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, Patent Subject Matter Eligibility

Chewy v. IBM — Federal Circuit Invalidates Web Advertising Patents Under § 101, Partially Reverses on Infringement

The Federal Circuit affirmed that IBM’s patent claims directed to identifying advertisements based on search queries are abstract ideas ineligible under § 101—using a conventional database to match ads with search results adds no inventive concept—while partially reversing on noninfringement, remanding one claim for further proceedings.

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, Trademark, Federal

In re GO & Associates — Federal Circuit Affirms ‘EVERYBODY VS. RACISM’ Fails to Function as Trademark

The Federal Circuit affirmed the TTAB’s refusal to register EVERYBODY VS. RACISM as a trademark for apparel, holding that the phrase functions as an informational, anti-racist message rather than as a source identifier — and confirming that widespread use of a phrase in an informational context undermines trademark registration.

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, Trademark, Federal

Great Concepts v. Chutter — Federal Circuit Rules Fraudulent Incontestability Declaration Cannot Cancel a Trademark Registration

The Federal Circuit reversed the TTAB’s cancellation of Great Concepts’ DANTANNA’S restaurant trademark, holding that filing a fraudulent Section 15 incontestability declaration does not give the Board authority to cancel the underlying registration — fraud after registration has limited remedies under the Lanham Act.

Design Patent, Federal Circuit

Columbia Sportswear v. Seirus — Federal Circuit Rules Design Patent Comparison Prior Art Must Match the Same Article of Manufacture

In a precedent-setting design patent case, the Federal Circuit held that comparison prior art used to defend against infringement must be drawn from the same article of manufacture claimed in the design patent — prior art from a different type of product cannot be used to confuse the ordinary observer comparison.

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.

Federal Circuit, Utility Patent

In re Float’N’Grill — Federal Circuit Limits Reissue Patents to Inventions Explicitly Disclosed in the Original

The Federal Circuit affirmed rejection of a reissue patent application that tried to broaden claims beyond the original patent’s single disclosed embodiment, holding that reissue claims must be directed to the same invention explicitly described in the original patent—not to undisclosed alternatives to elements the inventor treated as necessary to the invention.

Federal Circuit, Utility Patent

Inguran v. ABS Global — Federal Circuit Holds Judgment on Direct Infringement Does Not Preclude Later Induced Infringement Suit

The Federal Circuit reversed the dismissal of an induced patent infringement suit on res judicata grounds, holding that a prior judgment on direct infringement claims does not preclude a subsequent suit for induced infringement when the induced infringement claims are based on different operative facts and were not litigated in the first action.

Federal Circuit, Utility Patent

Parus Holdings v. Google — Federal Circuit Holds PTAB May Disregard Evidence Incorporated by Reference in Violation of Procedural Rules

The Federal Circuit affirmed PTAB’s decision to disregard Parus Holdings’ evidence in IPR proceedings, holding that a patent owner’s attempt to incorporate arguments by reference through voluminous exhibits violates PTAB procedural rules and the APA does not require the Board to overlook that violation.

Federal Circuit, Utility Patent

Blue Gentian v. Tristar Products — Federal Circuit Upholds Co-Inventor Correction for Expandable Hose Patent

The Federal Circuit affirmed that a nonparty who shared key design elements for an expandable hose with the named inventor at a pre-filing meeting was a co-inventor who should have been listed on the patents, and that his testimony was adequately corroborated by physical prototypes and documentary evidence—requiring correction of inventorship on all asserted patents.

Federal Circuit, Utility Patent

Yita v. MacNeil IP — Federal Circuit Reverses PTAB’s Reliance on Secondary Considerations Tied Only to Known Prior Art Feature

The Federal Circuit reversed the PTAB’s reliance on commercial success as a secondary consideration of nonobviousness for car floor mat patents, holding that evidence of commercial success must be linked to the claimed combination as a whole, not to a single feature that was already present in the prior art—otherwise there is no nexus and the secondary consideration carries no weight.

Copyright Fair Use, Supreme Court

Andy Warhol Foundation v. Goldsmith — Supreme Court Limits Fair Use for Transformative Commercial Uses of Photographs

The Supreme Court held 7-2 that the Andy Warhol Foundation’s commercial licensing of Warhol’s silkscreen portrait of Prince — based on a photograph by Lynn Goldsmith — was not fair use, because the commercial licensing purpose closely tracked the photographer’s own licensing market and the transformation was insufficient to override the significant commercial harm.

Federal Circuit, Utility Patent

Sanofi-Aventis v. Mylan Pharmaceuticals — Federal Circuit Reverses PTAB on Analogous Art Test for Drug Delivery Patent

The Federal Circuit reversed the PTAB’s obviousness ruling on a drug delivery device patent, holding that the Board misapplied the analogous art test by comparing a prior art reference to another prior art reference rather than to the challenged patent—an IPR petitioner bears the burden of showing that each prior art reference is analogous to the patent being challenged, not to other references.

Federal Circuit, Utility Patent

HIP v. Hormel Foods — Federal Circuit Clarifies ‘Significant Contribution’ Standard for Joint Inventorship

The Federal Circuit reversed a district court’s addition of a joint inventor to a bacon-precooking patent, holding that contributing a preheating concept—when that concept was already known and not the novel element of the claimed invention—is an ‘insignificant’ contribution that does not satisfy the requirements for joint inventorship under the Pannu factors.

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