Federal Circuit, Patent Subject Matter Eligibility

Vanda Pharmaceuticals v. West-Ward Pharmaceuticals — Federal Circuit Upholds Patent Eligibility of Personalized Medicine Claims

The Federal Circuit held that method-of-treatment claims directed to a specific dosing regimen for schizophrenia based on a patient’s genetic profile are patent eligible under §101, distinguishing the Supreme Court’s Mayo decision and reinforcing the eligibility of personalized medicine patents.

Federal Circuit, Utility Patent

SimpleAir v. Google — Federal Circuit Holds Terminal Disclaimer Alone Does Not Establish Claim Preclusion for Continuation Patents

The Federal Circuit vacated a claim preclusion ruling against SimpleAir, holding that filing a terminal disclaimer in a continuation patent does not create a presumption that the continuation’s claims are patentably indistinct from the parent, and courts must compare actual claim scope before finding preclusion.

Federal Circuit, Patent Subject Matter Eligibility

Berkheimer v. HP Inc. — Federal Circuit Holds Patent Eligibility Step 2B Contains Factual Questions Not Resolvable on Summary Judgment

The Federal Circuit held that the Alice/Mayo Step 2B inquiry — whether a claim element or combination of elements represents an ‘inventive concept’ that was well-understood, routine, and conventional — contains underlying factual questions that may not always be resolved as a matter of law on summary judgment, limiting the scope of § 101 dispositive motions.

Federal Circuit, Patent Subject Matter Eligibility

Credit Acceptance Corp. v. Westlake Services — Federal Circuit Affirms CBM Review Cancellation of Auto Finance Patent

The Federal Circuit affirmed PTAB’s cancellation of Credit Acceptance’s patent on financing automobile purchases through a dealer-administered program, holding the claims directed to the abstract idea of processing financing transactions — a business practice not rendered patent-eligible by implementation on a computer.

Federal Circuit, Patent Subject Matter Eligibility

Smart Systems Innovations v. Chicago Transit Authority — Federal Circuit Holds Open Transit Payment Patents Abstract Under Section 101

The Federal Circuit affirmed invalidity of Smart Systems’ open-loop transit payment patents under Section 101, holding that collecting financial data using generic components to facilitate transit access is an abstract idea — with a notable dissent arguing that the claims addressed a real, Internet-era technical problem.

Federal Circuit, Utility Patent

Travel Sentry v. Tropp — Federal Circuit Applies Divided Infringement to Method Claims

The Federal Circuit reversed summary judgment of non-infringement in a divided infringement case, holding that the ‘direction and control’ standard from Akamai v. Limelight could be satisfied where one party conditions participation in an activity on performance of a method step by another party — applying the standard to luggage locks and TSA inspection agreements.

Federal Circuit, Utility Patent

In re Cray (2017) — Federal Circuit Defines ‘Regular and Established Place of Business’ for Patent Venue After TC Heartland

The Federal Circuit granted mandamus to Cray and set forth a three-part test for what constitutes a ‘regular and established place of business’ under the patent venue statute — rejecting the Eastern District of Texas’s expansive four-factor test and clarifying that employees’ homes and remote workers in a district do not, by themselves, establish venue.

Federal Circuit, Patent Subject Matter Eligibility

Visual Memory v. NVIDIA — Federal Circuit Upholds Programmable Memory System Patent as Directed to Technological Improvement

Reversing a district court’s Section 101 dismissal, the Federal Circuit held that Visual Memory’s patent on a programmable memory system with processor-specific operational characteristics was directed to an improved computer memory technology — not an abstract idea — because it described a specific technical advance in how memory systems operate.

Federal Circuit, Utility Patent

Nidec Motor Corp. v. Zhongshan Broad Ocean Motor — Federal Circuit on IPR Estoppel Scope for Non-Patent Art

The Federal Circuit held that IPR estoppel under § 315(e)(2) does not extend to prior art grounds based on patents or printed publications that the petitioner could not have raised in IPR — specifically that prior art systems and physical products (which cannot be raised in IPR) are not subject to the IPR estoppel bar in subsequent district court litigation.

Supreme Court, Trademark, Federal

Matal v. Tam — Supreme Court Unanimously Strikes Down Disparagement Bar to Trademark Registration

The Supreme Court unanimously held that the Lanham Act’s prohibition on registering ‘disparaging’ trademarks violates the First Amendment — invalidating the PTO’s refusal to register THE SLANTS for an Asian-American band and establishing that trademark registration is a government benefit program subject to First Amendment viewpoint neutrality requirements.

Federal Circuit, Utility Patent

Helsinn Healthcare v. Teva Pharmaceuticals (Federal Circuit 2017) — Secret Sales with Public Existence Trigger AIA On-Sale Bar

The Federal Circuit held that a secret commercial sale — where the existence of the sale agreement was publicly disclosed but the details of the invention were kept confidential — triggers the on-sale bar under the AIA, finding that the America Invents Act did not change the rule that confidential sales can invalidate patents when the sale’s existence is public.

Supreme Court, Utility Patent

SCA Hygiene Products v. First Quality Baby Products — Supreme Court Eliminates Laches as Defense to Patent Infringement Within Statute of Limitations

The Supreme Court held 7-1 that laches cannot be used as a defense to patent infringement that occurred within the six-year statute of limitations — extending Petrella v. Metro-Goldwyn-Mayer (copyright) to patent law and eliminating a long-standing Federal Circuit precedent that had allowed laches to bar infringement suits brought years after the patent holder learned of the infringement.

Federal Circuit, Utility Patent

Mentor Graphics v. EVE-USA (2017) — Federal Circuit Holds Panduit Lost Profits Analysis Satisfies Apportionment Without Separate Apportionment Step

The Federal Circuit held that when a patentee satisfies all four Panduit factors for lost profits — including proving demand driven by the patented feature and no acceptable non-infringing substitutes — no further separate apportionment of those profits is required, because the Panduit analysis inherently ties the damages to the patented features’ value.

Federal Circuit, Patent Subject Matter Eligibility

Thales Visionix v. United States — Federal Circuit Applies Alice to Sensor Fusion Navigation Patent

The Federal Circuit reversed the Court of Federal Claims’ § 101 dismissal of Thales Visionix’s inertial sensor patent, holding that claims directed to a specific arrangement of sensors and a mathematical algorithm to improve navigation accuracy are patent-eligible because the claims improve the technical functioning of the navigation system rather than merely applying a mathematical concept to a conventional context.

Federal Circuit, Patent Subject Matter Eligibility

Intellectual Ventures v. Capital One Financial — Federal Circuit Strikes Down XML and Data-Collection Patents as Abstract Ideas

The Federal Circuit affirmed invalidation of Intellectual Ventures’ XML-formatting and financial data-collection patents under Section 101, holding that organizing, collecting, recognizing, and storing data — even when dressed in domain-specific vocabulary — is a patent-ineligible abstract idea with no inventive concept.

Design Patent, Federal Circuit

Apple v. Samsung Design Patent Damages — Federal Circuit 2017 Remand Sends Article-of-Manufacture Question Back to District Court

On remand from the Supreme Court’s Samsung v. Apple decision, the Federal Circuit declined to define the legal test for identifying the ‘article of manufacture’ in design patent damages and instead sent the case back to the district court to resolve the issue in the first instance — prolonging one of the most consequential design patent damages cases in U.S. history.

Federal Circuit, Patent Subject Matter Eligibility

Praxair Distribution v. Mallinckrodt Hospital — Federal Circuit Holds Nitric Oxide Dosing Method Patent Ineligible

The Federal Circuit held Mallinckrodt’s patents on methods of supplying inhaled nitric oxide therapy while monitoring patients for adverse effects were patent-ineligible under § 101 — finding the claims directed to the natural phenomenon that nitric oxide can worsen pulmonary edema in certain patients and the monitoring and adjusting steps conventional therapeutic practice.

Federal Circuit, Utility Patent

WesternGeco v. ION Geophysical — Federal Circuit Bars Foreign Lost Profit Damages Under Section 271(f), Later Reversed by Supreme Court

The Federal Circuit reversed a $93 million foreign lost-profits award for ION’s domestic infringement under Section 271(f), holding that the presumption against extraterritoriality barred recovery for overseas contracts WesternGeco would have won absent the infringement — a ruling the Supreme Court reversed in 2018.

Federal Circuit, Patent Subject Matter Eligibility

McRO v. Bandai Namco — Federal Circuit Upholds Animation Lip-Sync Patents as Patent-Eligible Improvements to Computer Animation

The Federal Circuit held that McRO’s patents on rule-based automated lip synchronization in 3D character animation were patent-eligible — the claims specified a particular improvement in computer animation technology using specific rules, not merely the abstract idea of using rules to automate a task, providing an important precedent for software patent eligibility post-Alice.

Federal Circuit, Utility Patent

Stryker Corp. v. Zimmer Inc. (2016 Remand) — Federal Circuit Applies New Halo Standard, Remands Enhanced Damages Determination to District Court

On remand from the Supreme Court’s Halo Electronics decision, the Federal Circuit affirmed the jury’s willfulness finding under the new subjective standard but vacated the enhanced damages award, instructing the district court to exercise its discretion anew — illustrating how post-Halo willfulness analysis shifts enhanced damages decisions back to district court discretion.

Federal Circuit, Patent Subject Matter Eligibility

Electric Power Group v. Alstom — Federal Circuit Holds Power Grid Monitoring Patents Invalid as Data-Collection Abstract Ideas

The Federal Circuit held that patents on real-time monitoring and analysis of electric power grid data were patent-ineligible under Section 101, establishing that collecting, analyzing, and displaying information — even in a complex industrial context — is an abstract idea without an inventive concept in its implementation.

Federal Circuit, Patent Subject Matter Eligibility

Synopsys v. Mentor Graphics — Federal Circuit Affirms § 101 Invalidity for EDA Software Patent

The Federal Circuit affirmed the invalidity of Mentor Graphics’ patents on hardware synthesis software under § 101 — holding that claims directed to the abstract idea of synthesizing a hardware circuit design from a functional description were not rendered patent-eligible by implementation on a computer, and clarifying that the Alice two-step applies to software patents regardless of whether the claim recites a method, system, or computer-readable medium.

Federal Circuit, Utility Patent

The Medicines Company v. Hospira (2016) — Federal Circuit En Banc Holds Contract Manufacturer’s Services Sale Is Not an Invalidating On-Sale Bar Event

An en banc Federal Circuit held that a pharmaceutical company’s contract with a manufacturer to produce drug batches — where title to the product remained with the inventor — did not constitute a ‘commercial sale’ triggering the on-sale bar under Section 102(b), clarifying the boundaries between legitimate pre-commercial manufacturing and invalidating sales activity.

Federal Circuit, Patent Subject Matter Eligibility

Intellectual Ventures I v. Capital One Financial — Federal Circuit Applies Alice to Financial Data Processing Patents

The Federal Circuit affirmed § 101 invalidity of Intellectual Ventures’ patents on interactive customizable web pages and database record indexing — holding that creating customizable web interfaces for financial products and organizing financial data with hierarchical index structures are abstract ideas not rendered patent-eligible by generic computer implementation.

Federal Circuit, Patent Subject Matter Eligibility

BASCOM Global Internet Services v. AT&T Mobility — Federal Circuit Finds Inventive Concept in Non-Conventional Arrangement of Known Elements

The Federal Circuit vacated dismissal of BASCOM’s Internet content-filtering patent, holding that an inventive concept can arise from a non-conventional, non-generic arrangement of individually known elements — even if the abstract idea at the core of the claims is itself conventional.

Supreme Court, Utility Patent

Cuozzo Speed Technologies v. Lee — Supreme Court Upholds Broadest Reasonable Interpretation Standard in IPR Proceedings

The Supreme Court unanimously upheld the Patent Trial and Appeal Board’s use of the ‘broadest reasonable interpretation’ standard for claim construction in inter partes review proceedings — validating the PTO’s approach over patent holders’ objections that IPR should use the narrower claim construction applied in district court litigation.

Supreme Court, Utility Patent

Halo Electronics v. Pulse Electronics — Supreme Court Loosens Standard for Enhanced Damages in Willful Patent Infringement

The Supreme Court unanimously overruled the Federal Circuit’s Seagate objective-recklessness test for willful patent infringement and enhanced damages under § 284 — holding that courts have broad discretion to award enhanced damages in egregious cases of deliberate or wanton infringement, without requiring proof of an objectively reasonable defense.

Federal Circuit, Patent Subject Matter Eligibility

Enfish v. Microsoft — Federal Circuit Holds Self-Referential Database Patent Claims Eligible Under Alice Step 1

The Federal Circuit held that claims directed to a specific improvement in database technology — a self-referential logical table that allows all types of data to be stored in a single table structure — were directed to a concrete software improvement rather than an abstract idea, surviving Alice step one and providing an important pathway for software patent eligibility.

Federal Circuit, Utility Patent

Lexmark International v. Impression Products — Federal Circuit En Banc Holds Foreign Sales Don’t Exhaust U.S. Patent Rights

An en banc Federal Circuit held that a patent owner’s restricted domestic sales don’t exhaust patent rights when clearly communicated restrictions are violated, and that foreign sales never exhaust U.S. patent rights — both holdings later reversed by the Supreme Court in a landmark 2017 patent exhaustion ruling.

Federal Circuit, Utility Patent

Wi-LAN Inc. v. Apple Inc. (2016) — Federal Circuit Holds Doctrine of Equivalents Does Not Save Wireless Patent Claims with Different Hardware Pipelines

The Federal Circuit affirmed a jury verdict of non-infringement for Apple in a wireless patent case, holding that even mathematically equivalent signal-processing operations implemented through structurally different hardware pipelines are not equivalent under the doctrine of equivalents — the different structures matter even if the mathematical outputs are the same.

Federal Circuit, Trademark, Federal

In re Tam (2015) — Federal Circuit En Banc Strikes Down Lanham Act’s Ban on Disparaging Trademarks as Unconstitutional

An en banc Federal Circuit held that Section 2(a) of the Lanham Act, which bars registration of ‘disparaging’ trademarks, violates the First Amendment — a landmark ruling that the Supreme Court affirmed in Matal v. Tam (2017), eliminating one of trademark law’s longest-standing restrictions on trademark content.

Federal Circuit, Utility Patent

CSIRO v. Cisco Systems (2015) — Federal Circuit Rejects Mandatory ‘Smallest Saleable Unit’ Starting Point for SEP Damages

The Federal Circuit held that there is no universal rule requiring patent damages models to begin with the smallest saleable patent-practicing unit — but remanded CSIRO’s Wi-Fi patent damages award because the district court failed to account for the patent’s standard-essential status when setting the royalty rate, requiring a FRAND-adjusted award.

Federal Circuit, Utility Patent

MCM Portfolio v. Hewlett-Packard (2015) — Federal Circuit Unanimously Upholds Constitutionality of Inter Partes Review

The Federal Circuit unanimously rejected a patent holder’s constitutional challenge to inter partes review, holding that IPR proceedings do not violate Article III or the Seventh Amendment because patents are public rights that may be adjudicated by an administrative agency without access to a federal court or jury — a foundational ruling for the PTAB system.

Federal Circuit, International Trade Commission

ClearCorrect v. ITC (2015) — Federal Circuit Holds ITC Lacks Jurisdiction Over Electronic Transmissions of Digital Data

The Federal Circuit held that the ITC’s Section 337 jurisdiction covers only physical ‘articles’ and does not extend to electronic transmissions of digital data — blocking the ITC from issuing exclusion orders against competitors that infringe by transmitting digital files over the internet rather than importing physical goods.

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