Author name: Gary

The Federal Circuit held that inter partes review (IPR) estoppel bars only invalidity grounds based on patents or printed publications — not grounds based on physical prior-art products or systems. The ruling resolves a decade-long split among district courts and significantly limits how much challengers are foreclosed from arguing after an IPR.

The Federal Circuit reversed the PTAB’s obviousness finding against Virtek’s laser-alignment patent, holding that showing a skilled artisan had the knowledge to make a combination is insufficient for motivation to combine — there must also be a reason why they would have done so.

The Federal Circuit affirmed that importing patented medical devices for a U.S. conference fell within the 35 U.S.C. § 271(e)(1) safe harbor because the importation bore a reasonable relationship to obtaining FDA approval, even if the conference also served commercial purposes.

The Federal Circuit reversed a district court’s indefiniteness ruling on a lithium-ion battery patent, holding that two claim limitations are not contradictory—and therefore not indefinite—if they can both be satisfied simultaneously, even if one limitation makes an element optional while a narrowing limitation in the same claim makes that element mandatory.

The Federal Circuit affirmed obviousness of Pfizer’s pneumococcal vaccine patent, clarifying that the result-effective variable doctrine applies to optimize claim ranges even when the prior art does not disclose an overlapping range — expanding the scope of when routine optimization can render a claim obvious.

The Federal Circuit affirmed that Amazon failed to prove inequitable conduct against Freshub’s voice-processing patents, reiterating that the clear-and-convincing evidence standard requires proving both the materiality of a misrepresentation and specific intent to deceive the USPTO.

The Federal Circuit vacated and remanded a district court judgment in a voice-recognition/cable-TV patent dispute, holding that the district court improperly narrowed several claim terms—including ‘back channel’ and ‘centralized processing station’—to specific features described in the specification rather than construing them according to their plain and ordinary meaning as understood by a skilled artisan.

The Federal Circuit vacated the PTAB’s written description rejection of e-cigarette patent claims directed to a heater-length range, holding that in predictable arts a narrower claimed range can be adequately supported by a broader disclosed range without requiring explicit disclosure of the specific narrower range—and that prior art statements made for unrelated purposes do not automatically establish motivation to combine.

The Federal Circuit reversed the PTAB, holding that operating manuals distributed to a limited number of customers with confidentiality notices still qualify as ‘printed publications’ and prior art under § 102, because the relevant inquiry is whether interested members of the public could locate the document through reasonable diligence—not whether the document was widely distributed.

The Federal Circuit held that the statutory prohibition barring time-barred, joined IPR parties from introducing new issues into a proceeding does not apply when a patent owner files a motion to amend its claims—a joined party may oppose such a motion even if it could not have raised new issues in the merits phase, because the patent owner itself opened the door to new issues by proposing amended claims.

The Federal Circuit affirmed that a settlement agreement’s forum selection clause requiring patent disputes to be filed in Delaware federal court did not bar Abbott from filing inter partes review petitions after the agreement’s covenant-not-to-challenge period expired—because the agreement had expressly permitted IPRs during the covenant period in certain circumstances, indicating the parties understood IPR as a distinct proceeding.

The Federal Circuit affirmed the PTAB’s claim construction of ‘storage element’ based on inventor lexicography in an incorporated-by-reference patent, holding that the PTAB is not bound by a conflicting district court construction and that Intel’s reply arguments were proper because they responded to a new claim construction first raised in the patent owner’s response.

The Federal Circuit affirmed that generic drug manufacturers who carve out patented indications from their drug labels—the so-called ‘skinny label’ strategy—do not infringe method-of-use patents covering those omitted indications under the Hatch-Waxman Act, and that brand-name companies cannot use narrow method patents to extend exclusivity beyond an approved indication.

The Federal Circuit affirmed that the PTAB retains authority to issue a final written decision in an IPR or PGR even after the statutory one-year (plus extension) deadline has passed, provided no clear contrary congressional intent bars the late decision.

The Federal Circuit affirmed the PTAB’s ruling that Medtronic failed to prove Teleflex’s guide extension catheter patents unpatentable, finding that the claimed invention was conceived and reduced to practice before the critical date of the asserted prior art.

The Federal Circuit dismissed Allgenesis’s appeal from an adverse IPR decision for lack of Article III standing, holding that vague future product plans and non-appealable priority rulings do not constitute a concrete injury sufficient to invoke federal court jurisdiction.

The Federal Circuit vacated an infringement judgment in an ANDA case involving pulmonary hypertension drug patents, holding that the district court erred by construing ‘a pH of 13’ based solely on intrinsic evidence when the parties submitted competing extrinsic evidence—including textbooks explaining how chemists understand significant figures in pH values—that the court was required to consider.

The Federal Circuit upheld attorneys’ fee awards against PersonalWeb, affirming that the Kessler doctrine barred it from suing Amazon’s customers after PersonalWeb had stipulated to dismissal with prejudice of its earlier case against Amazon itself.

In a split decision, the Federal Circuit affirmed PTAB’s patentability finding for DivX’s media streaming patents, holding that Netflix forfeited its arguments by failing to present them with sufficient clarity in the IPR petition.

The Federal Circuit vacated a multi-million dollar patent damages award against Chilisin Electronics, holding that the district court abused its discretion by admitting a damages expert opinion that failed to differentiate between infringing and non-infringing products in the royalty base calculation.

The Federal Circuit partially affirmed and partially vacated PTAB’s obviousness rulings on Corephotonics dual-aperture camera patents, holding that one prior art reference was analogous on substantial evidence but remanding for the Board to explain whether a second reference meets the analogous art standard.

The Federal Circuit vacated an invalidity judgment against Finjan’s cybersecurity patents that had been based on collateral estoppel from a since-vacated case, while affirming non-infringement on claim construction grounds and excluding Finjan’s damages expert for inadequate apportionment.

The Federal Circuit held that the PTAB erred in categorically excluding expert testimony on the structure of computer-implemented means-plus-function claim limitations when the specification identifies named software protocols, clarifying a two-track framework for evaluating such claims.

The Federal Circuit affirmed PTAB’s obviousness finding for radiosurgery patents, clarifying that a reasonable expectation of success does not require an explicit separate finding and may be implicit in a well-supported motivation-to-combine analysis.