IPR

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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 that estoppel stemming from inter partes reviews (IPR) applies only to grounds based on patents and printed publications—not to patents or printed publications evidencing other grounds that could not have been raised during the IPR.Continue Reading A Line in the Sand: Federal Circuit Bounds IPR Estoppel in Ingenico v. IOENGINE

On March 26, 2025, the U.S. Patent and Trademark Office released a memorandum introducing a new interim process for handling institution decisions in inter partes reviews (IPRs) and post-grant reviews (PGRs). The Office just released a set of FAQs addressing questions about the memo.Continue Reading Breaking Down the Bifurcated PTAB Review Process: What the USPTO’s Recent FAQ Drop Reveals

AliveCor, Inc. v. Apple, Inc., No. 23-1512 (Fed. Cir. 2025) – On March 7, 2025, the Federal Circuit affirmed the Patent Trial and Appeal Board’s inter partes review (“IPR”) decisions invalidating all claims of three AliveCor patents. Previously, the International Trade Commission (“ITC”) had found certain Apple Watch products infringe two of the three patents. Continue Reading You Snooze, You Lose: Federal Circuit Emphasized Once Again the Importance of Preserving Issues for Appellate Review

This case addresses the application of issue preclusion in relation to the validity of three patents. In particular, this case focuses on the implications of decisions made during the dismissal of pending litigations and examines whether these decisions render judgments final, justifying the application of issue preclusion to invalidate concurrently asserted patents.Continue Reading Koss Corporation v. Bose Corporation

After ten years of litigation, the Federal Circuit found that the district court conducted an improper collateral estoppel analysis and upheld ParkerVision’s position on each of the appealed issues.[1]Continue Reading Different Evidentiary Burdens in IPR Proceedings and District Court Means No Collateral Estoppel Effect on Related Patent Claims

In Dragon Intellectual Property LLC v. Dish Network L.L.C. No. 22-1621 (Fed. Cir. May 20, 2024), the Federal Circuit clarifies the standard for “exceptional” cases under 35 U.S.C. § 285. The case concerns attorneys’ fees and the application of § 285 attorneys’ fees to inter partes review (“IPR”) proceedings, and addresses attorney liability for § 285 fee awards.Continue Reading The Federal Circuit Interprets the Application of 35 USC § 285 and Attorney’s Fees

In Ioengine, LLC v. Ingenico Inc. No. 2021-1227, 2021-1331, 2021-1332 (Fed. Cir. May 03, 2024), the case addresses the patentability/validity of three patents. In particular, this case discusses the application of the printed matter doctrine during inter partes review, the treatment of newly introduced claim constructions on appeal, and the PTAB’s anticipation and obviousness determinations.Continue Reading Interpreting the Printed Matter Doctrine in Inter Partes Review

In CyWee Group LTD. V. ZTE (USA), Inc., No. 21-1855 (Fed. Cir. 2024), ZTE filed an IPR petition against U.S. Patent No. 8,441,438 (the ’438 patent) owned by CyWee, which the Patent Trial and Appeals Board (“the Board”) instituted. LG later filed a separate IPR petition also challenging the ’438 patent and moved to join ZTE’s IPR. LG acknowledged that its IPR petition was untimely under 35 U.S.C. § 315(b) because CyWee sued LG more than a year before LG filed its petition. LG premised its request for joinder on several limitations, the most relevant of which was that LG would act only as a passive understudy and not assume an active role in the IPR unless ZTE ceased to participate in the instituted IPR.Continue Reading Navigating Revised Motions to Amend in Inter Partes Review as a Non-active, Joined Party

ParkerVision, Inc., v. Katherin K. Vidal, Under Secretary of Commerce for IP and USPTO Director No. 2022-1548, (Fed. Cir. December 15, 2023) primarily involved three topics: (1) the type of language in a patent specification that “clearly expresses” that the inventor was acting as a lexicographer, i.e., redefining a term against the term’s plain and ordinary meaning, (2) the appropriate scope of a reply brief when a patent owner introduces a claim construction for the first time in the patent owner response, and (3) the appropriate scope of a sur-reply brief to a reply brief. The Federal Circuit also engaged in a fact-specific obviousness inquiry regarding capacitor elements disclosed in the prior art.Continue Reading Federal Circuit Rules on Inventor-as-Lexicographer Definitions and the Proper Scope of Reply and Sur-Reply Briefing Following Patent Owner Responses to IPR Institution Decisions