We previously reported on the risks that an inter partes review (IPR) petitioner undertakes when advancing a broad claim construction, e.g., one that the patent owner is advancing but that the petitioner is resisting in a parallel district court case. See PTAB Panels...
The Federal Circuit recently clarified language in pre-AIA 35 U.S.C. § 102(a) and (e) such that prior work by a subset of inventors of a later application may be available as prior art to that later application. Those provisions establish as prior art matter that was...
In Rex Medical, L.P. v. Intuitive Surgical, Inc., Intuitive Surgical Operations, Inc., Intuitive Surgical Holdings, LLC, Nos. 2024-1072, 2024-1125 (Fed. Cir. Oct. 2, 2025), the Federal Circuit affirmed the decision of the U.S. District Court for the District of...
The United States Court of Appeals for the Federal Circuit (“Federal Circuit”) recently issued an opinion in the case of Google LLC v. Sonos, Inc., Appeal No. 2024-1097 (August 28, 2025) (nonprecedential) regarding prosecution laches. The opinion did not address the...
In Powerblock Holdings, Inc. v. IFIT, Inc., the Federal Circuit recently analyzed a straightforward mechanical invention under 35 U.S.C. § 101 and clarified the analysis that should be used when a § 101 challenge to a claim is raised. Powerblock Holdings, Inc. sued...
In Agilent Technologies, Inc. v. Synthego Corp., No. 2023-2186 (Fed. Cir. June 11, 2025), the Federal Circuit affirmed the Patent Trial and Appeal Board’s (PTAB) decisions that invalidated all claims of two CRISPR-related patents owned by Agilent Technologies, Inc....
In an 8-2 en banc ruling, the Federal Circuit reversed the original panel’s ruling, holding that the district court abused its discretion in failing to exclude damages expert testimony and reversing the district court’s denial of a motion for new trial on damages. ...
In CQV Co. Ltd. v. Merck Patent GmbH, No. 23-1027 (Fed. Cir. March 10, 2025), the Federal Circuit vacated and remanded the Patent Trial and Appeal Board’s (PTAB) decision that upheld the validity of Merck Patent GmbH’s patent in a post-grant review (PGR) proceedings....
The Federal Circuit recently held that the written description requirement extends to the limiting preamble of a Jepson claim. In In re Xencor, Inc., Appel No. 2024-1870 (Fed. Cir. Mar. 13, 2025), the court affirmed the PTO’s written description rejections of a claim...
Question: Whether a prior final written decision of a Patent Trial and Appeal Board on the unpatentability of certain claims provides collateral estoppel to a district court in deciding the patentability of different but similar claims if the differences between the...