Author name: Gary

Design Patent, Federal Circuit

Apple v. Samsung Design Patent Damages — Federal Circuit 2017 Remand Sends Article-of-Manufacture Question Back to District Court

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.

Federal Circuit, Patent Subject Matter Eligibility

Praxair Distribution v. Mallinckrodt Hospital — Federal Circuit Holds Nitric Oxide Dosing Method Patent Ineligible

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.

Federal Circuit, Utility Patent

WesternGeco v. ION Geophysical — Federal Circuit Bars Foreign Lost Profit Damages Under Section 271(f), Later Reversed by Supreme Court

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.

Federal Circuit, Patent Subject Matter Eligibility

McRO v. Bandai Namco — Federal Circuit Upholds Animation Lip-Sync Patents as Patent-Eligible Improvements to Computer Animation

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.

Federal Circuit, Utility Patent

Stryker Corp. v. Zimmer Inc. (2016 Remand) — Federal Circuit Applies New Halo Standard, Remands Enhanced Damages Determination to District Court

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.

Federal Circuit, Patent Subject Matter Eligibility

Electric Power Group v. Alstom — Federal Circuit Holds Power Grid Monitoring Patents Invalid as Data-Collection Abstract Ideas

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.

Federal Circuit, Patent Subject Matter Eligibility

Synopsys v. Mentor Graphics — Federal Circuit Affirms § 101 Invalidity for EDA Software Patent

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.

Federal Circuit, Utility Patent

The Medicines Company v. Hospira (2016) — Federal Circuit En Banc Holds Contract Manufacturer’s Services Sale Is Not an Invalidating On-Sale Bar Event

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.

Federal Circuit, Patent Subject Matter Eligibility

Intellectual Ventures I v. Capital One Financial — Federal Circuit Applies Alice to Financial Data Processing Patents

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.

Federal Circuit, Patent Subject Matter Eligibility

BASCOM Global Internet Services v. AT&T Mobility — Federal Circuit Finds Inventive Concept in Non-Conventional Arrangement of Known Elements

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.

Supreme Court, Utility Patent

Cuozzo Speed Technologies v. Lee — Supreme Court Upholds Broadest Reasonable Interpretation Standard in IPR Proceedings

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.

Supreme Court, Utility Patent

Halo Electronics v. Pulse Electronics — Supreme Court Loosens Standard for Enhanced Damages in Willful Patent Infringement

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.

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.

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