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Patent Validity Estoppel Prior Art

Jones Day

Federal Circuit: Petitioner Estoppel Does Not Apply to Product Prior At Grounds

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In IOENGINE, LLC v. Ingenico Inc. (Fed. Cir. 2025), the Federal Circuit narrowed the scope of IPR estoppel under 35 U.S.C. § 315(e)(2), which precludes an IPR petitioner from asserting in court that a patent claim “is invalid...more

Sheppard Mullin Richter & Hampton LLP

A Line in the Sand: Federal Circuit Bounds IPR Estoppel in Ingenico v. IOENGINE

In a significant development for patent litigants, the Federal Circuit in Ingenico Inc. v. IOENGINE, LLC, affirmed an important limitation on the scope of IPR estoppel under 35 U.S.C. § 315(e)(2). Specifically, the court held...more

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

Ingenico: Federal Circuit Narrows the Scope of IPR Estoppel Under § 315(e)(2)

On May 7, 2025, the Federal Circuit issued a precedential decision in Ingenico Inc. v. IOENGINE, LLC that narrows the scope of inter partes review (IPR) estoppel under 35 U.S.C. § 315(e)(2), resolving a longstanding district...more

Akin Gump Strauss Hauer & Feld LLP

District of Delaware Holds That IPR Estoppel Does Not Apply to Device Art

Federal Circuit Judge William Bryson, sitting by designation in the District of Delaware, ruled on summary judgment that inter partes review (IPR) estoppel does not apply to device art, even if the device is cumulative of...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

Akin Gump Strauss Hauer & Feld LLP

Calling a Printed Publication a “System” is Not Enough to Avoid IPR Estoppel

A Central District of California judge recently granted summary judgment of no obviousness based on inter partes review (IPR) estoppel because the only prior art references used to challenge patent validity could have been...more

Knobbe Martens

Massachusetts Court Finds Shaw Decision Forecloses Any Estoppel Beyond the Grounds That Were Instituted in an IPR, Despite Policy...

Knobbe Martens on

The court in Koninklijke Philips N.V. v. Wangs All. Corp., No. 14:cv-12298, 2018 WL 283893 (D. Mass. Jan. 2, 2018) denied summary judgement of no invalidity, finding that the Federal Circuit’s holding in Shaw forecloses a...more

Jones Day

District Courts Split on Admissibility of Patent Owner IPR Victories

Jones Day on

In an opinion dated October 12, 2017, the U.S. District Court for the Eastern District of Wisconsin granted a motion in limine to exclude evidence that a challenged patent had survived twenty post-issuance proceedings,...more

Knobbe Martens

PTAB: No Estoppel Because A Skilled Searcher Could Not Have Found Company Brochures

Knobbe Martens on

In a Final Written Decision in Johns Manville Corp. v. Knauf Insulation, Inc., IPR2016-00130, Paper 35 (P.T.A.B. May 8, 2017), the PTAB found that petitioner Johns Manville (JM) was not estopped from raising its own company...more

McDonnell Boehnen Hulbert & Berghoff LLP

Post-Grant Review Estoppel – Looking Forward by Looking Back at Estoppel in Inter-Partes and Covered-Business-Method Review

In 2011, the Leahy-Smith America Invents Act (“AIA”) established new post-issuance procedures for challenging the validity of a granted patent before the Patent Trials and Appeal Board (“PTAB” or “Board”). Inter partes...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

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

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