The Federal Circuit’s recent decision last week in Inland Diamond Prods. Co. v. Cherry Optical Inc., offers an important reminder for patent litigators: a PTAB’s factual finding in an inter partes review (IPR) does not automatically bind a district court. The case underscores that issue preclusion has clear boundaries when different forums apply different standards of proof.
Federal Circuit Lifts § 101 Barrier on Smart Dumbbells
On August 11, 2025, the Federal Circuit reversed the District of Utah’s ruling that all but one of the claims in PowerBlock Holdings, Inc.’s U.S. Patent No. 7,578,771 were invalid under 35 U.S.C. § 101. PowerBlock Holdings, Inc., v. iFit, Inc. (“Appellate Op.”). In September 2023, the District Court found all but claim 19 failed the Alice test as they did not “add significantly more than the abstract idea of the end-result of an automated sectorized dumbbell. PowerBlock Holdings, Inc. v. iFit, Inc., 2023 WL 6377781, at *7 (D. Utah Sept. 29, 2023) (“Trial Op.”). The claims at issue are generally directed to an adjustable dumbbell system that uses an electric motor to couple additional weights to the dumbbell—allowing the user to increase or decrease the weight automatically. On appeal, the Federal Circuit reviewed the matter de novo.
Federal Circuit Reverses $4.7M Verdict in Labcorp v. QIAGEN: Claim Scope and Doctrine of Equivalents in the Crosshairs
The Federal Circuit recently reversed a $4.7M verdict in a patent lawsuit involving two patents concerning next-generation sequencing methods—U.S. Patent Nos. 10,017,810 and 10,450,597. Both patents concern DNA preparation using different types of primers: “target-specific primers” that bind to regions of interest in the genome and other primers or adaptors
PTO Defends its Recent Policy Changes Regarding Discretionary Denials
In the past few months, the U.S. Patent and Trademark Office (“PTO”) Acting Director has made substantial changes to the process for, and factors considered in, exercising discretion to deny institution of an inter partes review (“IPR”) petition. We have discussed these changes and recent decisions in prior blogs. Now, the PTO is facing legal challenges stemming from these policy changes. In one pertinent example, SAP America, Inc. filed a Petition for Writ of Mandamus to the Federal Circuit resulting from the PTO’s discretionary denial of its IPR petition, challenging the PTO Acting Director’s authority to enforce these new policies.
Federal Circuit Vacates $300 Million Verdict Against Apple, Orders Third Trial in LTE Patent Dispute
In a pivotal ruling for patent damages and standard-essential patent (SEP) litigation, the Federal Circuit vacated a $300 million award against Apple in a long-standing dispute with Optis Cellular Technology, LLC. See Optis Cellular Tech., LLC v. Apple Inc. (“Op.”). The Federal Circuit sided with Apple on multiple fronts—vacating the damages and infringement findings, reversing § 101 findings on the claims of one of Optis’s patents, and reversing a finding that another patent did not invoke 35 USC § 112 ¶6 (The patent at issue was issued pre-AIA so §112(f) is referred to as 112 ¶ 6 as in the original statute language). The Court also affirmed claim construction of certain terms and held the lower court abused its discretion under Federal Rules of Evidence 403 by admitting certain damages evidence and testimony from Optis.
Eyes Open to the Past: Federal Circuit Holds Prosecution History Is Claim Construction Evidence
The Federal Circuit’s decision in Eye Therapies, LLC v. Slayback Pharma, LLC provides further insight into the tools available for patent claim construction. The Federal Circuit had previously held that a patent’s specification can evidence that the patentee intended for a term in the patent claims to have a different
AI, Algorithms and Abstract Ideas: Federal Circuit Reinforces Limits in Recentive v. Fox
In April, the Federal Circuit issued a significant patent law ruling involving artificial intelligence. In Recentive Analytics, Inc. v. Fox Corp, the Court addressed a core question facing many AI-driven businesses: When are solutions applying machine learning to real-world problems inventive and patentable? The Federal Circuit affirmed the trial court’s dismissal of the underlying case at the pleading stage under § 101 and held that applying generic machine learning models to scheduling and programming tasks—without disclosing any technological advances to the underlying machine learning techniques—failed to meet the eligibility standards under 35 U.S.C. § 101.
EcoFactor v. Google: The Federal Circuit Clarifies Damages Expert Admissibility
Admissibility standards for patent damages experts has come under scrutiny. Previously, we highlighted the EcoFactor v. Google case regarding Google’s petition for rehearing en banc to address the admissibility of EcoFactor’s damages expert and the parties’ oral argument before the Court. On May 21, 2025, the Federal Circuit issued an 8-2 decision, ordering a new damages trial and overturned the $20 million verdict against Google. The Court found that the district court committed reversible error by allowing EcoFactor’s damages expert to testify at trial.
Value and Risk of Overlapping Intellectual Property Protections
A well-orchestrated intellectual property strategy requires carefully and thoughtfully leveraging copyright, trademark, and patent laws, as highlighted by a recent decision handed down by the United Sates Court of Appeals for the Federal Circuit: CeramTec GMBH v. CoorsTek Bioceramics LLC.
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 in patents or printed publications? The Court answered with a resounding “no.” See Ingenico Inc. v. IOENGINE (“Op.”). While such systems may qualify as prior art under 35 U.S.C. §§ 102 or 103, the Court reaffirmed that “Congress excluded [them] in IPR proceedings.” Id. at 13.