Federal Circuit patent decisions
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 held that refurbishing single-use cameras originally sold in the United States is permissible repair, not patent infringement, because patent rights are exhausted by the first authorized U.S. sale.
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 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 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 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 vacated a TTAB opposition ruling, holding that the Board improperly analyzed likelihood of confusion by focusing only on the “Packard” component of HEWLETT-PACKARD rather than considering the marks in their entireties, and failed to apply the correct legal test for the relatedness of goods and services.
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 held that the TTAB failed to give proper weight to the fame of the FRITO-LAY trademark when finding no likelihood of confusion with the mark FIDO LAY for dog treats, establishing that famous marks deserve full weight in the multi-factor Dupont analysis.
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.
The Federal Circuit reversed a grant of summary judgment, holding that genuine factual disputes existed over whether a trade show brochure triggered the on-sale bar or anticipated the patent, because neither party had presented evidence on how a person of ordinary skill in the art would understand the brochure.
The Federal Circuit held that business method patents are not categorically excluded from patentability — upholding a patent on a computerized financial data processing system for mutual fund management and establishing the ‘useful, concrete, and tangible result’ test for software and business method patent eligibility that dominated patent law until Alice v. CLS Bank (2014).
The Federal Circuit held that UC’s broad patent claims on the insulin cDNA sequence and all vertebrate and mammalian insulin cDNA sequences were invalid for lack of written description — establishing that broad genus claims in biotechnology must be supported by disclosure of a representative number of species sufficient to support the claimed scope.
The Federal Circuit affirmed that Genentech’s patent claims on human growth hormone (hGH) methods were limited by the written description in the specification — holding that claims cannot be broader than what the specification actually describes, even in pioneering biotechnology cases, and establishing important written description doctrine for biotech patent claims.
The Federal Circuit reinforced the principles of conception and reduction to practice in patent priority disputes, clarifying that an inventor’s conception must be complete and definite before any reduction to practice can begin — an important decision for inventorship and priority determinations in pharmaceutical and biotech research.