The Federal Circuit held that tribal sovereign immunity cannot be used to shield patents from inter partes review, rejecting a controversial licensing arrangement between Allergan and the St. Regis Mohawk Tribe designed to avoid IPR challenges to Restasis patents.
The Supreme Court held that a patent holder can recover lost foreign profits as damages when a domestic act of infringement under § 271(f) caused those foreign profits to be lost.
The Federal Circuit vacated the TTAB’s decision allowing Coca-Cola to register its ZERO trademarks without a disclaimer, holding the Board applied the wrong genericness standard and failed to properly assess the degree of descriptiveness when evaluating acquired distinctiveness.
The Federal Circuit addressed claim differentiation and claim construction for Teleflex’s coronary sinus lead placement patent — holding that where a dependent claim adds a specific limitation, the corresponding independent claim must be broader, and applying this principle to construe lead placement method claims in a dispute between cardiac device makers.
The Federal Circuit held that in states with multiple judicial districts, a domestic corporation “resides” for patent venue purposes only in the single district where its principal place of business or registered office is located, tightening venue rules after TC Heartland.
The Federal Circuit held that the patent venue statute, 28 U.S.C. § 1400(b), does not apply to alien (foreign) corporate defendants, who remain subject to suit for patent infringement in any U.S. district where they are subject to personal jurisdiction.
The Supreme Court held 7-2 that inter partes review does not violate Article III or the Seventh Amendment — because patents are public franchises granted by the government, which may reclaim or modify them through an executive agency proceeding without a jury trial, upholding the America Invents Act’s most powerful patent challenge mechanism.
The Supreme Court held 5-4 that when the USPTO institutes an inter partes review, it must adjudicate every claim challenged in the petition — rejecting the PTO’s practice of instituting IPR on only some of the challenged claims and leaving other claims unreviewable.
The Federal Circuit held that patent claims covering computerized voting, verification, and vote tabulation are directed to the abstract idea of voting — a fundamental human activity for centuries — and thus ineligible under § 101.
The Federal Circuit held that method-of-treatment claims directed to a specific dosing regimen for schizophrenia based on a patient’s genetic profile are patent eligible under §101, distinguishing the Supreme Court’s Mayo decision and reinforcing the eligibility of personalized medicine patents.
The Federal Circuit reversed a PTAB obviousness ruling against a wireless networking patent, holding that “common sense” cannot substitute for real evidentiary support when a prior art reference is missing a claimed limitation, particularly for complex technology.
The Federal Circuit vacated a claim preclusion ruling against SimpleAir, holding that filing a terminal disclaimer in a continuation patent does not create a presumption that the continuation’s claims are patentably indistinct from the parent, and courts must compare actual claim scope before finding preclusion.
The Federal Circuit held that on a motion to dismiss, courts must accept all well-pleaded facts as true before ruling on patent eligibility under § 101, reversing summary dismissal of software form-processing patents.
The Federal Circuit held that the Alice/Mayo Step 2B inquiry — whether a claim element or combination of elements represents an ‘inventive concept’ that was well-understood, routine, and conventional — contains underlying factual questions that may not always be resolved as a matter of law on summary judgment, limiting the scope of § 101 dispositive motions.
The Federal Circuit upheld patent claims covering an improved mobile device application summary interface, holding that specific graphical user interface improvements solving a concrete usability problem are not abstract ideas under § 101.
The Federal Circuit confirmed that patent damages can be apportioned through the royalty rate rather than the royalty base, but vacated a $48 million award because the patent owner’s damages expert failed to adequately explain how the Georgia-Pacific factors supported the proposed royalty rate.
The Federal Circuit held that identifying the “smallest salable patent-practicing unit” is not sufficient when that unit still contains non-patented features, and further apportionment is required to isolate the value of the patented technology in complex software products.
The Federal Circuit, sitting en banc, overruled Achates and held that §315(b) time-bar determinations by the PTAB are subject to judicial review, rejecting the argument that all IPR institution decisions are unreviewable.
The Federal Circuit affirmed PTAB’s cancellation of Credit Acceptance’s patent on financing automobile purchases through a dealer-administered program, holding the claims directed to the abstract idea of processing financing transactions — a business practice not rendered patent-eligible by implementation on a computer.
The Federal Circuit affirmed invalidity of Smart Systems’ open-loop transit payment patents under Section 101, holding that collecting financial data using generic components to facilitate transit access is an abstract idea — with a notable dissent arguing that the claims addressed a real, Internet-era technical problem.
An en banc Federal Circuit held that in inter partes review proceedings, the petitioner — not the patent owner — bears the burden of proving that proposed amended claims are unpatentable, overturning years of PTAB practice that had effectively blocked most patent owner amendment efforts.
The Federal Circuit reversed summary judgment of non-infringement in a divided infringement case, holding that the ‘direction and control’ standard from Akamai v. Limelight could be satisfied where one party conditions participation in an activity on performance of a method step by another party — applying the standard to luggage locks and TSA inspection agreements.
The Federal Circuit granted mandamus to Cray and set forth a three-part test for what constitutes a ‘regular and established place of business’ under the patent venue statute — rejecting the Eastern District of Texas’s expansive four-factor test and clarifying that employees’ homes and remote workers in a district do not, by themselves, establish venue.
The Federal Circuit held that the federal government qualifies as a ‘person’ under the America Invents Act and may petition for covered business method (CBM) review at the PTAB — a ruling the Supreme Court reversed in 2019, holding that the government is not a ‘person’ for AIA post-grant proceedings.
Reversing a district court’s Section 101 dismissal, the Federal Circuit held that Visual Memory’s patent on a programmable memory system with processor-specific operational characteristics was directed to an improved computer memory technology — not an abstract idea — because it described a specific technical advance in how memory systems operate.
The Federal Circuit held that IPR estoppel under § 315(e)(2) does not extend to prior art grounds based on patents or printed publications that the petitioner could not have raised in IPR — specifically that prior art systems and physical products (which cannot be raised in IPR) are not subject to the IPR estoppel bar in subsequent district court litigation.
The Supreme Court unanimously held that the Lanham Act’s prohibition on registering ‘disparaging’ trademarks violates the First Amendment — invalidating the PTO’s refusal to register THE SLANTS for an Asian-American band and establishing that trademark registration is a government benefit program subject to First Amendment viewpoint neutrality requirements.
The Supreme Court held 7-1 that authorized patent sales both domestically and abroad exhaust all U.S. patent rights in the sold item — eliminating Lexmark’s attempt to use conditional patent licenses to control post-sale use and the Federal Circuit’s rule allowing foreign sales to preserve domestic patent rights.
The Supreme Court held that the patent venue statute, § 1400(b), is the sole provision governing where patent suits may be filed, and that a corporation ‘resides’ only in its state of incorporation for patent venue purposes.
The Federal Circuit held that a secret commercial sale — where the existence of the sale agreement was publicly disclosed but the details of the invention were kept confidential — triggers the on-sale bar under the AIA, finding that the America Invents Act did not change the rule that confidential sales can invalidate patents when the sale’s existence is public.
The Supreme Court held 6–2 that surface designs on cheerleading uniforms are copyrightable, establishing a new two-part separability test: a design element is protectable if it can be perceived as a work of art separate from the useful article, and would qualify for copyright protection if imagined independently.
The Supreme Court held 7-1 that laches cannot be used as a defense to patent infringement that occurred within the six-year statute of limitations — extending Petrella v. Metro-Goldwyn-Mayer (copyright) to patent law and eliminating a long-standing Federal Circuit precedent that had allowed laches to bar infringement suits brought years after the patent holder learned of the infringement.
The Federal Circuit held that when a patentee satisfies all four Panduit factors for lost profits — including proving demand driven by the patented feature and no acceptable non-infringing substitutes — no further separate apportionment of those profits is required, because the Panduit analysis inherently ties the damages to the patented features’ value.
The Federal Circuit reversed the Court of Federal Claims’ § 101 dismissal of Thales Visionix’s inertial sensor patent, holding that claims directed to a specific arrangement of sensors and a mathematical algorithm to improve navigation accuracy are patent-eligible because the claims improve the technical functioning of the navigation system rather than merely applying a mathematical concept to a conventional context.
The Federal Circuit affirmed invalidation of Intellectual Ventures’ XML-formatting and financial data-collection patents under Section 101, holding that organizing, collecting, recognizing, and storing data — even when dressed in domain-specific vocabulary — is a patent-ineligible abstract idea with no inventive concept.
The Supreme Court held that supplying a single component of a multi-component patented invention from the United States does not trigger liability under § 271(f)(1), which requires supplying ‘all or a substantial portion’ of the components.
On remand from the Supreme Court’s Samsung v. Apple decision, the Federal Circuit declined to define the legal test for identifying the ‘article of manufacture’ in design patent damages and instead sent the case back to the district court to resolve the issue in the first instance — prolonging one of the most consequential design patent damages cases in U.S. history.
The Supreme Court held that in design patent infringement, the infringer’s profits need not be calculated based on the entire end product; courts must identify the relevant ‘article of manufacture’ to which the design was applied.
The Federal Circuit held Mallinckrodt’s patents on methods of supplying inhaled nitric oxide therapy while monitoring patients for adverse effects were patent-ineligible under § 101 — finding the claims directed to the natural phenomenon that nitric oxide can worsen pulmonary edema in certain patients and the monitoring and adjusting steps conventional therapeutic practice.
The Federal Circuit reversed a $93 million foreign lost-profits award for ION’s domestic infringement under Section 271(f), holding that the presumption against extraterritoriality barred recovery for overseas contracts WesternGeco would have won absent the infringement — a ruling the Supreme Court reversed in 2018.
The Federal Circuit held that McRO’s patents on rule-based automated lip synchronization in 3D character animation were patent-eligible — the claims specified a particular improvement in computer animation technology using specific rules, not merely the abstract idea of using rules to automate a task, providing an important precedent for software patent eligibility post-Alice.
On remand from the Supreme Court’s Halo Electronics decision, the Federal Circuit affirmed the jury’s willfulness finding under the new subjective standard but vacated the enhanced damages award, instructing the district court to exercise its discretion anew — illustrating how post-Halo willfulness analysis shifts enhanced damages decisions back to district court discretion.
The Federal Circuit held that patents on real-time monitoring and analysis of electric power grid data were patent-ineligible under Section 101, establishing that collecting, analyzing, and displaying information — even in a complex industrial context — is an abstract idea without an inventive concept in its implementation.
The Federal Circuit affirmed the invalidity of Mentor Graphics’ patents on hardware synthesis software under § 101 — holding that claims directed to the abstract idea of synthesizing a hardware circuit design from a functional description were not rendered patent-eligible by implementation on a computer, and clarifying that the Alice two-step applies to software patents regardless of whether the claim recites a method, system, or computer-readable medium.
An en banc Federal Circuit held that a pharmaceutical company’s contract with a manufacturer to produce drug batches — where title to the product remained with the inventor — did not constitute a ‘commercial sale’ triggering the on-sale bar under Section 102(b), clarifying the boundaries between legitimate pre-commercial manufacturing and invalidating sales activity.
The Federal Circuit affirmed § 101 invalidity of Intellectual Ventures’ patents on interactive customizable web pages and database record indexing — holding that creating customizable web interfaces for financial products and organizing financial data with hierarchical index structures are abstract ideas not rendered patent-eligible by generic computer implementation.
The Federal Circuit vacated dismissal of BASCOM’s Internet content-filtering patent, holding that an inventive concept can arise from a non-conventional, non-generic arrangement of individually known elements — even if the abstract idea at the core of the claims is itself conventional.
The Supreme Court unanimously upheld the Patent Trial and Appeal Board’s use of the ‘broadest reasonable interpretation’ standard for claim construction in inter partes review proceedings — validating the PTO’s approach over patent holders’ objections that IPR should use the narrower claim construction applied in district court litigation.
The Supreme Court unanimously held that courts awarding attorney fees under the Copyright Act must give substantial weight to the objective reasonableness of the losing party’s litigation position, while retaining discretion to weigh all other relevant factors.
The Supreme Court unanimously overruled the Federal Circuit’s Seagate objective-recklessness test for willful patent infringement and enhanced damages under § 284 — holding that courts have broad discretion to award enhanced damages in egregious cases of deliberate or wanton infringement, without requiring proof of an objectively reasonable defense.