Federal Circuit

The Federal Circuit addressed the requirements for functional claim limitations in software-implemented gaming machine patents, reinforcing that functional language in claims must be supported by adequate structural or algorithmic disclosure in the specification — a key ruling on the § 112 disclosure requirements for software-driven inventions.

The Federal Circuit sitting en banc resolved a circuit split and held that induced infringement under 35 U.S.C. § 271(b) requires proof that the defendant specifically intended to cause direct infringement — not merely that it intended to perform acts that happen to constitute infringement.

The Federal Circuit reversed a finding of obviousness in a spinal implant patent case, holding that the district court failed to identify a sufficient motivation or reason why a person of ordinary skill would have combined the cited prior art references — possibility of combination is not enough; there must be articulated reasoning grounded in the prior art as to why the skilled artisan would have made the combination.

The Federal Circuit held a textile dye process patent invalid as obvious, clarifying that the teaching-suggestion-motivation (TSM) test for obviousness is flexible and allows motivation to combine to be found in common knowledge, common sense, and efficiency goals — not just explicit documentary evidence.

The Federal Circuit invalidated Align Technology’s patents on incremental orthodontic aligners as obvious over prior art, holding that packaging convenience and commercial success driven by aesthetic and unclaimed features cannot overcome a prima facie case of obviousness.

The Federal Circuit held that the patent exhaustion doctrine does not give a purchaser the right to use replicated copies of a self-replicating patented technology, and that conditional sales of patented seed prevent exhaustion from arising in the first place.

The Federal Circuit invalidated a key Lipitor patent claim because the dependent claim attempted to claim subject matter outside the scope of the independent claim it depended on, violating 35 U.S.C. § 112, paragraph 4.

The Federal Circuit held that the sale of a licensed device does not exhaust a patent holder’s method claims, ruling that purchasers of Intel chips who used them in unauthorized combinations remained liable for infringement of LG Electronics’ method patents — a holding the Supreme Court later reversed in Quanta Computer v. LG Electronics (2008).

The Federal Circuit affirmed that Agfa’s patents were unenforceable due to inequitable conduct based on intentional withholding of material prior art, and confirmed that inequitable conduct claims may be tried to the court without a jury.

The Federal Circuit held in a poxvirus vaccine interference that there is no per se rule requiring a patent applicant to recite known structural information in the written description — an applicant may rely on publicly available scientific literature for what is well-known in the field.

The Federal Circuit held that when a patent defendant asserts an advice-of-counsel defense to willful infringement, it waives attorney-client privilege for all communications about the patent’s validity, enforceability, and infringement — but the waiver does not automatically extend to all attorney work product never communicated to the client.

The Federal Circuit reversed a finding of anticipation, holding that a prior art reference disclosing a broad temperature range of 100–500°C did not anticipate a claimed narrower range of 330–450°C — a genus does not anticipate every species, and a broader prior art range anticipates a narrower claimed range only when the prior art discloses the narrower range with sufficient specificity.

The Federal Circuit affirmed summary judgment of non-infringement, holding that a patent’s claim preamble is limiting when it recites essential structural elements of the claimed invention, and construed the asserted dental implant patent claims to require a complete emergence cuff and abutment combination.

The Federal Circuit affirmed invalidity of SmithKline’s Paxil patent, holding that product-by-process claims are anticipated by prior art that discloses the same product, even when the prior art used a different process to make it — because patents protect products, not processes, under such claims.

The Federal Circuit affirmed patent unenforceability for inequitable conduct, holding that pharmaceutical patent applicants who submitted declarations from scientists with undisclosed financial ties to the patent owner engaged in deceptive conduct that was material because the patent examiner had specifically requested independent, unbiased declarations to overcome obviousness rejections.

The Federal Circuit vacated and remanded in a horizontal directional drilling patent case, holding that the 1992 PTO Rule 56 materiality standard supplements rather than replaces the earlier ‘reasonable examiner’ standard, that false statements in a Rule 131 declaration are inherently material, and that whether an undisclosed prior art reference was cumulative presented a genuine fact issue requiring trial.

The Federal Circuit held that a licensee currently in good standing under a patent license lacks standing to bring a declaratory judgment action challenging the patent’s validity — a ruling the Supreme Court unanimously reversed in 2007.

The Federal Circuit held that patent claims covering all methods of achieving a technical result are invalid for insufficient written description when the specification discloses only one specific method, warning inventors that the scope of claims must be commensurate with what was actually disclosed.

The Federal Circuit affirmed that the term “board” in a decking patent was limited to material made from wood cut from a log, and did not encompass composite decking made from wood fibers and recycled plastic, illustrating the principle that claim terms must be construed in light of the full intrinsic record.

The Federal Circuit affirmed rejection of patent claims covering expressed sequence tags (ESTs) — partial gene sequences — for lack of utility under § 101, holding that ESTs that serve only as research tools without identification of the functions of their corresponding genes do not have the specific and substantial utility required for patentability.

The Federal Circuit reversed the PTAB’s rejection of chimeric gene patent claims on written description grounds, holding that biotechnology patents need not recite the complete nucleotide sequence of claimed DNA when the sequences are already known in the field.

The Federal Circuit affirmed that Research In Motion’s BlackBerry system infringed NTP’s wireless email patents, holding that infringement can occur even when some system components are located in Canada, and distinguishing system claims from method claims for extraterritorial purposes.

In a landmark en banc decision, the Federal Circuit confirmed that patent claims must be interpreted in light of the patent’s own specification and prosecution history — not primarily by reference to dictionaries — establishing the modern framework for patent claim construction.

The Federal Circuit reversed an infringement judgment in a video-on-demand patent case, holding that the applicant’s prosecution argument distinguishing the prior art based on ‘point-to-point’ network interconnections created a prosecution disclaimer that limited all claims grouped together in that argument — even though the argument explicitly addressed only one claim — and that the competitor’s reliance on that prosecution record was reasonable.

The Federal Circuit reversed the district court’s denial of a permanent injunction to MercExchange after eBay’s online auction system was found to infringe its patents, applying the court’s general rule that permanent injunctions issue in patent cases absent exceptional circumstances — a rule the Supreme Court later rejected.

The Federal Circuit reversed a grant of summary judgment of non-infringement, holding that the term “substantially flattened surfaces” in a tampon applicator patent means surfaces materially flatter than the cylindrical barrel — not surfaces that are flat within a manufacturing tolerance — and remanded for further infringement analysis.

The Federal Circuit reversed the district court and invalidated Merck’s Fosamax once-weekly dosing patent as obvious, holding that prior art newsletter articles clearly disclosed once-weekly alendronate dosing, that the claim term ‘about’ retains its ordinary meaning of ‘approximately’ absent a clear and unambiguous redefinition in the specification, and that commercial success had reduced probative value because market exclusivity prevented others from testing the concept.

The Federal Circuit held that a patentee’s listing of a patent in the FDA Orange Book does not, by itself, create the reasonable apprehension of suit necessary for a generic drug maker to maintain a Hatch-Waxman declaratory judgment action challenging the patent’s validity or non-infringement.

The Federal Circuit affirmed that farmers who saved and replanted seeds from Monsanto’s patented Roundup Ready soybeans infringed Monsanto’s plant patents — holding that patent exhaustion did not apply to second-generation seeds and that Monsanto’s technology use agreements validly prohibited seed saving, reinforcing the enforceability of biotech seed patents.

In an en banc decision, the Federal Circuit eliminated the rule that a patent infringer who invokes attorney-client privilege faces an adverse inference of willful infringement, substantially reshaping the willfulness landscape.

The Federal Circuit affirmed rejection of a patent application for lack of novelty, holding that a slide presentation displayed for several days at professional conferences constitutes a ‘printed publication’ under 35 U.S.C. § 102(b) based on public accessibility — even without distribution of copies or library indexing — when the relevant technical audience could view and reproduce the disclosure.

The Federal Circuit vacated summary judgment of non-infringement, holding that the claim term ‘operatively connected’ means components must be connected in a way that permits them to perform their designated function — not that they must be physically attached in a unitary structure.

The Federal Circuit established that a generic drug company’s filing of an Abbreviated New Drug Application (ANDA) with a Paragraph IV certification cannot, by itself, constitute willful patent infringement or justify enhanced damages and attorney fees.

The Federal Circuit affirmed a jury verdict that LabCorp indirectly infringed Metabolite’s patent on a method of detecting vitamin B12 and folate deficiency by measuring and correlating homocysteine levels, a case that later reached the Supreme Court and raised fundamental questions about patenting natural phenomena.

The Federal Circuit held that a patent applicant’s cancellation of an independent claim and rewriting of a dependent claim as a new independent claim during prosecution triggers prosecution history estoppel, creating a presumptive bar to capturing the surrendered subject matter through the doctrine of equivalents.

The Federal Circuit affirmed invalidity of Chiron’s HER2 antibody patent, holding that claims broadly encompassing chimeric and humanized antibodies were not enabled by a specification that only disclosed murine antibodies, even though the claims were filed years before Herceptin was developed.

The Federal Circuit held that a Hatch-Waxman patent term extension covers all salt forms of an active pharmaceutical ingredient, not just the specific salt approved by the FDA.

The Federal Circuit affirmed invalidation of the University of Rochester’s COX-2 inhibitor method patent, holding that a patent claiming a method of using a compound fails the written description requirement when the specification does not disclose the actual compounds needed to perform the method.

The Federal Circuit reversed summary judgment of non-infringement, reaffirming that courts may not import limitations from the specification into patent claims and that a single described embodiment does not limit the scope of broader claim language.

The Federal Circuit affirmed a $521 million judgment against Microsoft for infringing Eolas Technologies’ patent on interactive embedded objects in web browsers — holding that Internet Explorer’s implementation of interactive plug-ins and applets infringed the Eolas patent covering methods and systems for enabling interactive content in web browsers.

The Federal Circuit vacated a summary judgment of non-infringement, holding that the claim term ‘a substantial helical flow path’ is a meaningful approximation — not an absolute requirement for a geometrically perfect helix — and that the district court erred by construing the term to require a precise helical path emanating from the tank center and completing a full rotation, which improperly imported geometric precision into an approximation term.

The Federal Circuit held that method-of-use claims on a pharmaceutical compound are not patentably distinct from an earlier patent claiming the same compound when the earlier patent’s specification already disclosed that use, affirming invalidity for nonstatutory obviousness-type double patenting.

The Federal Circuit reversed summary judgments of invalidity for lack of enablement and unenforceability for inequitable conduct in a semiconductor wafer-cleaning patent case, holding that enablement requires only that skilled artisans be able to make and use the full scope of the claimed invention — not that the invention meet commercial cleanliness standards — and that advantages statements and undisclosed test data lacked sufficient materiality to support an inequitable conduct finding.

The Federal Circuit affirmed the ITC’s finding that Honeywell’s PET yarn patent claims were insolubly ambiguous — and therefore invalid as indefinite — because the claims specified measurement parameters without identifying which of four sample preparation methods should be used to make those measurements.

The Federal Circuit held that 35 U.S.C. § 271(g) — which prohibits importing products made by a patented U.S. process — covers only physical products actually manufactured by the patented process, not information or drug leads identified by using the patented research method.

The Federal Circuit held that Schering’s patent on a metabolite of Claritin (loratadine) was invalid because the metabolite is necessarily and inherently formed when a patient takes a dose of the previously patented loratadine — establishing that inherent anticipation does not require recognition in the prior art.