Enablement, obviousness, and the proof of damages — utility and design patents in the Supreme Court and the Federal Circuit.
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'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 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 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 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.
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.
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.
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 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.
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 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 verdict, 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.
The Federal Circuit set out the durable standard for joint inventorship and confirmed that misjoinder or nonjoinder is curable under Section 256 unless the patentee acted with deceptive intent.
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 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 the 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 — and 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.
