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Silence is Not Always Golden: Equitable Estoppel in Patent Infringement Cases

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On June 9, 2025, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in Fraunhofer-Gesellschaft zur Förderung der angewandten Forschung e.V. v. Sirius XM Radio Inc., addressing the doctrine of equitable estoppel in patent litigation. The decision reversed a lower court’s ruling that had barred Fraunhofer’s claims due to its five-year delay in filing suit. While the Federal Circuit agreed that Fraunhofer’s silence was potentially misleading, it emphasized that equitable estoppel in patent infringement cases also requires a clear showing of reliance by the accused infringer. Sirius XM failed to meet that burden, making summary judgment inappropriate. Continue reading…

Federal Circuit Clarifies Provisional Rights: No Patent, No Payback

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Patent owners are granted a limited monopoly over their inventions, and with that monopoly comes a bundle of rights. These rights fall into two broad categories: exclusive rights and provisional rights. Recently, the Court of Appeals for the Federal Circuit issued a precedential opinion that clarifies the requirements for patentees to claim provisional rights: they only attach if the patent actually issues before it expires.

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The Twist? No Access, No Infringement

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Gregorini v. Apple, Inc., No. 2:20-cv-00406-SSS-JC, 2024 WL 5264949 (C.D. Cal. Nov. 25, 2024)

For a plaintiff to allege copyright infringement, they must prove two elements: (1) ownership of a valid copyright, and (2) the defendant wrongfully copied from the plaintiff’s valid copyright. To establish the second element, the plaintiff must show both that the alleged infringer actually copied the copyrighted work and that they copied a sufficiently significant amount of copyrighted material from the plaintiff’s work so that the parties’ works are substantially similar. Because both sub-parts must be proven, failure to establish either actual copying or substantial similarity is fatal to a copyright infringement claim.

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Fed Circuit: Patent Application is Prior Art Before Publication

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In a significant ruling, the Federal Circuit has clarified the status of patent applications in the realm of intellectual property law, asserting that a patent application can be considered prior art even before its publication. This decision has important implications for inventors, businesses, and the overall landscape of patent law. Understanding how a patent application functions as prior art is crucial for navigating the complexities of patentability and innovation. In this blog post, we will explore the details of this ruling, its impact on patent strategy, and what it means for the future of intellectual property rights, particularly regarding the patent application as prior art.

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I Say Yes, You Say No: PTAB Articulates Different Standards for Determining Whether a Printed Publication Was Publicly Available

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Ex parte Grillo-Lopez, Appeal No. 2018-006082 (Jan. 31, 2020)

On April 7, 2020, the PTAB designated its January decision in Ex parte Grillo-Lopez (“the Decision”) as precedential. In the Decision, the Board held that patent examination and IPR proceedings have different standards for establishing a prior art printed publication, with the petitioner in an IPR facing a higher burden of showing that a reference was publicly accessible. Having been designated as precedential, the Decision is now binding authority in all USPTO ex parte proceedings. Continue reading…