The Federal Circuit reaffirmed that prosecution history estoppel bars application of the doctrine of equivalents when a claim was narrowed during prosecution to distinguish prior art — a landmark application of Festo’s flexible bar to a complex software patent dispute.
The Federal Circuit affirmed the validity of Forest Laboratories’ escitalopram (Lexapro) patent, holding the single-enantiomer antidepressant non-obvious over the known racemic citalopram — with the critical role played by unexpected superior pharmacological properties of the isolated (+)-enan
In one of the first major post-KSR Federal Circuit obviousness decisions, the court upheld the non-obviousness of Takeda’s pioglitazone (Actos) patent, applying the Supreme Court’s flexible obviousness framework while affirming that selection from a genus of prior art compounds requires
In one of the first post-KSR Federal Circuit obviousness decisions, the court invalidated Leapfrog’s patent on an electronic phonics learning toy as obvious, holding that it would have been obvious to combine the mechanical toy’s learning concept with electronic text-to-speech technology
The Federal Circuit reversed a district court’s obviousness finding in a Hatch-Waxman pharmaceutical case, holding that the court had improperly defined the level of ordinary skill in the art — which significantly affected the obviousness analysis for an antibiotic ear drop formulation patent
The Federal Circuit reversed a district court’s validity ruling and held that Pfizer’s patent covering amlodipine besylate (Norvasc) was invalid for obviousness, finding that selecting the besylate salt of amlodipine was routine pharmaceutical testing that any skilled chemist would have
The Federal Circuit addressed the requirements for functional claim limitations in software-implemented gaming machine patents, reinforcing that functional language in claims must be supported by adequate structural or algorithmic disclosure in the specification — a key ruling on the § 112 disclosur
The Federal Circuit sitting en banc resolved a circuit split and held that induced infringement under 35 U.S.C. § 271(b) requires proof that the defendant specifically intended to cause direct infringement — not merely that it intended to perform acts that happen to constitute infringement.
The Federal Circuit reversed a finding of obviousness in a spinal implant patent case, holding that the district court failed to identify a sufficient motivation or reason why a person of ordinary skill would have combined the cited prior art references — possibility of combination is not enough; th
The Federal Circuit held a textile dye process patent invalid as obvious, clarifying that the teaching-suggestion-motivation (TSM) test for obviousness is flexible and allows motivation to combine to be found in common knowledge, common sense, and efficiency goals — not just explicit documentary evi
The Federal Circuit invalidated Align Technology’s patents on incremental orthodontic aligners as obvious over prior art, holding that packaging convenience and commercial success driven by aesthetic and unclaimed features cannot overcome a prima facie case of obviousness.
The Federal Circuit held that the patent exhaustion doctrine does not give a purchaser the right to use replicated copies of a self-replicating patented technology, and that conditional sales of patented seed prevent exhaustion from arising in the first place.
The Federal Circuit invalidated a key Lipitor patent claim because the dependent claim attempted to claim subject matter outside the scope of the independent claim it depended on, violating 35 U.S.C. § 112, paragraph 4.
The Federal Circuit held that the sale of a licensed device does not exhaust a patent holder’s method claims, ruling that purchasers of Intel chips who used them in unauthorized combinations remained liable for infringement of LG Electronics’ method patents — a holding the Supreme Court
The Federal Circuit affirmed that Agfa’s patents were unenforceable due to inequitable conduct based on intentional withholding of material prior art, and confirmed that inequitable conduct claims may be tried to the court without a jury.
The Federal Circuit held in a poxvirus vaccine interference that there is no per se rule requiring a patent applicant to recite known structural information in the written description — an applicant may rely on publicly available scientific literature for what is well-known in the field.
The Federal Circuit held that when a patent defendant asserts an advice-of-counsel defense to willful infringement, it waives attorney-client privilege for all communications about the patent’s validity, enforceability, and infringement — but the waiver does not automatically extend to all att
The Federal Circuit reversed a finding of anticipation, holding that a prior art reference disclosing a broad temperature range of 100–500°C did not anticipate a claimed narrower range of 330–450°C — a genus does not anticipate every species, and a broader prior art range anticipates a narrower clai
The Federal Circuit affirmed summary judgment of non-infringement, holding that a patent’s claim preamble is limiting when it recites essential structural elements of the claimed invention, and construed the asserted dental implant patent claims to require a complete emergence cuff and abutmen
The Federal Circuit affirmed invalidity of SmithKline’s Paxil patent, holding that product-by-process claims are anticipated by prior art that discloses the same product, even when the prior art used a different process to make it — because patents protect products, not processes, under such c
The Federal Circuit affirmed patent unenforceability for inequitable conduct, holding that pharmaceutical patent applicants who submitted declarations from scientists with undisclosed financial ties to the patent owner engaged in deceptive conduct that was material because the patent examiner had sp
The Federal Circuit vacated and remanded in a horizontal directional drilling patent case, holding that the 1992 PTO Rule 56 materiality standard supplements rather than replaces the earlier ‘reasonable examiner’ standard, that false statements in a Rule 131 declaration are inherently ma
The Federal Circuit held that a licensee currently in good standing under a patent license lacks standing to bring a declaratory judgment action challenging the patent’s validity — a ruling the Supreme Court unanimously reversed in 2007.
The Federal Circuit held that patent claims covering all methods of achieving a technical result are invalid for insufficient written description when the specification discloses only one specific method, warning inventors that the scope of claims must be commensurate with what was actually disclose