News & Analysis as of

Prosecution History Estoppel

Brooks Kushman P.C.

Restriction Requirements and Disclaimer: Lessons from Focus Products Group Int’l, LLC v. Kartri Sales Co.

Brooks Kushman P.C. on

The Federal Circuit’s recent decision in Focus Products Group Int’l, LLC v. Kartri Sales Co., 156 F.4th 1259 (Fed. Cir. 2025), serves as an important reminder that what patent applicants say and do not say during prosecution...more

Volpe Koenig

The POSITA Under BRI: The Constraint That Keeps “Broad” from Becoming “Anything”

Volpe Koenig on

Broadest Reasonable Interpretation (BRI), as applied during USPTO examination, is often described as a “broad” claim construction standard. That description is accurate as far as it goes, but it is incomplete in a way that...more

Patterson Belknap Webb & Tyler LLP

Just Because it Wasn’t Timely Raised, Doesn’t Mean the Prosecution History Wasn’t Available: Judge Liman Denies Motion for...

On February 11, 2026, District Judge Lewis J. Liman (S.D.N.Y.) denied a motion for reconsideration of portions of the Court’s claim construction order defining terms in accordance with their plain and ordinary meaning, filed...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Judge Wolson Issues Key Summary Judgment Ruling on the Eve of Trial in the Arbutus v. Moderna mRNA Vaccine and Lipid Nanoparticle...

On February 2, 2026, U.S. District Court for the Eastern District of Pennsylvania Judge Joshua D. Wolson, sitting by designation in the U.S. District Court for the District of Delaware in the Arbutus Biopharma Corporation and...more

McDermott Will & Schulte

UPC rules in first instance on file wrapper estoppel, doctrine of equivalence

On October 24, 2025, the Local Division Paris of the Unified Patent Court (UPC) issued its decision in Raccords et Plastiques Nicoll v. First Plast, dismissing claims for literal infringement and infringement by equivalence...more

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

Reissue, Reexamination, and Supplemental Examination Strategies and Insights – December 2025

In the mid-2000s, the U.S. Patent Office (USPTO) determined that reexaminations would be more consistent and legally correct if performed by a centralized set of experienced and specially trained Examiners....more

Troutman Pepper Locke

Prosecution History Disclaimer Decision Highlights Risk of Not Contesting Restriction Requirement

Troutman Pepper Locke on

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

McDermott Will & Schulte

Boss move: Disclaimer that doesn’t work can still work as a disclaimer

McDermott Will & Schulte on

The US Court of Appeals for the Federal Circuit affirmed a district court’s judgment of noninfringement and no invalidity for indefiniteness, concluding that the court correctly construed the claims and properly determined...more

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

What Spooky Surprises Are Hiding in Your Patent Portfolio?

Every October, we’re reminded that the scariest things are often the ones you don’t see coming. For patent owners, that’s true year-round. Beneath the surface of even the most impressive-looking portfolios can lurk hidden...more

McDermott Will & Schulte

No curtain call yet: Mixed verdict in patent, trademark, standing case

McDermott Will & Schulte on

The US Court of Appeals for the Federal Circuit addressed a wide array of issues in a long-running dispute over shower curtain technology. The Court provided important guidance on patent claim scope using intrinsic evidence,...more

A&O Shearman

Federal Circuit Reverses Patent and Trademark Infringement Findings and Vacates Trade Dress And Willfulness Findings

A&O Shearman on

On September 23, 2025, the Court of Appeals for the Federal Circuit (“CAFC”) issued a precedential opinion affirming in part, reversing in part, and vacating in part, decisions from the United States District Court for the...more

Fish & Richardson

The Doctrine of Equivalents in Pharmaceutical Actions

Fish & Richardson on

When a product or process does not literally infringe a patent’s claim language, the doctrine of equivalents (DOE) holds that a competitor’s product or process may still infringe if it is substantially equivalent to the...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

Proskauer - The Patent Playbook

Novo Nordisk v. Mylan: Method of Treatment Claims Must Be Aligned with Label

Method-of-treatment (“MoT”) claims can be powerful tools for pharmaceutical companies seeking to extend market exclusivity for their products after the original composition-of-matter patents expire. However, the District of...more

Morrison & Foerster LLP

Federal Circuit Pushes Back on Prosecution Laches

In October 2023, we reported on the district court decision in Sonos, Inc. v. Google LLC. The decision was notable for reviving the prosecution laches doctrine to render unenforceable a continuation patent filed 13 years...more

Morgan Lewis

Federal Circuit Applies Prosecution History Estoppel Based on Claim Cancellation

Morgan Lewis on

The US Court of Appeals for the Federal Circuit recently held that cancellation of a claim during prosecution may give rise to prosecution history estoppel, precluding the patentee from recapturing the surrendered subject...more

Knobbe Martens

Litigation Update | July 2025

Knobbe Martens on

JANSSEN PHARMACEUTICALS, INC. v. TEVA PHARMACEUTICALS USA, INC. - Before Prost, Reyna, and Taranto. Appeal from the United States District Court for the District of New Jersey. The Federal Circuit found that claims reciting a...more

Knobbe Martens

Federal Circuit Review | July 2025

Knobbe Martens on

In Janssen Pharmaceuticals, Inc. v. Teva Pharmaceuticals USA, Inc., Appeal No. 25-1228, The Federal Circuit found that claims reciting a dosing regimen with unequal loading doses were not obvious and that a presumption of...more

Sheppard, Mullin, Richter & Hampton LLP

The Push and Pull of Prosecution Estoppel: How Cancelled Claims Can Affect the Scope of Non-Amended Claims

Prosecution history estoppel may narrow the scope of a claim that was unamended during prosecution, if another closely related claim is amended or cancelled during prosecution....more

Hudnell Law Group

Federal Circuit Rejects Formalistic Shield to Prosecution History Estoppel

Hudnell Law Group on

On July 18, 2025, the U.S. Court of Appeals for the Federal Circuit reversed a $106 million jury verdict in Colibri Heart Valve LLC v. Medtronic CoreValve, LLC, No. 2023-2153, finding that Colibri’s infringement claim under...more

Womble Bond Dickinson

Reminder: “Consisting essentially of” Is U.S. Patent Claim Language Needing Interpretation

Womble Bond Dickinson on

On June 30, 2025, the Federal Circuit issued a precedential opinion in Eye Therapies v. Slayback Pharma in which the court interpreted the transition phrase “consisting essentially of” to be a closed term excluding other...more

Knobbe Martens

Cancellation of a Closely Related Claim During Prosecution Can Trigger Prosecution History Estoppel

Knobbe Martens on

COLIBRI HEART VALVE LLC v. MEDTRONIC COREVALVE, LLC - Before Taranto, Hughes, and Stoll. Appeal from the United States District Court for the Central District of California. The Federal Circuit reversed a $106 million...more

Knobbe Martens

Not So Cozy: Prosecution History Disclaimer for Design Patents

Knobbe Martens on

TOP BRAND LLC v. COZY COMFORT CO. LLC - Before Dyk, Reyna, and Stark. Appeal from the United States District Court for the District of Arizona. Summary: Arguments presented during prosecution of a design-patent application...more

Cooley LLP

Federal Circuit Strengthens Prosecution History Estoppel Principles in Colibri Heart Valve LLC v. Medtronic CoreValve, LLC

Cooley LLP on

On July 18, 2025, the US Court of Appeals for the Federal Circuit reversed a lower court ruling in Colibri Heart Valve LLC v. Medtronic CoreValve, LLC, holding that prosecution history estoppel barred the patentees’ doctrine...more

76 Results
 / 
View per page
Page: of 4

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
- hide
- hide