The Federal Circuit held that the Patent Trial and Appeal Board cannot cancel patent claims as indefinite in inter partes review proceedings, since the IPR statute limits the Board to invalidity grounds based on prior art under Sections 102 and 103.
The Federal Circuit held that the Patent Trial and Appeal Board exceeded its authority by instituting inter partes review on an obviousness ground that was not raised in the petition, violating the statutory requirement that the Board limit its review to grounds asserted by the petitioner.
The Federal Circuit reversed a PTAB obviousness ruling, holding that a patentee cannot presume a nexus between commercial success and a patent when the successful product contains significant features not covered by the patent claims.
The Supreme Court unanimously held that the American Rule prevents the USPTO from recovering its attorney’s fees from unsuccessful applicants in § 145 civil actions, even though the statute requires applicants to pay “all expenses” of the proceeding.
The Federal Circuit vacated a bench-determined FRAND royalty award, holding that a standard-essential patent holder is constitutionally entitled to a jury trial on “release payments” for an implementer’s past unlicensed use of the patented technology.
The Federal Circuit affirmed invalidity of Idenix’s broad nucleoside compound patent for lack of enablement and written description, ruling that a claim covering a vast genus of chemical compounds is invalid when the specification does not teach how to make most of them.
The Federal Circuit held that patent claims directed to manufacturing driveshaft liners that “attenuate” vibrations were invalid under § 101 because they were simply an instruction to apply Hooke’s law — a natural law — without specifying how to do so, triggering a sharp dissent warning of § 101 overreach.
The Federal Circuit vacated a $145 million patent damages award against Apple, holding that Wi-LAN’s expert improperly used entire smartphone sales as the royalty base for cellular standard-essential patents — applying the entire market value rule without adequate apportionment to the patented features — and requiring retrial on damages.
The Federal Circuit invalidated garage door opener patents covering a wireless sensor system for communicating door state, holding the claims were directed to the abstract idea of wirelessly communicating status information — an idea that cannot be its own inventive concept.
The Federal Circuit affirmed that patents covering the Contrave weight loss drug were obvious, rejecting arguments that unexpected synergistic effects between bupropion and naltrexone saved the claims from invalidity.
The Federal Circuit clarified the scope of IPR estoppel under § 315(e)(2), holding that IPR estoppel applies only to grounds based on patents or printed publications — the types of prior art available in IPR — and does not bar district court invalidity challenges based on prior art that could not have been raised in IPR, such as prior public use or on-sale evidence.
The Federal Circuit held that applying inter partes review (IPR) proceedings to patents issued before the America Invents Act does not constitute an unconstitutional taking under the Fifth Amendment, rejecting a major constitutional challenge to the PTAB system.
The Federal Circuit reversed a district court and invalidated Solutran’s check-processing patent under § 101, holding that the presence of physical steps involving paper checks does not transform an abstract business method into patent-eligible subject matter.
The Federal Circuit affirmed dismissal of Amgen’s doctrine of equivalents infringement claim, holding that arguments made during patent prosecution create estoppel bars even when those arguments were not strictly necessary to secure allowance of the claims.
The Federal Circuit affirmed invalidity of Enzo’s nucleotide labeling patents for lack of enablement, holding that claims covering tens of thousands of possible labeled polynucleotide embodiments were not enabled when the specification disclosed only a few working examples.
The Federal Circuit reversed a district court’s dismissal of patent claims as ineligible under § 101, applying Berkheimer to hold that well-pleaded factual allegations about how the claimed invention was an unconventional advance must be accepted as true at the 12(b)(6) stage — limiting early § 101 dispositive motions where patents allege specific technical improvements.
The Supreme Court held that the Lanham Act’s prohibition on registering marks that are immoral or scandalous constitutes an unconstitutional viewpoint-based restriction on speech under the First Amendment.
The Federal Circuit addressed the PTAB’s discretionary authority under § 314(a) to deny IPR petitions based on factors including the stage of parallel district court litigation and the efficiency of institution — affirming the PTAB’s broad discretion in institution decisions and its authority to consider the NHK-Fintiv framework for balancing IPR efficiency against parallel litigation.
The Federal Circuit held that state sovereign immunity does not apply in inter partes review proceedings, following the logic of its earlier St. Regis Mohawk Tribe ruling and closing the gap between tribal and state immunity claims at the PTAB.
The Supreme Court held that the federal government is not a ‘person’ eligible to petition for inter partes review, post-grant review, or covered business method review under the America Invents Act.
The Federal Circuit affirmed that patent claims directed to displaying profit-and-loss data on a trading screen were ineligible under § 101 because merely presenting new financial information on a generic display does not solve a technical problem.
The Federal Circuit held that patents covering network-controlled electric vehicle charging stations are directed to the abstract idea of network communication for device interaction, invalidating all four asserted patents under § 101.
The Federal Circuit reversed a district court’s ruling that Endo’s oxymorphone dosing patent was ineligible, holding that claims directed to a specific method of treating specific patients with specific dosages are not merely abstract natural laws.
The Federal Circuit upheld SRI’s network intrusion detection patents against a § 101 challenge, holding that claims requiring computers to perform surveillance and analysis that the human mind is incapable of doing are not directed to abstract ideas.
The Federal Circuit reversed a district court’s ruling that patents on using beta-alanine as a dietary supplement were invalid under § 101, holding that method of treatment claims covering use of a natural compound in non-naturally-occurring quantities to alter physiology are patent eligible.
The Supreme Court held that the Copyright Act’s authorization of “full costs” under § 505 covers only the six categories of costs specified in the general federal costs statute — not additional litigation expenses like expert witnesses, e-discovery, and jury consultants.
The Supreme Court unanimously held that copyright registration “occurs” when the Copyright Office registers a claim — not when the applicant files — meaning copyright holders must wait for the Office to act before they can sue for infringement.
The Federal Circuit invalidated a diagnostic patent for detecting autoantibodies linked to myasthenia gravis, then denied en banc rehearing in a rare decision accompanied by eight separate opinions, exposing the court’s deep division over § 101 and diagnostic patents.
The Federal Circuit held that the USPTO cannot reduce patent term adjustment by a period during which the applicant could not have taken any action to advance prosecution, limiting PTA deductions to periods of actual applicant delay.
The Supreme Court held that the AIA preserved pre-AIA law on the ‘on sale’ bar: a confidential commercial sale of an invention more than one year before the patent application triggers the bar, even if the invention’s details remain secret.
The Federal Circuit held that Trading Technologies’ patents on a graphical user interface for electronic futures trading were patent-ineligible abstract ideas under Alice — finding that displaying market data and allowing traders to place orders by clicking on a price ladder represented an abstract business method implemented on a computer rather than a patent-eligible technological improvement.
The Federal Circuit held that the judicially created doctrine of obviousness-type double patenting cannot be used to cut short a patent term extension lawfully granted by statute, affirming Novartis’s extended patent protection for its multiple sclerosis drug Gilenya.
The Federal Circuit reversed a district court’s dismissal and held that a patent claiming a method of preventing computers from running unlicensed software by using the BIOS to store a license verification key is not an abstract idea—it claims a concrete improvement to computer security functionality.
The Federal Circuit held that a trademark registration creates a presumption of secondary meaning only as of the date of registration — not retroactively — requiring Converse to independently prove its Chuck Taylor trade dress had acquired distinctiveness before each infringer’s first infringing use.
The Federal Circuit reversed invalidation of tabbed-spreadsheet navigation patents, holding that claims covering a specific, novel user interface for navigating large spreadsheets are not directed to an abstract idea.
The Federal Circuit reversed a district court’s summary judgment finding written description inadequacy for Nevro’s spinal cord stimulation patents, holding that the specification’s disclosure of the claimed frequency ranges combined with paresthesia-free stimulation raised genuine issues of material fact about whether a skilled artisan would have recognized the inventor’s possession of the full claimed range.
The Federal Circuit vacated a $140 million patent damages award, holding that the entire market value rule cannot be used to calculate damages when accused products have valuable features beyond the patented invention.
The Federal Circuit held that a company that had built a manufacturing facility and planned commercial activity within the scope of a challenged patent had Article III standing to appeal an adverse IPR decision, even without being accused of infringement.
Sitting en banc, the Federal Circuit held that the IPR one-year time bar under 35 U.S.C. § 315(b) is triggered when a defendant is served with a patent infringement complaint, even if that complaint is later voluntarily dismissed without prejudice.
The Federal Circuit dismissed an IPR petitioner’s appeal for lack of Article III standing, holding that a party must show concrete plans for activity creating a substantial risk of infringement — not just status as a competitor — to have standing to challenge an adverse PTAB decision in court.
The Federal Circuit vacated a PTAB decision that had rejected a trade show catalog as prior art, holding that materials publicly distributed at industry events can qualify as “printed publications” under 35 U.S.C. § 102(b) even if they were not formally indexed or archived.
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 Federal Circuit held that a patent covering an “attention manager” that displays content in unused screen space is ineligible under § 101, because it claims a desired outcome — non-interfering display of two information sets — without specifying any technical means of achieving it.
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 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 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.