Insights

Washington, D.C.—April 10, 2023: On April 7, 2023, the Federal Circuit affirmed three IPR decisions obtained by Crowell invalidating every asserted claim of three patents owned by Paice LLC and the Abell Foundation that were asserted against BMW: U.S. Patent Nos. 7,104,347; 7,237,634; and 8,630,761.

Washington – January 11, 2023: Crowell & Moring has published Litigation Forecast 2023: What Corporate Counsel Need to Know for the Coming Year. The 11th-annual Litigation Forecast focuses on trends in litigation that are playing out in specific jurisdictions around the globe. 

Washington, D.C. – January 13, 2015: Crowell & Moring LLP is pleased to announce the publication of its third annual "Litigation Forecast: What Corporate Counsel Need to Know in the Coming Year," and the introduction of its first-ever "Regulatory Forecast 2015: What Corporate Counsel Need to Know in the Coming Year."

Acting USPTO Director Coke Morgan Stewart issued a Director Discretionary decision on June 6, 2025, in iRhythm Technologies Inc. v. Welch Allyn Inc., IPR2025-00363, -00374, -00376, -00377, and -00378 Paper 10 (PTAB June 6, 2025). This decision granted Patent Owner’s request for discretionary denials of institution in five related IPR challenges.  It follows several recent Director decisions that have all discretionarily denied petitions for reasons other than the substantive merits of the challenges. However, this decision is the first one that relies upon “[s]ettled expectations of the parties, such as the length of time the claims have been in force,” a new consideration that was first articulated in the USPTO’s “Interim Process for PTAB Workload Management” memorandum (“Interim Memo”) dated March 26, 2025.

Acting USPTO Director Coke Morgan Stewart recently issued a Director Review decision on May 19, 2025, in Ecto World, LLC v. RAI Strategic Holdings, Inc, IPR2024-01280, Paper 13 (PTAB May 19, 2025), that was subsequently designated as precedential by the Patent Trial and Appeal Board (PTAB). The decision seeks to eliminate inconsistencies amongst PTAB panels in using its discretion to deny institution under 35 U.S.C. § 325(d). 

As part of the 2012 America Invents Act, statutory estoppel was included to balance the interests of patent owners and patent challengers following an inter partes review (“IPR”).  Estoppel prevents an IPR petitioner from later asserting in court that a claim “is invalid on any ground that the petitioner raised or reasonably could have raised” during the IPR.  35 U.S.C. § 315(e)(2).  As applied, estoppel prevents petitioners from later relying in district court or in ITC proceedings on most patents or printed publications – the limited bases upon which petitioner can rely in an IPR.  But a question remained, and contradictory district court decisions arose, as to whether petitioners would be estopped from relying on a prior art commercial product (known as “device art,” which could not itself have been raised in the IPR) even if a printed publication describing the product (i.e. a patent or technical manual) was available and presumably could have been raised. 

Washington, D.C.-based partners, Terry Rea, of Crowell & Moring's Intellectual Property Group, and Keith J. Harrison, of the firm's Labor & Employment and Litigation groups, weigh in on two important cases in the life sciences arena. Harrison discusses Teva Pharmaceuticals USA, Inc.'s challenge of a California appellate decision that a generic-drug manufacturer can be held liable for failing to warn consumers of the side effects listed on the equivalent brand-name drug, which may potentially be taken up by the U.S. Supreme Court. "This is going to be a case that is going to further define the scope of federal preemption," Harrison said. Additionally, Rea talks about the Cuozzo Speed Technologies LLC suit, which argues that the Patent Trial and Appeal Board uses the incorrect standard during America Invents Act (AIA) proceedings, making it difficult for inventors to retain their patents. "Everybody is going to be very, very careful how they handle this [case]," Rea said of the suit, which may upend new IPR standards.

This article heralds an exciting win for the Washington-D.C. based members of Crowell & Moring's Intellectual Property Group. A Virginia federal jury awarded the firm's client, LifeNet, nearly $35 million in damages for LifeCell Corp.'s infringement of a patent improving the preservation of bone and soft-tissue grafts, rejecting LifeCell's invalidity defenses. News of this victory was also highlighted in "Law360's Weekly Verdict: Legal Lions & Lambs," found here.

Washington, D.C.-based partner and chair of the firm's Intellectual Property Group, Mark Supko tells Law360 in their "Practice Leader Q&A" series about areas of the intellectual property industry that he thinks need to be reformed, and about a good life lesson learned when he was just beginning his legal career.