Federal Circuit patent decisions
The Federal Circuit affirmed dismissal of Amgen’s doctrine of equivalents infringement claim, holding that arguments made during patent prosecution create estoppel bars even when those arguments were not strictly necessary to secure allowance of the claims.
The Federal Circuit affirmed invalidity of Enzo’s nucleotide labeling patents for lack of enablement, holding that claims covering tens of thousands of possible labeled polynucleotide embodiments were not enabled when the specification disclosed only a few working examples.
The Federal Circuit reversed a district court’s dismissal of patent claims as ineligible under § 101, applying Berkheimer to hold that well-pleaded factual allegations about how the claimed invention was an unconventional advance must be accepted as true at the 12(b)(6) stage — limiting early § 101 dispositive motions where patents allege specific technical improvements.
The Federal Circuit held that state sovereign immunity does not apply in inter partes review proceedings, following the logic of its earlier St. Regis Mohawk Tribe ruling and closing the gap between tribal and state immunity claims at the PTAB.
The Federal Circuit affirmed that patent claims directed to displaying profit-and-loss data on a trading screen were ineligible under § 101 because merely presenting new financial information on a generic display does not solve a technical problem.
The Federal Circuit held that patents covering network-controlled electric vehicle charging stations are directed to the abstract idea of network communication for device interaction, invalidating all four asserted patents under § 101.
The Federal Circuit reversed a district court’s ruling that Endo’s oxymorphone dosing patent was ineligible, holding that claims directed to a specific method of treating specific patients with specific dosages are not merely abstract natural laws.
The Federal Circuit upheld SRI’s network intrusion detection patents against a § 101 challenge, holding that claims requiring computers to perform surveillance and analysis that the human mind is incapable of doing are not directed to abstract ideas.
The Federal Circuit reversed a district court’s ruling that patents on using beta-alanine as a dietary supplement were invalid under § 101, holding that method of treatment claims covering use of a natural compound in non-naturally-occurring quantities to alter physiology are patent eligible.
The Federal Circuit invalidated a diagnostic patent for detecting autoantibodies linked to myasthenia gravis, then denied en banc rehearing in a rare decision accompanied by eight separate opinions, exposing the court’s deep division over § 101 and diagnostic patents.
The Federal Circuit held that the USPTO cannot reduce patent term adjustment by a period during which the applicant could not have taken any action to advance prosecution, limiting PTA deductions to periods of actual applicant delay.
The Federal Circuit held that Trading Technologies’ patents on a graphical user interface for electronic futures trading were patent-ineligible abstract ideas under Alice — finding that displaying market data and allowing traders to place orders by clicking on a price ladder represented an abstract business method implemented on a computer rather than a patent-eligible technological improvement.
The Federal Circuit held that the judicially created doctrine of obviousness-type double patenting cannot be used to cut short a patent term extension lawfully granted by statute, affirming Novartis’s extended patent protection for its multiple sclerosis drug Gilenya.
The Federal Circuit reversed a district court’s dismissal and held that a patent claiming a method of preventing computers from running unlicensed software by using the BIOS to store a license verification key is not an abstract idea—it claims a concrete improvement to computer security functionality.
The Federal Circuit reversed invalidation of tabbed-spreadsheet navigation patents, holding that claims covering a specific, novel user interface for navigating large spreadsheets are not directed to an abstract idea.
The Federal Circuit reversed a district court’s summary judgment finding written description inadequacy for Nevro’s spinal cord stimulation patents, holding that the specification’s disclosure of the claimed frequency ranges combined with paresthesia-free stimulation raised genuine issues of material fact about whether a skilled artisan would have recognized the inventor’s possession of the full claimed range.
The Federal Circuit vacated a $140 million patent damages award, holding that the entire market value rule cannot be used to calculate damages when accused products have valuable features beyond the patented invention.
The Federal Circuit held that a company that had built a manufacturing facility and planned commercial activity within the scope of a challenged patent had Article III standing to appeal an adverse IPR decision, even without being accused of infringement.
Sitting en banc, the Federal Circuit held that the IPR one-year time bar under 35 U.S.C. § 315(b) is triggered when a defendant is served with a patent infringement complaint, even if that complaint is later voluntarily dismissed without prejudice.
The Federal Circuit dismissed an IPR petitioner’s appeal for lack of Article III standing, holding that a party must show concrete plans for activity creating a substantial risk of infringement — not just status as a competitor — to have standing to challenge an adverse PTAB decision in court.
The Federal Circuit vacated a PTAB decision that had rejected a trade show catalog as prior art, holding that materials publicly distributed at industry events can qualify as “printed publications” under 35 U.S.C. § 102(b) even if they were not formally indexed or archived.
The Federal Circuit held that a patent covering an “attention manager” that displays content in unused screen space is ineligible under § 101, because it claims a desired outcome — non-interfering display of two information sets — without specifying any technical means of achieving it.
The Federal Circuit held that tribal sovereign immunity cannot be used to shield patents from inter partes review, rejecting a controversial licensing arrangement between Allergan and the St. Regis Mohawk Tribe designed to avoid IPR challenges to Restasis patents.
The Federal Circuit vacated the TTAB’s decision allowing Coca-Cola to register its ZERO trademarks without a disclaimer, holding the Board applied the wrong genericness standard and failed to properly assess the degree of descriptiveness when evaluating acquired distinctiveness.
The Federal Circuit addressed claim differentiation and claim construction for Teleflex’s coronary sinus lead placement patent — holding that where a dependent claim adds a specific limitation, the corresponding independent claim must be broader, and applying this principle to construe lead placement method claims in a dispute between cardiac device makers.
The Federal Circuit held that in states with multiple judicial districts, a domestic corporation “resides” for patent venue purposes only in the single district where its principal place of business or registered office is located, tightening venue rules after TC Heartland.
The Federal Circuit held that the patent venue statute, 28 U.S.C. § 1400(b), does not apply to alien (foreign) corporate defendants, who remain subject to suit for patent infringement in any U.S. district where they are subject to personal jurisdiction.
The Federal Circuit held that patent claims covering computerized voting, verification, and vote tabulation are directed to the abstract idea of voting — a fundamental human activity for centuries — and thus ineligible under § 101.
The Federal Circuit held that method-of-treatment claims directed to a specific dosing regimen for schizophrenia based on a patient’s genetic profile are patent eligible under §101, distinguishing the Supreme Court’s Mayo decision and reinforcing the eligibility of personalized medicine patents.
The Federal Circuit reversed a PTAB obviousness ruling against a wireless networking patent, holding that “common sense” cannot substitute for real evidentiary support when a prior art reference is missing a claimed limitation, particularly for complex technology.
The Federal Circuit vacated a claim preclusion ruling against SimpleAir, holding that filing a terminal disclaimer in a continuation patent does not create a presumption that the continuation’s claims are patentably indistinct from the parent, and courts must compare actual claim scope before finding preclusion.
The Federal Circuit held that on a motion to dismiss, courts must accept all well-pleaded facts as true before ruling on patent eligibility under § 101, reversing summary dismissal of software form-processing patents.
The Federal Circuit held that the Alice/Mayo Step 2B inquiry — whether a claim element or combination of elements represents an ‘inventive concept’ that was well-understood, routine, and conventional — contains underlying factual questions that may not always be resolved as a matter of law on summary judgment, limiting the scope of § 101 dispositive motions.
The Federal Circuit upheld patent claims covering an improved mobile device application summary interface, holding that specific graphical user interface improvements solving a concrete usability problem are not abstract ideas under § 101.
The Federal Circuit confirmed that patent damages can be apportioned through the royalty rate rather than the royalty base, but vacated a $48 million award because the patent owner’s damages expert failed to adequately explain how the Georgia-Pacific factors supported the proposed royalty rate.
The Federal Circuit held that identifying the “smallest salable patent-practicing unit” is not sufficient when that unit still contains non-patented features, and further apportionment is required to isolate the value of the patented technology in complex software products.
The Federal Circuit, sitting en banc, overruled Achates and held that §315(b) time-bar determinations by the PTAB are subject to judicial review, rejecting the argument that all IPR institution decisions are unreviewable.
The Federal Circuit affirmed PTAB’s cancellation of Credit Acceptance’s patent on financing automobile purchases through a dealer-administered program, holding the claims directed to the abstract idea of processing financing transactions — a business practice not rendered patent-eligible by implementation on a computer.
The Federal Circuit affirmed invalidity of Smart Systems’ open-loop transit payment patents under Section 101, holding that collecting financial data using generic components to facilitate transit access is an abstract idea — with a notable dissent arguing that the claims addressed a real, Internet-era technical problem.
An en banc Federal Circuit held that in inter partes review proceedings, the petitioner — not the patent owner — bears the burden of proving that proposed amended claims are unpatentable, overturning years of PTAB practice that had effectively blocked most patent owner amendment efforts.
The Federal Circuit reversed summary judgment of non-infringement in a divided infringement case, holding that the ‘direction and control’ standard from Akamai v. Limelight could be satisfied where one party conditions participation in an activity on performance of a method step by another party — applying the standard to luggage locks and TSA inspection agreements.
The Federal Circuit granted mandamus to Cray and set forth a three-part test for what constitutes a ‘regular and established place of business’ under the patent venue statute — rejecting the Eastern District of Texas’s expansive four-factor test and clarifying that employees’ homes and remote workers in a district do not, by themselves, establish venue.
The Federal Circuit held that the federal government qualifies as a ‘person’ under the America Invents Act and may petition for covered business method (CBM) review at the PTAB — a ruling the Supreme Court reversed in 2019, holding that the government is not a ‘person’ for AIA post-grant proceedings.
Reversing a district court’s Section 101 dismissal, the Federal Circuit held that Visual Memory’s patent on a programmable memory system with processor-specific operational characteristics was directed to an improved computer memory technology — not an abstract idea — because it described a specific technical advance in how memory systems operate.
The Federal Circuit held that IPR estoppel under § 315(e)(2) does not extend to prior art grounds based on patents or printed publications that the petitioner could not have raised in IPR — specifically that prior art systems and physical products (which cannot be raised in IPR) are not subject to the IPR estoppel bar in subsequent district court litigation.
The Federal Circuit held that a secret commercial sale — where the existence of the sale agreement was publicly disclosed but the details of the invention were kept confidential — triggers the on-sale bar under the AIA, finding that the America Invents Act did not change the rule that confidential sales can invalidate patents when the sale’s existence is public.
The Federal Circuit held that when a patentee satisfies all four Panduit factors for lost profits — including proving demand driven by the patented feature and no acceptable non-infringing substitutes — no further separate apportionment of those profits is required, because the Panduit analysis inherently ties the damages to the patented features’ value.
The Federal Circuit reversed the Court of Federal Claims’ § 101 dismissal of Thales Visionix’s inertial sensor patent, holding that claims directed to a specific arrangement of sensors and a mathematical algorithm to improve navigation accuracy are patent-eligible because the claims improve the technical functioning of the navigation system rather than merely applying a mathematical concept to a conventional context.
The Federal Circuit affirmed invalidation of Intellectual Ventures’ XML-formatting and financial data-collection patents under Section 101, holding that organizing, collecting, recognizing, and storing data — even when dressed in domain-specific vocabulary — is a patent-ineligible abstract idea with no inventive concept.
On remand from the Supreme Court’s Samsung v. Apple decision, the Federal Circuit declined to define the legal test for identifying the ‘article of manufacture’ in design patent damages and instead sent the case back to the district court to resolve the issue in the first instance — prolonging one of the most consequential design patent damages cases in U.S. history.