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Patents Patent Invalidity

Jones Day

Delegated Rehearing Panel Sends Lifeline to Mercedes-Benz

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A Delegated Rehearing Panel (“DRP”) recently modified the PTAB’s construction of the claim term “workload” and remanded, giving Mercedes-Benz USA, LLC (“Petitioner”) another opportunity to challenge a processor patent....more

Jones Day

Federal Circuit: RPI Arguments Must First Be Raised at the PTAB

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Apple Inc., et. al v. Gesture Technology Partners, LLC (March 4, 2025) (Moore (Chief Judge), Prost and Stoll) (on appeal from the Patent Trial and Appeal Board) [WAIVER; OBVIOUSNESS] ....more

White & Case LLP

Federal Circuit Reinforces Standard for Prior Art Enablement in CRISPR Dispute

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On June 11, 2025, the U.S. Court of Appeals for the Federal Circuit decided Agilent Technologies, Inc. v. Synthego Corp. (No. 23-2186), addressing enablement of prior art references for disputed CRISPR-Cas9 gene-editing...more

Irwin IP LLP

No Rhythm, No Review: USPTO Director Skips a Beat on IPRs. 

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iRhythm Technologies, Inc., v. Welch Allyn, Inc., IPR2025-00363, IPR2025-00374, IPR2025-00376, IPR2025-00377, IPR2025-00378 (P.T.A.B. June 6, 2025) - On June 6, 2025, United States Patent and Trademark Office (“USPTO”)...more

Vinson & Elkins LLP

File Early or Risk Denial: iRhythm IPR Institution Denial Underscores the Importance of Filing IPR Petitions Sooner Rather Than...

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On June 6, 2025, the Acting Director of the United States Patent and Trademark Office (“USPTO”), Coke Morgan Stewart, issued a decision denying institution of five inter partes review (“IPR”) petitions filed by iRhythm, Inc....more

ArentFox Schiff

Federal Circuit Narrows Scope of IPR Estoppel, Resolving District Court Split

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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

Venable LLP

Spotlight On: Neulasta® (pegfilgrastim) / Fulphila® (pegfilgrastim-jmdb) / Udenyca® (pegfilgrastim-cbqv) / Ziextenzo®...

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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

Proskauer - The Patent Playbook

Discretionary Denials in Action: iRhythm Technologies Inc. v. Welch Allyn Inc.

The U.S. Patent and Trademark Office (“USPTO”) Acting Director’s recent decision to deny institution of inter partes review (“IPR”) in iRhythm Technologies Inc. v. Welch Allyn Inc. offers valuable lessons for both patent...more

Irwin IP LLP

Seeing Double?  Similar Claim Terms Could Be Trouble  

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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

Fish & Richardson

Ingenico v. IOENGINE and the Diminishing Role of Sotera Stipulations

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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

Volpe Koenig

When an IDS Comes Back to Haunt You: Lessons from iRhythm v. Welch Allyn

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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

Hogan Lovells

Two years of the Unified Patent Court – Key insights from Hogan Lovells’ analysis of revocation trends

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On June 1, 2025, the Unified Patent Court marked its second anniversary - we are one of very few firms that has top-tier patent litigators in all major EU jurisdictions and the UK – we’ve been defending clients in...more

Jones Day

Applying Fintiv to a Parallel ITC Investigation

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The Patent Trial and Appeals Board (“PTAB”) recently denied institution of an inter partes review (“IPR”), exercising its discretion under 35 U.S.C. § 314(a)and Apple Inc. v. Fintiv Inc., IPR2020-00019 (PTAB Mar. 20, 2020)...more

WilmerHale

Federal Circuit Patent Watch: En Banc Federal Circuit Finds Lump Sum Settlement Licenses Insufficient to Support $X Royalty Rate...

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Precedential and Key Federal Circuit Opinions - ECOFACTOR, INC. v. GOOGLE LLC [OPINION] (2023-1101, 5/21/2025) (Lourie, Dyk, Prost, Reyna, Taranto, Chen, Hughes, Stoll, Stark) - Moore, C.J. The en banc Court reversed...more

Morrison & Foerster LLP

Revival of the Staccato Cherry Patent: Key Considerations for Plant Variety Protection

In recent developments in a years-long conflict over Canadian-bred cherries, the District Court for the Eastern District of Washington has vacated a prior order invalidating a U.S. plant patent over the Staccato cherry tree...more

K&L Gates LLP

Estoppel Estopped?

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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

Proskauer - The Patent Playbook

Interesting Recent § 101 Cases – Structural Components Are Not Enough

Your Package Could Not Be Delivered – District of Delaware Strikes Electronic Storage Room Claims as Patent Ineligible - Judge Choe-Groves of the United States Court of International Trade granted Defendant’s Motion to...more

Holland & Knight LLP

Section 101 Patent Eligibility Roundup: An Informative PTAB Decision, Squires Speaks

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The Patent Trial and Appeal Board designated a recent decision as informative. In the decision, Coke Morgan Stewart, Acting Director of the U.S. Patent and Trade Office (USPTO), ended the petitioner's challenges, noting that...more

Jones Day

Estoppel Trumps Substance: ITC Bars Respondent’s Invalidity Grounds Raised in IPR

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Recently, an ITC Administrative Law Judge applied IPR statutory estoppel under 35 U.S.C. § 315(e)(2) in denying a Respondent’s motion for summary determination of invalidity in Certain Audio Players and Components Thereof,...more

Ervin Cohen & Jessup LLP

Patents Must Describe the “How” - A Reminder That Functional Claims Need Structural Support

On April 30, 2025, the Federal Circuit issued a decision in Fintiv, Inc. v. PayPal Holdings, Inc. (No. 23-2312), issued on April 30, 2025, upholding the invalidation of Finitiv Inc.’s (“Finitiv”) mobile wallet patents related...more

Jones Day

Trial Date Drives PTAB’s Denial of IPR Institution

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On April 16, 2025, the Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR) for several claims of U.S. Patent No. 7,187,307, owned by Universal Connectivity Technologies, Inc. HP Inc., Dell...more

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

Ervin Cohen & Jessup LLP

SCOTUS Declines to Hear Coke Zero Patent Case

On April 28, 2025, the U.S. Supreme Court declined to hear Celanese International Corp.’s challenge to a Federal Circuit decision which found the company’s patent on the process to create the artificial sweetener used in Coke...more

McDermott Will & Emery

Designated Informative: PTO Director Declines IPR Institution Following District Court § 101 Invalidation

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The US Patent & Trademark Office (PTO) designated a recent Director Review decision as informative, signaling its significance for future proceedings. The decision emphasizes that a final district court ruling invalidating a...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

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