Federal Circuit

The Federal Circuit affirmed that Arbutus Biopharma’s patent on stable nucleic acid-lipid particles (SNALPs) with non-lamellar morphology was inherently anticipated by an earlier Arbutus patent, holding that when the same formulation process disclosed in both patents naturally produces the claimed morphological structure, anticipation is established even without an explicit description of that structure in the earlier patent.

The Federal Circuit affirmed willful infringement of Ironburg’s video game controller patent by Valve’s Steam Controller, while vacating and clarifying the standard for IPR estoppel — holding that the patent owner, not the petitioner, bears the burden of proving estoppel applies.

The Federal Circuit reversed the PTAB’s finding of no obviousness, holding that when two prior art references address the same technical problem and one provides a known technique for solving it, a skilled artisan would be motivated to combine them—the Board’s contrary conclusion contradicted the very logic of the KSR ‘known-technique’ rationale.

The Federal Circuit revived Apple’s Administrative Procedure Act challenge to the USPTO’s Fintiv policy, under which the PTAB discretionarily denies institution of inter partes reviews when parallel district court litigation is proceeding, allowing the challenge to be heard on its merits.

The Federal Circuit affirmed the PTAB’s ruling that the University of Minnesota’s antiviral drug patent—directed to phosphoramidate prodrugs of nucleoside derivatives—lacked adequate written description support for its broad genus claims, because the patent’s specification disclosed only a ‘laundry list’ of chemical moieties without adequately describing the full scope of the compounds being claimed.

The Federal Circuit affirmed the delisting of Jazz Pharmaceuticals’ REMS system patent from the FDA Orange Book, holding that a patent claiming a drug distribution and monitoring system — rather than the drug itself or a method of using it — is ineligible for Orange Book listing.

The Federal Circuit affirmed that Minerva Surgical’s demonstration of 15 fully functional endometrial ablation device prototypes at an industry trade show—more than a year before the patent’s priority date—triggered the public use bar of pre-AIA § 102(b) and invalidated the asserted patent claims, because the prototypes embodied every claim limitation and were demonstrated to sophisticated, unconstrained observers.

The Federal Circuit held that the USPTO Director’s authority to review PTAB decisions under the Arthrex remedy is not constrained by the IPR statutory deadlines, and that the Appointments Clause does not guarantee patent owners a right to timely Director rehearing.

The Federal Circuit affirmed that Personalized Media Communications’ patent covering digital rights management technology is unenforceable for prosecution laches, voiding a $308 million jury verdict against Apple, after finding PMC engaged in unreasonable and unexplained delays in prosecuting its patent application.

The Federal Circuit vacated a district court’s indefiniteness finding for a viscometer patent, holding that the intrinsic record — not dictionary definitions — governs claim construction, and that terms of degree are not indefinite when the specification provides adequate context for a skilled artisan.

The Federal Circuit granted mandamus, holding that a foreign defendant cannot defeat Rule 4(k)(2) personal jurisdiction in the plaintiff’s chosen forum by unilaterally consenting to jurisdiction in a different district after the lawsuit is filed.

The Federal Circuit affirmed that Sandoz’s generic pirfenidone label would not induce infringement of Genentech’s method-of-treatment patents, and also upheld invalidity of the liver function test patents as obvious, clarifying the inducement standard for drug labels in Hatch-Waxman litigation.

The Federal Circuit held that genuine disputes of material fact precluded summary judgment of patent invalidity for failure to name a co-inventor, reversing the district court’s ruling that the patents were invalid for nonjoinder.

The Federal Circuit held that collateral estoppel from a prior IPR proceeding can invalidate claims in a later IPR even when the claims use different language, as long as the differences do not materially alter the question of patentability.

The Federal Circuit upheld the exclusion of a patent owner’s expert witness whose infringement opinion rested on a claim construction that materially differed from the district court’s adopted construction, resulting in summary judgment of noninfringement.

The Federal Circuit held that a patent owner’s disclaimer made for the first time during an IPR proceeding does not bind the PTAB in that same proceeding, preventing patentees from narrowing claim scope through argument alone to avoid invalidity.

The Federal Circuit unanimously affirmed the district court’s holding that five patent claims covering ibrutinib (Imbruvica) — a breakthrough cancer drug — were not invalid for obviousness, lack of written description, or lack of enablement, underscoring appellate deference to trial court factual findings in ANDA cases.

The Federal Circuit held that the Patent Trial and Appeal Board may adopt claim constructions that differ from those entered by a district court in concurrent litigation, as the two proceedings are legally independent.

The Federal Circuit held that patent owners may amend claims during inter partes review to address issues beyond the specific grounds raised in the petition, provided the amendments do not enlarge claim scope or add new matter.

The Federal Circuit held that although an irrevocable patent license cannot be unilaterally revoked by the grantor, both parties may mutually agree to terminate it, and doing so restores the licensor’s standing to bring patent infringement suits against the former licensee.

The Federal Circuit reversed a district court’s ruling that the claim term “Downloadable” was indefinite in Finjan’s computer virus detection patents, holding that the term’s plain meaning — an executable or interpretable application program — was sufficiently definite.

The Federal Circuit reversed an indefiniteness ruling against patents covering geometric meshing methods used in computer-aided design, holding that the district court applied an incorrect ‘unanswered questions’ test rather than the proper ‘reasonable certainty’ standard from Nautilus.

The Federal Circuit affirmed infringement of Corcept Therapeutics’ method-of-treatment patents covering combination therapy using mifepristone with a strong CYP3A inhibitor — finding that Teva’s ANDA label induced infringement and rejecting Teva’s challenge to the skinny label carve-out strategy Corcept had prevented through its method claims.

The Federal Circuit affirmed that product-by-process claim language — which defines a product in terms of the process used to make it — does not impart patentable weight unless the claimed process produces a product that is structurally and functionally different from the prior art.

The Federal Circuit held that the reissue recapture doctrine bars an applicant from using a reissue application to reclaim claim scope that was deliberately surrendered during original prosecution to overcome a patent eligibility rejection under § 101.

The Federal Circuit held that the Patent Act requires inventors to be human beings, affirming the USPTO’s rejection of applications that named an artificial intelligence system called DABUS as the sole inventor.

The Federal Circuit affirmed an award of attorneys’ fees under the court’s inherent equitable powers, holding that a patent owner’s voluntary dismissal from one district followed immediately by refiling the same case in a different district constituted bad-faith forum shopping that warranted sanctions.

The Federal Circuit affirmed denial of a preliminary injunction, holding that speculative harms and generalized customer concerns about potential future harm do not constitute the concrete evidence of irreparable injury required to support preliminary patent injunctive relief.

The Federal Circuit held that prior art references containing obvious transcription errors — mistakes that a skilled artisan would immediately recognize as misstatements — cannot be used to establish unpatentability, because the erroneous content does not accurately disclose the state of the art.

The Federal Circuit vacated a $2.75 billion patent infringement judgment against Cisco, holding that the trial judge was disqualified from hearing the case after discovering his wife owned Cisco stock — placing the stock into a blind trust did not satisfy the federal recusal statute’s divestiture requirement.

The Federal Circuit held that a patent specification adequately supported a negative claim limitation — “absent an immediately preceding loading dose” — through clinical trial data showing efficacy without a loading dose, sustaining Novartis’s fingolimod patent.

The Federal Circuit addressed Teradata’s patent infringement claims against SAP in the context of the broader antitrust and interoperability dispute over enterprise database software, affirming the district court’s rulings on claim construction and damages methodology while the parallel antitrust claims were litigated separately.

The Federal Circuit held that the USPTO Commissioner for Patents could constitutionally exercise the Director’s review authority over PTAB decisions during a vacancy, rejecting Arthrex’s Appointments Clause and Federal Vacancies Reform Act challenges.

The Federal Circuit affirmed a $7 million patent infringement damages verdict against Microsoft, holding that claim construction challenges must be preserved in a party’s opening brief to be raised on appeal, and reversed the denial of prejudgment interest as an abuse of discretion.

The Federal Circuit vacated a PTAB final written decision for failing to resolve conflicting expert testimony about whether a third party qualified as a joint inventor of a prior art reference, holding that the Board cannot deem all witnesses credible when their accounts are mutually contradictory.

The Federal Circuit addressed the methodology for determining FRAND royalty rates for standard-essential patents in a dispute between Apple and Ericsson over cellular connectivity patents, reviewing the district court’s FRAND determination and addressing how courts should calculate per-unit royalty rates for SEPs incorporated into technical standards used in billions of devices.

The Federal Circuit reversed the PTAB’s finding of non-obviousness, holding that generalized industry skepticism about robotic surgery cannot alone overcome a motivation to combine prior art references — the skepticism must target the specific problem addressed by the claimed invention.

The Federal Circuit held that claim terms like “resilient” and “pliable” are not indefinite simply because they admit of varying degrees, reversing the district court’s indefiniteness ruling on a cardiac catheter patent.

The Federal Circuit applied the Supreme Court’s Minerva v. Hologic (2021) narrowed assignor estoppel framework to a medical device patent dispute, clarifying that assignor estoppel bars an inventor-assignee from challenging patent claims whose validity was implicitly warranted at assignment — but does not bar challenges to claim scope expansions made after assignment.

The Federal Circuit reversed a $137 million induced infringement verdict against Roche, holding that induced infringement requires actual knowledge that the induced acts constitute patent infringement, not merely a ‘knew or should have known’ standard.