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.
The Federal Circuit reversed a declaratory judgment of non-infringement, holding that the doctrine of claim differentiation creates a strong presumption that an independent claim has a broader scope than its dependent claims, and that the narrow limitation in a dependent claim should not be read back into the independent claim.
The Federal Circuit reversed summary judgments of non-infringement and invalidity, holding that the district court improperly added a negative limitation to patent claims without intrinsic evidence support, and that prosecution disclaimer applies only when a patentee makes clear and unmistakable surrenders of claim scope — ambiguous prosecution statements do not give rise to disclaimer.
The Federal Circuit held that the Hatch-Waxman safe harbor of § 271(e)(1) does not immunize basic pre-clinical research conducted by drug companies even when the research might eventually lead to FDA submissions, adopting a narrow reading later reversed by the Supreme Court.
The Federal Circuit held that an ANDA applicant seeking approval to sell a generic drug for an FDA-approved use does not infringe a method-of-use patent claiming an unapproved, off-label use of the same drug — establishing important limits on Hatch-Waxman patent infringement actions.
The Federal Circuit affirmed rejection of claims for a nickel-base superalloy composition, holding that a prior art reference disclosing a range that overlaps a claimed range establishes a prima facie case of obviousness, and that the normal desire of scientists to optimize within known ranges provides motivation to combine — the applicant must then come forward with evidence of unexpected results to overcome the presumption.
The Federal Circuit affirmed the validity of Amgen’s erythropoietin (EPO) patents covering recombinant human erythropoietin, finding the claims satisfied written description and enablement requirements, while remanding certain issues for further consideration.
The Federal Circuit sharply limited the common-law experimental use defense by holding that universities infringe patents when they use patented technology in their research programs, even without profit motive, because such use advances the university’s legitimate business objectives.
The Federal Circuit held that dictionaries, encyclopedias, and technical treatises are valuable starting points for determining the ordinary and customary meaning of patent claim terms, and should be consulted before examining the specification for limitations.
The Federal Circuit held that the written description requirement is separate from the enablement requirement and that a deposit of biological materials in a recognized depository can satisfy written description — setting an important standard for biotechnology patent claims directed to biological sequences and genus inventions.
The Federal Circuit held that a farmer who saved patented Roundup Ready soybean seeds from his harvest and replanted them violated Monsanto’s patent rights, because patent exhaustion does not apply to seeds that were copied rather than purchased from the patentee.
The Federal Circuit affirmed invalidation of patents covering methods of preparing cruciferous sprout food products for cancer prevention, holding that the patents were anticipated because the glucosinolate content and Phase 2 enzyme-inducing properties of broccoli sprouts were inherent characteristics of previously known sprouting methods — discovering naturally existing properties of known subject matter does not create patentable invention.
The Federal Circuit affirmed infringement of an offshore platform installation patent under the doctrine of equivalents but vacated the damages award, holding that all three damage models presented by the patentee’s expert were legally flawed because they based royalty calculations on the entire platform cost rather than the economic value attributable to the patented method, and because they improperly assumed an injunction would prevent use of the entire structure.
The Federal Circuit held that a patent claiming the priority date of a provisional application is invalid under the on-sale bar if the provisional specification failed to adequately describe the claimed invention, because the patent cannot claim priority it did not earn.
The Federal Circuit held en banc that a patent’s reference to biological material deposited in a public repository satisfies the written description requirement of 35 U.S.C. § 112, reversing a panel decision that had threatened biotechnology patents relying on ATCC deposits.
The Federal Circuit held that a government laboratory researcher’s pre-critical-date demonstrations of his internet database system to colleagues without confidentiality restrictions triggered the public use bar, invalidating his patents.
The Federal Circuit affirmed infringement and reversed the district court’s overly narrow claim construction, reaffirming that claim terms carry their ordinary and accustomed meaning unless the patentee clearly redefined the term or disclaimed certain subject matter in the intrinsic record.
The Supreme Court rejected an absolute bar to claiming equivalents after a narrowing claim amendment, instead establishing a flexible presumption that the patentee surrendered equivalents within the amended scope — rebuttable on three specific grounds.
The Federal Circuit affirmed non-infringement in an e-commerce coupon patent case, holding that preamble language in a method claim does not limit the claim’s scope when the claim body describes a structurally complete invention and the patentee did not rely on the preamble to distinguish prior art — but preamble language that provides antecedent basis or defines essential structure may be limiting.
The Supreme Court held that the Federal Circuit lacks appellate jurisdiction over a case when patent law appears only in the defendant’s compulsory counterclaim and is absent from the plaintiff’s well-pleaded complaint.
The Federal Circuit reversed a narrow claim construction, holding that the claim term “reciprocating member” in an exercise equipment patent should be given its ordinary meaning encompassing multi-component and curved structures, not limited to the single straight bar depicted in the specification’s drawings.
In an en banc decision, the Federal Circuit held that subject matter disclosed in a patent specification but not claimed is dedicated to the public and cannot be recaptured through the doctrine of equivalents — patentees who fail to claim a disclosed alternative cannot later assert it as equivalent to what they did claim.
The Federal Circuit held that the equitable doctrine of prosecution laches can bar enforcement of patent claims that issued after an unreasonable and unexplained multi-decade delay in patent prosecution — a landmark ruling against Jerome Lemelson’s famous ‘submarine patent’ strategy.
The Federal Circuit affirmed patent infringement and damages for Bose, holding that a claim amendment made solely to satisfy a formal antecedent basis requirement — not to narrow the claim’s scope — does not trigger prosecution history estoppel and does not bar the doctrine of equivalents.
The Supreme Court held that utility patents under 35 U.S.C. § 101 may be issued to protect plants, including sexually reproducing crops, and that such patents are not displaced by the narrower protections of the Plant Variety Protection Act.
The Federal Circuit reversed a summary judgment of non-infringement in a modular conveyor belt patent case, holding that the district court improperly limited the claim term ‘portion’ to a narrow construction requiring physical separation, when the plain meaning of ‘portion’ encompasses both separate and integral parts and the specification described multiple embodiments.
The Federal Circuit held that the on-sale bar of 35 U.S.C. § 102(b) applies when an inventor contracts with a third-party supplier to mass-produce the invention commercially, rejecting any “supplier exception” to the statutory bar.
The Federal Circuit reversed a judgment of invalidity for lack of enablement, holding that a patent on a recombinant method for producing human growth hormone (hGH) was adequately enabled even though the process predominantly produced met-hGH (containing an extra methionine residue) rather than mature 191-amino acid hGH — the specification taught how to make and use the claimed invention, and the jury’s enablement verdict was supported by substantial evidence.
The Federal Circuit vacated summary judgment and remanded for trial, holding that splitting a claimed unitary structure into two separate components may constitute infringement under the doctrine of equivalents even when the literal claim requirement for a single integrated piece is not met.
The Federal Circuit reversed a summary judgment of invalidity for indefiniteness, reaffirming that claims are sufficiently definite under § 112 if a person skilled in the art would understand the bounds of the claim when read in light of the specification — close questions of claim construction do not render claims invalid, and the presumption of validity favors issued patents.
The Federal Circuit held that refurbishing single-use cameras originally sold in the United States is permissible repair, not patent infringement, because patent rights are exhausted by the first authorized U.S. sale.
The Federal Circuit vacated summary judgment of non-infringement, holding that “point-of-sale location” in an e-commerce patent should not be limited to a traditional physical retail store and could include a consumer’s home when used as the end-point for electronic content delivery and purchase.
The Federal Circuit held that the on-sale bar under 35 U.S.C. § 102(b) is triggered only by a communication that rises to the level of a commercial offer for sale under the Uniform Commercial Code, not by mere negotiations or demonstrations.
The Federal Circuit vacated summary judgment of non-infringement, holding that the district court improperly imported a structural limitation (a “ledge”) from the patent drawings into a broader claim term (“angular medial surface”), and clarified when a patentee’s pre-suit correspondence satisfies the § 287(a) actual notice requirement for damages.
The Federal Circuit held that a key Eli Lilly patent covering the method of using fluoxetine (Prozac) was invalid for obviousness-type double patenting, opening the door for generic competition with the world’s best-selling antidepressant years ahead of schedule.
The Federal Circuit held that process patent infringement under § 271(g) requires the patent to be issued at the time the accused process is performed; pre-issuance use cannot infringe.
The Federal Circuit reversed summary judgment, holding that Intel’s cross-license from National Semiconductor did not extend to Intergraph’s Clipper processor patents, because those patents were directly assigned from Fairchild to Intergraph and never passed through National Semiconductor’s ownership or control.
The Federal Circuit vacated a preliminary injunction against Barnes & Noble’s one-click shopping feature, holding that Barnes & Noble raised substantial questions about the validity of Amazon’s one-click patent that precluded injunctive relief at the preliminary stage.
The Federal Circuit held that where a patent specification consistently and clearly defines the invention in terms of a specific structure, the claims are limited to that structure even if the claim language is broader.