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One of the assumptions, or promises, or hopes, attendant on the inauguration of post-grant review proceedings (particularly inter partes reviews) under the Leahy-Smith America Invents Act was that, as in European Opposition...more
When Acting USPTO Director Coke Morgan Stewart denied institution in Dabico v. AXA Power IPR2025-00408 Paper 21, much of the commentary focused on the result....more
In a decision underscoring the distinct standards governing enablement under §§ 102 and 112, the US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s finding that a prior art reference was...more
The Federal Circuit recently clarified in Ingenico Inc. v. IOENGINE, LLC that inter partes review (IPR) estoppel does not extend to physical systems described in prior art patents or printed publications....more
On June 11, 2025, the United States Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board (PTAB) decision invalidating two patents owned by Agilent Technologies. The patents at issue, U.S. Patent...more
Welcome to the Intellectual Property Litigation Newsletter, our review of decisions and trends in the intellectual property arena. In this edition, we learn that unilateral assertion is not industry standard, the IPR...more
Etanercept Challenged Claim Types in IPR and Litigation: Claims include those challenged in litigations and IPRs. Claims are counted in each litigation and IPR, so claims from the same patent challenged in multiple...more
Precedential and Key Federal Circuit Opinions - ALNYLAM PHARMACEUTICALS, INC. v. MODERNA, INC. [OPINION] (2023-2357, 06/04/2025) (Taranto, Chen, Hughes) - Taranto, J. The Court affirmed the district court’s claim...more
An argument could be made that one of the most significant Supreme Court decisions in U.S. patent law in the last thirty years was Dickinson v. Zurko. In that case the Court held that the Federal Circuit was bound by the...more
Pegfilgrastim Challenged Claim Types in IPR and Litigation: Claims include those challenged in litigations and IPRs. Claims are counted in each litigation and IPR, so claims from the same patent challenged in multiple...more
When prosecuting a patent with similar language across various claims make sure your claim terms have different meanings, otherwise, during litigation you may lose the strategic opportunity to keep some claims valid if others...more
In Ingenico v. IOENGINE, No. 2023-1367 (Fed. Cir. May 7, 2025), the Federal Circuit resolved a long-standing split among District Courts in favor of petitioners regarding inter partes review (IPR) estoppel under 35 U.S.C. §...more
Insulin Glargine Challenged Claim Types in IPR and Litigation: Claims include those challenged in litigations and IPRs. Claims are counted in each litigation and IPR, so claims from the same patent challenged in multiple...more
Patent attorneys are well-versed in the function of the Information Disclosure Statement (IDS) during prosecution. We understand that listing prior art in an IDS satisfies the duty of candor, helps insulate patents from...more
Rituximab Challenged Claim Types in IPR and Litigation: Claims include those challenged in litigations and IPRs. Claims are counted in each litigation and IPR, so claims from the same patent challenged in multiple...more
Restem filed a petition for inter partes review of U.S. Patent No. 9,803,176, directed to stem cells obtained from umbilical cord tissue and isolated through a two-step process to create a specific cell marker expression...more
On June 6, 2025, Acting USPTO Director Stewart issued a decision in iRhythm Tech. v. Welch Allyn, Inc., IPR2025-00363, Paper 10 (and four related IPRs), which granted Patent Owner’s request for discretionary denial. This is...more
The Federal Circuit’s March 21, 2025 decision in Maquet Cardiovascular LLC v. Abiomed Inc. et al. (No. 2023-2045) and the recent Patent Trial and Appeal Board (PTAB) Delegated Rehearing Panel decision in SynAffix B.V. v....more
On May 22, 2025, the CAFC affirmed the PTAB’s (Board) Final Written Decisions in Pfizer’s IPR2021-00925 and IPR2021-00926 finding all challenged claims of uniQure’s U.S. Patent No. 9,982,248 (“the ’248 patent”) unpatentable...more
The US Court of Appeals for the Federal Circuit reversed the Patent Trial & Appeal Board’s final determination that challenged patent claims were not unpatentable, finding that the Board’s decision relied on an erroneous...more
On May 23, 2025, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued a precedential opinion reversing a final written decision from the U.S. Patent Trial and Appeal Board (“PTAB”) finding the challenged...more
This Federal Circuit Opinion analyzes invalidity based on anticipation and obviousness, more specifically based on implicit claim construction of the claim limitation and inherent disclosures....more
EcoFactor, Inc. v. Google LLC, No. 2023-1101 (Fed. Cir. (W.D. Tex.) May 23, 2025). En banc opinion by Moore, joined by Lourie, Dyk, Prost, Taranto, Chen, Hughes, and Stoll. Opinion concurring in part and dissenting in part by...more
In a precedential opinion entered on May 7, 2025, the United States Court of Appeals for the Federal Circuit affirmed a jury verdict invalidating claims of two patents for anticipation and obviousness over the prior art....more
The Federal Circuit recently resolved a split among the district courts whether patent infringement defendants who bring inter partes review (IPR) challenges are estopped from raising new prior art challenges in a co-pending...more