Federal Circuit

The Federal Circuit reversed the PTAB’s obviousness finding against Virtek’s laser-alignment patent, holding that showing a skilled artisan had the knowledge to make a combination is insufficient for motivation to combine — there must also be a reason why they would have done so.

The Federal Circuit affirmed that importing patented medical devices for a U.S. conference fell within the 35 U.S.C. § 271(e)(1) safe harbor because the importation bore a reasonable relationship to obtaining FDA approval, even if the conference also served commercial purposes.

The Federal Circuit reversed a district court’s indefiniteness ruling on a lithium-ion battery patent, holding that two claim limitations are not contradictory—and therefore not indefinite—if they can both be satisfied simultaneously, even if one limitation makes an element optional while a narrowing limitation in the same claim makes that element mandatory.

The Federal Circuit affirmed obviousness of Pfizer’s pneumococcal vaccine patent, clarifying that the result-effective variable doctrine applies to optimize claim ranges even when the prior art does not disclose an overlapping range — expanding the scope of when routine optimization can render a claim obvious.

The Federal Circuit affirmed that Amazon failed to prove inequitable conduct against Freshub’s voice-processing patents, reiterating that the clear-and-convincing evidence standard requires proving both the materiality of a misrepresentation and specific intent to deceive the USPTO.

The Federal Circuit vacated and remanded a district court judgment in a voice-recognition/cable-TV patent dispute, holding that the district court improperly narrowed several claim terms—including ‘back channel’ and ‘centralized processing station’—to specific features described in the specification rather than construing them according to their plain and ordinary meaning as understood by a skilled artisan.

The Federal Circuit vacated the PTAB’s written description rejection of e-cigarette patent claims directed to a heater-length range, holding that in predictable arts a narrower claimed range can be adequately supported by a broader disclosed range without requiring explicit disclosure of the specific narrower range—and that prior art statements made for unrelated purposes do not automatically establish motivation to combine.

The Federal Circuit reversed the PTAB, holding that operating manuals distributed to a limited number of customers with confidentiality notices still qualify as ‘printed publications’ and prior art under § 102, because the relevant inquiry is whether interested members of the public could locate the document through reasonable diligence—not whether the document was widely distributed.

The Federal Circuit held that the statutory prohibition barring time-barred, joined IPR parties from introducing new issues into a proceeding does not apply when a patent owner files a motion to amend its claims—a joined party may oppose such a motion even if it could not have raised new issues in the merits phase, because the patent owner itself opened the door to new issues by proposing amended claims.

The Federal Circuit affirmed that a settlement agreement’s forum selection clause requiring patent disputes to be filed in Delaware federal court did not bar Abbott from filing inter partes review petitions after the agreement’s covenant-not-to-challenge period expired—because the agreement had expressly permitted IPRs during the covenant period in certain circumstances, indicating the parties understood IPR as a distinct proceeding.

The Federal Circuit affirmed the PTAB’s claim construction of ‘storage element’ based on inventor lexicography in an incorporated-by-reference patent, holding that the PTAB is not bound by a conflicting district court construction and that Intel’s reply arguments were proper because they responded to a new claim construction first raised in the patent owner’s response.

The Federal Circuit affirmed that generic drug manufacturers who carve out patented indications from their drug labels—the so-called ‘skinny label’ strategy—do not infringe method-of-use patents covering those omitted indications under the Hatch-Waxman Act, and that brand-name companies cannot use narrow method patents to extend exclusivity beyond an approved indication.

The Federal Circuit affirmed that the PTAB retains authority to issue a final written decision in an IPR or PGR even after the statutory one-year (plus extension) deadline has passed, provided no clear contrary congressional intent bars the late decision.

The Federal Circuit affirmed the PTAB’s ruling that Medtronic failed to prove Teleflex’s guide extension catheter patents unpatentable, finding that the claimed invention was conceived and reduced to practice before the critical date of the asserted prior art.

The Federal Circuit dismissed Allgenesis’s appeal from an adverse IPR decision for lack of Article III standing, holding that vague future product plans and non-appealable priority rulings do not constitute a concrete injury sufficient to invoke federal court jurisdiction.

The Federal Circuit vacated an infringement judgment in an ANDA case involving pulmonary hypertension drug patents, holding that the district court erred by construing ‘a pH of 13’ based solely on intrinsic evidence when the parties submitted competing extrinsic evidence—including textbooks explaining how chemists understand significant figures in pH values—that the court was required to consider.

The Federal Circuit upheld attorneys’ fee awards against PersonalWeb, affirming that the Kessler doctrine barred it from suing Amazon’s customers after PersonalWeb had stipulated to dismissal with prejudice of its earlier case against Amazon itself.

In a split decision, the Federal Circuit affirmed PTAB’s patentability finding for DivX’s media streaming patents, holding that Netflix forfeited its arguments by failing to present them with sufficient clarity in the IPR petition.

The Federal Circuit vacated a multi-million dollar patent damages award against Chilisin Electronics, holding that the district court abused its discretion by admitting a damages expert opinion that failed to differentiate between infringing and non-infringing products in the royalty base calculation.

The Federal Circuit partially affirmed and partially vacated PTAB’s obviousness rulings on Corephotonics dual-aperture camera patents, holding that one prior art reference was analogous on substantial evidence but remanding for the Board to explain whether a second reference meets the analogous art standard.

The Federal Circuit vacated an invalidity judgment against Finjan’s cybersecurity patents that had been based on collateral estoppel from a since-vacated case, while affirming non-infringement on claim construction grounds and excluding Finjan’s damages expert for inadequate apportionment.

The Federal Circuit held that the PTAB erred in categorically excluding expert testimony on the structure of computer-implemented means-plus-function claim limitations when the specification identifies named software protocols, clarifying a two-track framework for evaluating such claims.

The Federal Circuit affirmed PTAB’s obviousness finding for radiosurgery patents, clarifying that a reasonable expectation of success does not require an explicit separate finding and may be implicit in a well-supported motivation-to-combine analysis.

The Federal Circuit held that the PTAB applied an unduly strict standard when it rejected Netflix’s analogous art argument in an IPR, ruling that petitioners need not perfectly articulate the ‘field of endeavor’ in magic words—what matters is whether the prior art reference and the challenged patent share the same substantive technical field.

The Federal Circuit affirmed PTAB’s denial of a motion to amend patent claims in IPR, holding that proposed substitute claims were broader than original claims in at least some respects, and that claims broader in any respect cannot be substituted regardless of narrowing in others.

In a precedent-setting decision, the Federal Circuit held that patent term adjustments granted due to USPTO prosecution delays do not protect a later-expiring patent from obviousness-type double patenting challenges based on an earlier-expiring family member.

The Federal Circuit vacated the PTAB’s finding that Volvo Penta’s stern drive patent was obvious, holding that the Board improperly dismissed evidence of secondary considerations—including copying, commercial success, and industry praise—when competitors’ own recognition that the product’s success came from the unique patented features established the required nexus.

The Federal Circuit affirmed that IPR petitioner reply arguments expanding on cost and time savings as a motivation to combine were not impermissibly new—they properly responded to the patent owner’s opposition and were a fair extension of the efficiency rationale raised in the original petition—and held that a patent owner waives a ‘new theories’ objection by making only a general objection without identifying which theories are allegedly new.

The Federal Circuit vacated two PTAB decisions, holding that when a patent owner introduces a new claim construction for the first time in its post-institution response, the petitioner must be given a fair opportunity to introduce new arguments and evidence under that construction in its reply.

The Federal Circuit affirmed that United Therapeutics’ patents covering inhaled treprostinil for pulmonary hypertension satisfy enablement and written description requirements, holding that method-of-treatment claims need not separately address every disease variant in the specification.

The Federal Circuit held that patents governed exclusively by the America Invents Act cannot be drawn into interference proceedings—a landmark ruling that clarifies the divide between the old first-to-invent system and the modern first-inventor-to-file regime.

The Federal Circuit affirmed rejection of a reissue patent application that tried to broaden claims beyond the original patent’s single disclosed embodiment, holding that reissue claims must be directed to the same invention explicitly described in the original patent—not to undisclosed alternatives to elements the inventor treated as necessary to the invention.

The Federal Circuit vacated the PTAB’s IPR decisions upholding Medtronic’s sacral nerve stimulation patents, finding the Board committed a fundamental error by limiting the motivation-to-combine inquiry to the specific application context of the primary reference rather than the full claimed invention.

The Federal Circuit reversed the dismissal of an induced patent infringement suit on res judicata grounds, holding that a prior judgment on direct infringement claims does not preclude a subsequent suit for induced infringement when the induced infringement claims are based on different operative facts and were not litigated in the first action.

The Federal Circuit affirmed PTAB’s holding that Medytox’s botulinum toxin patents were not enabled across their full claimed scope, and clarified that PTAB preliminary guidance under the motion-to-amend pilot program is non-binding.

The Federal Circuit affirmed rejection of a patent application covering a hypertension treatment method, holding that discovering an unexpected mechanism through which known drugs achieve a known result does not overcome a prima facie obviousness case rooted in inherency.

The Federal Circuit affirmed PTAB’s decision to disregard Parus Holdings’ evidence in IPR proceedings, holding that a patent owner’s attempt to incorporate arguments by reference through voluminous exhibits violates PTAB procedural rules and the APA does not require the Board to overlook that violation.

The Federal Circuit affirmed that a nonparty who shared key design elements for an expandable hose with the named inventor at a pre-filing meeting was a co-inventor who should have been listed on the patents, and that his testimony was adequately corroborated by physical prototypes and documentary evidence—requiring correction of inventorship on all asserted patents.

The Federal Circuit reversed the PTAB’s reliance on commercial success as a secondary consideration of nonobviousness for car floor mat patents, holding that evidence of commercial success must be linked to the claimed combination as a whole, not to a single feature that was already present in the prior art—otherwise there is no nexus and the secondary consideration carries no weight.

The Federal Circuit reversed the PTAB’s obviousness ruling on a drug delivery device patent, holding that the Board misapplied the analogous art test by comparing a prior art reference to another prior art reference rather than to the challenged patent—an IPR petitioner bears the burden of showing that each prior art reference is analogous to the patent being challenged, not to other references.

The Federal Circuit reversed a district court’s addition of a joint inventor to a bacon-precooking patent, holding that contributing a preheating concept—when that concept was already known and not the novel element of the claimed invention—is an ‘insignificant’ contribution that does not satisfy the requirements for joint inventorship under the Pannu factors.

The Federal Circuit affirmed invalidity of UCB’s transdermal rotigotine patch patent, holding that prior art ranges overlapping with claimed ranges create a presumption of obviousness that the patentee must rebut by showing criticality or unexpected results.