Enablement, obviousness, and the proof of damages. Utility and design patents in the Supreme Court and the Federal Circuit.
The Federal Circuit vacated the one-click preliminary injunction because Barnes & Noble raised a substantial question of validity Amazon could not rebut.
The Federal Circuit held a driveshaft manufacturing method ineligible under Section 101 for invoking Hooke's law, pushing Mayo deep into the mechanical arts.
The PTAB's precedential Fintiv order set six factors for denying IPR institution in view of a parallel trial, reshaping petitioner strategy.
The Supreme Court held that replacing the worn fabric of a patented convertible top is permissible repair, not infringing reconstruction of the combination.
The Federal Circuit's conception standard: inventorship fixes when the idea is definite and permanent, so NIH scientists confirming AZT were not co-inventors.
The Federal Circuit read a claim to require heating dough to 400 degrees, an absurd result, because courts construe claims as written.
The Supreme Court held in 1908 that a patentee who does not use its invention may still enjoin infringement, because the patent right is the right to exclude.
The Federal Circuit held a design patent for a pattern for a chair was not infringed by baskets, because claim language limits a design to its named article.
The Federal Circuit added two collaborators as co-inventors of Nobel-backed cancer-immunotherapy patents; contribution to conception need not span every claim.
The Federal Circuit voided a claim requiring an aesthetically pleasing interface, holding subjective terms need an objective anchor to be definite.
Federal Circuit held that clandestine, unauthorized planting of patented USDA grape varieties was not an invalidating public use, so the plant patents survived.
The Supreme Court's corset case held that use by one person, with no duty of secrecy, is an invalidating public use even when no one can see the invention.
The Supreme Court held the Hatch-Waxman safe harbor covers work to win FDA approval of medical devices, not just drugs.
The Federal Circuit's first RAND damages decision: juries must hear the patentee's actual RAND commitment and award only the incremental value of the invention.
The Ninth Circuit reversed the FTC: Qualcomm had no antitrust duty to license rival chipmakers, and FRAND breaches belong to contract and patent law.
The Supreme Court's foundational statement of the doctrine of equivalents: a device that works the same way for the same result can still infringe.
The Supreme Court voided a clay doorknob patent for want of invention, creating the 'ordinary mechanic' standard that Graham and Section 103 later codified.
The Federal Circuit held that in vitro and mouse-model data establish patent utility for a cancer drug candidate, well before FDA-grade human evidence exists.
The CCPA held a U.S. patent is prior art only as of its U.S. filing date, not its foreign priority date. The AIA later abolished the Hilmer doctrine.
The Federal Circuit held a lip-implant design claim cannot be anticipated by a look-alike art tool, because design claims are limited to their article.
The Federal Circuit set out the eight-factor test for whether practicing a claim demands undue experimentation, the USPTO's enablement standard today.
In 1895 the Supreme Court voided Sawyer and Man's claim to all fibrous incandescing conductors. The case remains the ancestor of full-scope enablement.
The Supreme Court held that a Section 145 applicant may introduce new evidence with no special limits, and the court must then find those facts de novo.
The Federal Circuit's en banc ruling held that gross negligence alone cannot prove the deceptive intent required for inequitable conduct.
The Federal Circuit held that a limited exclusion order cannot bar downstream products from companies never named as respondents, reshaping ITC remedy strategy.
In 1817 Justice Story held that useful means only not frivolous or immoral, setting the low utility bar that still governs patent law today.
The Federal Circuit held that specific rules for automating 3-D lip synchronization were a technological improvement, not an abstract idea under Section 101.
The Federal Circuit held that a single reference cannot anticipate by combining separate embodiments; the elements must appear arranged as in the claim.
The Sixth Circuit's four-factor lost-profits test (demand, no substitutes, capacity, profit) is still the default framework in patent damages cases.
The Supreme Court held that a federal agency is not a 'person' entitled to petition for AIA post-issuance review at the PTAB.
The en banc Federal Circuit allowed foreseeable lost profits on a competing unpatented product, but denied recovery on convoyed goods lacking a functional link.
The Federal Circuit held eBay's four-factor test does not govern ITC exclusion orders, which issue on a violation unless public-interest factors say otherwise.
The Federal Circuit ordered Teva to delist inhaler device patents, holding a patent must claim the drug's active ingredient for the FDA Orange Book.
Claim terms keep their ordinary meaning unless the patentee is its own lexicographer or clearly disavows scope. Consistent usage alone is not enough.
The Federal Circuit held U.S. courts should decline supplemental jurisdiction over foreign patent claims, forcing country-by-country enforcement.
The en banc Federal Circuit killed the strong presumption against means-plus-function treatment, holding that nonce words like module invoke Section 112.
The Federal Circuit held that secondary-considerations evidence lacks nexus when the feature driving a product's success was already disclosed in the prior art.
The Fifth Circuit's 1976 chrysanthemum ruling remains the fullest map of plant patent validity and infringement, centered on asexual reproduction.
A unanimous Supreme Court invalidated Amgen's antibody patents for failing to enable the full scope of what they claimed. The decision revives a demanding, century-old conception of the patent bargain with particular force in the life sciences.
Sitting en banc, the Federal Circuit overruled the four-decade-old Rosen-Durling framework and folded design-patent obviousness into the flexible Graham analysis used for utility patents. Design patents just became easier to challenge.
Sitting en banc, the Federal Circuit threw out a patent-damages verdict because the royalty expert's per-unit rate rested on lump-sum licenses that did not support it. The decision is a Rule 702 warning to the patent-damages bar.
The Federal Circuit affirmed the rejection of a cold-fusion patent application, holding that once the Patent Office shows skilled artisans would reasonably doubt an invention's utility, the burden shifts to the applicant to prove it works.
The Fifth Circuit held that a component supplier denied direct licenses to cellular standard-essential patents suffered no cognizable injury, dooming its FRAND-based antitrust claims against the Avanci pool.
The Supreme Court held that a PTAB ruling on the one-year time bar for inter partes review is part of the institution decision and therefore cannot be appealed under Section 314(d).
The Supreme Court held that decisions to institute inter partes review are largely unappealable and that the PTAB could apply the broadest-reasonable-interpretation claim-construction standard.
The Federal Circuit held that a first-filed, first-issued, later-expiring patent claim cannot be invalidated for double patenting by a later-issued, earlier-expiring family member, rescuing patent-term adjustment.
The Federal Circuit held that infringing a plant patent requires asexual reproduction from the patented plant itself; an independently bred look-alike does not infringe.
The Supreme Court's first reading of Section 103 set the durable framework for judging obviousness: scope of the prior art, differences, level of skill, and secondary considerations.
The Federal Circuit held that a prior patent on a drug inherently anticipated a later patent on the metabolite the body inevitably produces, even though no one knew the metabolite existed.
The Supreme Court held that large, unexplained reverse-payment patent settlements can violate antitrust law and must be judged under the rule of reason, not shielded by the patent's scope.
The Federal Circuit held that 'crucial' off-the-shelf components cannot prove a domestic industry; the economic prong of Section 337 demands a quantitative showing of real US investment.
The Federal Circuit removed a claimed co-inventor from Hormel's precooked-bacon patent, holding that a contribution mentioned only in passing was too insignificant to confer joint inventorship under the Pannu test.
The Federal Circuit held that infringement under 35 U.S.C. 271(g) for importing products made by a patented process does not require a single entity to perform every step of that process.
The Federal Circuit revived Apple's bid for a permanent injunction against Samsung, holding that a patented feature need only have some connection to consumer demand, not exclusively drive it, to support irreparable harm.
A unanimous Supreme Court saved the doctrine of equivalents but disciplined it, requiring an element-by-element test and presuming estoppel when a claim amendment goes unexplained.
The Federal Circuit's first precedential machine-learning eligibility ruling holds that applying off-the-shelf models to a new data environment claims an abstract idea under § 101.
The en banc Federal Circuit confirmed that Section 112 demands a written description separate from enablement, invalidating Ariad's NF-kB patent for claiming a result it never showed it possessed.
The Federal Circuit held that selling a product made by a secret process starts the on-sale clock against a later patent on that process, and the America Invents Act did nothing to change it.
The Supreme Court held that a genetically engineered, oil-eating bacterium is patentable subject matter, opening the door to modern biotechnology patents.
The Federal Circuit upheld the ITC's import ban on certain Apple Watch models, validating Masimo's pulse-oximetry patents and a domestic industry built on prototypes.
The Federal Circuit reversed a PTAB obviousness finding because the petitioner showed the prior art's pieces existed but never explained why a skilled artisan would assemble them that way.
The Supreme Court held that isolated human genes are unpatentable products of nature, while synthetic cDNA can be eligible because it is not naturally occurring.
The Federal Circuit revived an oil-well viscometer patent by holding that a term of degree must be measured against the intrinsic record before a court reaches for a dictionary, while affirming a separate means-plus-function construction.
The Federal Circuit held that comparison prior art in a design-patent case must be applied to the same article of manufacture claimed in the patent, reshaping the ordinary-observer test.
Judge Alsup wiped out a $32.5 million verdict by holding that Sonos's zone-scene patents were equitably unenforceable for prosecution laches. Then the Federal Circuit reversed on prejudice. A roadmap to the limits of the continuation game.
The Federal Circuit held that relative claim terms like resilient and pliable can be definite when the intrinsic record gives skilled readers reasonable certainty about their scope.
A Texas court dismissed a rose breeder's plant-patent claim because it never alleged how its rivals asexually reproduced the patented varieties, spotlighting the unusual infringement element baked into 35 U.S.C. §§ 161-164.
How a 1970 plywood dispute produced the fifteen-factor framework that still governs reasonable-royalty damages in nearly every U.S. patent case decades later.
The Federal Circuit held that obviousness-type double patenting is measured against a patent's post-PTA expiration date, reshaping prosecution strategy for patent families.
The Federal Circuit reaffirmed that 'a microprocessor' can mean one or more, but held that 'said microprocessor' requires a single processor capable of performing every recited function.
The Federal Circuit adopts a skilled-searcher standard for Section 315(e)(2) estoppel and places the burden of proving it on the patent owner, not the petitioner.
The Federal Circuit reversed a claim construction that read 'barcode' to exclude bit codes, holding that K-fee's statements to the European Patent Office were too ambiguous to disclaim the term's full ordinary meaning.
The Federal Circuit erased a $106M verdict, holding that canceling a broader claim during prosecution surrenders that subject matter for the doctrine of equivalents.
The Federal Circuit affirms a preliminary injunction barring a competing cancer-recurrence assay, sharpening how courts trace irreparable harm to the patented method through the causal-nexus requirement.
The Federal Circuit vacated a denial of a foreign anti-suit injunction, tying an SEP holder's right to injunctive relief to its good-faith FRAND-negotiation duty.
The Federal Circuit held that the Patent Act's word 'individual' means a human being, so an AI system called DABUS cannot be listed as an inventor, without deciding whether AI-assisted inventions are patentable at all.
The Federal Circuit's reinstated $235 million verdict in GSK v. Teva tests whether a generic's carve-out label can shield it from induced infringement of a method-of-treatment patent.
The Supreme Court held that a patent owner can recover lost foreign profits flowing from a domestic act of infringement under 35 U.S.C. § 271(f)(2).
The Federal Circuit held 'visually negligible' definite because it was anchored to what the normal human eye can perceive, supplying the objective baseline that purely subjective terms lack.
The Federal Circuit finally confirmed that eBay abolished the presumption of irreparable harm, yet reversed a district court that had used categorical reasoning to deny a competitor's permanent injunction.
The Federal Circuit vacated a global FRAND license set in a bench trial, holding that a 'release payment' for past infringement triggered the constitutional right to a jury.
The Supreme Court held that a patent licensee paying royalties under protest need not breach its license to bring a declaratory-judgment action challenging the patent.
The Federal Circuit held that whether a claim element is well-understood, routine, and conventional is a factual question that can defeat summary judgment of ineligibility under Section 101.
The Supreme Court held that a rubber-curing process is not unpatentable merely because it uses a mathematical formula and a programmed computer to control the cure.
A unanimous Supreme Court rejected the Federal Circuit's rigid Seagate test, restoring district courts' discretion to award up to treble damages under Section 284 for egregious, willful patent infringement.
The Supreme Court held that an authorized sale (anywhere in the world, and despite any post-sale restriction) exhausts a patentee's rights, leaving only contract remedies.
A unanimous Supreme Court held that method patents are subject to exhaustion and that an authorized sale of components substantially embodying a patent ends the patentee's rights.
A unanimous Supreme Court held that implementing an abstract idea on a generic computer adds nothing patentable, extending the Mayo framework to software and business methods.
A unanimous Supreme Court held that patent exhaustion does not let a farmer grow successive generations of a patented seed, because planting and harvesting creates new copies rather than merely using a purchased one.
The Federal Circuit upheld an exclusion order against Comcast's set-top boxes, holding the ITC may act even where the inducing conduct is entirely domestic and Comcast itself imported nothing.
The Supreme Court held that a good-faith belief in a patent's invalidity does not negate the intent required for induced infringement, while reaffirming that inducement demands knowledge of infringement.
The Supreme Court abolished licensee estoppel, holding that federal patent policy lets a licensee stop paying royalties and challenge the validity of the licensed patent.
The Federal Circuit held that a prenatal test using cell-free fetal DNA was patent-ineligible because it detected a natural phenomenon with conventional techniques, even as judges questioned the result.
The Federal Circuit reversed a PTAB win for the patentee, holding that a claimed range overlapping the prior art creates a presumption of obviousness that applies in inter partes review just as in court.
The Federal Circuit refused patents on five expressed sequence tags whose only disclosed uses were generic research applications, sharpening the 'specific and substantial' utility standard for the genomics era.
The Federal Circuit held that a slide poster displayed at a scientific meeting can be prior art under §102(b) even though it was never distributed or indexed in any library.
A unanimous Supreme Court held that the 'article of manufacture' for design-patent damages under § 289 can be a single component, not necessarily the entire end product sold to consumers.
The Supreme Court held that subsidiary factual findings underlying a claim construction must be reviewed for clear error, narrowing decades of de novo appellate review.
The Supreme Court held that administrative patent judges wielded unconstitutional power and fixed the defect by giving the USPTO Director authority to review their decisions.
A unanimous Supreme Court read the Section 271(e)(1) safe harbor broadly, shielding preclinical experiments on patented compounds whenever there is a reasonable basis to believe they could inform an eventual FDA submission.
The Supreme Court holds that exporting the unassembled parts of a patented machine for assembly abroad is not 'making' the invention, prompting Congress to rewrite the statute a decade later.
Reversing a $1.2 billion judgment, the Federal Circuit held that a CAR-T patent claiming any antibody binding element failed written description because it disclosed no representative species or common structure for the vast scFv genus.
A 6-3 Supreme Court invoked stare decisis to reaffirm Brulotte's rule barring royalties for using a patent after it expires, leaving any change to Congress.
A 5-4 Supreme Court preserved assignor estoppel but confined it to cases where an inventor's invalidity attack contradicts a representation made in assigning the patent.
A unanimous Supreme Court discarded the rigid Brooks Furniture test, holding that an 'exceptional' case under 35 U.S.C. § 285 is simply one that stands out from the norm.
The Federal Circuit set out the durable standard for joint inventorship and confirmed that misjoinder or nonjoinder is not automatic invalidity, because the patentee must be given a chance to correct under Section 256.
The Federal Circuit vacated a $368 million award, holding that even the smallest salable unit must be apportioned to the patented features and rejecting the Nash Bargaining Solution as a disguised rule of thumb.
The Federal Circuit affirmed that decades of unreasonable, unexplained delay in prosecuting continuation applications can render the resulting patents unenforceable.
The Federal Circuit upheld internet-centric claims that were necessarily rooted in computer technology to solve a problem unique to online networks, the first eligible software claims after Alice.
The Supreme Court held that a formula for updating alarm limits is patent-ineligible where the only novelty is the algorithm and the rest is conventional post-solution activity.
The Supreme Court sustained Samuel Morse's telegraph patent but voided his eighth claim to every use of electromagnetism for printing at a distance as too broad and unsupported.
The Federal Circuit held that a self-referential database design was not an abstract idea, establishing that Alice step one is a meaningful filter for claims that improve computer functionality.
The Supreme Court held that inducing patent infringement under § 271(b) requires knowledge of infringement, but that willful blindness to a patent can supply that knowledge.
The Supreme Court held that combining naturally non-inhibitive strains of nitrogen-fixing bacteria was an unpatentable discovery of a product and phenomenon of nature.
The Supreme Court held that a method for converting binary-coded decimal numerals into pure binary is an unpatentable abstract idea because a patent would preempt the formula itself.
The Federal Circuit rejected any automatic prohibition on injunctions for FRAND-committed patents while affirming that Motorola could not meet the eBay standard for one.
The Federal Circuit affirmed a permanent injunction against a feature of Microsoft Word, showing how a small patentee can satisfy all four eBay factors against a dominant competitor when the injunction is carefully scoped.
The Federal Circuit's first major post-Nautilus decision held the phrase 'in an unobtrusive manner that does not distract a user' indefinite, illustrating how purely subjective language fails the reasonable-certainty test.
The Federal Circuit held that a later-issued, earlier-expiring patent can serve as a double-patenting reference, anchoring the doctrine to expiration dates in the post-URAA world.
The Supreme Court holds that supplying a single commodity component from the United States cannot trigger §271(f)(1) liability, reading 'substantial portion' as a quantitative measure.
The Supreme Court read the Plant Variety Protection Act's farmer exemption narrowly, holding that a grower may sell saved seed only in the amount needed to replant his own acreage.
A unanimous Supreme Court held that inducing infringement under Section 271(b) requires a predicate act of direct infringement, refusing to extend liability across divided method steps.
The Federal Circuit held that the ITC cannot bar infringing digital data transmitted electronically across the border, because Section 337 reaches only material things.
A co-inventor of even a single claim becomes a co-owner of the whole patent. The Federal Circuit let that overlooked inventor license the accused infringer and dismantle the case.
A unanimous Supreme Court held that a generic drugmaker may use the Hatch-Waxman counterclaim to force a brand to correct an overbroad Orange Book use code that was blocking a lawful skinny-label generic.
Sitting en banc, the Federal Circuit scrapped the separate point-of-novelty test for design-patent infringement and made the prior-art-informed ordinary observer the sole standard.
The Supreme Court held that a confidential commercial sale to a third party can place an invention 'on sale' under the AIA, just as it did under the prior statute.
The Federal Circuit vacated an obviousness judgment because the trial court declared the claims obvious first and only then asked whether objective indicia could rescue them.
The Federal Circuit held that an invention designed to fool consumers does not fail the utility requirement, retiring the long-dormant doctrine that deceptive or immoral inventions are unpatentable.
Sitting en banc, the Federal Circuit demoted the dictionary and elevated the patent's own specification as the single best guide to claim meaning.
The Supreme Court held that when the Patent Office institutes an inter partes review, it must decide the patentability of every claim the petitioner challenged: all or nothing.
A unanimous Supreme Court held that correlations between drug-metabolite levels and dosing were unpatentable laws of nature, and built the two-step test that would reshape Section 101.
A specification that disclosed a single rapamycin compound could not support claims reaching tens of thousands of structurally diverse molecules, the Federal Circuit held, because finding the active ones required excessive screening.
The Federal Circuit declared the once-ubiquitous 25 percent royalty shortcut a fundamentally flawed tool, inadmissible under Daubert because it never connects to the facts of the case.
The Supreme Court discarded the Federal Circuit's forgiving 'insolubly ambiguous' test and replaced it with a public-notice standard that asks whether a patent claim informs skilled artisans of its scope with reasonable certainty.
The Supreme Court refused to treat injunctive relief as an automatic consequence of patent infringement, restoring the traditional four-factor equity test and reshaping patent litigation for a generation.
The Federal Circuit held that a patentee cannot base a royalty on the price of a whole laptop when the invention covers only an optical-drive feature, recasting the entire market value rule as a demand-driven exception.
The Ninth Circuit affirmed the first judge-set RAND rate for standard-essential patents and a jury's $14.5 million breach-of-contract verdict against the patent holder.
The Supreme Court held that the Bayh-Dole Act does not automatically vest patent rights in a federally funded university. Title still begins with the inventor, and a stray 'do hereby assign' can send it elsewhere.
Sitting en banc, the Federal Circuit held that the ITC may bar imports used to induce infringement of a method claim performed only after the goods cross the border.
The Supreme Court holds that supplying a master disk of software from the United States, then copying it abroad, does not 'supply' the patented invention's components under §271(f).
The Supreme Court rejected hedging as an unpatentable abstract idea while refusing to make the machine-or-transformation test the exclusive gatekeeper for process patents.
The Supreme Court held that a novel process for making a chemical with no known use fails the utility requirement, planting the doctrinal seed of 'substantial' utility that still governs the chemical and biotech arts.
The Supreme Court rejected an absolute bar on equivalents after a narrowing amendment, replacing it with a rebuttable presumption that still governs the doctrine of equivalents today.
In the first design-patent case it ever heard, the Supreme Court rejected an expert-eye comparison and adopted the ordinary-observer test that still governs infringement more than 150 years later.
The Federal Circuit erased the largest patent verdict in U.S. history, holding that a functional nucleoside genus spanning billions of candidate molecules was neither enabled nor adequately described.
The Supreme Court held that ordinary utility patents are available for plants, and that neither the Plant Patent Act nor the Plant Variety Protection Act is the exclusive route to protecting a new variety.
The Supreme Court replaced the Federal Circuit's mechanical teaching-suggestion-motivation test with a flexible, common-sense obviousness inquiry that still governs every Section 103 dispute today.
The Supreme Court held that construing a patent claim is a question for the judge, not the jury, reshaping how every patent case is tried.
The Supreme Court held that inter partes review does not violate Article III or the Seventh Amendment because a patent is a public right the agency may reconsider.
The Supreme Court replaced the Federal Circuit's vague 'substantially complete' standard with a two-part on-sale-bar test that can start the clock before a prototype ever exists.
The Supreme Court's first reading of the biosimilars statute held that the BPCIA's elaborate pre-litigation information exchange cannot be forced by federal injunction, and that a biosimilar applicant may give its marketing notice before the FDA licenses the product.
The en banc Federal Circuit rebuilt the inequitable-conduct doctrine around but-for materiality and specific intent to deceive, narrowing the 'plague' of unenforceability defenses.
