Reexamination When Party Fails to Seek Relief in the First Instance - In Virnetx Inc. v. Apple Inc., Appeal Nos. 2017-1591, -1592,...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - August 2019

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PATENT CASE OF THE WEEK - Celgene Corporation v. Laura A. Peter, Appeal Nos. 2018-1167, -1168, -1169, -1171 (Fed. Cir. July 30, 2019) - In this week’s Case of the Week, the Federal Circuit held that the retroactive...more

Akin Gump Strauss Hauer & Feld LLP

Estoppel Applies to “Known or Used” Prior Art if PTAB Considered Corresponding Written References

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A district court in California has granted-in-part a Plaintiff’s motion for summary judgment of no invalidity under 35 U.S.C. § 103 due to inter partes review (IPR) estoppel. During the pendency of the litigation, Defendants...more

Jones Day

After SAS, Indefinite Claims Can Be A Definite Problem For IPR Petitioners

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The definiteness requirement for patent claims is set forth in Section 112(b), mandating that a patent specification conclude with one or more claims “particularly pointing out and distinctly claiming subject matter which the...more

Akin Gump Strauss Hauer & Feld LLP

Accused Infringer Estopped from Asserting Prior Art Disclosed in Invalidity Contentions

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In an order issued on April 4, 2018, Judge Lynn granted plaintiff ZitoVault’s motion for summary judgment under 35 U.S.C. 315(e)(2), holding that defendant IBM is estopped from asserting invalidity defenses based on prior art...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

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Core Wireless v. LG affirms the denial of summary judgment as to unpatentable subject matter, ruling that the asserted claims are directed to an improved user interface for computing devices, not to the abstract idea of an...more

McDonnell Boehnen Hulbert & Berghoff LLP

Credit Acceptance Corp. v. Westlake Services (Fed. Cir. 2017)

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Claims Directed to Providing Financing for Allowing a Customer to Purchase a Car found Invalid under 35 U.S.C. § 101 - In a precedential opinion, the Federal Circuit affirmed a final written decision of the Patent Trial...more

Knobbe Martens

Federal Circuit Review | October 2016

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Withdrawal of Claims During Prosecution Can Trigger Prosecution History Estoppel In UCB, Inc. v. Yeda Research and Development Co., Ltd., Appeal No. 2015-1957, the Federal Circuit held that prosecution estoppel can apply even...more

Knobbe Martens

Inter Partes Review - Petitioner Estoppel under 35 U.S.C. §315(e)(1)

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The Patent Trials and Appeals Board ruled that Petitioner could not maintain a subsequent proceeding with respect to the same claim on a ground that it “reasonably could have raised” in a prior proceeding despite Petitioner...more

McDonnell Boehnen Hulbert & Berghoff LLP

HP Inc. v. Big Baboon, Inc. (PTAB 2016) - Business Method Patent Not Invalid under 35 U.S.C. § 101

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HP Inc. and SAP America, Inc. filed a Petition seeking a covered business method (CBM) patent review of claims 15 and 20–34 of U.S. Patent No. 6,343,275 owned by Big Baboon, Inc. The PTAB, however, determined that the...more

Knobbe Martens

Federal Circuit Review | April 2016

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Federal Circuit Upholds Broad Scope of CBM Review and Explains that an Internet Reference Must be Indexed by a Search Engine to Qualify as a Prior Art Publication - In Blue Calypso, LLC v. Groupon, Inc., Appeal Nos....more

WilmerHale

Federal Circuit Patent Updates - April 2016

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Mankes v. Vivid Seats Ltd. (No. 2015-1909, 4/22/16) (Taranto, Schall, Chen) - Taranto, J. Vacating judgment on the pleadings dismissing cases for inadequately pleading divided infringement and remanding for...more

WilmerHale

Federal Circuit Patent Updates - March 2016

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Clare v. Chrysler Group LLC (No. 2015-1999, 3/31/16) (Prost, Moore, Wallach) - Moore, J. Affirming summary judgment of non-infringement of patents related to storage compartment for pickup trucks. The Court rejected...more

Mintz - Intellectual Property Viewpoints

Westlake Services v. Credit Acceptance: PTAB’s Precedential Decision to Apply Estoppel on a Claim-by-Claim Basis

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The Patent Trial and Appeal Board recently designated as precedential its decision in Westlake Services, LLC v. Credit Acceptance Corp., CBM2014-00176, Paper 28 (PTAB May 14, 2015) addressing the scope of estoppel under 35...more

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