The Federal Circuit sitting en banc held that 35 U.S.C. § 112 contains a written description requirement that is distinct from the enablement requirement, and invalidated a broad genus patent covering all substances that inhibit NF-κB activity because the patent described the goal but not the means.
The Federal Circuit affirmed a $200 million jury verdict and permanent injunction against Microsoft for infringing i4i’s patent on a method for editing custom XML in word processing documents, rejecting Microsoft’s invalidity defense premised on a prior-sold product and upholding the cle
The Federal Circuit vacated a patent damages award and held that a reasonable royalty calculation must rely on licenses that are technologically and economically comparable to the patent at issue — rejecting a royalty rate derived from re-bundling agreements that had no connection to the claimed inv
The Federal Circuit affirmed summary judgment of invalidity of a patent on a method for bulk email delivery, holding the claims obvious under post-KSR standards where the claimed process involved only routine, predictable steps well within the common sense of a person with ordinary skill in email ma
The Federal Circuit largely affirmed that Roche’s pegylated erythropoietin product Mircera infringed four of Amgen’s EPO patents, but vacated the district court’s double-patenting rulings and remanded for additional analysis — a significant ruling in the long-running battle over th
The Federal Circuit vacated a $1.5 billion patent damages award against Microsoft, holding that the jury’s royalty base improperly relied on the entire market value of Microsoft’s products — including features unrelated to the patented invention — without proof that the patented feature
The Federal Circuit en banc held that the traditional four-factor preliminary injunction test applies in Hatch-Waxman patent cases — eliminating the prior practice under which a showing of validity and infringement created a presumption of irreparable harm — and remanded the preliminary injunction a
The Federal Circuit addressed the joint infringement problem in method patent claims — holding that when multiple parties each perform different steps of a claimed method, infringement requires that one party direct or control the actions of the other parties performing the remaining steps, setting
The Federal Circuit held that a patent application claiming an isolated DNA sequence encoding the NAIL protein receptor was obvious under KSR — where the prior art disclosed both the protein and routine methods of cloning its encoding gene — marking an important application of KSR’s flexible o
The Federal Circuit struck down a controversial USPTO rule that would have limited patent applicants’ right to file continuation applications claiming priority to parent patents, holding the rule was inconsistent with 35 U.S.C. § 120 — while upholding other procedural rules in the contested ru
The Federal Circuit affirmed the validity of Sanofi’s Plavix (clopidogrel) patent, holding that prior disclosure of a racemic mixture does not anticipate a claim to an isolated single enantiomer — particularly when the enantiomer exhibits unexpectedly superior properties not predictable from t
The Federal Circuit held that the ITC’s limited exclusion order authority under Section 337 does not extend to downstream products of non-parties to the investigation — rejecting the ITC’s longstanding practice of excluding finished goods containing infringing components made by responde
The Federal Circuit held that direct infringement of a method claim divided across multiple parties requires that a single defendant direct or control the performance of every claimed step — a ruling that made it significantly harder to prove infringement of internet-era method patents implemented t
The Supreme Court held that the doctrine of patent exhaustion applies to method patents and that an authorized sale of a product that substantially embodies a patented method exhausts the patent holder’s rights — foreclosing downstream infringement suits against purchasers.
The Federal Circuit vacated a $78.9 million willful infringement verdict against DirecTV’s satellite broadcasting system, reversing on claim construction and holding that means-plus-function claims for software functions require more than a bare reference to software — the specification must d
The Federal Circuit affirmed the invalidation of Aristocrat’s slot machine patent, holding that computer-implemented means-plus-function claims are indefinite under § 112 unless the specification discloses the specific algorithm that transforms a general-purpose computer into the claimed speci
The Federal Circuit tightened the standards for inequitable conduct findings, requiring clear and convincing evidence of both materiality and intent to deceive before a patent may be rendered unenforceable — while also confirming that a patent examiner’s independent knowledge of withheld prior
The Federal Circuit addressed the interplay of written description and priority, holding that a claim amendment during prosecution that introduces new limitations must find support in the originally filed specification to maintain the benefit of the earlier filing date — a key ruling for patent draf
The Federal Circuit sitting en banc abandoned its 24-year-old willful infringement standard, adopting a new two-part objective/subjective recklessness test that raised the bar for enhanced patent damages and eliminated the automatic duty to obtain opinion-of-counsel letters.
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 Supreme Court unanimously rejected the Federal Circuit’s rigid teaching-suggestion-motivation (TSM) test for patent obviousness, holding that courts must apply a flexible, expansive analysis that recognizes multiple reasons why a person of ordinary skill might combine known elements.