Federal Circuit

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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.

The Supreme Court recently declined to review a Federal Circuit decision that could have significant implications for patent owners that rely on the Amazon Patent Evaluation Express (“APEX”) program.  

The APEX program offers a streamlined way for utility patent owners to request removal of allegedly infringing product listings on Amazon.com, without filing a suit in district court. To initiate the process, the patent owner identifies up to 20 product listings that allegedly infringe one claim of a patent. Amazon then notifies the sellers, who may (1) agree to an independent infringement analysis by a neutral third party, (2) engage with the patent owner directly to resolve the dispute, (3) file a declaratory judgment action in U.S. district court, or (4) do nothing—at which point Amazon removes the product listings.

The Federal Circuit issued a precedential opinion on March 4, 2025, that serves as valuable guidance for product-by-process claims, particularly in the context of inherency in claim construction. In Restem, LLC v. Jadi Cell, LLC, the Court affirmed the Patent Trial and Appeal Board’s inter partes review final written decision in favor of the patent owner, Jadi Cell, LLC, upholding claims in U.S. Patent No. 9,803,176 (the “ ’176 Patent”) directed to stem cells derived from umbilical cord subepithelial layer (“SL”) tissue with specific cell marker expressions (“Claimed Cells”).

Mirror Worlds Technologies, LLC (“Mirror Worlds”) sued Meta Platforms, Inc. (“Meta”)—formerly Facebook, Inc.—in the Southern District of New York for patent infringement. The lawsuit involved three patents related to storing, organizing, and presenting data in time-ordered streams. These patents purportedly introduced a unique method for automatically storing documents in chronological order with timestamps. Mirror Worlds accused several Facebook features, including the News Feed, Timeline, and Activity Log, of infringing these patents.

Patent eligibility under 35 U.S.C. § 101 remains one of the most hotly contested and unpredictable areas of U.S. patent law. In the years following the Supreme Court’s landmark decisions in Alice Corp. v. CLS Bank Int’l (2014) and Mayo Collaborative Services v. Prometheus Laboratories, Inc. (2012), lower courts, the USPTO, and the Federal Circuit have wrestled with the proper application of the two-step framework for determining whether an invention is directed to an abstract idea, law of nature, or natural phenomenon—and, if so, whether it includes an inventive concept sufficient to transform it into patent-eligible subject matter.

In today’s rapidly evolving business landscape, mergers and acquisitions (“M&A”) remain a common strategic priority for companies aiming to grow, innovate, or strengthen their market position. However, the complexity of these transactions necessitates meticulous preparation and due diligence. Patent due diligence is a critical component of the intellectual property (“IP”) due diligence process in M&A deals, particularly for tech centric businesses. Overlooking this step can lead to substantial legal and financial repercussions post-transaction.

For anyone following the evolving admissibility standards for expert opinions relating to patent damages, the EcoFactor v. Google case is one to watch. In December 2024, the Federal Circuit granted Google’s petition for rehearing en banc to address the effect of amended Federal Rule of Evidence 702 and Daubert v. Merrell Dow Pharmaceuticals as they relate to admissibility of damages expert testimony—particularly when a per-unit royalty rate is derived from three allegedly comparable lump-sum licenses.

As generative artificial intelligence (AI) continues to transform industries, its impact on patent law is raising critical legal questions. From the recognition of AI as an inventor and potential infringement risks posed by the AI-generated outputs to the use of AI in patent validity challenges, the legal landscape is rapidly evolving. This article explores how generative AI is reshaping patent litigation, including the legal implications for inventorship, infringement and validity.

A recent precedential decision by the Federal Circuit in Apple Inc v. Gesture Technology Partners, LLC, decided on March 4, 2025, has affirmed the Patent And Trial Appeal Board’s inter partes review (IPR) mixed ruling on appeal. The IPR relates to U.S. Patent No. 7,933,431 titled “Camera Based Sensing in Handheld, Mobile, Gaming, or Other Devices,” issued to Gesture Technology Partners, LLC (“GTP”). The Board’s final written decision had found all claims unpatentable, except claims 11 and 13. Apple appealed as to claims 11 and 13 and GTP cross-appealed as to the remaining claims. This blog post gives an overview of the recent decision and provides some reminders and takeaways for litigation and IPR counsel-alike.