Federal Circuit patent decisions
The Federal Circuit reversed a claim construction that relied on extrinsic expert testimony to impose a specific frequency threshold on the term “input signal,” holding that extrinsic evidence cannot establish a claim scope limit that has no basis in the patent’s intrinsic record.
The Federal Circuit held that in rare circumstances the Patent Trial and Appeal Board may raise grounds of unpatentability sua sponte against proposed substitute claims in a motion to amend IPR proceeding, even when a petitioner has not raised those grounds.
The Federal Circuit reversed the PTAB and held that Qualcomm’s 5G carrier aggregation patent was unpatentable as obvious, rejecting the Board’s motivation-to-combine analysis and addressing Intel’s standing as an Apple component supplier.
The Federal Circuit held that generic software terms like “code” and “application” can connote sufficient structure to avoid means-plus-function claiming under § 112 ¶ 6, reversing the district court’s construction.
The Federal Circuit granted mandamus and transferred patent suits against Volkswagen and Hyundai out of the Western District of Texas, holding that independently-owned dealerships do not constitute the manufacturers’ regular and established places of business for patent venue purposes absent day-to-day control over their operations.
The Federal Circuit held that a patent complainant at the ITC must establish a specific domestic industry article covered by a patent claim with direct evidence — general expert testimony about product operation is insufficient to satisfy the technical prong.
The Federal Circuit affirmed the district court’s finding of obviousness for Janssen’s patents on monthly injectable paliperidone palmitate (Invega Sustenna) for treating schizophrenia — holding that a skilled formulator would have been motivated to combine known long-acting injectable antipsychotic formulation techniques with paliperidone’s known properties to achieve a monthly injectable product.
The Federal Circuit affirmed the PTAB’s award of CRISPR gene-editing patent rights to the Broad Institute over UC Berkeley, holding that UC’s earlier reduction to practice in prokaryotic cells did not establish a continuous conception and reduction to practice in eukaryotic cells — the more commercially significant application — sufficient to defeat Broad’s independent patent claims.
The Federal Circuit struck down the Lanham Act’s prohibition on registering marks that include a living person’s name without their consent as applied to “TRUMP TOO SMALL,” holding it was an unconstitutional restriction on speech critical of public figures — though the Supreme Court later reversed.
The Federal Circuit held that a USPTO Director decision vacating an ex parte reexamination on IPR estoppel grounds is subject to judicial review under the APA, reversing the district court’s dismissal.
The Federal Circuit held that IPR estoppel under 35 U.S.C. § 315(e)(1) applies to invalidity grounds a petitioner could have raised in an earlier-decided IPR, even if that IPR and the later-challenged IPR were filed on the same day — closing the simultaneous-petition loophole.
A divided Federal Circuit affirmed that the patents covering Narcan nasal spray’s naloxone formulation were obvious, finding ample motivation to combine prior art formulations despite secondary considerations including FDA need and commercial success.
The Federal Circuit held that a detailed price quotation letter sent before the patent critical date constituted a commercial offer for sale that triggered the on-sale bar, invalidating a design patent for a medical device handle.
The Federal Circuit held that a contractual forum-selection clause requiring all patent disputes to be filed in district court — not the PTAB — barred Sarepta from filing IPR petitions, enforcing private agreements that waive the right to inter partes review.
The Federal Circuit vacated an $85 million jury verdict against Apple, holding that the damages expert failed to apportion the royalty base to account only for the patented features rather than the entire value of the accused LTE-enabled iPhones.
The Federal Circuit affirmed the PTAB’s rejection of Quanergy’s inter partes review challenge to Velodyne’s foundational 3D LiDAR patent, upholding the patent’s validity as Velodyne survived an attempt to invalidate its core autonomous vehicle sensing technology.
The Federal Circuit affirmed infringement of Caltech’s Wi-Fi error-correction patents but vacated a $1.1 billion damages award against Broadcom and Apple, rejected a novel two-tier royalty model, and clarified that IPR estoppel bars defendants from raising invalidity grounds that reasonably could have been raised in earlier IPR proceedings.
The Federal Circuit held that statements in a patent’s own specification acknowledging known prior art — so-called applicant-admitted prior art (AAPA) — cannot serve as the “basis” for an inter partes review petition under § 311(b), which limits IPR to prior art consisting of patents and printed publications.
The Federal Circuit reversed dismissal of Cooperative Entertainment’s patent on a peer-to-peer content delivery network architecture, holding that claims directed to a specific topology of network nodes for distributing large video files can be patent-eligible when the specific network arrangement improves how content is distributed — not merely an abstract idea of sharing data.
The Federal Circuit affirmed a preliminary injunction protecting Masimo’s pulse oximeter algorithm as a trade secret, holding that prior publication of equivalent mathematics in a statistics journal did not make the algorithm generally known to those who could obtain economic value from it in the medical device field.
The Federal Circuit vacated an ITC infringement determination because the patent owner’s expert lacked the specific experience required to qualify as a person of ordinary skill in the art — broad engineering expertise in related fields was not enough.
The Federal Circuit vacated an infringement ruling against Mylan, holding that the patent’s prosecution history and written description limited the claimed PVP concentration in AstraZeneca’s asthma inhaler patent to a precise value rather than a range.
The Federal Circuit affirmed PTAB’s refusal to invalidate Corcept’s mifepristone dosage patent, holding that an IPR petitioner must demonstrate a reasonable expectation of success for the specific dosage claimed — not merely for the drug combination generally.
In a divided decision, the Federal Circuit affirmed that Biogen’s multiple sclerosis drug patent lacked adequate written description because the specification’s single passing reference to a 480 mg/day dose of dimethyl fumarate did not demonstrate the inventors actually possessed that specific therapeutic method.
The Federal Circuit granted mandamus to compel transfer from the Western District of Texas, holding that a district court’s faster time to trial cannot alone outweigh other venue factors that favor transfer.
The Federal Circuit affirmed dismissal of Celgene’s Hatch-Waxman patent suit for improper venue, holding that for ANDA litigation venue purposes, the act of infringement is the submission of the ANDA itself — not the receipt of a notice letter or the state where future generic sales are anticipated.
The Federal Circuit reversed a PTAB obviousness determination, holding that the Board lacked substantial evidence for a reasonable expectation of success because the cited prior art references did not actually achieve the claimed result of inactivating antibiotic-resistant bacteria without photosensitizing agents.
The Federal Circuit addressed the scope of IPR estoppel under § 315(e)(2), holding that an IPR petitioner is estopped from raising in district court invalidity grounds based on prior art that could reasonably have been raised in the IPR petition — including prior art patents and publications the petitioner did not actually rely on in the IPR.
The Federal Circuit held that a cardiac monitoring patent claim directed to filtering T-wave data to distinguish it from atrial fibrillation was an abstract idea of data filtering, lacking an inventive concept sufficient to survive § 101 scrutiny.
The Federal Circuit held that a forum selection clause in a non-disclosure agreement requiring disputes to be litigated in New York courts does not preclude the counterparty from filing inter partes review petitions at the PTAB, because the connection between the IPR and the NDA was too attenuated.
The Federal Circuit reversed a district court’s patent ineligibility ruling, holding that claims directed to a specific two-channel mobile authentication method that improves cybersecurity represent a concrete technical solution eligible for patent protection.
The Federal Circuit reversed a design patent rejection, holding that prior art can only anticipate a design patent claim if the prior art reference discloses a design applied to the same article of manufacture identified in the claim — a design for an art tool cannot anticipate a design for a lip implant.
The Federal Circuit held that the USPTO acted arbitrarily by ordering ex parte reexamination based on arguments substantially identical to those the same requester had already raised and lost in IPR proceedings, affirming the agency’s discretion to reject repetitive patent challenges.
The Federal Circuit clarified that willful patent infringement requires only deliberate or intentional infringement — no heightened standard applies — and reinstated a doubled damages award against Cisco for its litigation conduct and disdain toward the patent holder.
The Federal Circuit affirmed that a patent is unenforceable for inequitable conduct when a company’s chief science officer withheld from the USPTO material information about a competitor’s epinephrine product that he disclosed to the FDA during the same period.
The Federal Circuit held that a corporate officer can be personally liable for actively participating in a corporation’s patent infringement even without any piercing of the corporate veil, and clarified that the patent marking statute limits pre-notice damages regardless of whether the infringer was aware of the patent.
The Federal Circuit held that four patents covering methods for coordinating multi-factor authentication across secure registries, PINs, biometrics, and universal devices are directed to abstract ideas and lack an inventive concept sufficient to confer patent eligibility.
The Federal Circuit affirmed the exclusion of a patent owner’s damages expert, holding that the expert’s reasonable royalty calculation failed to adequately apportion the royalty base to account only for the patented features, rather than the full value of the accused products.
The Federal Circuit reversed a $1.2 billion jury verdict for Juno, holding that patent claims covering a broad functional genus of CAR-T cell receptor constructs lacked adequate written description because the specification disclosed only a few examples that could not support the full claimed scope.
The Federal Circuit reversed a PTAB finding that two Gamon Plus gravity-feed dispenser design patents were not obvious, holding that secondary considerations lacked nexus to the claimed design and could not overcome the strong prima facie case of obviousness.
The Federal Circuit held that patents covering data management systems that use cryptographic hash functions to generate content-based identifiers are directed to abstract mathematical concepts and ineligible under § 101.
The Federal Circuit held that a generic drug company can be liable for inducing infringement of a brand-name patent even when it used a “skinny label” carving out the patented indication, affirming a $235 million jury verdict against Teva.
The Federal Circuit held that a corporate affiliate’s physical stores in a district cannot establish patent venue for related web-only entities that have no employees, offices, or physical presence there.
The Federal Circuit held that a university employment agreement providing that patents “shall be the property” of the university is a statement of future intent, not an automatic present assignment, and therefore did not strip the inventor of standing to sue.
The Federal Circuit vacated PTAB decisions in Qualcomm’s IPR proceedings against Qualcomm patents, holding that the Board’s sua sponte adoption of a new claim construction — without giving the parties an opportunity to address it — violated the Administrative Procedure Act and due process.
The Federal Circuit reversed PTAB obviousness findings, clarifying that prior art references that merely warn of tradeoffs do not categorically teach away from a claimed invention, and that commercial success nexus cannot be assessed element-by-element.
The Federal Circuit granted mandamus and ordered transfer out of the Western District of Texas, holding that courts must disregard a plaintiff’s transparent pre-litigation scheme to manufacture venue by assigning limited patent rights to a newly-formed affiliate days before filing suit.
The Federal Circuit affirmed that Yu’s patent on a digital camera using two lenses and two image sensors to produce an enhanced digital image was patent-ineligible under § 101 — holding the claims were directed to the abstract idea of ‘taking two pictures and using one to enhance the other’ even though the claims recited physical camera components.
The Federal Circuit affirmed that an applicant’s clear statements during prosecution disclaiming hierarchical category relationships narrowed the claim scope, and that later prosecution statements could not be used to walk back that unambiguous disavowal.
The Federal Circuit held for the first time that the USPTO can assert prosecution laches as a defense in a § 145 civil action, blocking Gilbert Hyatt’s decades-delayed patent applications from issuing based on his unreasonable and prejudicial delays.