Federal Circuit patent decisions
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 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 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 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 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 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 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 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.
The Federal Circuit reversed a PTAB finding of obviousness, holding that prior art disclosing ambitious performance parameters for a gas turbine engine cannot render claims obvious when the prior art relies on non-existent materials that a skilled artisan could not have made.
The Federal Circuit affirmed that Stanford’s patent claims directed to a computational method for haplotype phasing — determining which genetic variants are inherited together on each chromosome — were patent ineligible as abstract mathematical calculations implemented on generic computer hardware.
The Federal Circuit held that the § 314(d) bar on appealing institution decisions does not extend to post-institution estoppel rulings under § 315(e)(1), giving patent owners a path to challenge PTAB estoppel determinations that arise after an IPR is already underway.
The Federal Circuit reversed summary judgment of noninfringement, reaffirming that apparatus claims must be construed according to what the device physically is rather than how it functions, and remanding genuine disputes about literal infringement and the doctrine of equivalents for jury resolution.
The Federal Circuit affirmed a $155 million reasonable royalty award against Baxalta for infringing Bayer’s blood-clotting factor patent but reversed the willfulness finding, holding that mere knowledge of a patent and its infringement is not enough — willfulness requires wanton, malicious, or bad-faith conduct.
The Federal Circuit affirmed that Amgen’s patents claiming a broad functional genus of anti-PCSK9 antibodies were invalid for lack of enablement, because the specification failed to teach skilled artisans how to make the full range of claimed antibodies without undue experimentation.
The Federal Circuit affirmed that Amgen’s antibody patents directed to an entire genus of antibodies binding to a specific PCSK9 epitope lacked adequate enablement — holding that claiming a broad functional genus of antibodies without enabling the full scope of the claim requires undue experimentation and is invalid under § 112(a).
The Federal Circuit affirmed that a patent claiming a computerized system for redeeming credit card loyalty points for rewards is an abstract idea ineligible for patent protection, and also held that substitute claims proposed in covered business method review are subject to § 101 scrutiny.
The Federal Circuit held that technical documents submitted to video coding standards bodies and distributed at widely attended conferences qualify as prior art “printed publications” based on public accessibility, even without formal library indexing.
The Federal Circuit held that a patent owner’s disclaimer of its right to pursue infringement damages in a parallel district court proceeding could moot a challenger’s appeal of an adverse IPR final written decision, giving patent owners a powerful procedural tool.
The Federal Circuit held that Google forfeited its claim construction arguments by failing to raise them before the examiner or the PTAB, clarifying the important procedural distinction between waiver and forfeiture in patent appeals.
The Federal Circuit granted Apple’s mandamus petition, holding that district courts must resolve venue transfer motions before proceeding on the merits, and issued a writ ordering the Western District of Texas to transfer the case to Northern California.