Author name: Gary

Federal Circuit, Patent Subject Matter Eligibility

Enfish v. Microsoft — Federal Circuit Holds Self-Referential Database Patent Claims Eligible Under Alice Step 1

The Federal Circuit held that claims directed to a specific improvement in database technology — a self-referential logical table that allows all types of data to be stored in a single table structure — were directed to a concrete software improvement rather than an abstract idea, surviving Alice step one and providing an important pathway for software patent eligibility.

Federal Circuit, Utility Patent

Lexmark International v. Impression Products — Federal Circuit En Banc Holds Foreign Sales Don’t Exhaust U.S. Patent Rights

An en banc Federal Circuit held that a patent owner’s restricted domestic sales don’t exhaust patent rights when clearly communicated restrictions are violated, and that foreign sales never exhaust U.S. patent rights — both holdings later reversed by the Supreme Court in a landmark 2017 patent exhaustion ruling.

Federal Circuit, Utility Patent

Wi-LAN Inc. v. Apple Inc. (2016) — Federal Circuit Holds Doctrine of Equivalents Does Not Save Wireless Patent Claims with Different Hardware Pipelines

The Federal Circuit affirmed a jury verdict of non-infringement for Apple in a wireless patent case, holding that even mathematically equivalent signal-processing operations implemented through structurally different hardware pipelines are not equivalent under the doctrine of equivalents — the different structures matter even if the mathematical outputs are the same.

Federal Circuit, Trademark, Federal

In re Tam (2015) — Federal Circuit En Banc Strikes Down Lanham Act’s Ban on Disparaging Trademarks as Unconstitutional

An en banc Federal Circuit held that Section 2(a) of the Lanham Act, which bars registration of ‘disparaging’ trademarks, violates the First Amendment — a landmark ruling that the Supreme Court affirmed in Matal v. Tam (2017), eliminating one of trademark law’s longest-standing restrictions on trademark content.

Federal Circuit, Utility Patent

CSIRO v. Cisco Systems (2015) — Federal Circuit Rejects Mandatory ‘Smallest Saleable Unit’ Starting Point for SEP Damages

The Federal Circuit held that there is no universal rule requiring patent damages models to begin with the smallest saleable patent-practicing unit — but remanded CSIRO’s Wi-Fi patent damages award because the district court failed to account for the patent’s standard-essential status when setting the royalty rate, requiring a FRAND-adjusted award.

Federal Circuit, Utility Patent

MCM Portfolio v. Hewlett-Packard (2015) — Federal Circuit Unanimously Upholds Constitutionality of Inter Partes Review

The Federal Circuit unanimously rejected a patent holder’s constitutional challenge to inter partes review, holding that IPR proceedings do not violate Article III or the Seventh Amendment because patents are public rights that may be adjudicated by an administrative agency without access to a federal court or jury — a foundational ruling for the PTAB system.

Federal Circuit, International Trade Commission

ClearCorrect v. ITC (2015) — Federal Circuit Holds ITC Lacks Jurisdiction Over Electronic Transmissions of Digital Data

The Federal Circuit held that the ITC’s Section 337 jurisdiction covers only physical ‘articles’ and does not extend to electronic transmissions of digital data — blocking the ITC from issuing exclusion orders against competitors that infringe by transmitting digital files over the internet rather than importing physical goods.

Federal Circuit, Utility Patent

Akamai Technologies v. Limelight Networks (2015) — Federal Circuit En Banc Expands Direct Infringement to Cover Direction and Control of Third-Party Steps

On remand from the Supreme Court, an en banc Federal Circuit expanded direct infringement liability beyond the single-actor rule, holding that an entity can be liable for another’s performance of method steps when it conditions participation or a benefit on that performance and establishes the manner or timing of the performance.

Federal Circuit, International Trade Commission

Suprema v. ITC (2015) — En Banc Federal Circuit Holds ITC Can Issue Exclusion Orders for Induced Infringement Completed After Importation

An en banc Federal Circuit held 6-4 that the ITC has jurisdiction to issue exclusion orders for imported products that become ‘articles that infringe’ through induced infringement completed after importation — resolving a key question about the ITC’s reach over method patent claims and significantly expanding the ITC’s role in policing patent infringement.

Federal Circuit, Patent Subject Matter Eligibility

Versata Development Group v. SAP America (2015) — Federal Circuit Affirms First CBM Patent Review, Upholds PTAB Authority to Apply Section 101

The Federal Circuit affirmed the first covered business method patent review final written decision under the AIA, holding that the PTAB correctly invalidated Versata’s pricing patent under Section 101 and that CBM eligibility determinations are reviewable on appeal — establishing the Federal Circuit’s oversight role over the new PTAB CBM program.

Federal Circuit, Utility Patent

Williamson v. Citrix Online (2015) — Federal Circuit En Banc Lowers Bar for Means-Plus-Function Treatment of Functional Claim Language

An en banc Federal Circuit overruled its prior ‘strong presumption’ that claim terms without the word ‘means’ are not means-plus-function limitations, holding that terms like ‘module’ that claim a function without reciting sufficient structure are subject to Section 112’s means-plus-function rules — and typically invalidated for indefiniteness when the specification lacks corresponding structure.

Federal Circuit, Patent Subject Matter Eligibility

Ariosa Diagnostics v. Sequenom — Federal Circuit Holds Cell-Free Fetal DNA Detection Patent Ineligible

The Federal Circuit held that Sequenom’s patent on detecting paternally inherited cell-free fetal DNA (cffDNA) in maternal blood for non-invasive prenatal diagnosis was patent-ineligible under § 101 — finding the claims directed to a natural phenomenon (cffDNA’s presence in maternal blood) and the detection method steps conventional and insufficient to supply an inventive concept.

Design Patent, Federal Circuit

Apple v. Samsung — Federal Circuit Affirms $930M Design and Utility Patent Verdict, Rejects Apportionment for Design Patents

The Federal Circuit affirmed the bulk of Apple’s massive patent verdict against Samsung — including design patent damages calculated on Samsung’s entire smartphone profits rather than just infringing components — a ruling later reversed by the Supreme Court in a landmark decision on what constitutes an ‘article of manufacture.’

Federal Circuit, Utility Patent

Warsaw Orthopedic v. NuVasive (2015) — Federal Circuit Limits Lost Profits to Products the Patentee Actually Sells

The Federal Circuit affirmed infringement findings in a spinal implant patent case but remanded on damages, holding that lost profits are limited to products the patentee itself sells and that convoyed sales damages require a functional relationship between the patented and unpatented products — significantly narrowing the damages available to Warsaw Orthopedic.

Federal Circuit, Utility Patent

In re Cuozzo Speed Technologies — Federal Circuit Upholds IPR “Broadest Reasonable Interpretation” Standard in First-Ever IPR Appeal

In the first Federal Circuit decision reviewing an inter partes review (IPR) final written decision, the court affirmed the PTAB’s use of the ‘broadest reasonable interpretation’ claim construction standard in IPR proceedings — a ruling that set the rules for thousands of subsequent patent challenges.

Federal Circuit, Patent Subject Matter Eligibility

Content Extraction & Transmission v. Wells Fargo (2014) — Federal Circuit Affirms Section 101 Dismissal of Document Scanning Patents on Motion to Dismiss

The Federal Circuit affirmed that document-scanning and data-recognition patents are invalid under Section 101 as directed to long-practiced abstract ideas — and notably held that Section 101 invalidity can be decided at the motion to dismiss stage, before claim construction, establishing an early-exit tool in post-Alice patent litigation.

Federal Circuit, Patent Subject Matter Eligibility

Ass’n for Molecular Pathology v. Myriad Genetics (Post-Remand) — Federal Circuit Addresses BRCA Test Patent Claims After Mayo

The Federal Circuit held that Myriad’s claims to methods of comparing or analyzing BRCA gene sequences were patent-ineligible under § 101 as directed to abstract mental processes — applying the Supreme Court’s Mayo framework to diagnostic comparison claims on remand from AMP v. Myriad, while upholding claims requiring specific laboratory techniques.

Federal Circuit, Patent Subject Matter Eligibility

DDR Holdings v. Hotels.com — Federal Circuit Upholds Internet Commerce Patent as Patent-Eligible

The Federal Circuit held that DDR Holdings’ patent on a method for retaining website visitors by displaying third-party products within the host website’s visual framework — rather than redirecting visitors to the third-party’s site — was patent-eligible under Alice because the claims addressed a problem unique to the internet and produced an unconventional technical result.

Federal Circuit, Utility Patent

Ericsson v. D-Link Systems — Federal Circuit Sets Framework for Calculating FRAND Royalties on Standard-Essential Patents

The Federal Circuit provided the most comprehensive guidance yet on how to calculate reasonable royalties for standard-essential patents (SEPs) subject to FRAND commitments, holding that damages must reflect incremental value of the invention rather than value derived from standardization, and that hold-up and royalty-stacking concerns require evidentiary support.

Federal Circuit, Patent Subject Matter Eligibility

Ultramercial v. Hulu (2014) — Federal Circuit Finally Strikes Down Ad-for-Content Patent as Abstract Idea Under Alice

On its third visit to the Federal Circuit, Ultramercial’s patent on ad-supported online media distribution was finally struck down as an abstract idea — completing a legal journey that spanned four years, two Federal Circuit opinions, and two Supreme Court remands, all bookended by the Alice decision.

Federal Circuit, Utility Patent

Halo Electronics v. Pulse Electronics — Federal Circuit Affirms High “Seagate” Bar for Enhanced Damages, Setting Up Supreme Court Reversal

The Federal Circuit affirmed its two-part Seagate test for enhanced patent damages, refusing to award treble damages even where a jury found willful infringement — a holding the Supreme Court would reverse in 2016 by eliminating the objective recklessness requirement and restoring broader district court discretion.

Federal Circuit, Utility Patent

VirnetX v. Cisco Systems — Federal Circuit Vacates $368M Patent Damages for Failure to Apportion and Improper Royalty Methodology

The Federal Circuit vacated a $368 million patent verdict against Cisco and Apple in VirnetX’s network security patent case, rejecting the Nash Bargaining Solution as a royalty methodology and requiring strict apportionment to the patented features even when the smallest salable unit is the accused product itself.

Federal Circuit, Utility Patent

Interval Licensing v. AOL (2014) — Federal Circuit Applies Post-Nautilus Indefiniteness Standard to Attention Manager Patents

The Federal Circuit applied the Supreme Court’s newly articulated Nautilus indefiniteness standard to Interval Licensing’s ‘attention manager’ patents, affirming that numerous claims were indefinite while vacating non-infringement findings on other claims based on errors in the district court’s claim construction — one of the first Federal Circuit applications of the Nautilus ‘reasonable certainty’ test.

Federal Circuit, Utility Patent

Carnegie Mellon University v. Marvell Technology — Federal Circuit Awards $1.5B for Willful Infringement of Hard Drive Signal Processing Patents

The Federal Circuit affirmed a landmark $1.5 billion damages award against Marvell Technology for willful infringement of Carnegie Mellon University’s hard drive signal processing patents — one of the largest patent verdicts in history — while vacating parts of the damages calculation and remanding on the royalty base for activities occurring outside the United States.

Federal Circuit, Patent Subject Matter Eligibility

Digitech Image Technologies v. Electronics for Imaging — Federal Circuit Holds Data Structures and Mathematical Relationships Are Not Patentable

The Federal Circuit held that a patent claiming an image device profile — a collection of color and spatial data — was patent-ineligible, finding that a data structure without physical embodiment is not patentable, and that methods consisting only of mathematical correlations are abstract ideas.

Copyright, Federal Circuit

Oracle v. Google (Federal Circuit 2014) — APIs Are Copyrightable; Fair Use Question Remanded

The Federal Circuit reversed the district court and held that Oracle’s Java API declaring code and the structure, sequence, and organization of its API packages are entitled to copyright protection — reversing the landmark ruling that APIs were not copyrightable and remanding the fair use question that the Supreme Court ultimately resolved in Google’s favor in 2021.

Federal Circuit, Utility Patent

Apple v. Motorola (2014) — Federal Circuit Rejects Per Se Rule Against Injunctions for FRAND-Encumbered Standard-Essential Patents

The Federal Circuit reversed Judge Posner’s dismissal of patent damages claims and held there is no categorical rule barring injunctions for standard-essential patents — but affirmed that Motorola could not obtain an injunction on its FRAND-committed SEP because it had already committed to license on reasonable terms.

Federal Circuit, Utility Patent

Teva Pharmaceuticals v. Sandoz (Federal Circuit 2013) — Court Applies De Novo Review to All Claim Construction, Drawing Supreme Court Reversal

The Federal Circuit applied de novo review to all aspects of claim construction and affirmed the invalidity of Teva’s multiple sclerosis drug patents — a ruling the Supreme Court partially reversed in 2015, holding that underlying factual findings in claim construction must be reviewed for clear error rather than de novo.

International Trade Commission, Utility Patent

InterDigital Communications v. ITC — Federal Circuit Addresses Standard-Essential Patents and FRAND Licensing at the ITC

The Federal Circuit affirmed the ITC’s exclusion order against Huawei and ZTE for infringing InterDigital’s standard-essential wireless patents, while clarifying important questions about the ITC’s authority to issue exclusion orders involving FRAND-committed patents — decisions that became focal points for global SEP licensing and ITC reform debates.

Federal Circuit, Utility Patent

Fresenius USA v. Baxter International — Federal Circuit on Collateral Estoppel Between Parallel IPR and District Court Proceedings

The Federal Circuit held that when the PTO cancels a patent’s claims during reexamination proceedings that conclude while district court litigation is still pending on appeal, the cancellation moot the district court judgment of infringement — there is no longer a valid patent to infringe — even though the district court had already entered final judgment in the patentee’s favor.

Federal Circuit, Utility Patent

Commil USA v. Cisco Systems (2013) — Federal Circuit Holds Good-Faith Invalidity Belief Can Negate Induced Infringement Intent

The Federal Circuit held that a defendant’s good-faith belief that the asserted patent is invalid can negate the specific intent required for induced infringement — a ruling the Supreme Court reversed in 2015, clarifying that validity and infringement are separate inquiries and invalidity is not a defense to inducement.

Federal Circuit, Patent Subject Matter Eligibility

Ultramercial v. Hulu — Federal Circuit’s Evolving § 101 Analysis for Internet Advertising Patents

The Federal Circuit initially held Ultramercial’s patent on a method of distributing copyrighted media over the internet by requiring viewers to watch an advertisement to be patent-eligible — but after Supreme Court remand in light of Alice v. CLS Bank, reversed and found the claims directed to the abstract idea of monetizing digital content through advertising, invalidating the patent.

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