Federal Circuit, Utility Patent

Genuine Enabling Technology LLC v. Nintendo Co., Ltd. — Federal Circuit Reverses Claim Construction, Holds Extrinsic Evidence Cannot Create Scope Limit Not in Intrinsic Record

The Federal Circuit reversed a claim construction that relied on extrinsic expert testimony to impose a specific frequency threshold on the term “input signal,” holding that extrinsic evidence cannot establish a claim scope limit that has no basis in the patent’s intrinsic record.

Federal Circuit, Utility Patent

In re Volkswagen Group of America, Inc. — Federal Circuit Holds Independently-Owned Dealerships Are Not a Manufacturer’s “Regular and Established Place of Business” for Patent Venue

The Federal Circuit granted mandamus and transferred patent suits against Volkswagen and Hyundai out of the Western District of Texas, holding that independently-owned dealerships do not constitute the manufacturers’ regular and established places of business for patent venue purposes absent day-to-day control over their operations.

Federal Circuit, Utility Patent

Janssen v. Mylan — Federal Circuit Affirms Obviousness of Long-Acting Injectable Paliperidone Patent

The Federal Circuit affirmed the district court’s finding of obviousness for Janssen’s patents on monthly injectable paliperidone palmitate (Invega Sustenna) for treating schizophrenia — holding that a skilled formulator would have been motivated to combine known long-acting injectable antipsychotic formulation techniques with paliperidone’s known properties to achieve a monthly injectable product.

Federal Circuit, Utility Patent

Regents of the University of California v. Broad Institute — Federal Circuit Awards CRISPR Patent Interference Victory to Broad Institute

The Federal Circuit affirmed the PTAB’s award of CRISPR gene-editing patent rights to the Broad Institute over UC Berkeley, holding that UC’s earlier reduction to practice in prokaryotic cells did not establish a continuous conception and reduction to practice in eukaryotic cells — the more commercially significant application — sufficient to defeat Broad’s independent patent claims.

Federal Circuit, Trademark, Federal

In re Elster — Federal Circuit Holds Lanham Act’s Bar on Registering Living Person’s Name Without Consent Violates First Amendment

The Federal Circuit struck down the Lanham Act’s prohibition on registering marks that include a living person’s name without their consent as applied to “TRUMP TOO SMALL,” holding it was an unconstitutional restriction on speech critical of public figures — though the Supreme Court later reversed.

Copyright, Supreme Court

Unicolors v. H&M Hennes & Mauritz — Supreme Court Allows Copyright Registration Mistakes to Be Corrected

The Supreme Court held 6-3 that a copyright owner’s failure to know that a single registration application could not cover both published and unpublished works did not necessarily constitute a ‘knowing’ inaccuracy that voids the registration — allowing courts to overlook good-faith mistakes in copyright registration applications under 17 U.S.C. § 411(b).

Federal Circuit, Utility Patent

California Institute of Technology v. Broadcom — Federal Circuit Vacates $1.1 Billion Damages Award, Clarifies IPR Estoppel Scope

The Federal Circuit affirmed infringement of Caltech’s Wi-Fi error-correction patents but vacated a $1.1 billion damages award against Broadcom and Apple, rejected a novel two-tier royalty model, and clarified that IPR estoppel bars defendants from raising invalidity grounds that reasonably could have been raised in earlier IPR proceedings.

Federal Circuit, Patent Subject Matter Eligibility

Cooperative Entertainment v. Kollective Technology — Federal Circuit on CDN Patent Eligibility

The Federal Circuit reversed dismissal of Cooperative Entertainment’s patent on a peer-to-peer content delivery network architecture, holding that claims directed to a specific topology of network nodes for distributing large video files can be patent-eligible when the specific network arrangement improves how content is distributed — not merely an abstract idea of sharing data.

Federal Circuit, Trade Secret, Federal

Masimo Corp. v. True Wearables, Inc. — Federal Circuit Upholds Trade Secret Injunction, Holds Prior Publication in Unrelated Field Does Not Destroy Secrecy

The Federal Circuit affirmed a preliminary injunction protecting Masimo’s pulse oximeter algorithm as a trade secret, holding that prior publication of equivalent mathematics in a statistics journal did not make the algorithm generally known to those who could obtain economic value from it in the medical device field.

Federal Circuit, Utility Patent

Biogen v. Mylan — Federal Circuit Affirms Invalidity for Lack of Written Description Where Single Dosage Mention Was Insufficient

In a divided decision, the Federal Circuit affirmed that Biogen’s multiple sclerosis drug patent lacked adequate written description because the specification’s single passing reference to a 480 mg/day dose of dimethyl fumarate did not demonstrate the inventors actually possessed that specific therapeutic method.

Federal Circuit, Utility Patent

Celgene Corp. v. Mylan Pharmaceuticals — Federal Circuit Clarifies Hatch-Waxman Venue: It’s Where the ANDA Was Submitted, Not Where Drugs Will Be Sold

The Federal Circuit affirmed dismissal of Celgene’s Hatch-Waxman patent suit for improper venue, holding that for ANDA litigation venue purposes, the act of infringement is the submission of the ANDA itself — not the receipt of a notice letter or the state where future generic sales are anticipated.

Federal Circuit, Utility Patent

University of Strathclyde v. Clear-Vu Lighting LLC — Federal Circuit Reverses IPR Obviousness Finding for Lack of Reasonable Expectation of Success

The Federal Circuit reversed a PTAB obviousness determination, holding that the Board lacked substantial evidence for a reasonable expectation of success because the cited prior art references did not actually achieve the claimed result of inactivating antibiotic-resistant bacteria without photosensitizing agents.

Federal Circuit, Utility Patent

Intel Corp. v. Qualcomm — Federal Circuit Addresses IPR Estoppel Scope and ‘Could Have Raised’ Standard

The Federal Circuit addressed the scope of IPR estoppel under § 315(e)(2), holding that an IPR petitioner is estopped from raising in district court invalidity grounds based on prior art that could reasonably have been raised in the IPR petition — including prior art patents and publications the petitioner did not actually rely on in the IPR.

Federal Circuit, Utility Patent

Lubby Holdings LLC v. Chung — Federal Circuit Holds Corporate Officers Are Personally Liable for Patent Infringement Without Piercing the Corporate Veil

The Federal Circuit held that a corporate officer can be personally liable for actively participating in a corporation’s patent infringement even without any piercing of the corporate veil, and clarified that the patent marking statute limits pre-notice damages regardless of whether the infringer was aware of the patent.

Federal Circuit, Utility Patent

MLC Intellectual Property, LLC v. Micron Technology, Inc. — Federal Circuit Affirms Exclusion of Damages Expert for Insufficient Apportionment Analysis in Flash Memory Patent Case

The Federal Circuit affirmed the exclusion of a patent owner’s damages expert, holding that the expert’s reasonable royalty calculation failed to adequately apportion the royalty base to account only for the patented features, rather than the full value of the accused products.

Federal Circuit, Patent Subject Matter Eligibility

Universal Secure Registry LLC v. Apple Inc. — Federal Circuit Holds Multi-Factor Authentication Coordination Patents Are Abstract Ideas Ineligible Under § 101

The Federal Circuit held that four patents covering methods for coordinating multi-factor authentication across secure registries, PINs, biometrics, and universal devices are directed to abstract ideas and lack an inventive concept sufficient to confer patent eligibility.

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