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 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 affirmed the ITC’s exclusion order against Comcast set-top boxes, holding that the ITC’s authority under Section 337 extends to articles that infringe after importation when the importer induces customer infringement domestically.
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.