Author name: Gary

Federal Circuit, Patent Subject Matter Eligibility

Yu v. Apple — Federal Circuit Holds Dual-Camera Patent Claims Directed to Abstract Idea

The Federal Circuit affirmed that Yu’s patent on a digital camera using two lenses and two image sensors to produce an enhanced digital image was patent-ineligible under § 101 — holding the claims were directed to the abstract idea of ‘taking two pictures and using one to enhance the other’ even though the claims recited physical camera components.

Federal Circuit, Patent Subject Matter Eligibility

In re Board of Trustees of the Leland Stanford Junior University — Federal Circuit Holds Haplotype Phasing Mathematical Algorithm Is Patent Ineligible Under § 101

The Federal Circuit affirmed that Stanford’s patent claims directed to a computational method for haplotype phasing — determining which genetic variants are inherited together on each chromosome — were patent ineligible as abstract mathematical calculations implemented on generic computer hardware.

Federal Circuit, Utility Patent

Edgewell Personal Care Brands, LLC v. Munchkin, Inc. — Federal Circuit Reverses Summary Judgment, Holds Apparatus Claims Defined by Structure Not Function

The Federal Circuit reversed summary judgment of noninfringement, reaffirming that apparatus claims must be construed according to what the device physically is rather than how it functions, and remanding genuine disputes about literal infringement and the doctrine of equivalents for jury resolution.

Federal Circuit, Utility Patent

Bayer Healthcare v. Baxalta Inc. — Federal Circuit Holds Knowledge of Infringement Alone Is Insufficient for Willfulness, Upholds 17.78% Royalty Award

The Federal Circuit affirmed a $155 million reasonable royalty award against Baxalta for infringing Bayer’s blood-clotting factor patent but reversed the willfulness finding, holding that mere knowledge of a patent and its infringement is not enough — willfulness requires wanton, malicious, or bad-faith conduct.

Federal Circuit, Utility Patent

Amgen v. Sanofi (Federal Circuit 2021) — Antibody Claims Fail Enablement for Genus Claiming Entire Functional Class

The Federal Circuit affirmed that Amgen’s antibody patents directed to an entire genus of antibodies binding to a specific PCSK9 epitope lacked adequate enablement — holding that claiming a broad functional genus of antibodies without enabling the full scope of the claim requires undue experimentation and is invalid under § 112(a).

Federal Circuit, Patent Subject Matter Eligibility

American Axle & Manufacturing v. Neapco Holdings — Federal Circuit Finds Driveshaft Tuning Method Directed to Natural Law

A divided Federal Circuit panel held that American Axle’s patent on a method for tuning a propshaft to reduce vibration was patent-ineligible as directed to the application of Hooke’s Law — drawing sharp dissents and a petition for rehearing that generated significant debate about the scope of § 101’s natural law exception for mechanical patents.

Federal Circuit, Utility Patent

Biogen MA Inc. v. EMD Serono, Inc. — Federal Circuit Holds Source Limitations Cannot Confer Novelty on Recombinant Proteins

The Federal Circuit reversed a judgment for Biogen and reinstated a jury verdict of invalidity, holding that a recombinant polypeptide cannot be distinguished from its native counterpart for novelty purposes when the molecules are structurally identical — a product-by-process analysis applies even within method of treatment claims.

Federal Circuit, Utility Patent

Bio-Rad Laboratories, Inc. v. 10X Genomics Inc. — Federal Circuit Affirms Willful Infringement but Partially Reverses Injunction Scope

The Federal Circuit affirmed a finding of willful patent infringement and the jury’s $23 million damages award in a droplet microfluidics case, but reversed claim construction on two of three patents and partially vacated the injunction as to product lines where 10X had not yet developed non-infringing alternatives.

Federal Circuit, Utility Patent

EMC Corp. v. Pure Storage — Federal Circuit on Obviousness and Secondary Considerations in Data Storage Patents

The Federal Circuit affirmed the PTAB’s invalidation of EMC’s data storage system patents on obviousness grounds — holding that the PTAB properly weighed secondary considerations of non-obviousness including commercial success and industry praise, but found them insufficient to overcome the strong prima facie case of obviousness established by the prior art.

Federal Circuit, Patent Subject Matter Eligibility

Packet Intelligence LLC v. NetScout Systems, Inc. — Federal Circuit Holds Deep Packet Inspection Patents Eligible, Reverses Pre-Suit Damages for Marking Failure

The Federal Circuit upheld the patent eligibility of network traffic monitoring patents under § 101, finding they recite a concrete technical solution to the problem of tracking multi-flow network conversations, but reversed pre-suit damages because the patent owner failed to comply with the patent marking requirement.

Federal Circuit, Utility Patent

Biogen International GmbH v. Banner Life Sciences LLC — Federal Circuit Holds Patent Term Extension Covers Only Approved Active Ingredient, Not Its Metabolite

The Federal Circuit held that a patent term extension under the Hatch-Waxman Act covers only the active ingredient actually approved by the FDA—and its salts and esters—but does not extend to a metabolite of that ingredient, even if the metabolite is what is pharmacologically active in the body.

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