Success Stories
USPTO Director Squires De-institutes IPR After Post-Institution Patent Claim Disclaimer
Kevin Adams, Robert D. Keeler, Safet Metjahic and Kenneth J. SheehanU.S. Patent and Trademark Office Director John Squires vacated institution of inter partes review proceeding IPR2025-01047 on Tuesday, finding that efficiency considerations prevailed after patent owner National Steel Car Limited disclaimed one independent claim, that formed the basis of the Patent Trial and Appeal Board (PTAB) institution decision, as well as the claims depending from the disclaimed independent claim. Five independent claims and their dependent claims remain in the patent and are being asserted in a corresponding infringement action in the District of Delaware.
The Legal Basis: Disclaimed Claims Are Treated as If They Never ExistedThe order noted that under Federal Circuit precedent, once claims are disclaimed, “the patent is viewed as though the disclaimed claims had never existed in the patent.” “Under these circumstances,” Squires wrote, “maintaining this IPR is an inefficient use of Office resources.” The order therefore vacated the institution decision and denied institution.
Why This Decision Matters: Post-Institution Disclaimer as a De-Institution ToolPrior to Tuesday’s decision, post-institution disclaimer had not been viewed as an effective tool for obtaining de-institution of an IPR. The Director’s order shows that under his leadership, post-institution disclaimer will be considered as part of discretionary considerations and opens up a new avenue for patent owners.
Background: PTAB Institution & the Delaware Infringement ActionIn December 2025, the PTAB found a reasonable likelihood that petitioner FreightCar America, Inc. would prevail regarding independent claim 24 in U.S. Patent No. 8,132,515. However, the PTAB “questioned whether” or stated that FreightCar America “does not appear to show” unpatentability for the other challenged independent claims (claims 1, 7, 18, 20, and 32) and related dependent claims.
After institution, FreightCar America requested a stay of proceedings in the corresponding Delaware infringement action. That stay was denied in March, citing the institution decision and characterizing the PTAB’s comments as a “strong hint” and finding that there was “a rare situation where in granting review . . . the PTAB seemed to go out of its way to communicate that aside from one asserted claim . . .the PTAB did not think there was a reasonable likelihood that the remainder of the patent’s claims would ultimately be found invalid.”
National Steel Car Counsel Comments on DecisionRobert Keeler, Ice Miller counsel for National Steel Car in the IPR and corresponding district court litigation, commented “this is a very positive development for patent owners. National Steel Car believed in the patentability of all its claims and so the decision to disclaim any claims was not made lightly. Ultimately, however, that decision was made to help ensure the infringement case moved forward. Not only was the disclaimer critical to the de-institution of the IPR, it also factored into the District Court decision not to stay the infringement action.”
Patents & Cases at IssueThe patent at issue in district court and at the PTAB are:
U.S. Patent No. 8,132,515, which is the subject of IPR2025-01047 at the PTAB; U.S. Patent No. 8,166,892, which is the subject of IPR2025-01046 at the PTAB. Counsel of RecordNational Steel Car is represented at the PTAB and in the district court case by Robert Keeler, Safet Metjahic, Ken Sheehan, and Kevin Adams of Ice Miller LLP. National Steel Car is also represented by Andrew Russell, Emily DiBenedetto, and Lindsey Gellar of Shaw Keller LLP in the district court case.
FreightCar America is represented at the PTAB by Philip Nelson, Ted Cannon, and Justin Gillett of Knobbe Martens Olson & Bear. FreightCar America is represented in the district court by Brian Horne, Sean Murray, and Justin Gillett of Knobbe Martens Olson & Bear, and by John C. Phillips, Jr. and David Bilson of Phillips, McLaughlin & Hall, P.A.
The cases are FreightCar America, Inc. v. National Steel Car Limited, case number IPR2025-01047, at the Patent Trial and Appeal Board, and National Steel Car Limited v. FreightCar America, Inc. et al., case number 1:24-cv-00594, in the U.S. District Court for the District of Delaware.
Ice Miller Helps TippingPoint Biosciences Raise $4.5 Million Seed Financing to Advance Epigenetic Drug Discovery in Pediatric Brain Cancer
Fabian M. Koenigbauer and Mai ZymarisIce Miller client TippingPoint Biosciences has announced the closing of an oversubscribed $4.5 million seed financing to advance its platform targeting disease-specific epigenetic protein interfaces. The Ice Miller team led by partners Mai Zymaris and Fabian Koenigbauer served as TippingPoint Biosciences’ intellectual property transactions counsel.
The round was led by SOSV and LKS Fund, with participation from Sazze Partners, Freeflow Ventures, StoryHouse Ventures, Sontag Innovation Fund, American Cancer Society BrightEdge, XEIA, and WeCAN. The financing will support the continued development of TippingPoint’s drug discovery platform, which is designed to recreate disease specific chromatin environments and identify highly selective biological targets.
Co-founded and led by Laura Hsieh, Ph.D., and Geeta Narlikar, Ph.D., the company is pursuing a differentiated approach to addressing challenges that have historically limited epigenetic therapies—particularly the difficulty of targeting mechanisms unique to diseased cells without affecting healthy tissue.
TippingPoint’s initial focus is Diffuse Intrinsic Pontine Glioma (DIPG), an aggressive pediatric brainstem tumor with limited treatment options. The seed financing is expected to support proof-of-concept studies in DIPG models, while also enabling expansion of the company’s broader platform into additional disease areas driven by chromatin dysfunction.
Ice Miller’s Life Sciences practice group has extensive experience working with biotechnology companies to help them with seed-stage funding, intellectual property procurement and counseling, and licensing and strategic alliances. If you need guidance on any life sciences matter, our team is here to help.
Ice Miller Secures Federal Circuit Win Affirming Patent Invalidity in Food Processing Technology Case
Jenny R. Buchheit, Lesley McCall Grossberg, T. Earl LeVere and Kenneth J. SheehanIce Miller secured a significant appellate victory for its clients, Elea Vertriebs- und Vermarktungsgesellschaft mbH and Food Physics LLC, when the United States Court of Appeals for the Federal Circuit affirmed the invalidity of asserted patent claims in J.R. Simplot Co. v. McCain Foods USA, Inc., Fed. Cir. No. 24 1845, on appeal from the District of Idaho (No. 1:16 cv 449).
The dispute involved allegations of infringement of a patent directed to pre cooking treatment processes for vegetables. The District Court had granted summary judgment of invalidity on multiple grounds. On appeal, the Federal Circuit affirmed the judgment on the specific invalidity theory advanced by Ice Miller—without needing to reach the alternative bases—delivering a clear and decisive win for Elea and Food Physics.
In its per curiam decision, the Federal Circuit held that the asserted claims did not meet the statutory requirements for patent validity. By adopting the core argument presented on appeal, the ruling represents a clean and principled confirmation of the District Court’s decision.
This ruling provides meaningful guidance for innovators in the food processing sector. Patent rights must comply with statutory standards, and overly broad or insufficiently supported claims should not be used to obstruct technological advancement. This decision reinforces those standards and protects companies like Elea and Food Physics, which continue to invest in safe, efficient food processing technologies.
Ice Miller proudly represented the third-party defendant appellees in the appeal. Partner Lesley Grossberg argued the case, supported by a cross office team including partners Earl LeVere and Ken Sheehan and senior counsel Jenny Buchheit.
Ice Miller Helps Client Secure a Strategic Collaboration with Johnson & Johnson
TaeSoo Sean Kim, Robert D. Keeler, Fabian M. Koenigbauer, Brigid Sharek, Kelly Xia and Mai ZymarisIce Miller’s South Korea-based client Prazer Therapeutics Inc. (Prazer) has entered into a strategic collaboration and license agreement with Johnson & Johnson (J&J) to advance the discovery of novel therapeutics for neurodegenerative diseases. This partnership follows Prazer’s Series B financing led earlier this year by J&J, through its corporate venture capital organization, Johnson & Johnson Innovation (JJDC, Inc.).
Prazer is a biotechnology company developing orally available, brain-penetrant targeted protein degraders with a novel approach to targeted protein degradation (TPD). Their proprietary SPiDEM™ platform is engineered to identify new degradation mechanisms and address limitations associated with traditional bivalent and monovalent protein degraders. This new collaboration with J&J will help Prazer leverage their innovation platform and advance targeted protein degradation to accelerate the discovery of new potential TPD medicines for patients.
The Ice Miller deal team was led by Business group partner TaeSoo Sean Kim and included partner Mai Zymaris and law clerk Kelly Xia (not yet admitted to practice in any jurisdiction). Intellectual Property partners Fabian Koenigbauer and Robert Keeler also provided key assistance. Further assistance was provided by associate Brigid Sharek.
Ice Miller’s Life Sciences practice group has extensive experience working with biotechnology companies to help them with seed-stage funding, intellectual property procurement and counseling, and licensing and strategic alliances.
Ice Miller Helps Colossal Biosciences Secure $200 Million in Series C Financing to “De-Extinct” the Woolly Mammoth, Thylacine, and Dodo
Andrew Baraniak, Ph.D., Josh Borean, Dann Bruno, TaeSoo Sean Kim and Fabian M. KoenigbauerIce Miller served as co-counsel in the representation of client Colossal Biosciences, a leading-edge genetic engineering company, in the announcement of its $200 million Series C financing by TWG Global, a diversified holding company with operating businesses and investments in technology/AI, financial services, private lending and sports and media. Colossal will leverage this latest infusion of capital to continue to advance its genetic engineering technologies while pioneering new revolutionary software, wetware and hardware solutions, which have applications beyond de-extinction including species preservation and human healthcare. Since launching in September 2021, Colossal has raised $435M in total funding. This latest round of capital places the company at a $10.2 billion valuation. The Ice Miller team was led by TaeSoo Sean Kim, with support from Dann Bruno, Josh Borean, and Simone Park. Intellectual Property counsel was provided by Fabian Koenigbauer and Andrew Baraniak.
To learn more about this novel and impactful endeavor, please review Colossal’s press release, which goes into great detail regarding its strides in the scientific breakthroughs toward “de-extinction,” or bringing back extinct species like the woolly mammoth, thylacine and the dodo.
As noted in Colossal’s release, “This funding will grow our team, support new technology development, expand our de-extinction species list, while continuing to allow us to carry forth our mission to make extinction a thing of the past.”
Ice Miller Client Schrödinger Enters into License and Collaboration Agreement with Novartis
Anthony P. Aaron, Daniel Corsaro, Grace Dahm, Pierce Haesung Han, Nancy Kartos, TaeSoo Sean Kim, Fabian M. Koenigbauer, Ethan E. Rii and Mai ZymarisIce Miller client Schrödinger, Inc. (NASDAQ: SDGR) today announced a research collaboration and license agreement with Novartis to advance multiple development candidates into Novartis’s portfolio for further development. The companies also announced an expanded three-year software agreement that substantially increases Novartis's access to Schrödinger’s computational predictive modeling technology and enterprise informatics platform.
The full press release can be found here.
As part of the agreement, Schrödinger will receive $150 million upfront payment, with eligibility to receive up to approximately $2.3 billion in milestone payments plus royalties on each product commercialized by Novartis.
Ice Miller’s rapidly growing Life Sciences team has been counseling Schrödinger since 2022 and continues to support the company in their growth utilizing its computational predictive modeling technology for drug discovery. The Ice Miller deal team was led by Business Group Partner TaeSoo Sean Kim and included Mai Zymaris and Simone Park, with additional deal support from Nancy Kartos and Xuan Feng. Specialist support was provided by Anthony Aaron (Regulatory/Antitrust), Grace Dahm (Regulatory/Antitrust), Daniel Corsaro (Tax), Pierce Han (SEC/Capital Markets), Fabian Koenigbauer (IP), and Ethan Rii (Healthcare).
Ice Miller Supports Client on “Colossal” Biosciences Advancement
Andrew Baraniak, Ph.D., Weihong Hsing, Ph.D., TaeSoo Sean Kim, Fabian M. Koenigbauer, Jacqueline M. Lesser and Safet MetjahicA recent scientific breakthrough by an Ice Miller client has garnered headlines and captured the public’s imagination. Colossal Biosciences (Colossal), the world’s first de-extinction company, based in Texas, has pushed science a giant step forward through their success in creating a global-first iPSC (induced pluripotent stem cells) from Asian elephant, the closest living cousin of the now extinct wooly mammoth. These iPSC cells can be edited to give mammoth-like traits and allow for the creation of eggs, sperm, and embryos that could then be implanted into an artificial womb to generate an animal. This iPSC advancement could also ultimately help scientists understand Asian elephant’s resistance to cancer and could provide deeper insight into the biology of the pachyderm—with a goal of one day creating a species resembling the wooly mammoth.
Founded in 2021, Colossal is primarily focused on conservation efforts and de-extinction, a process of gene engineering technology that rebuilds and reintroduces the DNA of extinct animals once inhabiting the earth. Through this work, Colossal is heavily involved in environmental research and sustainability, driven toward reintroducing and reinvigorating a lost ancestry and climate into our biosphere.
Ice Miller’s equally dedicated team has supported Colossal with its patent prosecution and counseling work since 2022, including filing patent applications for technologies leading to the iPSC breakthrough.
Ice Miller Partner TaeSoo Sean Kim spearheads the Life Sciences Patent Prosecution and IP Licensing team that represents Colossal, with Partner Fabian Koenigbauer and Senior Patent Agent Andrew Baraniak serving as co-leads on the efforts. The client team is further supported by Weihong Hsing, Safet Metjahic, Jacqueline Lesser, and Michael Graham.
