United States of America

Estoppel Estopped?

May 13 2025

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 district court litigation. While some district courts had earlier found estoppel to have broad effect, and thus prevent challenges based on products on sale or public use, the Federal Circuit’s decision means that estoppel is limited only to challenges based on patents or printed publications, opening the door to use patents and publications to provide evidence of what subject matter was “on sale” or “in public use.”

Detailed Guidance on New USPTO IDS Size Fees

Apr 04 2025

On 19 January 2025 the USPTO enacted a new Information Disclosure Statement (IDS) size fee. A new IDS size fee, codified under 37 C.F.R. 1.17(v), is accrued for any pending application when the number of cumulative references cited by the applicant exceeds each of 50, 100, and 200 references (hereinafter, “IDS Size Fee”).

Patent Trial and Appeal Board Designates “Informative” Decision Regarding Claim Construction

Mar 20 2025

On 20 March 2025, the Patent Trial and Appeal Board (PTAB) designated as “Informative” the majority opinion in the Decision Denying Institution in IPR2024-00952, a decision originally entered on December 13, 2024.

Federal Circuit Broadens ITC Economic Prong

Mar 06 2025

In the recent decision of Lashify, Inc. v. International Trade Commission, the United States Court of Appeals for the Federal Circuit rejected the long-standing approach concerning the interpretation of the domestic-industry requirement under Section 337 of the Tariff Act of 1930. The complainant, an American company importing eyelash extensions from international manufacturers, which alleged that certain other importers were infringing on its patents.

Federal Circuit Clarifies the “Dispositive” Requirement of the Foreign Antisuit-Injunction Framework

Nov 11 2024

On 24 October 2024, the Federal Circuit issued a precedential decision in Telefonaktiebolaget LM Ericsson v. Lenovo (U.S.), Inc.¹ concluding that the threshold “dispositive” requirement of the foreign-antisuit-injunction framework can be met if a foreign antisuit injunction would resolve a foreign injunction, even if it would not resolve the entire foreign proceeding. The Federal Circuit also clarified that whether a party satisfies the good-faith-negotiating obligation of a fair, reasonable, and non-discriminatory (FRAND) commitment is dispositive of the party’s ability to pursue foreign injunctions.

Federal Circuit Confirms Application of the Pre-AIA on-Sale bar to AIA Patents

Aug 28 2024

On August 12, 2024, the United States Federal Circuit held that the enactment of the America Invents Act did not constitute a foundational change in the on-sale bar provision under 35 U.S.C. § 102(a)(1), finding the sale of products made using a secret process triggers the on-sale bar under pre-AIA precedent.¹ The Court therefore affirmed the International Trade Commission’s invalidation of Celanese’s patents because Celanese sold products made using the patented process more than one year before the effective filing dates.²

Federal Circuit Clarifies Scope of Estoppel Provision and Provides Guidance on “Patentably Distinct” Claims

Jul 30 2024

On 26 July 2024, the Federal Circuit entered its decision in SoftView LLC, v. Apple Inc.¹ holding that patent owner estoppel² applies to newly presented and amended claims, but does not apply to issued claims. The Federal Circuit also confirmed that patent owner estoppel prevents a patent applicant from later obtaining a patent claim that is “not patentably distinct” from a finally refused or cancelled claim, but that patent owner estoppel does not apply to defending issued, unamended claims.

US$18.3 million Wearable Blanket Infringement Award Stands Despite Newly Announced Design Patent Standard

Jul 08 2024

An Arizona federal judge denied Top Brand LLC’s motion for a new trial following an US$18.3 million jury award to Cozy Comfort Co. for infringement of two Cozy Comfort design patents and the “Comfy” trademarks used in connection with “The Comfy” hooded wearable blanket, which was featured on the television program “Shark Tank”.

US Supreme Court Rules No Three-Year Limit for Copyright Damages

May 20 2024

On 9 May 2024, the US Supreme Court (the Court) held that there is no three-year limit on monetary damages for timely filed copyright infringement claims. The 6–3 decision resolves a circuit split, opens the doors to larger potential damages awards for plaintiffs, is likely to lead to increased litigation over older infringements, and leaves open the question of whether the “discovery rule” applies to copyright infringement claims. Warner Chappell Music, Inc. v. Nealy, No. 22-1078, 601 U.S. – (2024).

USPTO Considering Changes to Enforceability of Patents Subject to a Terminal Disclaimer

May 15 2024

On 10 May 2024, the United States Patent and Trademark Office (USPTO) published a Notice of Proposed Rulemaking aimed at changing the current practices surrounding terminal disclaimers. The proposed change could have substantial effects on the enforceability of patents that are subject to a terminal disclaimer.

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