Federal Circuit

The Federal Circuit reversed a declaratory judgment of non-infringement, holding that the doctrine of claim differentiation creates a strong presumption that an independent claim has a broader scope than its dependent claims, and that the narrow limitation in a dependent claim should not be read back into the independent claim.

The Federal Circuit reversed summary judgments of non-infringement and invalidity, holding that the district court improperly added a negative limitation to patent claims without intrinsic evidence support, and that prosecution disclaimer applies only when a patentee makes clear and unmistakable surrenders of claim scope — ambiguous prosecution statements do not give rise to disclaimer.

The Federal Circuit held that the Hatch-Waxman safe harbor of § 271(e)(1) does not immunize basic pre-clinical research conducted by drug companies even when the research might eventually lead to FDA submissions, adopting a narrow reading later reversed by the Supreme Court.

The Federal Circuit held that an ANDA applicant seeking approval to sell a generic drug for an FDA-approved use does not infringe a method-of-use patent claiming an unapproved, off-label use of the same drug — establishing important limits on Hatch-Waxman patent infringement actions.

The Federal Circuit affirmed rejection of claims for a nickel-base superalloy composition, holding that a prior art reference disclosing a range that overlaps a claimed range establishes a prima facie case of obviousness, and that the normal desire of scientists to optimize within known ranges provides motivation to combine — the applicant must then come forward with evidence of unexpected results to overcome the presumption.

The Federal Circuit affirmed the validity of Amgen’s erythropoietin (EPO) patents covering recombinant human erythropoietin, finding the claims satisfied written description and enablement requirements, while remanding certain issues for further consideration.

The Federal Circuit sharply limited the common-law experimental use defense by holding that universities infringe patents when they use patented technology in their research programs, even without profit motive, because such use advances the university’s legitimate business objectives.

The Federal Circuit held that dictionaries, encyclopedias, and technical treatises are valuable starting points for determining the ordinary and customary meaning of patent claim terms, and should be consulted before examining the specification for limitations.

The Federal Circuit held that the written description requirement is separate from the enablement requirement and that a deposit of biological materials in a recognized depository can satisfy written description — setting an important standard for biotechnology patent claims directed to biological sequences and genus inventions.

The Federal Circuit held that a farmer who saved patented Roundup Ready soybean seeds from his harvest and replanted them violated Monsanto’s patent rights, because patent exhaustion does not apply to seeds that were copied rather than purchased from the patentee.

The Federal Circuit affirmed invalidation of patents covering methods of preparing cruciferous sprout food products for cancer prevention, holding that the patents were anticipated because the glucosinolate content and Phase 2 enzyme-inducing properties of broccoli sprouts were inherent characteristics of previously known sprouting methods — discovering naturally existing properties of known subject matter does not create patentable invention.

The Federal Circuit affirmed infringement of an offshore platform installation patent under the doctrine of equivalents but vacated the damages award, holding that all three damage models presented by the patentee’s expert were legally flawed because they based royalty calculations on the entire platform cost rather than the economic value attributable to the patented method, and because they improperly assumed an injunction would prevent use of the entire structure.

The Federal Circuit held that a patent claiming the priority date of a provisional application is invalid under the on-sale bar if the provisional specification failed to adequately describe the claimed invention, because the patent cannot claim priority it did not earn.

The Federal Circuit held en banc that a patent’s reference to biological material deposited in a public repository satisfies the written description requirement of 35 U.S.C. § 112, reversing a panel decision that had threatened biotechnology patents relying on ATCC deposits.

The Federal Circuit held that a government laboratory researcher’s pre-critical-date demonstrations of his internet database system to colleagues without confidentiality restrictions triggered the public use bar, invalidating his patents.

The Federal Circuit affirmed infringement and reversed the district court’s overly narrow claim construction, reaffirming that claim terms carry their ordinary and accustomed meaning unless the patentee clearly redefined the term or disclaimed certain subject matter in the intrinsic record.

The Federal Circuit affirmed non-infringement in an e-commerce coupon patent case, holding that preamble language in a method claim does not limit the claim’s scope when the claim body describes a structurally complete invention and the patentee did not rely on the preamble to distinguish prior art — but preamble language that provides antecedent basis or defines essential structure may be limiting.

The Federal Circuit reversed a narrow claim construction, holding that the claim term “reciprocating member” in an exercise equipment patent should be given its ordinary meaning encompassing multi-component and curved structures, not limited to the single straight bar depicted in the specification’s drawings.

In an en banc decision, the Federal Circuit held that subject matter disclosed in a patent specification but not claimed is dedicated to the public and cannot be recaptured through the doctrine of equivalents — patentees who fail to claim a disclosed alternative cannot later assert it as equivalent to what they did claim.

The Federal Circuit held that the equitable doctrine of prosecution laches can bar enforcement of patent claims that issued after an unreasonable and unexplained multi-decade delay in patent prosecution — a landmark ruling against Jerome Lemelson’s famous ‘submarine patent’ strategy.

The Federal Circuit affirmed patent infringement and damages for Bose, holding that a claim amendment made solely to satisfy a formal antecedent basis requirement — not to narrow the claim’s scope — does not trigger prosecution history estoppel and does not bar the doctrine of equivalents.

The Federal Circuit reversed a summary judgment of non-infringement in a modular conveyor belt patent case, holding that the district court improperly limited the claim term ‘portion’ to a narrow construction requiring physical separation, when the plain meaning of ‘portion’ encompasses both separate and integral parts and the specification described multiple embodiments.

The Federal Circuit held that the on-sale bar of 35 U.S.C. § 102(b) applies when an inventor contracts with a third-party supplier to mass-produce the invention commercially, rejecting any “supplier exception” to the statutory bar.

The Federal Circuit reversed a judgment of invalidity for lack of enablement, holding that a patent on a recombinant method for producing human growth hormone (hGH) was adequately enabled even though the process predominantly produced met-hGH (containing an extra methionine residue) rather than mature 191-amino acid hGH — the specification taught how to make and use the claimed invention, and the jury’s enablement verdict was supported by substantial evidence.

The Federal Circuit vacated summary judgment and remanded for trial, holding that splitting a claimed unitary structure into two separate components may constitute infringement under the doctrine of equivalents even when the literal claim requirement for a single integrated piece is not met.

The Federal Circuit reversed a summary judgment of invalidity for indefiniteness, reaffirming that claims are sufficiently definite under § 112 if a person skilled in the art would understand the bounds of the claim when read in light of the specification — close questions of claim construction do not render claims invalid, and the presumption of validity favors issued patents.

The Federal Circuit vacated summary judgment of non-infringement, holding that “point-of-sale location” in an e-commerce patent should not be limited to a traditional physical retail store and could include a consumer’s home when used as the end-point for electronic content delivery and purchase.

The Federal Circuit held that the on-sale bar under 35 U.S.C. § 102(b) is triggered only by a communication that rises to the level of a commercial offer for sale under the Uniform Commercial Code, not by mere negotiations or demonstrations.

The Federal Circuit vacated summary judgment of non-infringement, holding that the district court improperly imported a structural limitation (a “ledge”) from the patent drawings into a broader claim term (“angular medial surface”), and clarified when a patentee’s pre-suit correspondence satisfies the § 287(a) actual notice requirement for damages.

The Federal Circuit held that a key Eli Lilly patent covering the method of using fluoxetine (Prozac) was invalid for obviousness-type double patenting, opening the door for generic competition with the world’s best-selling antidepressant years ahead of schedule.

The Federal Circuit held that process patent infringement under § 271(g) requires the patent to be issued at the time the accused process is performed; pre-issuance use cannot infringe.

The Federal Circuit reversed summary judgment, holding that Intel’s cross-license from National Semiconductor did not extend to Intergraph’s Clipper processor patents, because those patents were directly assigned from Fairchild to Intergraph and never passed through National Semiconductor’s ownership or control.

The Federal Circuit vacated a preliminary injunction against Barnes & Noble’s one-click shopping feature, holding that Barnes & Noble raised substantial questions about the validity of Amazon’s one-click patent that precluded injunctive relief at the preliminary stage.

The Federal Circuit held that where a patent specification consistently and clearly defines the invention in terms of a specific structure, the claims are limited to that structure even if the claim language is broader.

The Federal Circuit sitting en banc adopted a sweeping complete-bar rule: any narrowing amendment made during prosecution to comply with the Patent Act creates an absolute estoppel that bars all claims of equivalence for the amended element — a rule later rejected by the Supreme Court in 2002.

The Federal Circuit held that a claim limitation that does not use the word “means” carries a strong presumption against means-plus-function treatment under § 112(6), and that even when that presumption is overcome, the limitation must still be construed in light of the specification to determine its proper scope.

The Federal Circuit invalidated OxyContin-related patent claims because the applicant added a specific plasma concentration ratio during prosecution that had not been disclosed in the original filing, violating the written description requirement of § 112.

The Federal Circuit affirmed infringement of a process patent covering genetically engineered bacteria for producing the amino acid threonine, holding that importing bacteria manufactured abroad using the patented method constitutes infringement under 35 U.S.C. § 271(g) even when the manufacturing was performed under a foreign license that did not extend to the United States.

Priceline.com’s patent on the ‘name-your-own-price’ reverse auction method for travel services was one of the defining e-commerce patents of the late 1990s — illustrating the type of business method patent that became common after State Street Bank and creating competitive tensions that anticipated the post-Alice invalidity wave that would eventually threaten such patents.

The Federal Circuit affirmed non-infringement, holding that Amgen’s synthetic consensus interferon-alpha (INFERGEN) did not infringe Schering’s recombinant DNA patents because it duplicated no natural interferon subtype and therefore did not use the patented recombinant DNA methods to produce a natural subtype.

The Federal Circuit reversed a finding of priority in favor of Genentech, holding that reduction to practice of a recombinant protein invention requires the inventors themselves — not a third party — to recognize the utility of what they have made.

The Federal Circuit held that the common-law experimental use exception to patent infringement is narrow and does not protect activities performed with a commercial purpose, even if the infringer never ultimately sold the infringing product.

The Federal Circuit held that the “offer to sell” prong of patent infringement under § 271(a) requires the offer to be made within the United States, and does not extend to offers made abroad for products to be assembled and used abroad.

The Federal Circuit affirmed summary judgment of non-infringement in an ANDA patent case, holding that Bayer’s repeated prosecution statements characterizing its claimed nifedipine crystal surface area range as ‘special’ and producing ‘superior’ performance created a clear and unmistakable surrender of broader ranges, precluding any claim of infringement under the doctrine of equivalents.

The Federal Circuit affirmed invalidity of a lacrosse stick patent under the on-sale bar of § 102(b), holding that subjective uncertainty about whether a commercially sold product possessed claimed performance characteristics cannot serve as an escape from the bar — if the product was ready for patenting and was commercially offered for sale more than one year before filing, the bar applies even if the seller did not know whether the product met the patent’s performance criteria.