Below are cases decided by the en banc Federal Circuit on patent law issues. This page will attempt to track all relevant en banc Federal Circuit decisions.
2018
| Case | Issue(s) | Holding(s) |
| Click-To-Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321, 1328 (Fed. Cir. 2018) | Inter Partes Review Time Bar | “[Section] 315(b)’s time bar is implicated once a party receives notice through official delivery of a complaint in a civil action, irrespective of subsequent events…. [A] defendant served with a complaint as part of a civil action that is voluntarily dismissed without prejudice remains ‘served’ with the ‘complaint.’ This remains true even if that action becomes a nullity for other purposes and even if such service becomes legally irrelevant in a subsequent court action.” |
| Nantkwest, Inc. v. Iancu, 898 F.3d 1177 (Fed. Cir. 2018) | Section 145 Actions | “Applicants who invoke § 145 are required by statute to pay ‘[a]ll the expenses of the proceedings’ incurred by the U.S. Patent and Trademark Office (“PTO”) in defending the Board’s decision, regardless of the outcome.… [T]he agency argues that § 145 also compels applicants to pay its attorneys’ fees. We hold that it does not, for the American Rule prohibits courts from shifting attorneys’ fees from one party to another absent a ‘specific and explicit’ directive from Congress. The phrase ‘[a]ll the expenses of the proceedings’ falls short of this stringent standard.” |
| Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364 (Fed. Cir. 2018) | Inter Partes Review Time Bar | “Congress has prohibited the Director of the United States Patent and Trademark Office from instituting inter partes review if the petition requesting that review is filed more than one year after the petitioner, real party in interest, or privy of the petitioner is served with a complaint for patent infrin gement. 35 U.S.C. § 315(b)…. We recognize the strong presumption in favor of judicial review of agency actions. To overcome this presumption, Congress must clearly and convincingly indicate its intent to prohibit judicial review. We find no clear and convincing indication of such congressional intent. We therefore hold that the time-bar determinations under § 315(b) are appealable.” |
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2017
| Case | Issue(s) | Holding(s) |
| Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) | Inter Partes Review Claim Amendment | “[Section] 316(e) unambiguously requires the petitioner to prove all propositions of unpatentability, including for amended claims…. [T]he Board must consider the entirety of the record before it when assessing the patentability of amended claims under § 318(a) and must justify any conclusions of unpatentability with respect to amended claims based on that record…. The matter is remanded for the Board to issue a final decision under § 318(a) assessing the patentability of the proposed substitute claims without placing the burden of persuasion on the patent owner.” |
2016
| Case | Issue(s) | Holding(s) |
| Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034 (Fed. Cir. 2016) | Appellate Review Of Fact Findings | “We granted Apple’s en banc petition to affirm our understanding of the appellate function as limited to deciding the issues raised on appeal by the parties, deciding these issues only on the basis of the record made below, and as requiring appropriate deference be applied to the review of fact findings…. [T]he factual components of claim construction include ‘the background science or the meaning of a term in the relevant art during the relevant time period…. [S]uch fact findings are indisputably the province of the district court.” |
| Medicines Co. v. Hospira, Inc., 827 F.3d 1363 (Fed. Cir. 2016) | On Sale Bar | “[T]o be ‘on sale’ under § 102(b), a product must be the subject of a commercial sale or offer for sale, and that a commercial sale is one that bears the general hallmarks of a sale pursuant to Section 2-106 of the Uniform Commercial Code…. [N]o such invalidating commercial sale occurred in this case…. [M]ere sale of manufacturing services by a contract manufacturer to an inventor to create embodiments of a patented product for the inventor does not constitute a “commercial sale” of the invention…. [S]tockpiling by the purchaser of manufacturing services is not improper commercialization under § 102(b). We explain that commercial benefit—even to both parties in a transaction—is not enough to trigger the on-sale bar of § 102(b); the transaction must be one in which the product is ‘on sale’ in the sense that it is ‘commercially marketed.’” |
| Lexmark Int’l, Inc. v. Impression Prods., Inc., 816 F.3d 721 (Fed. Cir. 2016) | Patent Exhaustion
International Sale |
“[A] patentee, when selling a patented article subject to a single-use/no-resale restriction that is lawful and clearly communicated to the purchaser, does not by that sale give the buyer, or downstream buyers, the resale/reuse authority that has been expressly denied…. [A] U.S. patentee, merely by selling or authorizing the sale of a U.S.-patented article abroad, does not authorize the buyer to import the article and sell and use it in the United States, which are infringing acts in the absence of patentee-conferred authority.” |
2015
| Case | Issue(s) | Holding(s) |
| SCA Hygiene Products Aktiebolag SCA Personal Care, Inc. v. First Quality Baby Products, LLC, 807 F.3d 1311 (Fed. Cir. 2015) | Laches | “[T]he case law strongly supports the availability of laches to bar legal relief… [L]aches precludes recovery of legal damages…. The fact that § 286 speaks to the timeliness of damages claims does not alter the outcome…. [L]aches in combination with the eBay factors may in some circumstances counsel against an injunction. However, a patentee guilty of laches typically does not surrender its right to an ongoing royalty.” |
| Akamai Techs., Inc. v. Limelight Networks, Inc., 797 F.3d 1020 (Fed. Cir. 2015) | Divided Infringement Under § 271(a) | “[L]iability under § 271(a) can also be found when an alleged infringer conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner or timing of that performance…. In those in-stances, the third party’s actions are attributed to the alleged infringer such that the alleged infringer becomes the single actor chargeable with direct infringement…. Alternatively, where two or more actors form a joint enterprise, all can be charged with the acts of the other, rendering each liable for the steps performed by the other as if each is a single actor…. Section 271(a) is not limited solely to principal-agent relationships, contractual arrangements, and joint enterprise…. Rather, to determine direct infringement, we consider whether all method steps can be attributed to a single entity.” |
| Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) | Means-Plus-Function Claim | “Our opinions … thus established a heightened bar to overcoming the presumption that a limitation expressed in functional language without using the word ‘means’ is not subject to § 112, para. 6. Our consideration of this case has led us to conclude that such a heightened burden is unjustified and that we should abandon characterizing as ‘strong’ the presumption that a limitation lacking the word ‘means’ is not subject to § 112, para. 6…. Henceforth, we will apply the presumption … without requiring any heightened evidentiary showing and expressly overrule the characterization of that presumption as ‘strong.’ We also overrule the strict requirement of ‘a showing that the limitation essentially is devoid of anything that can be construed as structure.’ The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. When a claim term lacks the word ‘means,’ the presumption can be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.” |
2014
| Case | Issue(s) | Holding(s) |
| Lighting Ballast Control LLC v. Philips Electronics North America Corp., 744 F.3d 1272 (Fed. Cir. 2014) | Claim Construction | “[P]atent claim construction receives de novo determination on appeal, that is, review for correctness as a matter of law. Such review is conducted on the administrative record and any additional information in the record of the district court, and is determined without deference to the ruling of the district court…. [T]he scope of the patent grant is reviewed as a matter of law.” |
2013
| Case | Issue(s) | Holding(s) |
| Robert Bosch, LLC v. Pylon Manufacturing Corp., 719 F.3d 1305 (Fed. Cir. 2013) | Appellate Jurisdiction | “[Section] 1292(c)(2) confers jurisdiction on this court to entertain appeals from patent infringement liability determinations when a trial on damages has not yet occurred…. [Section] 1292(c)(2) confers jurisdiction on this court to entertain appeals from patent infringement liability determinations when willfulness issues are outstanding and remain undecided.” |
| CLS Bank International v. Alice Corp. Pty. Ltd., 717 F.3d 1269 (Fed. Cir. 2013) | Subject Matter Eligibility | “[A] majority of the court affirms the district court’s holding that the asserted method and computer-readable media claims are not directed to eligible subject matter under 35 U.S.C. § 101. An equally divided court affirms the district court’s hold-ing that the asserted system claims are not directed to eligible subject matter under that statute.” |
2012
| Case | Issue(s) | Holding(s) |
| Akamai Techs., Inc. v. Limelight Networks, Inc., 692 F.3d 1301 (Fed. Cir. 2012) | Induced Infringement | “[W]e hold that all the steps of a claimed method must be performed in order to find induced infringement, but that it is not necessary to prove that all the steps were committed by a single entity…. Limelight would be liable for inducing infringement if the patentee could show that (1) Limelight knew of Akamai’s patent, (2) it performed all but one of the steps of the method claimed in the patent, (3) it induced the content providers to perform the final step of the claimed method, and (4) the content providers in fact performed that final step.” |
| Marine Polymer Techs., Inc. v. Hemcon, Inc., 672 F.3d 1350 (Fed. Cir. 2012) | Intervening Rights | “[T]he plain directive of the governing statute before us does not permit HemCon to invoke intervening rights against claims that the PTO confirmed on reexamination to be patentable as originally issued. To be sure, patent applicants’ actions and arguments during prosecution, including prosecution in a reexamination proceeding, can affect the proper interpretation and effective scope of their claims. But in rejecting HemCon’s request for intervening rights, we are not here interpreting claims. Rather, we are interpreting a statute that provides for intervening rights following reexamination only as to ‘amended or new’ claims.” |
2011
| Case | Issue(s) | Holding(s) |
| Therasense v. Becton, Dickinson and Co., 649 F.3d 1276 (Fed. Cir. 2011) | Inequitable Conduct | “To prevail on a claim of inequitable conduct, the accused infringer must prove that the patentee acted with the specific intent to deceive the PTO. A finding that the misrepresentation or omission amounts to gross negligence or negligence under a ‘should have known’ standard does not satisfy this intent requirement…. Intent and materiality are separate requirements. A district court should not use a “sliding scale,” where a weak showing of intent may be found sufficient based on a strong showing of materiality, and vice versa…. [T]he materiality required to establish inequitable conduct is but-for materiality. When an applicant fails to disclose prior art to the PTO, that prior art is but-for material if the PTO would not have allowed a claim had it been aware of the undisclosed prior art.” |
| TiVo Inc. v. EchoStar Corp., 646 F.3d 869 (Fed. Cir. 2011) | Injunction Contempt | “[W]e will telescope the current two-fold KSM inquiry into one, eliminating the separate determination whether contempt proceedings were properly initiated. That question, we hold, is left to the broad discretion of the trial court to be answered based on the facts presented. What is required for a district court to hold a contempt proceeding is a detailed accusation from the injured party setting forth the alleged facts constituting the contempt.… [W]e will only review whether the injunction at issue is both enforceable and violated, and whether the sanctions imposed were proper. Allegations that contempt proceedings were improper in the first instance do not state a defense to contempt. As to the question whether an injunction against patent infringement has been violated, courts should continue to employ a ‘more than colorable differences’ standard as discussed below.” |
2010
| Case | Issue(s) | Holding(s) |
| Hyatt v. Kappos, 625 F.3d 1320 (Fed. Cir. 2010) | Section 145 Actions | “We hold that 35 U.S.C. § 145 imposes no limitation on an applicant’s right to introduce new evidence before the district court, apart from the evidentiary limitations applicable to all civil actions contained in the Federal Rules of Evidence and Federal Rules of Civil Procedure…. While the proceedings before the Patent Office do not limit the admissibility of new evidence in the district court, they may be considered by the district court if they cast doubt on the reliability of late-produced evidence, as with inconsistent statements or new recollections of previously forgotten events…. [T]he district court as factfinder may give less weight to evidence introduced by an applicant in a § 145 action if the district court questions its credibility or reliability. |
| Princo Corp. v. International Trade Comm, 616 F.3d 1318 (Fed. Cir. 2010) | Patent Misuse | “Accordingly, we conclude that even if Philips and Sony engaged in an agreement not to license the Lagadec patent for non-Orange-Book purposes, that hypothesized agreement had no bearing on the physical or temporal scope of the patents in suit, nor did it have anticompetitive effects in the relevant market. The asserted agreement between Philips and Sony therefore did not constitute patent misuse and cannot justify rendering all of Philips’s Orange Book patents unenforceable.” |
| Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) | Written Description
Enablement |
“We now reaffirm that § 112, first paragraph, contains a written description requirement separate from enablement…. [T]he description must clearly allow persons of ordinary skill in the art to recognize that the inventor invented what is claimed. In other words, the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date…. [T]he test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” |