The Federal Circuit reversed a finding of priority in favor of Genentech, holding that reduction to practice of a recombinant protein invention requires the inventors themselves — not a third party — to recognize the utility of what they have made.
The Federal Circuit held that the common-law experimental use exception to patent infringement is narrow and does not protect activities performed with a commercial purpose, even if the infringer never ultimately sold the infringing product.
The Federal Circuit held that the “offer to sell” prong of patent infringement under § 271(a) requires the offer to be made within the United States, and does not extend to offers made abroad for products to be assembled and used abroad.
The Federal Circuit held that the TTAB failed to give proper weight to the fame of the FRITO-LAY trademark when finding no likelihood of confusion with the mark FIDO LAY for dog treats, establishing that famous marks deserve full weight in the multi-factor Dupont analysis.
The Federal Circuit affirmed summary judgment of non-infringement in an ANDA patent case, holding that Bayer’s repeated prosecution statements characterizing its claimed nifedipine crystal surface area range as ‘special’ and producing ‘superior’ performance created a cl
The Federal Circuit affirmed invalidity of a lacrosse stick patent under the on-sale bar of § 102(b), holding that subjective uncertainty about whether a commercially sold product possessed claimed performance characteristics cannot serve as an escape from the bar — if the product was ready for pate
The Federal Circuit reversed a grant of summary judgment, holding that genuine factual disputes existed over whether a trade show brochure triggered the on-sale bar or anticipated the patent, because neither party had presented evidence on how a person of ordinary skill in the art would understand t
The Supreme Court held that when the Federal Circuit reviews USPTO factual findings, it must apply the Administrative Procedure Act’s ‘substantial evidence’ standard — not the stricter ‘clearly erroneous’ standard applied to district court fact findings — changing the a
The Supreme Court unanimously established a two-part test for the on-sale bar to patentability under § 102(b) — holding that an invention is ‘on sale’ before the critical date when it is (1) the subject of a commercial offer for sale and (2) ready for patenting, resolving a circuit split
The Federal Circuit held that business method patents are not categorically excluded from patentability — upholding a patent on a computerized financial data processing system for mutual fund management and establishing the ‘useful, concrete, and tangible result’ test for software and bu
The Federal Circuit held that UC’s broad patent claims on the insulin cDNA sequence and all vertebrate and mammalian insulin cDNA sequences were invalid for lack of written description — establishing that broad genus claims in biotechnology must be supported by disclosure of a representative n
The Supreme Court unanimously reaffirmed the doctrine of equivalents and held that prosecution history estoppel applies even to unexplained claim amendments — establishing that when a patent claim is narrowed during prosecution without explanation, courts should presume the amendment was made for a
The Federal Circuit affirmed that Genentech’s patent claims on human growth hormone (hGH) methods were limited by the written description in the specification — holding that claims cannot be broader than what the specification actually describes, even in pioneering biotechnology cases, and est
The Supreme Court unanimously held that the interpretation of patent claims is a question of law for the judge to decide — not a question of fact for the jury — fundamentally establishing that patent claim construction (the Markman hearing) is a judicial function and marking a turning point in how p
The Ninth Circuit held that a flea market operator could be vicariously and contributorily liable for copyright infringement by vendors selling counterfeit recordings — establishing the framework for secondary copyright liability that would later be applied to online platforms and peer-to-peer servi
The Federal Circuit reinforced the principles of conception and reduction to practice in patent priority disputes, clarifying that an inventor’s conception must be complete and definite before any reduction to practice can begin — an important decision for inventorship and priority determinati