While the first half of 2023 has not brought on a wave of earth-shaking court rulings in the patent world, there are a few are worth noting:

Amgen Inc. v. Sanofi, 21-757

In May 2023, the US Supreme Court upheld the Federal Circuit’s decision in Amgen Inc v Sanofi, a patent infringement case involving patents related to antibodies binding to a natural protein. In ruling that the patent owner, Amgen, had failed to enable all the claims in their patents, the decision emphasized that patents must in explicit terms enable any person skilled in the art to fully implement the invention, and overly-broad patents covering any function are not permissible.

Enablement challenges have been more common in the life sciences field than in high-technology, but the ruling may provide encouragement for invalidity challenges argued on the basis on lack of enablement beyond life sciences.

InterDigital Technology Corporation v. Lenovo Group Limited; HP-2019-000032

In a royalty dispute between the technology research, development, and licensing firm InterDigital and Lenovo Group, the UK High Court of Justice recently ruled in March of this year for Lenovo to pay a lump sum of $138.7 million for Lenovo’s infringement of InterDigital’s standard-essential patents (SEPs) in the 3G, 4G, and 5G telecommunications realm. The figure represented the $0.175 global per-unit rate set by the court, and was about one-third of the$337 million InterDigital had been seeking, However, a follow-on decision by the High Court ordered Lenovo to pay InterDigital an additional $46.2 million for interest on the amounts that would have been paid for a global patent license beginning in 2007.

The ruling established a precedent for setting global fair, reasonable, and non-discriminatory (FRAND) royalty rates for SEPs and puts the UK courts as a leading venue for settling global SEP disputes.

The matter is not however fully, finally settled, as both parties has signaled their intent to appeal to the UK first Court of Appeal. InterDigital is expected to appeal the global FRAND rate methodology applied by the High Court, which is essentially the heart of the original dispute. Lenovo meanwhile intenst to appeal the award of royalties apportioned to its usage before the customary six-year-from-filing limitation period, as the Court ruled that Lenovo must pay for usage going back to 2007.

Ironburg Inventions Ltd. v. Valve Corp. 21-2296

In Ironburg Inventions Ltd. v. Valve Corp., the Federal Circuit addressed an important aspect of post-IPR estoppel, which determines whether certain arguments can be raised in court after being omitted from an Inter Partes Review (IPR) petition.

Ironburg had sued Valve for patent infringement, and Valve filed an IPR petition challenging the asserted patent. After a final written decision finding some, but not all, of the challenged claims unpatentable, Valve pursued invalidity grounds in the district court based on prior art flagged in a third party’s IPR petition on the same patent, filed after Valve’s own petition. Ironburg argued in the district court that Valve was estopped from raising validity arguments, and Valve was burdened to prove that it did not uncover the prior art in question even though its search was reasonably diligent.

In Ironburg, the Federal Circuit cemented the standard to apply estoppel considerations based on late-discovered prior art, the standard being “skilled searcher conducting a diligent search.” The Federal Circuit further clarified that the burden of proof in estoppel cases lies with the party seeking the estoppel (i.e. the patent owner, in this case Ironburg) rather than the opposite party.

The ruling is a reminder that patent challengers have limited opportunity to raise prior art invalidity arguments in court after a PTAB decision, reinforcing the importance of conducting a competent prior art search in preparing an IPR petition.

With new patent bills before Congress, yearly pleas to the Supreme Court for clarity on allowable subject matter, and the PTAB’s inflated power, the second half of 2023 is likely to bring more noise from patent courts.