2025fc-precedential

2025 Federal Circuit Patent-Related Precedential Opinions

2025 Federal Circuit Patent-Related Precedential Opinions

101 Eligibility

PowerBlock Holdings, Inc. v. iFit Inc.: Machine is eligible when it is “sufficiently specific” and “consists of parts, or of certain devices and combination of devices.”

The Federal Circuit reversed the district court’s dismissal of PowerBlock’s claims under § 101, holding that claims directed to selectorized dumbbells with motorized weight selection were not abstract ideas. The court emphasized that claim 1 recited a specific mechanical configuration—nested weight plates, a movable selector, and an electric motor physically coupled to move the selector—that constituted a “technological improvement” rather than a result-oriented abstraction. Unlike prior cases involving “do it on a computer” patents, the claims here were directed to a concrete machine with defined structural limitations. The court also rejected iFit’s argument that conventional dumbbell components should be ignored, clarifying that § 101 does not allow old elements to be read out of the eligibility inquiry. Because the claims as a whole recited a specific implementation of a mechanical improvement, they were patent-eligible at Alice step one.

Court holdings

Recentive Analytics, Inc. v. Fox Corp.: Claims that do no more than apply established methods of machine learning to a new data environment are not patent eligible.

The Federal Circuit affirmed the district court's holding that the claims were ineligible under Alice because they are directed to the abstract idea of applying generic machine-learning techniques in a particular data environment with no inventive concept.

Recentive argued in its briefs that its application of machine learning is not generic because “Recentive worked out how to make the algorithms function dynamically. . . .” But the court held:

Even if Recentive had not conceded the lack of a technological improvement, neither the claims nor the specifications describe how such an improvement was accomplished. That is, the claims do not delineate steps through which the machine learning technology achieves an improvement.“

Patent Docs (linked below) notes that the Court hints that more detail in the claim and the specification regarding the technical improvement, such as the training process, could avoid a finding of ineligibility.

Additional Holdings:

Whether claims applying conventional machine-learning techniques to event scheduling and network-map generation are directed to an abstract idea (Alice step one).: Claims are directed to an abstract idea where they merely invoke conventional, generic machine-learning techniques as a tool to perform longstanding scheduling/mapping tasks in a particular field of use, without claiming a specific improvement in computer or machine-learning technology.
Whether iterative training and real-time updating limitations supply a technological improvement at Alice step one.: Generic features inherent to machine learning—such as iterative training on selected data and updating outputs based on new inputs—do not, without more, constitute a specific technological improvement that renders the claims non-abstract.
Whether the claims recite an inventive concept (Alice step two): A claimed “inventive concept” that amounts to restating the abstract idea (e.g., using generic machine learning to dynamically generate and update optimized schedules/maps) does not transform the claim into eligible subject matter when the claims add only conventional, functionally described techniques and generic computing components.
Whether applying existing technology to a new data environment or achieving faster, more efficient performance supplies eligibility.: Limiting an abstract idea to a particular technological environment or new dataset, and achieving only generic speed/efficiency gains from computerization, does not confer patent eligibility absent an improved computer technique or other nonconventional implementation.

Blogs:

US Synthetic v. ITC: It's legal error to require patentee to prove patent eligibility when invalidity is asserted

The Federal Circuit reversed the ITC's § 101 holding that asserted composition-of-matter claims were not directed to an abstract idea at Alice Step One where quantified material properties correlate to structure. The court applied APA review to ITC determinations, noting that § 101 Step One was resolved from the intrinsic record rather than expert testimony relied upon at the hearing.

Blogs:

United Services Automobile Association v. PNC Bank: Mobile check deposit using cell phone lacks inventive concept

The Federal Circuit held the asserted claim is directed to an abstract idea (mobile check deposit) and lacks an inventive concept under Alice step two, reversing the district court’s contrary § 101 summary-judgment ruling.

Holding:

Whether claim 20 of the '638 patent is directed to an abstract idea at Alice step one. A claim that recites the conventional practice of depositing a check—collecting an image, extracting/checking information (e.g., via OCR), and transmitting/storing it—implemented on a generic handheld mobile device is directed to the abstract idea of mobile check deposit rather than a specific technological improvement.
Whether claim 20 contains an inventive concept at Alice step two.: Routine image capture, OCR, and generic data processing performed on generic mobile hardware, described in result-oriented “configured to” terms without specific technical means, do not supply an inventive concept or transform an abstract idea into a patent-eligible application.

In Alice step one, the court concluded that the claim merely automated conventional human and banking activities such as photographing, recognizing, and verifying check data, implemented through generic mobile-device functions. The specification’s discussion of optical character recognition and error checking did not supply a technological improvement because the claim failed to specify how those operations were performed. The court distinguished Enfish and McRO, emphasizing that the claim recited results, not the specific rules or algorithms that would make the process non-abstract. In Alice step 2, the court found no inventive concept in the ordered combination of elements. Use of routine components (mobile phones, OCR, and wireless networks) to carry out known data-capture and transmission functions was conventional and insufficient to confer eligibility. The court rejected arguments that factual disputes over conventionality precluded summary judgment, noting that OCR and mobile capture systems were well known in the art.

Because all asserted patents in the consolidated appeals had been found unpatentable or ineligible, the panel dismissed the remaining cross-appeal on damages as moot and entered judgment reversing the district court and invalidating the ’638 patent under § 101.

Blogs:

Summary
Oral Arguments: AICT (substantive arguments begin at 23:52)

Optis Cellular Tech. v. Apple: Formula for identifying LTE PDCCH candidates is ineligible (abstract mathematical formula)

The Federal Circuit reversed the district court's Step One conclusion and held that the claims are directed to an abstract mathematical formula, but remanded back to the district court for Alice step Two analysis.

Alice step one for ’332 patent claims reciting an equation used to determine a decoding start position in LTE control channels.: Claims whose focus/advance is the use of a mathematical formula to generate a value for use in a communication process are directed to an abstract idea at Alice step one; reciting generic UE/receiver/decoder context does not by itself change that focus.

Blogs:

§ 102 - Anticipation

Expand

Restem v. Jadi Cell: Anticipation of product-by-process claims

The Federal Circuit affirmed the lower court's ruling of no inherent anticipation because petitioner failed to show the prior-art process necessarily and inevitably yields cells meeting the claimed marker-expression/non-expression profile.

For validity of a product-by-process claim, anticipation turns on whether the prior art discloses (expressly or inherently) the claimed product and its limitations; inherency is not “automatic” from disclosure of similar process steps and requires proof that the claimed properties inevitably and necessarily result from practicing the prior art.

Blogs:

Summary - “For invalidity, the focus is on the product, not the process. [. . .] For infringement, the focus is on the process and the product.”
Summary
Summary

Sage Products v. Coke Morgan Stewart et al.: “Sterile” means “sterilized”

The Federal Circuit affirmed the Board's finding that claims were anticipated because the prior art disclosed each challenged limitation and could rely on expert testimony to interpret what the prior art reference disclosed for anticipation purposes, including limitations not expressly spelled out. In particular, the court found that a foreign regulatory document's use of the term “sterile” can satisfy claims requiring “sterilized,” as understood by a person of ordinary skill in the art.

Blog:

Summary

Sigray v. Carl Zeiss X-Ray Microscopy: Magnification of 1X - 10X includes 1

Blogs:

Summary

103 - OBVIOUSNESS

AliveCor v. Apple: It is obvious to apply known machine-learning techniques to detect arrhythmia whether the heartbeat data originates from PPG, motion-sensor, or ECG.

The Federal Circuit affirmed PTAB findings that challenged claims were obvious where evidence supported motivation-to-combine and reasonable-understanding findings regarding machine-learning and ECG confirmation limitations.

Blog:

Summary
Oral Argument: - Transcript

Honeywell Int'l v. 3G Licensing: Any need or problem that the patent addresses can supply a reason to make the claimed modification; the patentee's avowed purpose does not control.

The Federal Circuit reversed a Board's determination that claims directed to codeword formatting for error correction is not obvious, finding the Board improperly relied on the motivation of the patent in suit. The Board acknowledged that the only difference between claim 1 and the prior art is that the 1 and 0 in the last row of basis sequences table were switched. The court held that, contrary to KSR, the Board ignored principle that any need or problem known in the field of endeavor at the time of the invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.

Patent in suit: 7,319,718

Claim 1 reads, in part:

[…] encoding the information bits by combining the information bits with the basis sequences; […] wherein the basis sequences Mi,n are defined as:

I	Mi,0	Mi,1	Mi,2	Mi,3	Mi,4
0	1	0	0	0	1
1	0	1	0	0	1
[. . .]
18	0	0	0	0	1
19	0	0	0	0	1

Holdings:

A motivation to modify/combine for obviousness need not be the same as the inventor’s motivation; any known need or problem in the field that the patent addresses can supply a reason to make the claimed modification, and the patentee’s avowed purpose does not control.
Obviousness does not require showing the prior art combination/modification was the best, preferred, or subject to contemporaneous consensus; it is enough that the prior art as a whole suggests the desirability of the claimed change.
In an obviousness analysis, the fact that a reference does not itself disclose the precise claimed difference (which would be required for anticipation) cannot be treated as weighing against obviousness; doing so reflects an impermissible anticipation-like requirement.

Blogs:

ImmunoGen v. Coke Morgan Stewart: Known dosing methodology to address a known problem in a predictable way is obvious to try

The Federal Circuit affirmed a bench-trial judgment that method claims were obvious where prior art disclosed similar dosing parameters and adjusted ideal body weight (AIBW) dosing was within routine optimization, including where the claimed dose is necessarily met for some patients under a prior-art TBW regimen.

Blogs:

Janssen Pharma. v. Teva Pharma USA: Presumption of obviousness where ranges overlap

The Federal Circuit held that, in overlapping-range cases, a challenger may establish a presumption of obviousness, i.e., a prima facie case of obviousness, by showing that the claimed values fall within or near prior-art ranges under circumstances where a skilled artisan would have been motivated to optimize and would reasonably expect similar properties. That showing shifts the burden of production, not the burden of persuasion.

Blogs:

Summary

Shockwave Medical v. Cardiovascular Systems: Routine design choice

The Federal Circuit reversed the Board's determination of non-obviousness as to claim 5, saying “The Board [failed] to consider the combined teachings of the prior art led it to improperly discount CSI’s argument in its petition that modifying Uchiyama to place the electrodes outside the lumen would have been a routine design choice. “When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp.” KSR, 550 U.S. at 421. We explained in Uber Technologies, Inc. v. X One, Inc., ¹⁾ that when there are a limited number of well-known design choices in the prior art it would have been obvious to substitute one for the other.

Nonobviousness Secondary-Considerations

Ancora Tech. v. Roku: Nexus of secondary consideration is not negated merely because other patents may also be implicated or because the license arose from settlement

The Federal Circuit affirmed PTAB's prima facie obviousness finding but vacated because objective indicial were mishandles. Specifically, the Board applied an improperly heightened nexus requirement to licenses offered as objective indicia of nonobviousness, requiring reconsideration and reweighing on remand.

Issue/Holding: The nexus standard for patent licenses offered as objective indicia of nonobviousness: For licenses to the challenged patent, the Board may not demand product-style claim-by-claim or feature-parsing nexus showings; licenses are inherently tied to the patented technology, and nexus is not negated merely because other patents may also be implicated or because the license arose from settlement.

Bayer Pharma v. Mylan Pharma: Clinical proof of efficacy does not imply a nexus to the merits of the invention therefor cannot establish nonobviousness

The Federal Circuit held that that Bayer's “unexpected results” theory lacked a nexus because it relied solely on a functionally unrelated limitation (“clinically proven effective”) so secondary considerations did not overcome obviousness.

Whether clinical proof of efficacy constitutes unexpected results sufficient to support nonobviousness.: Secondary-consideration evidence must have a nexus to what is claimed and novel; where the asserted “unexpected result” depends solely on a functionally unrelated limitation (clinical proof of efficacy), there is no nexus to the merits of the invention and the evidence cannot establish nonobviousness.

Shockwave Medical v. Cardiovaacular Sys.: Excitement of potential commercial success is “weak” evidence of objective indicia

The Federal Circuit affirmed obviousness, upholding the Board's findings that Shockwave was not entitled to a presumption of nexus with respect to secondary considerations because its objective indicia evidence did not outweigh evidence of obviousness.

Presumption of nexus and weighing of secondary considerations in obviousness.: A patentee is entitled to a presumption of nexus only upon showing that the objective evidence is tied to a specific product and that the product embodies the claimed features; the Board may discount conclusory expert assertions and must perform a reasoned collective weighing, which was satisfied here.

Prior Art

ams-OSRAM USA v. Rensas Electronics America: “Proper accessibility” in Texas

The Federal Circuit reversed Judge Mazzant in the Eastern District of Texas on his holding that a trade secret first became accessible when Intersil successfully reverse-engineered the trade secret from TAOS' product. The court held that:

Under Texas law, information that is generally known or readily available by independent investigation is not secret for purposes of trade secrecy. Information cannot be the subject of a trade secret if it is readily ascertainable without engaging in tortious behavior. The practical focus of the inquiry reflects the need to ensure that a tradesecret remedy is tailored to preventing or negating the unfair advantage derived from improper acquisition. A trade secret becomes “properly accessible” where the secret is embodied in a publicly available product: Under Texas trade-secret principles, information is not secret once it is readily ascertainable by proper means, including straightforward reverse engineering after public release; proper accessibility does not depend on when the misappropriator actually succeeded in reverse engineering.

In Re Riggs: The provisional application relied upon for priority must provide written description support for portions of the reference relied upon for the rejection

The Federal Circuit held that a published application's pre-AIA § 102(e) date can reach back to a provisional only for subject matter in the published application that is actually supported in the provisional, and vacated the Board's decision for lacking that analysis.

Lynk Labs v. Samsung Electronics Co.: Pre-AIA 102(e)(1) reference is prior art as of its filing date, even if published after the challenged patent's priority date

The Federal Circuit affirmed the Board's unpatentability determination in an inter-partes review applying pre-AIA §§ 102/103 prior art rules within the AIA IPR framework.

In particular, the Federal Circuit held that, in an IPR, a published U.S. application qualifies as a prior-art printed publication as of its U.S. filing date by virtue of pre-AIA § 102(e)(1), even if published after the challenged patent's priority date. Because a published patent application is a “printed publication” and pre-AIA § 102(e)(1) accords such applications prior-art effect as of their U.S. filing date, § 311(b)'s “prior art consisting of patents or printed publications” includes published applications with § 102(e)(1) filing-date priority even if publication post-dates the challenged patent’s priority date.

Merck Serono v. Hopewell Pharma Ventures: Pre-AIA § 1-2(a)/(3): “by another” includes overlapping inventors

The Federal Circuit clarified the pre-AIA meaning of “by another” or “by others” under § 102(a)/(e) when a reference and the challenged patent have overlapping inventors. Specifically, the court held that, for joint-inventor patents, a reference disclosure is excluded as not “by another” only if the relied-upon disclosure reflects the work of the same inventive entity as the challenged claims. Any mismatch in inventive entity (whether inventors are added or omitted) makes the disclosure “by another” unless the patentee proves teh disclosure was the joint invention of the later inventive entity.

In addition, the court held that the PTAB did not violate the APA by applying identity of inventive entity rule without additional opportunity for evidence or argument. Stated the court: ”Land controls the legal definition of 'by others' or 'by another' in §§ 102(a), (e). Merck thus cannot claim a lack of knowledge of the rule of law based on some arguably contrary language int he MPEP.”

§ 112 Enablement and Written Description

Patent in suit: 8,167,141

Claim 1: A gravity-fed water filter, comprising:

filter media including at least activated carbon and a lead scavenger;

wherein the filter achieves a Filter Rate and Performance (FRAP) factor of about 350 or less according to the following formula: [metric].

Brita LP v. ITC: Single enabled embodiment is insufficient to meet written description or enablement requirements for a broad functional claim

The Federal Circuit affirmed the ITC's holding that Brita's patent for a gravity-fed filter is invalid for lack of written description, lack of enablement, and indefiniteness. The patent lacked written description support for a functionally-defined genus claim that extended beyond the single disclosed species.

Duke Univ. v. Sandoz: Adequate written description of claimed chemical genus/subgenus

The Federal Circuit reversed the lower District of Colorado decision that claim 30 was non invalid. Specifically, the Federal Circuit held that claim 30 lacked adequate written description support for a claimed chemical genus/subgenus because the written description failed to present either a representative number of species within the claimed scope or disclosure of common structural features with enough precision (i.e., sufficient blaze marks) for a skilled artisan to visualize or recognize the claimed members.

In re Riggs: Priority date of prior art reference limited by support in the priority document

The Federal Circuit reversed the PTAB's finding of invalidity based on a § 102(e) prior art reference. To predate the critical date, the Board accorded to the reference a priority date based on the filing date of the provisional application, and cited Dynamic Drinkware for the proposition that so long as a single claim is supported by the priority document (i.e., the provisional application) then all of the content of the application is accorded that priority date.

The Federal Circuit vacated PTAB's assertion that a previously filed patent application qualifies as prior art under Dynamic Drinkware. Stated the court: “to claim priority to the provisional filing date, the portion of the application relied on by the examiner as prior art must be supported by the provisional application.”

Summary (cross-post )
Summary and analysis (cross-post)

Sage Products v. Stewart: Enablement when demonstrated by a second reference.

Here, the Federal Circuit held that enablement of an anticipatory reference may be supported by a second references that demonstrates the claimed subject matter was in the public’s possession or could be practiced by skilled artisans using routine/known techniques; considering additional references to assess the state of the art is permissible and does not necessarily constitute impermissible gap-filling.

Seegan v. Daiichi Sankyo Co.: Broad genus disclosure insufficient to support/enable later-claimed subgenus

The Federal Circuit reversed the Eastern District of Texas' denial of Daiichi's JMOL motion for dismissal of the jury verdict based on the claims being unsupported by sufficient written description and non-enabled. Because the patent relied on a priority date of a previously-filed application to predate the sale of Daiichi's cancer drug, Enhertu, the court commented that “one cannot avoid the suspicion that the '039 patent was filed specifically to encompass Enhertu, which is permissible if it was entitled to a filing date antedating any public disclosure of Enhertu.”

The court held:

When claims broadly cover any member of a large and unpredictable class and are defined by functional performance, a specification that provides no common quality enabling all functional embodiments and instead requires extensive assay-based, trial-and-error screening does not enable the full scope without undue experimentation under §112(a) (as explained in Amgen v. Sanofi).
A disclosure of a very broad genus (millions of potential species) does not satisfy written description for a later-claimed subgenus absent reasonably specific disclosure or “blaze marks” that direct skilled artisans to the particular subgenus; speculative modification paths or “leaps” to the subgenus are insufficient to show possession as of the priority date.
Expert testimony that skilled artisans could arrive at a claimed subgenus only by making a “straightforward leap” from disclosed examples confirms, rather than cures, the absence of written description because §112(a) requires disclosure of the specific claimed subject matter, not an invitation to infer or modify toward it.

In re: Xencor, Inc.: Jepson claim preambles are limiting and must be enabled.

The Federal Circuit upheld the Appeals Review Panel's ruling that § 112 requires that the specification provide support for the admitted prior art preamble to a Jepson claim as well as the novel subject matter recited after the transitional phrase (e.g., “wherein the improvement comprises”).

Elsewhere:

Analysis
Summary (cross-post)
Oral Arguments: AICT

Mondis Tech. v. LG Electronics: District court reversed on unsupported identifier mapping

The Federal Circuit reversed the District of New Jersey because the amended claim limitation requiring an ID number that identifies at least a type of display unit lacked written-description support in the originally filed specification, which only disclosed one-to-one identification of specific devices and did not reasonably convey possession of type-based identification.

Novartis Pharma. v. Torrent Pharma: Enablement not required as to infringed product

The Federal Circuit reversed the Distr. of Delaware's finding that that the '659 patent was required to describe the full scope of the asserted claims, including the accused complexes sold by Novartis.

Specifically, the Federal Circuit held that § 112 written description requires that the specification reasonably conveys possession of the claimed subject matter; it need not describe unclaimed later-discovered features (such as a complexed form) even if an accused product practicing those features may infringe the properly construed claims.

§ 112 INDEFINITENESS

Akamai Tech. v. MediaPointe: Objective boundaries needed for “optimal” or “best” in claim

Claim 1. A system [. . .] wherein the management center comprising a mapping engine that is configured to map trace routes between the management center, at least one of the nodes, and at least the first client so as to determine one or more optimal routes. . . .“

The Federal Circuit affirmed invalidity where degree terms (“optimal,” “best”) lacked objective boundaries in the intrinsic record, despite reference to trace-route measurements. The court held that terms of degree are indefinite unless the specification/prosecution history supply objective boundaries that allow a skilled artisan to determine scope with reasonable certainty; merely requiring use of trace-route data does not cure indefiniteness where the intrinsic record leaves open-ended which factors apply and how to resolve tradeoffs among metrics that can diverge. A claim’s requirement to use a tool or dataset (here, trace routes) does not provide an objective boundary if it is non-exclusive (other factors may be considered) and does not specify how to choose among multiple potentially conflicting measurement methods or combinations.

Canatext Completion Solutions v. Wellmatics: Antecedent basis error non-fatal

The Federal Circuit reversed an indefiniteness holding based on missing antecedent basis error by concluding the claim contained an obvious error that can be judicially corrected. Because the issue was resolved on intrinsic evidence without fact findings, the court treated the matter as de novo claim interpretation and rejected reliance on expert testimony not supplying extrinsic facts. The court also confirmed that the judicial correction is unavailable if the prosecution history suggests a different interpretation, and found no such prosecution-history indication here.

The court held that it may judicially correct claim language only under a demanding standard: the error must be evident on the face of the patent to a skilled artisan, the correction must not be subject to reasonable debate based on the claims and specification, and the prosecution history must not suggest a different interpretation (and, at least here, the correct is a simple or minor textual change).

Claim Construction

Akamai Technologies v. MediaPointe: “Received by a management center” means the “request” is properly limited to an electronic message, not the act of entering a URL into a browser

The Federal Circuit held that the ordinary meaning of an unconstructed limitation still must be a reasonable meaning in context. Here, it was reasonable for a jury to find that “request . . . received by a management center” is limited to a computer message. Even when a limitation is left to ordinary meaning, the factfinder may adopt only meanings that are reasonable in context; language requiring a “request” to be “received by” a management center reasonably denotes a computer message capable of being received, not a user’s generalized “attempt” to access content.

Alnylam Pharmas. v. Moderna: Claim term limited to express definition despite being qualified by “unless otherwise specified” and dependent claim differentiation argument

The Federal Circuit affirmed the Delaware district court's ruling that the specification's “Definitions” section controls the meaning of the claimed term where it appears unless the patent clearly and explicitly says otherwise. Here, the court rejected the logic that, where a dependent claim is presumed to further narrow the asserted independent claim, the defined term must be more broadly construed because the dependent claim, in this case, can still narrow the independent claim in a different way without contradicting the definition.

Apple v. Gesture Techn. Partners: Plain meaning does not import implication

The Federal Circuit affirmed the lower court's interpretation of a dependent claim requiring “a light source for illuminating said object” as not requiring that the light source illuminate the object while the camer means obtains an image of the object. The court held that it will not import an unstated temporal or antecedent-basis limitation into a dependent claim.

Bayer Pharma v. Mylan Pharmas.: Functionally unrelated limitations; “product comprising” two ingredients must be a single dosage form or product containing both ingredients

The Federal Circuit held that adding the limitation “clinically proven effective” cannot confer patentability to an otherwise anticipated or obvious treatment method, making inherent anticipation analysis unnecessary. The court distinguished Allergan Sales v. Sandoz ²⁾ stating that the phrase “clinically proven effective” does not further limit the claimed invention since the claims already specify exact dosages to be administered and therefore the additional limitation “clinically proven effective” does not further define the dosages that are administered.

The Federal Circuit also found that the phrase “a first product comprising rivaroxaban and aspirin” requires a single dosage form/product containing both rivaroxaban and aspirin; construing it to cover separate dosage forms would improperly render “a first product comprising” meaningless and is inconsistent with the specification’s distinction between separate dosage forms and a combination dosage form.

Causam Enterprises v. Ecobee Techs: PTAB's refusal to accept patent owner's proposed construction incorporating temporal component

The Federal Circuit affirmed the Board's construction of a key limitation, rejecting an added restriction not supported by the claim language and disfavored because it would exclude disclosed embodimetns. The court held that claim language requiring data to “correspond” to a power reduction does not, without more, impose a temporal restriction on when the data are generated, and constructions that would exclude disclosed embodiments (e.g., estimates or database-derived values measured before or after an event) are disfavored.

In re Xencor: “Treating a patient” in preamble is limiting because another portion of the preamble is referred from the claim body, and the two preamble portions cannot, in this instance, be split into limiting and non-limiting parts

The Federal Circuit agreed with the ARP that “the preamble term 'treating a patient by' is limiting. First, it is important that Xencor does not dispute that the second part of the preamble, 'administering an anti-C5 antibody,' is limiting. The claim language refers back to this section of the preamble—'wherein said anti-C5 antibody with said amino acid substitutions has increased in vivo half-life as compared to said antibody without said substitutions.' At least one portion of the preamble is therefore limiting. Although we may split a preamble into limiting and non-limiting parts, and have done so in cases such as TomTom, Inc. v. Adolph, ³⁾, the preamble here 'cannot be neatly packaged into two separate portions.' Bio-Rad Lab’ys, Inc. v. 10X Genomics Inc., ⁴⁾. Here, the phrase 'treating a patient' is directly connected with the word 'by' to the phrase 'administering an anti-C5 antibody.' And given our 'disinclination' to 'splic[e]' a preamble into limiting and non-limiting parts, id. at 1371, this lends credence to the argument that the entire preamble should be considered limiting.”

Merck Serono v. Hopewell Pharma Ventures: Claimed dosing of an amount in mg/kg does not require weight-based dosing steps

The Federal Circuit rejected an implied patient-weight determination limitation when a claim recited a dose expressed in mg/kg amounts. The court held that claims reciting a “total dose reached” expressed in mg/kg do not, without an explicit step, require determining patient weight or performing weight-based dosing calculations; a prior-art disclosure (or infringement) can satisfy the limitation based on the administered dose fitting the claimed range regardless of how that dose was determined.

Regeneron Pharmas. v. Mylan Pharmas.: Becton presumption applies to pharmaceutical formulation claim that separately formulation components

The Federal Circuit affirmed a denial of preliminary injunction based on a substantial question of noninfringement because the accused product lacked separately claimed component under the adopted construction, where separately recited “VEGF antagonist” and “buffer” are presumed to be distinct under Becton.

The court held:

When a claim recites a composition as comprising separately listed elements, there is a rebuttable presumption (a “clear implication”) that those elements are distinct components; that framework applies to pharmaceutical formulation claims that list “VEGF antagonist” and “buffer” separately.
To rebut the presumption of separateness, the patent record must support that a single structure/component can satisfy both limitations; where the claims and specification consistently treat the limitations as separate (including different concentration units and embodiments always using a plus-separate component), the presumption is not overcome.

Rex Medical v. Intuitive Surgical: A “beam [that] comprises an upper portion and a lower portion and a web coupled between the upper portion and the lower portion . . . configured to cause the staple pusher to move a staple” does not imply an I-beam shape

Here, the Federal Circuit held that, absent intrinsic evidence clearly narrowing scope, courts should not import limitations from a depicted embodiment to confine a broader claim term (here, “lower portion”) to a specific I-beam substructure when the claim does not require an I-beam.

Shockwave Medical v. Cardiovascular Systems: “Angioplasty balloon,” in the context of a device for pulverizing hardened vascular plaque, does not require that the balloon press plaque into the vessel wall

The Federal Circuit held that absent clear claim language, specification support, or prosecution disclaimer, “angioplasty balloon” is not limited to balloons that displace plaque into the vessel wall; adding “angioplasty” during prosecution without clear narrowing statements does not create a disclaimer of broader scope.

Sierra Wireless v. Sisvel: “Mutually exclusive” conditional language in claims

Claim 1: A method of performing automatic repeat request (ARQ) in a wireless communication system, the method performed by a receiver and comprising:

[a] detecting whether at least one data block to be received from a transmitter is missed;

[b] starting a timer when the at least one data block is detected as missed;

[c] stopping the timer when the at least one data block is received from the transmitter while the timer is running, in order to prevent a triggering of a status report before the timer expires; and

[d] transmitting the status report to the transmitter after the timer expires, wherein the status report comprises a positive acknowledgement indicating receipt of at least one received data block.

The Federal Circuit rejected the Board's reasoning that limitations 1[c] and 1[d] are mutually exclusive and “cannot both occur i response to the same set of stimuli” because the timer either stops . . . or expires.” The court said “that conclusion does not follow from the premise describing the claim language. [. . .] Here, we reject the Board's conclusion because the plain and unambiguous language of claim 1 requires that a method, to come within the claim, must perform both limitations 1[c] and 1[d] where their preconditions apply.” This opinion effectively supersedes the PTAB's precedential ruling in Ex Parte Schulhauser.

The opinion also reinforces procedural rigor at the PTAB: expert testimony on anticipation and obviousness must come from at least a person of ordinary skill in the art as defined by the Board. Because the Board credited testimony from a declarant who lacked the required qualifications without making a specific finding that his experience sufficed, the Federal Circuit vacated the decision for abuse of discretion.

Click here for court holdings:

Summary and analysis
Oral arguments: AICT

Sigray v. Carl Zeiss X-Ray Microscopy: Magnification of 1X - 10X includes 1

The court held claims anticipated due to inherent disclosure of prior art, finding that the Board improperly and implicitly construed the claimed numeric magnification range (between 1 and 10) to exclude small magnification (that was inherent to the prior art due to non-parallel rays) and held that construction erroneous under the claim's plain meaning. A tribunal engages in claim construction when its reasoning effectively narrows a claim term’s scope (e.g., by requiring divergence “enough” to produce a certain level of magnification); absent intrinsic evidence to the contrary, a numeric range’s plain meaning controls and includes even very small values within the endpoints.

Claim Construction - Reliance on Intrinsic Evidence

Aortic Innovations v. Edwards Lifesciences: Implied narrowing of term by interchangeable use in specification

Patents in suit:

The Federal Circuit affirmed construing “outer frame: as a “self-expanding frame” based on clear implied lexicography via consistent interchangeable use in the specification. Because the accused device's frame expanded only with the assistance of a balloon, it did not read on the claimed “outer frame.”

Holdings:

A patent’s clear and consistent interchangeable use of a claim term with a narrower term in the specification can constitute implied lexicography that equates the terms, supporting a construction that imports that narrower meaning into the claim.
Where the specification repeatedly characterizes the claimed “outer frame” in transcatheter-valve embodiments as a self-expanding frame and the claim’s “inner frame” (undisputedly) is balloon-expandable, construing “outer frame” as “self-expanding frame” is proper.

FMC v. Sharda USA: Importing a narrowing definition dropped from provisional application is improper

The Federal Circuit reversed the lower court's claim construction that relied on a narrowed interpretation based on a discussion in the provisional application but not in the asserted patent. The court held that when the patentee materially deletes limiting terminology (here, stability-related disclosures) between a provisional application and the issued patent’s specification, those deleted disclosures cannot be used to re-impose the deleted limitation in claim construction; the claim term should receive its plain and ordinary meaning absent other intrinsic support. Although similar claim terms in related patents are often construed consistently, that presumption yields where the patentee materially altered the specification in certain family members in a way that would direct a skilled artisan to understand a different intended meaning.

The court also rejected an attempt by FMC to narrow the claim scope based on a use in the pramble. Preamble language that merely states a purpose or intended use generally is not limiting. Moreover, differences in preamble wording across claims do not make the preamble limiting absent a basis to treat the preamble as claim scope-defining.

HD Silicon Solutions v. Microchip Tech.: Intrinsic evidence controls interpretation of “comprising tungsten” as “elemental tungsten” and not compounds thereof

The Federal Court construed “comprising tungsten” to require elemental tungsten and held the Board's broader construction was incorrect, emphasizing intrinsic evidence over extrinsic evidence. Where the intrinsic record uses explicit compound nomenclature when compounds are intended (e.g., “titanium nitride”) and otherwise discusses a material only as the element with element-specific properties, “comprising [element]” is properly construed to require the elemental form (allowing incidental impurities) rather than encompassing compounds of that element. Extrinsic evidence (including other patents/publications) may assist understanding but cannot be used to vary or expand a claim meaning that is indicated by the patent’s claims/specification/prosecution history.

Iqris Techs. v. Point Blank Enterprises: Discussion of prior art is not clear and unequivocal disavowal

The Federal Circuit held that the district court improperly imported limitations into the term “pull cord,” rejecting a construction requiring direct pulling by a user and excluding cords with handles. The court held that, absent claim language or clear intrinsic evidence of lexicography/disavowal, a court may not limit “pull cord” to cords directly pulled by a user merely because the specification’s preferred embodiments depict direct pulling or use different labels for other cords.

Lynk Labs v. Samsung Electronics Co.: Intrinsic evidence shows “match” not limited to numerical equivalence

The Federal Circuit construed the claim term “matches” to mean “equal to or less than,” rather than strict equivalence, because the intrinsic evidence consistently describes “matching” in functional, tolerance-based terms rather than exact numerical identity. Reading the claim language in light of the specification as a whole, the court explained that the invention is concerned with avoiding over-driving LEDs, which is satisfied when the rectified input voltage does not exceed the aggregate forward voltage of the LEDs. Nothing in the intrinsic record limits “matches” to exact equality, and multiple passages expressly contemplate a “less than or equal to” relationship, making a broader construction not only reasonable but required.

Claim Construction - Prosecution disclaimer

Azurity Pharmas v. Alkem Labs.: Adding “consisting of” to avoid prior art is a clear and unmistakable disclaimer

The Federal Circuit held that Azurity clearly and unmistakably surrendered claim scope covering any presence of propylene glycol by inserting “consisting of” the list of ingredients to avoid prior art wherein propylene glycol was used as a stabilizer, even though th list of ingredients included a flavoring agent. Because the accused device included a flavoring agent containing propylene glycol it was non-infringing.

Barrette Outdoor Living v. Fortress Iron: criticism in spec of prior art feature does not justify construing claims as avoiding that feature

The Federal Circuit affirmed noninfringement based broadly construing “boss” not necessarily fastener-less, despite the patent's discussion of multiple advantages of fastener-less bosses. The court held that a patent's discussion of multiple advantages does not justify importing one advantage-related feature into claims absent absent clear and unmistakable disclaimer; here, criticism of fastener-based prior art did not clearly limit “boss” to fastener-less structures.

Eye Therapies v. Slayback Pharma: “Consisting essentially of” narrowed by prosecution disclaimer

The Federal Circuit relied on prosecution history statements accompanying an amendment define the scope of “consisting essentially of,” treating explanatory remarks and definitional “i.e.” usage as limiting. The court held that although “consisting essentially of” is typically semi-open, the intrinsic record can assign it an atypically restrictive meaning; here, the prosecution history establishes that the phrase excludes use of active ingredients other than brimonidine in the claimed methods. When the applicant uses “i.e.” to equate a claim phrase with a particular meaning in prosecution arguments, that usage is strongly definitional and supports construing the claim phrase consistently with the stated definition. Where claims were narrowed during prosecution, claims need not cover every described embodiment.

Focus Products Group Internat'l v. Kartri Sales Co.: Election of species without objection is disclaimer of non-elected species

The Federal Circuit reversed the District Court for the Southern District of NY based on corrected claim scope for a shower curtain “ring.” The court held that prosecution history including restriction and an election to withdraw nonelected species, and prosecution of a divisional application excluding the elected species can constitute clear and unmistakable disclaimer of the claim scope. Here, because the properly construed claims exclude a feature present in the accused product (i.e., rings with flat upper edges) summary judgment of infringement cannot stand and must be reversed as to the party preserving the noninfringement issue.

Maquet Cardiovascular v. Abiomed: Related applicant's prosecution history is relevant only when the earlier prosecution addresses a limitation in common with the claim term being construed

The Federal reversed and remanded to the district court's claim construction claims with added negative limitations. The court held that prosecution disclaimer from a related patent's prosecution is relevant only when the earlier prosecution addresses a limitation in common with the claim term being construed; material differences in claim language (e.g., claiming an “entire elongate lumen distal to” a component versus a “guide mechanism comprising a lumen”) defeat reliance on that history to import a negative limitation.

Restem v. Jadi Cell: Applicant's acquiescence to Examiner's repeated characterization constituted disavowal

The Federal Circuit held that clear examiner statements characterizing the allowed claim scope, coupled with applicant acquiescence during prosecution, can narrow claim scope (here, to a “cell population”), and that narrowed understanding may control over broader specification disclosures/definitions.

112(f) Means Plus Function

Fintiv v. PayPal Holdings: “handler” is a nonce term

The Federal Circuit held that the district court correctly analogized “handler” with the nonce term, “module” which was previously determined to be a generic description of software or hardware that performs a specified function. The prefix “payment” (for “payment handler”) did not impart structure and merely describes the function of the handler: to perform payment functions. The Federal Circuit further agreed with the district court that the specifications of the asserted patents do not disclose any algorithm to perform the recited function, and held the payment-handler terms indefinite.

Optis Cellular Technology v. Apple: District court's reasoning that “selecting unit” does not invoke § 112 ¶ 6 failed to explain how the selecting unit operates

The Federal Circuit held that “selecting unit” invoked § 112 ¶ 6 and remanded for the corresponding structure and indefiniteness analysis. More specifically, the court found that a “unit” term modified only by functional language (e.g., “selecting”/“configured to randomly select”) is a nonce term that fails to connote sufficiently definite structure and therefore invokes § 112 ¶ 6; remand is appropriate for the district court to determine whether the specification discloses adequate corresponding structure (and resulting definiteness).

Steuben Foods v. Shibuya Hoppmann: District court's JMOL reversed; infringement found under § 112 ¶ 6 “equivalents” standard

The Federal Circuit reversed the district court's JMOL of noninfringement for a § 112 ¶ 6 “means for filling” limitation where substantial evidence supported that accused structures were equivalent in the context of the claimed function. For a § 112 ¶ 6 limitation, structural differences must be assessed in the context of the claimed function and the overall corresponding structure; substantial evidence can support equivalence where accused components perform the identical function in substantially the same way with substantially the same result, even if component-level details differ.

IPR Institution

IGT v. Zynga: Decision not to apply interference estoppel as a bar to institution is nonappealable

The Federal Circuit held that the PTO's decision not to apply interference estoppel as a bar to institution is a nonappealable institution determination under 35 U.S.C. § 314(d), with no Cuozzo “shenanigans” exception on these facts. The court also rejected a procedural challenge that the Board relied on a new, unargued unpatentability theory, finding adequate notice and opportunity to respond under IPR due-process/APA principles.

AIA_ESTOPEL_TIME_BARS_JURISDICTION

- Appl 23-1475.pdf

Whether a patent owner may invoke § 315(e)(1) estoppel on appeal based on new, fact-dependent real-party-in-interest/privy allegations.: Real-party-in-interest/privy status is a fact question that must be raised and developed before the Board; a patent owner forfeits a § 315(e)(1) estoppel theory by failing to present it to the PTAB in time for fact-finding.

- In re Gesture 25-1075.pdf

Whether § 315(e)(1) estoppel bars continuation of an already-instituted ex parte reexamination requested by an IPR petitioner or privy after a final written decision.: Section 315(e)(1) does not compel termination of an ongoing ex parte reexamination because, after institution, the requester does not “maintain” the reexamination; the PTO conducts and maintains it.

- Ingenico 23-1367.pdf

Meaning of “ground” in 35 U.S.C. § 315(e)(2) (IPR estoppel) and its scope in district court.: For § 315(e)(2), a “ground” refers to an invalidity theory of the type that could be raised in IPR—§ 102/§ 103 challenges based on patents and printed publications—so estoppel does not bar district-court invalidity assertions based on different § 102 grounds unavailable in IPR, such as public use, on sale, or known-or-used-by-others, even if patents/printed publications are used as evidence for those grounds.
Whether IPR estoppel barred reliance on printed-publication materials supporting a public-use/on-sale/known-or-used theory.: Printed publications that might have been used in IPR to assert a “described in a printed publication” ground are not, by that fact alone, estopped from being used as evidence to support a different, non-IPR ground (e.g., public use/on sale/known-or-used) asserted in district court.

AIA_EVIDENCE_BURDENS_STANDARDS

- Alivecor 23-1512.pdf

(no holding tagged to this category)

- Amp Plus 23-1997.pdf

Whether the Board (or the court) must locate support elsewhere in the petition to supply missing obviousness analysis for a limitation.: Although obviousness is not applied rigidly under KSR, the Board and reviewing court are not required to develop or supply a petitioner’s missing limitation-by-limitation obviousness analysis; the petitioner bears the burden to present the case in the petition and supporting evidence.

- Apple 23-1501.pdf

Whether the Board erred by refusing to consider petitioner’s expert testimony relevant to claim 4’s “fixed” limitation.: A party may elaborate on arguments previously raised in the petition; when expert testimony expands on and is tethered to an argument actually made (here, overlapping fields of view as the basis for “fixed”), the Board commits error by disregarding that material evidence as supposedly outside the petition.

- Centripetal 23-2027.pdf

(no holding tagged to this category)

- Dolby 23-2110.pdf

(no holding tagged to this category)

- Global Health 23-2009.pdf

Corroboration standard for inventor testimony and use of contemporaneous emails.: Under the rule-of-reason framework, contemporaneous documentary evidence such as authenticated emails (and server-generated metadata not authored by the inventor) can sufficiently corroborate an inventor’s conception narrative; the Board does not commit legal error by crediting such evidence absent a genuine authenticity challenge.
Burden shifting regarding respondent’s independent conception defense.: The Board does not improperly shift the burden when it requires the respondent to prove conception (as a basis for independent conception) and does not require the petitioner to disprove the respondent’s conception; arguments that the Board found mere “possession” rather than conception fail where the decision expressly finds conception on the record.

- Honeywell 23-1354.pdf

Whether substantial evidence supported the Board’s finding that a skilled artisan would not be motivated to swap two bits in the prior-art table to increase MSB protection.: Where the prior art expressly teaches a design goal (e.g., extra protection for a most-significant bit) and unrebutted expert testimony explains that the proposed modification would further that goal, a contrary Board finding of no motivation lacks substantial evidence.

- IBM 24-1170.pdf

Substantial-evidence support for finding the prior art taught “receiving … an identifier associated with the user” under the Board’s construction (uniquely identifies the user).: Substantial evidence supports a finding that a reference teaches receipt of a unique user identifier where the reference teaches transmitting “information regarding the user” to the recipient system and the Board reasonably infers that such transmitted user information includes the disclosed user ID, particularly when similar user information (e.g., passwords) is contemplated within that category.
Effect of a petitioner’s abandonment of an instituted anticipation ground on the Board’s disposition of that ground.: When the petitioner abandons an anticipation ground, the Board may conclude the petitioner failed to carry its burden on that ground without that conclusion precluding the Board from reaching a different merits outcome on separate instituted obviousness grounds applying the same claim construction.

- In re PT Medisafe Tech. 23-1573.pdf [NEEDS_REVIEW]

Burden/standard for refusing registration as generic in ex parte examination and on appeal.: The examining attorney must establish a prima facie case of genericness, after which the applicant must come forward with rebuttal evidence; the Board, as a reviewing body, weighs the whole record and has no independent burden, and genericness is not subject to a clear-and-convincing evidence standard.

- Kroy IP 23-1359.pdf

Effect of differing burdens of proof on issue preclusion from IPR to district court.: When the second action applies a higher burden of proof on the same issue (clear and convincing invalidity in district court), prior determinations made under a lower burden (preponderance in IPR) fall within a well-recognized exception to collateral estoppel.

- Lashify 23-1245.pdf

(no holding tagged to this category)

- Lynk Labs 23-2346.pdf

(no holding tagged to this category)

- Merck 25-1210.pdf

Whether the Board improperly shifted the burden of persuasion on prior-art status in an IPR.: In an IPR, once petitioner makes an initial showing that a reference qualifies as prior art, the burden of production may shift to the patentee to come forward with evidence that the reference is not prior art, but the ultimate burden of persuasion remains with petitioner.

- Shockwave Medical 23-1864.pdf

(no holding tagged to this category)

AIA_MERITS_102_103_112

- Alivecor 23-1512.pdf

(no holding tagged to this category)

- Amp Plus 23-1997.pdf

Whether substantial evidence supported the Board’s finding that petitioner failed to prove obviousness where the petition did not address a specific claim requirement (building electrical-system coupling).: Where the petition’s obviousness mapping and the cited supporting evidence do not address an express claim requirement, substantial evidence supports the Board’s conclusion that the petitioner failed to prove unpatentability on that ground.

- Ancora 23-1674.pdf

Whether substantial evidence supported the Board’s motivation-to-combine and mapping of the “verification structure” limitation in the Hellman/Chou obviousness combination.: Where the Board’s motivation-to-combine and limitation mapping are supported by credited expert testimony and the Board’s findings accurately reflect the theory advanced (e.g., storing license-related information in BIOS EEPROM), the prima facie obviousness determination is supported by substantial evidence.

- Appl 23-1475.pdf

Sufficiency of petition and proof for obviousness as to claims requiring a specific means-plus-function structure (claim 11) and a “cellular phone” limitation (claim 13).: In IPR, the petitioner bears the burden to present a clear, particularized mapping under its own proposed construction; when the petition provides no analysis showing how the prior art (with or without POSITA knowledge) meets the construed structure/limitation, the Board may find the claim not shown unpatentable.

- Apple 23-1501.pdf

Whether the Board’s obviousness determination for claims 1–3 and 5–7 lacked substantial evidence due to mapping and motivation-to-combine challenges.: Substantial evidence supported the Board’s mapping of Numazaki’s components to the claimed electro-optical sensor/digital camera and its finding of motivation to combine; the Board may discount unsupported, conclusory expert assertions and may rely on credited expert testimony explaining how combined teachings would be implemented.

- Bayer Pharma 23-2434.pdf

Effect of patentee’s argumentation on petitioner’s burden after correcting claim construction in an IPR.: In an IPR, the petitioner bears the burden of proving unpatentability under the correct claim construction throughout the proceeding; thus, where the Board applied an incorrect construction, the proper course is to remand for the Board to evaluate whether the petitioner meets its burden under the correct construction.

- Causam 24-1958.pdf

Effect of affirming claim construction on the Board’s obviousness determination when appellant’s merits challenge depends on construction.: Where the Board’s obviousness finding rests on a sound claim construction and the appellant presents no meaningful independent challenge to the obviousness analysis apart from that construction dispute, the unpatentability determination is affirmed.

- Global Health 23-2009.pdf

Elements and focus of an AIA derivation proceeding under 35 U.S.C. § 135(b).: To make a prima facie showing of derivation in an AIA derivation proceeding, the petitioner must produce evidence of (1) conception of the claimed invention and (2) communication of that conceived invention to the respondent before the respondent filed the earlier application; the proceeding must not be treated as a first-to-invent priority contest.
Whether actual reduction to practice is required to complete conception for this type of invention.: Conception generally does not require actual reduction to practice, and unpredictability alone does not impose a categorical requirement of simultaneous conception and reduction to practice; conception is complete when the inventor has a definite and permanent idea of the complete and operative invention, including by being able to define it by its method of preparation.

- HD Silicon 23-1397.pdf

(no holding tagged to this category)

- Honeywell 23-1354.pdf

(no holding tagged to this category)

- IBM 24-1170.pdf

Patentability of claim 5’s limitation requiring a request message from the second system to the first system upon determining insufficient user attributes to complete account creation.: A reference that teaches requesting missing account-creation information from the user (fourth system) does not, without more, disclose or render obvious a limitation requiring the second system to request the missing user-attribute information from the first system in response to an insufficiency determination during account creation.

- IGT 23-2262.pdf

(no holding tagged to this category)

- Kroy IP 23-1359.pdf

(no holding tagged to this category)

- Lynk Labs 23-2346.pdf

(no holding tagged to this category)

- Qualcomm 23-1208.pdf

Proper interpretation of § 311(b) regarding applicant-admitted prior art (AAPA).: Under the plain language of § 311(b), the “basis” of an IPR ground may include only prior art consisting of patents or printed publications; because AAPA is not itself such prior art, it cannot be included as the basis (or part of the basis) of a ground, even if combined with patents/printed publications.
Whether a petition’s express designation of “Basis” can establish a § 311(b) violation.: When an IPR petition expressly states that a ground’s “Basis” includes AAPA, the petitioner is held to that framing as master of its petition, and the ground violates § 311(b) because it includes non-patent/non-publication material in the basis.

- Restem 23-2054.pdf

(no holding tagged to this category)

- Shockwave Medical 23-1864.pdf

Substantial evidence supporting Board’s obviousness findings for claims 1–4 and 6–17.: The Board’s findings on what Levy teaches, motivation to combine Levy with a conventional over-the-wire catheter configuration, and the ultimate obviousness determination were supported by substantial evidence and are affirmed.
Obviousness of claim 5’s electrode placement limitation and Board’s obligation to consider combined teachings.: Obviousness must be assessed by considering the prior-art combination as a whole; the Board errs by focusing on whether a single reference alone discloses the limitation when the petitioner’s theory relies on combined teachings, and where the record shows a finite set of predictable design choices with unrebutted expert testimony, reversal (not vacatur) is appropriate if no substantial evidence supports the Board’s contrary finding.

AIA_PROCEDURE_DUE_PROCESS_APA

- Alivecor 23-1512.pdf

Whether alleged Board reliance on arguably irrelevant testimony warrants vacatur under the APA.: Even if an evidentiary reference is arguably irrelevant, reversal/vacatur is unwarranted absent a showing of prejudicial error; a passing citation that is not relied upon for the dispositive obviousness determination is harmless when other substantial evidence independently supports the finding.

- Amp Plus 23-1997.pdf

Whether a petitioner may argue anticipation of a claim on appeal when the petition challenged that claim only on obviousness grounds.: A petitioner cannot raise a new ground of unpatentability on appeal that was not presented in the IPR petition as a challenged ground supported with the requisite statutory showing.

- Appl 23-1475.pdf

APA challenge alleging the PTAB ignored evidence and arguments.: The PTAB satisfies the APA when it considers and reasonably explains its rejection of the parties’ material arguments; it is not required to expressly discuss every piece of evidence in the record or every subsidiary point.

- CQV 23-1027.pdf

APA requirement that the PTAB consider the whole record and explain its reasoning.: The Board must consider the entirety of the record and articulate a rational connection between the facts found and the result; when the Board omits discussion of highly material, unrebutted evidence central to a dispositive issue, a reviewing court may vacate and remand because it cannot reasonably discern that the Board followed a proper path.

- Causam 24-1958.pdf

Ability of a litigant to assert due-process notice rights of an alleged true patent owner not participating in the IPR.: A party generally may not assert the constitutional due-process rights of a third party; absent a qualifying close relationship and aligned interests, a patent owner asserting it is the sole owner cannot press a due-process notice claim on behalf of an alleged different owner.

- Centripetal 23-2027.pdf

Timeliness/forfeiture of an APJ-recusal motion based on an alleged conflict discovered during the proceeding.: The Board may deny a recusal/vacatur request as untimely where the movant knew of the asserted disqualifying facts for months yet waited while pursuing other relief; equity and fairness considerations support refusing to “start over” after significant procedural events have occurred.
Which executive-branch ethics regulations govern an APJ’s own de minimis stock ownership and whether appearance-based relationship rules apply to the employee’s own holdings.: For an employee’s own publicly traded securities, the de minimis exemption framework in 5 C.F.R. §§ 2635.402(d) and 2640.202 governs; 5 C.F.R. §§ 2635.501–.502 (appearance/personal-relationship provisions) do not apply to the employee’s own holdings and cannot be used to impose additional recusal obligations beyond the applicable exemption.
Whether alleged recusal error at institution/joinder requires vacatur of the final written decision.: Even if recusal were required, vacatur is not automatic; applying the Liljeberg factors, relief may be denied absent demonstrated prejudice, meaningful risk of injustice in other cases, or substantial risk to public confidence, particularly where the merits decision was issued by a fully disinterested panel.

- Honeywell 23-1354.pdf

Whether the Board’s reasoning deviated from the invalidity theory advanced in the petition.: The Board commits legal error by relying on reasoning that effectively shifts away from the petition’s theory (here, obviousness based on modifying a reference) and by giving weight to considerations that would only matter if the petition were asserting anticipation instead.

- IBM 24-1170.pdf

Appellate reviewability of petition-scope challenges in view of 35 U.S.C. § 314(d).: Section 314(d) does not bar review of a contention that the Board’s final written decision exceeded the petition’s articulated grounds/arguments; such a challenge seeks compliance with statutory limits on the proceeding rather than reversal of the institution decision.
Whether the Board improperly relied on an unpetitioned “obviousness-like” theory to satisfy a claim limitation.: The Board does not depart from a petition’s anticipation-style theory merely by crediting expert evidence and skilled-artisan understanding to interpret what a reference’s express disclosure would convey (including conventional, inherent, or necessarily implied aspects), so long as the Board does not modify the reference to supply a missing limitation.

- IGT 23-2262.pdf

Whether the Board adopted an impermissible new theory without notice (APA/due process) in its obviousness analysis: The Board does not commit reversible procedural error by citing additional portions of the same prior-art reference in responding to arguments raised by the patent owner, so long as the “thrust” of the instituted unpatentability ground remains the same and the patent owner had notice and an opportunity to respond.

- In re Bayou Grand Coffee 24-1118.pdf [NEEDS_REVIEW]

Whether the PTO may defend the Board’s descriptiveness ruling on a different theory that the Board did not adopt (that the mark indicates a café serves “a variety of teas”).: Under APA notice-and-opportunity principles, the agency may not change theories on appeal by advancing a new rationale not adopted by the Board and not presented as the basis for the decision under review.

- In re Riggs 22-1945.pdf

(no holding tagged to this category)

- Merck 25-1210.pdf

Whether the PTAB violated the APA by applying the complete-identity inventive-entity rule without additional opportunity for evidence/argument.: No APA violation occurs where controlling precedent provides notice of the governing “by another” standard; to the extent the MPEP suggests otherwise, it does not override precedent or create entitlement to a remand for additional evidence.

- Odyssey Logistics 23-2077.pdf

Effect of failure to timely raise an Appointments Clause challenge during direct appeal.: An Appointments Clause challenge is nonjurisdictional and must be timely presented; a party that had notice the argument was available but did not raise it on direct appeal forfeits the claim and generally cannot resurrect it through a later collateral reopening request premised on Arthrex.

- Qualcomm 23-1208.pdf

Validity of the PTO Director’s “in combination” approach adopted by the Board.: The Board’s categorical rule that AAPA never forms the “basis” whenever the petition also relies on at least one patent/printed publication is contrary to § 311(b) and improperly conflates permissible “reliance” for limited purposes with the statutory limitation on the “basis” of a ground.

- Sage Products 23-1603.pdf

Procedural challenge that the Board adopted arguments/grounds not advanced in the petition and improperly relied on evidence beyond the reference.: The Board has discretion to determine what grounds and arguments a petition presents and may address disputed limitations (and responsive reply evidence/argument) without creating a new ground, and reliance on non-dispositive extra materials is harmless absent prejudice.

- Shockwave Medical 23-1864.pdf

Whether reliance on applicant-admitted prior art (AAPA) violates 35 U.S.C. § 311(b) in an IPR petition and final decision.: Section 311(b) requires that the grounds for unpatentability be based on patents or printed publications, but AAPA may be used as evidence of a skilled artisan’s general background knowledge (including to supply a missing limitation or motivation) so long as the petition does not make AAPA part of the “basis” of the ground.

DIRECT_INFRINGEMENT

- Adnexus 24-1551.pdf

Sufficiency of pleading direct infringement of a specific limitation where the complaint incorporates claim charts and preliminary infringement contentions.: A patent complaint plausibly states direct infringement when it includes factual allegations (including in attached, incorporated claim charts/analyses) that, taken as true and with reasonable inferences drawn for the patentee, articulate why the accused product meets the challenged claim limitation; element-by-element pleading is not required, but factual content must support plausibility.

- Akamai 24-1571.pdf

Summary judgment of noninfringement where accused “management center” receives only DNS queries that do not identify requested media content.: No triable infringement issue exists where undisputed evidence shows the accused component receives only communications that do not satisfy the claim-required “request for media content” element; a noninfringement judgment may be affirmed even assuming the patentee’s expert testimony if that testimony cannot bridge the element-to-evidence gap.

- Azurity Pharma 23-1977.pdf

Infringement in a Hatch–Waxman case where the ANDA product contains an ingredient disclaimed from closed “consisting of” claims.: When the ANDA describes a product containing an ingredient excluded by disclaimer and not permitted by a closed “consisting of” claim transition, traditional infringement principles require a finding of noninfringement; where the ANDA directly addresses the infringement issue, it controls the comparison.

- Egenera 23-1428.pdf

Summary judgment noninfringement where CPUs did not “emulate Ethernet functionality.”: Where claims require that the “plurality of computer processors” include logic that “emulate[s] Ethernet functionality,” evidence that processors merely use or communicate over Ethernet (while separate components perform the emulation) cannot create a genuine dispute of infringement under the existing, unchallenged claim scope.
General verdict rule for multiple alternative noninfringement theories.: A general jury verdict of noninfringement must be upheld if substantial evidence supports any one of the accused infringer’s alternative factual theories submitted to the jury; the appellant must show lack of substantial evidence as to all alternatives to obtain reversal.
No improper “intent” requirement from references to “programmed for the claimed purpose.”: A court does not add a scienter/intent element by describing whether an accused system’s components are programmed to perform the claimed functionality; such language can permissibly refer to the functional limitations recited in the claims.

- Finesse Wireless 24-1039.pdf

Whether substantial evidence supported the jury’s finding that the accused radios met the ’134 patent limitation requiring sampling a passband that includes both “signals of interest” and “interference generating signals.”: When the patentee’s infringement proof depends on expert testimony that is internally inconsistent and never clearly maps the accused features to the claim limitation, the verdict lacks substantial evidence and JMOL of noninfringement is warranted.
Whether substantial evidence supported the jury’s finding that the accused radios performed the seven specific third-order multiplications required by the ’775 patent claims.: Where the claims require performance of a specific set/number of operations, identifying only fewer distinct operations in the accused product—without evidence they correspond to or implement the required set—cannot support an infringement verdict; appellate counsel’s post hoc mapping cannot supply missing trial proof.

- Fraunhofer-Gesellshaft 23-2267.pdf [NEEDS_REVIEW]

(no holding tagged to this category)

- Jiaxing Super 23-1715.pdf

Whether the jury’s infringement verdict for the ’140 patent was supported and consistent with the no-anticipation verdict.: A finding of no anticipation does not preclude a finding of infringement where evidence supports that the accused product meets the claim limitation at issue while the prior-art reference does not; substantial-evidence review sustains the jury’s infringement verdict when supported by credited expert testimony.

- Lab. Corp. 23-2350.pdf

Whether an adaptor-binding primer can satisfy the ’597 patent’s construed “target-specific primer” limitation for literal infringement.: Under a construction requiring that the target-specific primer anneal to and mediate amplification of the target nucleic acid and not anneal to or mediate amplification of non-target sequences, a primer that anneals to a universal adaptor/common sequence present on all molecules does not meet the limitation, even if the adaptor is ligated onto a molecule that also contains a target region.
Whether an accused primer can meet a limitation by working “in concert” with a different primer not recited as performing the limitation’s required function.: Where the claim construction and plain claim language require the recited primer itself to perform the specified targeting/non-target-exclusion functions, infringement cannot be shown by combining the accused primer with another primer’s targeting activity to collectively satisfy the limitation.

- Maquet Cardovascular 23-2045.pdf

Whether the Federal Circuit should decide infringement in the first instance following a stipulated judgment predicated on claim construction: Where the parties stipulated to noninfringement based on claim construction and infringement was not litigated below, the Federal Circuit will not resolve infringement in the first instance absent a record eliminating genuine issues of material fact and entitling a party to judgment as a matter of law.

- Mitek Systems 23-1687.pdf

Direct-infringement-based DJ standing where the patentee never accused the supplier’s product of meeting all claim limitations.: A supplier cannot establish a reasonable potential for a direct infringement suit when undisputed record evidence shows the supplier’s product (as provided) does not and cannot satisfy all claim limitations (including limitations performed by end users or requiring hardware components the supplier does not provide), and the patentee has not accused the supplier’s product alone of meeting every limitation.

- Regeneron Pharma 24-2351.pdf

Preliminary-injunction likelihood of success where accused product omits a separately required claim component under the proper construction.: Under the adopted construction requiring distinct “VEGF antagonist” and “buffer” components, a product lacking a separate buffer raises at least a substantial question of noninfringement, defeating the patentee’s showing of likely success on the merits and supporting denial of a preliminary injunction.

- Rex Med. 24-1072.pdf

Sufficiency of evidence for a “configured to cause” limitation where an intermediate component is present: Substantial evidence can support infringement of a “configured to cause” limitation where the claimed component is designed/arranged to cause the required result through an intermediate structure (and intent of the designers is irrelevant to direct infringement), especially in an open “comprising” claim that does not exclude additional elements.

- Steuben Foods 23-1790.pdf

Whether JMOL of noninfringement based on the reverse doctrine of equivalents (RDOE) can stand where the patentee presented expert rebuttal testimony.: Even assuming RDOE remains available, JMOL is improper where the record contains substantial evidence—such as credited expert rebuttal—supporting the jury’s rejection of the accused infringer’s RDOE theory; the court may not discard rebuttal testimony as a matter of law where it provides an evidentiary basis for the verdict.

- Top Brand 24-2191.pdf

Design patent infringement under the ordinary-observer test when key similarities fall within disclaimed subject matter.: When the accused design’s asserted similarities to the patented design lie in features the patentee surrendered during prosecution, those features cannot support an ordinary-observer finding of substantial similarity; if no non-disclaimed similarities support infringement, JMOL of noninfringement is required.

- Trudell Medical 23-1777.pdf

Entitlement to JMOL of infringement where defendant’s primary noninfringement expert testimony should have been excluded.: Even if the defendant’s noninfringement expert testimony is excluded, JMOL for the patentee is not required where the jury could reasonably disbelieve the patentee’s evidence and find the patentee failed to carry its affirmative burden of proving infringement.

- Wuhan Healthgen 23-1389.pdf

Whether the Commission’s infringement finding could be supported by SEC-HPLC aggregation data not taken precisely at the moment of importation.: In a § 337 infringement determination, the Commission may rely on reliable test data and record evidence to find the accused imported products meet a quantitative claim limitation, and the finding is sustained on appeal where substantial evidence supports that the tested characteristic would not rise above the claimed threshold during ordinary storage and shipment prior to importation.

DOCTRINE_OF_EQUIVALENTS

- Adnexus 24-1551.pdf

Whether to reach a district court’s doctrine-of-equivalents/prosecution-history preclusion dismissal after vacating the literal infringement dismissal.: Where the predicate dismissal of the direct infringement claim is vacated, an appellate court may decline to address an alternative doctrine-of-equivalents/prosecution-history preclusion ruling tied to the same limitation and allow further proceedings on remand.

- Colibri Heart Valve 23-2153.pdf

Effect of un-rebutted prosecution history estoppel on a doctrine-of-equivalents infringement theory.: Where the Festo presumption applies and the patentee does not invoke or prove an exception (or otherwise justify a narrower surrender), prosecution history estoppel bars the doctrine of equivalents for the surrendered subject matter and can require JMOL of noninfringement when DOE is the only infringement theory.

- Iqris 23-2062.pdf

Scope of appellate decision regarding infringement under the corrected construction.: On vacatur based on corrected claim construction, the appellate court may remand for the district court to apply the correct construction in the first instance, including for doctrine-of-equivalents issues, without deciding whether summary judgment is ultimately appropriate.

- Lab. Corp. 23-2350.pdf

Sufficiency of evidence for doctrine-of-equivalents infringement of the ’810 patent’s “second target-specific primer.”: A DOE verdict requires limitation-specific, particularized testimony and linking argument showing the accused element has substantially the same function, way, and result as the claimed limitation; where the accused primer binds a common tail/adaptor sequence and does not provide target specificity/enrichment, the evidence is insufficient as a matter of law under function-way-result.

- Smartrend 24-1616.pdf

Whether the evidence supported doctrine-of-equivalents infringement of the ’491 patent’s “frame” limitation.: Under the function-way-result test, equivalence must be shown element-by-element and the claimed element’s “function” may be established—sometimes dispositively—by the patent’s written description; where undisputed evidence shows the accused integrated structure cannot perform specification-established functions of the claimed separate element, JMOL of no equivalents infringement is required.

- Steuben Foods 23-1790.pdf

Doctrine of equivalents for “intermittently added” limitation construed as “added in a non-continuous manner.”: Where a claim limitation is construed to require non-continuous addition, treating a concededly continuous addition as equivalent would vitiate the limitation; under such a construction, no reasonable juror can find continuous operation equivalent to intermittent operation.

- Wonderland Switzerland 23-2043.pdf

Whether DOE can satisfy a claim limitation requiring the seat back to have a “locking mechanism for selectively detachably connecting” when the accused product places the selective-detachability mechanism on a different component.: DOE cannot be used to treat a different claim element as satisfying a limitation; equivalence is evaluated element-by-element, and where the accused seat back lacks any structure for selective detachability required by the seat-back limitation, infringement under DOE fails as a matter of law.

APPELLATE_JURISDICTION_FINALITY

- Acorda Therapeutics 23-2374.pdf

Whether an FAA petition to confirm/modify an arbitration award ‘arises under’ the patent laws for purposes of Federal Circuit appellate jurisdiction under 28 U.S.C. § 1295(a)(1).: When the district-court action is brought under the FAA to confirm/modify an arbitral award, it arises under the patent laws only if the petition itself necessarily raises a substantial patent-law issue under Christianson/Gunn; the underlying arbitration’s patent issues do not supply § 1295(a)(1) jurisdiction.
Whether a patent-law issue is ‘necessarily raised’ when the petitioner pleads alternative, independent non-patent grounds for the same requested modification of an arbitral award.: A patent-law question is not necessarily raised where the petitioner’s requested relief could be granted on an alternative, non-patent legal theory pleaded in the petition; in that circumstance, the Gunn ‘necessarily raised’ element is not satisfied and Federal Circuit jurisdiction does not attach.
Proper appellate disposition when the Federal Circuit lacks § 1295(a)(1) jurisdiction over an appeal from an FAA award-confirmation/modification judgment.: When § 1295(a)(1) is not satisfied, the Federal Circuit transfers the appeal to the appropriate regional circuit rather than deciding the merits.

- Amp Plus 23-1997.pdf

Whether noncompliance with 37 C.F.R. § 90.2(a)(3)(ii) deprives the Federal Circuit of jurisdiction over an IPR appeal.: A PTO regulation requiring certain information in an IPR notice of appeal is not jurisdictional because it contains no clear statement tying compliance to the Federal Circuit’s adjudicatory authority; failure to comply does not strip the court of power to hear the appeal.

- Aortic Innovations 24-1145.pdf

(no holding tagged to this category)

- Broad Institute 22-1653.pdf

Justiciability of Broad’s conditional cross-appeal of the PTAB’s claim construction.: A cross-appeal is moot when reversal would not change the parties’ legal interests; where PTAB denials of preliminary motions rested on independent, unchallenged grounds, the Federal Circuit cannot grant effectual relief by reviewing the claim construction, so the cross-appeal must be dismissed.

- Casam 23-1769.pdf

(no holding tagged to this category)

- Dolby 23-2110.pdf

Whether the court reaches the merits of the PTAB’s RPI-related procedural rulings when standing is absent.: Absent Article III standing, the Federal Circuit must dismiss and cannot reach substantive challenges to the PTAB’s handling of the proceeding, including RPI-related procedural decisions.

- Ecofactor 23-1101.pdf

Appealability of denial of summary judgment after trial and reinstatement of panel dispositions on non-damages issues.: After a full trial, a denial of summary judgment (including on §101) is not appealable, and the court reaffirmed affirmance of the denial of JMOL of noninfringement.

- IQE 24-1124.pdf [NEEDS_REVIEW]

Whether Federal Circuit appellate jurisdiction exists to hear an interlocutory appeal from denial of a California anti-SLAPP motion to strike.: Under Federal Circuit law, the denial of a special motion to strike under California’s anti-SLAPP statute satisfies the three collateral-order requirements and is immediately appealable, because it conclusively decides applicability, is separate from merits, and would be effectively unreviewable after final judgment given the statute’s protection from litigation burdens.
Whether a transferee court must treat a sister circuit’s view of interlocutory appealability as law of the case after transfer.: Questions of the Federal Circuit’s own appellate jurisdiction (including collateral-order doctrine applicability) are governed by Federal Circuit law and are reviewed de novo, notwithstanding a regional circuit’s transfer order.

- In re Gesture 25-1075.pdf

(no holding tagged to this category)

- Incyte Pharma 23-1300.pdf

(no holding tagged to this category)

- Maquet Cardovascular 23-2045.pdf

Scope of district-court judgment review where appellant did not brief part of the judgment (’238 patent): An issue within the scope of the appealed judgment but not raised in the appellant’s opening brief is waived on appeal, so the court leaves that portion of the judgment undisturbed.

- Micron Tech. 23-2007.pdf

Whether an order denying motions to dismiss and imposing a statutory litigation bond is appealable as an injunction under 28 U.S.C. § 1292(a)(1)/©(1).: A statutory bond requirement that operates as a procedural precondition and can be revisited in the district court does not constitute an injunction, and it also fails the Carson test absent a showing of injunction-like practical effect, serious/irreparable consequence, and unavailability of effective later review.
Whether the statutory bond order is immediately appealable under the collateral order doctrine.: A bond order is not collateral where it is intertwined with the merits (e.g., turns on the same bad-faith likelihood assessment) and is not effectively unreviewable after final judgment, because repayment (including recoverable bond premiums where available) generally provides adequate postjudgment relief.
Whether the court may exercise pendent appellate jurisdiction over the denial of motions to dismiss.: Pendent appellate jurisdiction cannot be used to reach otherwise nonappealable interlocutory rulings unless there is a properly appealable interlocutory order to which they are tethered; absent such an anchor, pendent jurisdiction is not available.
Scope of merits review when appellate jurisdiction is lacking.: When jurisdiction is absent, the court does not reach merits issues such as federal preemption or abuse of discretion in setting the bond amount.

- Odyssey Logistics 23-2077.pdf

Relevance of agency inherent reconsideration authority and timeliness limits.: Even assuming an agency has inherent authority to reconsider final decisions, that authority is bounded by a reasonable-time requirement; extensive, unjustified delay after grounds were known supports denial of reconsideration.

- Qualcomm 23-1208.pdf

(no holding tagged to this category)

- Realtek 23-1187.pdf

Whether an ITC order denying sanctions is an appealable “final determination” under 28 U.S.C. § 1295(a)(6) and 19 U.S.C. § 1337©.: A “final determination” reviewable in the Federal Circuit under § 1295(a)(6) and § 1337© is a final administrative decision on the merits that affects exclusion or non-exclusion of articles (or has the effect of conclusively denying requested exclusion), not a standalone sanctions ruling divorced from import-entry consequences.
Scope of Federal Circuit jurisdiction over ITC-related issues beyond the merits exclusion determination.: The Federal Circuit may review matters ancillary to or affecting the validity of an appealable Section 337 final determination, but lacks jurisdiction over Commission actions that are not ancillary to any such final determination (e.g., sanctions issues when the investigation terminates without a merits exclusion/non-exclusion determination).
Proper forum when Section 337 provides reviewability under the APA but does not specify the reviewing court for non-ancillary sanctions decisions.: Absent clear statutory authority granting Federal Circuit jurisdiction over a non-ancillary Commission sanctions decision, the default rule is that judicial review of agency action lies in district court rather than directly in a court of appeals.

- USAA 23-1639.pdf

Appellate jurisdiction where the record was unclear as to entry of final judgments on certain counterclaims.: When finality is unclear, the Federal Circuit may remand for the limited purpose of entry of amended final judgments to secure jurisdiction and then proceed on consolidated appeals based on the existing briefing and argument.

ASSIGNMENT_OWNERSHIP_CHAIN_OF_TITLE

- Casam 23-1769.pdf

Interpretation of an assignment that transfers an “invention” and “continuations” but does not mention “continuations-in-part.”: Absent contextual indications to the contrary, an assignment referencing “continuations” does not unambiguously include continuation-in-part applications; courts should not rewrite the contract to add “continuations-in-part,” particularly given the recognized legal distinction between continuations and continuations-in-part.
Effect of superseding agreements on earlier IP-assignment provisions.: Where a later settlement supersedes an earlier employment invention-assignment agreement and does not transfer rights back to the inventor, the earlier agreement has no operative effect on ownership, and excluded applications remain with the party who owned them absent an express conveyance.

ATTORNEYS_FEES_OCTANE

- AMS-Osram 22-2185.pdf

Contractual fee shifting via an indemnity/hold-harmless clause under California law: An indemnity clause can authorize fee recovery in a direct breach-of-contract action between the contracting parties where its text expressly covers “any and all” losses/liability, including attorneys’ fees, suffered “as a result of” breach of the agreement’s obligations, indicating intent to cover direct (not only third-party) claims.

- Escapex IP 24-1201.pdf

Whether the case was 'exceptional' warranting fees under 35 U.S.C. § 285.: A district court may find a case exceptional under the totality of circumstances where the patentee failed to conduct an adequate pre-suit investigation and pursued objectively baseless claims, particularly after receiving early, focused notice of the deficiencies and nevertheless continuing the litigation.
Whether the district court could consider party correspondence and non-responsiveness in the § 285 analysis.: In assessing exceptionality, a court may consider pre- and in-suit communications showing the patentee was put on early notice that its positions were baseless and that continued litigation supports compensation and deterrence rationales for fees.

- Focus Products 23-1446.pdf

(no holding tagged to this category)

- Future Link 23-1056.pdf

Prevailing-party status after court-ordered dismissal with prejudice following plaintiff’s voluntary dismissal: A defendant is a prevailing party for purposes of § 285 and Rule 54(d)(1) when the action ends in a dismissal with prejudice that bears judicial imprimatur and materially alters the parties’ legal relationship by barring reassertion of the same patent claims against the same accused products, even absent a merits adjudication.

BIOSIMILARS_HATCH_WAXMAN

- Azurity Pharma 23-1977.pdf

(no holding tagged to this category)

- Janssen Pharma 25-1228.pdf

(no holding tagged to this category)

- Jazz Pharma 24-2274.pdf

Whether a permanent injunction may bar initiation of future clinical trials involving a patented drug product.: A court abuses its discretion by enjoining initiation of new clinical trials that are reasonably related to generating information for FDA submission, because such conduct is exempt from infringement under §271(e)(1) and §271(e)(3) bars injunctive relief prohibiting safe-harbor activity absent adjudication that the activity falls outside the safe harbor.
Whether a permanent injunction may bar offering open-label extensions (OLEs) in ongoing clinical trials when the activity has not been accused or adjudicated as infringing or outside the safe harbor.: An injunction cannot preemptively prohibit OLE-related conduct where the activity has not been accused and adjudicated to fall outside §271(e)(1); §271(e)(3) requires the safe-harbor issue be decided before injunctive relief may restrict that activity.
Whether submitting an application to the FDA (standing alone) constitutes infringement under §271(a) such that it can be enjoined as infringing conduct.: Submitting an FDA application is not a making, using, selling, offering to sell, or importing under §271(a), and thus is not itself an actual act of infringement; the safe harbor does not independently convert “submission of information” into the relevant infringing act.

- Merck Sharp & Dohme 23-2254.pdf [NEEDS_REVIEW]

Whether, for a reissued patent, § 156©’s requirement that the regulatory review period “occur[] after the date the patent is issued” is measured from the original patent’s issue date or the reissue patent’s issue date.: In the context of reissued patents, § 156©’s reference to “the patent” is construed to refer to the original patent for purposes of calculating PTE when the original patent already contained (and the reissue retains) claims directed to the FDA-approved drug product.
Role of statutory context and purpose in construing ambiguous language in Hatch-Waxman’s PTE provisions.: Where the isolated text of § 156© is ambiguous as applied to reissue, the statute should be read in context to effectuate the Hatch-Waxman purpose of restoring patent term lost to FDA review, and interpretations that would negate restoration solely due to seeking reissue are rejected absent a statutory basis.
Whether § 156(a) and § 154(a)(2) inform the meaning of “the patent” for reissued-patent PTE calculations.: Related provisions referring to extension from the patent’s “original expiration date” and defining patent term by reference to the original filing support construing § 156©’s “the patent” as the original patent in the reissue setting where the reissue carries forward the original term.

DAMAGES_APPORTIONMENT_ENTIRE_MARKET_VALUE

- Rex Med. 24-1072.pdf

Use of comparable licenses that include additional patents/foreign rights: Comparable-license evidence must account for distinguishing economic and technological circumstances, including that the comparator license covers additional U.S. patents, applications, or foreign rights; without evidence enabling apportionment, the factfinder may not guess at the asserted patent’s share of a portfolio lump sum.

DAMAGES_LOST_PROFITS

- Wash World 23-1841.pdf

Standard for awarding lost profits on unpatented convoyed sales and sufficiency of evidence.: Lost profits for unpatented items require proof that the patented and unpatented products together form a functional unit; evidence that the items are typically sold together as a package for convenience or business advantage does not satisfy the functional-relationship requirement.

DAMAGES_REASONABLE_ROYALTY

- Ecofactor 23-1101.pdf

Gatekeeping vs. weight/credibility in patent reasonable-royalty testimony.: While reasonable-royalty analyses tolerate approximation and competing methodologies, Rule 702 still requires reliability of the specific factual predicates the expert asserts; a court must exclude opinion testimony whose critical factual premise lacks “good grounds” rather than treating that deficiency as merely going to weight.
Limits on using lump-sum settlement licenses to prove an “established royalty” per-unit rate.: Lump-sum settlement licenses may inform a hypothetical-negotiation analysis, but they cannot support an expert’s assertion that licensees agreed to a particular per-unit running royalty where the contracts only reflect the patentee’s unilateral belief and/or expressly state the lump sum is not sales-based and not a royalty.

- Finesse Wireless 24-1039.pdf

Effect of reversal of infringement liability on the damages judgment.: When JMOL of noninfringement is granted on all asserted claims, the damages award predicated on infringement must be vacated.

- Jiaxing Super 23-1715.pdf

Whether, on remand, the district court must scrutinize a reasonable-royalty expert’s reliance on portfolio licenses and related testimony under Rule 702/EcoFactor, including apportionment.: When a damages expert bases a hypothetical negotiation on prior portfolio licenses, Rule 702 requires a reliability showing grounded in sufficient facts/data (not unsupported assertions from interested personnel), and the expert must apportion or otherwise reliably account for the value of unasserted patents rather than rely on generalized ‘counterbalancing’ adjustments.

- Rex Med. 24-1072.pdf

Proof required to avoid JMOL of no reasonable-royalty damages: Although § 284 contemplates a reasonable royalty, a patentee must introduce sufficient evidence from which the factfinder can derive a non-speculative royalty tied to the infringing acts; absent such evidence, JMOL of no damages (or only nominal damages) is proper.

- Wonderland Switzerland 23-2043.pdf

Effect of reversing infringement as to a subset of accused products on the damages judgment.: When a finding of infringement supporting part of a damages award is reversed, the corresponding damages award must be vacated and the case remanded for further proceedings consistent with the revised liability determination.

ENHANCED_DAMAGES_WILLFULNESS

- Focus Products 23-1446.pdf

Willfulness and exceptional-case fee consequences after partial reversal/vacatur.: Willfulness determinations must be vacated where based on improper notice timing (e.g., cease-and-desist letter not providing notice of trade dress) or where the record shows consistent, potentially reasonable noninfringement positions; and when liability results are reversed/vacated, an attorneys’ fee award must be vacated and recalculated to apportion work tied to claims for which the party remains a prevailing party.

- Wonderland Switzerland 23-2043.pdf

(no holding tagged to this category)

DESIGN_PATENTS

- Lashify 23-1245.pdf

Patent-by-patent (or product-group) domestic-industry proof after removal of one asserted patent.: Where different complainant product groups practice different asserted patents, the domestic-industry showing must be tied separately to the patents/product groups at issue; after affirmance removing the utility patent on technical-prong grounds, the Commission must reassess and allow appropriate allocation evidence/argument as to the remaining design patents.

- Smartrend 24-1616.pdf

(no holding tagged to this category)

- Top Brand 24-2191.pdf

(no holding tagged to this category)

DOUBLE_PATENTING

- Immunogen 23-1762.pdf

Treatment of obviousness-type double patenting when parties agree it is coextensive with obviousness in the appeal.: Where the parties agree that the double-patenting issue rises and falls with the obviousness analysis and do not separately brief it, the court may affirm without separately addressing double patenting once obviousness is affirmed.

- Regeneron 24-1965.pdf

Obviousness-type double patenting based on a related earlier-expiring reference patent.: A later patent is not invalid for ODP where differences between its claims and the reference patent’s claims—here, a specific 98% native-conformation stability requirement and a glycosylation requirement—are supported by findings that a skilled artisan would lack motivation and reasonable expectation of success to arrive at those differences; showing that the later limitation is an “additional property” or that the later claim is encompassed by/within the scope of the earlier genus claim does not, by itself, prove lack of patentable distinctness.

EXHAUSTION_AND_IMPLIED_LICENSE

- Fraunhofer-Gesellshaft 23-2267.pdf [NEEDS_REVIEW]

(no holding tagged to this category)

INDIRECT_INFRINGEMENT

- Mitek Systems 23-1687.pdf

Induced-infringement-based DJ standing premised on the patentee’s claim charts/allegations against customers.: For inducement, DJ jurisdiction requires some indication the patentee’s assertions imply the supplier took affirmative steps to encourage performance of the claim as a whole; where claim charts and evidence cite supplier materials for only some limitations and do not suggest the supplier encourages the remaining limitations, there is no substantial controversy as to inducement.
Contributory-infringement-based DJ standing where the record does not suggest absence of substantial noninfringing uses.: Absent patentee assertions or evidence implying the supplier’s product is not suitable for substantial noninfringing uses, a supplier fails to show a reasonable potential for contributory infringement; products equally capable of infringing and substantial noninfringing uses do not support a contributory infringement controversy.

INJUNCTIONS_EBAY

- Jazz Pharma 24-2274.pdf

Whether enjoining the act of applying for FDA approval of a new indication is supportable under eBay where the court’s findings concern only harm from market entry.: To enjoin noncommercial conduct such as seeking regulatory approval, the patentee must show a causal nexus and that enjoining the application is necessary to prevent infringement; findings about harm from future market entry are too speculative and attenuated to justify barring an FDA application without further analysis.

- Regeneron 24-1965.pdf

Causal nexus for irreparable harm in preliminary injunction involving an FDA-approved biosimilar whose BLA scope could encompass noninfringing variants.: Causal nexus is not defeated merely because the FDA-approved application could allow noninfringing variants where the record shows the accused infringer intends to market only the infringing product and a noninfringing alternative is not shown to be actually planned or readily achievable; when the accused product essentially embodies the claimed invention (not a complex multi-feature product), the causal-nexus inquiry may have little additional work to do beyond tying the harms to the infringing product.

- Smartrend 24-1616.pdf

Effect of reversing/vacating liability determinations on a permanent injunction.: When the underlying infringement judgments are reversed or vacated and a new trial is required, the permanent injunction predicated on those liability findings must be vacated.

- Wonderland Switzerland 23-2043.pdf

Whether a permanent injunction may issue for a patent when the patentee did not request injunctive relief, and what showing is required for irreparable harm under eBay.: Granting a permanent injunction is an abuse of discretion when the prevailing party expressly declined to seek that remedy, and irreparable harm cannot be based on speculative or conclusory assertions; the district court must tie irreparable injury and inadequacy of legal remedies to concrete record evidence.

INVENTORSHIP_CORRECTION

- Bearbox 23-1922.pdf [NEEDS_REVIEW]

Standard for correcting inventorship and need for corroboration of an alleged inventor’s testimony.: To correct inventorship under 35 U.S.C. § 256, the challenger must overcome the presumption of correct inventorship by clear and convincing evidence, and an alleged inventor’s testimony must be corroborated under a rule-of-reason assessment of the totality of evidence.
Whether an element-by-element (limitation-by-limitation) analysis is permissible in assessing an alleged contribution to conception/communication for § 256 inventorship.: A district court does not err by analyzing claim limitations when assessing whether the alleged inventor contributed significantly to the conception or reduction to practice of at least one claim and whether the alleged contribution was communicated before the named inventors’ independent conception, so long as the claims are considered as a whole in the court’s analysis.

- Coda Development 23-1880.pdf

Substantive standard for adding a named inventor to an issued patent.: Correction of inventorship requires proof of conception, and conception must include every feature or limitation of the claimed invention; evidence tied to a trade secret does not establish inventorship where it does not match the scope of the patent claims.

- Global Health 23-2009.pdf

Preservation of a request to correct inventorship in an AIA derivation proceeding.: A contested request to correct inventorship must be properly presented through the PTAB’s required motion procedure and supported with the required content and fee; an undeveloped, conclusory request embedded in a petition and not pursued is forfeited, so no remand is warranted.

ITC_SECTION_337

- Brita 24-1098.pdf

(no holding tagged to this category)

- Casam 23-1769.pdf

Mootness of an ITC infringement appeal following an appellate affirmance of PTAB unpatentability of the only asserted claim.: An affirmance that the only claim asserted on appeal is unpatentable moots a Section 337 appeal challenging a noninfringement determination because §337 relief requires infringement of a valid and enforceable patent; the court therefore lacks a live controversy and must dismiss even if other litigation is pending.

- Lashify 23-1245.pdf

Whether § 337(a)(3)(B) permits the Commission to categorically discount labor/capital used for sales/marketing and warehousing/quality control/distribution (especially absent domestic manufacturing) when assessing the economic prong.: Section 337(a)(3)(B) is satisfied by “significant employment of labor or capital” with respect to the patented articles, without atextual carveouts for particular enterprise functions; the Commission may not deem sales/marketing or warehousing/quality-control/distribution labor/capital categorically insufficient standing alone or condition their consideration on domestic manufacturing.
Role of legislative history and pre-1988 practice in narrowing § 337(a)(3)(B).: Where § 337(a)(3)(B)’s text is clear, legislative history, pre-1988 Commission practice, and pre-1988 case law (including Schaper) cannot justify reading in exclusions or a domestic-manufacturing requirement inconsistent with the statute’s enacted language.
Remand framework for economic-prong determination under § 337(a)(3)(B).: On remand, the Commission must count labor and capital used in sales, marketing, warehousing, quality control, and distribution to the extent “with respect to” the patented articles, and then determine whether the qualifying employment is “significant” via a holistic assessment of all relevant considerations.
Whether Lashify satisfied the technical prong for the ’984 patent under the affirmed construction.: Because Lashify’s domestic-industry products did not meet the “heat fused” limitations as construed, the Commission correctly found the technical prong not satisfied for the ’984 patent, and that determination is affirmed.

- Realtek 23-1187.pdf

Whether § 1337©’s statement that sanctions determinations “shall also be reviewable in accordance with section 706 of title 5” confers Federal Circuit appellate jurisdiction.: Section 1337©’s “also reviewable in accordance with section 706” language addresses the APA standard/procedure of review, not the forum for appellate jurisdiction; Congress did not include subsection (h) in the statutory list of Commission determinations appealable to the Federal Circuit.

- US Synthetic 23-1217.pdf

(no holding tagged to this category)

- Wuhan Healthgen 23-1389.pdf

Whether relatively small dollar investments can satisfy the § 337(a)(3) economic prong for domestic industry.: The domestic-industry economic prong does not turn on any threshold dollar amount or rigid formula; the Commission may find investments “significant” or “substantial” based on a context-dependent, holistic assessment using quantitative measures such as the domestic share of total investments/value added and investment-to-revenue comparisons, including for small market segments.
Use of domestic-versus-total investment (value added) and investment-to-revenue ratio in the economic-prong analysis.: Consistent with precedent requiring quantitative analysis, the Commission may treat a 100% domestic allocation/value-added comparison and a high investment-to-revenue ratio as probative quantitative indicators supporting a finding of significant/substantial investment under § 337(a)(3).

LICENSE_CONTRACT_INTERPRETATION_PATENT_RELATED

- Ecofactor 23-1101.pdf

(no holding tagged to this category)

- Game Plan 24-1407.pdf

Whether acquiring preexisting common-law trademark rights during litigation can supply priority and whether such an assignment is barred as an impermissible transfer of an ITU application or an invalid assignment in gross.: An asset purchase/assignment that transfers a mark together with the goodwill associated with the mark’s marketplace use is not an invalid assignment in gross; and statutory limits on assignment of intent-to-use applications do not prohibit acquiring preexisting common-law rights in an already-used mark, which may independently establish priority.

- IQE 24-1124.pdf [NEEDS_REVIEW]

(no holding tagged to this category)

- Agilent 23-2186.pdf [NEEDS_REVIEW]

blocked: Model refused to process the PDF content; handle manually.

- Apex Bank 23-2143.pdf [NEEDS_REVIEW]

Scope of similarity required for DuPont factor 6 (third-party marks) when goods/services are found highly similar under DuPont factor 2.: DuPont factor 6 does not require third-party marks to be used on identical goods/services; where the Board has found the parties’ services highly similar (even partially legally identical), it must consider third-party marks used on similarly related goods/services within that same scope and may not narrow the relevant marketplace to a more stringent, credit-card-only subset without justification.
Effect of remand on DuPont factor 1 (similarity of the marks / commercial impression).: Because commercial strength/weakness evidence considered under DuPont factor 6 can affect the overall commercial impression under DuPont factor 1, vacatur and remand of factor 6 can require vacatur and remand of factor 1 for reconsideration in light of the corrected strength analysis.
Review and affirmance of DuPont factor 2 finding on similarity/relatedness of services.: Substantial evidence supported the Board’s finding that “credit card services” and broadly recited “banking and financing services” are highly similar (and legally identical in part), so the Board’s DuPont-factor-2 determination was affirmed.

- Bearbox 23-1922.pdf [NEEDS_REVIEW]

Whether federal patent law preempts a state-law conversion claim seeking compensation for a defendant’s alleged use/monetization of unpatented technology.: A state-law claim is conflict-preempted where, as pled, it seeks patent-like protection (including royalty-like monetary relief) for the defendant’s use of unpatented ideas/technology and effectively repackages inventorship/infringement theories that would frustrate federal patent objectives of free public use of unpatented disclosures.

Trademarks

- Bullshine Distillery 23-1682.pdf [NEEDS_REVIEW]

Proper time period for determining whether a term was generic such that it could not be registered in the first instance.: For purposes of initial registrability, genericness turns on the relevant public’s perception at the time registration is sought/obtained; a term is not barred from registration solely because it may have been used generically at some earlier point in time.
Whether the TTAB applied the correct genericness legal framework.: The TTAB applies the correct legal standard when it identifies the relevant genus and public and then evaluates evidence of consumer understanding of the term at the relevant registration time for each challenged registration.
Fame/strength evidence in DuPont analysis and harmless error.: The Board may require contextual evidence to evaluate fame from sales/advertising and rankings, and any misstep in the fame-factor analysis is harmless where the Board nevertheless finds the mark commercially strong and affords it a broad scope of protection.
Requirement to consider DuPont factors of record and effect on the likelihood-of-confusion determination.: The Board must consider DuPont factors that are supported by evidence and argument, but a likelihood-of-confusion determination may be affirmed where the Board addressed the pertinent factor(s) and substantial evidence supports dispositive findings (e.g., mark dissimilarity and conceptual weakness) that outweigh other factors.

- Ceramtec 23-1502.pdf [NEEDS_REVIEW]

When an expired utility patent and related materials connect a claimed product feature to utilitarian advantages, that evidence strongly supports a finding of trademark functionality under TrafFix/Morton–Norwich.: A utility patent’s claims, specification, and prosecution history may be used as strong evidence that a claimed feature is functional; TrafFix does not require the patent to expressly label the feature as functional or to concern the same end-use goods, so long as the evidence shows the feature is a useful part of the invention.
Standard for competitors’ alternative designs under the third Morton–Norwich factor.: To weigh against functionality, the record must contain probative evidence of actual or potential alternative designs that work equally well; absent such evidence, the TTAB may treat the factor as neutral and an appellate court will not reweigh the evidence.
Allocation of the burden of proof in a § 23© functionality cancellation.: In a functionality cancellation, the petitioner bears the burden to prove functionality by a preponderance of the evidence; quoting TrafFix’s “heavy burden” language does not constitute improper burden shifting where the TTAB expressly applies the correct burden and finds the petitioner carried it.

- Dollar Financial Group 23-1375.pdf [NEEDS_REVIEW]

Whether the zone of natural expansion doctrine can be used to establish priority for different goods/services against intervening common-law users.: The zone of natural expansion doctrine is purely defensive: it may be invoked to prevent a junior user from registering a confusingly similar mark for logically related goods/services within the senior user’s natural expansion, but it does not confer an affirmative right to register/claim priority for expanded goods/services when doing so would conflict with another party’s intervening rights.
Similarity of marks and effect of descriptive/generic matter in DuPont factor 1 analysis.: In comparing marks, descriptive or generic matter may be given less weight, so adding terms like “PAWN” or “JEWELRY” may not avoid a finding of high similarity when the shared wording is dominant and the overall commercial impression remains substantially the same.

- Fraunhofer-Gesellshaft 23-2267.pdf [NEEDS_REVIEW]

Whether misleading silence was established as a matter of law for equitable estoppel.: A patentee’s multi-year silence after knowing of accused use can constitute misleading conduct supporting equitable estoppel, particularly where the patentee helped build or enable the accused system and the accused infringer could reasonably infer acquiescence.
Whether SXM proved reliance as a matter of law to support equitable estoppel on summary judgment.: To establish reliance for equitable estoppel, the accused infringer must show that the patentee’s misleading conduct was actually considered and influenced the accused infringer’s relevant actions; business-justification testimony that decisions were driven by market pragmatics can create a genuine dispute precluding summary judgment.
Whether prejudice can be found without an undisputed showing of reliance.: Material prejudice must be causally tied to reliance on the patentee’s misleading conduct; absent undisputed evidence of reliance, prejudice cannot be established as a matter of law for summary judgment.

- Heritage Alliance 24-1155.pdf [NEEDS_REVIEW]

Whether the TTAB’s finding that the opposer’s mark is (highly) descriptive is supported and properly analyzed as a whole mark.: In assessing descriptiveness, the Board must consider the mark as a whole but may evaluate individual components to determine the overall commercial impression; substantial evidence supported finding that a composite term directly and immediately describes the entire service, making it highly descriptive.
Effect of five years’ use under 15 U.S.C. § 1052(f) on proving acquired distinctiveness for a highly descriptive mark.: Section 2(f) provides that the PTO/Board may accept five years of substantially exclusive and continuous use as prima facie evidence of acquired distinctiveness, but the Board has discretion to decline to treat such use as sufficient—particularly for a highly descriptive mark where more evidence may reasonably be required.
Opposer’s burden in a Lanham Act opposition when likelihood of confusion is effectively conceded but the opposer relies on a non-distinctive common-law mark.: Even if likelihood of confusion is not disputed, an opposer must prove its asserted prior mark is protectable (distinctive inherently or through acquired distinctiveness) as of the relevant date; use of a non-distinctive designation does not create cognizable trademark rights that can confer priority.

- In re Bayou Grand Coffee 24-1118.pdf [NEEDS_REVIEW]

Whether the Board relied on a new ground of refusal by affirming on the Kashmiri green-tea meaning of the mark.: A Board decision is not a new ground of refusal where the applicant had a fair opportunity to respond to the examiner’s theory and the examiner did not withdraw that refusal; the touchstone is fair notice and opportunity to react to the thrust of the rejection.
Whether the doctrine of foreign equivalents required translating the mark from Arabic to assess descriptiveness/genericness.: The doctrine of foreign equivalents does not apply as a matter of law where the term has a well-established alternative English meaning such that ordinary purchasers (including foreign-language speakers) would not translate it; in that circumstance, no translation is required for genericness/descriptiveness analysis.
Whether the Federal Circuit could decide the foreign-equivalents legal issue even though the Board declined to address it.: Where an issue is fully developed and briefed below and the remaining dispute is a legal question, the appellate court may resolve it notwithstanding the Board’s failure to reach it.

- In re Brunetti 23-1539.pdf [NEEDS_REVIEW]

Whether “commonality” or being a commonplace word is itself a registrability bar under the failure-to-function doctrine.: Commonality alone is not the test and is not a standalone basis to refuse registration; the governing inquiry is whether relevant consumers would perceive the designation as identifying source for the applied-for goods/services, assessed primarily from marketplace use and consumer perception.
Whether the Board may rely on third-party marketplace use of the applied-for term on similar goods in assessing failure to function.: The Board may properly consider prominent third-party use of the applied-for matter on similar goods/services as probative of how consumers perceive the matter and whether it can function as a source identifier, including concerns about attempting to appropriate matter others use freely.
Effect of potentially inconsistent prior PTO registrations of similar/common words on review of the Board’s refusal.: While prior examiner-level registrations do not bind the PTO and each application must be decided on its own merits, the Board must still engage in reasoned decisionmaking and provide rational guidance; merely dismissing other registrations without explaining the contextual distinctions contributing to its rule is inadequate.

- In re Foster 23-1527.pdf [NEEDS_REVIEW]

Whether substantial evidence supported the Board’s findings on the first two elements of the § 2(a) false-connection test (same/close approximation; uniquely and unmistakably pointing).: Substantial evidence supported findings that a proposed mark identical to a widely publicized governmental/military identity can be a same-or-close approximation and can point uniquely and unmistakably to the United States; the appellate court will not reweigh conflicting evidence where the Board’s chosen view is reasonable.

- In re PT Medisafe Tech. 23-1573.pdf [NEEDS_REVIEW]

Proper legal test for genericness of a single-color mark (trade dress).: For a single-color mark, genericness is assessed by a two-step inquiry: (1) identify the genus of goods/services; and (2) determine whether the relevant public primarily understands the color as a category/type of trade dress so common in that genus that it denotes the genus rather than a single source (the TTAB’s Milwaukee framework, consistent with Marvin Ginn).
Meaning of “generic name” in Lanham Act §1064(3) as applied to trade dress.: The term “generic name” in §1064(3) is read broadly to include trade dress (including color marks); trade dress that cannot function as a source indicator because it is understood as generic is unprotectable and barred from registration.
Genus definition and relevant public for genericness inquiry in registration context.: The Board need not adopt an applicant’s narrowing of the genus or market (e.g., limiting to the applicant’s authorized resellers) when the identification of goods supports a broader genus and the inquiry must not be artificially limited to the applicant’s own products.

- In re Vetements Group 23-2050.pdf [NEEDS_REVIEW]

When the doctrine of foreign equivalents applies (stop-and-translate threshold and burden).: The doctrine of foreign equivalents applies unless it is unlikely the ordinary American purchaser would stop and translate the foreign term; the party opposing translation bears the burden to show translation is unlikely, consistent with the general principle that words from modern languages are generally translated.
Whether translation requires proof that a majority of U.S. consumers can translate the foreign term.: Application of the doctrine of foreign equivalents does not require showing that more than 50% of Americans can translate the term; it is sufficient that an appreciable number of Americans are capable of translating it, and a rigid “median purchaser/headcount” rule would improperly nullify the doctrine.
Role of marketplace context in deciding whether purchasers would translate a foreign-language mark.: Even where consumers may have the linguistic ability, context can make translation unlikely; but where the foreign term directly names or closely relates to the applied-for goods/services, context supports finding consumers would stop and translate.
Genericness after translation under the doctrine of foreign equivalents.: After translating a foreign-language term, if the relevant public would primarily understand the translated term to name the genus of the identified goods or services, the mark is generic and unregistrable on the Principal Register.
Need to reach alternative mere-descriptiveness and acquired-distinctiveness holdings once genericness is affirmed.: Because a generic term is incapable of indicating source and cannot acquire distinctiveness, affirmance of a genericness refusal makes it unnecessary to decide an alternative refusal based on mere descriptiveness and lack of acquired distinctiveness.

- Sunkist Growers 24-1212.pdf [NEEDS_REVIEW]

Effect of rejecting the Board’s similarity-of-the-marks finding on the overall likelihood-of-confusion determination under DuPont.: Where the goods and trade channels are closely related and other relevant DuPont factors favor confusion, a lack of proven actual confusion is not dispositive, and the proper weighing of factors can require a finding of likelihood of confusion once the similarity-of-the-marks analysis is corrected.
Role of “actual confusion” evidence in § 2(d) likelihood-of-confusion analysis.: Failure to show instances of actual confusion does not, by itself, defeat a likelihood-of-confusion claim because actual confusion is difficult to prove; it cannot outweigh multiple factors favoring confusion absent stronger countervailing evidence.

- Ceramtec 23-1502.pdf [NEEDS_REVIEW]

Availability and application of unclean hands in TTAB cancellation proceedings involving functionality.: The TTAB may not adopt a categorical rule barring unclean hands in functionality cancellations given its rules permitting the defense, but it may decline to apply the defense in a particular case where the public interest in removing functional marks from the register outweighs equitable considerations; any overbroad statement is harmless where the TTAB exercises case-specific discretion.

?

- IQE 24-1124.pdf [NEEDS_REVIEW]

(no holding tagged to this category)

- Merck Sharp & Dohme 23-2254.pdf [NEEDS_REVIEW]

(no holding tagged to this category)

Patent Term

- In re Forest 23-1178.pdf [NEEDS_REVIEW]

Whether 35 U.S.C. § 154(d) provisional rights can be granted for a patent that would issue after its § 154(a)(2) expiration date.: Section 154(d) provisional rights arise only as a temporary, pre-issuance adjunct to, and in addition to, the patent’s exclusionary rights, so they are unavailable when no exclusionary rights can be granted because the patent would issue after expiration.
How to interpret § 154(d) in context with § 154(a) and the overall statutory scheme.: In interpreting § 154(d), the court reads the statute as a whole and gives effect to phrases like “in addition to other rights,” which ties provisional rights to the existence of the § 154(a) exclusionary rights and prevents reading provisional rights as an unbounded term-extending exception.
Whether patent rights may extend beyond the statutorily authorized term absent clear congressional authorization.: Absent a clear statement from Congress, the patent statute should not be read to create rights extending beyond the limited term specified in § 154(a)(2), and § 154(d) does not supply such authorization.

PRECLUSION_RES_JUDICATA_COLLATERAL_ESTOPPEL

- In re Riggs 22-1945.pdf

Whether appellants could re-litigate that the PTAB acted ultra vires by granting an examiner request for rehearing after the Board’s earlier decision.: Issue preclusion bars reasserting an ultra vires/jurisdiction challenge where the same issue was actually litigated and necessarily decided in a prior appeal involving the same real party in interest, even if it arose within an APA-finality analysis.

- Inland Diamond 24-1106.pdf

Whether PTAB unpatentability determinations and underlying fact findings have issue-preclusive effect in district court invalidity litigation given different burdens of proof.: Because IPR unpatentability is proven by a preponderance of the evidence while district-court invalidity must be proven by clear and convincing evidence, PTAB fact findings made under the lower standard do not collaterally estop a patentee (or otherwise establish facts) in district court invalidity proceedings.
Whether issue preclusion may be applied to limitations of asserted dependent claims solely because parent claims were found unpatentable in an IPR.: A district court errs by using issue preclusion to relieve the accused infringer of proving, by clear and convincing evidence, the invalidity-related facts for limitations carried over from IPR-unpatentable parent claims; the challenger must still prove invalidity of the asserted claim as a whole under the district-court standard.
Whether survival of asserted claims in an unappealed IPR (found “not unpatentable”) is a prerequisite for avoiding issue preclusion in district court.: The inapplicability of issue preclusion in this setting turns on the different standards of proof and the absence of a final appellate invalidation of the asserted claims, not on whether the asserted claims previously survived an IPR challenge.

- AMS-Osram 22-2185.pdf

Ability to challenge exemplary damages after remand when the argument was available in the first appeal: An argument within the scope of the original judgment that could have been raised in the first appeal but was not is waived and cannot be revived on remand or in a subsequent appeal, including a statutory argument that exemplary damages are unavailable when the compensatory remedy is equitable disgorgement.

- Kroy IP 23-1359.pdf

Whether PTAB unpatentability findings on different claims can collaterally estop assertion of other claims in district court.: A PTAB final written decision holding some claims unpatentable under the preponderance standard cannot collaterally estop a patentee from asserting different, unadjudicated claims in district court, because district-court invalidity requires clear and convincing evidence and issue preclusion generally does not apply across differing burdens of proof.
Scope of XY, LLC v. Trans Ova Genetics regarding estoppel from IPR outcomes.: XY provides only that, once a PTAB unpatentability decision is affirmed and the same claim is effectively subject to inevitable cancellation, that same claim cannot be asserted again; XY does not authorize using PTAB factfindings under a lower burden to estop litigation of different claims that remain presumptively valid.
Applicability of Ohio Willow Wood to PTAB-to-district-court estoppel for non-identical claims.: Ohio Willow Wood’s rule permitting estoppel for immaterially different claims addressed a district-court-to-district-court invalidity context and does not overcome the burden-of-proof barrier to applying estoppel from PTAB IPR decisions to unadjudicated claims in district court.

- Wash World 23-1841.pdf

Effect of judicial estoppel on arguments about the basis of a general damages verdict.: A party that successfully maintained below that the jury adopted a particular expert damages calculation may be judicially estopped from arguing on appeal that the general verdict’s basis is indeterminate in order to avoid correction of an unsupported component of that calculation.

Claims to Priority

- Dollar Financial Group 23-1375.pdf [NEEDS_REVIEW]

Whether the Board committed legal error in treating the prior remand decision as dispositive of priority.: A remand reversing an erroneous rationale for rejecting priority does not itself conclusively establish priority; the Board acts properly when it resolves priority based on the record and addresses any asserted doctrines that could alter the priority outcome.

IPR Procedure

- In re Gesture 25-1075.pdf

Effect of prior Federal Circuit affirmances of PTAB IPR final written decisions on a parallel appeal from ex parte reexamination involving the same patent claims.: A Federal Circuit affirmance of invalidity produces a final judgment with immediate issue-preclusive effect, requiring dismissal of a later/parallel appeal as to claims already adjudicated unpatentable.

- Centripetal 23-2027.pdf

Issue: Whether the Board must consider record evidence of copying offered as objective indicia when deciding obviousness.

In an obviousness analysis, the Board must consider all properly presented evidence of secondary considerations (including copying) and assign it whatever weight the evidence warrants; it is reversible error to omit discussion of such evidence on the ground that the Board is not positioned to evaluate the broader litigation record.

Jurisdiction

- Mitek Systems 23-1687.pdf

Effect of post-filing events, including PTAB invalidity affirmed on appeal, on continuing DJ jurisdiction.: Even if jurisdiction must exist at filing, subsequent events may confirm its absence or moot any remaining controversy; an affirmed PTAB unpatentability determination has collateral-estoppel effect that eliminates any live controversy over enforcement of those claims in pending or co-pending actions.

Damages

PREJUDGMENT_INTEREST_POSTJUDGMENT_INTEREST

- AMS-Osram 22-2185.pdf

Prejudgment interest start date for sales-based monetary awards on state-law claims: A district court abuses its discretion by awarding prejudgment interest from the complaint-filing date on post-complaint sales-based relief without considering that interest generally cannot accrue until the loss-triggering event (the sale) occurs; the court must exercise sound discretion to set an appropriate start date and calculation method for the post-complaint sales period.

PROCEDURAL_CIVIL_RULES

- Acorda Therapeutics 23-2374.pdf

What pleading controls jurisdiction for FAA confirmation/modification proceedings.: Consistent with Badgerow, the jurisdictional inquiry for FAA petitions to confirm/modify/vacate focuses on the face of the case-initiating petition (if unamended), not a look-through to the claims and issues litigated in arbitration.
Whether a request to confirm an arbitral award necessarily raises the correctness of the arbitral merits (including patent-law merits).: Because confirmation under 9 U.S.C. §§ 9/207 does not require pleading or proving that the arbitrators’ legal rulings were correct, a petition seeking confirmation does not, by itself, necessarily raise federal patent-law issues embedded in the award.

- Adnexus 24-1551.pdf

How courts should handle claim-construction disputes at the Rule 12(b)(6) stage.: If claim construction is necessary to decide a motion to dismiss, the court must either adopt the non-moving party’s plausible construction for purposes of the motion or resolve the dispute to the extent needed after providing appropriate procedural safeguards; it is error to effectively decide the dispute against the non-movant by assumption.

- Akamai 24-1571.pdf

Appellate disposition where district court provided alternative independent grounds (exclusion and merits insufficiency).: An appellate court may affirm summary judgment on any independently sufficient ground supported by the record and may decline to reach evidentiary-exclusion issues when the merits provide an adequate basis to affirm.

- Alivecor 23-1512.pdf

Whether a party may raise for the first time on appeal an argument that the IPR petitioner violated routine discovery obligations by not producing allegedly inconsistent secondary-consideration evidence from parallel litigation.: An argument that a party violated PTAB discovery obligations is forfeited on appeal when not presented to the Board, absent exceptional circumstances; a party must raise the issue to the Board (including via motions to submit supplemental information or seek relief) to preserve it for appellate review.

- Ancora 23-1674.pdf

Whether a new “inoperability” challenge to the proposed prior-art combination may be raised for the first time on appeal from an IPR final written decision.: A patent owner waives an inoperability argument not presented in its IPR petition response, and the Federal Circuit will not consider it when raised впервые on appeal.

- Aortic Innovations 24-1145.pdf

Whether judicial estoppel could be asserted on appeal based on allegedly inconsistent positions taken before the PTAB and district court.: A judicial-estoppel theory not properly raised and developed in the district court is forfeited on appeal absent exceptional circumstances.

- Appl 23-1475.pdf

Forfeiture of merits arguments not presented to the PTAB.: Arguments for reversing an IPR final written decision that were not raised before the Board are forfeited on appeal absent exceptional circumstances.

- Azurity Pharma 23-1977.pdf

Effect of a pretrial stipulation about “suitable flavoring agents” on the ability to assert prosecution disclaimer.: A pretrial stipulation is interpreted in context and will not be read to concede infringement or waive a litigated defense when its text and placement among other stipulations, and its provenance, show it merely addresses general meaning/possibility rather than whether the accused product meets claim limitations.

- Bearbox 23-1922.pdf [NEEDS_REVIEW]

Preservation of appellate challenge to exclusion of evidence at trial.: A party generally cannot obtain appellate relief for exclusion of testimony without making an offer of proof sufficient to show the substance of the excluded evidence and enable prejudice review under Fed. R. Evid. 103(a)(2).

- Coda Development 23-1880.pdf

Whether the evidence could sustain the jury’s trade-secret misappropriation verdict after Rule 50(b) motion.: JMOL is proper where, even viewing the record in the nonmovant’s favor, no reasonable jury could find all required elements of misappropriation satisfied for each asserted trade secret.
Effect of public disclosures and attempts to narrow a trade secret at trial.: Information publicly disclosed in patent publications or trade articles cannot qualify as a trade secret, and a plaintiff cannot salvage an overbroad/publicly disclosed definition by later injecting narrowing limitations through witness testimony or attorney argument when those limitations were not included in its required trade-secret identification.
Whether jury findings on legal claims bound the court’s resolution of equitable correction-of-inventorship.: A district court does not err in making Rule 52 findings on issues not submitted to the jury; where the jury was not asked to compare patent-claim scope to the alleged trade secret, the court may find scope differences without conflicting with any jury findings.

- Colibri Heart Valve 23-2153.pdf

Whether Medtronic waived/procedurally forfeited its prosecution-history-estoppel ground for JMOL by a pretrial statement disclaiming the defense.: A party does not waive a legal JMOL ground where the record reasonably shows it merely declined to present the issue to the jury, later raised the issue in a Rule 50(a) motion, the opponent responded on the merits without timely pressing waiver, and the district court addressed the issue on the merits without prejudice.

- Dollar Financial Group 23-1375.pdf [NEEDS_REVIEW]

Whether a party can obtain appellate consideration of tacking when it was not presented to the TTAB.: A tacking theory is forfeited when not clearly raised and developed before the Board; quoting or discussing “substantially identical” goods/services without invoking tacking does not preserve the issue for appeal.

- Ecofactor 23-1101.pdf

Standard of review and remedy for erroneous admission of expert damages testimony under Fifth Circuit law.: When unreliable expert damages testimony is admitted and the reviewing court cannot be confident the error had only a very slight effect on the verdict, the admission is prejudicial and the proper remedy is reversal of the denial of a new trial and remand for a new trial on damages.

- Egenera 23-1428.pdf

(no holding tagged to this category)

- Escapex IP 24-1201.pdf

Whether declarations from a party’s own personnel constitute 'newly discovered evidence' under Rule 59(e).: Evidence is not 'newly discovered' for Rule 59(e) purposes when it comes from witnesses within the movant’s control and concerns information that was always available and could reasonably have been presented before judgment.
Whether a Rule 59(e) motion can be used to present evidence or arguments that could have been raised earlier, and the consequences of not raising a Rule 59(e) ground below.: Rule 59(e) may not be used to introduce evidence or arguments for the first time that could reasonably have been raised earlier, and a party forfeits appellate reliance on a Rule 59(e) theory (e.g., 'manifest injustice') not actually presented to the district court.

- Fraunhofer-Gesellshaft 23-2267.pdf [NEEDS_REVIEW]

Whether the Federal Circuit should grant the patentee’s cross-summary-judgment request in the first instance after reversing defendant’s summary judgment.: On appeal from a grant of summary judgment, the Federal Circuit generally reviews the judgment entered and will not decide in the first instance that the non-prevailing party is entitled to summary judgment where that would require shifting burdens and viewing facts under a different Rule 56 posture not addressed below.

- Future Link 23-1056.pdf

District court’s failure to address Rule 54(d)(1) costs: Where a party is the prevailing party, a district court abuses its discretion by denying or effectively failing to award Rule 54(d)(1) costs without addressing the request and articulating reasons; remand is required for the court to consider costs and explain its decision under regional-circuit law.
Modification/exemption from protective-order access requirements: A request to modify or exempt a party from a Rule 26© protective order requires a particularized showing of good cause; generalized preferences about selecting or using consulting counsel without filing appearances do not compel modification, and denial is reviewed for abuse of discretion under regional-circuit law.

- Game Plan 24-1407.pdf

Whether dismissal of an opposition for lack of proof was proper when the opposer introduced no trial evidence.: When the opposer’s testimony period expires and the record shows the opposer has not taken testimony or otherwise introduced evidence, the Board may enter judgment against the opposer for failure of proof under 37 C.F.R. § 2.132(a).

- IQE 24-1124.pdf [NEEDS_REVIEW]

Proper step-one analysis under California’s anti-SLAPP statute when the challenged conduct is filing patent applications.: At anti-SLAPP step one, the court asks only whether the claim arises from protected petitioning activity; filing a patent application is protected activity, and where the complaint predicates misappropriation/interference liability on disclosure in filed applications, the claim arises from that protected act under the but-for test.
Whether alleged unlawfulness (e.g., trade secret theft or misrepresentations in petitioning) can defeat anti-SLAPP step one.: A court may not collapse the anti-SLAPP inquiry by assessing alleged illegitimacy of the protected act at step one; challenges that the petitioning was wrongful are addressed at step two, where plaintiff must show a probability of prevailing.

- Incyte Pharma 23-1300.pdf

Whether the appellant may submit new standing evidence with a reply brief via a supplemental declaration.: Where standing is not self-evident, an appellant must submit supporting evidence at the first appropriate opportunity (typically the opening brief); absent good cause, the court may decline to consider late-filed supplemental declarations, particularly where they add new theories or do not make standing patently obvious.

- Ingenico 23-1367.pdf

Whether the district court’s failure to instruct on the presumption of validity warranted a new trial.: A district court does not reversibly err by omitting a separate presumption-of-validity instruction when the jury is otherwise properly and repeatedly instructed that invalidity must be proven by clear and convincing evidence.

- Jazz Pharma 24-2274.pdf

Whether safe-harbor arguments were waived/forfeited when raised to challenge the legality of an injunction’s scope rather than liability for past infringement.: When a party challenges an injunction as facially unlawful because it necessarily prohibits statutorily exempt conduct, the argument presents a legal issue not requiring fact development to negate liability; the court may consider such an argument even if not clearly developed below, and it is not waived merely because §271(e)(1) can operate as an affirmative defense in other contexts.

- Kroy IP 23-1359.pdf

Propriety of Rule 12(b)(6) dismissal based on collateral estoppel in these circumstances.: Because the district court’s estoppel theory was legally incorrect given the different burdens of proof and the unadjudicated status of the asserted claims, dismissal under Rule 12(b)(6) was improper and the case must proceed on remand.

- Magema Tech. 24-1342.pdf

Preservation of objection to late-introduced, improper noninfringement theory at trial.: When a party objects to an improper trial theory before it is presented and the court overrules the objection, the issue is preserved for appellate review without repeated objections each time the theory is reiterated.
Waiver of O2 Micro claim-construction arguments not raised below.: Arguments that purported claim-scope disputes required further claim construction are waived on appeal when the party did not timely request construction or otherwise present the O2 Micro issue to the district court.

- Micron Tech. 23-2007.pdf

Whether mandamus under the All Writs Act provides a jurisdictional basis to review the bond order.: Mandamus is unavailable when the appellant has other adequate means for relief in the district court, such as statutory procedures to seek modification or waiver of the bond for good cause or adequate assets.

- Mitek Systems 23-1687.pdf

(no holding tagged to this category)

- Odyssey Logistics 23-2077.pdf

Proper ground for dismissal of Odyssey’s complaint (jurisdiction vs. failure to state a claim).: Because forfeiture and related timeliness constraints are not jurisdictional and can be excused in appropriate circumstances, dismissal for lack of subject-matter jurisdiction was improper; however, affirmance was appropriate under Rule 12(b)(6) because the complaint failed to state a claim that the PTO’s denial was unlawful.

- Optis Cellular 22-1925.pdf

Whether a single infringement verdict question covering multiple asserted patents satisfies the Seventh Amendment/Rule 48 unanimity requirement.: Because each asserted patent is a distinct cause of action, the verdict form must permit a unanimous jury determination on infringement as to each patent (at least patent-by-patent); a single “infringed ANY asserted claims” interrogatory improperly interweaves causes of action and can yield liability without juror agreement on which patent was infringed.
Effect of a non-unanimous/indeterminate infringement verdict on a damages retrial that assumed infringement of all asserted patents.: When the liability verdict does not establish which patents were infringed, the district court cannot instruct a damages jury to assume infringement of all asserted patents or award damages for an unproven/unananimously found scope of infringement; damages must be vacated with the infringement judgment.

- Powerblock 24-1177.pdf

(no holding tagged to this category)

- Recentive 23-2437.pdf

Whether the district court abused its discretion in denying leave to amend as futile.: Denial of leave to amend is not an abuse of discretion where the plaintiff fails to propose amendments or identify plausible additional allegations that could change the § 101 outcome, making amendment futile.

- Regeneron Pharma 24-2351.pdf

Preliminary-injunction standard applied to infringement disputes in patent cases.: A preliminary injunction should not issue if the accused infringer raises a substantial question regarding infringement (or validity/enforceability) that the patentee cannot show lacks substantial merit.

- Steuben Foods 23-1790.pdf

Conditional new trial on infringement under Rule 50©(1) based solely on the same evidentiary assessment as the JMOL.: A conditional new-trial order cannot stand where it provides no independent grounds beyond those subsumed by the JMOL analysis and the appellate court reverses the JMOL; the conditional new trial on infringement must be reversed in that circumstance.
Conditional new trials on invalidity and damages without stated grounds.: When a district court conditionally grants a new trial under Rule 50©(1), it must state the grounds; absent articulated reasoning, an appellate court cannot meaningfully review for abuse of discretion and should vacate and remand for further explanation.

- Top Brand 24-2191.pdf

Whether a party waives a claim-construction position by not objecting to jury instructions after the court previously rejected it.: A party that clearly presented a claim-construction position during claim-construction proceedings does not waive that issue by failing to reassert the same objection at the jury-instruction stage after the court rejected it.
Whether claim construction/legal issues must be preserved via Rule 50(a)/(b) after trial.: A purely legal issue resolved at summary judgment (such as claim construction) is preserved for appeal without a post-trial Rule 50 motion, consistent with Dupree.

- Trudell Medical 23-1777.pdf

Whether an untimely/undisclosed noninfringement expert opinion may be presented at trial.: When a party fails to timely disclose an expert’s trial opinions and report as required by Rule 26(a)(2), Rule 37©(1) requires exclusion unless the failure is shown to be substantially justified or harmless, assessed under the Southern States factors; cross-examination at trial does not, by itself, cure the prejudice from lack of discovery.

- US Inventor 24-1396.pdf

Use of post-filing events to cure standing defects and arguments first raised in reply.: Post-filing events can cure Article III standing defects only through a proper supplemental pleading under Rule 15(d); new standing theories based on events after filing that are raised for the first time in a reply brief do not establish standing on appeal.

- US Synthetic 23-1217.pdf

Whether an enablement argument raised for the first time on appeal can be considered.: An enablement theory not presented to the ALJ or Commission is forfeited on appeal absent exceptional circumstances, and will not be addressed as a new ground for invalidity.

- Wash World 23-1841.pdf

Preservation of a request for remittitur of a specific damages component tied to convoyed sales.: A remittitur issue is preserved when the movant repeatedly objected to the challenged damages theory and, in context, provided sufficient notice and record support such that the district court and opposing party understood the requested reduction, even if the movant did not initially specify the exact deduction in a single explicit request.

PROSECUTION_HISTORY_DISCLAIMER_OR_ESTOPPEL

- Finesse Wireless 24-1039.pdf

Whether amending claims to recite “three signals” constituted a prosecution-history surrender of implementations with only two unique input signals for the ’775 patent.: Claim amendments do not create prosecution-history disclaimer unless the record shows a clear and unambiguous disavowal; adding “three signals” did not unmistakably surrender systems using two unique inputs where the claim construction required only separately identifiable signals.

- Focus Products 23-1446.pdf

Prosecution history disclaimer narrowing “ring” to exclude a flat upper edge for ’248 and ’609 patents.: An applicant’s election of a restricted species, combined with acquiescence to the examiner’s repeated withdrawal/cancellation of claims directed to a nonelected species, can amount to clear and unmistakable disavowal of that nonelected claim scope, limiting claim meaning notwithstanding broader ordinary usage.

- Iqris 23-2062.pdf

Whether “pull cord” excludes a cord that includes a handle and whether prior-art criticism narrows the claim.: Disparagement of prior art narrows claim scope only with clear and unequivocal expressions of exclusion; criticizing prior-art reassembly difficulties did not disclaim pull cords with handles, especially where the figures contemplate a gripping feature.

- Magema Tech. 24-1342.pdf

(no holding tagged to this category)

- Maquet Cardovascular 23-2045.pdf

Whether prosecution history of a related patent supports importing a negative limitation into a later claim with different language: Prosecution disclaimer from a related patent prosecution is relevant only when the earlier prosecution addresses a limitation in common with the claim term being construed; material differences in claim language (e.g., claiming an “entire elongate lumen distal to” a component versus a “guide mechanism comprising a lumen”) defeat reliance on that history to import a negative limitation.
Application of disclaimer based on examiner-requested revisions and applicant acquiescence across related patents: A court may not import a negative limitation into a claim based on an alleged disclaimer tied to different claim limitations in a related patent; “common subject matter” alone is insufficient—disclaimer analysis must remain tethered to the specific claim language being construed.
Whether silence in response to an examiner’s notice of allowance creates prosecution disclaimer: An applicant’s silence in response to an examiner’s notice of allowance generally does not constitute a clear-and-unmistakable disavowal sufficient for prosecution disclaimer.
Whether patentee statements in IPR proceedings can create disclaimer, and what level of clarity is required: Statements made by a patent owner in an IPR proceeding may support prosecution disclaimer in claim construction only if they are clear and unmistakable; vague reliance on an examiner’s prior allowance over art, without tying the argument to the specific claim limitation, does not disclaim scope.

- Mondis 23-2117.pdf

Whether prosecution history/examiner allowance of an amendment provides substantial evidence that the amended claim satisfies § 112(a).: Examiner allowance of amended claims—particularly where the record shows the amendment was accepted to distinguish prior art—does not by itself provide substantial evidence that the specification contains written-description support for the amendment.

- Restem 23-2054.pdf

Effect of prosecution history on claim scope despite specification lexicography.: Clear examiner statements characterizing the allowed claim scope, coupled with applicant acquiescence during prosecution, can narrow claim scope (here, to a “cell population”), and that narrowed understanding may control over broader specification disclosures/definitions.

- Top Brand 24-2191.pdf

Whether prosecution history disclaimer can limit the scope of a design patent.: Prosecution history disclaimer applies to design patents: a design patentee may surrender claim scope through unambiguous arguments made to the PTO, and those representations must be given effect in determining claim scope.

REISSUE_REEXAM

- In re Kostik 23-1437.pdf

Proper comparator for determining whether a reissue claim broadens claim scope under 35 U.S.C. § 251(d).: In assessing broadening under § 251(d), the inquiry compares the reissue claim’s scope to the actual scope of the original claims as written and properly construed, not to the inventors’ subjective “intended” claim scope.
Test for whether a reissue claim is broader than an original claim.: A reissue claim is broader if it encompasses at least one conceivable process or apparatus that would not have infringed any claim of the original patent.

- Merck Sharp & Dohme 23-2254.pdf [NEEDS_REVIEW]

Effect of reissue on PTE eligibility/measurement where the original patent is surrendered and replaced by a reissue patent.: The fact that the original patent is surrendered and no longer enforceable as such does not prevent using the original patent’s issue date to calculate PTE, because the reissue patent inherits the unexpired term of the original patent and § 156 extends that term to restore time lost to FDA review.

REMAND_INSTRUCTIONS_AND_SCOPE

- Global Health 23-2009.pdf

(no holding tagged to this category)

- In re Brunetti 23-1539.pdf [NEEDS_REVIEW]

(no holding tagged to this category)

- Sigray 23-2211.pdf

Proper appellate disposition for claims challenged only on obviousness theories when the Board’s decision was reached under an erroneous claim-scope premise.: Where certain claims were not asserted as anticipated and require an obviousness determination, the appropriate course is to vacate and remand for the Board to evaluate obviousness in the first instance consistent with the corrected claim construction and anticipation ruling.

- Smartrend 24-1616.pdf

Remedy for erroneous claim construction affecting the design-patent infringement verdict.: When a jury’s design-patent infringement finding rests on an incorrect claim construction that expands the claimed design features, the proper remedy is to vacate the infringement judgment and remand for a new trial under the correct construction.

- Trudell Medical 23-1777.pdf

Proper scope of proceedings on remand after reversal for improper admission of late/unreliable expert testimony.: After a new-trial remand based on improper admission of undisclosed expert testimony, the district court may confine the record to evidence already produced/admitted and exclude the improper testimony, and it may deny reopening discovery where the nondisclosing party previously elected not to provide timely expert disclosures.

REMEDIES_CONTRIBUTORY_ISSUES

- AMS-Osram 22-2185.pdf

Determining and applying a head-start period for trade-secret remedies: The head-start period is a practical, fact-dependent measure of the misappropriator’s competitive/marketing advantage compared to lawful acquisition, and a district court does not clearly err by selecting a period supported by evidence of time to develop a competitive product absent misappropriation.
Causation/attribution for disgorgement based on a pre-head-start design win leading to later sales: A court may disgorge profits from later sales where a tainted pre-head-start event (such as a required vendor/design approval) was a necessary precondition to those sales and the evidence supports attributing the profits to the misappropriated information, without requiring further apportionment on this record.

- Jazz Pharma 24-2274.pdf

Whether the injunction could bar applying for FDA approval if such submission is treated as an artificial act of infringement under §271(e)(2).: If submission of a paper NDA for an additional indication is an act of infringement under §271(e)(2), the court’s authority is limited to the remedies specified in §271(e)(4), which do not include enjoining the filing of the FDA application itself; the district court must address this statutory characterization and remedy limitation on remand.

- Wash World 23-1841.pdf

Proper remedy where the unsupported damages component is identifiable and separable.: When the record shows the jury adopted an expert’s damages figure that includes an unsupported, quantifiable convoyed-sales component, the appropriate disposition is vacatur and remand with instructions to remit the award by the identifiable amount and enter judgment for the reduced total.

SANCTIONS

- Escapex IP 24-1201.pdf

Whether § 1927 sanctions were proper for filing and maintaining a frivolous post-judgment motion.: Section 1927 sanctions are appropriate when counsel, viewed objectively, acts intentionally or recklessly in disregard of duties to the court by filing and refusing to withdraw a frivolous motion that unreasonably and vexatiously multiplies proceedings; zealous advocacy does not excuse such conduct.

- Future Link 23-1056.pdf

Rule 11 pre-suit investigation in patent infringement cases: For Rule 11 in a patent case, counsel must at minimum interpret the asserted claims and make a good-faith, informed comparison to the accused product; physical testing of the accused product is not categorically required, and reliance on technical documents can suffice when it provides a sufficient factual basis for the infringement contention.
Rule 11 improper-purpose allegations and but-for causation (Fifth Circuit): Under Fifth Circuit Rule 11 law, an alleged improper purpose is not sanctionable unless it was the but-for cause of filing; if a reasonably clear legal justification exists for the filing, sanctions for improper purpose are inappropriate.
28 U.S.C. § 1927 sanctions standard (Fifth Circuit): Section 1927 sanctions require a higher showing than Rule 11—clear and convincing evidence of unreasonable and vexatious multiplication of proceedings coupled with bad faith/improper motive/reckless disregard—and are sparingly applied; a district court does not abuse its discretion by denying § 1927 fees absent that showing.

STANDARD_OF_REVIEW_AND_EVIDENTIARY_RULINGS

- Adnexus 24-1551.pdf

Materials considered on a Rule 12(b)(6) motion in this posture.: On de novo review of a Rule 12(b)(6) dismissal, the court may consider documents attached to the complaint (and central/referenced documents), and factual allegations within those attachments that are incorporated into the complaint must be credited at the motion-to-dismiss stage.

- Akamai 24-1571.pdf

(no holding tagged to this category)

- Alivecor 23-1512.pdf

(no holding tagged to this category)

- Alnylam Pharma 23-2357.pdf

Standard of review for claim construction based solely on intrinsic evidence.: When claim construction is resolved on intrinsic evidence alone, appellate review is de novo rather than deferential fact review under Teva.

- Ancora 23-1674.pdf

Whether the Board’s rejection of license evidence for lack of nexus was supported by substantial evidence.: A nexus finding is not supported by substantial evidence where the Board applies an unduly exacting legal standard and misreads the license record (e.g., treating an exhibit as listing licensed patents when it lists excluded patents), necessitating vacatur and remand for proper nexus evaluation and reweighing against the prima facie case.

- Apex Bank 23-2143.pdf [NEEDS_REVIEW]

Appellate standard of review for TTAB likelihood-of-confusion decisions.: Likelihood of confusion is a legal conclusion reviewed de novo, but each DuPont factor is an underlying factual finding reviewed for substantial evidence; legal error in the Board’s factor framework warrants vacatur and remand notwithstanding deference to factfinding.

- Apple 23-1501.pdf

Whether claim 4 would have been obvious once the properly-submitted evidence is considered, and the proper appellate remedy.: When the record, including improperly-ignored testimony, leaves no reasonable dispute that a person of ordinary skill would have been motivated to adopt the claimed arrangement (fixing components to maintain necessary overlap) and only one factual finding is permissible, the Federal Circuit may reverse rather than remand.

- Barrette Outdoor Living 24-1231.pdf

Whether a patentee may argue on appeal that “projection” differs in scope from “boss.”: A party cannot adopt on appeal a claim-construction position inconsistent with the one presented to the district court; having argued “boss” meant a “projection or protrusion,” the patentee forfeited a later attempt to distinguish “projection” from “boss.”

- Bearbox 23-1922.pdf [NEEDS_REVIEW]

Whether the district court abused its discretion by striking an untimely supplemental expert report served after the close of expert discovery without leave or consent.: A district court may exclude a late supplemental expert report that introduces new theories/opinions in violation of a scheduling order, particularly where the proffered justification is unpersuasive and the Pennypack factors (prejudice, inability to cure, disruption, bad faith/willfulness, and limited importance) support exclusion.

- Broad Institute 22-1653.pdf

Whether conception requires inventors to know the invention will work or to have proven functional success.: Conception does not require knowledge that the invention will work; requiring proof or certainty of operability improperly conflates conception with reduction to practice.
Whether the PTAB may treat inventors’ contemporaneous doubts and experimental difficulties as dispositive of lack of a “definite and permanent idea” without analyzing the nature of any subsequent changes.: In applying the “definite and permanent idea” test, the factfinder must distinguish general uncertainty in experimental science from factual uncertainty that undermines definiteness, including by considering whether post-conception activity involved substantive modifications to the inventor’s original idea rather than routine confirmatory work.
Whether the PTAB may disregard ordinary-skill/routine-techniques evidence and third-party successes when assessing conception.: Conception requires that only ordinary skill be needed to reduce the invention to practice without extensive experimentation; evidence about routine methods and third-party successes or failures is relevant to that inquiry and cannot be categorically disregarded.

- Bullshine Distillery 23-1682.pdf [NEEDS_REVIEW]

Appellate review of TTAB genericness findings.: Genericness is a question of fact reviewed for substantial evidence, and the Federal Circuit will affirm where the record contains adequate evidence supporting the Board’s finding even if contrary evidence exists.

- CQV 23-1027.pdf

Substantial-evidence review in light of record evidence that detracts from the agency’s conclusion.: Substantial-evidence review requires examination of the record as a whole, including evidence that detracts from the agency’s conclusion; a decision is not supported where the tribunal’s opinion does not reveal how it evaluated significant contrary evidence on a dispositive factual question.

- Canatex Completion 24-1466.pdf

Role of prosecution history and extrinsic evidence in deciding judicial correction and indefiniteness here.: Judicial correction is foreclosed if prosecution history suggests another meaning, but absent such indication—and where expert testimony provides no extra-patent facts—claim interpretation and judicial correction based on intrinsic evidence are reviewed and decided de novo.

- Ceramtec 23-1502.pdf [NEEDS_REVIEW]

Review of TTAB evidentiary assessments and treatment of experimental testing.: The TTAB, as factfinder, may discount experimental results where supported expert criticism shows methodological flaws or incompleteness relative to the scope of the claimed feature, and such credibility/weight determinations are upheld if supported by substantial evidence.

- Coda Development 23-1880.pdf

Definiteness requirement for identifying an asserted trade secret for adjudication.: A plaintiff must define the asserted trade secret with sufficient particularity to permit evaluating protectability and determining appropriation; broad, vague, function- or component-lists that do not identify the protectable design/development information are not sufficiently definite.
Proof of unauthorized use of a claimed combination trade secret.: Evidence that the defendant used only a few elements of an asserted multi-element trade secret, coupled with conclusory expert assertions and without competent proof of substantial, non-public use of the claimed secret, is insufficient as a matter of law to establish unauthorized use.

- Colibri Heart Valve 23-2153.pdf

Standard of appellate review for JMOL and prosecution history estoppel in this procedural posture.: On appeal from a district court in the Ninth Circuit, JMOL is reviewed under the regional circuit’s standard, but prosecution history estoppel is a question of law reviewed de novo under Federal Circuit law.

- Dollar Financial Group 23-1375.pdf [NEEDS_REVIEW]

How to review and sustain TTAB likelihood-of-confusion findings under DuPont.: Likelihood of confusion is a legal determination reviewed in light of subsidiary factual findings on the relevant DuPont factors, which are upheld if supported by substantial evidence; the Board need consider only factors relevant and of record.

- Duke Univ. 24-1078.pdf

Reversal of a jury verdict on written description under JMOL standards: A JMOL overturning a no-invalidity verdict is warranted when, viewing the evidence favorably to the patentee and without weighing credibility, the only reasonable conclusion is that invalidity for lack of written description was proven by clear and convincing evidence.

- Ecofactor 23-1101.pdf

Rule 702 requires the proponent to show the expert’s key factual premise is supported by sufficient facts/data; contrary unambiguous documentary evidence renders the opinion inadmissible.: A damages expert’s opinion that prior licenses establish a per-unit royalty is inadmissible under Rule 702(b) when the licenses’ unambiguous text does not support (and may expressly disclaim) the asserted per-unit royalty basis, and the expert’s premise is therefore untethered to the relied-upon evidence.
Scope of evidence for assessing sufficiency of an expert’s factual basis under Rule 702(b).: In evaluating whether an expert’s testimony is “based on sufficient facts or data,” the court focuses on the facts/data the expert actually relied upon; other record evidence not relied on cannot cure an insufficiency in the expert’s stated basis for the opinion being offered.

- Egenera 23-1428.pdf

Preservation and standard of review for new-trial challenges based on evidence/argument.: Under regional-circuit law, denial of a new trial is affirmed absent abuse of discretion; unobjected-to alleged violations during trial (including closing argument) are reviewed only for plain error, and pretrial in limine rulings may require renewed, context-specific objections at trial to preserve challenges to testimony.

- Escapex IP 24-1201.pdf

Whether appellate deference depends on how long the transferee district court handled the case or whether the merits were fully litigated.: Abuse-of-discretion review applies to § 285, Rule 59(e), and § 1927 rulings without adjustment based on the duration of the district court’s involvement, and a district court may base a fee award on issues not fully adjudicated on the merits so long as the exceptional-case determination is supported under the governing standards.

- Eye Therapies 23-2173.pdf

(no holding tagged to this category)

- FMC 24-2335.pdf

(no holding tagged to this category)

- Finesse Wireless 24-1039.pdf

Whether ambiguous “pivot” testimony can cure an expert’s express mapping that makes infringement impossible under the claim requirement (sampling signals that exist only downstream of sampling).: A jury cannot reasonably infer satisfaction of a claim limitation from vague or confusing expert assertions that do not expressly and coherently identify the accused structure/function meeting the limitation, particularly where the expert repeatedly maintains an impossible mapping.

- Fintiv 23-2312.pdf

Standard of review for § 112 ¶ 6/indefiniteness determinations in claim construction.: Whether claim language invokes § 112 ¶ 6 and the resulting claim construction are reviewed de novo when based on intrinsic evidence, while any underlying factual findings based on extrinsic evidence are reviewed for clear error.

- Focus Products 23-1446.pdf

’088 patent construction and adequacy of summary-judgment infringement analysis for “projecting edge” vs “outer circumference.”: Adopting a construction consistent with the specification does not excuse an unexplained infringement mapping; at summary judgment the court must articulate, with reference to the construed terms and intrinsic record, how it identifies the complete “outer circumference” and then what structure, if any, “projects from” it as a “projecting edge,” especially where intrinsic embodiments suggest the accused structure may lack that feature.

- Fraunhofer-Gesellshaft 23-2267.pdf [NEEDS_REVIEW]

How Rule 56 applies to an equitable-estoppel defense decided on summary judgment.: Summary judgment on an affirmative defense is improper when the movant’s evidence does not compel findings on each element and the record permits a reasonable factfinder to reject reliance when all inferences are drawn in favor of the nonmovant.

- Future Link 23-1056.pdf

(no holding tagged to this category)

- Game Plan 24-1407.pdf

Whether the TTAB properly refused to consider materials filed with summary judgment papers but not introduced during the testimony period.: In TTAB trials, documents attached to pleadings or motions (including summary-judgment filings) are not evidence unless properly made of record during the trial/testimony period (e.g., via notice of reliance or testimony); the Board does not abuse its discretion by excluding or disregarding such materials.

- Global Health 23-2009.pdf

Effect of the Board’s erroneous focus on who conceived first.: Although it is error in an AIA derivation proceeding to frame the dispute as who was first to conceive, the error is harmless where the Board’s finding that the respondent conceived earlier necessarily establishes independent conception and thus defeats derivation.

- HD Silicon 23-1397.pdf

Substantial-evidence review of PTAB factual findings on motivation to combine and teachings away/disfavor arguments.: The Board’s motivation-to-combine findings and its rejection of arguments that the primary reference disfavored certain techniques are upheld when supported by substantial evidence and reasoned explanation; the Federal Circuit will not reweigh competing evidence on appeal.

- Heritage Alliance 24-1155.pdf [NEEDS_REVIEW]

Sufficiency and weight of limited declaration evidence to prove acquired distinctiveness.: The Board may give little weight to conclusory, form declarations—especially from non-random or interested individuals and without context about the relevant market—when the record does not support an inference that the declarations reflect marketplace consumer perception.

- Honeywell 23-1354.pdf

Whether expert testimony can constitute substantial evidence when it is plainly inconsistent with the record or conclusory.: The court must disregard expert testimony that is plainly inconsistent with the record, and conclusory expert assertions do not amount to substantial evidence supporting the Board’s findings.

- IGT 23-2262.pdf

(no holding tagged to this category)

- Immunogen 23-1762.pdf

Appellate review of obviousness after bench trial.: On appeal from a bench trial, the ultimate obviousness conclusion is reviewed de novo, while motivation to combine and reasonable expectation of success are factual determinations reviewed for clear error, with deference where the trial court’s account of the evidence is plausible on the full record.

- In re Bayou Grand Coffee 24-1118.pdf [NEEDS_REVIEW]

Whether a term that names a specific good can be generic for retail/restaurant-type services featuring broader categories of goods absent evidence the specific good is offered.: To find a term generic for retail/food-service services on a “key aspect of the genus” theory, substantial evidence must show the named good is actually a key aspect/feature of the identified services; mere evidence that the public understands the term to name a particular product is insufficient if there is no evidence the services sell or feature that product.
Whether the mark was merely descriptive of cafés and coffee shops based on the mark’s meaning as a specific Kashmiri green tea.: A term is not merely descriptive of services unless the record supports that it immediately conveys a quality/feature/characteristic of those services; where there is no evidence the services offer the named product, the PTO’s descriptiveness conclusion lacks substantial evidence.

- In re Brunetti 23-1539.pdf [NEEDS_REVIEW]

Whether the Board’s decision satisfied APA reasoned-decisionmaking and provided a sufficiently clear standard to permit substantial-evidence review of its failure-to-function finding.: Under the APA and Chenery/State Farm principles, the Board must articulate a coherent, adequately explained rationale and sufficiently precise findings to enable meaningful appellate scrutiny; where the Board fails to specify the operative standard and the evidence needed to meet or rebut it (instead suggesting an “I know it when I see it” approach), vacatur and remand are required.

- In re Foster 23-1527.pdf [NEEDS_REVIEW]

What is the relevant time for assessing “false suggestion of a connection” under Lanham Act § 2(a) in an ex parte refusal-to-register proceeding?: In a refusal-to-register proceeding, § 2(a) false-connection registrability is assessed as of the time of examination, so the Board may consider evidence that comes into existence during the examination process up through the Board’s final decision on reconsideration.
Whether the Board erred by considering evidence post-dating the application filing date in its § 2(a) false-connection analysis.: The Board does not err by relying on evidence that post-dates the filing date when that evidence exists during the examination window; the applicant must show reliance on evidence beyond the proper examination endpoint to establish timing error.
Standard of review for § 2(a) false-suggestion determinations.: Whether a mark falsely suggests a connection is a legal question reviewed de novo, based on underlying factual findings reviewed for substantial evidence.

- In re Kostik 23-1437.pdf

Appellate review and reach of alternative PTAB grounds.: When the Board sustains multiple independent rejections, affirmance on one independently sufficient ground (here, the § 251(d) broadening bar) allows the court to decline to reach the merits of an alternative obviousness rejection.

- In re PT Medisafe Tech. 23-1573.pdf [NEEDS_REVIEW]

Substantial-evidence support for finding the color generic and for discounting survey/declaration evidence.: Substantial evidence supported the Board’s finding that the dark green color was so commonly used for chloroprene medical examination gloves that it could not identify a single source, and the Board acted within its factfinding role in giving little or no weight to non-representative declarations and a methodologically flawed, counsel-administered survey.

- In re Vetements Group 23-2050.pdf [NEEDS_REVIEW]

Standards of review for TTAB refusals based on genericness/translation likelihood.: The court reviews legal standards (including the correct test for genericness) de novo, but reviews the Board’s factual determinations—including whether consumers would translate and whether the term is generic—for substantial evidence.

- In re Xencor 24-1870.pdf

Appellate review of PTAB/ARP fact findings and expert credibility on written description.: Written description is a question of fact reviewed for substantial evidence, and the court defers to the Board’s credibility findings regarding expert testimony when supported by the record.

- Incyte Pharma 23-1300.pdf

(no holding tagged to this category)

- Ingenico 23-1367.pdf

Effect of a general jury verdict finding invalidity on multiple alternative theories.: A general verdict of invalidity must be affirmed if substantial evidence supports any one of the alternative invalidity theories submitted to the jury, so the appellate court need not reach other theories once one is adequately supported.

- Inland Diamond 24-1106.pdf

What is required for a district court to grant summary judgment of invalidity on remand after vacatur for improper issue preclusion.: Any summary judgment of anticipation or obviousness must rest on the record made in court and must show that no reasonable jury could fail to find, by clear and convincing evidence, invalidity of the asserted claim as a whole; the court may not deem facts established merely because the Board found them.

- Iqris 23-2062.pdf

Effect of erroneous claim construction on summary judgment of noninfringement (literal and DOE).: When a summary judgment of noninfringement depends on an erroneous claim construction that improperly narrows claim scope, the judgment should be vacated and the infringement issues reconsidered under the correct construction.

- Janssen Pharma 25-1228.pdf

Relationship between the presumption and factfinding on motivation/expectation: An appellate court should not apply an overlapping-range presumption to truncate the obviousness inquiry when the district court has made supported factual findings that a skilled artisan lacked motivation to arrive at the claimed regimen and lacked a reasonable expectation of success.

- Jiaxing Super 23-1715.pdf

Whether excluding a substitute witness offered solely to authenticate preidentified documents (absent a rule requiring advance identification of the authenticating witness) is an abuse of discretion warranting a new trial on invalidity.: A district court abuses its discretion by excluding a competent substitute witness from authenticating previously identified documents based on a nonexistent requirement to pre-designate which witness will authenticate them, where the exclusion causes the underlying documents to be excluded and prejudicially impairs an invalidity defense.

- Kroy IP 23-1359.pdf

(no holding tagged to this category)

- Lab. Corp. 23-2350.pdf

JMOL standards applied to jury infringement verdicts.: On JMOL, even viewing evidence favorably to the verdict, judgment must be entered for the movant where the record lacks substantial evidence from which a reasonable jury could find infringement under the properly construed claims.

- Magema Tech. 24-1342.pdf

Harmless-error review where jury returned a general verdict after an improper/unsound theory was presented.: Under Fifth Circuit law, when a case is submitted on a general verdict and one theory was improperly submitted, reversal for a new trial is required unless the reviewing court is totally satisfied or reasonably certain the verdict was not based on the improper theory.
Abuse of discretion in denying a new trial despite acknowledging improper and prejudicial argument.: A district court abuses its discretion in denying a new trial where pervasive improper and prejudicial argument may have affected the verdict and the appellate court cannot discern the verdict’s basis from a general verdict form, making the error not harmless.

- Mondis 23-2117.pdf

Whether the district court properly denied JMOL upholding a jury verdict of no invalidity for written description.: Under JMOL review, where the only relevant evidence is the patent itself (which lacks the disclosure) and even the patentee’s expert concedes the specification does not expressly recite the challenged limitation, no reasonable jury could find adequate written-description support; JMOL of invalidity is required.

- Odyssey Logistics 23-2077.pdf

Whether Arthrex constituted the sort of intervening change in law that excuses forfeiture or requires reopening.: A change-in-law exception to forfeiture applies only when controlling precedent previously precluded the objection; because Odyssey was free to raise an Appointments Clause challenge earlier, Arthrex did not mandate setting aside forfeiture or compel reconsideration.

- Optics Cellular 22-1925.pdf

Admissibility of a large Apple–Qualcomm settlement agreement (not covering the asserted patents) and related expert “ballpark/check” testimony in a FRAND reasonable royalty trial.: Under Rule 403, settlement agreements with minimal probative value due to materially broader scope and litigation-settlement context, and where the expert does not meaningfully account for those differences, should be excluded when repeatedly presenting the large figure risks unfair prejudice by skewing the jury’s damages horizon, even if offered only as a reasonableness check.

- Powerblock 24-1177.pdf

Standard of review on appeal from a Rule 12(b)(6) dismissal based on § 101.: Dismissal under Rule 12(b)(6) is reviewed de novo under the regional circuit’s standard, and § 101 eligibility is also reviewed de novo.

- Regeneron 24-1965.pdf

(no holding tagged to this category)

- Regeneron Pharma 24-2351.pdf

Role of extrinsic evidence in construing whether separately listed claim elements can overlap.: If intrinsic evidence clearly supports separateness, a court need not rely on extrinsic evidence to alter that meaning; considering extrinsic evidence “for completeness” is permissible, and factual determinations about what the extrinsic record shows are reviewed for clear error.

- Rex Med. 24-1072.pdf

Admissibility of expert reasonable-royalty methodology relying on a portfolio settlement/license: When an expert relies on a lump-sum license covering multiple patents (and other rights) as a comparable, the methodology must reliably apportion the license consideration to the asserted patent(s); failure to allocate or otherwise tie value to the asserted patent renders the testimony unreliable and subject to exclusion.

- Sage Products 23-1603.pdf

(no holding tagged to this category)

- Sierra Wireless 23-1059.pdf

Whether the Board may rely on expert testimony offered from the perspective of a skilled artisan without determining the witness meets the Board’s own POSITA definition or is otherwise qualified as at least an ordinarily skilled artisan.: A witness offering expert testimony from the perspective of a skilled artisan must have at least ordinary skill in the art; the Board abuses its discretion by crediting such testimony without making a finding (supported by reasoning) that the witness satisfies the POSITA requirements (including via experience equivalency).

- Smartrend 24-1616.pdf

Whether Opti-Luxx preserved a challenge to the design-patent infringement expert’s qualifications to testify about the ordinary observer’s perspective.: A party forfeits a qualifications objection to expert testimony where it knew from the expert report the substance of the testimony and failed to object when the expert was offered and admitted; an objection raised only after the testimony begins is untimely.

- Steuben Foods 23-1790.pdf

(no holding tagged to this category)

- Sunkist Growers 24-1212.pdf [NEEDS_REVIEW]

Whether substantial evidence supported the TTAB’s finding that applicant marketed KIST to convey a “kiss” commercial impression based on a lips image.: A Board finding about a mark’s commercial impression must be supported by record evidence tied to the mark as applied-for and to consumer perception; reliance on a non-mark graphic appearing inconsistently in internal/limited marketing materials, without evidence of consumer exposure, cannot support a distinct commercial-impression finding.

- Top Brand 24-2191.pdf

Sufficiency of evidence for Lanham Act trademark infringement verdict (likelihood of confusion).: A trademark infringement verdict cannot stand without substantial evidence of likely confusion, including evidence that the accused term was used as a source identifier rather than merely descriptively, and de minimis or untethered instances of confusion are insufficient.

- Trudell Medical 23-1777.pdf

Whether the district court satisfied its gatekeeping duty under Fed. R. Evid. 702 for noninfringement expert testimony.: Expert opinions that are methodologically unsound—e.g., untethered from the court’s claim constructions or resting on interpretations the court rejected—are unreliable under Rule 702, and admitting such testimony without proper gatekeeping is an abuse of discretion.

- US Inventor 24-1396.pdf

(no holding tagged to this category)

- US Synthetic 23-1217.pdf

(no holding tagged to this category)

- USAA 23-1639.pdf

Whether the Federal Circuit may reach Alice step two when the district court stopped at step one.: Because patent eligibility is a legal question reviewed de novo, the appellate court may address Alice step two even where the district court decided only step one.
Whether material fact disputes about conventionality preclude summary judgment on § 101.: Section 101 may be resolved on summary judgment when the record shows no genuine dispute of material fact as to whether the claimed components/steps are conventional; asserted disputes fail where record evidence and precedent establish the elements (e.g., OCR and image capture/processing) were well-known and routine.

- Wonderland Switzerland 23-2043.pdf

Whether excluding an internal email chain under Rule 403 warranted a new trial on willfulness.: Excluding highly probative evidence bearing on willfulness is an abuse of discretion where the stated Rule 403 concerns are based on clear legal/factual errors (e.g., treating notice evidence as hearsay or invoking privilege without basis) and where prejudice/confusion could be mitigated through redaction or limiting instructions; when the exclusion likely affected the verdict, a new trial on willfulness is required.

- Wuhan Healthgen 23-1389.pdf

Appellate review of conflicting record evidence regarding whether aggregation could increase during storage/shipping.: Under substantial-evidence review, the Federal Circuit affirms the Commission’s factual finding if it is reasonable and supported by the record as a whole, even when some evidence could support a contrary inference; the appellant must show the record compels the opposite result.

STANDING_AND_CASE_OR_CONTROVERSY

- Aortic Innovations 24-1145.pdf

Appellate jurisdiction after PTO cancellation of asserted claims.: When the PTO cancels the asserted claims of a patent, there is no longer an actual case or controversy over that patent, and an appeal regarding it must be dismissed as moot for lack of Article III jurisdiction.

- Apple 23-1501.pdf

Whether the PTAB may conduct an IPR on a patent that expired before the petition was filed.: The PTAB has jurisdiction to institute and decide IPRs on expired patents; expiration does not remove the proceeding from the public-rights framework recognized in Oil States, and the patent’s continuing consequences (e.g., past-damages exposure) support a live controversy.

- CQV 23-1027.pdf

Article III standing to appeal a PTAB final written decision by a PGR petitioner.: A petitioner establishes injury-in-fact sufficient for Article III standing when the patentee’s communications to the petitioner’s U.S. customers about infringement, coupled with the petitioner’s existing or required indemnity obligations and ongoing product sales, create a concrete and particularized risk of infringement liability/economic harm; no “magic words” or explicit infringement threat are required.

- Casam 23-1769.pdf

Whether a complainant/appellant must prove patent ownership to establish Article III standing when the case is on a developed evidentiary record.: When standing depends on patent ownership and the case has progressed beyond the pleading stage with an evidentiary record, a party’s bare assertion of ownership is insufficient; the appellant must establish injury in fact with evidence, and the court may resolve standing based on the record even if the ITC did not decide ownership.

- Causam 24-1958.pdf

Article III standing for patent owner appealing IPR invalidation when ownership is the only contested injury-related fact.: An appellant has Article III standing to appeal a final written decision cancelling patent claims where it presents unrebutted record evidence that it is the assignee of record and asserts ownership; such evidence satisfies the appellant’s production burden for standing in an agency-appeal posture.

- Curtin 23-2140.pdf

Whether Lexmark’s zone-of-interests and proximate-causation requirements govern entitlement to bring a Lanham Act § 1063 opposition.: Entitlement to oppose registration under 15 U.S.C. § 1063 is assessed under the Lexmark framework (zone of interests and proximate causation), and opposition and cancellation provisions (§ 1063 and § 1064) are construed consistently given their linguistic and functional equivalence.
Whether a consumer’s asserted interests fall within the zone of interests for opposing registration on genericness/descriptiveness/failure-to-function grounds.: For opposition grounds rooted in protecting competition and preventing monopolization of descriptive/generic terms, the zone of interests is commercial; a mere consumer’s interests in marketplace competition and product availability are not within the protected interests for those grounds.
Whether asserted consumer harms from registration satisfy Lexmark proximate causation for § 1063 opposition entitlement.: Alleged harms that are speculative and downstream of injuries first suffered by commercial actors (e.g., reduced competition, increased prices, chilled creation) are too remote and derivative to satisfy proximate causation required to invoke § 1063.
Role of Ritchie v. Simpson in determining entitlement to oppose under § 1063.: Ritchie does not control oppositions based on commercial-competition-related grounds (genericness/descriptiveness/failure to function); it is distinguishable because it addressed now-invalidated § 1052(a) immoral/scandalous matter and reputational disparagement interests, so Lexmark/Corcamore provide the governing analytical approach here.

- Dolby 23-2110.pdf

Whether 35 U.S.C. § 319’s authorization for a 'dissatisfied' party to appeal eliminates the need for Article III standing.: A statutory right to appeal under the AIA does not dispense with the constitutional requirement that the appellant show an injury in fact to invoke Federal Circuit jurisdiction.
Whether 35 U.S.C. § 312(a)(2)’s requirement that a petition identify all real parties in interest creates an informational right whose violation alone is an Article III injury.: The AIA’s RPI-identification requirement does not create a freestanding informational right analogous to public-disclosure statutes; failure to obtain an RPI adjudication in an IPR, without more, does not itself establish Article III injury in fact.
Whether speculative downstream harms from the PTAB’s refusal to adjudicate an RPI dispute constitute injury in fact when the patent owner prevailed on patentability.: Speculative allegations about possible license breaches, potential adjudicator conflicts, uncertain future estoppel application, or conjectural deterrence of future IPR filings are insufficient to establish a concrete and imminent injury in fact, particularly where the appellant does not seek to disturb a favorable merits outcome.

- Focus Products 23-1446.pdf

Standing to sue for trademark infringement of EZ ON mark at time of filing.: A Lanham Act plaintiff bears the burden to prove it owned the mark or otherwise had a protectable interest when suit was filed; ambiguous licensing provisions that do not unambiguously convey ownership, and a later assignment/registration occurring after filing, do not establish standing.

- Game Plan 24-1407.pdf

Whether the Federal Circuit had jurisdiction over the appeal from the TTAB’s final decision cancelling a registration and dismissing an opposition.: A TTAB final decision canceling a registration and dismissing an opposition is appealable to the Federal Circuit under 28 U.S.C. § 1295(a)(4)(B).

- In re Brunetti 23-1539.pdf [NEEDS_REVIEW]

Whether Iancu v. Brunetti (and First Amendment arguments) dictates registrability where the PTO refuses registration for failure to function.: A failure-to-function refusal turns on source-identification and is viewpoint neutral; Iancu v. Brunetti addressed a different statutory bar and does not control whether a different mark functions as a trademark, nor does prior registration of another mark guarantee registrability of the applied-for mark.

- In re Forest 23-1178.pdf [NEEDS_REVIEW]

Whether an applicant has Article III standing to appeal PTAB rejections when any resulting patent would issue after its expiration date.: An appeal must be dismissed where the appellant cannot obtain any enforceable patent rights from the requested relief; a patent that would issue only after its statutory term has already expired confers no cognizable stake in the appeal.

- In re Gesture 25-1075.pdf

Whether the PTAB lacks jurisdiction to conduct ex parte reexamination on an expired patent.: The Board has jurisdiction to conduct ex parte reexaminations of expired patents because the patent owner retains enforceable rights for past infringement, preserving a live controversy.

- Incyte Pharma 23-1300.pdf

Whether a PGR petitioner must show Article III standing to appeal an adverse PTAB final written decision.: A party may petition for and participate in a PGR without Article III standing, but must establish Article III standing (including injury in fact) to obtain Federal Circuit review of the Board’s decision; standing must exist at the time the notice of appeal is filed.
Whether potential infringement liability from future product development can establish injury in fact.: When relying on potential infringement liability, an appellant must show concrete, non-speculative plans for future activity that creates a substantial risk of infringement or is likely to prompt an infringement suit; speculative intentions contingent on overcoming development and regulatory hurdles are insufficient.
Whether conclusory declarations about intended dosage and product characteristics can establish concrete plans for infringement risk.: Conclusory assertions lacking supporting explanation or objective evidence (e.g., how a planned product would meet key claim limitations, including translating administration/dosing to claimed units and labeling/marketing that would drive infringement) are too speculative to establish injury in fact.
Whether competitor standing doctrine supplies injury in fact to appeal PTAB decisions upholding patent claims.: Competitor standing generally does not arise from the government’s action of upholding specific patent claims unless the challenger is currently practicing, or has non-speculative plans to practice, the claimed features; mere competitive proximity or benefit to the patentee is not enough without a concrete injury to the challenger.

- Mitek Systems 23-1687.pdf

Whether a supplier has declaratory-judgment jurisdiction to seek noninfringement based on a patentee’s enforcement against customers.: Under MedImmune’s all-the-circumstances test (as applied in DataTern), customer suits and general infringement allegations do not, without more, create an Article III controversy between patentee and supplier; the record must show a substantial, immediate, real dispute as to the supplier’s own potential infringement liability (direct or indirect).
Indemnity-based DJ standing for a supplier whose customers receive patentee licensing/infringement letters.: Indemnity-based standing requires a reasonable potential of actual indemnification liability under the specific agreements and an actual controversy involving the relevant indemnitee; the mere existence of indemnity demands or agreements is insufficient where carve-outs negate likely coverage or where a broken chain of indemnity/privity leaves no controversy between patentee and the putative indemnitee.

- Odyssey Logistics 23-2077.pdf

(no holding tagged to this category)

- Realtek 23-1187.pdf

Whether the court should decide Article III standing after finding a lack of statutory appellate jurisdiction.: Once the court determines it lacks statutory jurisdiction to hear the appeal, it does not reach standing or merits issues.

- Shockwave Medical 23-1864.pdf

Article III standing to appeal an IPR result based on potential infringement liability.: An IPR petitioner has standing to appeal when it shows concrete plans for near-term product activity creating a substantial risk of future infringement and a likelihood of a patentee suit, including through advanced development/regulatory steps and the patentee’s expressed intent to enforce broadly.

- US Inventor 24-1396.pdf

Associational standing to challenge PTO denial of a petition for rulemaking concerning discretionary institution criteria for IPR/PGR.: An advocacy organization lacks associational standing where it fails to identify at least one member with an injury in fact that is concrete and imminent; a claimed “risk of cancellation” is insufficient when it depends on a speculative chain of future third-party actions (filing of a petition, meeting statutory thresholds, and discretionary institution decisions).
Standing based on alleged future injury requiring predictions about third parties’ conduct.: Courts may reject as overly speculative standing theories that rest on predictions of future events—especially future actions by independent third parties—because such allegations are not treated as “facts” establishing an actual or imminent injury.
Procedural-right standing for denial of rulemaking petition.: The grant of a procedural right (such as the ability to petition for rulemaking) does not itself establish Article III standing absent a threatened concrete interest that the procedure is designed to protect; a plaintiff must show a concrete stake independent of the asserted procedural injury.
Distinguishing repeat-player standing recognized in Apple Inc. v. Vidal.: Repeat-player standing based on a substantial risk of recurring harm requires specific allegations showing that the same plaintiff is likely to encounter the challenged policy again; generalized assertions that members have faced IPRs/PGRs do not substitute for showing that any particular member faces a non-speculative, imminent risk traceable to the challenged agency action.

STATUTORY_BARS_ON_SALE_PUBLIC_USE

- Ingenico 23-1367.pdf

Whether substantial evidence supported the jury’s implicit finding of pre-AIA “public use” for the asserted prior-art system.: Public use under pre-AIA § 102(b) requires actual use, but that element may be proven through circumstantial evidence; evidence of public accessibility and encouragement/instructions to download and use software can permit a reasonable jury to infer actual use.

- Jiaxing Super 23-1715.pdf

Whether an expert’s unsupported assertion that products were on sale before the effective filing date can sustain an AIA on-sale-bar defense against JMOL.: To avoid JMOL on an AIA on-sale-bar theory, the accused infringer must present competent evidence that a claimed-invention-embodying product was the subject of a commercial offer for sale before the effective filing date; conclusory expert testimony not grounded in record evidence is insufficient by itself.

VENUE_TRANSFER_PERSONAL_JURISDICTION

- Focus Products 23-1446.pdf

Timeliness-based forfeiture of patent venue objection after TC Heartland.: Even though TC Heartland made certain venue defenses newly available such that Rule 12(g)/(h) waiver may not apply, a district court may deny a belated venue challenge on non-merits grounds where the defense was not timely presented and the defendant continued litigating post-TC Heartland; forfeiture is reviewed for abuse of discretion.

- Regeneron 24-1965.pdf

Specific personal jurisdiction over a foreign biosimilar applicant sued under § 271(e) in a forum state.: For § 271(e) actions, an aBLA filing and related commercialization steps (including notice of commercial marketing and a nationwide distribution/commercialization channel with no state carve-out and continued involvement with the distributor) can establish minimum contacts with a forum state; due process does not require express evidence singling out the forum when the record shows nationwide targeting that includes the forum.

Procedure - Preliminary Injunction

**FMC Corp. v. Sharda USA:

Whether McKenzie defeats a preliminary injunction via anticipation under the correct standard and without restricting the reference to preferred embodiments.: At the preliminary-injunction stage, an accused infringer need only raise a substantial question of invalidity; a court errs by effectively requiring proof of actual anticipation and by discounting an anticipation theory merely because it relies on non-preferred embodiments of a prior-art reference.

Sufficiency of Pleading

- Adnexus 24-1551.pdf

Sufficiency of pleading direct infringement of a specific limitation where the complaint incorporates claim charts and preliminary infringement contentions.: A patent complaint plausibly states direct infringement when it includes factual allegations (including in attached, incorporated claim charts/analyses) that, taken as true and with reasonable inferences drawn for the patentee, articulate why the accused product meets the challenged claim limitation; element-by-element pleading is not required, but factual content must support plausibility.

¹⁾

957 F.3d 1334, 1338–40 (Fed. Cir. 2020)

²⁾

935 F.3d 170 (Fed. Cir. 2019)

³⁾

790 F.3d 1315, 1323–24 (Fed. Cir. 2015)

⁴⁾

967 F.3d 1353, 1371 (Fed. Cir. 2020)

Table of Contents

2025 Federal Circuit Patent-Related Precedential Opinions

101 Eligibility

§ 102 - Anticipation

103 - OBVIOUSNESS

Nonobviousness Secondary-Considerations

Prior Art

§ 112 Enablement and Written Description

§ 112 INDEFINITENESS

Claim Construction

Claim Construction - Reliance on Intrinsic Evidence

Claim Construction - Prosecution disclaimer

112(f) Means Plus Function

IPR Institution

AIA_ESTOPEL_TIME_BARS_JURISDICTION

AIA_EVIDENCE_BURDENS_STANDARDS

AIA_MERITS_102_103_112

AIA_PROCEDURE_DUE_PROCESS_APA

DIRECT_INFRINGEMENT

DOCTRINE_OF_EQUIVALENTS

APPELLATE_JURISDICTION_FINALITY

ASSIGNMENT_OWNERSHIP_CHAIN_OF_TITLE

ATTORNEYS_FEES_OCTANE

BIOSIMILARS_HATCH_WAXMAN

DAMAGES_APPORTIONMENT_ENTIRE_MARKET_VALUE

DOUBLE_PATENTING

EXHAUSTION_AND_IMPLIED_LICENSE

INDIRECT_INFRINGEMENT

INJUNCTIONS_EBAY

INVENTORSHIP_CORRECTION

ITC_SECTION_337

LICENSE_CONTRACT_INTERPRETATION_PATENT_RELATED

Trademarks

?

Patent Term

PRECLUSION_RES_JUDICATA_COLLATERAL_ESTOPPEL

Claims to Priority

IPR Procedure

Jurisdiction

Damages

PREJUDGMENT_INTEREST_POSTJUDGMENT_INTEREST

PROCEDURAL_CIVIL_RULES

PROSECUTION_HISTORY_DISCLAIMER_OR_ESTOPPEL

REMAND_INSTRUCTIONS_AND_SCOPE

REMEDIES_CONTRIBUTORY_ISSUES

SANCTIONS

STANDARD_OF_REVIEW_AND_EVIDENTIARY_RULINGS

STANDING_AND_CASE_OR_CONTROVERSY

VENUE_TRANSFER_PERSONAL_JURISDICTION

Procedure - Preliminary Injunction

Sufficiency of Pleading