News & Analysis as of

Patent Prosecution History

Jenner & Block

The Federal Circuit Expands Disclaimer of Patent Scope During Prosecution

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The Federal Circuit Court of Appeals’ recent decision in Focus Products Group International, LLC v. Kartri Sales Co., Inc., No. 2023-1446 (Fed. Cir. Sept. 30, 2025) reversed summary judgment of infringement on two patents and...more

Troutman Pepper Locke

Prosecution History Disclaimer Decision Highlights Risk of Not Contesting Restriction Requirement

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In Focus Products Group International, LLC v. Kartri Sales Co., Inc., No. 2023-1446 (Fed. Cir. Sept. 30, 2025), the Federal Circuit reversed patent infringement findings, holding that a patentee’s failure to contest an...more

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

Patent Term Adjustment

In 1999, Congress created a system of patent term adjustment (PTA) that adds additional time to patent terms to remedy certain delays caused by the U.S. Patent and Trademark Office (USPTO) in issuing a patent. Why Review...more

Mintz

The “Hakim Statement” – Avoiding Estoppel During Prosecution

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Parallel, divisional, or continuation applications can be strategically filed to pursue additional or broader claims. Yet, claim scope across related applications can be constrained by the judicially created doctrine of...more

Vorys, Sater, Seymour and Pease LLP

The Precedent: Federal Circuit Requires Jepson Claim Preambles Satisfy § 112’s Written Description Requirement in In re: Xencor,...

In this edition of The Precedent, we outline the decision in In re: Xencor, Inc. Xencor, Inc. (“Xencor”) filed U.S. Patent Application No. 16/803,690 (the “’690 Application”), which was directed to a method for treating...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit: Cancellation of Closely Related Claims Triggers Prosecution History Estoppel and Limits Infringement Scope

The Federal Circuit reversed a district court’s denial of judgment as a matter of law on non-infringement, thereby setting aside a $106 million jury verdict, after holding that prosecution history estoppel barred the patentee...more

Vorys, Sater, Seymour and Pease LLP

The Precedent: Federal Circuit Concludes that Cancelled Subject Matter Can Preclude a Doctrine of Equivalents Infringement Theory...

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

Jones Day

Skechers IPR Still Kicking After Director Review

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In a Director Review, the Acting Director reversed a panel decision to discretionarily deny an IPR under § 325(d). The Acting Director held that the PTAB’s own findings in two previous IPRs sufficiently proved Examiner error...more

Volpe Koenig

Working within the USPTO Track 1 Limits

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The U.S. Patent and Trademark Office's (USPTO) Prioritized Patent Examination Program, known as the Track-1 Program, provides an accelerated patent application examination in exchange for additional filing fees to those...more

Foley & Lardner LLP

Federal Circuit Skeptical of Prosecution Laches

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In Google v. Sonos, the Federal Circuit soundly disposed of arguments that the patent-in-suit was unenforceable due to laches based on an “unreasonable delay” in patent prosecution. Does the court’s reasoning foreclose the...more

King & Spalding

Live Long and Patent: Lessons from Captain Kirk’s Encounter with the PTAB

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In a tale that boldly goes where few celebrity inventors have gone before, William Shatner—yes, that William Shatner—alongside two co-inventors, filed a patent application for a “Smartphone Organization System and...more

DLA Piper

What is a “Clear and Unmistakable” Prosecution History Disclaimer?

DLA Piper on

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

Fish & Richardson

What’s New in Director Review? Lessons From the Delegated Rehearing Panel’s First Decisions

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The Director of the United States Patent and Trademark Office (USPTO) established the interim process for Director Review of Patent Trial and Appeal Board (PTAB) decisions in the wake of the Supreme Court’s 2021 decision in...more

Venable LLP

PTAB Issues Final Written Decision Finding Seagen’s Adcetris® Patent Claims Unpatentable

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On January 16, 2024, the PTAB issued a Final Written Decision in a post-grant review (“PGR”) of claims in U.S. Patent No. 10,808,039 (the “’039 patent”) owned by Seagen Inc. (“Seagen”). PGR2021-00030 was filed by Daiichi...more

Haug Partners LLP

Federal Circuit Emphasizes the Importance of Prosecution History in Resolving Ambiguous Claim Terms in University of Massachusetts...

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On June 13, 2022, the Federal Circuit issued a precedential opinion that vacated the district court’s judgment of indefiniteness, deciding that the ruling was based on an erroneous claim construction. The patents-in-suit...more

Morrison & Foerster LLP - Federal Circuitry

Last Week In The Federal Circuit (April 4 - 8): Claim Differentiation Carries The Day

Last week was argument week at the Federal Circuit, and we’ve already begun seeing decisions from the argued cases trickle in. Below we provide our usual weekly statistics and a detailed discussion of our case of the week—our...more

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

2021 PTAB Year in Review: Analysis & Trends: Discretionary Denial under § 325(d): Strategic Implications of the PTAB’s Advanced...

The USPTO Patent Trial and Appeal Board (PTAB) has increasingly used its discretionary denial authority in recent years. Although the PTAB’s discretion under 35 U.S.C. § 314(a) and Fintiv grabbed many headlines in 2021, the...more

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

2021 PTAB Year in Review: Analysis & Trends

[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit: Indefiniteness Is Not Judged by the “Claim Language, Standing Alone”

Evaluating whether a patent claim is sufficiently “definite” under 35 U.S.C. § 112 requires looking beyond just the claim language itself. The Federal Circuit reaffirmed this fundamental principle in a recent decision...more

Snell & Wilmer

Federal Circuit Rejects “Unanswered Questions” Indefiniteness Standard

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Last week, a split Federal Circuit panel reversed a decision invalidating certain computer-aided-design patent claims because the district court used an incorrect indefiniteness standard....more

Haug Partners LLP

AztraZeneca AB v. Mylan Pharms. Inc.: Claim Construction of a Percentage Term Guided by the Written Description and Prosecution...

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On December 8, 2021, the Federal Circuit in AztraZeneca AB v. Mylan Pharms. Inc. held that the claim construction of a percentage term should “‘most naturally align[] with the patent’s description of the invention,’ as...more

Knobbe Martens

Prosecution History Disclaimer and Estoppel Lead To Noninfringement

Knobbe Martens on

TRAXCELL TECHNOLOGIES, LLC V. NOKIA SOLUTIONS AND NETWORKS Before Prost, O’Malley, and Stoll. Appeal from the Eastern District of Texas. Summary: An applicant’s arguments distinguishing prior art during patent...more

McDermott Will & Schulte

3D Chess at the Federal Circuit: Can't Walk Back Arguments in Prior Appeal or Prosecution History

In the second appeal to the US Court of Appeals for the Federal Circuit, the preamble term “three-dimensional spreadsheet” was found to be a limitation in the context of claims directed to organizing and presenting...more

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

PTAB Strategies and Insights - August 2021: Federal Circuit Remands for Board's Improper Use of Extrinsic Evidence During Claim...

In Seabed Geosolutions (US) Inc. v. Magseis FF LLC, the Federal Circuit vacated and remanded an inter partes review decision for the Patent Owner. The Court held that the Patent Trial and Review Board failed to perform the...more

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

PTAB Strategies and Insights - August 2021

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

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