The Supreme Court held 5-4 that assignor estoppel — the doctrine preventing a patent inventor who has assigned their patent from later claiming the patent is invalid — remains a valid doctrine, but only applies when there is a direct conflict between the invalidity position and what the inventor warranted in making the assignment.
The Supreme Court held 5-4 that the appointment of Administrative Patent Judges without Senate confirmation violated the Appointments Clause — but remedied the violation by making APJ decisions reviewable by the USPTO Director, rather than striking down the entire IPR system.
The Federal Circuit affirmed that an applicant’s clear statements during prosecution disclaiming hierarchical category relationships narrowed the claim scope, and that later prosecution statements could not be used to walk back that unambiguous disavowal.
The Federal Circuit held for the first time that the USPTO can assert prosecution laches as a defense in a § 145 civil action, blocking Gilbert Hyatt’s decades-delayed patent applications from issuing based on his unreasonable and prejudicial delays.
The Federal Circuit reversed a PTAB finding of obviousness, holding that prior art disclosing ambitious performance parameters for a gas turbine engine cannot render claims obvious when the prior art relies on non-existent materials that a skilled artisan could not have made.
The Federal Circuit reversed summary judgment of noninfringement, reaffirming that apparatus claims must be construed according to what the device physically is rather than how it functions, and remanding genuine disputes about literal infringement and the doctrine of equivalents for jury resolution.
The Federal Circuit held that the § 314(d) bar on appealing institution decisions does not extend to post-institution estoppel rulings under § 315(e)(1), giving patent owners a path to challenge PTAB estoppel determinations that arise after an IPR is already underway.
The Federal Circuit affirmed a $155 million reasonable royalty award against Baxalta for infringing Bayer’s blood-clotting factor patent but reversed the willfulness finding, holding that mere knowledge of a patent and its infringement is not enough — willfulness requires wanton, malicious, or bad-faith conduct.
The Federal Circuit affirmed that Amgen’s patents claiming a broad functional genus of anti-PCSK9 antibodies were invalid for lack of enablement, because the specification failed to teach skilled artisans how to make the full range of claimed antibodies without undue experimentation.
The Federal Circuit affirmed that Amgen’s antibody patents directed to an entire genus of antibodies binding to a specific PCSK9 epitope lacked adequate enablement — holding that claiming a broad functional genus of antibodies without enabling the full scope of the claim requires undue experimentation and is invalid under § 112(a).
The Federal Circuit held that technical documents submitted to video coding standards bodies and distributed at widely attended conferences qualify as prior art “printed publications” based on public accessibility, even without formal library indexing.
The Federal Circuit held that a patent owner’s disclaimer of its right to pursue infringement damages in a parallel district court proceeding could moot a challenger’s appeal of an adverse IPR final written decision, giving patent owners a powerful procedural tool.
The Federal Circuit held that Google forfeited its claim construction arguments by failing to raise them before the examiner or the PTAB, clarifying the important procedural distinction between waiver and forfeiture in patent appeals.
The Federal Circuit granted Apple’s mandamus petition, holding that district courts must resolve venue transfer motions before proceeding on the merits, and issued a writ ordering the Western District of Texas to transfer the case to Northern California.
The Federal Circuit held that venue in Hatch-Waxman patent infringement cases is proper only where the defendant’s ANDA submission occurred, not in any district where the generic drug might eventually be sold, resolving a split among district courts.
The Federal Circuit upheld TecSec’s multi-level document security patents as patent eligible under § 101 and reversed the district court’s exclusion of inducement evidence, finding that the claimed data-encryption system represented a specific technical improvement rather than an abstract idea.
The Federal Circuit affirmed PTAB’s invalidity ruling on Immunex’s IL-4 receptor antibody patent, upholding a broad claim construction of ‘human antibodies’ that encompassed humanized antibodies and finding the claims obvious over prior art.
The Federal Circuit reversed a judgment for Biogen and reinstated a jury verdict of invalidity, holding that a recombinant polypeptide cannot be distinguished from its native counterpart for novelty purposes when the molecules are structurally identical — a product-by-process analysis applies even within method of treatment claims.
The Federal Circuit held that the inter partes review statute does not permit a petitioner to join itself to its own existing IPR proceeding or to add new issues through joinder, closing a widely-used PTAB practice that had allowed parties to work around the one-year filing deadline.
The Federal Circuit vacated a judgment of noninfringement in a dispute over Genentech’s Hemlibra hemophilia drug, holding the district court’s narrow construction of ‘antibody’ was inconsistent with the patent’s written description, which disclosed bispecific, chimeric, and humanized antibodies.
The Federal Circuit affirmed a finding of willful patent infringement and the jury’s $23 million damages award in a droplet microfluidics case, but reversed claim construction on two of three patents and partially vacated the injunction as to product lines where 10X had not yet developed non-infringing alternatives.
The Federal Circuit granted a writ of mandamus directing transfer of a patent case from the Western District of Texas to the Northern District of California — the first such order against Judge Albright’s court — holding that the district court abused its discretion by improperly weighing transfer factors.
The Federal Circuit held that a state university’s sovereign immunity barred its involuntary joinder as a co-plaintiff, but permitted an exclusive patent licensee to proceed with infringement litigation without the patent owner, because the licensee had identical interests and no risk of multiple suits.
The Federal Circuit affirmed the PTAB’s invalidation of EMC’s data storage system patents on obviousness grounds — holding that the PTAB properly weighed secondary considerations of non-obviousness including commercial success and industry praise, but found them insufficient to overcome the strong prima facie case of obviousness established by the prior art.
The Federal Circuit held that Roche’s patents on etanercept (Enbrel) were not subject to obviousness-type double patenting by Immunex, because Roche’s license to Immunex was not an effective assignment — Roche retained substantial patent rights that prevented common ownership.
The Federal Circuit held that direct competitors have Article III standing to appeal an IPR final written decision even without a specific threat of patent infringement litigation, so long as their commercial activities risk infringement and the patent owner has refused to grant a covenant not to sue.
The Federal Circuit held that claim preclusion and the Kessler doctrine barred PersonalWeb from re-suing Amazon’s customers for infringement of the same patents, after PersonalWeb had previously settled a lawsuit against Amazon itself without expressly reserving its rights to sue downstream customers.
The Federal Circuit addressed whether a standard-essential patent holder’s injunction request against a licensee who rejected a FRAND license offer was properly denied — examining the standards for determining whether a license offer was FRAND-compliant and whether refusal to accept a FRAND offer could support injunctive relief.
The Federal Circuit held that assignor estoppel bars a patent assignor from challenging claim validity in district court, but does not prevent the same assignor from filing inter partes review petitions at the PTAB — a critical distinction with major implications for post-grant strategy.
The Federal Circuit held that a patent term extension under the Hatch-Waxman Act covers only the active ingredient actually approved by the FDA—and its salts and esters—but does not extend to a metabolite of that ingredient, even if the metabolite is what is pharmacologically active in the body.
The Supreme Court held 7-2 that § 314(d)’s bar on judicial review of IPR institution decisions extends to determinations about the § 315(b) one-year time bar — meaning courts cannot review whether the PTAB incorrectly concluded that a petition was timely filed within the statutory one-year period after service of a complaint alleging infringement.
The Federal Circuit reversed a district court preliminary injunction that barred a patent holder from alleging infringement, holding that a finding of bad faith—including objective baselessness—is a necessary predicate before such an injunction may issue.
The Federal Circuit affirmed the ITC’s exclusion order against Comcast set-top boxes, holding that the ITC’s authority under Section 337 extends to articles that infringe after importation when the importer induces customer infringement domestically.
The Federal Circuit applied the Kessler doctrine — a nineteenth-century rule of preclusion in patent law — to bar PersonalWeb from relitigating patent infringement claims against Amazon Web Services customers after PersonalWeb had previously lost in a suit against Amazon directly, holding that customers of an adjudicated non-infringer are protected from subsequent patent suits on the same technology.
The Federal Circuit granted Google’s writ of mandamus and held that cache servers leased inside third-party ISP facilities do not create a “regular and established place of business” for patent venue purposes unless an employee or agent of the defendant is conducting business there.
The Federal Circuit held that the Patent Trial and Appeal Board cannot cancel patent claims as indefinite in inter partes review proceedings, since the IPR statute limits the Board to invalidity grounds based on prior art under Sections 102 and 103.
The Federal Circuit held that the Patent Trial and Appeal Board exceeded its authority by instituting inter partes review on an obviousness ground that was not raised in the petition, violating the statutory requirement that the Board limit its review to grounds asserted by the petitioner.
The Federal Circuit reversed a PTAB obviousness ruling, holding that a patentee cannot presume a nexus between commercial success and a patent when the successful product contains significant features not covered by the patent claims.
The Supreme Court unanimously held that the American Rule prevents the USPTO from recovering its attorney’s fees from unsuccessful applicants in § 145 civil actions, even though the statute requires applicants to pay “all expenses” of the proceeding.
The Federal Circuit vacated a bench-determined FRAND royalty award, holding that a standard-essential patent holder is constitutionally entitled to a jury trial on “release payments” for an implementer’s past unlicensed use of the patented technology.
The Federal Circuit affirmed invalidity of Idenix’s broad nucleoside compound patent for lack of enablement and written description, ruling that a claim covering a vast genus of chemical compounds is invalid when the specification does not teach how to make most of them.
The Federal Circuit vacated a $145 million patent damages award against Apple, holding that Wi-LAN’s expert improperly used entire smartphone sales as the royalty base for cellular standard-essential patents — applying the entire market value rule without adequate apportionment to the patented features — and requiring retrial on damages.
The Federal Circuit affirmed that patents covering the Contrave weight loss drug were obvious, rejecting arguments that unexpected synergistic effects between bupropion and naltrexone saved the claims from invalidity.
The Federal Circuit clarified the scope of IPR estoppel under § 315(e)(2), holding that IPR estoppel applies only to grounds based on patents or printed publications — the types of prior art available in IPR — and does not bar district court invalidity challenges based on prior art that could not have been raised in IPR, such as prior public use or on-sale evidence.
The Federal Circuit held that applying inter partes review (IPR) proceedings to patents issued before the America Invents Act does not constitute an unconstitutional taking under the Fifth Amendment, rejecting a major constitutional challenge to the PTAB system.
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 addressed the PTAB’s discretionary authority under § 314(a) to deny IPR petitions based on factors including the stage of parallel district court litigation and the efficiency of institution — affirming the PTAB’s broad discretion in institution decisions and its authority to consider the NHK-Fintiv framework for balancing IPR efficiency against parallel litigation.
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 Supreme Court held that the federal government is not a ‘person’ eligible to petition for inter partes review, post-grant review, or covered business method review under the America Invents Act.