The Federal Circuit held that a patent application claiming an isolated DNA sequence encoding the NAIL protein receptor was obvious under KSR — where the prior art disclosed both the protein and routine methods of cloning its encoding gene — marking an important application of KSR’s flexible obviousness standard to biotechnology patent claims for genetic sequences.
The Federal Circuit struck down a controversial USPTO rule that would have limited patent applicants’ right to file continuation applications claiming priority to parent patents, holding the rule was inconsistent with 35 U.S.C. § 120 — while upholding other procedural rules in the contested rulemaking package.
The Federal Circuit affirmed the validity of Sanofi’s Plavix (clopidogrel) patent, holding that prior disclosure of a racemic mixture does not anticipate a claim to an isolated single enantiomer — particularly when the enantiomer exhibits unexpectedly superior properties not predictable from the racemate.
The Ninth Circuit held that the copyright first sale doctrine does not apply to foreign-made goods, allowing Omega to prevent Costco from reselling Omega watches in the United States without authorization — a ruling the Supreme Court affirmed by an equally divided 4-4 court in 2010, leaving the Ninth Circuit’s gray-market-unfriendly rule in place.
The Federal Circuit sitting en banc held that the machine-or-transformation test is the definitive standard for determining whether a claimed process is patent-eligible under 35 U.S.C. § 101, rejecting a patent application on a business method for hedging commodity-trading risk.
The Federal Circuit held that the ITC’s limited exclusion order authority under Section 337 does not extend to downstream products of non-parties to the investigation — rejecting the ITC’s longstanding practice of excluding finished goods containing infringing components made by respondents, and limiting such broad relief to general exclusion orders.
The Federal Circuit sitting en banc eliminated the two-part ‘point of novelty’ test for design patent infringement and replaced it with a unified ordinary observer test — holding that design patent infringement is determined by whether an ordinary observer, familiar with the prior art, would find the accused design substantially similar to the patented design.
The Federal Circuit held that violation of an open-source software license condition — not merely a contractual covenant — constitutes copyright infringement, giving open-source licensors the full array of copyright remedies (including injunctions and statutory damages) rather than only contract damages when licensees violate the terms of free and open source licenses.
The Federal Circuit held that direct infringement of a method claim divided across multiple parties requires that a single defendant direct or control the performance of every claimed step — a ruling that made it significantly harder to prove infringement of internet-era method patents implemented through multi-party systems.
The Supreme Court held that the doctrine of patent exhaustion applies to method patents and that an authorized sale of a product that substantially embodies a patented method exhausts the patent holder’s rights — foreclosing downstream infringement suits against purchasers.
The Federal Circuit vacated a $78.9 million willful infringement verdict against DirecTV’s satellite broadcasting system, reversing on claim construction and holding that means-plus-function claims for software functions require more than a bare reference to software — the specification must disclose the specific algorithm performing each claimed function.
The Federal Circuit affirmed the invalidation of Aristocrat’s slot machine patent, holding that computer-implemented means-plus-function claims are indefinite under § 112 unless the specification discloses the specific algorithm that transforms a general-purpose computer into the claimed special-purpose device.
The Federal Circuit tightened the standards for inequitable conduct findings, requiring clear and convincing evidence of both materiality and intent to deceive before a patent may be rendered unenforceable — while also confirming that a patent examiner’s independent knowledge of withheld prior art does not excuse the patentee’s duty of disclosure.
The Federal Circuit addressed the interplay of written description and priority, holding that a claim amendment during prosecution that introduces new limitations must find support in the originally filed specification to maintain the benefit of the earlier filing date — a key ruling for patent drafters managing continuation and CIP application strategies.
The Federal Circuit sitting en banc abandoned its 24-year-old willful infringement standard, adopting a new two-part objective/subjective recklessness test that raised the bar for enhanced patent damages and eliminated the automatic duty to obtain opinion-of-counsel letters.
The Federal Circuit reaffirmed that prosecution history estoppel bars application of the doctrine of equivalents when a claim was narrowed during prosecution to distinguish prior art — a landmark application of Festo’s flexible bar to a complex software patent dispute.
The Federal Circuit affirmed the validity of Forest Laboratories’ escitalopram (Lexapro) patent, holding the single-enantiomer antidepressant non-obvious over the known racemic citalopram — with the critical role played by unexpected superior pharmacological properties of the isolated (+)-enantiomer over the racemate as evidence of non-obviousness.
In one of the first major post-KSR Federal Circuit obviousness decisions, the court upheld the non-obviousness of Takeda’s pioglitazone (Actos) patent, applying the Supreme Court’s flexible obviousness framework while affirming that selection from a genus of prior art compounds requires specific motivation to choose the patented compound.
The Ninth Circuit held that Google’s display of thumbnail-size images in search results is fair use, while also addressing the server test for direct infringement — holding that a website that inline-links to content stored on another server does not ‘display’ that content and thus does not directly infringe the reproduction right.
In one of the first post-KSR Federal Circuit obviousness decisions, the court invalidated Leapfrog’s patent on an electronic phonics learning toy as obvious, holding that it would have been obvious to combine the mechanical toy’s learning concept with electronic text-to-speech technology that was well-known in the prior art — a straightforward application of KSR’s flexible approach.
The Supreme Court unanimously rejected the Federal Circuit’s rigid teaching-suggestion-motivation (TSM) test for patent obviousness, holding that courts must apply a flexible, expansive analysis that recognizes multiple reasons why a person of ordinary skill might combine known elements.
The Supreme Court held that Microsoft did not infringe AT&T’s speech processing patents under § 271(f) when it shipped master discs of Windows to foreign manufacturers who then copied and installed the software — because software code, standing alone, is not a ‘component’ that can be ‘supplied’ from the United States for purposes of foreign-combination liability.
The Federal Circuit reversed a district court’s obviousness finding in a Hatch-Waxman pharmaceutical case, holding that the court had improperly defined the level of ordinary skill in the art — which significantly affected the obviousness analysis for an antibiotic ear drop formulation patent — underscoring the critical role of ordinary skill level determination in patent validity disputes.
The Federal Circuit reversed a district court’s validity ruling and held that Pfizer’s patent covering amlodipine besylate (Norvasc) was invalid for obviousness, finding that selecting the besylate salt of amlodipine was routine pharmaceutical testing that any skilled chemist would have performed.
The Supreme Court held that a patent licensee need not terminate or breach its license agreement before seeking a declaratory judgment that the underlying patent is invalid or not infringed — a licensee under an active license has standing to bring such a challenge.
The Federal Circuit addressed the requirements for functional claim limitations in software-implemented gaming machine patents, reinforcing that functional language in claims must be supported by adequate structural or algorithmic disclosure in the specification — a key ruling on the § 112 disclosure requirements for software-driven inventions.
The Federal Circuit sitting en banc resolved a circuit split and held that induced infringement under 35 U.S.C. § 271(b) requires proof that the defendant specifically intended to cause direct infringement — not merely that it intended to perform acts that happen to constitute infringement.
The Federal Circuit reversed a finding of obviousness in a spinal implant patent case, holding that the district court failed to identify a sufficient motivation or reason why a person of ordinary skill would have combined the cited prior art references — possibility of combination is not enough; there must be articulated reasoning grounded in the prior art as to why the skilled artisan would have made the combination.
The Federal Circuit held a textile dye process patent invalid as obvious, clarifying that the teaching-suggestion-motivation (TSM) test for obviousness is flexible and allows motivation to combine to be found in common knowledge, common sense, and efficiency goals — not just explicit documentary evidence.
The Federal Circuit invalidated Align Technology’s patents on incremental orthodontic aligners as obvious over prior art, holding that packaging convenience and commercial success driven by aesthetic and unclaimed features cannot overcome a prima facie case of obviousness.
The Federal Circuit held that the patent exhaustion doctrine does not give a purchaser the right to use replicated copies of a self-replicating patented technology, and that conditional sales of patented seed prevent exhaustion from arising in the first place.
The Federal Circuit invalidated a key Lipitor patent claim because the dependent claim attempted to claim subject matter outside the scope of the independent claim it depended on, violating 35 U.S.C. § 112, paragraph 4.
The Federal Circuit held that the sale of a licensed device does not exhaust a patent holder’s method claims, ruling that purchasers of Intel chips who used them in unauthorized combinations remained liable for infringement of LG Electronics’ method patents — a holding the Supreme Court later reversed in Quanta Computer v. LG Electronics (2008).
The Federal Circuit affirmed that Agfa’s patents were unenforceable due to inequitable conduct based on intentional withholding of material prior art, and confirmed that inequitable conduct claims may be tried to the court without a jury.
The Federal Circuit held in a poxvirus vaccine interference that there is no per se rule requiring a patent applicant to recite known structural information in the written description — an applicant may rely on publicly available scientific literature for what is well-known in the field.
The Supreme Court unanimously held that courts must apply the traditional four-factor equitable test when deciding whether to grant a permanent injunction in a patent case, rejecting both a categorical rule granting injunctions to prevailing patentees and a categorical rule against injunctions for non-practicing entities.
The Federal Circuit held that when a patent defendant asserts an advice-of-counsel defense to willful infringement, it waives attorney-client privilege for all communications about the patent’s validity, enforceability, and infringement — but the waiver does not automatically extend to all attorney work product never communicated to the client.
The Federal Circuit reversed a finding of anticipation, holding that a prior art reference disclosing a broad temperature range of 100–500°C did not anticipate a claimed narrower range of 330–450°C — a genus does not anticipate every species, and a broader prior art range anticipates a narrower claimed range only when the prior art discloses the narrower range with sufficient specificity.
The Federal Circuit affirmed summary judgment of non-infringement, holding that a patent’s claim preamble is limiting when it recites essential structural elements of the claimed invention, and construed the asserted dental implant patent claims to require a complete emergence cuff and abutment combination.
The Supreme Court unanimously held that a patent does not by itself establish market power for antitrust tying purposes; plaintiffs must prove market power directly through evidence of the relevant market.
The Federal Circuit affirmed invalidity of SmithKline’s Paxil patent, holding that product-by-process claims are anticipated by prior art that discloses the same product, even when the prior art used a different process to make it — because patents protect products, not processes, under such claims.
The Federal Circuit affirmed patent unenforceability for inequitable conduct, holding that pharmaceutical patent applicants who submitted declarations from scientists with undisclosed financial ties to the patent owner engaged in deceptive conduct that was material because the patent examiner had specifically requested independent, unbiased declarations to overcome obviousness rejections.
The Federal Circuit vacated and remanded in a horizontal directional drilling patent case, holding that the 1992 PTO Rule 56 materiality standard supplements rather than replaces the earlier ‘reasonable examiner’ standard, that false statements in a Rule 131 declaration are inherently material, and that whether an undisclosed prior art reference was cumulative presented a genuine fact issue requiring trial.
The Federal Circuit held that a licensee currently in good standing under a patent license lacks standing to bring a declaratory judgment action challenging the patent’s validity — a ruling the Supreme Court unanimously reversed in 2007.
The Federal Circuit held that patent claims covering all methods of achieving a technical result are invalid for insufficient written description when the specification discloses only one specific method, warning inventors that the scope of claims must be commensurate with what was actually disclosed.
The Federal Circuit affirmed that the term “board” in a decking patent was limited to material made from wood cut from a log, and did not encompass composite decking made from wood fibers and recycled plastic, illustrating the principle that claim terms must be construed in light of the full intrinsic record.
The Federal Circuit affirmed rejection of patent claims covering expressed sequence tags (ESTs) — partial gene sequences — for lack of utility under § 101, holding that ESTs that serve only as research tools without identification of the functions of their corresponding genes do not have the specific and substantial utility required for patentability.
The Federal Circuit reversed the PTAB’s rejection of chimeric gene patent claims on written description grounds, holding that biotechnology patents need not recite the complete nucleotide sequence of claimed DNA when the sequences are already known in the field.
The Federal Circuit affirmed that Research In Motion’s BlackBerry system infringed NTP’s wireless email patents, holding that infringement can occur even when some system components are located in Canada, and distinguishing system claims from method claims for extraterritorial purposes.
In a landmark en banc decision, the Federal Circuit confirmed that patent claims must be interpreted in light of the patent’s own specification and prosecution history — not primarily by reference to dictionaries — establishing the modern framework for patent claim construction.