Federal Circuit patent decisions
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 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 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 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 issued two precedential opinions vacating preliminary injunctions in hoverboard design patent cases, holding that courts must conduct product-by-product infringement analysis under the ordinary observer test and properly account for prior art when evaluating likelihood of success.
The Federal Circuit affirmed that IBM’s patents covering coordinated map-based and list-based selection of geographic data were directed to the abstract idea of organizing and displaying visual information, lacking an inventive concept sufficient for patent eligibility.
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 addressed trade secret and copyright claims arising from TA Instruments’ alleged misappropriation of Malvern Panalytical’s confidential algorithms and software for rheology instruments — affirming the district court’s rulings on preemption of state trade secret claims and the scope of copyright protection for scientific measurement software.
The Federal Circuit reversed dismissal of a peer-to-peer video delivery network patent under § 101, holding that the complaint plausibly alleged the claims represented a specific technical improvement over prior content distribution networks.
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 rejection of claims covering a computer-implemented system for identifying Social Security Disability Insurance eligibility, holding the claims were directed to an abstract mental process that humans perform through observation and evaluation.
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 held that Stanford University’s patents on detecting organ transplant rejection via donor cell-free DNA are ineligible under § 101, finding the claims directed to a natural phenomenon measured by conventional techniques.
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 reversed the TTAB’s cancellation of Coca-Cola’s U.S. registrations for THUMS UP and LIMCA, holding that a petitioner seeking cancellation under Lanham Act § 14(3) must show actual consumer confusion or misrepresentation affecting the U.S. market — competitive injury alone is not enough.
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 trade secret misappropriation claims between competing food processing equipment manufacturers — affirming the district court’s finding that Weber had misappropriated Provisur’s trade secrets through improper acquisition and use of confidential technical information about high-speed meat slicing systems, and upholding the damages award and injunction.
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.
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.