The Federal Circuit affirmed that the USPTO’s subject matter eligibility guidance is not binding on the courts, and that the proper legal standard for patent eligibility remains the Alice/Mayo framework as interpreted by federal court precedent.
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 Federal Circuit held that color marks on product packaging can be inherently distinctive and thus registrable as trademarks without proof of acquired distinctiveness, clarifying that multicolor product packaging marks are treated differently from product design marks.
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 reversed a district court ruling and held that method-of-preparation claims for enriching cell-free fetal DNA from maternal blood were patent eligible under § 101, because the claims went beyond merely observing a natural phenomenon and recited concrete preparation steps.
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 custo
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 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 held that patent claims directed to manufacturing driveshaft liners that “attenuate” vibrations were invalid under § 101 because they were simply an instruction to apply Hooke’s law — a natural law — without specifying how to do so, triggering a sharp dissent warning of § 101 ove
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
The Federal Circuit invalidated garage door opener patents covering a wireless sensor system for communicating door state, holding the claims were directed to the abstract idea of wirelessly communicating status information — an idea that cannot be its own inventive concept.
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 ha
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 reversed a district court and invalidated Solutran’s check-processing patent under § 101, holding that the presence of physical steps involving paper checks does not transform an abstract business method into patent-eligible subject matter.
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 reversed a district court’s dismissal of patent claims as ineligible under § 101, applying Berkheimer to hold that well-pleaded factual allegations about how the claimed invention was an unconventional advance must be accepted as true at the 12(b)(6) stage — limiting early
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.