Category Archives: CAFC Opinions

Subscribe to CAFC Opinions RSS Feed

Recent Guidance from the Federal Circuit on the Doctrine of Equivalents in Cases Involving Chemical Compositions

In Mylan Institutional LLC, et al. v. Aurobindo Pharma Ltd., et al., Case No. 2017-1645, the Federal Circuit affirmed the district court’s grant of a preliminary injunction as to one of three patents-in-suit, while finding that there was error in granting the injunction with respect to the other two patents. The patents-in-suit related to ISB, … Continue reading this entry

The Decision To Grant Rehearing En Banc In Apple v. Samsung

On October 7, 2016, the Federal Circuit issued another decision in the ongoing patent litigations between Apple and Samsung that began in the Northern District of California. The district court had found at summary judgment that Samsung infringed one of Apple’s patents.  The jury subsequently determined that Samsung infringed two others, and that the asserted … Continue reading this entry

Federal Circuit Finds Claims Implemented on a General Purpose Cellphone Not Patentable

In Alice Corp. v. CLS Bank International, the Supreme Court applied its two-part test for patent eligibility under 35 U.S.C. § 101 – i.e., (1) whether the claims are drawn on a law of nature, natural phenomenon or abstract idea, and (2) whether the claims provide sufficient “inventive concept.” In Alice, the Supreme Court ultimately … Continue reading this entry

Two Recent Decisions Put Alice "Step One" on Center Stage at The Federal Circuit

On May 12 and May 17, 2016, the Federal Circuit issued decisions in two § 101 cases, EnFish, LLC v. Microsoft Corp. and In re TLI Communications, LLC. Both authored by Judge Hughes, the decisions illustrate the difficult process of determining where to draw the line between a claim that is directed to an “abstract idea” under step … Continue reading this entry

In re: TC Heartland LLC: Status Quo for Venue Selection in Patent Suits (For Now)

The Federal Circuit, in In re: TC Heartland LLC (No. 2016-105), recently issued an opinion denying TC Heartland’s petition for a writ of mandamus to direct the U.S. District Court for the District of Delaware to either dismiss or transfer the patent infringement suit filed against it by Kraft Foods Group Brands LLC (“Kraft”).  This … Continue reading this entry

It’s a Jungle Out There: A Reexamination Certificate Containing Amended Claims May Be Insufficient to Vacate a Prior Judgment of Invalidity

In a case with a unique procedural history the Federal Circuit addressed whether claims amended during an ex parte reexamination proceeding required vacating a prior judgment of invalidity (on patent eligibility grounds) on the original claims. While stressing the discretion of the district court, the Federal Circuit in Cardpool, Inc. v. Plastic Jungle, Inc. (Fed. … Continue reading this entry

Patent Venue Legislation Could Have A Dramatic Impact on Popular Patent Venues

This month, three United States Senators introduced the “Venue Equity and Non-Uniformity Elimination Act of 2016.”  The bill would dramatically narrow the venue statute that applies to patent cases and, it appears, prevent most cases from being litigated in the popular venues for patent cases, such as the Eastern District of Texas.… Continue reading this entry

Federal Circuit Provides Additional Insight into the Scope of Board Institution-Related Decisions That Are Not Appealable

Just as inter parties review proceedings (“IPRs”) are limited in scope, addressing invalidity based only on patents and printed publications, practitioners should keep in mind that appellate review of United States Patent Trial and Appeal Board (“Board”) decisions from IPRs is similarly constrained. Indeed, much of what occurs in front of the Board is not … Continue reading this entry

Federal Circuit Finds Disclaimer Based on “Object of Invention” Language

The Federal Circuit’s recent decision in Pacing Technologies, LLC v. Garmin International, Inc.  (No. 2014-1396) provides patent litigators with a new tool for claim construction arguments and may make patent prosecutors reconsider their drafting techniques. The Federal Circuit held that a patent specification’s characterization of disclosed “objects of the invention”—a phrase commonly used by patent … Continue reading this entry

Federal Circuit Limits Patent Exhaustion Doctrine for Complementary Technology

In its 2013 decision in Keurig, Inc. v. Sturm Foods, Inc., the Federal Circuit held that a purveyor of coffee cartridges did not infringe Keurig’s coffee brewing patents because Keurig had already made an unrestricted sale of its brewing machines to end users, such that any further use of those machines was protected by the … Continue reading this entry

Has the Machine-or-Transformation Test Returned to Prominence in Patent Cases?

The machine-or-transformation test was once the gatekeeper of patent eligibility, but that reign ended in 2010 when the Supreme Court stated in Bilski that it is not the sole test for determining patentability. By 2013 the test became largely ignored, for example in the Federal Circuit’s Ultramercial opinion. When that opinion was vacated and remanded by the Supreme … Continue reading this entry

Defense to Patent Infringement if Acts Were Performed in a “Quasigovernmental” Capacity Pursuant to a Legal Obligation

A recent Federal Circuit opinion highlights a defense that is available to defendants whose alleged infringement occurred through activities that were undertaken for the United States. In particular, where the United States Government requires private parties to perform quasigovernmental functions pursuant to a legal obligation, a patent owner’s exclusive remedy is to bring a claim … Continue reading this entry

New Guidance From the Federal Circuit on Motions to Stay Litigation Pending a PTAB Proceeding

In VirtualAgility Inc. v. Salesforce.com, Inc., No. 2014-1232 (July 10, 2014), the Federal Circuit issued its first opinion directed to the issue of when it is appropriate to grant a stay of a district court patent infringement lawsuit while a covered business method review proceeding (“CBM”) occurs. The case will have important ramifications for future cases … Continue reading this entry

Supreme Court Hears Argument in Limelight v. Akamai

The Supreme Court heard argument yesterday in Limelight Networks, Inc. v. Akamai Techs., Inc., which concerns the standard for inducing patent infringement under 35 U.S.C. 271(b). For those who have not followed (or don’t recall) the case’s long and winding road to the Supreme Court, the plaintiff Akamai alleged infringement of method claims directed at … Continue reading this entry

"Patent Reform 2014" White Paper Available for Download

Over the past 2 years I’ve been closely following the slew of patent reform proposals in Congress, the Executive Branch, the Courts, and the 50 States.  I have yet to find a document that lists–much less explains–all the many, many proposals percolating in DC and across the country. So I wrote one: “PATENT REFORM 2014:  A Comprehensive Guide to Current … Continue reading this entry

Pre-Issuance Conduct May Support Declaratory Judgment Jurisdiction

On March 11, 2014, in Danisco US Inc. v. Novozymes A/S, No. 2013-1214 (Fed. Cir. Mar. 11, 2014), the Federal Circuit held that pre-issuance conduct can be considered when determining whether a declaratory judgment defendant has instigated a case of actual controversy. The Court reversed the district court’s order dismissing the Plaintiff’s declaratory judgment action … Continue reading this entry

District Courts Staying Cases Pending CLS Bank, but the Federal Circuit Decides One

In December, the Supreme Court granted certiorari in CLS Bank Int’l v. Alice Corp., No. 13-298, in which the question presented by the petitioner is “[w]hether claims to computer-implemented inventions — including claims to systems and machines, processes, and items of manufacture — are directed to patent-eligible subject matter within the meaning of 35 U.S.C. … Continue reading this entry

Supreme Court to Tackle Plenty of IP Issues in 2014

On January 10, 2014 the Supreme Court granted certiorari in two patent cases, one copyright case, and a fourth case that may have implications for federal trademark law. The Court had already granted certiorari in at least five other IP-related cases set for argument in 2014. Needless to say, it will be a busy year for IP … Continue reading this entry

Mischaracterizing Record of Ex Parte Reexamination May Constitute Inequitable Conduct

In Ohio Willow Wood Co. v. Alps South, LLC, No. 2012-1642 (Nov. 15, 2013) the Federal Circuit reversed a district court’s summary judgment ruling of no inequitable conduct and suggested in its decision that the patentee committed inequitable conduct before the USPTO. In Ohio Willow, the patentee allegedly withheld evidence and misrepresented testimony when appealing … Continue reading this entry

Good Faith Belief of Invalidity May Be Defense to Induced Infringement and Opinion Letters May Become Increasingly Important

The Federal Circuit recently denied a request for rehearing en banc in the matter of Commil USA, LLC v. Cisco Sys., Inc., in a 6-5 vote of the participating judges.  2013 U.S. App. LEXIS 21713 (Fed. Cir. Oct. 25, 2013) (“Commil II”).  The result is that evidence of a good faith belief of invalidity of … Continue reading this entry

The Joinder Provision of the AIA is Not a Substitute for Discretion

The Federal Circuit recently confirmed that district courts must still exercise discretion in deciding motions to sever where the heightened joinder requirements of the AIA are satisfied. In In re Nintendo, Co.¸ __ Fed. App’x __ (Fed. Cir. Sept. 25, 2013) (nonprecedential), UltimatePointer, LLC sued Nintendo and numerous video game retailers in the Eastern District of Texas … Continue reading this entry

Federal Circuit Addresses Design Patent Invalidity Standards

Practitioners working in the area of design patent litigation should take note of the Federal Circuit’s recent decision in High Point Design LLC v. Buyers Direct, Inc., No. 2012-1455 (Sept. 11, 2013), which provides guidance and instructions concerning design patent invalidity that are of the utmost importance to anyone seeking to invalidate or assert a design … Continue reading this entry