Federal Circuit patent decisions
The Federal Circuit affirmed that a patent holder whose domestic industry consists solely of licensing activities — with no domestic manufacturing — can satisfy Section 337’s domestic industry requirement at the ITC, opening the door wider for non-practicing entities to use exclusion orders as a patent enforcement tool.
The Federal Circuit affirmed a district court’s post-trial entry of judgment as a matter of law for Apple, overturning a $208 million jury verdict and holding that Apple’s Spotlight, Cover Flow, and Time Machine features did not infringe patents covering chronologically organized data stream interfaces.
The Federal Circuit sitting en banc held that a party who induces multiple actors to collectively perform all steps of a method patent claim can be liable for induced infringement even if no single party directly infringes all steps — significantly expanding liability for divided infringement of internet and software method patents.
The Federal Circuit held that Voter Verified’s copyright claim against Premier Election Solutions for voter verification software failed under the merger doctrine — finding that the specific expression in the claimed software code was inseparable from the underlying idea of a voter-verified paper audit trail system, and thus not independently copyrightable.
The Federal Circuit held that patents on computer-implemented methods for managing stable-value life insurance policies are directed to an abstract idea and therefore invalid under § 101, ruling that adding generic computer implementation to an abstract mathematical algorithm does not create patent-eligible subject matter.
The Federal Circuit reversed an obviousness finding in a Hatch-Waxman dispute over method-of-treatment patents covering naproxen-esomeprazole combination therapy for treating pain while reducing gastrointestinal damage — holding that the district court failed to properly analyze the motivation to combine the specific drugs in the specific claimed dosing regimen.
The Federal Circuit affirmed a $371 million enhanced damages award against W.L. Gore for willful infringement of Bard’s vascular graft patent — one of the largest patent verdicts in history — holding that Gore’s employee did not qualify as a joint inventor and that the pioneering PTFE graft invention belonged solely to Bard’s inventor, Dr. Robert Goldfarb.
The Federal Circuit affirmed an exceptional case fee award against Allcare Health Management for maintaining objectively baseless patent infringement claims, applying the then-prevailing two-part test for § 285 fee awards and addressing the standard of review for exceptional case determinations — a ruling that set the stage for the Supreme Court’s 2014 Octane Fitness decision.
The Federal Circuit held that MySpace’s social networking website did not infringe Graphon’s patents on searchable online databases, finding the asserted claims invalid as obvious combinations of well-known internet database and search technologies — an important post-KSR ruling on obviousness in the social networking and internet technology space.
The Federal Circuit held that Dealertrack’s claims covering a computer-aided system for routing automobile dealer credit applications to lenders were directed to the unpatentable abstract idea of processing credit applications — striking down the patents under § 101 because adding ‘apply it on a computer’ was insufficient to make an abstract process patent-eligible.
The Federal Circuit reversed a finding of indefiniteness in a touchscreen patent dispute, holding that a claim term need not be expressed in traditional means-plus-function form to invoke § 112(f) — and clarified when functional claim language triggers the algorithm-disclosure requirement, with significant implications for computer and touch interface patent litigation.
The Federal Circuit reversed a district court dismissal and held that Ultramercial’s patent on distributing copyrighted content free-to-consumers in exchange for viewing advertisements was patent-eligible subject matter under § 101 — finding the multi-step process involved meaningful, non-abstract practical implementation steps, not merely an abstract idea.
The Federal Circuit held that Classen Immunotherapies’ method claims for identifying optimal vaccination schedules to reduce chronic immune-mediated disorders were patent-eligible under § 101 in part — distinguishing between claims that merely require correlating a natural relationship and claims that require further steps of implementing a vaccination schedule based on that correlation.
The Federal Circuit held that CyberSource’s patent on a method of detecting credit card fraud by tracking internet addresses was directed to an unpatentable mental process — a gathering and comparing of information that a human could perform in their mind — and that reciting a Beauregard computer-readable medium claim did not change the analysis.
The Federal Circuit held that Myriad Genetics’ patents on isolated BRCA1 and BRCA2 gene sequences — mutations of which indicate elevated breast and ovarian cancer risk — were patent-eligible, while cDNA molecules and method claims for ‘comparing’ or ‘analyzing’ sequences were not — a major ruling later partially reversed by the Supreme Court in 2013.
The Federal Circuit sitting en banc overhauled the doctrine of inequitable conduct, holding that rendering a patent unenforceable requires both but-for materiality (the undisclosed information would have blocked the patent) and specific intent to deceive the USPTO — dramatically narrowing a defense that had become a routine litigation tactic.
The Federal Circuit addressed joint infringement in a healthcare IT patent dispute, holding that when patients and healthcare providers together perform steps of a patented method for online patient-provider communications, neither party alone is a direct infringer — applying the direction-or-control standard for divided infringement to electronic health record systems.
The Federal Circuit ruled that the widely used ’25 percent rule of thumb’ for calculating starting-point patent royalties is inadmissible as a matter of law, vacating a $388 million damages award against Microsoft and requiring that every patent royalty calculation be tied to the specific facts of the case.
The Federal Circuit upheld Prometheus’s patents on methods for optimizing thiopurine drug dosing based on metabolite blood levels, holding the claims directed to patent-eligible subject matter because they applied natural correlations through a physical transformation — a ruling the Supreme Court unanimously reversed in 2012.
The Federal Circuit upheld patents on digital image halftoning technology as patent-eligible subject matter, holding that mathematical algorithms applied to specific, practical technological problems are not so abstract as to be excluded from § 101, and cautioning against an overly rigid application of the abstract idea exception.
The Federal Circuit reversed a summary judgment of obviousness in a deepwater drilling rig patent dispute, holding that the district court failed to give adequate weight to powerful objective evidence of non-obviousness — including commercial success, long-felt need, and failure of others — and remanded for proper analysis of the full record.
The Federal Circuit applied claim differentiation and rejected a narrowing construction of defibrillator patent claims, holding that independent claims cannot be read to require limitations found only in dependent claims — and affirmed the district court’s infringement finding on the broader interpretation.
The Federal Circuit held AstraZeneca’s patents on a once-daily budesonide inhaler formulation (Pulmicort Respules) valid and infringed in a Hatch-Waxman challenge, affirming the district court’s analysis of the complex obviousness record and reinforcing the significance of FDA-required labeling disclosures in constructive notice and § 101 analysis for pharmaceutical patents.
The Federal Circuit sitting en banc held that 35 U.S.C. § 112 contains a written description requirement that is distinct from the enablement requirement, and invalidated a broad genus patent covering all substances that inhibit NF-κB activity because the patent described the goal but not the means.
The Federal Circuit affirmed a $200 million jury verdict and permanent injunction against Microsoft for infringing i4i’s patent on a method for editing custom XML in word processing documents, rejecting Microsoft’s invalidity defense premised on a prior-sold product and upholding the clear-and-convincing evidence standard for patent invalidity claims.
The Federal Circuit vacated a patent damages award and held that a reasonable royalty calculation must rely on licenses that are technologically and economically comparable to the patent at issue — rejecting a royalty rate derived from re-bundling agreements that had no connection to the claimed invention.
The Federal Circuit affirmed summary judgment of invalidity of a patent on a method for bulk email delivery, holding the claims obvious under post-KSR standards where the claimed process involved only routine, predictable steps well within the common sense of a person with ordinary skill in email marketing.
The Federal Circuit upheld Prometheus Laboratories’ patents on methods of optimizing thiopurine drug dosage by measuring metabolite levels in patients, finding the diagnostic methods patent-eligible under § 101 because the claimed steps transformed an article — a patient’s blood — by detecting specific metabolite concentrations.
The Federal Circuit largely affirmed that Roche’s pegylated erythropoietin product Mircera infringed four of Amgen’s EPO patents, but vacated the district court’s double-patenting rulings and remanded for additional analysis — a significant ruling in the long-running battle over the blockbuster anemia-treatment drug market.
The Federal Circuit vacated a $1.5 billion patent damages award against Microsoft, holding that the jury’s royalty base improperly relied on the entire market value of Microsoft’s products — including features unrelated to the patented invention — without proof that the patented feature drove demand for the whole product.
The Federal Circuit en banc held that the traditional four-factor preliminary injunction test applies in Hatch-Waxman patent cases — eliminating the prior practice under which a showing of validity and infringement created a presumption of irreparable harm — and remanded the preliminary injunction against generic clarithromycin for reconsideration under the corrected standard.
The Federal Circuit addressed the joint infringement problem in method patent claims — holding that when multiple parties each perform different steps of a claimed method, infringement requires that one party direct or control the actions of the other parties performing the remaining steps, setting an important standard for software and service patents with distributed functionality.
The Federal Circuit held that a patent application claiming an isolated DNA sequence encoding the NAIL protein receptor was obvious under KSR — where the prior art disclosed both the protein and routine methods of cloning its encoding gene — marking an important application of KSR’s flexible obviousness standard to biotechnology patent claims for genetic sequences.
The Federal Circuit struck down a controversial USPTO rule that would have limited patent applicants’ right to file continuation applications claiming priority to parent patents, holding the rule was inconsistent with 35 U.S.C. § 120 — while upholding other procedural rules in the contested rulemaking package.
The Federal Circuit affirmed the validity of Sanofi’s Plavix (clopidogrel) patent, holding that prior disclosure of a racemic mixture does not anticipate a claim to an isolated single enantiomer — particularly when the enantiomer exhibits unexpectedly superior properties not predictable from the racemate.
The Federal Circuit sitting en banc held that the machine-or-transformation test is the definitive standard for determining whether a claimed process is patent-eligible under 35 U.S.C. § 101, rejecting a patent application on a business method for hedging commodity-trading risk.
The Federal Circuit sitting en banc eliminated the two-part ‘point of novelty’ test for design patent infringement and replaced it with a unified ordinary observer test — holding that design patent infringement is determined by whether an ordinary observer, familiar with the prior art, would find the accused design substantially similar to the patented design.
The Federal Circuit held that violation of an open-source software license condition — not merely a contractual covenant — constitutes copyright infringement, giving open-source licensors the full array of copyright remedies (including injunctions and statutory damages) rather than only contract damages when licensees violate the terms of free and open source licenses.
The Federal Circuit held that direct infringement of a method claim divided across multiple parties requires that a single defendant direct or control the performance of every claimed step — a ruling that made it significantly harder to prove infringement of internet-era method patents implemented through multi-party systems.
The Federal Circuit vacated a $78.9 million willful infringement verdict against DirecTV’s satellite broadcasting system, reversing on claim construction and holding that means-plus-function claims for software functions require more than a bare reference to software — the specification must disclose the specific algorithm performing each claimed function.
The Federal Circuit affirmed the invalidation of Aristocrat’s slot machine patent, holding that computer-implemented means-plus-function claims are indefinite under § 112 unless the specification discloses the specific algorithm that transforms a general-purpose computer into the claimed special-purpose device.
The Federal Circuit tightened the standards for inequitable conduct findings, requiring clear and convincing evidence of both materiality and intent to deceive before a patent may be rendered unenforceable — while also confirming that a patent examiner’s independent knowledge of withheld prior art does not excuse the patentee’s duty of disclosure.
The Federal Circuit addressed the interplay of written description and priority, holding that a claim amendment during prosecution that introduces new limitations must find support in the originally filed specification to maintain the benefit of the earlier filing date — a key ruling for patent drafters managing continuation and CIP application strategies.
The Federal Circuit sitting en banc abandoned its 24-year-old willful infringement standard, adopting a new two-part objective/subjective recklessness test that raised the bar for enhanced patent damages and eliminated the automatic duty to obtain opinion-of-counsel letters.
The Federal Circuit reaffirmed that prosecution history estoppel bars application of the doctrine of equivalents when a claim was narrowed during prosecution to distinguish prior art — a landmark application of Festo’s flexible bar to a complex software patent dispute.
The Federal Circuit affirmed the validity of Forest Laboratories’ escitalopram (Lexapro) patent, holding the single-enantiomer antidepressant non-obvious over the known racemic citalopram — with the critical role played by unexpected superior pharmacological properties of the isolated (+)-enantiomer over the racemate as evidence of non-obviousness.
In one of the first major post-KSR Federal Circuit obviousness decisions, the court upheld the non-obviousness of Takeda’s pioglitazone (Actos) patent, applying the Supreme Court’s flexible obviousness framework while affirming that selection from a genus of prior art compounds requires specific motivation to choose the patented compound.
In one of the first post-KSR Federal Circuit obviousness decisions, the court invalidated Leapfrog’s patent on an electronic phonics learning toy as obvious, holding that it would have been obvious to combine the mechanical toy’s learning concept with electronic text-to-speech technology that was well-known in the prior art — a straightforward application of KSR’s flexible approach.
The Federal Circuit reversed a district court’s obviousness finding in a Hatch-Waxman pharmaceutical case, holding that the court had improperly defined the level of ordinary skill in the art — which significantly affected the obviousness analysis for an antibiotic ear drop formulation patent — underscoring the critical role of ordinary skill level determination in patent validity disputes.
The Federal Circuit reversed a district court’s validity ruling and held that Pfizer’s patent covering amlodipine besylate (Norvasc) was invalid for obviousness, finding that selecting the besylate salt of amlodipine was routine pharmaceutical testing that any skilled chemist would have performed.