Author name: Gary

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.

Federal Circuit, Patent Subject Matter Eligibility

Alice Corp. v. CLS Bank (Federal Circuit En Banc 2013) — Court Fragments Over § 101 Framework for Software Patents

The Federal Circuit, sitting en banc, affirmed invalidity of Alice’s financial settlement software patent claims — but produced seven separate opinions with no majority rationale, reflecting deep disagreement on how to apply § 101 to software and setting the stage for the Supreme Court’s definitive Alice v. CLS Bank decision in 2014.

Federal Circuit, Patent Subject Matter Eligibility

CLS Bank International v. Alice Corp. — Federal Circuit En Banc Produces Fractured § 101 Ruling on Software Patents

Ten Federal Circuit judges issued seven different opinions and could not agree on a single legal standard for software patent eligibility under § 101, affirming by an evenly divided court that Alice’s financial settlement patents were invalid — a fractured ruling that led directly to the Supreme Court’s landmark Alice Corp. v. CLS Bank decision.

Federal Circuit, Utility Patent

Biosig Instruments v. Nautilus (Federal Circuit 2013) — Court Upholds ‘Spaced Relationship’ Claim Under Lenient Indefiniteness Standard, Drawing Supreme Court Correction

The Federal Circuit held that the term ‘spaced relationship’ in a heart rate monitor patent was not indefinite because it was ‘amenable to construction’ and not ‘insolubly ambiguous’ — applying its then-prevailing indefiniteness test that the Supreme Court unanimously rejected in 2014, replacing it with the ‘reasonable certainty’ standard that governs today.

Copyright, Supreme Court

Kirtsaeng v. John Wiley & Sons — Supreme Court Holds Copyright First Sale Doctrine Applies to Foreign-Made Goods

The Supreme Court held 6-3 that the copyright first sale doctrine applies to copies manufactured abroad and first sold outside the United States — allowing parallel importation of foreign-made goods bearing copyrighted content without the copyright holder’s permission, and overruling the Ninth Circuit’s geographic limitation on the first sale doctrine.

Federal Circuit, Utility Patent

Lighting Ballast Control v. Philips Electronics — Federal Circuit Reconsiders Claim Construction Standard (Cybor Retained)

The Federal Circuit, sitting en banc, affirmed the Cybor de novo standard of review for claim construction — declining to overturn its 1998 precedent requiring appellate courts to review district court claim construction rulings without deference, in a decision that set the stage for the Supreme Court’s subsequent reversal in Teva v. Sandoz (2015).

Federal Circuit, International Trade Commission

InterDigital Communications v. ITC — Federal Circuit Holds Patent Licensing Alone Satisfies ITC Domestic Industry Requirement

The Federal Circuit affirmed that a patent holder whose domestic industry consists solely of licensing activities — with no domestic manufacturing — can satisfy Section 337’s domestic industry requirement at the ITC, opening the door wider for non-practicing entities to use exclusion orders as a patent enforcement tool.

Federal Circuit, Utility Patent

Akamai Technologies v. Limelight Networks — Federal Circuit En Banc Expands Inducement to Cover Divided Method Infringement

The Federal Circuit sitting en banc held that a party who induces multiple actors to collectively perform all steps of a method patent claim can be liable for induced infringement even if no single party directly infringes all steps — significantly expanding liability for divided infringement of internet and software method patents.

Copyright, Federal Circuit

Voter Verified v. Premier Election Solutions — Federal Circuit on Copyright in Voting Software

The Federal Circuit held that Voter Verified’s copyright claim against Premier Election Solutions for voter verification software failed under the merger doctrine — finding that the specific expression in the claimed software code was inseparable from the underlying idea of a voter-verified paper audit trail system, and thus not independently copyrightable.

Federal Circuit, Patent Subject Matter Eligibility

Bancorp Services v. Sun Life Assurance — Federal Circuit Holds Life Insurance Valuation Patents Invalid as Abstract Ideas

The Federal Circuit held that patents on computer-implemented methods for managing stable-value life insurance policies are directed to an abstract idea and therefore invalid under § 101, ruling that adding generic computer implementation to an abstract mathematical algorithm does not create patent-eligible subject matter.

Federal Circuit, Utility Patent

Pozen Inc. v. Par Pharmaceutical — Federal Circuit on Method-of-Treatment Patents and Obviousness

The Federal Circuit reversed an obviousness finding in a Hatch-Waxman dispute over method-of-treatment patents covering naproxen-esomeprazole combination therapy for treating pain while reducing gastrointestinal damage — holding that the district court failed to properly analyze the motivation to combine the specific drugs in the specific claimed dosing regimen.

Federal Circuit, Utility Patent

Bard Peripheral Vascular v. W.L. Gore & Associates — Federal Circuit Affirms $371M Enhanced Damages for Willful Infringement of Vascular Graft Patent

The Federal Circuit affirmed a $371 million enhanced damages award against W.L. Gore for willful infringement of Bard’s vascular graft patent — one of the largest patent verdicts in history — holding that Gore’s employee did not qualify as a joint inventor and that the pioneering PTFE graft invention belonged solely to Bard’s inventor, Dr. Robert Goldfarb.

Sixth Circuit, Trademark, Federal

Static Control Components v. Lexmark International — Sixth Circuit Addresses Lanham Act False Advertising Standing

The Sixth Circuit held that Static Control Components had standing to sue Lexmark under the Lanham Act for false advertising in the toner cartridge market — a ruling affirmed by the Supreme Court in 2014 under a new zone-of-interests and proximate cause standing framework that displaced the split among circuits on Lanham Act false advertising standing.

Copyright, Second Circuit

Viacom International v. YouTube — Second Circuit Addresses DMCA Safe Harbor Knowledge Standards for User-Generated Content

The Second Circuit reversed the district court’s grant of summary judgment to YouTube, holding that the DMCA § 512(c) safe harbor does not protect a service provider that had actual knowledge or awareness of specific infringing material — and that willful blindness to pervasive infringement can disqualify a platform from safe harbor protection.

Federal Circuit, Utility Patent

Highmark v. Allcare Health Management — Federal Circuit Addresses Standards for Exceptional Case Fee Awards

The Federal Circuit affirmed an exceptional case fee award against Allcare Health Management for maintaining objectively baseless patent infringement claims, applying the then-prevailing two-part test for § 285 fee awards and addressing the standard of review for exceptional case determinations — a ruling that set the stage for the Supreme Court’s 2014 Octane Fitness decision.

Federal Circuit, Patent Subject Matter Eligibility

Orthokinetics v. Safety Travel Chairs — Federal Circuit on Product-by-Process Claims and Definiteness

The Federal Circuit held that MySpace’s social networking website did not infringe Graphon’s patents on searchable online databases, finding the asserted claims invalid as obvious combinations of well-known internet database and search technologies — an important post-KSR ruling on obviousness in the social networking and internet technology space.

Federal Circuit, Patent Subject Matter Eligibility

Dealertrack v. Huber — Federal Circuit Holds Computer-Aided Credit Application Clearinghouse Is Patent-Ineligible Abstract Idea

The Federal Circuit held that Dealertrack’s claims covering a computer-aided system for routing automobile dealer credit applications to lenders were directed to the unpatentable abstract idea of processing credit applications — striking down the patents under § 101 because adding ‘apply it on a computer’ was insufficient to make an abstract process patent-eligible.

Federal Circuit, Utility Patent

Typhoon Touch Technologies v. Dell — Federal Circuit on Means-Plus-Function and Indefiniteness for Touchscreen Patents

The Federal Circuit reversed a finding of indefiniteness in a touchscreen patent dispute, holding that a claim term need not be expressed in traditional means-plus-function form to invoke § 112(f) — and clarified when functional claim language triggers the algorithm-disclosure requirement, with significant implications for computer and touch interface patent litigation.

Federal Circuit, Patent Subject Matter Eligibility

Ultramercial v. Hulu — Federal Circuit Holds Internet Advertising-as-Currency Patent Eligible Under § 101

The Federal Circuit reversed a district court dismissal and held that Ultramercial’s patent on distributing copyrighted content free-to-consumers in exchange for viewing advertisements was patent-eligible subject matter under § 101 — finding the multi-step process involved meaningful, non-abstract practical implementation steps, not merely an abstract idea.

Federal Circuit, Patent Subject Matter Eligibility

Classen Immunotherapies v. Biogen IDEC — Federal Circuit Addresses § 101 for Vaccination Scheduling Method Claims

The Federal Circuit held that Classen Immunotherapies’ method claims for identifying optimal vaccination schedules to reduce chronic immune-mediated disorders were patent-eligible under § 101 in part — distinguishing between claims that merely require correlating a natural relationship and claims that require further steps of implementing a vaccination schedule based on that correlation.

Federal Circuit, Patent Subject Matter Eligibility

CyberSource Corp. v. Retail Decisions — Federal Circuit Holds Credit Card Fraud Detection Method Is Unpatentable Mental Process

The Federal Circuit held that CyberSource’s patent on a method of detecting credit card fraud by tracking internet addresses was directed to an unpatentable mental process — a gathering and comparing of information that a human could perform in their mind — and that reciting a Beauregard computer-readable medium claim did not change the analysis.

Federal Circuit, Patent Subject Matter Eligibility

Association for Molecular Pathology v. USPTO (Myriad Genetics) — Federal Circuit on Gene Patent Eligibility

The Federal Circuit held that Myriad Genetics’ patents on isolated BRCA1 and BRCA2 gene sequences — mutations of which indicate elevated breast and ovarian cancer risk — were patent-eligible, while cDNA molecules and method claims for ‘comparing’ or ‘analyzing’ sequences were not — a major ruling later partially reversed by the Supreme Court in 2013.

Federal Circuit, Utility Patent

Therasense Inc. v. Becton Dickinson — Federal Circuit En Banc Raises Bar for Inequitable Conduct Defense

The Federal Circuit sitting en banc overhauled the doctrine of inequitable conduct, holding that rendering a patent unenforceable requires both but-for materiality (the undisclosed information would have blocked the patent) and specific intent to deceive the USPTO — dramatically narrowing a defense that had become a routine litigation tactic.

Federal Circuit, Utility Patent

McKesson Technologies v. Epic Systems — Federal Circuit Addresses Joint Infringement in Healthcare IT Patent Dispute

The Federal Circuit addressed joint infringement in a healthcare IT patent dispute, holding that when patients and healthcare providers together perform steps of a patented method for online patient-provider communications, neither party alone is a direct infringer — applying the direction-or-control standard for divided infringement to electronic health record systems.

Federal Circuit, Patent Subject Matter Eligibility

Prometheus Laboratories v. Mayo Collaborative Services — Federal Circuit Upholds Diagnostic Method Patents (Later Reversed by Supreme Court)

The Federal Circuit upheld Prometheus’s patents on methods for optimizing thiopurine drug dosing based on metabolite blood levels, holding the claims directed to patent-eligible subject matter because they applied natural correlations through a physical transformation — a ruling the Supreme Court unanimously reversed in 2012.

Federal Circuit, Patent Subject Matter Eligibility

Research Corp. Technologies v. Microsoft — Federal Circuit Upholds Halftone Image Patents Under § 101, Rejects Overly Rigid Abstraction Test

The Federal Circuit upheld patents on digital image halftoning technology as patent-eligible subject matter, holding that mathematical algorithms applied to specific, practical technological problems are not so abstract as to be excluded from § 101, and cautioning against an overly rigid application of the abstract idea exception.

Federal Circuit, Utility Patent

Transocean Offshore Deepwater Drilling v. Maersk — Federal Circuit on Obviousness, Secondary Considerations, and Offer for Sale

The Federal Circuit reversed a summary judgment of obviousness in a deepwater drilling rig patent dispute, holding that the district court failed to give adequate weight to powerful objective evidence of non-obviousness — including commercial success, long-felt need, and failure of others — and remanded for proper analysis of the full record.

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