News & Analysis as of

Prior Art Inter Partes Review (IPR) Proceeding

Dorsey & Whitney LLP

Federal Circuit Clarifies Scope of IPR Estoppel

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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

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

Jones Day

Institution Denied for Insufficient Publication Evidence

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On October 29, 2024, BabyBjörn AB (“BabyBjörn”) filed two separate petitions for inter partes review (“IPR”) of U.S. Patent No. 11,786,055 (“the ’055 Patent”), which is assigned to The ERGO Baby Carrier, Inc. (“ERGO Baby”). ...more

Foley Hoag LLP

Reshaped IPR Landscape: Narrower Estoppel and Fewer New Cases

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Key Takeaways - - A recent Federal Circuit decision in a case involving an inter partes review (IPR) significantly narrowed a patentee’s ability to rely on estoppel to block a defendant from raising invalidity grounds. -...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

Morrison & Foerster LLP

Discretionary Denials—Act II

On March 26, 2025, the Acting Director of the United States Patent and Trademark Office fundamentally changed how the Patent Trial and Appeal Board (“PTAB”) initially considers petitions in post grant proceedings under the...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Provides Clarity on Use of Applicant Admitted Prior Art (“AAPA”) in IPRs

Qualcomm Incorporated v. Apple Inc., No. 23-1208 (Fed. Cir. 2025)—On April 23, 2025, the Federal Circuit reversed the Patent Trial and Appeal Board’s finding that claims of Qualcomm’s U.S. Patent No. 8,063,674 (“the ’674...more

Jones Day

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

Jones Day on

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

McDermott Will & Emery

Breaking New Grounds to Limits of IPR Estoppel

McDermott Will & Emery on

In a matter of first impression, the US Court of Appeals for the Federal Circuit found that inter partes review (IPR) estoppel does not preclude a petitioner from relying on the same patents and printed publications as...more

Morgan Lewis

Public Use and Estoppel Reexamined: Strategic Lessons from Ingenico

Morgan Lewis on

This LawFlash details strategic takeaways and practical lessons from the recent US Court of Appeals for the Federal Circuit case on IPR estoppel, evidence of public use, and jury instructions on specific issues....more

WilmerHale

Federal Circuit Provides Guidance on Scope of IPR Estoppel

WilmerHale on

In its recent decision in Ingenico Inc. v. IOENGINE, LLC, the Federal Circuit affirmed the district court’s decision to allow Ingenico to introduce certain prior art at trial, finding that inter partes review (IPR) estoppel...more

Alston & Bird

Intellectual Property Litigation Newsletter | May 2025

Alston & Bird on

Welcome to the Intellectual Property Litigation Newsletter, our review of decisions and trends in the intellectual property arena. In this edition, we learn that belated statements are not relevant but litigation funding...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

Venable LLP

Spotlight On: Actemra® (tocilizumab) / Tofidence™ (tocilizumab-bavi) / Tyenne® (tocilizumab-aazg) / Avtozma® (tocilizumab-anoh) -...

Venable LLP on

Tocilizumab Challenged Claim Types in IPRs: Claims are counted in each IPR, so claims from the same patent challenged in multiple IPRs are counted more than once. Within each IPR, claims are counted only once, whether they...more

A&O Shearman

The CAFC Holds That IPR Estoppel Does Not Shield Patentees From System Prior Art

A&O Shearman on

On May 7, 2025, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) affirmed a decision by the U.S. District Court for the District of Delaware (“district court”) that found claims of two IOENGINE, LLC (“IOENGINE”)...more

Akin Gump Strauss Hauer & Feld LLP

Claim Construction Issues and Large Number of Claims Not Enough to Institute a Second Petition for Inter Partes Review

The Patent Trial and Appeal Board recently declined to institute a petition for IPR that was filed on the same day that the petitioner filed another petition challenging the same claims of the same patent. The board was not...more

Vinson & Elkins LLP

Federal Circuit Defines Scope of IPR Estoppel

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In Ingenico Inc. v. IOENGINE, LLC, the Federal Circuit defined for the first time the scope of inter partes review (“IPR”) estoppel in district court and International Trade Commission (ITC) proceedings: IPR estoppel applies...more

Morrison & Foerster LLP

The Rise of System Art: The Federal Circuit Shelters System Art From IPR Estoppel

Prior art patents and publications have long been the primary source for anticipation and obviousness assertions by defendants in IP litigation. System art—an actual system or device—is a less common source of prior art due...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

Paul Hastings LLP

Federal Circuit Clarifies the Scope of IPR Estoppel

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The Federal Circuit recently clarified the scope of statutory estoppel that applies in District Court after the PTAB issues a final written decision in a related inter partes review (IPR). Ingenico Inc. v. IOENGINE, LLC, No....more

Venable LLP

Federal Circuit Interprets IPR Estoppel Under 35 U.S.C. § 315(e)(2) to Permit at Trial Invalidity Theories Based on Prior Use or...

Venable LLP on

On May 7, 2025, the Federal Circuit issued a decision in Ingenico, Inc. v. IOENGINE, LLC, effectively holding that 35 U.S.C. § 315(e)(2) estoppel cannot preclude an IPR petitioner from advancing in a district court trial an...more

Akin Gump Strauss Hauer & Feld LLP

Director Vacates Decision to Institute: Investment in Parallel Proceeding Outweighed Petitioner’s Sotera Stipulation

The USPTO Director vacated the board’s decision to institute inter partes review based on an erroneous application of the Fintiv factors. Specifically, the Director found that the board placed too much emphasis on...more

Proskauer - The Patent Playbook

Ingenico Inc. v. IOENGINE, LLC: Federal Circuit Resolves the IPR Estoppel Split

In what is certain to become a landmark decision, the Federal Circuit has resolved a long-standing question that divided patent litigators and judges alike: does IPR estoppel apply to physical systems (“system art”) described...more

McDonnell Boehnen Hulbert & Berghoff LLP

Valve Corp. v. Ironburg Inventions Ltd. (Fed. Cir. 2025)

On April 23, 2025, the Federal Circuit rendered an opinion in Valve Corp. v. Ironburg Inventions Ltd. surrounding U.S. Patent No. 9,289,688 (the '688 patent").  This marks the second time that the Federal Circuit has weighed...more

Jones Day

PTAB Institutes IPR Despite Concurrent Ex Parte Reexamination

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In Thermaltake Technology Co., Ltd. et al v. Chien-Hao Chen et al, IPR2024-01230, Paper 12 (PTAB Feb. 19, 2025), the PTAB granted the institution of inter partes review (“IPR”) while an ex parte reexamination (“EPR”) on the...more

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