Utility Patent

Federal Circuit, Utility Patent

Definitive Holdings v. PowerTEQ — Federal Circuit Affirms Engine Tuning Patent Invalidity Under On-Sale Bar

The Federal Circuit affirmed that U.S. Patent No. 8,458,689 — covering methods and apparatus for reprogramming automotive engine controllers — was invalid under the pre-AIA on-sale bar, holding that source code commands are not hearsay and that selling a device embodying a patented method triggers the bar even if the device’s inner workings were not publicly disclosed.

District Courts, Utility Patent

Valve v. Rothschild — First-Ever Jury Verdict Under a State Anti-Patent-Troll Law

A federal jury in Seattle returned a $152,093 verdict for Valve and against inventor Leigh Rothschild and his patent-licensing entities — finding violations of the Washington Patent Troll Prevention Act, the Washington Consumer Protection Act, and a 2016 patent licensing settlement. It is, according to the IP bar, the first jury verdict under a state anti-troll statute.

UK Courts, Utility Patent

Emotional Perception AI v. Comptroller General — UK Supreme Court Abandons 20-Year Aerotel Test, Opens Door to AI Patents

The UK Supreme Court unanimously overturned the Court of Appeal and held that an artificial neural network for recommending media files based on emotional characteristics is patentable, abandoning the Aerotel four-step test in favor of the EPO’s broader COMVIK approach — the most significant shift in UK computer-patent law in two decades.

District Courts, Utility Patent

Ridge Wallet v. Bemmo — Court Denies Dismissal of Patent and Trade Dress Claims Over Compact Wallet Design

An Eastern District of New York judge denied Bemmo’s motion to dismiss Ridge Wallet’s patent infringement and trade dress claims, holding that claim construction disputes are premature at the pleading stage and that Ridge Wallet adequately alleged secondary meaning and non-functionality of its distinctive ‘Forged Ember’ design.

EU Courts, Utility Patent

UPC Court of Appeal — Amgen v. Sanofi & Regeneron (UPC_CoA_528/2024) — Sets Out the UPC’s Inventive-Step Framework: Realistic Starting Point, Objective Problem, “Would Not Could”

In a same-day companion ruling to Meril v. Edwards, the UPC Court of Appeal articulated a comprehensive inventive-step framework: identify the objective problem from the perspective of the skilled person, choose a realistic starting point in the prior art, and assess whether the skilled person ‘would’ (not merely ‘could’) have arrived at the claimed solution. The decision also clarifies medical-use claim format, sufficiency, added matter, and burden of proof.

EU Courts, Utility Patent

Meril v. Edwards Lifesciences (UPC_CoA_464/2024 et al., EP 3 646 825) — UPC Court of Appeal Same-Day Companion to Amgen v. Sanofi: “Same Parties” Test, Embodiment Coverage, and Non-Obvious-Alternative Inventive Step

Same-day companion to Amgen v. Sanofi/Regeneron, the UPC Court of Appeal in Meril v. Edwards held that the ‘same parties’ test under Art. 33(4) UPCA looks to identity of interests; that disclosed embodiments are generally covered by the patent claims unless the specification clearly teaches otherwise; and importantly that an inventive step may be found even where the claimed solution is merely a ‘non-obvious alternative’ to known prior-art solutions.

EU Courts, Utility Patent

UPC Court of Appeal — Boehringer Ingelheim v. Zentiva (UPC_CoA_446/2025) — Marketing Authorisation Alone Does Not Imminent-Infringe, But Completion of National Pricing & Reimbursement Procedures Can

The UPC Court of Appeal set out a workable test for when a generic pharmaceutical’s pre-launch activity creates an imminent threat of infringement supporting provisional measures: a bare marketing authorisation does not, but completion of national health-technology-assessment, pricing, and reimbursement procedures can — depending on the regulatory and commercial context.

Other International (Japan), Utility Patent

Japan IP High Court 令和3年(ネ)第10037号 (Remitch / 止痒剤) — Extended Pharmaceutical Use Patent Reaches Generic with Same Active Ingredient and Therapeutic Equivalence; ¥21.7 Billion Damages Award Affirmed

The Japan Intellectual Property High Court reversed the Tokyo District Court and held that a generic narlfrafen hydrochloride (nalfurafine) anti-itch product infringes Toray’s term-extended pharmaceutical use patent on Remitch, awarding the patentee approximately ¥21.7 billion (~US$140 million) in damages. The decision expansively defines the scope of extended Japanese pharmaceutical patents — covering generics with substantively identical active ingredient, dosage, usage, and indication, not merely formally identical products.

Other International (Korea), Utility Patent

Korea Supreme Court 2025다202970 — Territoriality Defeats Indirect-Infringement Claim Against Korean Manufacturer of 13-Valent Pneumococcal Vaccine Components Exported for Foreign Assembly

Korea’s Supreme Court affirmed dismissal of indirect patent-infringement claims against a domestic manufacturer that produced 13 individual conjugate substrates in Korea but exported them for final mixing into a 13-valent pneumococcal vaccine abroad, holding that under the territoriality principle of Korean Patent Act § 127(1), “production” must occur within Korean territory and a foreign-completed final assembly does not trigger Korean indirect-infringement liability.

EU Courts, Utility Patent

UPC Local Division Düsseldorf — Sanofi & Regeneron v. Amgen (UPC_CFI_505/2024) — Framework for Infringement of Second Medical-Use Claims and Rejection of “Pleading Ignorance”

The UPC Düsseldorf Local Division articulated the substantive framework for second medical-use claim infringement: the alleged infringer must offer or place the medicinal product on the market in a way that leads or may lead to the claimed therapeutic use, with knowledge or constructive knowledge that it does. Procedurally, the panel rejected “pleading ignorance” as a recognized form of defense, holding that the UPC Rules of Procedure do not acknowledge that pleading style.

Other International (China), Utility Patent

Supreme People’s Court of China — Chengdu Chip Co. v. Mao Tech (2023) 最高法知民终2903号 — Power-Management Chip Patent Infringement Reversed; SPC Tightens Doctrine of Equivalents for Logic-Circuit Patents

The Supreme People’s Court IP Tribunal reversed a first-instance finding of patent infringement in a power-management chip dispute, holding that pulse-signal generation circuit features in the accused chip differed from the patented features in means, function, and effect — and therefore neither identically infringed nor were equivalent. The decision is the SPC’s most prominent 2025 elaboration of the doctrine of equivalents in logic-circuit patents.

EU Courts, Utility Patent

BSH Hausgeräte v. Electrolux (C-339/22) — CJEU Grand Chamber Holds EU Member-State Courts Have Cross-Border Jurisdiction Over European Patent Infringement Outside Their Forum, Even When Validity Defenses Are Raised

The CJEU Grand Chamber held that Article 4(1) of Regulation 1215/2012 entitles a court of a defendant’s domicile member state to hear infringement claims regarding a European patent’s national parts validated in other member states (and even in non-EU states), notwithstanding invalidity defenses raised under Article 24(4). The decision dramatically expands cross-border patent litigation in the EU and is the doctrinal foundation for the UPC’s long-arm jurisdiction over non-UPC-state patent rights.

Federal Circuit, Utility Patent

Maxell v. Amperex Technology — Federal Circuit Reverses Indefiniteness Finding for Lithium-Ion Battery Patent

The Federal Circuit reversed a district court’s indefiniteness ruling on a lithium-ion battery patent, holding that two claim limitations are not contradictory—and therefore not indefinite—if they can both be satisfied simultaneously, even if one limitation makes an element optional while a narrowing limitation in the same claim makes that element mandatory.

Federal Circuit, Utility Patent

Promptu Systems v. Comcast — Federal Circuit Reverses Claim Construction for Voice Recognition Cable TV Patents

The Federal Circuit vacated and remanded a district court judgment in a voice-recognition/cable-TV patent dispute, holding that the district court improperly narrowed several claim terms—including ‘back channel’ and ‘centralized processing station’—to specific features described in the specification rather than construing them according to their plain and ordinary meaning as understood by a skilled artisan.

Federal Circuit, Utility Patent

RAI Strategic Holdings v. Philip Morris — Federal Circuit Clarifies Written Description Standard for Claimed Ranges in Predictable Arts

The Federal Circuit vacated the PTAB’s written description rejection of e-cigarette patent claims directed to a heater-length range, holding that in predictable arts a narrower claimed range can be adequately supported by a broader disclosed range without requiring explicit disclosure of the specific narrower range—and that prior art statements made for unrelated purposes do not automatically establish motivation to combine.

Federal Circuit, Utility Patent

Weber v. Provisur Technologies — Federal Circuit Holds Confidential Operating Manuals Can Be Prior Art Printed Publications

The Federal Circuit reversed the PTAB, holding that operating manuals distributed to a limited number of customers with confidentiality notices still qualify as ‘printed publications’ and prior art under § 102, because the relevant inquiry is whether interested members of the public could locate the document through reasonable diligence—not whether the document was widely distributed.

Federal Circuit, International Trade Commission, Utility Patent

Roku v. ITC — Federal Circuit Holds Domestic Industry Economic Prong Can Be Satisfied by Investment in Patent-Covered Component Alone

The Federal Circuit affirmed the ITC’s finding that Universal Electronics satisfied the domestic industry requirement under Section 337 based on its investments in QuickSet technology — a patented component integrated into televisions — even though those investments did not cover the entire television product.

Federal Circuit, Utility Patent

CyWee Group v. ZTE — Federal Circuit Holds IPR Joinder New-Issue Bar Does Not Apply to Motions to Amend

The Federal Circuit held that the statutory prohibition barring time-barred, joined IPR parties from introducing new issues into a proceeding does not apply when a patent owner files a motion to amend its claims—a joined party may oppose such a motion even if it could not have raised new issues in the merits phase, because the patent owner itself opened the door to new issues by proposing amended claims.

Federal Circuit, Utility Patent

Dexcom v. Abbott Diabetes Care — Federal Circuit Holds Forum Selection Clause Does Not Block IPR After Covenant Period Expires

The Federal Circuit affirmed that a settlement agreement’s forum selection clause requiring patent disputes to be filed in Delaware federal court did not bar Abbott from filing inter partes review petitions after the agreement’s covenant-not-to-challenge period expired—because the agreement had expressly permitted IPRs during the covenant period in certain circumstances, indicating the parties understood IPR as a distinct proceeding.

Federal Circuit, Utility Patent

ParkerVision v. Vidal — Federal Circuit Upholds PTAB Claim Construction Based on Inventor Lexicography, Even Where It Conflicts with District Court

The Federal Circuit affirmed the PTAB’s claim construction of ‘storage element’ based on inventor lexicography in an incorporated-by-reference patent, holding that the PTAB is not bound by a conflicting district court construction and that Intel’s reply arguments were proper because they responded to a new claim construction first raised in the patent owner’s response.

Federal Circuit, Utility Patent

H. Lundbeck v. Lupin — Federal Circuit Affirms ‘Skinny Label’ Carve-Outs Block Hatch-Waxman Infringement Claims

The Federal Circuit affirmed that generic drug manufacturers who carve out patented indications from their drug labels—the so-called ‘skinny label’ strategy—do not infringe method-of-use patents covering those omitted indications under the Hatch-Waxman Act, and that brand-name companies cannot use narrow method patents to extend exclusivity beyond an approved indication.

Federal Circuit, Utility Patent

Actelion Pharmaceuticals v. Mylan — Federal Circuit Vacates Infringement Judgment, Requires Extrinsic Evidence for pH Claim Construction

The Federal Circuit vacated an infringement judgment in an ANDA case involving pulmonary hypertension drug patents, holding that the district court erred by construing ‘a pH of 13’ based solely on intrinsic evidence when the parties submitted competing extrinsic evidence—including textbooks explaining how chemists understand significant figures in pH values—that the court was required to consider.

Federal Circuit, Utility Patent

Netflix v. DivX — Federal Circuit Clarifies ‘Field of Endeavor’ Standard for Analogous Art in Obviousness Analysis

The Federal Circuit held that the PTAB applied an unduly strict standard when it rejected Netflix’s analogous art argument in an IPR, ruling that petitioners need not perfectly articulate the ‘field of endeavor’ in magic words—what matters is whether the prior art reference and the challenged patent share the same substantive technical field.

Federal Circuit, Utility Patent

Volvo Penta v. Brunswick — Federal Circuit Vacates PTAB Obviousness Finding for Failure to Properly Weigh Secondary Considerations

The Federal Circuit vacated the PTAB’s finding that Volvo Penta’s stern drive patent was obvious, holding that the Board improperly dismissed evidence of secondary considerations—including copying, commercial success, and industry praise—when competitors’ own recognition that the product’s success came from the unique patented features established the required nexus.

Federal Circuit, Utility Patent

Rembrandt Diagnostics v. Alere — Federal Circuit Clarifies When IPR Petitioner Reply Arguments Are Permissible

The Federal Circuit affirmed that IPR petitioner reply arguments expanding on cost and time savings as a motivation to combine were not impermissibly new—they properly responded to the patent owner’s opposition and were a fair extension of the efficiency rationale raised in the original petition—and held that a patent owner waives a ‘new theories’ objection by making only a general objection without identifying which theories are allegedly new.

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