SSRN Id3384265

RECENT DEVELOPMENTS IN PATENT LAW (SPRING 2019)
UPDATED THROUGH 5/1/2019

Mark Lemley1 & Andrew McCreary2
PATENTABLE SUBJECT MATTER .................................................................................... 6
Software and Business Method Cases ............................................................................. 6

Unpatentable .................................................................................................................. 6
Trading Techs. Int’l, Inc. v. IBG LLC, Nos. 2017-2257, 2017-2621, 2018-1063 (Apr.
18, 2019). ...................................................................................................................... 6
ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759 (Fed. Cir. Mar. 28, 2019) ...... 6
BSG Tech LLC, v. Buyseasons, Inc., 899 F.3d 1281 (Fed. Cir. Aug. 15, 2018) ........... 7
SAP Am. Inc., v. Investpic, LLC, 898 F.3d 1161 (Fed. Cir. Aug. 2, 2018) ................... 9
Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335 (Fed. Cir. July 20, 2018) ........... 9
Patentable ..................................................................................................................... 11
SRI Int’l, Inc. v. Cisco Sys., Inc., 918 F.3d 1368 (Fed. Cir. Mar. 20, 2019) ............... 11
Ancora Techs, Inc. v. HTC Am., Inc., 908 F.3d 1343 (Fed. Cir. Nov. 16, 2018,
amended Nov. 20, 2018) ............................................................................................. 12
Data Engine Techs. LLC v. Google LLC, 906 F.3d 999 (Fed. Cir. Oct. 9, 2018) ...... 13
Life Sciences Claims ....................................................................................................... 15

Unpatentable ................................................................................................................ 15
Cleveland Clinic Found. v. True Health Diagnostics LLC, No. 2018-1218, 2019 WL
1452697 (Fed. Cir. Apr. 1, 2019)................................................................................ 15
Athena Diagnostics, Inc. v. Mayo Collaborative Servs., LLC, 915 F.3d 743 (Fed. Cir.
Feb. 6, 2019) ............................................................................................................... 16
Roche Molecular Systs., Inc., v. Cepheid, 905 F.3d 1363 (Fed. Cir. Oct. 9, 2018) .... 17
Patentable ..................................................................................................................... 19
Natural Alternatives Int’l, Inc. v. Creative Compounds, LLC, 918 F.3d 1338 (Fed.
Cir. Mar. 15, 2019) ..................................................................................................... 19
Endo Pharms. Inc. v. Teva Pharms. USA, Inc., 919 F.3d 1347 (Fed. Cir. Mar. 28,
2019) ........................................................................................................................... 21
Printed Matter ................................................................................................................. 22

In re Guldenaar Holding B.V., 911 F.3d 1157 (Fed. Cir. Dec. 28, 2018) .................. 22
DISCLOSURE ........................................................................................................................... 24
Definiteness ...................................................................................................................... 24
Intellectual Ventures I LLC v. T-Mobile USA, Inc., Nos. 2017-2434 & 2017-2435,
2018 U.S. App. LEXIS 24997 (Fed. Cir. Sept. 4, 2018) ............................................ 24
1
William H. Neukom Professor, Stanford Law School; Partner, Durie Tangri LLP.
2
J.D. expected 2020, Stanford Law School.
Electronic copy available at: https://ssrn.com/abstract=3384265

Diebold Nixdorf, Inc. v. Int’l Trade Comm’n, 899 F.3d 1291 (Fed. Cir. Aug. 15,
2018) ........................................................................................................................... 25
Zeroclick, LLC, v. Apple Inc., 891 F.3d 1003 (Fed. Cir. June 1, 2018) ...................... 26
Enablement and Written Description ........................................................................... 26

Centrak, Inc. v. Sonitor Techs.. Inc., 915 F.3d 1360 (Fed. Cir. Feb. 14, 2019).......... 26
Trustees of Boston Univ. v. Everlight Elecs. Co., 896 F.3d 1357 (Fed. Cir. July 25,
2018) ........................................................................................................................... 27
SECTION 102............................................................................................................................. 30
Printed Publication ......................................................................................................... 30

GoPro, Inc. v. Contour IP Holding LLC, Nos. 2017-1894, 2017-1936, 2018 WL
5660650 (Fed. Cir. July 27, 2018, modified Nov. 1, 2018) ........................................ 30
On-Sale Bar ..................................................................................................................... 31

Barry v. Medtronic, Inc., 914 F.3d 1310 (Fed. Cir. Jan. 24, 2019) ............................ 31
Helsinn Healthcare S.A. v. Teva Pharms. USA, Inc., 139 S.Ct. 628 (Jan. 22, 2019). 34
Experimental Use ............................................................................................................ 35

Polara Eng’g Inc. v. Campbell Co., 894 F.3d 1339 (Fed. Cir. July 10, 2018) ........... 35
Priority ............................................................................................................................. 36
Natural Alternatives Int’l, Inc. v. Iancu, 904 F.3d 1375 (Fed. Cir. Oct. 1, 2018) ...... 36
Regents of the Univ. of California v. Broad Inst., Inc., No. 2017-1907, 2018 WL
4288968 (Fed. Cir. Sept. 10, 2018)............................................................................. 37
OBVIOUSNESS ......................................................................................................................... 39
Grunenthal GMBH v. Alkem Labs. Lmtd., 919 F.3d 1333 (Fed. Cir. Mar. 28, 2019) 39
Secondary Considerations ........................................................................................... 40
Forest Labs., LLC v. SigmaPharm Labs., LLC, 918 F.3d 928 (Fed. Cir. Mar. 14,
2019) ........................................................................................................................... 40
Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. Jan. 10, 2019) ..................... 42
Acorda Therapeutics, Inc. v. Roxane Labs., Inc., Nos. 2017-2078 & 2017-2134, 2018
WL 4288982 (Fed. Cir. Sept. 10, 2018) ..................................................................... 43
PTAB Burdens ................................................................................................................ 44

E.I. DuPont de Nemours & Co. v. Synvina C.V., No. 2017-1977, 2018 WL 4390796
(Fed. Cir. Sept. 17, 2018) ............................................................................................ 44
Obviousness and Inherency ........................................................................................... 45

In re Copaxone Consolidated Cases, No. 2017-1575, 2018 U.S. App. LEXIS 28751
(Fed. Cir. Oct. 12, 2018) ............................................................................................. 45
Endo Pharms. Sols. Inc. v. Custopharm Inc., 894 F.3d 1374 (Fed. Cir. July 13, 2018)
..................................................................................................................................... 47

Obviousness-Type Double Patenting............................................................................. 48
Novartis Pharms. Corp. v. Breckenridge Pharm. Inc., 909 F.3d 1355 (Fed. Cir. Dec.
7, 2018) ....................................................................................................................... 48
Novartis AG v. Ezra Ventures LLC, 909 F.3d 1367 (Fed. Cir. Dec. 7, 2018) ............ 50
CLAIM CONSTRUCTION..................................................................................................... 52
Du Pont v. Unifrax I LLC, No. 2017-2575, 2019 WL 1646491 (Fed. Cir. Apr. 17,
2019) ........................................................................................................................... 52
Continental Circuits LLC v. Intel Corp., 915 F.3d 788 (Fed. Cir. Feb. 8, 2019) ....... 54
Blackbird Tech LLC v. ELB Elecs., Inc., 895 F.3d 1374, (Fed. Cir. July 16, 2018)... 54
INFRINGEMENT ..................................................................................................................... 56
Joint Infringement .......................................................................................................... 56

Omega Patents, LLC v. CalAmp Corp., No. 2018-1309, 2019 WL 1510676 (Fed. Cir.
Apr. 8, 2019) ............................................................................................................... 56
Prosecution History Estoppel......................................................................................... 57

Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., Nos. 2016-2691 &
2017-1875, 2018 WL 4501536 (Fed. Cir. July 3, 2018, modified Sept. 20, 2018) .... 57
DEFENSES ................................................................................................................................. 59
Implied Waiver and Standard-Setting Organizations ................................................ 59

Core Wireless Licensing S.A.R.L. v. Apple Inc., 899 F.3d 1356 (Fed. Cir. Aug. 16,
2018) ........................................................................................................................... 59
Assignor Estoppel............................................................................................................ 60
Arista Networks, Inc. v. Cisco Sys., Inc., 908 F.3d 792 (Fed. Cir. Nov. 9, 2018). ..... 60
REMEDIES ................................................................................................................................ 62
Damages ........................................................................................................................... 62
Apr. 8, 2019) ............................................................................................................... 62
Enplas Display Device Corp. v. Seoul Semiconductor Co., 909 F.3d 398 (Fed. Cir.
Nov. 19, 2018) ............................................................................................................ 62
2017-1875, 2018 WL 4501536 (Fed. Cir. July 3, 2018, modified Sept. 20, 2018) .... 64
WesternGeco LLC v. Ion Geophysical Corp., 138 S.Ct. 2129 (June 22, 2018).......... 65
WesternGeco LLC v. Ion Geophysical Corp., 913 F.3d 1067 (Fed. Cir. Jan. 11, 2019)
..................................................................................................................................... 66

Attorneys’ Fee Awards ................................................................................................... 68
Gust, Inc. v. AlphaCap Ventures, LLC, 905 F.3d 1321 (Fed. Cir. Sept. 28, 2018) .... 68
In re Rembrandt Techs. LP Patent Litigation, 899 F.3d 1254 (Fed. Cir. decided
July 27, 2018, public opinion issued Aug. 15, 2018) ................................................. 70
Stone Basket Innovations, LLC v. Cook Med. LLC, 892 F.3d 1175 (Fed. Cir. June 11,
2018) ........................................................................................................................... 71
NantKwest, Inc. v. Iancu, 898 F.3d 1177 (Fed. Cir. July 27, 2018) (en banc) ........... 73
PRACTICE AND PROCEDURE ........................................................................................... 75
Personal Jurisdiction ...................................................................................................... 75

Jack Henry & Assocs. v. Plano Encryption Techs. LLC, 910 F.3d 1199 (Fed. Cir.
Dec. 7, 2018) ............................................................................................................... 75
Exclusive Jurisdiction ..................................................................................................... 76

Xitronix Corp. v. KLA-Tencor Corp., 882 F.3d 1075 (Fed. Cir. Feb. 9, 2018),
rehearing en banc denied 892 F.3d 1194 (Fed. Cir. June 15, 2018) ........................... 76
Forum Selection / Governing Law Clauses in License Agreements ........................... 78

Dodocase VR, Inc. v. MerchSource, LLC, No. 2018-1724, 2019 WL 1758481 (Fed.
Cir. Apr. 18, 2019) ...................................................................................................... 78
Real Party in Interest...................................................................................................... 79

Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336 (Fed. Cir. July 9,
2018) ........................................................................................................................... 79
Sovereign Immunity........................................................................................................ 81
Saint Regis Mohawk Tribe v. Mylan Pharms. Inc., 896 F.3d 1322 (Fed. Cir. July 20,
2018) ........................................................................................................................... 81
Piercing the Corporate Veil ........................................................................................... 83

Mercasia USA, Ltd. v. Zhu, No. 3:17-CV-718 JD, 2018 WL 3833520 (N.D. Ind.
Aug. 13, 2018) ............................................................................................................ 83
Venue................................................................................................................................ 84
In re Google Inc., No. 2018-152, 2018 WL 5536478 (Fed. Cir. Oct. 29, 2018), reh’g
denied, In re Google Inc., 914 F.3d 1377 (Fed. Cir. Feb. 5, 2019) ............................ 84
Unreasonable Delay and Patent Term Adjustment ..................................................... 86

Supernus Pharms., Inc. v. Iancu, 913 F.3d 1351 (Fed. Cir. Jan. 23, 2019) ................ 86
PLEADING................................................................................................................................. 88
PATENT TRIAL AND APPEAL BOARD ........................................................................... 89
Inter Partes Review Procedure: Interpreting SAS Institute....................................... 89

Adidas AG v. Nike, Inc., 894 F.3d 1256 (Fed. Cir. July 2, 2018) ............................... 89

Alcatel-Lucent USA Inc. v. Oyster Optics, LLC, No. IPR2018-00070, 2018 WL
4191599 (P.T.A.B. Aug. 31, 2018) ............................................................................. 89
Inter Partes Review Procedure: Other ......................................................................... 90

Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co., 905 F.3d 1311 (Fed. Cir.
Sept. 28, 2018) ............................................................................................................ 90
Ericsson Inc. v. Intellectual Ventures I LLC, No. 2017-1521, 2018 WL 4055815 (Fed.
Cir. Aug. 27, 2018) ..................................................................................................... 91
Standing ........................................................................................................................... 92
(Fed. Cir. Sept. 17, 2018) ............................................................................................ 92
JTEKT Corp. v. GKN Automotive Ltd., 898 F.3d 1217 (Fed. Cir. Aug. 3, 2018)....... 93
Return Mail, Inc. v. U.S. Postal Service, No. 1-1594, 2018 WL 2364663 (U.S.
Oct. 26, 2018) ............................................................................................................. 93
DESIGN PATENTS .................................................................................................................. 95
Design Patent Claim Construction ................................................................................ 95

In re Maatita, No. 2017-2013, 2018 WL 3965892 (Fed. Cir. Aug. 20, 2018) ............ 95

PATENTABLE SUBJECT MATTER
Software and Business Method Cases
Unpatentable
Trading Techs. Int’l, Inc. v. IBG LLC, Nos. 2017-2257, 2017-2621, 2018-1063 (Apr.
18, 2019).
In this appeal from the Patent Trial and Appeals Board (“PTAB”), the Federal
Circuit (Moore, J., with Mayer and Linn, JJ.) affirmed that claims directed towards a
graphical user interface for electronic trading were patent-ineligible.3
The case concerned the ’999, ’056, and ’347 patents, which generally disclosed
receiving bid and offer information, displaying indicators for them, receiving user inputs,
and sending orders.4 Each “disclose[d] different ways of submitting orders and use[d]
slightly different terminology,” such as dictating the use of a graphed axis, but “these
differences ha[d] no effect on [the Federal Circuit’s] eligibility determination at step
one,” and little, it seemed, at step two.5
At step one, the Federal Circuit affirmed the PTAB’s finding that the claims were
directed to “the abstract idea of graphing (or displaying) bids and offers to assist a trader
to make an order.”6 “The fact that the claims add a degree of particularity as to how an
order is placed in [a given] case does not impact our analysis at step one.”7 Nor did the
fact the patents concerned a “computer-based method” save the claims from being found
abstract; the methods “[did] not improve the functioning of the computer, make it operate
more efficiently, or solve any technological problem.”8
At step two, the court’s discussion differed little between the patents. While each
may have improved the intuitiveness of the process for traders, each did so using
conventional graphical elements, and such improvement was not the same as improving
computers themselves—and so not patentable.9
ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759 (Fed. Cir. Mar. 28, 2019)
In this appeal from the District Court of Maryland, the Federal Circuit (Prost, C.J.,
with Reyna and Taranto, JJ.) affirmed that claims to apparatuses and methods for
networking electric-vehicle charging stations were patent-ineligible at step two.10
3
See Trading Techs. Int’l, Inc. v. IBG LLC, Nos. 2017-2257, 2017-2621, 2018-1063, at *1
(Apr. 18, 2019).
4
Id. at *2-*3.
5
Id. at *7.
6
Id. at *6.
7
Id. (citing Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)).
8
Id.
9
See id. at *6, *7, *8.
10
ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 763 (Fed. Cir. 2019).

The case concerned fur patents enabling “site hosts, drivers, and utility companies
to communicate in real time,” such as for demand management and vehicle-to-grid
energy transfer.11
The court carefully explained the “tools” for interpreting whether claims are
“directed to” abstract ideas at step one.12 One tool is to look at the specification for “the
problem facing the inventor”; if the problem is abstract, even the existence of technical
details in the specification or tangible components in the claim body will not likely save
the patent from being directed to an abstract idea.13 Another tool is to evaluate whether
the claims would preempt a longstanding practice or a building block impairing “the
entire industry’s ability” to innovate.14 If so, even a tangible component is likely a “mere
conduit” or “technological environment” for an abstract idea.15
At step one, the court found that while the challenged claims “vary in some
respects, they are all directed to the abstract idea of communicating over a network for
device interaction.”16 The specifications made clear “the inventors here had the good idea
to add networking capabilities to existing charging stations to facilitate various business
interactions.” However, given this was an abstract solution to an abstract problem, even
tangible but not-yet detailed claim elements, such as “electrical couple,” did not make the
claims specific at step one.17 Similarly, the concept of network communication is a
“building block of the modern economy,” and so the claims adding such communication
to electric vehicle rechargers went beyond what § 101 permits and risked preempting
large swaths of technology.18
On the second step, the court rejected ChargePoint’s assertion that applying
network control to charge stations was an unconventional way to solve problems in
charging management. That was because “network control is the abstract idea itself, and
‘a claimed invention’s use of the ineligible concept to which it is directed cannot supply
the inventive concept that renders the invention significantly more than that ineligible
concept.’”19 Or, reading the claims another way, “demand response” was a conventional
business practice, and applying the concept of “demand response” to charging stations
was not sufficiently inventive, either.20
BSG Tech LLC, v. Buyseasons, Inc., 899 F.3d 1281 (Fed. Cir. Aug. 15, 2018)
In this appeal from the Eastern District of Texas, the Federal Circuit affirmed the
district court’s finding that BSG’s patents were patent-ineligible under § 101.21
11
Id. at 763-64.
12
Id. at 766, 767-68.
13
Id. at 767, 770.
14
Id.
15
Id. at 767.
16
Id. at 773.
17
Id. at 770.
18
Id. (quoting Alice Corp. v. CLS Bank Int'l, 573 U.S. 208, 220 (2014).).
19
Id. at 774 (quoting BSG Tech LLC, v. Buyseasons, Inc. 899 F.3d 1281, 1290 (Fed. Cir. 2018)
(internal citation and quotations omitted)).
20
Id.
21
BSG Tech LLC, v. Buyseasons, Inc. 899 F.3d 1281, 1283 (Fed. Cir. 2018).

“[Improving] the information stored by a database is not equivalent to [improving] the
database's functionality.”22
The case concerned three patents disclosing a database indexing system wherein
users set parameters while seeing a summary of parameters used by others.23 Applying
the two-step Alice test for patent eligibility under § 101, 24 the district court concluded the
claims were first “‘directed to the abstract idea of considering historical usage
information while inputting data’ and[, second] lacked an inventive concept . . . .”25
On appeal, the Federal Circuit affirmed. The court found at step one that all three
patents’ claims were directed toward ineligible concepts.26 This was so despite features of
the ’699 and ’294 patents that might have suggested otherwise.27 First, the patents were
not saved at step one just because they required more than a generic computer and
generic database; they still used existing machines and software elements, if specialized
ones, to carry out abstract ideas.28 Second, they were not saved at step one just because
they trivially narrowed their claims; the limitation to display previously used parameters
in a “summary” still applied an abstract idea fairly broadly.29 Third, the patents were not
saved at step one just because they improved how people used an existing type of
database (one that allows users to add parameters); they still did not propose an improved
structure for databases as such.30
The ’652 patent at first seemed to overcome these objections. It included a
limitation that the user-added parameters could not modify the database structure, which
might suggest the claim was directed towards disclosing a new type of structure that
could add parameters without changing structure. But the court reasoned such a database
was either a subtype already understood (and so a trivial narrowing)31 or a new type that
was not sufficiently specified.32 Moreover, because BSG alleged all three patents led to
the same benefits, the court suggested this limitation was either extraneous in the ’652
application or else implied in the others.33 All three patents’ claims thus failed the first
step.34 At the second Alice step, the court found all three applied an abstract idea using
conventional techniques—even if the idea to do so was itself unconventional35—and so
did not supply an inventive concept.36
22
Id. at 1288.
23
Id. at 1283-84.
24
Id. at 1285 (citing Alice Corp. v. CLS Bank Int'l, 134 S.Ct. 2347, 2355 (2014)).
25
Id. (quoting J.A. 6).
26
See id. at 1288-89 (stating that arguments for the ’699 patent also apply to ’294); id. at 1289,
1291 (explaining that ’652 was a harder case but fell for reasons similar to the others).
27
Id. at 1286 (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016)).
28
Id. at 1286-87.
29
Id. at 1287 (citing Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat'l Ass'n,
776 F.3d 1343, 1347 (Fed. Cir. 2014)).
30
Id. at 1288.
31
Id. at 1289, 1291.
32
Id. at 1288. In contrast, Enfish said its “self-referential table functions . . . differently than
conventional database structures” and, evidently, specified how. Id. (quoting 822 F.3d at 1337).
33
Id. at 1289.
34
Id.
35
Id. at 1291.
36
Id. at 1290-91.

SAP Am. Inc., v. Investpic, LLC, 898 F.3d 1161 (Fed. Cir. Aug. 2, 2018)
In this appeal from the Northern District of Texas, the Federal Circuit affirmed a
judgment on the pleadings that Investpic’s patent was invalid under § 101.37 Once again,
the claims did not improve computers as tools, but “use[d] computers as tools.”38
The case concerned Investpic’s ’291 patent, which claimed an investment analysis
system. Whereas many investing websites use a normal probability distribution function
to advise users, the patent proposed a bootstrapped sampling method.39 The relevant
claims40 described using mathematical and statistical calculations in conjunction with
activities like using the Internet.41 The district court held these ineligible under § 101.
On appeal, the Federal Circuit affirmed. Under the two-step Alice test, the court
held the claims were directed towards abstract ideas, and lacked inventive concept.42 On
the first step, the claims were not directed towards “physical-realm improvement”; this
contrasted with McRO, Inc., for instance, where mathematical teachings were aimed at
improving animated characters’ facial expressions.43 On the second step, the court held
that “an invocation of already-available computers that are not themselves plausibly
asserted to be an advance, for use in carrying out improved mathematical calculations”
does not amount to an inventive concept but “to a recitation of what is ‘well-understood,
routine, [and] conventional.’”44
Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335 (Fed. Cir. July 20, 2018)
In this appeal from the Western District of Washington, the Federal Circuit
affirmed the finding that two claims were patent ineligible under § 101.45
The case concerned Interval’s ’652 patent, which covered “an attention manager”
for using excess screen capacity; it envisioned, for example, screensaver and wallpaper
embodiments,46 where content from nearly any source would be supplied by conventional
methods47 to nearly any device.48 Applying Alice’s two-step test,49 the district court first
found that these claims were directed towards the abstract idea of “providing information
37
SAP Am. Inc., v. Investpic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018).
38
Id. at 1668 (citing Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir.
2016)).
39
Id. at 1163-64, 1165.
40
Only independent claims 1, 11, and 22 survived previous litigation. Id. at 1163.
41
Id. at 1166.
42
Id. at 1166-67 (citing Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347, 2354 (2014)).
43
Id. at 1667-68 (citing McRO, Inc. v. Bandai Namco Games [Am.] Inc., 837 F.3d 1299 (Fed.
Cir. 2016)).
44
Id. at 1170 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 73
(2012)).
45
Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1337-38 (Fed. Cir. 2018). Note this case
was appealed anew after having been appealed and remanded once on another issue. Id.
46
Id. at 1338.
47
Id. at 1341.
48
Id. at 1339.
49
Id. at 1341 (citing Alice Corp. Pty. v. CLS Bank [Int’l], 134 S.Ct. 2347 (2014)).

to a person without interfering with the person's primary activity.”50 At the second step,
the court found these claims did not include an inventive concept and were ineligible.51
On appeal, the Federal Circuit found the claims were directed at an ineligible
concept—managing attention52—and were “so result-based that they amounted to
patenting the patent-ineligible concept itself.”53 The claim’s limitations were also
“abstract,”54 and failed to constrain possible embodiments.55 On the second step, the
court held the claims lacked an inventive concept, for similar reasons.56
Concurring in judgment, Judge Plager nonetheless “dissent[ed] from our court's
continued application of this incoherent body of [§ 101] doctrine.”57 Judge Plager
described problems in the doctrine and then how to solve them. Regarding Alice’s first
step, Judge Plager argued that the term “[a]bstract ideas,” like the term ‘obscenity,’ may
provide a cultural consensus in a given instance,” but it “fails to provide the kind of
specificity and clarity” necessary for jurists and litigants.58 As for Alice’s second step,
Judge Plager argued that judges tasked with finding an “inventive concept” are asked to
“unabstract” what they just found abstract—to examine the same evidence while hoping
for a different result.59 More than confusing, Judge Plager argued, the two Alice steps are
unnecessary: the Patent Act’s other sections address the same issues. For instance, the
Patent Act’s architects created the § 103 obviousness inquiry to do the work of an
“inventive concept” test in a more reliable way.60 In short, § 101 “defenses [have
become] a shortcut way for alleged infringers to try for a quick dismissal” while knowing
that if they lose they can undertake a “full-dress law suit” on the same questions in
“§§ 102, 103, and 112.”61 Of course, § 101 defenses are often decided and appealed on
poorly developed records.62
As a short-term solution, Judge Plager recommended that judges first categorize
§ 101 challenges as pertaining to “natural phenomena,” “laws of nature,” or “abstract
ideas.”63 Those § 101 challenges that pertain to the first two categories might be heard
first under Alice; those challenges that pertain to abstract ideas, however, might be
scheduled for hearing only after arguments on §§ 102, 103, and 112 issues.64 As a long-
term solution, Judge Plager urged the patent bar and judges to get the attention of the
Supreme Court or Congress to eliminate the doctrine and adhere to existing statute.65
50
Id. (quoting Interval Licensing LLC v. AOL, Inc., 193 F.Supp.3d 1184, 1188 (W.D. Wash.
2016)).
51
Id. at 1341.
52
Id. at 1344 (disapproving “the result-centric construction of the claimed ‘attention manager’”).
53
Id.
54
Id. at 1345.
55
Id. at 1345-46.
56
Id. at 1347-48.
57
Id. at 1348 (Plager, J., concurring-in-part and dissenting-in-part).
58
Id. at 1351.
59
Id.
60
Id. (citing articles); id. at 1354-55 (explaining why Congress jettisoned this “elusive” inquiry).
61
Id. at 1354.
62
Id. at 1354-55.
63
Id. at 1356.
64
Id. at 1355-56.
65
Id.
10

Patentable
SRI Int’l, Inc. v. Cisco Sys., Inc., 918 F.3d 1368 (Fed. Cir. Mar. 20, 2019)
In this appeal from the District Court of Delaware, the Federal Circuit (Stoll, J.,
with O’Malley, J.) affirmed the denial of summary of judgment on ineligibility, holding
that patents teaching network security methods were eligible under § 101 at step one.66
Judge Lourie dissented.67
Two network security-related patents were at issue. The ’615 and ’203 patents
disclose methods of computer-automated hierarchical event monitoring, wherein network
monitors are deployed, detect activity, and submit reports to a superior monitor (which
looks for patterns).68 The district court found the patents were directed towards eligible
subject matter.69
The Federal Circuit agreed, “resolv[ing] the eligibility issue at Alice step one.”70
“[T]he claims are more complex than merely reciting the performance of a known
business practice on the Internet and are better understood as being necessarily rooted in
computer technology in order to solve a specific problem in the realm of computer
networks.”71 That is,
[t]he claims are directed to using a specific technique—using a plurality of
network monitors that each analyze specific types of data on the network
and integrating reports from the monitors—to solve a technological
problem arising in computer networks: identifying hackers or potential
intruders into the network.72
In so holding, the court rejected three of Cisco’s arguments: that the patents were
directed to collecting and analyzing data (they were directed to improving
computers in a particular way), that the patent did not teach any improvements to
computers (these practices improved them), and that the human mind could
infringe by going through these steps (it could not at the scale of network activity
contemplated by the patent).73 No step-two analysis was needed.
In dissent, Judge Lourie said the claims should have been found analogous
to those in Electric Power Group, LLC v. Alstom, S.A. and so ineligible.74 There,
the claims were directed to selecting, collecting, analyzing, and displaying data;
their limitation to the technological environment of power-grid monitoring did not
make them patent-eligible.75 Here, at step one, Judge Lourie would have held the
claims directed to the abstract idea of network security (or even simply “moving
66
SRI Int’l, Inc. v. Cisco Sys., Inc., 918 F.3d 1368, 1372 (Fed. Cir. 2019).
67
Id. at 1384-85 (Lourie, J., dissenting).
68
Id. at 1373.
69
Id. at 1375.
70
Id.
71
Id.
72
Id.
73
Id. at 1375-76.
74
Id. at 1384-85 (Lourie, J., dissenting) (citing 830 F.3d 1350, 1355 (Fed. Cir. 2016)).
75
Id. at 1385 (Lourie, J., dissenting).
11

information”).76 At step two, Judge Lourie would have held there was no
inventive concept, as the specification did not disclose the need for anything other
than conventional computers and the claims did not teach any “specific way of
enabling a computer to monitor network activity.”77 Here, just as in Electric
Power, Judge Lourie would have found the claims “drawn to using computers as
tools to solve a problem, rather than improving the functionality of computers and
computer networks.” 78 In Electric Power, as here, the claims were “rooted in
computer technology only to the extent that the broadly-recited steps required a
computer.”79
Ancora Techs, Inc. v. HTC Am., Inc., 908 F.3d 1343 (Fed. Cir. Nov. 16, 2018,
amended Nov. 20, 2018)
In this appeal from the Western District of Washington, the Federal Circuit
reversed a dismissal on 101 grounds and held that a patent directed at limiting a
computer’s ability to run unauthorized software “concrete[ly] assign[ed] specified
functions among a computer’s components to improve computer security” and is patent
eligible.80
Ancora’s ’941 patent claimed a method for verifying that software was authorized
to run on a computer by checking against a key stored in the read-only memory of the
computer’s Basic Input Output System (BIOS); prior art used keys stored in places such
as more easily hacked memory or external dongles.81 Ancora sued HTC for infringement,
and HTC raised § 101 invalidity as a defense.82 Applying Alice,83 the court found the
claims focused on “the abstract concept of selecting a program, verifying whether the
program is licensed, and acting on the program according to the verification.”84 At
Alice’s second step, the court found “[s]toring data in the memory of a computer
component that generally stores data” added no inventive concept.85 The district court
dismissed the case.86
On appeal, the Federal Circuit reversed. The first step of Alice is satisfied where
the patented invention improves computers rather than invokes their use as tools, and
“[c]omputers [may be] improved not only through changes in hardware” but also through
software that makes “non-abstract improvements to computer technology . . . .”87 The
76
Id.
77
Id.
78
Id.
79
Id.
80
Ancora Techs, Inc. v. HTC Am., Inc., 908 F.3d 1343 (Fed. Cir. 2018).
81
Id. at 1344-45.
82
Id. at 1346.
83
Id. (citing Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014)).
84
Id. (quoting the lower court, Ancora Techs., Inc. v. HTC Am., Inc., 287 F. Supp. 3d 1168, 1170
(W.D. Wash. 2017)).
85
Id. (quoting Ancora Techs., Inc., 287 F. Supp. 3d at 1175)).
86
Id. at 1346.
87
Id. at 1347 (quoting, with respect to software, Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1335 (Fed. Cir. 2016)).
12

court summarized precedent including Finjan, Inc. v. Blue Coat Sys., Inc., which held
that a patent claiming specific virus-scanning software that improved computer security
was not directed at an abstract idea.88 “Improving security—here, against a computer’s
unauthorized use of a program—can be a non-abstract computer-functionality
improvement if done by a specific technique that departs from earlier approaches to solve
a specific computer problem.”89 These claims met that test.90
Given “overlaps between some step one and step two considerations,” the court
also looked to cases resolved at Alice’s second step to reinforce its decision at step one.91
Most on point, BASCOM Global Internet Services v. AT&T Mobility had held “that
claims to a method and system of filtering Internet content using an Internet Service
Provider (ISP) server were a ‘technical improvement over the prior art ways of filtering
such content.’”92 Here, too, the patented claims disclosed specific improvements to prior
art techniques.93
Data Engine Techs. LLC v. Google LLC, 906 F.3d 999 (Fed. Cir. Oct. 9, 2018)
In this appeal from the District of Delaware, the Federal Circuit reversed in part
and affirmed in part, holding that some spreadsheet-related claims were patent-eligible
and some ineligible under § 101.94
The case concerned the ’259, ’545, and ’551 patents, all directed towards using
tabs to navigate electronic spreadsheets (the “Tab Patents”), as well as the ’146 patent,
which was directed towards tracking changes in spreadsheets (the “Scenario Patent”).95
The Tab Patents, claimed in 1992, taught using notebook-like tabs in spreadsheets
previously navigated only by user commands.96 Now ubiquitous, the tab system was then
lauded as solving what “ha[d] long been a major concern . . . .”97 The Scenario Patent, by
contrast, claimed a way of tracking changes across several copies of a spreadsheet to
facilitate modeling multiple scenarios from a common baseline.98 The district court found
that the Tab Patents directed towards the abstract idea of “using notebook-type tabs to
label and organize spreadsheets” and without inventive concept.99 It found the Scenario
Patent directed towards the abstract concept of “collecting spreadsheet data, recognizing
88
Id. at 1347-48 (collecting cases, including Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299,
1303 (Fed. Cir. 2018)).
89
Id. at 1348.
90
Id. at 1349. The court explained that the method “addresses a technological problem” (the need
for convenient but reliable verification) in an “assertedly unexpected way” that relies on “unique
characteristics of certain aspects” of computers (storing a key in non-volatile BIOS). Id.
91
Id.
92
Id. (quoting 827 F.3d 1341, 1350, 1352 (Fed. Cir. 2016)).
93
Id.
94
Data Engine Techs. LLC v. Google LLC, 906 F.3d 999, 1002, (Fed. Cir. 2018).
95
Id.
96
Id.
97
Id. at 1004 (quoting PC World article in J.A. 981).
98
Id. at 1006.
99
Id. (quoting Data Engines Techs. LLC v. Google Inc., 211 F.Supp.3d 669, 678 (D. Del. 2016)).
13

changes to spreadsheet data, and storing information about the changes,” and again
without inventive concept.100
On appeal,101 the Federal Circuit reversed to hold the Tab Patents eligible (except
for one claim therein), yet affirmed to hold the Scenario Patent ineligible. Applying
Alice,102 the court found the Tab Patents did not fall within the first prong, as they did not
claim “the idea of navigating through spreadsheet pages using buttons or a generic
method of labeling and organizing spreadsheets,” but a specific implementation with
user-definable notebook tabs along one side of a spreadsheet page.103 Google’s reliance
on Affinity Labs, among other cases, was inapposite.104 In that case, the graphical user
interface was ineligible because it had been conventional before the patentee applied for
coverage.105 Here, while notebook tabs had previously existed outside the electronic
spreadsheet context, their application to electronic spreadsheets was not conventional
when claimed; any argument that such application was nonetheless not truly novel or
nonobvious was better left to §§ 102 and 103 analyses.106 That said, the court did appear
to buttress its § 101 assessment by alluding to §§ 102 and 103 issues (e.g., the tabs
allowed “easy navigation” “for the first time” and were “applauded by the industry”). 107
One claim from these Tab Patents was invalidated: directed to a more general concept of
naming and saving multiple spreadsheets in one workbook file, it lacked the tabbed
implementation limitation that saved the others.108
As to the Scenario Patent, the court found it patent-ineligible. At Alice’s first step,
the claims were directed “to the abstract idea of collecting, recognizing, and storing the
100
Id.
101
Because the appeal arose from a judgment on the pleadings, the court applied Third Circuit
review standards, which is de novo review. Id. at 1007 (citing authorities).
102
Id. (setting out the test for § 101 established by Alice Corp. v. CLS Bank International, 573
U.S. 208 (2014)).
103
Id. at 1008-09. It was a “specific structure” performing a “specific function.” Id. at 1010-11.
104
Id. at 1010 (citing Affinity Labs of Texas, LLC v. DirecTV, LLC, 838 F.3d 1253 (Fed. Cir.
2016)). The other cases Google cited were Intellectual Ventures I LLC v. Capital One Financial
Corp., 850 F.3d 1332 (Fed. Cir. 2017) (dealing with manipulating data in XML documents) and
Intellectual Ventures I LLC v. Erie Indemnity Co., 850 F.3d 1315 (Fed. Cir. 2017) (dealing with
tagging data for use in indexes). Id. The court also raised precedent from Core Wireless, id. at
1009 (citing Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1361 (Fed. Cir.
2018)), and Trading Technologies, id. (citing Trading Technologies International, Inc. v. CQG,
Inc. 675 F. App’x 1001 (Fed. Cir. 2017)).
105
Id. at 1010 (citing Affinity Labs of Texas, LLC v. DirecTV, LLC, 838 F.3d 1253 (Fed. Cir.
2016)).
106
Id. at 1011 (“It is not enough, however, to merely trace the invention to some real-world
analogy [i.e., to tabs that ‘existed outside the context of electronic spreadsheets’]. The eligibility
question is not whether anyone has ever used tabs to organize information. That question is
reserved for §§ 102 and 103.”). Whether something conventional fails not only for non-
obviousness under § 103 but also always for abstractness under § 101 was not explicitly
addressed.
107
Id. at 1008.
108
Id. at 1011.
14

recognized data in memory.”109 At step two, implementing this concept using
conventional methods lacked inventive conceptive to save the claims from ineligibility.110
Life Sciences Claims
Unpatentable
Cleveland Clinic Found. v. True Health Diagnostics LLC, No. 2018-1218, 2019 WL
1452697 (Fed. Cir. Apr. 1, 2019)
In this appeal from the Eastern District of Virginia, the Federal Circuit (Lourie, J.,
with Moore and Wallach, JJ.) held that a patent for a test diagnosing cardiovascular
disease risk was ineligible under § 101 at step two.111 In so holding, the Federal Circuit
declined to follow Patent and Trademark Office (“PTO”) guidance to the contrary.112
In a prior case, the Federal Circuit had held the patent-in-suit ineligible. 113 That
’552 patent disclosed that levels of myeloperoxidase (“MPO”) in the blood are positively
correlated with the risk of coronary artery disease, but not with traditional risk factors;
directed to a natural law, its claim limitations instructing physicians to conventionally test
blood samples and compare them to controls did not add an inventive concept.114 This
case concerned two related patents, the ’597 and ’065 patents, that Cleveland Clinic
argued were directed not to comparing MPO levels against controls but to detecting MPO
whatsoever using given techniques.115 The district court found the distinction “overly
superficial.”116
The Federal Circuit agreed: “The rephrasing of the claims does not make them
less directed to a natural law.”117 A natural law is no less natural just “because it can only
be observed by use of certain techniques.”118 Further, Cleveland Clinic conceded in
prosecution that the techniques disclosed were conventional, and so added no inventive
concept. 119
This outcome seemed to conflict with the PTO’s “Example 29,” which contained
hypothetical claims akin to those in Ariosa and prompted examiners to find those claims
109
Id. at 1013.
110
Id.
111
Cleveland Clinic Found. v. True Health Diagnostics LLC, No. 2018-1218, 2019 WL 1452697
(Fed. Cir. Apr. 1, 2019).
112
Id. at *5-*6 (discussing and rejecting an example hypothetical given in PTO guidance).
113
Id. at *2 (citing Cleveland Clinic Foundation v. True Health Diagnostics LLC, 859 F.3d 1352
(Fed. Cir. 2017), cert. denied, 138 S.Ct. 2621 (2018)).
114
Id. at *2.
115
Id. at *4.
116
Id. (quoting Cleveland Clinic Found. v. True Health Diagnostics, LLC, No. 1:17-cv-00198-
LMB-IDD, 2017 WL 3381976 (E.D. Va. Aug. 4, 2017)).
117
Id. at *4.
118
Id. at *5.
119
Id.
15

patent-eligible.120 But the Federal Circuit determined that the PTO Guidelines were not
legally binding or entitled to deference and that “Ariosa must control.”121
Athena Diagnostics, Inc. v. Mayo Collaborative Servs., LLC, 915 F.3d 743 (Fed. Cir.
Feb. 6, 2019)
In this appeal from the District of Massachusetts, the Federal Circuit (Lourie, J.,
with Stoll, J.) affirmed that diagnostic claims were patent-ineligible.122 Judge Newman
dissented.123
The ’820 patent covered methods for diagnosing the neurological disorder
myasthenia gravis (“MG”) by detecting antibodies for the protein muscle-specific
tyrosine kinase (“MuSK”).124 Prior art diagnosed MG using an antibody present for about
80% of patients; the inventors found that MuSK was present in the remaining 20% of
patients.125 The most specific, representative claim included (1) contacting MuSK (or a
specific epitope thereof) with a bodily fluid, (2) immunoprecipitating any
antibody/MuSK complex, and (3) monitoring for the “label” on the complex, wherein
that label would indicate the presence of the antibodies and of the neurological
affliction.126 The district court found the claims directed to the natural law that MuSK
and the antibodies bind, and found that the steps making use of this law were routine.127
On appeal, the Federal Circuit affirmed. It held claims 7 and 9 directed to a
natural law, “the correlation between the presence of naturally-occurring MuSK
autoantibodies in bodily fluid and MuSK-related neurological diseases like MG.”128 The
patent did not claim new laboratory techniques informed by a natural law, as in
CellzDirect;129 rather, they merely recited conventional laboratory techniques to be used
in light of a natural law, as in Cleveland Clinic.130 Mayo argued that other, unclaimed
techniques still could have been used to make diagnoses, showing the natural law was not
claimed.131 But this did not change the result; Flook taught that “[p]reemption is
sufficient to render a claim ineligible under § 101, but [preemption] is not necessary.”132
120
Id. at *5-*6 (discussing PTO Example 29 and Ariosa Diagnostics, Inc.v. Sequenom, Inc.,
788F.3d1371 (Fed. Cir. 2015)).
121
Id.
122
Athena Diagnostics, Inc. v. Mayo Collaborative Servs., LLC, 915 F.3d 743, 746 (Fed. Cir.
2019).
123
Id. at 757-64 (Newman, J., dissenting).
124
Id. at 746-47.
125
Id. at 747.
126
Id.
127
Id. at 748.
128
Id. at 749.
129
Id. at 751-52 (citing Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1048 (Fed.
Cir. 2016)).
130
Id. at 752 (citing Cleveland Clinic Found. v. True Health Diagnostics LLC, 859 F.3d
1352, 1361 (Fed. Cir. 2017)).
131
Id. at 752.
132
Id. (citing Parker v. Flook, 437 U.S. 584, 71-72 [sic] (1978)).
16

Finally, Mayo showed that using man-made substances as part of the claimed process did
not mean the claims were directed at anything other than a natural law, either.133
At step two, claims 7 and 9 lacked inventive concept individually and in
combination.134 They merely “append[ed] [standard-practice] labeling techniques to a
natural law . . . .”135
The court considered claim 6 separately, which claimed a diagnostic process
using different laboratory techniques.136 After finding Mayo had waived its arguments
specific to claim 6, the court nonetheless opined that these other routine techniques also
would have been insufficient to change the outcome at step one or step two.137
Judge Newman dissented.138 She viewed the patent as directed at a “technique,”
and the individual steps of that technique as being less conventional. As she summarized:
[T]hese inventors are not claiming the scientific fact of a newly described
autoantibody; they are claiming a new multi-step diagnostic method. This
is not a law of nature, but a man-made reaction sequence employing new
components in a new combination to perform a new diagnostic
procedure.139
Thus, Judge Newman would have held the patent survived § 101 at step one, and would
have reserved analysis of whether any steps in the process were conventional alone or in
combination for § 102 and § 103.140 Judge Newman also stressed the policy concerns of
raised by amici from diagnostics and academia.141
Roche Molecular Systs., Inc., v. Cepheid, 905 F.3d 1363 (Fed. Cir. Oct. 9, 2018)
In this appeal from the Northern District of California, the Federal Circuit held
that a patent for the composition of genetic primers and for the method of using them to
detect a drug-resistant strain of bacterium causing tuberculosis (“MTB”) was patent-
ineligible under § 101.142
Roche’s ’723 patent specifically claimed (1) the composition of primers capable
of binding onto the newly discovered nucleotide signature of MTB and (2) methods for
amplifying the selected sequence using polymerase chain reaction (“PCR”) to detect
MTB.143 The district court found the primer claims ineligible for containing “genetic
sequences identical to those found in nature,” and the method claims ineligible for being
133
Id. at 752 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 74-75
(2012)).
134
Id. at 753.
135
Id. at 754.
136
Id. at 756-57.
137
Id.
138
139
Id. at 759 (Newman, J., dissenting).
140
Id. at 762 (Newman, J., dissenting).
141
142
Roche Molecular Systs., Inc., v. Cepheid, 905 F.3d 1363, 1365 (Fed. Cir. 2018).
143
Id. at 1365-66.
17

directed to “nonpatentable laws of nature” and without inventive concept (PCR is
conventional).144
On appeal, the Federal Circuit affirmed the result,145 applying Alice146 and relying
on BRCA1.147 In that case, the court had found that adding endpoints to primers did not
save them from ineligibility under Myriad.148. Here, the primers were not “patent-eligible
because [their core nucleotide sequence could] be found in nature,” and their common
endpoint, a non-naturally occurring 3-prime end with a 3-prime hydroxyl, did not save
them.149 As for the method claims, these were invalid as a diagnostic test directed toward
a natural phenomenon and lacking in inventive concept.150 At Alice’s first step, the
diagnostic was directed towards using the “relationship between the signature nucleotides
and MTB” that “exists in nature apart from any human action.”151 At Alice’s second step,
using conventional PCR and a mental step to diagnose lacked inventive concept.152
Concurring that BRCA1 compelled the result reached, Judge O’Malley wrote
separately to urge the Federal Circuit to revisit the patent eligibility of DNA primers.153
Judge O’Malley pointed out that BRCA1 was decided on appeal from a denial of
preliminary injunction.154 This meant the BRCA1 court had been called only to decide
whether the district court erred in finding a substantial question as to whether primer
patents would be ruled invalid.155 With that posture, the BRCA1 court lacked the need and
the evidence to make a sound determination of primer patent eligibility.156 If BRCA1 had
been set aside, the court might have reached a different result here.157 In Myriad, the
Supreme Court had found isolated DNA patent-ineligible because such DNA exists in
nature, but cDNA patent-eligible because of non-natural modifications.158 Yet the BRCA1
144
Id. at 1367-68.
145
Id. at 1365.
146
Id. at 1368-69 (describing the standard under Alice Corp. v. CLS Bank Int’l, 573 U.S. 208
(2014), and its progeny).
147
Id. at 1369-70 (describing law under In re BRCA1- & BRCA2-Based Hereditary Cancer Test
Patent Litig., 774 F.3d 755 (Fed. Cir. 2014)).
148
Id. at 1369-70 (citing Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576
(2013) and In re BRCA1- & BRCA2-Based Hereditary Cancer Test Patent Litig., 774 F.3d 755
(Fed. Cir. 2014)). Also, the linear structure of these MTB primers—which Roche argued was
different from the circular structure of MTB’s chromosomal DNA—was not part of the patent
claims. Id. at 1370.
149
Id.at 1371.
150
Id. at 1372.
151
Id. at 1371. It didn’t help the patent holder’s cause that the Summary of Invention included the
words “heretofore undiscovered.” Id. (quoting ‘723 patent col. 2 ll. 60–65 (emphasis added)).
152
Id. at 1372. Roche’s other attempts “to limit the breadth of the method claims by showing
alternative uses of MTB DNA outside of the scope of the claims” did not save the claims. Id. at
1374.
153
Id. at 1381 (O’Malley, J., concurring).
154
155
156
Id.
157
See Id. at 1380 (O’Malley, J., concurring).
158
Id. at 1377 (O’Malley, J., concurring) (“[W]hile ‘cDNA retains the naturally occurring exons
of DNA, . . . it is distinct from the DNA from which it was derived[] because the intron sequences
are removed.’” (quoting Myriad Genetics, Inc., 569 U.S. at 595)).
18

decision ruled primers ineligible without explaining whether primers were more like the
ineligible DNA or eligible cDNA in Myriad.159 With the added facts here,160 Judge
O’Malley suggested primers may be more like the patent-eligible cDNA. Myriad teaches
that “although ‘[t]he nucleotide sequence of cDNA is dictated by nature . . . the lab
technician unquestionably creates something new when cDNA is made.’”161 Here, while
the primers have a core sequence of nucleotides dictated by nature, the endpoints have a
non-natural “structure” and “function” that may warrant patent-eligibility.162
Patentable
Natural Alternatives Int’l, Inc. v. Creative Compounds, LLC, 918 F.3d 1338 (Fed. Cir.
Mar. 15, 2019)
In this appeal from the Southern District of California, the Federal Circuit
(Moore, J., with Wallach, J.) held that patents that “cover using a natural product in
unnatural quantities to alter a patient’s natural state, to treat a patient with specific
dosages outlined in the patents,” were directed to patent-eligible subject matter at step
one.163 Judge Reyna dissented in part.164
The Court considered method and product claims separately.
Method Claims: The ’596 patent ’865 patents disclose using unnatural quantities
of a naturally occurring amino acid, beta-alanine to increase “the anaerobic working
capacity of muscle and other tissue.”165 The district court found such claims directed to
natural laws—those laws being that ingesting more of the amino acid leads to
biochemical changes that increase muscular working capacity—and also lacking
inventive concept.166
On appeal, the Federal Circuit disagreed. It held “[t]hese are treatment claims and
as such they are patent eligible.”167 At step one, Vanda Pharmaceuticals Inc. stood for
the proposition that “claims that are directed to particular methods of treatment are patent
eligible.”168 And here, as there, the claims “required a doctor to affirmatively administer a
drug to alter a patient’s condition from their natural state.”169 In both cases, a compound
was specified, a limitation on dosing was specified, and either a target patient population
159
Id. at 1377-78 (O’Malley, J., concurring).
160
Id. at 1378 (O’Malley, J., concurring) (describing features of primers and expert testimony).
161
Id. at 1380 (O’Malley, J., concurring) (quoting Myriad Genetics, Inc., 569 U.S. at 595).
162
Id. at 1380 (O’Malley, J., concurring) (emphasizing that primers have “a different structure
from anything found in nature, [and] a different function from that of native DNA” (emphasis
original)).
163
Natural Alternatives Int’l, Inc. v. Creative Compounds, LLC, 918 F.3d 1338, 1346-47 (Fed.
Cir. 2019).
164
Id. at 1350-55 (Reyna, J., dissenting in part and concurring in part).
165
Id. at 1341 (quoting U.S. Patent No. 5,965,596 col. 2 ll. 16-18); see also id. at 1343-44.
166
Id. at 1342, 1344.
167
Id. at 1344.
168
Id. (citing Vanda Pharms. Inc. v. West-Ward Pharms. Int’l Ltd., 887 F.3d 1117, 1134–36 (Fed.
Cir. 2018)).
169
Id. at 1344-45 (citing Vanda, 887 F.3d at 1135).
19

or target outcome from treatment was specified.170 These features distinguished these
cases from Mayo, where the claims required “no actual action be taken based on the
measured level of metabolite [that was brought about by the prior art drug and simply
observed].”171 The Federal Circuit said this rule would preserve the patent-eligibility of a
hypothetically naturally occurring compound that in correct dosing could cure
Alzheimers, for instance.172
The Federal Circuit nonetheless considered step two. Even had it been proper for
the district court to find the claims directed to ineligible subject matter, the district court
still would have been in error because it decided the case on the pleadings despite there
being a factual dispute as to what activities were conventional in the art.173
Product Claims: The ’376 and ’084 patent claims were to compositions of the
amino acid as used in a dietary supplement or sports drink.174 The district court found
these patents directed to the natural phenomena of their constituent parts, namely beta-
alanine and glycine for the ’376 patent, and beta-alanine for the ’084 patent.175
The Federal Circuit disagreed.176 At step one, it reasoned that,
[j]ust as the Method Claims are directed to specific methods of treatment that
employ a natural law, the Product Claims are directed to specific treatment
formulations that incorporate natural products, but they have different
characteristics and can be used in a manner that beta-alanine as it appears in
nature cannot.177
For instance, the “natural products have been isolated and then incorporated into a dosage
form with particular characteristics,” including for example the limitation in the ’084
claims that the dosage be between 0.4 grams and 16 grams.178 Furthermore, the ’376
patent’s combination of two naturally occurring products appeared to have “synergistic
effects” that rendered them patentable together if not separately, with that synergy
distinguishing this invention from the unpatenable bacteria mix in Funk Brothers (no
synergy).179
For good measure, the court reasoned the claims would have been patentable at
step two in any case, because the claims contained “dietary supplement limitation[s]”
which it said were not conventional (or not indisputably conventional).180
Manufacturing Claims: The ’610 patent claimed “suppl[ing]” or “mixing” beta-
alanine for use as a dietary supplement in humans to prevent muscle fatigue.181
170
Id. at 1345-46.
171
Id. at 1345 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-76
(2012)).
172
Id. at 1346.
173
Id. at 1347.
174
Id. at 1348. Another patent, the ’947, was determined to have been not asserted and not
properly before the court. Id.
175
Id.
176
Id.
177
Id.
178
Id. at 1348-49.
179
Id. at 1349 (citing Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 131 (1948)).
180
Id.
181
Id. at 1349-50.
20

The Federal Circuit again disagreed with the district court, holding that these
claims were “even further removed from the natural law and product of nature at issue in
the Method Claims and Product Claims, respectively,” and were “directed to the
manufacture of a human dietary supplement with certain characteristics.”182 When taking
the natural supplements, “homeostasis is overcome,” and so the treatment “alters that
subject’s natural state.”183 They were thus specific claims at step one.
Dissent-in-Part on all Claims: Judge Reyna wrote separately to protest that the
eligibility decision for all claims “relies on a claim construction that improperly imports
limitations into the claims and is contradicted by the written description.”184 Judge Reyna
wrote that “[t]his case, and the general development of the law concerning § 101 analysis
at the pleading stage, causes me to ask whether the time has come for this court to
reconsider whether a Rule 12(c) motion based on § 101 should be decided before claim
construction.”185
Endo Pharms. Inc. v. Teva Pharms. USA, Inc., 919 F.3d 1347 (Fed. Cir. Mar. 28,
2019)
In this appeal from the District of Delaware, the Federal Circuit (Stoll, J., with
Clevenger and Wallach, JJ.) reversed the district court and, following Vanda, held the
asserted claims were not directed toward a natural law and so were patent-eligible.186
The ’737 patent teaches administering the pain killer oxymorphone at lower-than-
usual dosages for patients with impaired kidney function.187 The district court found at
step one that the “claims are directed to the natural law that the bioavailability of
oxymorphone is increased in people with severe renal impairment.”188And at step two,
the district court found that the claims’ steps—providing a relevant drug, determining the
patient’s renal condition, and administering the drug accordingly—were like those in
Mayo and not inventive.189
The Federal Circuit reversed. Deciding the case at step one, it found “the claims
were directed to a patent-eligible method of using oxymorphone or a pharmaceutically
acceptable salt thereof to treat pain in a renally impaired patient.”190 The court followed
its holding in Vanda.191 There, three analogous steps—providing a drug, testing whether
a patient is a poor CYP2D6 metabolizer, and administering the drug—were found patent-
182
Id. at 1350.
183
Id. at 1344.
184
Id. at 1351 (Reyna, J., concurring in part).
185
Id. at 1354.
186
Endo Pharms. Inc. v. Teva Pharms. USA, Inc., 919 F.3d 1347, 1348 (Fed. Cir. 2019).
187
Id. at 1349-50.
188
Id. at 1351 (quoting Endo Pharms. Inc. v. Actavis Inc., No. 14-cv-1381-RGA, 2015 WL
5580488, at *6 (D. Del. Sept. 23, 2015)).
189
Id. at 1351-52.
190
Id. at 1353.
191
Id. at 1353 (quoting Vanda Pharms. Inc. v. West-Ward Pharms. Int’l Ltd., 887 F.3d 1117,
1121 (Fed. Cir. 2018).
21

eligible.192 Here, the claims were “legally indistinguishable”193: they were “directed to a
specific method of treatment for specific patients using a specific compound at specific
doses to achieve a specific outcome.”194 Also, unlike in Ariosa, where claims were
directed to “observation or detection” of cell-free fetal DNA,195 the claims here were
directed to “to a new and useful method of treating pain in patients with impaired renal
function.”196
To clarify the difference between Mayo- and Vanda-style claims, the court offered
two points. First, the claims in Mayo claimed all dosing changes informed by a given
correlation; by contrast, the claims in Vanda (and here) claimed only those dosing
changes needed to achieve a particular outcome.197 (Here, for instance, the dosing was
limited to those amounts resulting in no more than a certain amount of detectable drug in
the blood over a 12hr period.198) That distinction seems dubious at best. Second (and
quite similarly), whereas Mayo preempted all treatment decisions by doctors that took the
natural relationship into account, Vanda and this case’s “specific treatment steps” only
preempted a “narrow” range of treatment plans.199 Mayo had left open that “method of
treatment” claims could be patent-eligible, and Vanda and this case theoretically showed
what such claims can look like.200
As the court noted, here (unlike in Vanda), no claims limited doctors to particular
methods of testing the patients for renal impairment (a particular assay was required for
determining the patient’s condition in Vanda).201 As a result, this case could be seen as
extending Vanda’s holding.
Printed Matter
In re Guldenaar Holding B.V., 911 F.3d 1157 (Fed. Cir. Dec. 28, 2018)
In this appeal from the Patent Trial and Appeal Board (PTAB), the Federal Circuit
affirmed as patent-ineligible claims that were directed to an abstract dice game and that
entailed no inventive concept other than the pattern of die markings—themselves held to
be printed matter.202
192
Id.
193
Id. at 1353-54.
194
Id. at 1355.
195
See id. at 1356 (discussing Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371 (Fed.
Cir. 2015)).
196
Id.
197
See id. at 1354.
198
Id. at 1351. The clause from the patent was “wherein after said administration to said patient,
the average [area under the curve] of oxymorphone over a 12-hour period is less than about 21
ng·hr/mL.”).
199
See id. at 1354-55.
200
See id. at 1354 (citations omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 77, 87 (2012)).
201
Id. at 1355.
202
In re Guldenaar Holding B.V., 911 F.3d 1157, 11589-59 (Fed. Cir. 2018).
22

The ’196 patent at issue concerned “a method of playing a dice game” where
three die had a distinctive marking that appeared on just one face on the first dice, on two
faces on the second dice, and on three faces on the third dice.203 Wagers were to be made
as to how many of the markings would appear face up.204 The examiner rejected the
claims as directed toward the abstract idea of “rules for playing a game.”205 The PTAB
affirmed.206
On appeal, the Federal Circuit affirmed, notwithstanding the applicant’s new
arguments related to the distinctively arranged die markings.207 As below, the claims
were held directed to an abstract concept on Alice’s first step.208 The court analogized
rules for wagering games to rules for financial processes like those in Bilski,209 an
analogy earlier made in Smith.210 The court left open that some such games might still be
saved at Alice’s second step.211 So the court moved to that step. And here, the applicant
newly argued that the claims’ inventive concept was not related to the conventional
wagering but to the uniquely arranged markings on one, two, and three sides of the die.212
But the die markings were printed matter—“[c]laim limitations directed to the
content of information and lacking a requisite functional relationship” to the patented
matter—and so were themselves unpatentable.213 The markings communicated “whether
the player has won or lost a wager.”214 That information lacked “functional[] relat[ion] to
the substrate.”215 This contrasted with, for example, the volumetric markings on the side
of a specialized measuring cup, which have been held patentable.216
Concurring, Judge Mayer would have held games “categorically ineligible for
patent.”217
203
Id. at 1159.
204
Id.
205
Id. (quoting J.A. 35, 85).
206
Id. at 1159.
207
Id. at 1161.
208
Id. at 1159 (citing Alice Corp. v.CLS Bank Int’l, 573 U.S. 208 (2014)).
209
Id. at 1160 (citing Bilski v. Kappos, 561 U.S. 593, 611 (2010)).
210
Id. (citing In re Smith, 815 F.3d 816 (Fed. Cir. 2016)).
211
Id. at 1162.
212
Id. at 1161.
213
Id. (quoting Praxair Distrib., Inc. v. Mallinckrodt Hosp. Prod. IP Ltd., 890 F.3d 1024, 1032
(Fed. Cir. 2018)).
214
Id. (analogizing to the measuring cup in In re Miller, 418 F.2d 1392 (CCPA 1969)).
215
216
217
Id. at 1166 (Mayer, J., concurring).
23

DISCLOSURE
Definiteness
Intellectual Ventures I LLC v. T-Mobile USA, Inc., Nos. 2017-2434 & 2017-2435, 2018
U.S. App. LEXIS 24997 (Fed. Cir. Sept. 4, 2018)
In this appeal from the District of Delaware, the Federal Circuit affirmed the
district court’s finding of claim indefiniteness (while vacating and remanding the
decision on other grounds).218
The case involved the ’248 patent describing “an application-aware resource
allocator” for meeting software applications’ varied quality of service (“QoS”)
requirements for bandwidth over a packet-switched network. One limitation described
“allocating means for allocating resources to said IP flow . . . so as to optimize end user
application IP QoS requirements of said software application.”219 T-Mobile argued that
the “means for” language in the claim triggered a means-plus-function limitation lacking
definite function and corresponding structure.220 Intellectual Ventures argued the function
entailed all that followed “means for,” and proposed corresponding structures; T-Mobile
argued and the district court found that “optimize” was an indefinite function—and
declined to inquire after structure further.221 (Because of this and a claim construction
question, T-Mobile won on a motion for summary judgment on non-infringement.)222
On appeal, the Federal Circuit held that it was not error for the district court,
when evaluating this means-plus-function claim limitation, to decline to investigate
whether sufficient corresponding structure existed for the means once it had found the
function was indefinite.223 The Federal Circuit focused on “QoS requirements” as being
“entirely subjective and user-defined” according to the ’248 patent’s own language that
QoS entailed “a continuum” of possible standards with “the end-user experience [being]
the final arbiter.”224 This showed, as the district court also found, that there was no way
for one of ordinary skill in the art to know when “optimiz[ing] . . . QoS” had been
accomplished—much as there was no way for one to satisfy the “aesthetically pleasing”
limitation in Datamize.225
218
Intellectual Ventures I LLC v. T-Mobile USA, Inc., Nos. 2017-2434 & 2017-2435, 2018 U.S.
App. LEXIS 24997, at *1 (Fed. Cir. Sept. 4, 2018).
219
Id. at *5-*6.
220
Id.
221
Id. at *6.
222
Id. at *7.
223
Id. at *19.
224
Id. at *20 (citations and quotations to the patent omitted).
225
Id. at *20 (quoting Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350-51 (Fed.
Cir. 2005)).
24

Diebold Nixdorf, Inc. v. Int’l Trade Comm’n, 899 F.3d 1291 (Fed. Cir. Aug. 15, 2018)
In this appeal from the International Trade Commission, the Federal Circuit
concluded that “cheque standby unit” in the ’235 patent was a means-plus-function term
under 35 U.S.C. § 112(f) that lacked corresponding structure in the specification and was
therefore indefinite and invalid226 despite expert testimony about the meaning of the term
in the industry.
The case concerned defendant’s alleged infringement of the ’235 patent. The
patent related to automated teller machines (ATMs). Defendants argued a claim that
included a “cheque standby unit” limitation was invalid for indefiniteness.227 Crediting
plaintiff’s expert, the administrative law judge (“ALJ”) found the “cheque standby unit”
was a means-plus-function term for which a person of ordinary skill in the art would find
sufficient corresponding structure in the description that it “temporarily stores at least one
authentic cheque by holding it in position on the belt.”228 The Commission reviewed the
ALJ’s Initial Decision but not this issue.
On appeal, the Federal Circuit reversed.229 The court reached its conclusion for
three reasons. First, while the word “means” was not present to invoke § 112, para. 6, the
challenger showed that “unit” was a nonce word, describing a function rather than a
structure.230 Indeed, the specification illustrated the “unit” using a plain line that did not
distinguish it from the “main transfer path” before and after it.231 Second, the court found
that the extrinsic evidence of the patent-holder’s expert did not defeat the intrinsic
evidence of the challenger. The testimony that “cheque standby unit” was well
understood and disclosed adequate structure was undermined by the expert’s failure to
“cabin”232 the corresponding structure, which by the expert’s admission could include “a
‘suction cup,’ a ‘trap door,’ [or] a ‘drum.’”233 The prosecution history also showed the
patent-holder “coined” the term in revisions to avoid prior art, suggesting a skilled artisan
might need extra clarity to understand this new concept.234 Finally, given the term was
found to recite a function and location, the patent’s specification lacked sufficient
corresponding structure—for the same reasons as above—and so was invalid for
indefiniteness.235
226
Diebold Nixdorf, Inc. v. Int’l Trade Comm’n, 899 F.3d 1291 (Fed. Cir. 2018).
227
Id. at 1294.
228
Id. at 1296 (citation omitted).
229
Id. at 1303; see also id. at 1297 (explaining reviewing standard).
230
Id. at 1298.
231
Id. at 1298-99.
232
Id. at 1300-01.
233
Id. at 1301 n.5
234
Id. at 1302; see also id. at 1296 (explaining when and why limitation was added).
235
Id. at 1303.
25

Zeroclick, LLC, v. Apple Inc., 891 F.3d 1003 (Fed. Cir. June 1, 2018)
In this appeal from the Northern District of California, the Federal Circuit vacated
and remanded the case because the district court failed to adequately support its findings
that the claims recited means-plus-function terms and were indefinite.236
The case concerned Zeroclick’s ’691 and ’443 patents, which Zeroclick alleged
Apple had infringed. The ’691 claims cover a graphical user interface and method of
operating it by using two motions with a pointer to accomplish a “click event” with zero
clicking; the ’443 claim covers a device capable of executing software actioned by
touching.237 The claims did not use the word “means” to trigger the presumption that
means-plus-function limitations applied.238 Still, the district court found that “program”
and “user interface code” were generic placeholders for the “means” to perform the
functions described in the claims.239 And, because “the specifications [did] not disclose
sufficient structure” for these means, the “claims [were] invalid for indefiniteness.”240
On appeal, the Federal Circuit vacated the application of the means-plus-function
limitation to these claims because there were three errors in the district court’s
determination that “program” and “user interface code” were nonce words. First, the
mere presence of functional terms (like “user interface code”) did not create a means-
plus-function claim.241 Second, the context—such as discussions of backward
compatibility242—showed these were not “black box recitations of structure or
abstractions[ but] specific references to conventional graphical user interface programs or
code, existing in the prior art” that a person having ordinary skill in the art would
understand.243 Finally, the district court developed no support for the finding that
“program” and “user interface code” were common-parlance synonyms for “means.”244
Enablement and Written Description
Centrak, Inc. v. Sonitor Techs.. Inc., 915 F.3d 1360 (Fed. Cir. Feb. 14, 2019)
In this appeal from the District Court of Delaware, the Federal Circuit reversed
the District Court’s summary judgment of invalidity for lack of written description.245
The ’909 patent-in-suit was a divisional application of the issued ’945 patent;
while both patents concerned systems for synchronizing timing between a base station
and portable devices, the ’909 claims disclosed synchronizing using ultrasonic
communication, whereas the ’945 claims disclosed doing so through infrared or radio
236
Zeroclick, LLC, v. Apple Inc., 891 F.3d 1003, 1006 & n.2 (Fed. Cir. 2018).
237
Id. at 1005-06.
238
Id. at 1007.
239
Id. at 1008 (as characterized by the reviewing court).
240
Id. at 1006.
241
Id. at 1008.
242
Id. at 1009.
243
Id. at 1008.
244
Id. at 1009.
245
Centrak, Inc. v. Sonitor Techs.. Inc., 915 F.3d 1360, 1362 (Fed. Cir. 2019).
26

frequency communications.246 Only two sentences in the parent’s specification concerned
the ultrasonic communication. Sonitor alleged Centrak had not possessed the ultrasound-
based RTL system when it filed the parent application.247 The district court agreed:
“[O]ne could not simply drop [an ultrasonic] transmitter into the system as disclosed in
the specification and have a functioning [ultrasonic] system,”248 because the two
“fundamentally different” technologies operated at speeds six orders of magnitude apart,
posing implementation challenges for ultrasonic systems that the specifications did not
address.249
On appeal, the Federal Circuit reversed.250 First, it clarified that written
description (stressing possession) is a separate requirement from enablement.251 And “the
level of detail required to satisfy the written description requirement varies depending on
the nature and scope of the claims and on the complexity and predictability of the
relevant technology.”252 This means that calling out an embodiment “in a definite way”253
may satisfy written description even where the patent’s specification focuses primarily on
a different embodiment.254 Moreover, here, a slight reference to the ultrasonic
embodiment distinguished this case from others where the parent application did not
mention the questioned embodiment at all.255 Finally, though the inventor here admitted
that enabling the claims for the ultrasonic embodiment required knowing more than what
the claims themselves disclosed, this was to be expected for specifications and claims
intended to be read by skilled artisans, and by no means suggested the inventor did not
possess the embodiment.256 The court remanded for further factual development.
Trustees of Boston Univ. v. Everlight Elecs. Co., 896 F.3d 1357 (Fed. Cir. July 25,
2018)
In this appeal from the District of Massachusetts, the Federal Circuit reversed the
trial court and held that a patent issued to Boston University (“BU”) was invalid as a
246
Id. at 1363.
247
Id. at 1364.
248
Id. at 1365 (quoting CenTrak, Inc. v. Sonitor Techs., Inc., No. CV 14-183-RGA, 2017 WL
3730617, at *8 (D. Del. Aug. 30, 2017)).
249
Id. at 1365.
250
Id. at 1362.
251
Id. at 1366 (“[W]ritten description is about whether the skilled reader of the patent disclosure
can recognize that what was claimed corresponds to what was described; it is not about whether
the patentee has proven to the skilled reader that the invention works, or how to make it work,
which is an enablement issue.” (quoting Alcon Research Ltd. v. Barr Labs., Inc., 745 F.3d 1180,
1191 (Fed. Cir. 2014)).
252
Id. at 1367 (quoting Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) (en banc)).
253
Id.
254
Id. at 1366 (citing ScriptPro LLC v. Innovation Associates, Inc, 833 F.3d 1336, 1341 (Fed.
Cir. 2016)).
255
Id. at 1367 (citing Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1567 (Fed. Cir. 1997)).
256
Id. at 1368-69 (discussing interview with doctors).
27

matter of law for lack of enablement,257 even where parties agreed that all but one of the
six possible combinations the claim specified (as construed by the trial court) were
successfully enabled.258
The case concerned the ‘738 patent, which sought to disclose a process for
fabricating a blue light-emitting diode (“LED”) in a way that would correct an otherwise
common and problematic “lattice-mismatch” in semiconductors of this type between the
crystalline layer of gallium nitride (“GaN”) and its substrate layer. The patent’s only
claim tried to the jury was claim 19.259 It disclosed, in relevant part, “a non-single
crystalline buffer layer” and “a growth layer grown on the buffer layer.”260 The district
court construed the first term to admit of three types of “non-single crystalline buffer[s],”
and the second to admit of two ways a growth layer could “grow[] on” this buffer
(directly on or indirectly above).261 Thus, the claim specified six combinations. The
parties agreed five were enabled.262 Moreover, they agreed that while these five could be
prepared using molecular beam epitaxy (which the appellate court later said the patent’s
specification “focuses on”),263 they agreed the sixth combination was impossible to
prepare this way.264 Nonetheless, the jury determined that defendant failed to show the
patent was invalid;265 the district court denied defendant’s renewed motion for judgment
as a matter of law (“JMOL”) that the claim was not enabled under 35 U.S.C. § 112
(2006).266 “[T]he ‘738 patent did not have to enable a device with a monocrystalline
growth layer formed directly on [one of the three types of] buffer layer[s], as long as it
enabled a device with a monocrystalline growth layer formed indirectly on [that same
type of buffer layer].”267
The Federal Circuit reversed the denial of the motion for JMOL, holding as a
matter of law that no reasonable jury could have found as that jury did.268 The court
accepted the district court’s findings that substantial evidence showed growing the
crystalline layer epitaxially on the substrate was not possible for the sixth combination,
and that there was no substantial evidence—just conclusory expert testimony269—that
BU’s patent taught a non-epitaxial approach. But the Federal Circuit found that was not
enough. It held that because “[t]he enablement requirement [must ensure] that the public
knowledge is enriched by the patent specification to a degree at least commensurate with
the scope of the claims,” the “scope of the claims must be less than or equal to the scope
257
Trustees of Boston Univ. v. Everlight Elecs. Co., 896 F.3d 1357, 1358 (Fed. Cir. 2018); id. at
1364-65.
258
Id. at 1364.
259
Id. at 1360
260
Id. (quoting ’738 patent col. 7 l. 42–col. 8 l. 9).
261
Id. at 1360.
262
Id. at 1364.
263
Id. at 1362.
264
Id. at 1364.
265
Id. at 1361.
266
Id.
267
Id. (citation omitted).
268
Id.
269
Id. at 1364.
28

of the enablement.”270 The claim was drafted to cover six combinations, but only enabled
five—and so was invalid.
Id. (quoting Nat’l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190,
270
1195–96 (Fed. Cir. 1999)).
29

SECTION 102
Printed Publication
GoPro, Inc. v. Contour IP Holding LLC, Nos. 2017-1894, 2017-1936, 2018 WL

5660650 (Fed. Cir. July 27, 2018, modified Nov. 1, 2018)
In this appeal from the Patent Trial and Appeal Board (“PTAB”), the Federal
Circuit held that GoPro’s sales catalog was a prior-art printed publication under
§ 102(b),271 and reasserted that “direct availability [of such printed publications] to an
ordinarily skilled artisan is [not] dispositive.”272
The case concerned Contour’s ’694 and ’954 patents, which disclose
specifications for transmitting video between a camera and a remote digital device, such
as for transmitting point-of-view (“POV”) video from a helmet-mounted camera to a
smartphone.273 GoPro challenged the patents as obvious over a sales catalog it had
distributed before the critical date at a trade show with over 150 vendors and 1,000
attendees, through its website, by direct mail, and otherwise.274 The PTAB initiated inter
partes review, but found the catalog not a prior-art printed publication.275 The PTAB
reasoned that ordinarily skilled artisans using reasonable diligence could not have located
the catalog given the trade show was open only to dealers (not the broader public) and
oriented towards action sports vehicles (not camera technology).276
On appeal, the Federal Circuit reversed, emphasizing that the test is broader than
the PTAB had viewed it.277 A reference is publicly accessible if “persons interested and
ordinarily skilled in the subject matter or art exercising reasonable diligence[] can locate
it.”278 For information shared through a conference or trade show, factors establishing
accessibility include not only the event’s target audience—which the PTAB
emphasized—but also “the nature of the conference or meeting; whether there are
restrictions on public disclosure of the information; expectations of confidentiality; and
expectations of sharing the information.”279 Here, the court found that the target audience
was more closely related to the ordinary artisans than the PTAB allowed, as action sports
vehicles are a primary application for POV cameras (a fact the ’954 patent described).280
271
GoPro, Inc. v. Contour IP Holding LLC, Nos. 2017-1894, 2017-1936, 2018 WL 5660650, at
*1 (Fed. Cir. July 27, 2018, modified Nov. 1, 2018). Full disclosure: Mark Lemley represented
GoPro, Inc., in this matter.
272
Id. at *3.
273
Id. at *1.
274
Id. at *1-2.
275
Id. at *2, 3 (Fed. Cir. July 27, 2018, modified Nov. 1, 2018).
276
Id. The court does not tell whether the PTAB addressed the other alleged channels of
distribution.
277
Id. at *2.
278
Id. at *2.
279
Id.
280
Id. at *4.
30

Moreover, the GoPro catalog was “disseminated with no restrictions and was intended to
reach the general public.”281
On-Sale Bar
Barry v. Medtronic, Inc., 914 F.3d 1310 (Fed. Cir. Jan. 24, 2019)
In this appeal from the Eastern District of Texas, the Federal Circuit affirmed that
a patent on methods for correcting spinal column anomalies was not on sale before the
critical date.282
The case concerned the ’358 and ’121 patents, which disclose methods of
grabbing and simultaneously wrenching screws across multiple vertebrae into
alignment.283 The critical date for these pre-AIA patents was December 30, 2003.284 After
modifying prior-art devices,285 Dr. Barry completed three surgeries using prototypes from
August-October 2003; only after a January 2004 follow-up for the third surgery,
however, did Dr. Barry submit his documented method to a conference for
presentation.286 The district court held the surgeries had not triggered § 102(b)’s on-sale
bar.287
On appeal, the Federal Circuit affirmed. The majority and dissent agreed that the
patented invention had been the subject of a commercial sale when the surgeries were
conducted.288 But the majority held that substantial evidence existed for the jury to find
that the invention, even if on-sale, had not been “ready for patenting” as required under
Pfaff289—and that, in any case, an experimental use exception applied.290
First, the invention was not “ready for patenting.” This prong is met either by an
enabling description—which did not exist here—or by reduction to practice.291 A
reduction to practice requires both (1) “perform[ing] a process that [meets] all the [claim]
limitations and (2) determining that the invention would work for its intended
purpose.”292 Here, the majority found that although Dr. Barry (1) had practiced all claim
281
Id.
282
Barry v. Medtronic, Inc., 914 F.3d 1310, 1316-1317 (Fed. Cir. 2019).
283
Id. at 1317-19.
284
Id. at 1319.
285
Id. In late 2002 or early 2003, Dr. Barry had begun working on the idea with a sales
representative of the DePuy medical-device company, whose devices Dr. Barry modified (or had
modified on his behalf).
286
Id.
287
Id. at 1321.
288
See id. at 1327-29; id. at 1336-37 (Prost, C.J., dissenting-in-part).
289
Id. at 1331 (citing Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67 (1998)).
290
Id. at 1321 (citing Polara Eng'g Inc v. Campbell Co., 894 F.3d 1339, 1348 (Fed. Cir. 2018));
id. at 1331 (applying analysis from p. 1321 in the context of on-sale bar).
291
Id. at 1337 (Prost, C.J., dissenting-in-part) (citing Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67-
68 (1998)).
292
Id. (quoting In re Omeprazole Patent Litig., 536 F.3d 1361, 1373 (Fed. Cir. 2008)).
31

limitations during the 2003 surgeries,293 he (2) had not recognized they would achieve
their intended purpose until after the third surgery’s follow-up appointment in January
2004, after the critical date.294 Mixing experimental use and “ready-for-patenting”
considerations,295 the court reasoned this case was like the untested light pole assembly in
Manville, or the untested pedestrian alert system in Polara; in those cases, though those
inventions were practiced before the critical date, they were not then known to work for
their intended purposes, and so were not then ready-for-patenting.296
Second, the court suggested that even had the invention been ready for patenting
at the time of sale, analyzing the Clock Spring factors showed the experimental use
exception would have applied.297 The court clarified that so long as an inventor maintains
control over his invention, she need not inform her customer that the product is
experimental in order to benefit from the exception (that requirement does apply,
however, where the inventor loses control).298
Chief Judge Prost dissented.299 She would have held the invention claimed by the
’358 patent prima facie on-sale before the critical date.300 Her analysis also turned on the
293
Id. at 1321 (setting out public use standard); id. at 1331 (adopting same reasoning when
discussing on-sale bar).
294
Id. at 1322-23 (citing, among other cases, Seal-Flex, Inc. v. Athletic Track & Court Const., 98
F.3d 1318, 1324 (Fed. Cir. 1996)); id. at 1331 (adopting same reasoning when discussing on-sale
bar).
295
Id. at 1321 (acknowledging that “readiness for patenting and experimental use . . . are
related”).
296
Id. at 1325-26 (first citing Manville Sales Corp. v. Paramount Sys., Inc., 917 F.2d 544, 550
(Fed. Cir. 1990), then citing Polara Eng'g Inc v. Campbell Co., 894 F.3d 1339, 1349 (Fed. Cir.
2018)).
297
Id. at 1328 (“[R]egardless of the foregoing [discussion of, among other things, whether the
claims were ready-for-patenting], the August and October surgeries come within the
experimental-use exception. An inventor's use, while public in one sense, will not be considered a
statutory public use if the use was experimental.”); id. (citing for its experimental use factors
Clock Spring, L.P. v. Wrapmaster, Inc., 560 F.3d 1317, 1327 (Fed. Cir. 2009)). Those factors
include:
(1) the necessity for public testing, (2) the amount of control over the experiment
retained by the inventor, (3) the nature of the invention, (4) the length of the test
period, (5) whether payment was made, (6) whether there was a secrecy
obligation, (7) whether records of the experiment were kept, (8) who conducted
the experiment, (9) the degree of commercial exploitation during testing, (10)
whether the invention reasonably requires evaluation under actual conditions of
use, (11) whether testing was systematically performed, (12) whether the
inventor continually monitored the invention during testing, and (13) the nature
of contacts made with potential customers.
Id. See also id. at 1331 (adopting this analysis from the public-use portion of its opinion
into the on-sale portion of its opinion).
298
Id. at 1330-31 (discussing, among other cases, LaBounty Mfg., Inc. v. U.S. Int'l Trade
Comm'n, 958 F.2d 1066, 1072 (Fed. Cir. 1992)).
299
Id. at 1336-47 (Prost, C.J., dissenting-in-part).
300
32

ready-for-patenting prong.301 She agreed with the majority that (1) Dr. Barry had
practiced all claim limitations during the 2003 surgeries, but believed that (2) he came to
appreciate that the invention achieved its purpose before the critical date, either upon
completing the surgeries, or at the follow-ups to the first two surgeries (not at the third
follow-up, the first to occur after the critical date).302 Given the claims’ preamble stated
their purpose as “the amelioration of aberrant spinal column deviation conditions [that is,
multiple conditions],” and given Dr. Barry had testified a physician can achieve “the
correction [or amelioration] you are happy with” during the procedure, the purpose was
thus achieved after the second surgery treating a unique condition.303 By contrast, the
majority further credited Dr. Barry’s unsupported testimony that follow-ups were
required to confirm the “amelioration.”304 Even were follow-ups necessary, however,
Chief Judge Prost did not see how the follow-ups for the first two surgeries would not
have sufficed.305
Finally, Chief Judge Prost sought to clarify “our case law regarding the
relationship among reduction to practice, an invention's intended purpose, and the
experimental-use doctrine.”306 Under the majority’s resolution, “any consideration of
whether a use was experimental would be superfluous,” because finding the inventor has
not yet proven fitness for purpose would render the invention not ready for patenting and
so not in need of any experimental exception.307 To restore meaning to the exception,
Chief Judge Prost would allow an experimental exception even where an invention is
ready for patenting; this would be accomplished by respecting
a subjective, expansive understanding of an invention's ‘intended purpose’—one
that accommodates the good-faith, perfectionist inventor . . . . [In particular, Judge
Prost would hold that] if an inventor's pre-critical-date sale or public use is to test
an unclaimed or undescribed, yet inherent, feature of an invention (e.g.,
durability, safety), such testing may support the inventor's overall claim of
experimental use and thereby avoid invalidity.308
301
Id. at 1337 (Prost, C.J., dissenting-in-part) (citing Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67-
68 (1998)).
302
303
Id. at 1336-37 & n.3, 1340-41 (Prost, C.J., dissenting-in-part) (internal quotations omitted).
304
Id. at 1341 (Prost, C.J., dissenting-in-part) (characterizing majority findings, and quoting ’358
patent col. 6 ll. 7–8).
305
Id. at 1342 (Prost, C.J., dissenting-in-part).
306
307
308
Id. at 1344 (Prost, C.J., dissenting-in-part) (quoting Electromotive Div. of Gen. Motors Corp.
v. Transp. Sys. Div. of Gen. Elec. Co., 417 F.3d 1203, 1211-12 (Fed. Cir. 2005)).
33

Helsinn Healthcare S.A. v. Teva Pharms. USA, Inc., 139 S.Ct. 628 (Jan. 22, 2019).
The Supreme Court affirmed that the AIA’s on-sale bar includes so-called secret
sales, sales that do not publicly disclose the details of the invention, just as did the pre-
AIA on-sale bar under Pfaff v. Wells Electronics, Inc.309
Helsinn owned four patents310 directed to formulations of the drug palonosetron
for reducing chemotherapy-induced nausea.311 The critical date for the on-sale bar was
January 30, 2002.312 On April 6, 2001, MGI Pharma, Inc. contracted with Helsinn to
purchase and distribute the formulations.313 The details of the transaction were made
publicly available through SEC filings, but the filings did not disclose the specific dosage
for the formulations.314
Helsinn sued Teva, alleging that Teva’s ANDA infringed the patents-in-suit. The
trial court held that the patents were not invalid under the on-sale bar.315 For the patent
governed by the AIA, the court held that there was no commercial offer for sale because
the AIA changed the meaning of the on-sale bar to require the sale to publicly disclose
the details of the invention.316 The Federal Circuit rejected the trial court’s interpretation
of the AIA on-sale bar.
The Supreme Court granted certiorari on the question whether the America
Invents Act, by changing language in § 102, materially changed the standard for the on-
sale bar to patentability.317 Writing for a unanimous court, Justice Thomas held it did
not.318 “[A]n inventor's sale of an invention to a third party who is obligated to keep the
invention confidential qualifies as prior art for purposes of determining the patentability
of the invention.”319 Affirming the Federal Circuit, the Supreme Court reasoned that
“[t]he addition of ‘or otherwise available to the public’ [in the AIA’s restatement of
§ 102] is simply not enough of a change for us to conclude that Congress intended to alter
the meaning of the reenacted term ‘on sale.’”320 Congress would not have overturned
substantial precedent by subtly relying on the “associated-words canon” to imply a new
limit to “on sale” stemming from this mere “catchall” phrase.321
309
Helsinn Healthcare S.A. v. Teva Pharms. USA, Inc., 139 S.Ct. 628, 630 (2019) (citing Pfaff v.
Wells Elecs., Inc., 525 U.S. 55, 67 (1998)). One of us—Lemley—wrote an amicus brief
advocating for the result the Supreme Court reached. See Brief for 45 Intellectual Property
Professors as Amici Curiae Supporting Respondents, 139 S.Ct. 628 (2019) (No. 17-1229), 2018
WL 4941710.
310
U.S. Patent Nos. 7,947,724; 7,947,725; 7,960,424; and 8,598,219 (collectively, “the patents-
in-suit”).
311
Helsinn, 2017 WL 1541518, at *1.
312
Id.
313
Id. at *2.
314
Id. at *3.
315
Id. at *1.
316
Id. at *4.
317
Helsinn Healthcare S.A. v. Teva Pharms. USA, Inc., 138 S.Ct. 2678 (June 25, 2018).
318
Helsinn Healthcare S.A., 139 S.Ct. at 632.
319
Id.
320
Id. at 634.
321
Id.
34

Experimental Use
Polara Eng’g Inc. v. Campbell Co., 894 F.3d 1339 (Fed. Cir. July 10, 2018)
In this appeal from the Central District of California, the Federal Circuit affirmed
that Polara’s public use of its invention was experimental and so did not bar its later
claims under § 102(b),322 arguably expanding when durability testing qualifies as an
experimental use.
Polara sued Campbell for infringing its ’476 patent.323 The patent teaches how
two wires can provide both power and digital data to accessible pedestrian signal (APS)
systems that “enable both sighted and visually impaired pedestrians to receive
information concerning the status of the intersection to be crossed . . . .”324 (Prior art
required eight wires, but typical intersections only have two readily available.325) Before
the critical date,326 Polara installed such systems in two public intersections in Fullerton,
California, and one in Burnaby, Canada.327 The warmer and drier Fullerton site was
installed and monitored by Polara for no fee and with the agreement of Fullerton, whose
staff opened electrical cabinets to enable Polara’s work but was not bound by a
confidentiality agreement.328 The colder and wetter Burnaby site was managed by
Burnaby and an electrical company, both bound by confidentiality agreements with
Polara.329 No contemporaneous records were kept for some locations.330 Despite several
of the Clock Spring factors not being met,331 a jury found the public uses experimental
and negated the public use bar to patentability, and the trial court upheld this result
against defendant’s motion for judgment as a matter of law.332
On appeal, the Federal Circuit affirmed. It rejected Campbell’s contention that the
experiments here were neither (1) to test claimed features nor (2) to test their adequacy
for a purpose.333 As to the first legal ground for experimental use, the Federal Circuit
recognized that the use here indeed tested claimed features because, for instance, early
results prompted modifications to the two-wire system to parse data signals from
electrical noise.334 Moreover, confirming that the second legal ground is distinct, the
court said that even without evidence of feature-specific testing the use could have been
322
Polara Eng’g Inc. v. Campbell Co., 894 F.3d 1339, 1349 (Fed. Cir. 2018). The appeal
addressed other issues not discussed here.
323
Id. at 1343-44.
324
Id. at 1344 (quoting ’476 patent col. 2 11. 21-24).
325
Id.
326
Id. (describing the application date, the critical date, and the testing dates in this case falling
under the pre–AIA 35 U.S.C. § 102(b) (2006) regime).
327
Id. at 1344-45.
328
Id. at 1344.
329
Id. at 1350.
330
Id. at 1351.
331
Id. at 1348-49 (quoting Clock Spring, L.P. v. Wrapmaster, Inc., 560 F.3d 1317, 1327 (Fed.
Cir. 2009)) (describing thirteen factors for evaluating whether a use is experimental).
332
Id. at 1347 (recounting procedural history).
333
Id. at 1348 (citing Clock Spring, 560 F.3d at 1327).
334
Id.; see also, e.g., id. at 1345 (recounting modifications made).
35

held experimental because the testing concerned the durability and safety of the APS
system and therefore its adequacy for its purpose.335
Polara can be read to support the rule that testing the durability of an otherwise
conventional system in which an invention is embedded—even when not specifically
testing claimed features—may suffice as an experimental use if the overall system’s
durability is necessary to the invention’s purpose.336 The court reasoned that the facts in
Polara have a “striking similarity to the situation in City of Elizabeth.”337 But because
“durability” in Polara was less closely related to the claimed features and purpose of the
invention than in City of Elizabeth, it arguably expands when “durability” qualifies as an
experimental use.
Priority
Natural Alternatives Int’l, Inc. v. Iancu, 904 F.3d 1375 (Fed. Cir. Oct. 1, 2018)
Circuit affirmed that a patentee who waives any claim to benefit from the filing date of an
earlier patent application also waives any claim to benefit from that earlier filing date in
subsequent applications. 338
The case concerned the ’381 patent, the eighth in a chain directed to increasing
endurance in athletes.339 Natural Alternatives International (“NAI”) filed the first
application in 1997, and claimed the benefit of the earlier filing date in each subsequent
application.340 However, just after filing the sixth application, NAI amended the fifth
application’s “Cross Reference of Related Applications” to remove any claim to an
earlier date. 341 NAI amended no other patent application, and continued to claim the
benefit of each prior application in each subsequent filing.342 When examining the eighth
application, the patent examiner reasoned that the fifth application’s waiver broke the
priority chain, and found the eighth application obvious over the first patent.343 The
PTAB affirmed.344
On appeal, the Federal Circuit affirmed again.345 To gain the benefit of an earlier
priority date, an applicant must—among other obligations set out in § 120—make
335
Id. at 1349.
336
See id.
337
Id. at 1350 (citing City of Elizabeth v. Am. Nicholson Pavement Co., 97 U.S. 126, 136
(1877)).
338
Natural Alternatives Int’l, Inc. v. Iancu, 904 F.3d 1375, 1377 (Fed. Cir. 2018). See also
Natural Alternatives Int’l, Inc. v. Iancu, 738 Fed.Appx. 1016 (Fed. Cir. Oct. 1, 2018)
(unpublished) (affirming PTAB’s final determination on priority as to the ‘422 for the same
reasons given in the companion decision regarding the ‘381 patent).
339
Natural Alternatives Int’l v. Iancu, 904 F.3d at 1377.
340
Id.
341
Id.
342
Id.
343
Id. at 1378.
344
Id.
345
Id. at 1377.
36

“specific reference” to the earlier filed application.346 The Federal Circuit held that
specific reference entails “identifying each earlier-filed application by number and
explaining how the applications are related to one another.”347 NAI argued it had met this
burden by stating the earlier applications, with the waiver pertaining only to the fifth
application and with later applications depending not upon “a single growing chain[, but]
multiple fixed chains.”348 While the Manual of Patent Examining Procedure (“MPEP”)
appeared to support NAI’s position,349 it was not binding law.350 Supreme Court
precedent and longstanding practice was, however, conclusive: Parent and continuing
applications “are to be considered as parts of the same transaction, and both as
constituting one continuous application, within the meaning of the law.”351 To hold
otherwise would frustrate the Patent Act, which requires that the benefit of an earlier
filing date come at the cost of an earlier patent expiration.352
Regents of the Univ. of California v. Broad Inst., Inc., No. 2017-1907, 2018 WL
4288968 (Fed. Cir. Sept. 10, 2018)
Circuit affirmed the PTAB’s finding that a skilled artisan learning the University of
California’s (“UC”) method would not have had a reasonable expectation of success that
she could apply it as the Broad Institute’s (“Broad”) now teaches, and so Broad’s patent
did not interfere with UC’s.353 The prospective expectation of success was not disproven
by retrospective evidence that five groups besides Broad had actual success.354
The case concerned the CRISPR-Cas9 system for cutting DNA sequences.355 In
August 2012, UC researchers published an article explaining its use in vitro on DNA
outside of cells.356 Within months, Broad and five other groups applied the method in
eukaryotic cells; Broad was first to publish an article explaining the method’s use in
eukaryotes, specifically in human cells, in February 2013.357 Both UC and Broad applied
for patents.358 While the UC’s generic claims were not limited by cell type, Broad’s
species claims were limited to eukaryotic cells.359 The PTAB found that a skilled artisan
346
Id. at 1379 (citing 35 U.S.C. § 120 (2000) (then in effect)).
347
Id. at 1380.
348
Id. at 1379.
349
The MPEP states that “cancellation of a benefit claim to a prior application may be considered
as a showing that the applicant is intentionally waiving the benefit claim to the prior application
in the instant application.” Id. at 1381 (quoting MPEP § 201.11(III)(G) (8th ed., Rev. 1) (2003);
MPEP § 211.02(a)(III) (9th ed., Rev. 7) (2015)).
350
Id. at 1381.
351
Id. at 1382 (quoting Godfrey v. Eames, 68 U.S. 317, 326, 1 Wall. 317, 17 L.Ed. 684 (1863)).
352
Id. at 1383.
353
Regents of the Univ. of California v. Broad Inst., Inc., No. 2017-1907, 2018 WL 4288968 at
*1-2 (Fed. Cir. Sept. 10, 2018).
354
Id. at *6.
355
Id. at *1.
356
Id.
357
Id.
358
Id.
359
CRISPR-Cas systems do not naturally occur in eukaryotes. Id. at *1, *2.
37

seeking to apply the UC method to eukaryotes would not have reasonably expected
success, even though six groups rapidly tried and succeeded;360 Broad’s teachings
therefore remained nonobvious over UC’s claims and did not interfere.361
On appeal, the Federal Circuit affirmed there had been no reasonable expectation
of success.362 Expert testimony explained that other kinds of methods developed in
prokaryotes had required extensive experimentation (even lasting sixteen years) before
use in eukaryotes.363 And here, specific differences between prokaryotes and eukaryotes
made applying CRISPR-Cas9 to eukaryotes especially unpredictable.364 Publications and
contemporaneous records showed that skilled artisans believed this ex ante.365 One UC
inventor even said “we weren’t sure if CRISPR/Cas9 would work in eukaryotes” given
“many frustrations,” and believed getting it to work in human cells would be a “profound
discovery.”366 When Broad did succeed, others were surprised and praised them: a
colleague of a UC inventor said, “I hope you’re sitting down,” as “CRISPR is turning out
to be absolutely spectacular in [Broad’s] hands.”367 Finally, the quick success of the six
groups showed that skilled artisans were motivated to apply the UC teaching to
eukaryotes, but not that they had expected success.368 The court also found the PTAB had
correctly required only a reasonable certainty of success, and accounted for the person
having not only ordinary skill but also ordinary creativity.369 In sum, the court held there
was substantial evidence to affirm the finding of no interference.370
360
Id. at *6; see also Appellant’s Brief at 39 (explaining they also used similar conventional
techniques as they attempted to apply the method).
361
Id. at *2. Note that the PTAB finds non-interference if neither claim would have anticipated
the other if prior art. Id. at *3. A claim does not anticipate another if its teachings do not make the
other’s obvious. Id. A latter’s teachings do not obviously follow from an earlier’s if a skilled
artisan, despite having motivation to modify or combine earlier teachings to accomplish the
latter’s goals, would not have had a reasonable expectation of success in doing so. Id.
362
Id. at *3 (explaining that the standard for a finding of non-interference under § 102(g) for
reasons of nonobviousness is the same as that for non-obviousness under § 103).
363
Id. at *5.
364
Id. at *3-*4.
365
Id. at *4 (quotations and citations omitted).
366
Id.
367
Id.
368
Id. at *6 (citing Monarch Knitting Mach. Corp. v. Sulzer Morat GmbH, 139 F.3d 877, 883
(Fed. Cir. 1998)).
369
Id. at *5 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418, 420, (2007))
370
Id.
38

OBVIOUSNESS
Grunenthal GMBH v. Alkem Labs. Lmtd., 919 F.3d 1333 (Fed. Cir. Mar. 28, 2019)
In this appeal from the District Court of New Jersey, the Federal Circuit affirmed
that a patent claiming a polymorph of a known chemical compound was not invalid for
obviousness.371 “Our decision today does not rule out the possibility that polymorph
patents could be found obvious. But on the record here, the district court did not clearly
err . . . .”372
The case concerned the ’364 patent; that patent claimed the Form A polymorph of
tapentadol hydrochloride and a method of treating pain or urinary incontinence.373 The
prior-art ’737 patent described the process for synthesizing the same chemical compound
in Form B, but did not describe the resulting crystal structure or its polymorphs.374
Another reference, Byrn, described a decision tree for finding polymorphs.375 The district
court found that, even viewing the ’737 Form B compound in light of Byrn, obtaining
Form A still would not have been obvious.376
On appeal, the Federal Circuit affirmed.377 Alkem argued that the FDA had
guided researchers to screen for polymorphs of pharmaceutical solids, and that the district
court erred in ignoring this motivation to combine.378 But even so, Alkem had not met its
burden as to a reasonable likelihood of success. “If a person of ordinary skill can
implement a predictable variation, § 103 likely bars its patentability”; here, one could
not.379 First, there was no known or expected polymorph of tapentadol.380 Indeed, only
30% to 35% of all compounds have polymorphs.381 Second, obtaining a polymorph
would have required correctly choosing from a “wide array of conditions.”382 Bryn
suggested testing solvents from a non-exhaustive list of eight (which could also be
combined in mixtures) and then “vary[ing] temperature, concentration, agitation, [and]
pH.”383 An explicit obvious-to-try analysis also failed because of the “high number of
possible choices.”384 Third, there was no conclusive evidence that following the ’737
reference to produce Form B would sometimes, let alone always, also produce Form A
(thus the court said it would have rejected an inherent anticipation theory, though it was
371
Grunenthal GMBH v. Alkem Labs. Lmtd., 919 F.3d 1333, 1336 (Fed. Cir. 2019).
372
Id. at 1344-45.
373
Id. at 1336.
374
Id.
375
Id.
376
Id. at 1338.
377
Id. at 1341 (citing, for standard of law, IXI IP, LLC v. Samsung Elecs. Co., Ltd., 903 F.3d
1257, 1262 (Fed. Cir. 2018)).
378
Id.
379
Id. at 1344 (citing KSR Int'l Co. v.Teleflex Inc., 550 U.S. 398, 417 (2007)).
380
Id. at 1343.
381
Id. at 1341.
382
Id. at 1343.
383
Id. at 1342 (quoting Figure 1).
384
Id. at 1345 (citing KSR, 550 U.S. at 421).
39

not properly before the court).385 For all those reasons, a skilled artisan would not have
reasonably expected a polymorph screening of Form B to result in the claimed Form
A.386
Secondary Considerations
Forest Labs., LLC v. SigmaPharm Labs., LLC, 918 F.3d 928 (Fed. Cir. Mar. 14, 2019)
In this appeal from the District of Delaware, the Federal Circuit vacated and
remanded a finding of nonobviousness.387 The knowledge available to the ordinarily
skilled artisan is decisive in the secondary factors analysis, even where the inventor’s
superior knowledge allegedly results from information suppression that “may raise a
variety of concerns . . . .”388
The case addressed Forest’s ’476 patent on an antipsychotic drug, sold under the
brand Saphris, and formulated for taking sublingually or buccally (through the cheek).389
The prior art included oral formulations of the same drug as well as sublingual and buccal
formulations of other drugs.390 The district court found the sublingual and buccal
formulations of this drug not obvious.391
On appeal, the Federal Circuit vacated and remanded.392 An invention is obvious
where “there is a reason, suggestion, or motivation in the prior art that would lead one of
ordinary skill in the art to combine the references, and that would also suggest a
reasonable likelihood of success.”393 These can be shown explicitly, or implicitly through
assessing so-called secondary factors, including a long-felt need for the invention, or
unexpected results.394 Here, the Federal Circuit held the district court had failed to make a
finding as to whether a motivation to combine existed,395 yet it nonetheless examined the
district court’s analysis of several secondary factors:
Long-Felt Need: The Federal Circuit held the district court had not erred in
finding there had been a long-felt need for an antipsychotic without debilitating side
effects.396 An invention that resolves a long-felt need is usually a nonobvious one.397
Here, the side effects of prior-art drug formulations drove many patients off treatment.398
385
Id. at 1343.
386
Id. at 1343.
387
Forest Labs., LLC v. SigmaPharm Labs., LLC, 918 F.3d 928, 932 (Fed. Cir. 2019).
388
Id. at 935-36.
389
Id. at 931-32.
390
Id. at 933-34.
391
Id.
392
Id. at 937.
393
Id. at 934 (quoting Smiths Indus. Med. Sys., Inc. v. Vital Signs, Inc., 183 F.3d 1347, 1356
(Fed. Cir. 1999)).
394
Cf. id. at 934 (citing Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350,
1359 (Fed. Cir. 2017)).
395
Id. at 934-35.
396
Id.
397
Id. at 936 (citing WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1332 (Fed. Cir.2016)).
398
Id.
40

Even assuming Forest’s drug did not have better efficacy or compliance rates than prior
alternatives—as SigmaPharm alleged—sufficient evidence existed for the district court to
find Saphris did meet the need for reducing side effects.399
Unexpected Results: The Federal Circuit held the district court had erred,
however, in finding that the sublingual formulation had unexpected results.400 Inventions
having results that surprise ordinarily skilled artisans are usually not obvious.401 Here, the
Federal Circuit reasoned that the researchers simultaneously discovered an unexpected
problem and an unexpected solution to it,402 and so the net result of the invention was not
surprising.403 Specifically, the researchers discovered that the prior-art oral formulation
caused cardiotoxic problems, while the invented sublingual formulation did not.404 Had
the ordinarily skilled artisan previously known of the cardiotoxic problems in the oral
drug, the ability of a sublingual formulation to resolve those problems would have been
unexpected.405 But such an artisan instead would have thought the oral drug did not have
those problems, and so expected the sublingual drug to not have those problems. The
Federal Circuit seemed to go further still when discussing motivation to combine: Even
assuming Forest had special, prior knowledge about the cardiotoxicity of its prior-art oral
drug (as SigmaPharm alleged), the obviousness analysis would not change because that
analysis turns on the knowledge of the ordinarily skilled artisan.406 That artisan would
have been motivated to try the sublingual formulation because she would not have
anticipated the unexpected problem.
While denying a patent in these circumstances might seem unfair, the Federal
Circuit did not modify its obviousness analysis to remedy alleged inequities. Forest’s
alleged suppression “may raise a variety of concerns,” but it does not change obviousness
to the ordinarily skilled artisan.407
Motivation to Combine: Ultimately, the Federal Circuit vacated and remanded
the case so that the trial court could make an explicit finding as to whether or not a
motivation to combine existed.408 The district court had rejected a bioavailability concern
as one motive (it appeared insufficiently founded),409 and the general need for having
multiple treatment methods as another (it appeared insufficiently motivating).410 But the
trial court had neither accepted nor rejected a third possible motivation to combine prior
399
Id. at 936-37.
400
Id.
401
Id. at 937 (In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995)).
402
Id. at 935 (“The district court characterized the inventors’ discovery as a recognition of an
unknown problem in the art [cardiotoxicity] in conjunction with the discovery of the solution to
that problem [sublingual administration reduced cardiotoxicity].”)
403
Id. at 937 (“A person of ordinary skill could not have been surprised that the sublingual route
of administration did not result in cardiotoxic effects because the person of ordinary skill would
not have been aware that other routes of administration do result in cardiotoxic effects.”)
404
Id.
405
Id. at 935-36.
406
Cf. id. at 935-36 (discussing that special knowledge of ).
407
Id.
408
Id. at 934-35.
409
Id. at 934.
410
Id. at 935.
41

art: that schizophrenic patients had not complied with oral administration, and that they
were likely to better comply with sublingual administration.411
Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. Jan. 10, 2019)
In this appeal from the Patent Trial and Appeal Board (PTAB), the Federal Circuit
affirmed a finding of obviousness under § 103 where one of two offered references
anticipated every element, holding that in this context the PTAB “was not required to
make any finding regarding a motivation to combine . . . .” where only one reference was
required.412
The matter concerned Realtime’s ’892, which discloses a system of lossless data
compression using a “dictionary.”413 In that system, a given string can be defined by
another shorter string in a “dictionary”; when compressing, any time the given string
appears in the input it is replaced by the shorter string from the dictionary (which can be
defined as the compression occurs); when decompressing, the reverse occurs.414 HP
petitioned for inter partes review (IPR), alleging that several of the ’892 claims were
obvious over O’Brien in view of Nelson (and that other claims, not contested on appeal,
were obvious in further view of Welch).415 The parties focused on the element
“maintaining a dictionary.” “HP relied on Nelson simply to demonstrate that . . . the
string compression disclosed in O'Brien was, in fact, a type of dictionary encoder,” and
“argued in the alternative that Nelson disclosed some of the elements in the claims at
issue.”416 But Realtime conceded that O’Brien disclosed a dictionary encoder.417 Finding
this and all other elements therefore present in O’Brien, the PTAB found the ’892 patent
obvious over O’Brien alone.418
On appeal, the Federal Circuit affirmed. “[A] disclosure that anticipates under
§ 102 also renders the claim invalid under § 103, for ‘anticipation is the epitome of
obviousness.’”419 Here, as O’Brien anticipated every element of the ’892 claims, the
PTAB rightly found those claims obvious over O’Brien.420 Moreover, “the Board was not
required to make any finding regarding a motivation to combine” O’Brien with
Nelson.421 While normally a motivation to combine is required where multiple references
411
Id. at 934-35.
412
Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1373 (Fed. Cir. 2019).
413
Id. at 1370.
414
Id.
415
Id. at 1372.
416
Id. at 1372-73.
417
Realtime chose to focus on differences in how the claimed invention and the O’Brien
reference “maintain[]” a dictionary. The PTAB sidestepped this question of claim construction,
and it again proved unavailing on appeal. See id. at 1371 (explaining alleged differences in the
technologies); id. at 1374-76 (addressing construction issues, and summarizing that “[t]he Board
did not expressly construe the phrase ‘maintaining a dictionary,’ but found that O'Brien satisfied
this limitation because it disclosed all of the steps in [a] dependent claim” that stated
“maintaining a dictionary comprises the steps of”).
418
Id. at 1372.
419
Id. at 1373 (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)).
420
Id. at 1373.
421
Id.
42

are raised to show obviousness,422 here the Nelson reference was raised to support a point
that Realtime conceded (and otherwise to argue in the alternative, as proved
unnecessary).423
For good measure, the court noted that, had both references been necessary, a
motivation to combine existed here.424
Acorda Therapeutics, Inc. v. Roxane Labs., Inc., Nos. 2017-2078 & 2017-2134, 2018
WL 4288982 (Fed. Cir. Sept. 10, 2018)
In this appeal from the District of Delaware, the Federal Circuit affirmed that a
species patent was obvious over a blocking genus patent despite evidence the species
patent proved a commercial success; on the facts here, the blocking patent and not
intrinsic difficulty explained why inventors had not pursued the species earlier.425
The case concerned an expiring genus patent and a new species patent related to
treating multiple sclerosis, both of which Acorda had the exclusive right to use; infringers
challenged the species patent as obvious.426 Later commercial success suggests others
should have been motivated to do what the inventor later taught, and one explanation for
their failure to act may be nonobviousness; here, however, the district court found the
existence of the blocking patent provided an alternative explanation, and weighed the
commercial success less heavily as evidence of nonobvious.427 The patent was invalid.
On appeal, the Federal Circuit affirmed. The court summarized its holdings in
Merck I (commercial success does not evidence nonobviousness where a blocking patent
exists)428 and Merck II (commercial success may evidence nonobviousness even where a
blocking patent exists).429 To guide courts making the “fact-specific inquiry” into
whether a “blocking patent [did] or [did] not deter innovation in the blocked space,”430
the Federal Circuit listed a number of factors to consider:
whether the blocking patent can be successfully challenged . . . [;] the
costliness of the project; the risk of research failure; the nature of
improvements that might arise from the project, and whether such
improvements will be entirely covered by the blocking patent; the size of
the market opportunities anticipated for such improvements; the costs of
arriving at the improvements and getting them to market; the risk of losing
the invention race to a blocking-patent owner or licensee; the risk that the
blocking-patent owner (making its own economic calculations, perhaps in
422
Id. at 1372 (citing KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
423
Id. at 1373.
424
Id. at 1373-74.
425
Acorda Therapeutics, Inc. v. Roxane Labs., Inc., Nos. 2017-2078 & 2017-2134, 2018 WL
4288982, at *1, *20 (Fed. Cir. Sept. 10, 2018).
426
Id. at *1.
427
Id. at *20.
428
Id. at *18 (summarizing Merck & Co. v. Teva [Pharms.] USA, Inc., 395 F.3d 1364 (Fed. Cir.
2005)).
429
Id. at *19 (summarizing Merck Sharp & Dohme Corp. v. Hospira, Inc., 874 F.3d 724 (Fed.
Cir. 2017)).
430
Id. at *21.
43

light of its own other products or research activities) will altogether refuse
to grant a license to the improvement or will demand so large a share of
profits that the whole project is not worthwhile for the potential
innovator—all evaluated in light of other investment opportunities.”431
Applying several here, the court found important that Acorda had sought the genus
license432 and did not sublicense it to others,433 and that others tried but failed to design
around the genus patent.434 The FDA’s safe harbor to develop and submit applications for
new drugs that use others’ patents did not change inventors’ calculus because marketing
any new drug would still expose the inventor to suit.435 Taking those all into account, the
Federal Circuit found no error in the district court’s opinion, which “is best read not as
invoking a categorical rule, but as drawing conclusions on the limited factual
record . . . .”436
Judge Newman dissented, stating that the majority was wrong to attribute the
evidence of eventual commercial success to the existence of the blocking patent and not
to nonobviousness.437 Judge Newman would have expected innovators to use the safe
harbor and related rights to research on patented subject matter.438 Judge Newman also
challenged the relevant measure of success; she would have measured commercial
performance “against the products available for the same purpose” and “not against
infringing copies of the patented product.”439
PTAB Burdens
(Fed. Cir. Sept. 17, 2018)
Circuit reversed the PTAB’s finding that a patent was not invalid for obviousness.440 In
so doing, the Federal Circuit extended to inter partes review (“IPR”) the rule from
district court adjudications that
“where there is a range disclosed in the prior art, and the claimed invention falls
within that range, the burden of production falls upon the patentee to come
forward with evidence” of teaching away, unexpected results or criticality, or
431
Id. at *19.
432
Id. at *20.
433
Id. at *21.
434
Id. at *22.
435
Id. at *21 (discussing 35 U.S.C. § 271(e)(1)).
436
Id. at *18.
437
Id. at *22, *32-*33 (Newman, J., dissenting).
438
Id. at *32 (Newman, J., dissenting) (citation omitted).
439
Id. (“Commercial success is measured against the products available for the same purpose, not
against infringing copies of the patented product.”).
440
E.I. DuPont de Nemours & Co. v. Synvina C.V., No. 2017-1977, 2018 WL 4390796 at *14
(Fed. Cir. Sept. 17, 2018).
44

other pertinent objective indicia indicating that the overlapping range would not
have been obvious in light of that prior art.441
The case concerned the ‘921 reference, which disclosed reaction conditions for oxidizing
one particular chemical (or its derivatives) to form another chemical recognized as a
potential “building block[]” in the green chemical industry.442 Prior art addressed the
same reaction but disclosed different conditions, including pressure ranges that
overlapped with those in ‘921.443 DuPont petitioned for IPR on obviousness.444 In
particular, DuPont asserted that the patentee should bear the burden of disproving
obviousness because of the overlapping ranges. The PTAB cited Dynamic Drinkware445
and Magnum Oil446 as holding that no burden shifting could occur in IPR, and decided
the patent was not obvious.447
On appeal, the Federal Circuit reversed.448 The Federal Circuit clarified that even
if its precedent disfavored burden shifting in IPR, the practical burden shifting DuPont
urged did not require actual burden shifting.449 The patent challenger always bears the
burden of showing obviousness, but this burden is initially met when the challenger
presents prior art disclosing a range that overlaps with the patented range because,
“absent a reason to conclude otherwise, a fact finder is justified in concluding that a
disclosed range does just that—discloses the entire range.”450 To forestall that result,
then, as a practical matter, the patentee must provide the reason not to conclude the entire
range is disclosed.451 Applying this analysis, the Federal Circuit reversed; there was no
reason not to conclude the patented conditions were not already disclosed.452
Obviousness and Inherency
In re Copaxone Consolidated Cases, No. 2017-1575, 2018 U.S. App. LEXIS 28751
(Fed. Cir. Oct. 12, 2018)
In this appeal from the District Court of Delaware, the Federal Circuit held a
treatment regimen invalid for obviousness over a prior regimen and other prior art,453
reaffirming that the practical constraints of drug development, FDA approval, and patient
441
Id. at *9 (quoting Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013)).
442
Id. at *1.
443
Id. at *4 (showing table of conditions including temperature, solvent, and catalyst).
444
Id. at *3.
445
Id. at *8 (citing Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1379
(Fed. Cir. 2015) (treating burdens of persuasion and production for anticipation in an IPR)).
446
Id. (citing In re Magnum Oil Tools [Int’l], Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016) (treating
burdens of persuasion and production for nonobviousness)).
447
Id. at *1.
448
Id. at *8 (citing Galderma, 737 F.3d at 738).
449
Id. at *9.
450
Id.
451
Id. at *10.
452
Id. at *9, *14. Note that there were other issues on review.
453
In re Copaxone Consolidated Cases, No. 2017-1575, 2018 U.S. App. LEXIS 28751, at *2-3
(Fed. Cir. Oct. 12, 2018).
45

acceptance limit the options a person having ordinary skill in the art would attempt, and
so affect the obviousness inquiry.454
The case concerned several patents that describe Copaxone, a treatment for
relapsing-remitting multiple sclerosis. The treatment is to be taken three times per week,
each time using a syringe prefilled with a single 40mg/ML dose of glatiramer acetate
(“GA”) (the entire treatment being abbreviated “40mg GA 3x/week”).455 The priority
date was in 2009. The prior art included an orphan drug using a 20mg daily injection
approved in 1996 (20mg GA 7x/week).456 That orphan drug’s dosing was not determined
according to conventionally rigorous methods, yet because the most common reason for
patient dropout was “injection site reaction,” a researcher and the FDA urged further
research into the frequency and amount of dosing.457 Heeding the call, a 2002 study
researched the frequency of dosing: it dosed at 20mg every-other day (20mg GA
3.5x/week), showing similar benefits and fewer dropouts compared to the 1996 regime
(20mg GA 7x/week).458 A 2007 study evaluated a change in amount: it dosed at 40mg
daily (40mg GA 7x/week), showing increased benefits without increased side effects
compared to the 1996 regime (20mg GA 7x/week).459 Other prior art studies commented
on and solidified these findings, including the drug maker’s (“Teva’s”) own Pinchasi
reference—which combined less frequent injections with higher amounts of dosing
(40mg GA x3.5/week).460 Teva finally chose 40mg GA x3/week for its Copaxone trial,
ostensibly motivated to further reduce adverse reactions to injections461 while roughly
equating the weekly total dose of the 1996 regimen (20mg GA x7/week).462
Distilling this record, the District Court of Delaware found that ordinarily skilled
artisans “would have been motivated to pursue less frequent dosing with a reasonable
probability of success,” and that in particular the Pinchasi reference differed from the
claimed art only by one dose every two weeks.463 The claims were invalid as obvious.464
On appeal, the Federal Circuit affirmed. Teva argued that the district court had
inappropriately limited analysis to combinations from among “two dosing options (40mg
and 20mg), two regimens (1x/week and 3x/week), and one form (injections).”465 The
454
See, e.g., Id. at *24-27.
455
Id. at *3-4.
456
Id. at *4, *6-7.
457
Id. at *7-8.
458
Id. at *8.
459
Id. at *9.
460
Id. at *9-10 (citing Teva’s 2007 research), Id. at *10 (FORTE 2008); Id. at *10-12 (Khan
2008).
461
Teva’s own Phase III trial protocol for COPAXONE suggested that the “the natural next step
[after the studies would be] to reduce the dosing regimen of GA and find the optimal regimen that
[would] improve the convenience of treatment and reduce the burden and adverse events
associated with daily subcutaneous injections.” Id. at *13-14 (quoting J.A. 8266) (bracketed text
modified). This and one other piece of evidence were admitted to show the state of the art at the
critical date, even though they were published after the critical date and not admitted as prior art.
Id. at *12-14.
462
Id. at *14.
463
Id. at *16.
464
Id. at *16.
465
Id. at *27 (quoting Opening Br. 42).
46

district court disagreed. The literature and the practical realities of drug development and
delivery (including FDA approval and patient acceptance) limited the combinations to a
small number.466 And among the options, 40mg was obviously preferred to 20mg, and
fewer injections on fixed days of the week were obviously preferred to more injections on
shifting days (as every-other-day regimes require).467 The dose of 40mg and the thrice-
weekly schedule were each obvious to try independently, and the combination of both
was also obvious.468 Also, by 2005, ordinarily skilled artisans knew oral delivery of this
drug was ineffective, leaving subcutaneous delivery preferred.469
Teva also argued that because the pharmacokinetic and pharmacodynamic
(“pk/pd”) profiles of this orphan drug remain unknown, any particular regimen by
definition would be a nonobvious one.470 But as a matter of fact, Teva itself, in its 1996
application to the FDA, stated that pk/pd studies “would be of limited value.”471 And as a
matter of law, no precedent precluded a finding of obviousness where pk/pd profiles were
unknown.472
Finally, Teva argued that certain claims were limited by the requirement of
improved patient tolerance.473 The court found this additional limitation did not make the
claims any less obvious. The district court had relied on the prior art, on Teva’s expert’s
admissions at trial, and the “common sense” understanding that fewer injections would
lead to fewer problems tolerating injections.474 Teva also argued the same point with
respect to claim limitations requiring reduced frequency and severity of injection site
reactions.475 Here, too, an ordinarily skilled artisan would have reasonably expected both
outcomes to result from reduced frequency of injection, as Teva’s expert admitted.476
Endo Pharms. Sols. Inc. v. Custopharm Inc., 894 F.3d 1374 (Fed. Cir. July 13, 2018)
patent was not obvious over prior art, emphasizing that the challenger bore the burden of
showing a limitation inhered in prior art.477
466
Id. at *26-27.
467
Id. at *17, *31 (suggesting also that trial evidence showed a still more-limited number of
schedules would be likely to succeed given patient compliance problems, e.g., patients prefer to
inject on fixed weekdays rather than every other day).
468
Id. at *29-30 (following reasoning of Hoffmann-La Roche Inc. v. Apotex Inc., 748 F.3d 1326,
1329 (Fed. Cir. 2014)).
469
Id. at *29.
470
Id. at *35 (quoting J.A. 20689).
471
Id. at *35 (quoting J.A. 20689).
472
Id. at *32-33 (quoting In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent
Litigation, 676 F.3d 1063, 1063, 1070 (Fed. Cir. 2012)).
473
Id. at *35.
474
Id. at *35-38. The expert admitted prescribing the 20mg daily drug as an off-label every-other-
day drug to improve tolerance. Teva’s drug trial protocol, used not as prior art but as evidence of
the state of art, suggested similarly. Id.
475
Id. at *39.
476
Id. at *41 (quoting the expert as stating that, with a decrease in frequency, “there would, by
definition, then also be a decrease in the severity of the adverse events” (quoting J.A. 5523)).
477
Endo Pharms. Sols. Inc. v. Custopharm Inc., 894 F.3d 1374, 1376, 1378 (Fed. Cir. 2018).
47

The case concerned claim 2 of the ’640 patent and claim 18 of the ’395 patent,
which covered a dosage and method of injecting testosterone undecanoate (“TU”) to treat
men with low testosterone.478 Among three key advances was the drug-delivery vehicle:
castor oil and a co-solvent, where the castor oil is 42% or less by volume.479 Generic
drugmaker Custopharm argued that all three advances were obvious over prior art, and in
particular that the castor oil vehicle was an inherent limitation of the prior art. Indeed, the
vehicle used in several pre-critical date studies fell within the formula later claimed,
though the studies’ authors made this known only after the patent issued.480 Custopharm
bore the burden of proving no other vehicle could have been used by the studies; it did
not, and so the court found the vehicle was not “necessarily present” in the study.481
On appeal, the Federal Circuit affirmed all three advances were not obvious,482
and that prior art did not inherently disclose the vehicle.483 Custopharm failed to show a
skilled artisan could deduce the vehicle from the pharmokinetic performance detailed in
the studies. [That has not traditionally been the test for inherency, however]. While Endo
had failed to show any other vehicle sufficed, Custopharm bore the burden of disproving
other potential vehicles – a seemingly impossible burden.484
Obviousness-Type Double Patenting
Novartis Pharms. Corp. v. Breckenridge Pharm. Inc., 909 F.3d 1355 (Fed. Cir. Dec. 7,
2018)
In this appeal from the District of Delaware, the Federal Circuit held that “a post-
URAA patent that issues after and expires before a pre-URAA patent [could not] qualify
as a double patenting reference against [the] pre-URAA patent.”485 (The URAA is the
Uruguayan Round Agreement Acts of 1994 that created the 20-year patent term)
The case concerned two Novartis patents sharing the same effective filing date.
The ’772 patent was filed first and issued first; the ’990 patent was filed second and
issued second—but expired first.486 This was possible because, while the ’772 patent’s
seventeen-year term began running only after issuance and then was extended by five
years under § 156, the ’990 patent’s twenty-year term began running immediately upon
filing per the intervening URAA.487 The parties stipulated that the ’772 patent would be
478
Id. at 1376-77.
479
Id. at 1376-78. Prior publications regarding similar treatments disclosed a higher TU dosage,
did not disclose the use of a co-solvent, and did not disclose an injection schedule.
480
Id. at 1378.
481
Id. at 1378-79
482
Id. at 1379-86.
483
Id. at 1379.
484
Id. at 1381-82
485
Novartis Pharms. Corp. v. Breckenridge Pharm. Inc., 909 F.3d 1355, 1360-61 (Fed. Cir. 2018).
486
Id. at 1357-58.
487
Id. at 1358, 1359.
48

invalid if the later-filed but earlier-expiring ’990 patent was a double patenting
reference.488 The district court found that it was.489
On appeal, the Federal Circuit reversed.490 Under Gilead Sciences, Inc. v. Natco
Pharma Ltd,491 which concerned two post-URAA patents,492 “the expiration date is the
benchmark of obviousness-type double patenting,” and a later-filed but earlier-expiring
patent can be a double-patenting reference for an earlier-filed but later-expiring patent.493
But here, one patent was a pre-URAA patent and one was a post-URAA patent, and the
Federal Circuit broke from prior courts to draw a distinction:494
In this particular situation where we have an earlier-filed, earlier-issued,
pre-URAA patent that expires after the later-filed, later-issued, post-
URAA patent due to a change in statutory patent term law, we decline to
invalidate the challenged pre-URAA patent by finding the post-URAA
patent to be a proper obviousness-type double patenting reference. Instead,
we apply our traditional, pre-URAA obviousness-type double patenting
practice . . . to [the] pre-URAA patent.495
That pre-URAA double-patenting doctrine focuses on issuance date as “a reliable guide
for assessing whether a patent may serve as a double patenting reference against another
patent.”496 And here, “[w]hen the ’772 patent issued, the ’990 patent had not yet issued
and thus did not exist as a double patenting reference against the ’772 patent.”497
This result was consistent with policy rationales. The goal of double-patenting
doctrine is to prevent the unwarranted extension of a patent term. Here, the term of the
earlier-filed ’792 patent was no different than it would have been had the later patent
never issued.498 Moreover, while Gilead shifted focus from issuance to expiration date in
order to combat patentee gamesmanship in filing and prosecuting patents, here the
patentee had applied for two patents using the same effective filing date, and their
differing expirations resulted not from gamesmanship but from the intervening statutory
change.499
488
Id.
489
Id. at 1358, 1360.
490
Id. at 1358.
491
Id. (citing Gilead Sciences, Inc. v. Natco Pharma Ltd., 753 F.3d 1208, 1212 (Fed. Cir. 2014),
492
Id. at 1358.
493
Id. at 1358.
494
Id. at 1360 (collecting cases); id. at 1363 (clarifying that “our holding [in Gilead] was limited
to the post-URAA context”).
495
Id. at 1366.
496
Id.; see also id. at 1362.
497
Id. at 1366.
498
Id. at 1361, 1367.
499
Id. at 1361, 1364.
49

Novartis AG v. Ezra Ventures LLC, 909 F.3d 1367 (Fed. Cir. Dec. 7, 2018)
In this appeal from the District of Delaware, the Federal Circuit held that
“obviousness-type double patenting does not invalidate an otherwise validly obtained”
Patent Term Extension (PTE) under 35 U.S.C. § 156.500
Novartis holds the ’229 patent claiming the active ingredient in its FDA-approved
drug Gilenya.501 After the patent issued, Novartis applied for its ’565 patent.502 Novartis
then obtained a PTE for its ’229 patent, bringing that patent’s terminal date beyond the
later-filed ’565 patent’s expiration.503 After Ezra stipulated to infringing the ’229 patent,
it argued that the earlier-filed but now-extended ’229 patent was invalid for obviousness-
type double patenting over the later-filed but earlier-expiring ’565 patent.504 The ’565
patent would expire first and should be made available for the public to practice, Ezra
argued, yet the now later-extending ’229 patent would prevent this.505 The District Court
rejected Ezra’s argument.506
On appeal, the Federal Circuit held that “if a patent, under its pre-PTE expiration
date, is valid under all other provisions of law, then it is entitled to the full term of its
PTE.”507 In so holding, the court extended its ruling in Merck & Co. v. Hi-Tech
Pharmacal Co.508 In that case, a later-filed patent had been terminally disclaimed to
avoid obviousness-type double-patenting over an earlier-filed patent, only to then be
extended with a PTE; nonetheless, the PTE was held valid.509 As a statutory matter
relevant to both cases, the court reasoned that whereas § 154 prevents a patent from
benefiting from a term extension for Patent and Trademark Office delays if that patent
has taken a terminal disclaimer to avoid double-patenting invalidity, § 156 grants Hatch-
Waxman extensions without any limitation related to terminal disclaimers.510
Furthermore, as a policy matter, obviousness-type double patenting doctrine aims
to prevent later-filed patents from extending earlier-expiring patents.511 But here the
earlier-filed patent ended up being later-expiring.512 Moreover, the court in Gilead
Sciences, Inc. v. Natco Pharma Ltd. had been concerned with application and prosecution
gamesmanship when it held that a later-issued but earlier-expiring patent could be a
double-patenting reference for another later-expiring patent.513 But here, the statute had
prescribed the extension, and so the case did not raise gamesmanship concerns.514
500
Novartis AG v. Ezra Ventures LLC, 909 F.3d 1367, 1369 (2018).
501
Id. at 1369.
502
Id. at 1370.
503
Id.
504
Id. at 1371.
505
Id. at 1370.
506
Id. at 1371.
507
Id. at 1374.
508
Id. at 1373 (citing Merck & Co. v. Hi-Tech Pharmacal Co., 482 F.3d 1317 (Fed. Cir. 2007)).
509
Id. at 1374 (citing Merck & Co. v. Hi-Tech Pharmacal Co., 482 F.3d 1317, 1322 (Fed. Cir.
2007)).
510
Id. at 1373-74.
511
Id. at 1374-75.
512
Id.
513
Id. (citing Gilead Sciences, Inc. v. Natco Pharma Ltd., 753 F.3d 1208 (Fed. Cir. 2014)).
514
Id.
50

51

CLAIM CONSTRUCTION
Du Pont v. Unifrax I LLC, No. 2017-2575, 2019 WL 1646491 (Fed. Cir. Apr. 17,
2019)
district court’s construction that the claim limitation “100% by weight”515 permitted some
residual dispersant.
The dispute concerned the ’926 patent, a continuation-in-part of the ’027 patent,
which disclosed a flame barrier laminate for thermal and acoustic insulation in airplane
fuselages.516 The multilayer laminate comprised in part “an inorganic refractory layer,” in
turn comprising “platelets in an amount of 100% by weight with a dry areal weight of 15
to 50 gsm and a residual moisture content of no greater than 10 percent by weight.” 517
Du Pont urged a construction that permitted some residual dispersant, while the allegedly
infringing Unifrax urged a plain-language construction permitting none.518 The district
court constructed the claim as permitting some dispersant.519
The Federal Circuit affirmed.520 Claim construction “give[s] meaning to the claim
terms according to how a person of ordinary skill in the art would have understood them
at the time of the invention in light of the entire patent . . . .”521
Claim Language: The patent claimed refractory layers having “100% by
weight . . . and a residual moisture content of no greater than 10 percent by weight.”522
Because a sum of components greater than 100% would be nonsensical, the “100% by
weight” limitation could not mean that refractory layers having material besides platelets
were necessarily disclaimed.523
Specification of Parent Application: The Federal Circuit also held the district
court had correctly treated the parent application’s specification as intrinsic to the
continuation-in-part.524 “When a parent application includes statements involving
‘common subject matter’ with the terms at issue”—and in particular when the parent is
also cited as a prior-art reference for the child—“those statements are relevant to
construction of the terms in the child patent.”525 The parent specification stated that one
embodiment “contains 100% platelets i.e. there is no carrier material . . . . However, there
may be some residual dispersant arising from incomplete drying of the platelet
515
Du Pont v. Unifrax I LLC, No. 2017-2575, 2019 WL 1646491, at *1 (Fed. Cir. Apr. 17, 2019).
516
Id. at *1.
517
Id. (quoting U.S. Patent No. 8,607,926 fig. 1 (emphasis added)).
518
Id. at *2-*3, *4.
519
Id.
520
Id. at *4.
521
Id. (citing Phillips v. AWH Corp., 415 F.3d 1303, 1312-14 (Fed. Cir. 2005) (en banc)).
522
Id. at *5 (quoting ’926 patent col. 9 ll. 14-17).
523
Id. at *5.
524
Id.
525
Id. at *6 (quoting Wang Labs., Inc. v. Am. Online, Inc., 197 F.3d 1377, 1384 (Fed. Cir.
1999)).
52

dispersion.”526 This showed there was a distinction between carrier and residual
dispersant that made the claim make sense.527
Prosecution History: The district court also did not err in finding Du Pont had
not disclaimed layers containing residual dispersant when working to overcome a prior
art reference, Tompkins.528 Tompkins taught a “70% by weight platelet concentration
secured to a fiber carrier.”529 But this only underscored that the patent applicant’s
changes used percentages in the same way, as a measure relative to the concentration of
the carrier.530
Dissent: Judge O’Malley dissented.531 She would have read the layer as
comprising 100% platelets when dry, and up to 10% moisture when still wet.532 (Judge
O’Malley also believed that residual dispersant might be okay—so long as that dispersant
left before the layer dried.533) Among other evidence, she pointed to an exchange at oral
argument:
The Court: “[T]he ‘100% by weight of platelets,’ is that ‘100% by
weight,’ itself, 15 to 50 gsm?” DuPont: “Yes. The dry aerial [sic]
weight.” . . . The Court: “And that 10% by weight is relative to what?”
DuPont: “To the total weight of the layer when it’s not dry. . . . [T]he dry
weight would be without the water, and the residual moisture is with.”534
Moreover, though one example in the specification did not have 100% platelets, the
language as amended during prosecution could no longer encompass that example—and
final claim language controls.535 Meanwhile, all other twenty-four examples in the
specification had 100% by weight platelets with no residual dispersants.536
Furthermore, Judge O’Malley reasoned that the majority’s reading of the parent’s
specification into the child’s claims was inappropriate.537 Even asuming the two should
be read together, the specification lacked the clear intent necessary to be lexicography,
and so the plain language in the child’s claims should control over the supposed
definition in the parent’s specification.538
526
Id. at *5 (quoting U.S. Patent No. 8,292,027 col. 2 ll. 32-36).
527
Id. at *6-*7.
528
Id. at *7.
529
Id.
530
Id.
531
Id. at *13 (O’Malley, J., dissenting).
532
Id.
533
534
Id. (alterations in court opinion) (quoting J.A. 819 at 63:13-64:25).
535
Id. (citing Elekta Instrument S.A. v. O.U.R. Sci. Int’l, Inc., 214 F.3d 1302, 1308 (Fed. Cir.
2000)).
536
537
538
Id.
53

Continental Circuits LLC v. Intel Corp., 915 F.3d 788 (Fed. Cir. Feb. 8, 2019)
In this appeal from the District of Arizona, the Federal Circuit held the trial court
had erred in construing the claims.539
The case concerned four patents disclosing “a multilayer electric
device . . . having a tooth structure” and methods for making it.540 At issue was whether
some claim limitations including “surface,” “removal,” and “etching” should themselves
be limited to apply only to a repeated desmear process.541 The district court found they
should be so limited, stressing that this process was cited in response to the patent
examiner’s indefiniteness and written description rejections during prosecution.542
On appeal, the Federal Circuit held this was error.543 The court stressed that
“because the prosecution history represents an ongoing negotiation between the PTO and
the applicant, rather than the final product of that negotiation, it often lacks the clarity of
the specification and thus is less useful for claim construction purposes.”544 Stepping
back, the claims did not mention a “repeated desmear process.”545 And the specification
did not disclaim other preparations, instead explaining only “[o]ne technique for forming
the teeth . . . .”546 (Even disapproving other processes was not tantamount to disavowing
them.547) Returning to the prosecution history, here too there was a lack of clear
disclaiming.548 The response to the examiner merely stated “a technique which forms the
teeth,” presumably among others.549
Given the parties had stipulated to infringement based on the erroneous
construction, the Federal Circuit vacated and remanded.550
Blackbird Tech LLC v. ELB Elecs., Inc., 895 F.3d 1374, (Fed. Cir. July 16, 2018)
In this appeal from the District Court of Delaware, the Federal Circuit held the
district court had erred in construing “attachment surface,” vacated the district court’s
resulting non-infringement finding, and remanded the case.551
The case concerned Blackbird’s ‘747 patent—which included apparatus and
method claims related to an LED lighting apparatus that could be used in older fixtures—
and specifically its claim 12. “Blackbird proposed construing [claim 12’s] ‘attachment
surface’ as ‘layer of the housing to which the illumination surface is secured,’ and
Defendants proposed ‘layer of the housing that is secured to the ballast cover and to
539
Continental Circuits LLC v. Intel Corp., 915 F.3d 788, 792 (Fed. Cir. 2019).
540
Id. at 792.
541
Id. at 792-93, 795.
542
Id. at 794.
543
Id. at 796.
544
Id. (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc)).
545
Id.
546
Id. at 797 (quoting ’582 patent col. 5 ll. 40–44 (emphasis added)).
547
Id. at 798.
548
Id.
549
Id. (emphasis in opinion) (quoting J.A. 2074 ¶ 7).
550
Id. at 800.
551
Blackbird Tech LLC v. ELB Elecs., Inc., 895 F.3d 1374, 1375 (Fed. Cir. 2018).
54

which the illumination surface is secured.’”552 The district court found “layer of the
housing that is secured to the ballast cover” to be correct, which led to a swift agreement
of noninfringement, and Blackbird’s appeal.553
The Federal Circuit held the district court erred,554 and adopted Blackbird’s
construction of “layer of the housing to which the illumination surface is secured.”555
First, the court held that fastener limitations in the embodiment—related to attaching the
attachment surface to the existing fixture’s ballast cover—should not be imported into the
claim,556 especially because the specification included alternative fastening
approaches,557 and no party argued the fastening method was important to the claimed
invention.558 Second, the court found that the prosecution history showed the “applicant
expressly eliminated from the claim a fastening mechanism that secures the attachment
surface to the ballast cover and replaced it with a fastening mechanism that secures the
attachment surface to the illumination surface,” and that a person having ordinary skill in
the art would understand this supported the district court’s construction.559 Finally, the
court rejected the argument that claim 12’s preamble—which announced “[a]n energy-
efficient lighting apparatus for retrofit with an existing light fixture having a ballast
cover”—required reading in the limitations on the attachment layer. The claim was a self-
complete apparatus claim that was not narrowed by its method of installation.560
Judge Reyna dissented,561 reasoning that the district court’s construction better
consisted with the invention’s intended function (retrofitting),562 the structure of the
claims (“attachment layer” was only included in claims related to retrofitting),563 and the
invention that the inventor possessed (likely one with an attachment layer appropriate to
retrofitting).564 The majority’s construction, Judge Reyna contended, risked rendering the
patent invalid.565 For instance, the retrofitting method claim 29 (not otherwise in dispute)
relied upon the term “attachment surface” to do work that the majority’s construction
would not accomplish, leaving the method unenabled.566 Judge Reyna would have
downplayed “ambiguities created by ongoing negotiations” in the prosecution history.567
552
Id. at 1376.
553
Id.
554
Id. at 1376-77 (citing reviewing standards).
555
Id. at 1379.
556
Id. at 1377.
557
Id.
558
Id. at 1378.
559
Id.
560
Id. at 1379.
561
Id. at 1379-82.
562
Id. at 1380 (citing Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005)).
563
Id. at 1380. He also argued that “attachment surface” must mean something more than surface
for attaching to the illumination surface, else “illumination surface” could be called the same.
564
Id. at 1381.
565
Id. at 1381 (citing Carman Indus., Inc. v. Wahl, 724 F.2d 932, 937 (Fed. Cir. 1983)).
566
Id. at 1381-82.
567
Id. at 1382 (quoting Grober v. Mako Prods., Inc., 686 F.3d 1335, 1341 (Fed. Cir. 2012)).
55

INFRINGEMENT
Joint Infringement
Apr. 8, 2019)
In this appeal from the Middle District of Florida, the Federal Circuit variously
affirmed, reversed, vacated, and remanded claims as to direct and indirect infringement
of patents, as well as to the damages thereby resulting.568 (For a summary of the holdings
on damages in this opinion, see the remedies section of this document.)
The case concerned several of Omega’s device and system patents for remotely
controlling vehicles; this system depended on devices communicating with a given
vehicle’s data bus and with remote receivers.569 CalAmp’s allegedly infringing devices
and systems—used for fleet monitoring and management—sometimes communicated
with a given vehicle’s data bus and always transmitted information remotely for
analysis.570 At trial, the jury found for Omega on direct and indirect willful infringement
and treble damages; the judge denied CalCamp’s motion for judgment notwithstanding
that verdict.571
On appeal, the Federal Circuit dissected the case and remanded much of it.572 In
particular, the court declined to find direct infringement where a third-party provided
some of the allegedly infringing system and an Akamai-style divided infringement theory
apparently was not asserted. The system claims in the ’876 and ’885 patents required “a
transmitter and a receiver for receiving signals from said transmitter”; for CalAmp’s
systems, however, the alleged receiver was a cell tower that CalAmp was not alleged to
provide.573 This destroyed a direct infringement theory. The Federal Circuit (and
apparently the parties) did not consider an Akamai-style theory of divided direct
infringement.574 (
On an induced infringement, theory, however, even though the jury could
appropriately have found underlying direct infringement on the system claims by
CalAmp’s customers,575 it could not have found the required mental state (knowledge of
568
Omega Patents, LLC v. Calamp Corp., No. 2018-1309, 2019 WL 1510676, at *12 (Fed. Cir.
Apr. 8, 2019) (summarizing result).
569
Id. at *1.
570
Id.
571
Id. at *2, *3.
572
Id.
573
Id. (quoting '876 patent, col. 11, ll. 36–37 (emphasis added), and citing '885 patent, col. 11, ll.
16–17).
574
See id. at *4 (failing to consider joint (divided) infringement theories); see also Akamai
Techs., Inc. v. Limelight Networks, Inc., 797 F.3d 1020, 1022 (Fed. Cir. 2015) (en banc) (“We
will hold an entity responsible for others' performance of method steps in two sets of
circumstances: (1) where that entity directs or controls others' performance, and (2) where the
actors form a joint enterprise.”).
575
Id. at *5-*6 (holding that CalAmp’s customers “controlled and used the system and received
the required benefits,” but that failure to guide the jury on the agreed construction of “vehicle
56

infringement) at CalAmp.576 The trial court wrongly excluded testimony from CalAmp’s
senior director of business development and its general counsel as to whether at product
launch they knew their customers would be infringing CalAmp’s patents.577 Hence, the
court vacated and remanded.
Prosecution History Estoppel
2017-1875, 2018 WL 4501536 (Fed. Cir. July 3, 2018, modified Sept. 20, 2018)
In this appeal from the Northern District of California, the Federal Circuit
affirmed a finding that prosecution history estoppel did not apply.578
The case concerned the ‘908 patent, which disclosed a power supply controller.579
Whereas it used a value of current as a signal to limit current, the infringed product used
a value of voltage. 580The patent owner argued the doctrine of equivalents applied
because, as Ohm’s Law states, current simply equals voltage divided by resistance. 581
The defendant argued that this argument should be estopped by the prosecution history of
the ‘971 patent, which was the parent patent for the ‘908 patent.582 There, the plaintiff
had argued that the prior art monitored “voltage rather than current.”583 The court
nonetheless found infringement.584
On appeal, the Federal Circuit affirmed. Typically, if a reasonable competitor
believes a “patentee surrender[ed] certain subject matter during prosecution, the patentee
is then barred from using the doctrine of equivalents to recover . . . on that same subject
matter.”585 Similar terms in a patent and its parent may nonetheless be construed
differently depending on language and context.586 Here, the court determined the two had
device” required setting aside findings of infringement on claim 12 of the ’876 patent and all
claims of the ’885 patent).
576
The Supreme Court of course requires a showing that the defendant knew the acts were
infringing at the time of infringement (though a mental state with respect to patent validity is
irrelevant). Id. at *8 (citing Commil USA, LLC v. Cisco Sys., Inc., 135 S.Ct. 1920, 1929 (2015);
Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 769-70 (2011)).
577
Id. at *8.
578
Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., Nos. 2016-2691 & 2017-1875,
2018 WL 4501536, at *1 (Fed. Cir. July 3, 2018, modified Sept. 20, 2018).
579
Id.
580
Id. at *6.
581
Id.
582
Id. at *7.
583
Id. (quoting J.A. 2283 (emphasis in original)).
584
Id. at *6.
585
Id. (citing Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 733–34
(2002)).
586
Id. at *6 (citing Abtox, Inc. v. Exitron Corp., 122 F.3d 1019, 1027 (Fed. Cir. 1997)).
57

different functions and that ‘971 specifically distinguished voltage from current, whereas
‘908 claim did not.587 The district court was correct.588
587
Id. at *7.
588
Id. at *8.
58

DEFENSES
Implied Waiver and Standard-Setting Organizations
Core Wireless Licensing S.A.R.L. v. Apple Inc., 899 F.3d 1356 (Fed. Cir. Aug. 16,
2018)
In this appeal from the Northern District of California, the Federal Circuit vacated
the district court’s finding that a patent was not unenforceable for implied waiver and
remanded for further proceedings.589 Equitable relief may be appropriate in the standard-
setting context, just as in the inequitable conduct setting under Therasense, where there is
either a) a material unfair benefit or b) “affirmative egregious misconduct” that warrants
rendering the entire patent unenforceable.590
This aspect of the case concerned the ’151 patent, which discloses improved
methods for synchronizing mobile devices with base stations.591 The original patent
owner, Nokia, proposed incorporating its improvement into a standard of the European
Telecommunications Standards Institute (“ETSI”).592 ETSI policy required members to
timely disclose any IP—including patent applications but excluding trade secrets “or the
like”—that might become essential if a member’s proposal were adopted.593 At the time,
Nokia had applied for but not received a U.S. patent (and owned a still-confidential
Finnish patent).594 The Nokia proposal was not adopted, but an Ericsson proposal that
made using the Nokia solution optional was adopted;595 Nokia disclosed its U.S. patent
when it issued, four years later.596 Under Hynix, an implied waiver exists where a
patentee’s “conduct was so inconsistent with an intent to enforce its rights as to induce a
reasonable belief that such right has been relinquished.”597 This may occur in standards-
setting where the patentee (a) owes a duty to disclose the patent and (b) breaches that
duty.598 The district court made three key findings: (1) the standard was never adopted,
(2) Nokia’s U.S. patent issued only after the standard was rejected,599 and (3) the other
ETSI members did not view Nokia as having waived its rights.600 Whether the court read
these facts to suggest Nokia did not breach its duty, or to suggest Nokia received no
unfair gain, the court in any case ruled the patent was enforceable.601
589
Core Wireless Licensing S.A.R.L. v. Apple Inc., 899 F.3d 1356, 1358 (Fed. Cir. 2018).
590
Id. at 1368 (quoting Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1292 (Fed.
Cir. 2011)).
591
Id. at 1358-59.
592
Id. at 1359.
593
Id. at 1366.
594
Id. Finish law evidently did not require the patents be disclosed for three years.
595
Id. at 1365.
596
Id.
597
Id. (quoting Hynix Semiconductor Inc. v. Rambus Inc., 645 F.3d 1336, 1348 (Fed. Cir. 2011)).
598
Id.
599
Id. at 1366.
600
Id.
601
Id. at 1368 (explaining possible interpretations of the district court opinion).
59

On appeal, the Federal Circuit vacated this finding and remanded. Unpersuaded
that (1) and (2) suggested no breach of duty, the Federal Circuit cited unrebutted
testimony that the ETSI policy created a duty to disclose upon merely proposing a
standard, even when only holding a patent application.602 (Other arguments about ETSI
policy did not change this result.)603 As to point (3), the court held “there is no
requirement under the implied waiver doctrine that a third party must interpret the
patentee’s conduct as constituting a waiver of its rights to enforce the patent; such
analysis is more relevant to equitable estoppel.”604 The Federal Circuit acknowledged that
the lower court may have understood these points correctly and yet decided that no
equitable relief was warranted.605 Still, the lower court needed to make clearer findings as
to (a) whether Nokia gained an unfair benefit (given its method was not adopted as a
requirement but as an option) and (b) whether Nokia’s actions amounted to “egregious
misconduct”; if either were true, equitable relief could be appropriate.606
Assignor Estoppel
Arista Networks, Inc. v. Cisco Sys., Inc., 908 F.3d 792 (Fed. Cir. Nov. 9, 2018).
Circuit affirmed the PTAB’s interpretation of § 314(a) and held that assignor estoppel
does not apply to an assignor’s petition for inter partes review (“IPR”).607
The case concerned an assignor, Dr. David Cheriton, who developed a method
and apparatus for securing networked communication devices; he assigned this ’597
patent to his employer, Cisco, before leaving to found his own company, Arista.608 Arista
petitioned for IPR to invalidate the ’597 patent, and the PTAB instituted review. 609 In so
doing, the Board did not apply the doctrine of assignor estoppel, “which in Cisco’s view
should have prevented Arista from challenging the patent’s validity.”610 The Board
reasoned that Congress had granted parties a broad power to challenge patents through
IPR, and had not expressly provided for assignor estoppel in that context.611 Cisco argued
Congress’s silence showed the background common law doctrine did apply.612
On appeal, the Federal Circuit found the doctrine did not apply.613 The court
found the statute “leave[s] no room for assignor estoppel” because the plain language of
602
Id. at 1367.
603
Id. at 1367-68.
604
Id. at 1367 (citing Hynix, 645 F.3d at 1348).
605
Id. at 1368 (explaining possible interpretations of the district court opinion).
606
Id. at 1369 (explaining remand).
607
Arista Networks, Inc. v. Cisco Sys., Inc., 908 F.3d 792, &&& (Fed. Cir. 2018).
608
Id. at 794-95, 801.
609
Id. at 795.
610
Id.
611
Id. at 801-802.
612
Id. at 802.
613
Id. at 803 (quoting Astoria Fed. Sav. & Loan Ass’n v. Solimino, 501 U.S. 104, 108 (1991)).
60

§ 311(a) allows challenge by anyone “not the owner of a patent.”614 As a policy matter,
allowing an assignor to challenge a patent via IPR but not via a district court proceeding
fit the Congressional goal of using IPR as a special and additional way to ensure patents
are valid and narrowly scoped.615 That being so, the PTAB’s decision to not apply
assignor estoppel doctrine to an IPR institution decision, even as it applies other equitable
doctrines to these decisions, was not arbitrary and capricious.616
614
Id. at 803.
615
Id. at 804.
616
Id.
61

REMEDIES
Damages
Apr. 8, 2019)
In this appeal from the Middle District of Florida, the Federal Circuit variously
affirmed, reversed, vacated, and remanded claims as to direct and indirect infringement
of patents, as well as the damages thereby resulting.617 (For the infringement piece and
additional case background, see the infringement section of this document.)
On appeal, and in passing, the Federal Circuit held that a party cannot “use the
answers to special questions as weapons for destroying the general verdict.”618 Here, the
jury instructions—proposed by CalAmp—included written questions about direct
infringement but not induced infringement.619 Nonetheless, the jury had been told that it
must “find that the customers infringed in order to find CalAmp liable for
inducement.”620 The jury had thus been properly instructed to award damages for induced
infringement, and the general verdict on damages survived this sort of challenge.621
However, the damages award did not survive another challenge: Because the one
claim still held infringed was insufficient to sustain the full damages amount, the Federal
Circuit vacated and ordered the trial court to reassess damages after reconsidering
infringement.622
Enplas Display Device Corp. v. Seoul Semiconductor Co., 909 F.3d 398 (Fed. Cir.
Nov. 19, 2018)
In this appeal, the Federal Circuit held the Northern District of California had
erred when it denied a motion for judgment as a matter of law (“JMOL”) that a damages
award for a hypothetical lump-sum licensing fee was not supported by substantial
evidence.623 The majority characterized the damages evidence as pertaining to non-
infringing products and said this could not be included in a licensing fee624; on this point,
Judge Newman’s dissent read the evidence as pertaining to possibly non-infringing
products and said that litigation risk related to these products could have been included in
the licensing fee.625
617
Omega Patents, LLC v. Calamp Corp., No. 2018-1309, 2019 WL 1510676, at *12 (Fed. Cir.
Apr. 8, 2019) (summarizing result).
618
Id. at *7 (citing Julien J. Studley, Inc. v. Gulf Oil Corp., 407 F.2d 521, 526–27 (2d Cir. 1969)).
619
Id.
620
Id. at *8.
621
Id. at *7-*8.
622
Id. at *9-*10.
623
Enplas Display Device Corp. v. Seoul Semiconductor Co., 909 F.3d 398, 402 (Fed. Cir. 2018).
624
See id. at 409, 411.
625
Id. at 416-19 (Newman, J., dissenting in this part).
62

The case concerned the ’209 and ’554 patents directed towards lenses for
diffusing backlighting in LCD displays.626 At trial, only the patentee, Seoul
Semiconductor Co. (“SCC”) provided expert testimony as to damages.627 The expert’s
testimony envisioned a hypothetical negotiation for a lump-sum license.628 She explained
that “$570,000 covers the[ ] five products” here accused of infringement.629 But a “more
pragmatic approach” would have been for the parties to also include consideration for
“freedom to operate” in light of “the volume of sales of potentially infringing products
beyond the ones in this case.”630 Based on “some publicly-available information from the
Enplas website,” the expert determined likely sales for the non-accused lenses and,
without explaining how past revenues and future revenues related, suggested a range of
$2 to $4 million for the lump-sum license fee.631 Enplas objected to this testimony’s
admissibility, but its objections were overruled.632 Enplas never challenged the substance
of this testimony on cross-examination, nor did it offer conflicting evidence from another
expert.633 The court instructed the jury that “[w]hen a one-time lump sum is paid, the
infringer pays a single price for a license covering both past and future infringing
sales.”634 The jury ultimately “awarded $4 million in damages for a one-time freedom-to-
operate payment for the ’554 patent and $70,000 for the ’209 patent.”635 Enplas moved
for a JMOL that the damages award was not supported by substantial evidence, but this
motion was denied.636
On appeal, the Federal Circuit held this denial was error.637 “A reasonable royalty
‘cannot include activities that do not constitute patent infringement, as patent damages
are limited to those “adequate to compensate for the infringement.”’”638 Accordingly,
“the jury’s $4 million damages award should be overturned because the only evidence
supporting the jury’s award was based, in part, on non-infringing sales of non-accused
Enplas lenses.”639 The majority also pointed to infirmities in the evidence, including the
100% difference between the low and upper bound of the $2 to $4 million range.640
626
Id. at 403.
627
Id. at 419 (Newman, J., dissenting in this part).
628
Id. at 409 (quoting J.A. 15534–35 at 717:22–718:3).
629
Id. at 409.
630
Id. at 410 (quoting J.A. 15538 at 721:1–8).
631
Id. at 409-10 (quoting J.A. 15535 at 718:17–25).
632
Id. at 410.
633
634
Id. at 410 (quoting Trial Tr. at 1295:6–1296:4, 1296:22–1297:3, Enplas Display Device Corp.
v. Seoul Semiconductor Co., No. 13-cv-05038 (N.D. Cal. Mar. 25, 2016) (Dkt. No. 454)
(emphases added [by Federal Circuit])).
635
Id. at 410.
636
Id. at 402.
637
Id..
638
Id. at 411 (quoting Astra Zeneca AB v. Apotex Corp., 782 F.3d 1324, 1343 (Fed. Cir. 2015)
(quoting § 284))).
639
Id. at 411.
640
Id. at 412.
63

Judge Newman dissented.641 She argued that the majority had conflated a license
fee covering noninfringing products with one covering potentially noninfringing
products.642 While the former was held unacceptable in AstraZeneca AB v. Apotex
Corp.,643 the latter should be held reasonable.644 As Judge Newman reasoned from the
facts:
[The expert proposed] a freedom-to-operate license, thereby avoiding the burdens
and uncertainties associated with monitoring, testing, and complying with a
license of limited scope that would have been only applicable to a single product.
. . . A license is intended to alleviate business uncertainty; no precedent limits the
hypothetical negotiation to consideration of a single product. This testimony[,
though the challenge to its admissibility was not appealed,] was correctly held
admissible, for the cost and disruption of separate litigation over every existing
and future product within the possible scope of the patent is a reasonable
consideration in license negotiations. 645
In short, a lump-sum license could appropriately include such consideration.646
2017-1875, 2018 WL 4501536 (Fed. Cir. July 3, 2018, modified Sept. 20, 2018)
In this appeal from the Northern District of California, the Federal Circuit
affirmed infringement but vacated the awarded damages, holding the entire market value
rule could not be used because Power Integrations failed to show that the patented feature
was the sole driver of demand for the device.647
At trial, Power Integrations showed Fairchild infringed a patent related to DC
power-switching regulators.648 At the damages phase,649 the jury awarded a reasonable
royalty of $139.8 million based on the entire market value rule.650
641
Id. at 413 (Newman, J., dissenting in this part). She claimed that the majority had accepted a
“grossly inaccurate description of the expert’s testimony,” because “non-infringing devices were
not ‘explicitly included’” in the license fee, just consideration related to freedom to operate rather
than litigate “potentially infringing products beyond the ones in this case.” Id. at 414 (quoting
J.A. 15538).
642
643
Id. (citing 782 F.3d 1324 (Fed. Cir. 2015)).
644
Id. at 416-17, 419 (Newman, J., dissenting in this part).
645
Id. at 416-17 (Newman, J., dissenting in this part).
646
Id.
647
Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., Nos. 2016-2691 & 2017-1875,
2018 WL 4501536, at *1 (Fed. Cir. 2018).
648
Id. at *1.
649
Note there were two damages trials. At the first, Power Integrations disclaimed reliance on the
entire market value rule, yet did not apportion a reasonable royalty payment to the patented
features. After the contemporaneous VirnetX decision newly required such apportionment, the
district court granted a new damages trial. Id. at *2 (discussing VirnetX, Inc. v. Cisco Systems,
Inc., 767 F.3d 1308, 1329 (Fed. Cir. 2014)).
650
Id. at *2.
64

On appeal, the Federal Circuit held the district court had erred in using the entire
market value rule.651 Generally, a reasonable royalty must be apportioned to cover only
the patented component, even where smaller than the smallest saleable unit.652 An
alternative award under the “entire market value rule is appropriate only when the
patented feature is the sole driver of customer demand or substantially creates the value
of the component parts.”653 “[T]he patentee must prove that [other valuable] features do
not cause consumers to purchase the product.”654 Here, the parties stipulated that other
valuable features existed, but Power Integrations did not show that these features did not
drive demand—indeed, it previously had won damages related to another feature in the
same device.655 The court vacated the damage award and remanded.
WesternGeco LLC v. Ion Geophysical Corp., 138 S.Ct. 2129 (June 22, 2018)
In this appeal from the Federal Circuit, the Supreme Court held that a patent
owner who proves that a U.S. exporter of components infringed under § 271(f)(2) can
collect lost foreign profits—including on uses outside the U.S.—as part of her damages
under § 284.656
The case concerned patents related to surveying sea floors, which WesternGeco
used exclusively.657 ION Geophysical introduced an indistinguishable survey system by
producing infringing components in the United States and exporting them for
assembly.658 WesternGeco sued under § 271(f) and was awarded “$93.4 million in lost
profits from uses in 10 foreign surveys [and] $12.5 million in royalties for 2,500 U.S.-
made products.”659 ION moved to set aside the verdict, arguing § 271(f) does not apply
extraterritorially.660 The Southern District of Texas denied the motion; the Federal Circuit
reversed on appeal; the Supreme Court vacated and remanded; the Federal Circuit
reinstated its holding; and the Supreme Court granted certiorari again.661
On appeal, the Supreme Court reversed and remanded.662 Federal statutes
presumptively apply only in the territorial jurisdiction of the United States.663 Courts may
apply U.S. law to a case that initially appears extraterritorial if, first, a “clear indication of
an extraterritorial application” in the statute rebuts the presumption,664 or, second, “the
651
Id. at *10.
652
Id. at *8 (citing VirnetX, 767 F.3d at 1327).
653
Id. at *10 (citing LaserDynamics v. Quanta Computer, Inc., 694 F.3d 51, 67 (C.A. Fed. 2012)).
654
Id.
655
Id. (citing Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 843 F.3d 1315 (Fed.
Cir. 2016)).
656
WesternGeco LLC v. Ion Geophysical Corp., 138 S.Ct. 2129, 2134 (2018).
657
Id.
658
Id.
659
Id. at 2142 (Gorsuch, J., with Breyer, J., dissenting).
660
Id. at 2135.
661
Id. at 2135-36. A decision in Halo Electronics had warranted the earlier remand from the
Supreme Court. Id. (citing Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S.Ct. 1923
(2016)).
662
Id. at 2136.
663
Id. (citing Foley Bros., Inc. v. Filardo, 336 U.S. 281, 285, 69 S.Ct. 575, 93 L.Ed. 680 (1949)).
664
Id. (citing Morrison v. National Australia Bank Ltd., 561 U.S. 247, 255 (2010)).
65

case involves a domestic application of the statute.”665 Here, the court exercised
discretion to avoid the first question and only answer the second.666 To answer it, the
court determines the statute’s “focus.” If “conduct relevant to [that] focus occurred in the
United States, then the case involves a permissible domestic application.”667 “Here, the
[foreign] damages themselves are merely the means by which the statute achieves its end
of remedying [domestic] infringements.”668 That is, the focus of § 271(f)(2) is the
domestic act of “suppl[ying] in or from the United States.”669 And the “overriding
purpose” of § 284 is to “affor[d] patent owners complete compensation” for
infringements.670 Accordingly, joining the two, this “can include lost foreign
profits . . . under § 271(f)(2).671
In dissent, Justice Gorsuch and Justice Breyer argued the result granted
“monopoly rents abroad premised on a U.S. patent that has no legal force there.”672 The
result went against the historical purpose of § 271(f)(2) to “ma[k]e clear that someone
who almost makes an invention in this country [is] liable as if he made the complete
invention in this country.”673 Going against all logic, the result apparently “allow[ed]
greater recovery when a defendant exports a component of an invention in violation of
§ 271(f)(2) than when a defendant exports the entire invention in violation of
§ 271(a).”674 And going against policy, the result invited reciprocal assertions of foreign
patent laws over the U.S. domestic economy.675 As an alternative remedy, Justice
Gorsuch and Justice Breyer would have suggested plaintiffs like WesternGeco ask for
higher royalties on U.S.-made components.676
WesternGeco LLC v. Ion Geophysical Corp., 913 F.3d 1067 (Fed. Cir. Jan. 11, 2019)
On remand from the Supreme Court,677 the Federal Circuit678 rejected ION’s
attempt to reopen a settled reasonable royalty award and remanded to the district court
the calculation of damages for lost profits.679 Four of the five claims that could have
supported lost profits had been invalidated while the case was at the Supreme Court.680
665
Id. (citing RJR Nabisco, Inc. v. European Community, 136 S.Ct. 2090, 2101 (2016)).
666
Id.
667
Id. at 2137 (quoting RJR Nabisco, 136 S.Ct. at 2101).
668
Id. at 2138.
669
Id.
670
Id. at 2137 (quoting General Motors Corp. v. Devex Corp., 461 U.S. 648, 655 (1983)).
671
Id. at 2139 (quoting General Motors Corp., 461 U.S. at 655).
672
Id. (Gorsuch, J., with Breyer, J., dissenting).
673
Id. at 2142.
674
Id.
675
Id. at 2139.
676
Id. at 2140.
677
See WesternGeco LLC v. Ion Geophysical Corp., 138 S.Ct. 2129 (2018), discussed supra.
678
WesternGeco LLC v. ION Geophysical Corp., 913 F.3d 1067 (2019).
679
Id at 1075.
680
Id at 1069, 1071.
66

ION argued that the reasonable royalty award was never final because of the
ongoing litigation and now deserved reconsideration because of the invalidations.681 But
here, the parties had stipulated under Fed. R. Civ. P. 58 to the reasonable royalty award
and only continued to contest the lost profits award.682 They had made this stipulation
even after inter partes review decisions in 2015 had found four claims unpatentable.683
Next, ION argued that no lost profits should be awarded because the parties were
not competitors—a contention the district court had rejected in a motion for judgment as
a matter of law.684 ION sells devices used in marine surveys, whereas WesternGeco sells
only marine surveys using those devices (WesternGeco’s patent claims were directed to
technology related to the devices).685 The court suggested that even if the relevant
question were “whether the patent owner’s and the infringer’s products are adequate
substitutes for consumers,” WesternGeco’s and ION’s devices “competed by performing
the same types of functions for surveys” and adequate evidence supported the jury
finding.686 However, the distinction between device and surveys using the device might
present issues for apportionment, that is, the determination of lost profits attributable to
infringement from the device and those attributable to other aspects of services (like
operating the marine vessel).687 The court held that issue had been waived on appeal,
though it could be opened in a new damages trial.688
ION also argued the lost profits should be set aside on the theory that where a jury
has made a general award and one of the bases for that award is later invalidated, the
entire award must be set aside.689 The court was not persuaded. It held that even if only
one of several claims once shown to a jury as a basis for damages remains valid, so long
as that claim was shown to the jury to be essential to those damages, then any error in
instruction is harmless,690 and the entire award of lost profits can be sustained.691 [That
seems self-evidently wrong, and inconsistent with the idea that every infringed claim is
entitled to damages, but it is consistent with the Federal Circuit’s effort to preserve black
box jury awards].
Such a showing had not been clearly made here, however. Multiple claims could
have been construed as covering or not covering the generically described “lateral
steering” that was necessary to perform the surveys.692 Accordingly, the Federal Circuit
instructed the district court on remand to determine whether on this record “there was no
681
It cited Fresenius USA, Inc. v. Baxter International, Inc. as holding a “judgment cannot be
final for purposes of intervening patent invalidations if any part of the litigation continues . . . . Id.
at 1071 (citing 721 F.3d 1330 (Fed. Cir. 2013)).
682
Id. at 1072.
683
Id.
684
Id.
685
Id. at 1070, 1072.
686
Id. at 1072-73 (citing BIC Leisure Prods., Inc. v. Windsurfing Int’l Inc., 1 F.3d 1214 (Fed. Cir.
1993)).
687
Id. at 1073.
688
Id.
689
Id. (citing i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831, 849– 50 (Fed. Cir. 2010), aff’d,
564 U.S. 91 (2011)).
690
Id. at 1074 (citing Avid Tech., Inc. v. Harmonic, Inc., 812 F.3d 1040, 1047 (Fed. Cir. 2016)).
691
Id. at 1074.
692
Id. at 1075.
67

dispute that the technology covered by [the sole remaining claim], independent of the
technology covered by the now-invalid claims [including one on which the valid claim
had depended], was required to perform the surveys at issue”; if so, the district court
could sustain the awarded lost profits, and if not it could order a new trial on lost
profits.693
Attorneys’ Fee Awards
Gust, Inc. v. AlphaCap Ventures, LLC, 905 F.3d 1321 (Fed. Cir. Sept. 28, 2018)
In this appeal from the Southern District of New York, the Federal Circuit
reversed and held defendants’ attorney fees should not be charged directly against
plaintiff’s counsel under 28 U.S.C. § 1927;694 in particular, § 1927 cannot be used to
award fees stemming from the initiation of a suit, but only from its “multiplication” (at
least under the Federal Circuit’s view of what the Second Circuit would have held).695
The plaintiff AlphaCap is a non-capitalized, non-practicing entity that hired
Gutride as counsel on a contingency basis.696 It then sued Gust in the Eastern District of
Texas for infringement of patents related to crowdfunding; the patents were newly
vulnerable to a § 101 challenge after Alice, which another district court had applied to
crowdfunding.697 Each side offered a settlement proposal and, after each rebuffed the
other, each filed further papers to escalate the conflict; another round of failed settlement
proposals led to further escalation and a transfer to the Southern District of New York—
the site of the earlier crowdfunding case.698 Ultimately, AlphaCap provided Gust with a
covenant not to sue and both parties’ claims were dismissed, except that Gust sought and
won attorneys fees under 35 U.S.C. § 285 and 28 U.S.C. § 1927.699 The Southern District
of New York found the case “exceptional” under § 285, for three reasons: (1) the patent
claims were clearly invalid under Alice, (2) the suit appeared to be brought for its
settlement value (especially as the plaintiff settled for a mere $50,000 on related claims
with other defendants), and (3) such a finding would dissuade similar conduct.700
Furthermore, the court found plaintiff’s counsel directly liable for those fees under
§ 1927 because counsel continued litigating unreasonably and in bad faith.701 Upon
reconsideration, the district court reiterated the result.702
693
Id.
694
See Gust, Inc. v. AlphaCap Ventures, LLC, 905 F.3d 1321, 1325 (Fed. Cir. 2018).
695
Id. at 1328 (“On its face, § 1927 only applies to actions that result in unreasonable and
vexatious multiplication of proceedings,” thereby “exclude[ing the] filing of a baseless complaint,
which is properly analyzed under Fed. R. Civ. P. 11.”).
696
Id. at 1325.
697
Id. at 1325 (first citing Alice Corp. Pty. Ltd. v. 2014 CLS Bank Int’l, 573 U.S. 208 (2014),
then citing Kickstarter, Inc. v. Fan Funded, LLC, No. 11-cv-6909, 2015 WL 3947178 (S.D.N.Y.
June 29, 2015), aff’d 654 F. App’x 481 (Fed. Cir. 2016)); see also Id. at 1326.
698
Id. at 1325-26.
699
Id. at 1326.
700
Id.
701
Id.
702
Id. at 1326-27.
68

On appeal, the Federal Circuit held that the district court errored in finding
Gutride directly liable for defendants’ fees under § 1927.703 Under the Second Circuit’s
§ 1927 case law, fees can be awarded directly against a party’s attorney only when “a
high degree of [factual] specificity”704 shows that the claims were (1) “entirely without
color” and (2) “brought in bad faith . . . .”705 On the “without color” prong, the Federal
Circuit reasoned that the implications of Alice for the case had not yet been settled at the
time of litigation,706 and imposing fees directly on litigators in such cases would
discourage needed doctrinal development.707 On the bad faith prong, the Federal Circuit
rejected each of the district court’s three bases. First, the record did not show that Gutride
knew the AlphaCap patents to be invalid. Gutride’s statements that the case was “not
worth litigating” was not a statement about its views of patent validity but of cost-
efficacy; a “finding” otherwise in the trial court’s grant of Gust’s motion to dismiss was
not a finding but an allegation construed as fact.708 Second, Gutride was not responsible
for its client’s choice of corporate structure and business model (seemingly purpose-built
to bring nuisance suits). To the extent Gutride was complicit in bringing frivolous
litigation, such complicity should be assessed under Rule 11.709 Third, Gutride’s filing
and opposition to transfer from the Eastern District of Texas was not “so entirely without
merit” as to signal improper purpose.710 Also, delay in settlement could not be properly
attributed to the attorney, as such decisions are wholly committed to clients.711 Moreover,
§ 1927 could never apply, as the district court had supposed, to fees associated with the
initial stage of a suit, as the section deals only with the “multiplication” of a suit.712
Frivolous initial filings are to be sanctioned under Rule 11.713
Judge Wallach dissented.714 On the first prong, the claims715 were “entirely
without color” under then-existing § 101 precedent.716 The only cases Gutride cited that
Judge Wallach found muddied the issue were decided after Gutride’s litigation had
ended.717 Similarly, on the bad faith prong, the limited evidence Gutride cited to justify
filing in and opposing transfer from the Eastern District of Texas was uncovered only
703
Fee awards are reviewed under the law of the regional circuit, here the Second Circuit, which
applies an abuse-of-discretion analysis. Id. at 1327.
704
Id. at 1328 (quoting Dow Chem. Pac. Ltd. v. Rascator Maritime S.A., 782 F.2d 329, 344 (2d
Cir. 1986)).
705
Id. at 1327 (quoting Advanced Magnetic Closures, Inc. v. Rome Fastener Corp., 607 F.3d 817,
833 (Fed. Cir. 2010) (citing Eisemann v. Greene, 204 F.3d 393, 396 (2d Cir. 2000))).
706
Id. at 1328-29. Wading into the underlying patent-eligibility questions under relevant
precedents, the court found them less dispositive on the facts presented than had the district court.
Id. at 1330.
707
Id. at 1329.
708
Id. at 1331-32. The court also reiterated that Alice was not yet well-understood. Id.
709
Id. at 1333.
710
Id.
711
Id. at 1334.
712
Id. at 1328.
713
Id.
714
Id. at 1341 (Wallach, J., dissenting).
715
Id. at 1336-37 (Wallach, J., dissenting) (discussing the patent claims here under Alice).
716
Id. at 1337-38 (Wallach, J., dissenting) (discussing the precedent).
717
Id. at 1338-39 (Wallach, J., dissenting).
69

after discovery.718 Judge Wallach would have reasserted that “the appetite for licensing
revenue cannot overpower a litigant’s and its counsel’s obligation to file cases reasonably
based in law and fact and to litigate those cases in good faith.”719
In re Rembrandt Techs. LP Patent Litigation, 899 F.3d 1254 (Fed. Cir. decided
July 27, 2018, public opinion issued Aug. 15, 2018)
In this appeal from the District Court of Delaware, the Federal Circuit affirmed
that litigation misconduct made the case exceptional under § 285—and so awarding
reasonable fees to the prevailing party was warranted—but it vacated the amount
awarded and remanded for the lower court to award only fees reasonably attributable to
misconduct.720
The litigation related to nine patents belonging to Rembrandt, eight relating to
cable modem technology and one, the ’627 patent, to over-the-air signals.721 Rembrandt
obtained the eight cable-modem patents from a company called Paradyne and its later
acquirer, Zhone.722 The district court found723 that 1) Rembrandt should have known that
Paradyne had let lapse and then improperly revived two of those patents,724 that 2) it
knew and did not timely disclose that Zhone had destroyed documents related to the
portfolio,725 and that 3) it had improperly hired former Paradyne/Zhone employees as
consultants with fees contingent upon the outcome of litigation in which they testified.726
But the court made no findings about misconduct related to Rembrandt’s final over-the-
air patent, the ’627 patent, which did not come from Paradyne or Zhone, and which was
the only patent that Rembrandt continued asserting until final judgment.727 Finding the
case exceptional under § 285, the court awarded almost all fees to defendants.728
On appeal, the Federal Circuit held that the district court’s findings and legal
conclusion of exceptionality under § 285 were not clearly erroneous.729 But it vacated the
amount of fees awarded because the district court had not clearly attributed them to the
misconduct.730 Under § 285, fee awards are “compensatory, not punitive,”731 covering
only “losses sustained” from misconduct.732 As a result, “the amount of the award must
718
Id. at 1340-41 (Wallach, J., dissenting).
719
Id. at 1339 (Wallach, J., dissenting) (quoting EconNet LP v. Flagstar Bancorp, 653 F.3d 1314,
1328 (Fed. Cir. 2011) (emphasis added)).
720
In re Rembrandt Techs. LP Patent Litigation, 899 F.3d 1254, 1260, 1280 (Fed. Cir. 2018).
721
Id. at 1260.
722
Id. at 1260-62. It bought six from Paradyne, and later two more from Zhone.
723
Id. at 1265 (summarizing).
724
Id. at 1261 (discussing revival); id. at 1272-75 (evaluating district court’s finding that the
improper revival amounted to inequitable conduct).
725
Id. at 1269-1271.
726
Id. at 1267-69.
727
Id. at 1266; id. at 1278 (“The district court’s order said nothing about the ’627 patent.”)
728
Id. at 1278.
729
Id. at 1266.
730
Id. at 1280.
731
Id. at 1278 (citing Cent. Soya Co. v. Geo. A. Hormel & Co., 723 F.2d 1573, 1578 (Fed. Cir.
1983)).
732
Id. (quoting Goodyear Tire & Rubber Co. v. Haeger, 137 S.Ct. 1178, 1186 & n.5 (2017)).
70

bear some relation to the extent of the misconduct”;733 a full award is rare.734 The district
court must explain this relation to the extent practicable.735 Here, the district court did
not.736 While it excluded some fee categories, it did not relate the fees awarded for the
’627 patent litigation—the over-the-air patent from a separate source—to the
misconduct.737 Further, the district court had rejected the claim that Rembrandt had sued
in bad faith or held untenable legal positions;738 this contrasted with Monolithic Power
Systems, where the court found misconduct “pervasive enough to infect the entire
litigation” and so a full award was appropriate.739
The Federal Circuit outlined how a district court might practicably attribute fees
to misconduct.740 In “run-of-the-mill” cases asserting only a few patents, a court might
more cursorily find that the misconduct pervades the full case and award all fees; in more
complex cases (here “nine” patents and “dozens” of defendants), a link between the
misconduct and the fee award (here $51 million) becomes necessary, even if that finding
amounts to a percent of fees attributable to the claims wherein misconduct occurred.741
What is required is a “rough justice, not . . . audit[ed] perfection.”742
Stone Basket Innovations, LLC v. Cook Med. LLC, 892 F.3d 1175 (Fed. Cir. June 11,
2018)
In this appeal from the Southern District of Indiana, the Federal Circuit held the
district court had not abused discretion by denying attorney fees under § 285.743 Because
the plaintiff was not on notice that its patent was likely invalid or that defendant would
move for fees, the plaintiff’s litigation was not exceptional.744
The case began when Stone sued Cook in the Eastern District of Texas. Cook
challenged the asserted patent’s validity, sought transfer to the Southern District of
Indiana, and petitioned the U.S. Patent and Trademark Office for inter partes review
(“IPR”); the case was transferred and stayed pending the IPR; once the PTAB instituted
IPR proceedings, Stone attempted but failed to obtain a license from Cook, then
requested and received adverse judgment in the IPR and dismissal with prejudice in the
district court.745 Finally, nearly two years after the suit began, Cook moved for fees under
733
Id. (quoting Rambus Inc. v. Infineon Techs. AG, 318 F.3d 1081, 1106 (Fed. Cir. 2003)).
734
Id. (quoting Highmark, Inc. v. Allcare Health Mgmt. Sys., Inc., 687 F.3d 1300, 1316 (Fed. Cir.
2012), vacated on other grounds, 134 S.Ct. 1744 (2014)).
735
Id. at 1279.
736
Id. (citing Monolithic Power Systems, Inc. v. O2 Micro Int’l Ltd., 726 F.3d 1359, 1369 (Fed.
Cir. 2013)).
737
Id. at 1265 (explaining excluded categories); id. at 1280 (evaluating ’627-related fee awards).
738
Id. at 1279.
739
Id.
740
Id. at 1280.
741
Id.
742
Id. (quoting, in the last quote selected, Goodyear Tire & Rubber Co. v. Haeger, 137 S.Ct.
1178, 1187 (2017)).
743
Stone Basket Innovations, LLC v. Cook Med. LLC, 892 F.3d 1175, 1184 (Fed. Cir. 2018).
744
Id. at 1181 (citing Aten Int’l Co. v. Uni- class Tech., No. CV 15-04424-AG (AJWx), slip op.
at 5 (C.D. Cal. Mar. 30, 2018)).
745
Id. at 1177.
71

§ 285. Cook alleged its invalidity contentions and deposition testimony put Stone on
notice that its position was weak and litigation unreasonable.746 But the court denied the
case was exceptional and so denied fees.747
On appeal, the Federal Circuit held the district court had not abused its
discretion.748 Octane teaches that a case stands out from others as exceptional under
§ 285 when a party is on notice that its position is weak yet pursues litigation
unreasonably.749 A party may be put on notice by being told that its position is weak (or
by willfully ignoring obviously weak aspects of its position), or by being threatened with
a motion for fees.750 In Rothschild, for example, the defendant gave plaintiff notice by
moving for judgment on the pleadings and serving a Rule 11 letter with appended copies
of anticipatory prior art.751 Here, nothing of the kind happened.752 The district court did
not error in finding Cook failed to notify Stone that its position was weak, for three
reasons. First, Cook’s invalidity contentions were inadequate notice: they buried an
allegedly blatantly anticipatory reference within thirty-two others, and did not document
the claims per the Eastern District’s Local Patent Rules.753 Second, Stone was entitled to
presume this allegedly anticipatory reference did not anticipate its patent, as the reference
was identified in its patent application.754 Third, Cook waited too long to state these
contentions clearly—and whatever strategic reasons Cook had for doing so did not
excuse this failure.755 Regarding the threat of fees, the district court again did not error in
finding Stone lacked notice. Cook waited nearly a year after serving its invalidity
contentions before warning Cook that it would move for fees.756
In sum, a defendant “cannot simply hide under a rock, quietly documenting all the
ways it’s been wronged, so that it can march out its ‘parade of horribles’ after all is said
and done.”757 The defendant who obfuscates cannot blame the plaintiff for prolonged
litigation.
746
Id. at 1179.
747
Id. at 1178.
748
Id. (explaining standard of review).
749
Id. at 1178 (quoting Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S.Ct. 1749,
1756 (2014)).
750
Cf. id.
751
Id. at 1182 (citing Rothschild Connected Devices Innovations, LLC v. Guardian Prot. Servs.,
Inc., 858 F.3d 1383, 1386 (Fed. Cir. 2017)).
752
Id. at 1181 (quoting Aten Int’l Co., slip op. at 5).
753
Id. at 1179.
754
Id. at 1179-80.
755
Id. at 1181.
756
Id. at 1182 (citing Rothschild Connected Devices Innovations, 858 F.3d at 1386).
757
Id. at 1181 (quoting Aten Int’l Co., slip op. at 5).
72

NantKwest, Inc. v. Iancu, 898 F.3d 1177 (Fed. Cir. July 27, 2018) (en banc)
In this appeal from the Eastern District of Virginia, the Federal Circuit held that
the Patent and Trademark Office (“PTO”) must pay its own attorney fees for appeals
brought by applicants to district courts under § 145.758
At the PTO, an examiner found NantKwest’s method to treat cancer unpatentable
as obvious, which the Patent Trial and Appeals Board affirmed.759 NantKwest appealed
under § 145. Whereas appeals under § 141 review PTO records and decisions per the
Administrative Procedure Act, appeals under § 145 are de novo inquiries that may use
new evidence to challenge PTO decisions.760 In exchange for robust review, the applicant
must pay “[a]ll the expenses” of both parties.761 At the § 145 appeal, the PTO won on
summary judgment, then moved for expenses; for the first time in history, the PTO
requested that attorney fees be included.762 The district court found attorney fees were not
covered under § 145.763
On appeal, a divided panel of the Federal Circuit reversed, but—voting sua sponte
to rehear the matter en banc—a majority of the full court affirmed the district decision.764
The opinions can be read to turn first on whether a system wherein the appealing party
always pays both sides’ attorneys’ fees contradicts the American Rule, and second, if so,
whether Congress was sufficiently “clear and explicit” in drafting § 145 to create and
permit such a system here.
On the first point, the en banc decision held that the American Rule is violated
whenever a party does not pay its own legal fees. The American Rule that each litigant
pays its own fees, win or lose, is a “bedrock principle” that “the Supreme Court has
held . . . presumptively applies and any statutory deviations from it must be ‘specific and
explicit.’”765 In contrast, the dissent (and the earlier panel’s majority) would have held
that the American Rule is only broken when a statute requires the losing party to pay, as
the Fourth Circuit had reasoned when interpreting a trademark statute in Shammas.766
On the second point, given the American Rule applied and was violated, the Federal
Circuit held that the statute did not meet the stringent “specific and explicit” standard to
be a congressionally permitted exception. While no “magic words” are needed, 767 the
Supreme Court has rejected “statutory language that might, to a layperson, seem broad
enough to cover attorneys’ fees . . . .”768 One permitted exception, for example, is a
758
NantKwest, Inc. v. Iancu, 898 F.3d 1177, 1180 (Fed. Cir. 2018) (en banc).
759
Id. at 1183.
760
Id. at 1180.
761
Id. (quoting 35 U.S.C. § 145 (1180)).
762
Id. at 1183.
763
Id.
764
Id.
765
Id. at 1181 (citing Alyeska Pipeline [Serv. Co. v. Wilderness Soc’y], 421 U.S. [240,] 260–62,
269 [(1975)]).
766
Id. at 1196 (Prost, C.J., dissenting) (citing 784 F.3d 219, 223–24 (4th Cir. 2015), cert. denied
sub nom. Shammas v. Hirshfeld, 136 S.Ct. 1376 (2016)); see also id. at 1183, 1185.
767
Id. at 1182 (citing Summit Valley Indus., Inc. v. Local 112, United Bhd. of Carpenters, 456
U.S. 717, 721–22 (1982)).
768
Id. at 1192 (citing cases interpreting various statutes).
73

statute directing a court to “award[] to a prevailing party . . . fees and other expenses.”769
Here, the term “expenses” was held to be insufficiently explicit to cover “attorneys’
fees.” The majority supported this decision by drawing upon 170 years of understanding
and practice,770 historic dictionaries,771 comparisons between this and other areas of the
Patent Act,772 comparisons between this and other statutes (which again treat attorneys’
fees as distinct from expenses or else as a component of expenses deserving explicit
mention),773 and other judicial decisions.774 It said the dissent’s reading of past decisions
failed to appreciate distinguishing details,775 and that its reading of legislative history was
not only inaccurate but inappropriate, given the standard requires clear intent on the
statute’s face.776
Finally, the majority rejected policy arguments that § 145 suits create costs that all
patent applicants bear, determining these costs to be small and the fairness of allocating
them better left to Congress, which recently rebuffed a § 145 repeal effort.777
The Supreme Court granted certiorari on March 4, 2019.
769
Id. at 1182 (citing Baker Botts L.L.P. v. ASARCO LLC, 135 S.Ct. 2158, 2164 (2015) (quoting
28 U.S.C. § 2412(d)(1)(A)).
770
Id. at 1180, 1181.
771
Id. at 1187.
772
Id. at 1190.
773
Id. at 1188-89.
774
Id. at 1191-92.
775
Id. at 1192-93.
776
Id. at 1194; see also id. at 1195 (rejecting the dissent’s arguments comparing text with another
part of the Patent Act that specifies that “expenses” covers the salaries of some PTO employees).
777
Id. at 1195.
74

PRACTICE AND PROCEDURE
Personal Jurisdiction
Jack Henry & Assocs. v. Plano Encryption Techs. LLC, 910 F.3d 1199 (Fed. Cir.
Dec. 7, 2018)
In this appeal from the Northern District of Texas, the Federal Circuit reversed the
dismissal of a declaratory judgment action, holding that threat letters can satisfy due
process requirements for personal jurisdiction and that no patent-specific rule applies.778
Plano Encryption Technologies (“PET”) was a non-practicing entity
headquartered in the Eastern District of Texas.779 PET sent letters to eleven banks having
principal offices in the Northern District of Texas, alleging each was using mobile
software that infringed its patents.780 Jack Henry—the company that developed the
software—and the banks sought a declaratory judgment in the Northern District, where
they had received the letters.781 That court dismissed the action, finding venue improper
under 28 U.S.C. § 1391 (2012) and the Federal Circuit’s holding in Avocent Huntsville
Corp. v. Aten International Co.782
The Federal Circuit reversed, holding that Avocent “did not depart from due
process precedent on this aspect of venue” and that no “‘unique’ rules” determine the
significance of threat letters for personal jurisdiction in the patent context.783
Accordingly, and also because “Texas’s long-arm statute extends to the limits of federal
constitutional due process,”784 the court went directly to the due process inquiry.
To find personal jurisdiction, that inquiry asks (1) whether the defendant
purposefully directed activities at the forum, (2) whether the claim “arises out of or
relates to” defendant’s activities there, and (3) whether asserting personal jurisdiction is
“reasonable and fair.”785 In New World International, Inc. v. Ford Global Technologies,
LLC, the Federal Circuit held the “minimum contacts” could be satisfied with a threat
letter.786 The court here further clarified that showing minimum contacts shows the first
two prongs—and so showing a threat letter shows the first two prongs.787 As a result, the
court said personal jurisdiction premised on threat letters is “domina[ted] [by] concerns
778
Jack Henry & Assocs. v. Plano Encryption Techs. LLC, 910 F.3d 1199, 1201, 1203, 1206
(Fed. Cir. 2018).
779
Id. at 1201.
780
Id. at 1202.
781
Id.
782
Id. at 1203 (citing Avocent Huntsville Corp. v. Aten Int’l Co., 552 F.3d 1324, 1333 (Fed. Cir.
2008)).
783
Id.; see also id. at 1206.
784
Id. at 1203 (quoting Companion Prop. & Cas. Ins. Co. v. Palermo, 723 F.3d 557, 559
(5th Cir. 2013)).
785
Id. at 1204 (citing Inamed Corp. v. Kuzmak, 249 F.3d 1356, 1360 (Fed. Cir. 2001)).
786
Id. at 1204 (citing New World Int’l, Inc. v. Ford Global Techs., LLC, 859 F.3d 1032, 1037–38
(Fed. Cir. 2017)).
787
Id. at 1204.
75

for . . . fairness,”788 that is, by the third prong. Turning to that prong, the court opined that
the most important fairness factor among those defined by World-Wide Volkswagen is
“burden to the defendant.”789 Decisions regarding patent threat letters have come out one
way or the other depending on the facts of each case.790 Here, PET failed to show that
litigating in the Northern District would be burdensome to it as defendant.791
Writing with “additional views,” Judge Stoll and Judge Wallach would have more
explicitly rejected Red Wing Shoe Co. and its progeny; those cases have led lower courts
to believe “a patent owner may . . . send cease and desist letters to a suspected infringer,
or its customers, without being subjected to personal jurisdiction in the suspected
infringer’s home [district] . . . .”792 That view, the concurring judges reasoned, runs
contrary to the “Supreme Court’s repeated warnings against creating special rules for
patent cases” and its clear precedent for personal jurisdiction.793 Judge Stoll and Judge
Wallach nonetheless agreed that the majority had applied the law according to this
correct view of the law.794
Exclusive Jurisdiction
Xitronix Corp. v. KLA-Tencor Corp., 882 F.3d 1075 (Fed. Cir. Feb. 9, 2018),
rehearing en banc denied 892 F.3d 1194 (Fed. Cir. June 15, 2018)
Xitronix brought against KLA a Walker Process monopolization claim under § 2
of the Sherman Act and §§ 4 and 6 of the Clayton Act based on the alleged fraudulent
prosecution of a patent.795 Acting sua sponte, the Federal Circuit determined that it did
not have jurisdiction over the case and transferred the case to the Fifth Circuit.796
The court explained that “[t]here is nothing unique to patent law about allegations
of false statements.”797 The court “acknowledge[d] that a determination of the alleged
misrepresentations to the PTO will almost certainly require some application of patent
law,” and possibly even “analysis of the claims and specifications” in the present case.798
But the Supreme Court’s recent decision in Gunn v. Minton made clear that “consistency
with the federal question jurisdiction statute requires more than a mere resolution of a
788
Id. at 1205.
789
These are the burden on defendant, the forum State’s interest, the plaintiff’s interest, and the
interstate judicial system’s interest. Id. at 1205-06 (citing World-Wide Volkswagen Corp. v.
Woodson, 444 U.S. 286, 292 (1980)).
790
Id. at 1205 (comparing, e.g., Red Wing Shoe Co. v. Hockerson-Halberstadt, Inc., 148 F.3d
1355, 1361 (Fed. Cir. 1998) (holding letter contacts insufficient), with Inamed Corp. v. Kuzmak,
249 F.3d 1356, 1362 (Fed. Cir. 2001) (holding letter and phone contacts sufficient)).
791
Id. at 1206.
792
Id. at 1207 (Stoll, J., concurring) (quoting Breckenridge Pharm., Inc. v. Metabolite Labs., Inc.,
444 F.3d 1356, 1362 (Fed. Cir. 2006)).
793
Id.
794
Id. (emphasizing the Supreme Court precedent that “the majority note[d]” and followed).
795
Xitronix Corp. v. KLA-Tencor Corp., 882 F.3d 1075, 1075-76 (Fed. Cir. 2018).
796
Id. at 1076.
797
Id. at 1077.
798
Id. at 1078.
76

patent issue in a ‘case within a case.’”799 “The underlying patent issue in this case, while
important to the parties and necessary for resolution of the claims, does not present a
substantial issue of patent law.”800 For instance, “[t]here is no dispute over the validity of
the claims—patent law is only relevant to determine if KLA intentionally made
misrepresentations.”801 Furthermore, “[b]ecause Federal Circuit law applies to
substantive questions involving our exclusive jurisdiction, the fact that at least some
Walker Process claims may be appealed to the regional circuits will not undermine our
uniform body of patent law.”802
Although the court previously determined that it had jurisdiction over Walker
Process claims in In re Ciprofloxacin Hydrochloride Antitrust Litigation decision, in that
case the court was “merely accepting a transfer from another circuit court” and only
analyzed jurisdiction in a single footnote.803 Moreover, “[t]o the extent our prior
precedent could be interpreted contrary to Gunn, the Supreme court rendered that
interpretation invalid.”804
After a Federal Circuit panel decided to transfer this matter to the Fifth Circuit,
the Federal Circuit denied an en banc rehearing.805
Judge Newman, dissenting from denial of rehearing en banc, gave four reasons
the case should have been reheard.806 First, she argued that raising this question sua
sponte and deciding it by panel was inappropriate for a question that should have been
sharply presented by the adversaries and decided by a full panel.807 Second, she argued
Gunn did not require the decision.808 That case held that an attorney malpractice claim
under state law did not raise a substantial federal question despite turning on whether, as
a hypothetical, a patent would have been held valid if the attorney had litigated the prior
case differently.809 Judge Newman doubted Gunn “silently divest[ed]” the Federal Circuit
of statutory authority to hear civil action arising under patent-related acts of Congress.810
This led to the third ground: Judge Newman argued transfer would contradict Congress’
policy811—and the Supreme Court’s analogous reasoning in Gunn812—to create
consistent patent law nationally by directing patent cases improperly into regional
799
Id. (quoting Gunn v. Minton, 568 U.S. 251, 259 (2013)).
800
Id.
801
Id.
802
Id.
803
Id. (citing In re Ciprofloxacin Hydrochloride Antitrust Litigation, 544 F.3d 1323 (Fed. Cir.
2008)).
804
Id.
805
Xitronix Corp. v. Kla-Tencor Corp., 892 F.3d 1194, 1195 (Fed. Cir. 2018).
806
Id. at 1202 (listing four reasons). For clarity and completeness, the summary’s listed reasons
have been reordered and expanded with others stated throughout the dissent.
807
Id. at 1199 (citing South Corp. v. United States, 690 F.2d 1368, 1370 n.2 (Fed. Cir. 1982) (en
banc)).
808
Id. at 1196 (citing Gunn, 568 U.S. at 251 (2013)).
809
Id. at 1198 (citing Gunn, 568 U.S. at 251 (2013)).
810
Id. at 1202.
811
Id. at 1196-97 (discussing 28 U.S.C. § 1295(a)(1)).
812
Id. at 1198-99 (discussing reasoning in Madtad Eng’g, Inc. v. USPTO, 756 F.3d 1366, 1370
(Fed. Cir. 2014)).
77

circuits.813 Fourth and finally: federal and regional circuit precedent required the opposite
result. The panel appeared to hold that a patent issue heard as a case-within-a-case does
not suffice to invoke Federal Circuit jurisdiction.814 Judge Newman, however, found that
the precedent supported a different rule: that a patent issue heard as a case-within-a-case
suffices for Federal Circuit jurisdiction so long as (1) actual patent-related rights turn
uniquely on the question815 and (2) no non-patent theory of the larger case (e.g., here, no
non-patent theory supporting the antitrust claim) is presented.816
In February 2019, the Fifth Circuit refused the transfer of jurisdiction, finding it
“implausible” that they had jurisdiction (the lower standard for accepting transfer from
another circuit). In March 2019, the Federal Circuit accepted jurisdiction over the case
given the refusal, while noting the Fifth Circuit’s “errors” in reading its precedent.
Forum Selection / Governing Law Clauses in License Agreements
Dodocase VR, Inc. v. MerchSource, LLC, No. 2018-1724, 2019 WL 1758481 (Fed.
Cir. Apr. 18, 2019)
In this case from the Northern District of California, the Federal Circuit affirmed
an injunction applying a licensing agreement’s forum selection clause to IPRs even
though it was silent on that question and so enjoining proceedings at the Patent Trial and
Appeal Board (“PTAB”).817
Dodocase makes virtual reality headsets that MerchSource distributes, and the
two entered a master licensing agreement (“MLA”) covering three patents.818 The MLA
contained a forum selection clause requiring disputes be settled in courts located in San
Francisco or Orange County.819 After the MLA was entered, MerchSource notified
Dodocase it would cease royalty payments, now believing the patents invalid, as
MedImmune v. Genentech gives it the right to do.820 It then filed inter partes review
(“IPR”) and post-grant review (“PGR”) proceedings before the PTAB.821 Meanwhile,
Dodocase brought this action before the district court, enjoining MerchShource’s
breach.822
813
Id. at 1202.
814
Cf. id. at 1197-98 (citing Christianson v. Colt Indus. Operating Corp., 486 U.S. 800, 803
(1988)).
815
See id. at 1195 (citing Transfer order at 1078); id. at 1198 (citing Gunn, 568 U.S. at 251); id. at
1201-02 (discussing cases).
816
See id. at 1200-01 (discussing In re Lipitor Antitrust Litigation, 855 F.3d 126 (3d Cir. 2017),
which held that because other antitrust theories besides the Walker Process claim were presented
the case should be litigated in the Third Circuit).
817
Dodocase VR, Inc. v. MerchSource, LLC, No. 2018-1724, 2019 WL 1758481, at *1 (Fed. Cir.
Apr. 18, 2019)
818
Id.
819
Id.
820
Id.
821
Id.
822
Id.
78

On appeal, the Federal Circuit applied state contract law, here of California,
according to the MLA’s governing law clause.823 The critical question in light of the
contract’s language was whether PTAB petitions “constitute[d] a ‘dispute’ that ‘aris[es]
out of or under” the MLA.”824 MerchSource argued that nothing about the PTAB
proceedings depended on the MLA. But in Texas Instruments, the Federal Circuit had
held that similar forum selection language “necessarily covers disputes concerning patent
issues.”825 In that case, the clause covered ITC proceedings; in this case, the district court
was right to view the clause as likely covering PTAB proceedings.826 The court made no
mention of Lear, Inc. v. Adkins or MedImmune v. Genentech, which give a right to
challenge patent validity outside the scope of a license.
Real Party in Interest
Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336 (Fed. Cir. July 9,
2018)
Circuit vacated the PTAB’s final written decisions on three inter partes reviews (“IPRs”)
and remanded so the PTAB could reconsider institution according to the correct legal test
for § 315(b), which bars petitions where a privy of the petitioner or real party in
interest—expansively defined—has received an infringement complaint more than one
year before the petition.827
More than a year before RPX filed its petition, Applications in Internet Time
(“AIT”) asserted two patents against Salesforce.com, Inc. (“Salesforce”) in district
court.828 Salesforce then petitioned for inter partes review but was rejected as time-barred
by § 315(b).829 Salesforce next renewed its contract with RPX, a company that “cost-
effectively extricate[s]” clients from suits.830 Shortly thereafter, RPX petitioned for IPRs
on the same patents.831 The PTAB allowed discovery as to whether Salesforce was a real
party in interest or whether RPX was in privy with Salesforce.832 On the one hand, RPX
advertised it was “100% aligned with [the interests of its] clients” and that it “help[ed]
after a litigation has begun”;833 on the other, RPX apparently followed its “best practices”
823
Id. at *2 (citing for the proposition that state law governs Volt Info. Scis., Inc. v. Bd. of Trs. of
Leland Stanford Junior Univ., 489 U.S. 468, 474 (1989)).
824
Id. at *3 (citing Dodocase VR, Inc. v. MerchSource, LLC, No. 17-CV-07088-EDL, 2018 WL
1456718, at *7 (N.D. Cal. Mar. 23, 2018)).
825
Id. at *3 (quoting Texas Instruments Inc. v. Tessera, Inc., 231 F.3d 1325, 1331 (Fed. Cir.
2000)).
826
Id. at *3.
827
Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1338 (Fed. Cir. 2018).
828
Id. at 1339 (citing Compl., Applications in Internet Time, LLC v. Salesforce.com, Inc., No.
3:13-cv-00628 (D. Nev. Nov. 8, 2013), ECF No. 1).
829
Id.
830
Id.
831
Id.
832
Id. at 1340.
833
Id. (quoting J.A. 71, 72).
79

to avoid implicating its clients as real parties; it spoke with Salesforce about the AIT
litigation, yet stopped short of discussing a decision to challenge validity.834 The PTAB
determined RPX had independently and self-interestedly petitioned for IPR, and that this
made Salesforce not a real party in interest and not in privy with RPX under § 315(b); to
reach this, the PTAB rejected a theory that RPX had been “willfully blind” to
Salesforce’s interests.835
On appeal, the Federal Circuit held that the PTAB’s “determination that
Salesforce was not a real party in interest under § 315(b) relied on an impermissibly
narrow understanding of . . . the term, was not based on consideration of the entirety of
the administrative record, and seemingly misallocated the burden of proof.”836 The court
began by applying Chevron.837 Where the statute speaks directly to an issue, the
reviewing court gives effect to its intent and not to the agency’s interpretation.838 Here,
Congress spoke directly. 839 It used the words “real party in interest” and “privy of the
petitioner” in § 315(b) in order to expansively “bar[] petitions where proxies or privies
[unable to petition for IPR for themselves840] would benefit from an instituted IPR, even
where the petitioning party might separately have its own interest in initiating an IPR.” 841
Fleshing out Congress’s intent,842 the Federal Circuit held that whether a party is a proxy
or privy is a fact-specific inquiry that turns on “whether a non-party ‘desires review of
the patent’ and whether a petition has been filed at a non[-]party's ‘behest.’”843 This
inquiry should address the factors explained in the Office Patent Trial Practice Guide,844
which incorporates common law principles of estoppel and preclusion,845 and those
explained by sources the guide cites, including the treatise by Wright & Miller846 on
agency.847 As for who bears the burden, a petition is presumed to identify all real-parties-
834
Id. at 1340-41 (quoting J.A. 80-81, 1229 ¶ 20).
835
Id. at 1343.
836
Id. at 1356; see also id. at 1346. Note that only recently did the Federal Circuit rule that it
could review determinations of time bars under § 315(b). Id. at 1344 (citation omitted).
837
Id. at 1345 (citing Chevron, U.S.A., Inc. v. Natural Resources Defense Council, Inc., 467 U.S.
837 (1984)).
838
Id. at 1345 (citing Chevron, 467 U.S. at 842-43).
839
Id. at 1351 (explaining this was “dictated by the language, structure, purpose, and legislative
history of § 315(b)”); id. at 1350 (citing statements by Senators Kyl and Schumer).
840
Proxies and privies would be unable to petition directly for IPR under § 315(a) if they had
already initiated district court action, under § 315(b) if they had already declined to petition for
IPR for more than a year since receiving an infringement complaint, or under § 315(e) if they had
already reached a final written decision. See id. at 1348.
841
Id. at 1346-47 (emphasis added).
842
In other words, the court did not proceed to Chevron’s second step. Id. at 1351.
843
Id. at 1351 (quoting Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14,
2012)). See also id. at 1342 (citing similar criteria).
844
See, e.g., id. at 1342-43 (citing Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,759).
845
Id. at 1342 (citing Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,759-60).
846
Id. at 1356-57 (discussing here and throughout Charles Alan Wright, Arthur R. Miller, & Mary
Kay Kane, Federal Practice & Procedure §§ 1541, 1543, 1545 (3d ed. 2018)).
847
Id. at 1357-58.
80

in-interest,848 but when “a patent owner provides sufficient evidence prior to institution
that reasonably brings into question the accuracy of a petitioner's identification,” the
burden shifts to the petitioner . . . .”849
Comparing this standard to that used below, the Federal Circuit held the PTAB
stated parts of the test correctly but misapplied them. The PTAB focused on whether
RPX had an interest in the IPR, but failed to consider whether RPX was also acting on
behalf of Salesforce’s interest.850 Similarly, the PTAB failed to consider Wright &
Miller’s agency theories, including RPX’s possible implied or apparent authority to act
for Salesforce.851 Finally, the PTAB was too quick to reject the theory that RPX was
“willfully blind” to Salesforce’s interests; it may have worked to understand them with “a
strong degree of confidence” before “taking last-minute efforts to avoid obtaining an
express statement . . . .”852 Beyond failing to consider these legal theories, the PTAB
erred by failing to substantiate its legal conclusions with evidence; the relationship and
conversations between Salesforce and RPX appeared to support contrary conclusions.853
In sum, even had RPX followed its “best practices,” those practices may not have
insulated Salesforce from being a real party in interest.854 Accordingly, the Federal
Circuit vacated and remanded.
In a concurrence, Judge Reyna discussed the meaning of privity under § 315(b)855
and how that section differed from the pleading requirements under § 315(a)(2).856 Judge
Reyna would hold that “if the extent of the legal obligations between the parties (i.e.,
RPX and Salesforce) is such that the parties share a high degree of commonality of
proprietary or financial interest, privity is established and § 315(b) bars the institution of
the IPR petitions.”857
Sovereign Immunity
Saint Regis Mohawk Tribe v. Mylan Pharms. Inc., 896 F.3d 1322 (Fed. Cir. July 20,
2018)
Circuit affirmed the PTAB’s denial of the Saint Regis Mohawk Tribe’s (“Tribe”) motion
invoking tribal sovereign immunity to terminate the inter partes review (“IPR”) of
848
Id. at 1343 (citing Zerto, Inc. v. EMC Corp., Case IPR2014-01295, slip op. at 6–7 (PTAB
Mar. 3, 2015) (Paper 34)).
849
Id. (citation omitted).
850
Id. at 1351.
851
Id. at 1357-58
852
Id. at 1355 (citing Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 769 (2011)).
853
Id. at 1353.
854
Id. at 1352-53 (discussing this and treating trade associations under the Trial Practice Guide).
855
Id. at 1358-61.
856
Id. at 1364-65.
857
Id. at 1363.
81

patents it obtained from a drug company.858 The court addressed tribal sovereign
immunity but not state sovereign immunity.859
The Federal Circuit affirmed the PTAB decision.860 The common law grants
Indian tribes “inherent sovereign immunity” from suits “absent a clear waiver by the tribe
or congressional abrogation.”861 Federal agencies may pierce this immunity when they
investigate or adjudicate matters on behalf of the federal government—but not when they
do so upon the complaints of private parties, as in Federal Maritime Commission
(“FMC”).862 Mylan argued that in IPR the government is “reconsidering a grant of a
government franchise” and so pierces sovereign immunity, while the Tribe argued that in
IPR a private party pursues its own claims and so can be blocked by tribal sovereign
immunity.863 Two recent Supreme Court decisions provided equivocal guidance: Oil
States Energy Services emphasized IPR protects the public interest by reviewing the grant
of government franchises,864 while SAS Institute emphasized IPR adjudicates private
interests.865 Ultimately, the Federal Circuit held that IPR, while a “hybrid,”866 was
ultimately “more like an agency enforcement action than a civil suit brought by a private
party,” and so tribal sovereign immunity was pierced by the government agency.867
Four reasons supported this result. First, the Director of the United States Patent
and Trademark Office (“PTO”) exercises discretion to decline to institute IPRs, unlike
the agency in FMC.868 Second, the Director can continue an IPR even if a party wishes to
end it.869 Third, the rules and substantive outcomes of an IPR do not mirror those of civil
proceedings, again unlike in FMC.870 Finally, the court declined to recognize the
distinction the Tribe wanted to draw between IPR and the more inquisitorial ex parte or
inter partes reexamination proceedings, which the Tribe conceded would pierce
sovereign immunity.871
Judge Dyk wrote separately to explain that the policy history of IPR supported
this result: IPR is “an executive proceeding that enlists third-party assistance” to improve
the patent system in light of the PTO’s finite resources.872
858
St. Regis Mohawk Tribe v. Mylan Pharms. Inc., 896 F.3d 1322, 1325 (Fed. Cir. 2018).
859
Id. at 1329.
860
Id. at 1325 (citing 5 U.S.C. § 706).
861
862
Id. at 1325-26 (citing cases).
863
Id. at 1326. Mylan also presented alternative grounds. Id.
864
Id. at 1327 (citing Oil States Energy Services v. Greene’s Energy Group, LLC, 138 S.Ct. 1365
(2018)).
865
Id. (citing SAS Institute Inc. v. Iancu, 138 S.Ct. 1348 (2018)).
866
Id. at 1326.
867
Id. at 1327.
868
Id. at 1327-28 (citing Fed. Maritime Comm’n v. S.C. State Ports Auth., 535 U.S. 743, 764
(2002))
869
Id. at 1328.
870
871
Id.
872
Id. at 1335 (Dyk, J., concurring).
82

Piercing the Corporate Veil
Mercasia USA, Ltd. v. Zhu, No. 3:17-CV-718 JD, 2018 WL 3833520 (N.D. Ind.
Aug. 13, 2018)
In this district court decision, the court dismissed infringement claims against a
company’s president for failure to allege grounds to pierce the corporate veil and hold
him liable.873 The court clarified that federal law requires a plaintiff bringing direct
infringement claims against an officer to pierce the corporate veil (though this is not
required for indirect infringement); federal law then defers to state law as to what it takes
to pierce the veil.874
The plaintiff alleged that 3BTech’s president directly infringed its patent.875
Under federal patent law stated in Wordtech, “the corporate veil shields a company’s
officers from personal liability for direct infringement that the officers commit in the
name of the corporation, unless the corporation is the officers' alter ego.”876 Here, the
plaintiff was wrong to rely on an Indiana statute that allows plaintiffs to bring tort claims
against officers without piercing this corporate veil.877 Once determining whether a
plaintiff has succeeded in piercing the corporate veil, however, federal patent law defers
to the law of the state of incorporation.878 In this corporation’s state, Indiana, the veil is
pierced where the corporation is (1) a mere instrumentality of another and (2) its misuse
constitutes a fraud or promotes injustice.879 Here, the plaintiff did not allege facts
supporting either prong.880 On the first, for example, the plaintiff did not allege that Zhu
had commingled his assets with the company’s.881 On the second, for example, the
plaintiff did not allege that Zhu was hiding behind an undercapitalized corporation to
commit wrongs without accountability; even if the corporation infringed patents or
trademarks, those wrongs were not connected to a misuse of the corporate form, and
plaintiff could still seek relief from the corporation itself.882 The claim was dismissed.
The plaintiff also alleged indirect infringement.883 Under Wordtech, officers can
be held liable for indirect infringement without piercing the corporate veil.884 Here,
Mercasia also failed to allege sufficient facts—“boilerplate” wasn’t enough.885
873
Mercasia USA, Ltd. v. Zhu, No. 3:17-CV-718 JD, 2018 WL 3833520, at *1 (N.D. Ind.
Aug. 13, 2018).
874
Id.
875
Id. at *2.
876
Id. (quoting Wordtech Sys., Inc. v. Integrated Networks Solutions, Inc., 609 F.3d 1308, 1313
(Fed. Cir. 2010)).
877
Id. at *3.
878
Id. (citing Secon Serv. Sys. v. St. Joseph Bank & Trust Co., 855 F.2d 406, 413 (7th Cir.
1988)).
879
Id. (citing Escobedo v. BHM Health Assocs., Inc., 818 N.E.2d 930, 933 (Ind. 2004)).
880
Id. (summarizing factors for finding either prong according to Indiana’s law).
881
Id.
882
Id. at *4 (citing CBR Event Decorators, Inc. v. Gates, 962 N.E.2d 1276, 1282–83 (Ind. Ct.
App. 2012)).
883
Id.
884
Id.
885
Id. at *4 & n.4.
83

Venue
In re Google Inc., No. 2018-152, 2018 WL 5536478 (Fed. Cir. Oct. 29, 2018), reh’g
denied, In re Google Inc., 914 F.3d 1377 (Fed. Cir. Feb. 5, 2019)
Panel Opinion: In this petition for a writ of mandamus, the Federal Circuit
declined to direct the Eastern District of Texas to dismiss or transfer the case for
improper venue under 28 U.S.C. § 1400(b).886
SEVEN had asserted that Google “committed acts of infringement in this District
and has a regular and established place of business in this District.”887 After discovery on
venue, however, Google moved for dismissal under Federal Rule of Civil Procedure
12(b)(2) or transfer under 28 U.S.C. § 1406(a).888 The court first found that Google’s
content-delivery Edge Network included servers housed at various Internet Service
Providers in the district, and that (1) these constituted a place of business per In Re
Cray.889 The court furthermore found that, even if Google’s infringement did not directly
relate to that place of business, (2) venue remained proper because § 1400(b) does not
require that the alleged misconduct directly relate to the place of business.890 Google
petitioned for a writ of mandamus, objecting to points (1) and (2).891
Hearing the petition, the Federal Circuit evaluated each argument against the three
prongs of a petition review: (i) whether other adequate means to attain relief exist, (ii)
whether the right of issuance is “clear and indisputable,” and (iii) appropriateness.892
Addressing (1) whether servers constitute a place of business, the court reiterated that
appeal upon final judgment is (i) typically adequate relief for wrongly denied § 1406
motions challenging § 1400(b) venue, and these circumstances were unexceptional.893
Furthermore, the right of issuance was (ii) not clear because Google failed to show the
server question raised “basic, unsettled, recurring legal issues over which there is
considerable litigation producing disparate results.”894. Accordingly, the court denied the
petition for the first issue.895
Addressing (2) whether venue remained proper even where alleged misconduct
was not immediately related to the asserted place of business, the court emphasized factor
(ii), stating that the question “is not one on which there is currently a substantial degree
of disagreement or a demonstrated need for immediate appellate resolution.”896 The court
886
In re Google Inc., No. 2018-152, 2018 WL 5536478, at *1 (Fed. Cir. Oct. 29, 2018).
887
Id. (quoting Amended Complaint at 2–3, SEVEN Networks, LLC v. Google LLC, 2:17- CV-
00442 (E.D. Tex. Aug. 22, 2017), ECF No. 34).
888
Id. at *1.
889
Id. at *1 (citing In re Cray Inc., 871 F.3d 1355 (Fed. Cir. 2017)).
890
Id. at *1.
891
Id.
892
Id.
893
Id. at *2.
894
See Id. at *2 (quoting In re Micron Tech., Inc., 875 F.3d 1091, 1095 (Fed. Cir. 2017)). Indeed,
the court said that any lack of clarity in the district decision counseled waiting until clear
contrasting decisions in multiple circuits forced reassessment. Id.
895
Id. at *3.
896
Id.
84

briefly assessed the statutory language, finding that the “and” connecting the
requirements (acts of infringement and place of business) does not necessarily suggest a
“tight[] linkage” between them; the court also briefly assessed the case law, finding no
clear disagreement across circuits.897 While denying the petition, the court suggested
questions (1) and (2) remain open for resolution upon appeal.898
In dissent, Judge Reyna reasoned that the petition presented a novel and important
question for internet businesses899 and that granting petition was warranted for the same
reasons given for granting other venue-related petitions after TC Heartland.900 Reciting
In Re Cray, Judge Reyna stated that § 1400(b) requires a physical “place” and “cannot be
read to refer . . . merely to a virtual space or to electronic communications from one
person to another”;901 further, Congress intended a more restrictive test for venue in
patent than in other cases.902 In light of this, the district court’s reading of § 1400(b) to
allow server ownership to suffice for a place of business seemed broader than even the
reading In Re Cray rejected.903 That case denied venue where a company employee used
a home office in the district—an outcome that should hardly rest, Judge Reyna reasoned,
on whether the employee used a company-owned computer.904 Judge Reyna cited
conflicting case law across circuits905 as to whether a company should be “subject to
venue in any judicial district in which a [server or a] physical object belonging to the
company [like a vending machine] was located”906—and urged judicial clarification.
Denied Rehearing: Google’s request for panel or en banc rehearing was denied
without explanation.907
Judge Reyna, Judge Newman, and Judge Lourie dissented from the denial of
rehearing en banc.908 Declining to issue the writ ignored litigants’ venue-related due
process concerns.909 And it abdicated the Federal Circuit’s “supervisory and instructional
roles,” threatening the “uniformity and predictability” that Judge Dyk, in a law review
article, had called the “cornerstone[] of a well-functioning patent system.”910 Those fears
were materializing. In the time since the panel’s denial, “another district court, in the
Northern District of Texas, faced the identical legal issue in a case with a different
defendant—'whether the presence of [defendant’s] servers at a data center owned by a
897
Id.
898
Id.
899
See id. at *4 (Reyna, J., dissenting)
900
Id. at *4 (Reyna, J., dissenting) (citing TC Heartland LLC v. Kraft Foods Group Brands LLC,
137 S. Ct. 1514 (2017)).
901
Id. at *5 (Reyna, J., dissenting) (quoting In re Cray Inc., 871 F.3d 1355, 1362 (Fed. Cir.
2017)).
902
Id. at *5 (Reyna, J., dissenting) (citing In re Cray Inc., 871 F.3d at 1361).
903
Id. at *5 (Reyna, J. dissenting).
904
Id.
905
Id.
906
Id. at *6 (Reyna, J., dissenting).
907
In re Google Inc., 914 F.3d 1377, 1378 (Fed. Cir. 2019).
908
Id. at 1378 (Reyna, J., dissenting).
909
Id. at 1378-79 (Reyna, J., dissenting) (citing Jack Henry & Assoc. v. Plano Encryption Techs.
LLC, 910 F.3d 1199, 1203 (Fed. Cir. 2018)).
910
Id. at 1378 (Reyna, J., dissenting) (citing Timothy B. Dyk, Federal Circuit Jurisdiction:
Looking Back and Thinking Forward, 67 AM. U. L. REV. 971, 977 (2018)).
85

third party constitutes a regular and established place of business’—and concluded that
they did not.”911 The judge there noted the “‘far reaching consequences’ of concluding
that venue was proper, which would ‘distort the scope of the statue.’”912 Indeed, Google
had been sued thirty-four times in the same district on the same venue theory since the
panel’s earlier opinion, and amici internet companies faced similar suits.913 Judge Reyna
feared “the district court’s [theory, if not countered,] could essentially reestablish
nationwide venue, in conflict with TC Heartland, by standing for the proposition that
owning and controlling computer hardware involved in some aspect of company business
(e.g., transmitting data) alone is sufficient.”914 He concluded, “The question is not if we
will take this issue up, but when, and how many judicial and party resources will have
been needlessly wasted by the time we do.”915
Unreasonable Delay and Patent Term Adjustment
Supernus Pharms., Inc. v. Iancu, 913 F.3d 1351 (Fed. Cir. Jan. 23, 2019)
In this appeal from the Eastern District of Virginia, the Federal Circuit reversed
the lower court and held that the Patent and Trademark Office (“PTO”) had exceeded its
authority by reducing a patent term for days of “delay” during which an applicant could
not have taken any identifiable efforts to conclude prosecution.916 “Any reduction to [a
patent term] shall be ‘equal to the period of time during which the applicant fail[s] to
engage in reasonable efforts to conclude prosecution of the application.’”917
The Patent Term Adjustment (“PTA”) statute aims to discourage delay during
patent prosecution. Under it, the PTO may add or subtract days from the patent term to
account for undue delay by the PTO or applicant.918 This case focused on Supernus’s
delay between its filing of a request for continued examination (“RCE”) on February 22,
2011, and its submission of an information disclosure statement (“IDS”) on November
29, 2012, when it informed the PTO of an opposition filed by Sandoz AG against its
European patent application.919 Critically, only on September 11, 2012—546 days into
this 646 day period of “delay”—had Supernus received notice from the European Patent
Office of the opposition it later reported to the PTO.920 Nonetheless, the PTO determined
that reducing the patent term by 646 days was appropriate (for the full period between the
911
Id. at 1380 (Reyna, J., dissenting) (quoting CUPP Cybersecurity, LLC v. Symantec Corp., No.
3:18-CV-1554, Dkt. No. 44, at *4-6 (N.D. Tex. Dec. 21, 2018)).
912
Id.
913
914
915
916
Supernus Pharms., Inc. v. Iancu, 913 F.3d 1351, 1361 (Fed. Cir. 2019) (citing 35 U.S.C. §
154(b)(2)(C)(i)).
917
Id. at 1353.
918
Id. (citing 35 U.S.C. § 154(b)).
919
Id. at 1354-55 (outlining timeline of applications in United States and Europe).
920
Id. at 1355-56.
86

RCE and IDS).921 Before the district court, Supernus argued the PTO’s PTA regulations
were arbitrary and capricious, and that 546 of the 646 days should not be counted against
it.922 The district court found for the PTO on all grounds on summary judgment.923
On appeal, the Federal Circuit first held the district court had erred by deciding
the case under Gilead.924 That case involved an applicant who could have but did not take
efforts to conclude patent prosecution; it held that the PTO’s PTA-related regulations
were reasonable in that context.925 But this case, by contrast, entailed an applicant who
for some time could not have taken efforts to conclude prosecution.926 An analysis of the
statute and the agency regulations was thus in order.
Moving to the Chevron analysis, the Federal Circuit decided the matter at step
one: the PTA directly addressed the precise question at issue.927 The issue was “whether
the [PTO] may reduce PTA by a period that exceeds the ‘time during which the applicant
failed to engage in reasonable efforts to conclude prosecution.’”928 The statute’s language
was “plain, clear, and conclusive”: any PTA reduction must be “equal to the period of
time during which the applicant failed to engage in reasonable efforts.”929 Here, the
applicant was charged a period of time during which “no identifiable efforts . . . could
have been taken,” and such time could not be part of “the period of failure to undertake
reasonable efforts . . . .”930 The PTO’s “interpretation of the statute would unfairly
penalize applicants, fail to incentivize applicants not to delay, and fail to protect
applicants’ full patent terms.”931
Accordingly, the PTO’s actions exceeded statutory authority, and the 546 days
could not be counted against Supernus’s term; the court remanded.932
921
Id. at 1355.
922
Id. at 1355-56.
923
Id. at 1356.
924
Id. at 1357-58 (citing Gilead Scis., Inc. v. Lee, 778 F.3d 1341 (Fed. Cir. 2015)).
925
Id. at 1357.
926
Id.
927
Id. at 1358 (citing Chevron U.S.A. Inc.v. NRDC, 467 U.S. 837, 843 (1984)).
928
Id. (quoting 35 U.S.C. § 154(b)(2)(C)(i)).
929
Id. at 1358, 1359 (emphasis in bold and italics original).
930
Id. at 1359.
931
Id. at 1360.
932
Id. at 1361.
87

PLEADING
88

PATENT TRIAL AND APPEAL BOARD
Inter Partes Review Procedure: Interpreting SAS Institute
Adidas AG v. Nike, Inc., 894 F.3d 1256 (Fed. Cir. July 2, 2018)
Circuit granted appellant’s motion and remanded the matter for additional proceedings to
consider and issue a decision not only on all claims challenged but also on all grounds
raised for those challenges.933
Adidas petitioned the U.S. Patent and Trademark Office to initiate inter partes
review (“IPR”) of several of Nike’s claims in two patents.934 Adidas challenged the
claims as obvious based on two possible grounds: (1) a set of two references or, (2) a set
of three references.935 The PTO granted IPR based on ground (1), and ultimately found
that ground not persuasive; it declined to consider ground (2) or say why its decision on
ground (1) determined the outcome on ground (2).936
On appeal, the Federal Circuit held that SAS Institute requires that the PTAB
consider and decide not only each claim challenged but also each ground for each
challenge.937 Nike had argued that SAS Institute was limited to requiring that a decision
be made on all claims petitioned, but not on all grounds.938 But under SAS Institute,
“[e]ach claim” and “the grounds to the challenge to each claim,” are to be set by “the
petitioner’s petition, not the Director’s discretion.”939 The Federal Circuit also cited its
post-SAS Institute decision in PGS Geophysical AS.940 It remanded to the PTAB to decide
all grounds.
Alcatel-Lucent USA Inc. v. Oyster Optics, LLC, No. IPR2018-00070, 2018 WL

4191599 (P.T.A.B. Aug. 31, 2018)
In this inter partes review (“IPR”) institution decision, the Patent Trial and
Appeal Board (“PTAB”) denied a request for rehearing by panel, holding that an
institution decision need not analyze every challenged claim nor every asserted ground in
the petition, despite SAS Institute.941
933
Adidas AG v. Nike, Inc., 894 F.3d 1256, 1258 (Fed. Cir. 2018).
934
Specifically, claims 1-13 of the ’598 patent and claims 1-9 of the ’749 patent. Id. at 1257.
935
Specifically, (1) Reed and Nishida, and (2) Castello, Fujiwara, and Nishida. Id.
936
Id. at 1257.
937
Id. at 1258 (quoting SAS Institute, 138 S.Ct. at 1355-56).
938
Id. at 1257.
939
Id. (quoting SAS Institute, 138 S.Ct. at 1355, 1356).
940
Id. at 1258 (citing PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. June 7,
2018)).
941
Alcatel-Lucent USA Inc. v. Oyster Optics, LLC, No. IPR2018-00070, 2018 WL 4191599 at
*1 & n.1 (P.T.A.B. Aug. 31, 2018) (citing SAS Institute Inc. v. Iancu, 138 S.Ct. 1348 (2018)).
89

The PTAB first decided to institute review but did not address in its decision
every claim and every ground petitioned.942 The patent owner claimed the administrative
patent judges had thereby erred, citing the recent Supreme Court case interpreting § 314,
SAS Institute, and the regulation written to implement it, 37 C.F.R. § 42.108(c).943
The PTAB denied rehearing by panel by distinguishing the issue in SAS Institute
from the issue here. SAS Institute requires the PTAB to institute IPR for all claims
challenged when at least one claim has a reasonable likelihood of being found
unpatentable, and it requires that the PTAB’s final written decision address all claims and
all grounds.944 But it does not require that the PTAB’s institution decision address
them—indeed, the PTAB can institute review without surveying any other claim once it
believes at least one claim is likely unpatentable.945
Inter Partes Review Procedure: Other
Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co., 905 F.3d 1311 (Fed. Cir.
Sept. 28, 2018)
In this appeal from an inter partes review (“IPR”) at the Patent Trial and Appeal
Board (“PTAB”), the Federal Circuit held the proceeding had been time-barred under
§ 315(b) because petitioner filed it more than a year after having been served with a
complaint, even though a district court dismissed that complaint involuntarily and
without prejudice in the interim.946
In 2012, Bennett served Atlanta Gas with an infringement complaint; in 2015,
after that complaint was dismissed, Atlanta gas petitioned for IPR.947 Section 315(b)
prohibits institution “if the petition requesting the proceeding is filed more than 1 year
after the date on which the petitioner . . . is served with a complaint alleging infringement
of the patent.”948 The PTAB found that the court’s decision to dismiss the case without
prejudice and against plaintiff’s wishes nullified the initial complaint.949
On appeal, the Federal Circuit held the IPR time-barred, extending its holding in
Click-to-Call Techs.950 There, the court had held that § 315(b) applied even when the
complaint that started the clock was dismissed voluntarily and without prejudice.951 Here,
the court held that “[j]ust as the statute includes no exception for a voluntarily dismissed
942
Id. at *1.
943
Id. at *1-2.
944
Id. at *2.
945
Id. at *1.
946
Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co., 905 F.3d 1311, 1313 (Fed. Cir.
2018).
947
Id.
948
Id. (quoting statute).
949
Id. It also reached substantive issues and applied sanctions not at issue here. Id. at 1314.
950
Id. at 1315 (citing Click-to-Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321, 1329–32 (Fed. Cir.
2018)).
951
Id.
90

complaint, it includes no exception for an involuntarily dismissed complaint.”952 The
“service of a complaint starts § 315(b)’s clock.”953
Ericsson Inc. v. Intellectual Ventures I LLC, No. 2017-1521, 2018 WL 4055815 (Fed.
Cir. Aug. 27, 2018)
Circuit held that the PTAB had erred when it declined to consider portions of Ericsson’s
reply that were not beyond the scope of a proper reply under 37 C.F.R. § 42.23(b).954
The case concerned Intellectual Ventures’ ‘831 patent, which discloses a method
of improving the reliability of wireless communications by interleaving not only data
within packets but packets within blocks—and of varying the number of packets
interleaved.955 In its petition, Ericsson challenged the invention as obvious over prior art
that taught interleaving data within packets (the patent itself referenced this), and also
obvious over this art in combination with other references that taught varying the amount
of data sent.956 Ericsson proposed constructions for the claims under their broadest
reasonable interpretation, and the PTAB instituted inter partes review (“IPR”) after
construing claims on this same basis.957 Following institution, Intellectual Ventures
newly argued in its response that because its patent had expired its claims should actually
be constructed under the Phillips standard, and the court obliged.958 While in its petition
Ericsson had argued that “interleaving . . . packets into blocks” was disclosed by prior
art,959 in its reply Ericsson now used tighter language; adjusting to the court’s new
Phillips-compliant constructions, Ericsson stated that “interleaving R-blocks together
[(e.g., data within packets)] and interleaving S-blocks together [(e.g., packets within
“blocks”)] is insubstantial at best.”960 The PTAB declined to consider this portion of the
reply on the grounds it raised new prior art elements and so was improper under 37
C.F.R. § 42.23(b).961
On appeal, the Federal Circuit vacated and remanded.962 Section 42.23(b) allows
the PTAB to strike arguments improperly raised for the first time in a reply. 963 A reply
raises arguments for the first time when it raises new portions of prior art (even to support
a previously stated theory),964 and when it cites new theories of unpatentability (even to
952
Id. at 1315.
953
Id.
954
Ericsson Inc. v. Intellectual Ventures I LLC, No. 2017-1521, 2018 WL 4055815, at *6 (Fed.
Cir. Aug. 27, 2018).
955
Id. at *1, *5.
956
Id. at *2 (summarizing prior art).
957
Id. at *3.
958
Id. (citing standard in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)).
959
Id. at *5.
960
Id. at *4.
961
Id.
962
Id. (explaining review standard).
963
Id. at *5.
964
Id. at *6 (citing Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359 (Fed. Cir. 2015).
91

explain the significance of previously cited prior art).965 Here, the Federal Circuit found
that Ericsson’s reply was not improper. It raised no new portions of prior art nor
developed any new theory—it simply stated in more specific terms what it had contended
in its petition.966 Furthermore, because the PTAB developed new claim constructions in
light of Intellectual Ventures’ response, Ericsson deserved an opportunity to reply in a
way specific to these constructions, under 5 U.S.C. § 554(b)(3).967
Standing
(Fed. Cir. Sept. 17, 2018)
Circuit recognized that DuPont had standing.
Concluding inter partes review (“IPR”) on the claims at issue, the PTAB found them not
unpatentable for obviousness.968 DuPont appealed; Synvina asserted that, because
Synvina had not asserted infringement claims against DuPont, DuPont lacked “an actual
or imminent injury” for Article III standing.969
The Federal Circuit held DuPont had standing.970 Even though the PTAB does not
require such standing to initiate IPR,971appellants from the PTAB to the Federal Circuit
must meet the Article III test, informed in the IPR appeals context by 28 U.S.C.
§ 1295(a)(4)(A).972 Article III standing requires an appellant to show she has “(1)
suffered an injury in fact, (2) that is fairly traceable to the challenged conduct of the
defendant, and (3) that is likely to be redressed by a favorable judicial decision.”973
According to case law interpreting 28 U.S.C. § 1295(a)(4)(A), an IPR appellant meets
these requirements when facing controversy of “sufficient immediacy and reality,” even
if not yet facing “a specific threat of infringement litigation.”974 Here, sufficiently
immediate controversy existed because DuPont (a) operated a plant capable of producing
the reaction under the patented conditions, (b) was accused by Synvina in the PTAB of
copying, and (c) was denied a covenant not to sue by Synvina.975
965
Id. (citing Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1370 (Fed.
Cir. 2016)).
966
Id.
967
Id. at *5.
968
Id. at *4. The trial court “reason[ed] that our decisions in In re Magnum Oil Tools
International, Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016), and Dynamic Drinkware, LLC v.
National Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015), foreclosed such a framework in
an IPR.” Id.
969
Id. at *5.
970
Id. at *5-*6.
971
Cf. id. at *5 (citing Consumer Watchdog v. Wis. Alumni Research Found., 753 F.3d 1258,
1261 (Fed. Cir. 2014)).
972
Id. (citing U.S. Const. Art. III, § 2).
973
Id. (quoting Spokeo, Inc. v. Robins, 136 S.Ct. 1540, 1547 (2016)).
974
Id. at *6 (quoting ABB Inc. v. Cooper Indus., LLC, 635 F.3d 1345, 1348 (Fed. Cir. 2011)).
975
Id. at *5-*6.
92

JTEKT Corp. v. GKN Automotive Ltd., 898 F.3d 1217 (Fed. Cir. Aug. 3, 2018)
Circuit dismissed the appeal for lack of standing because “JTEKT has not established . . .
a concrete and substantial risk of infringement or . . . claims of infringement.”976
The case concerned the ’440 patent, which disclosed drive-train improvements for four-
wheel drive vehicles.977 JTEKT petitioned the PTAB for inter partes review; when the
PTAB found that two of the claims were not obvious over prior art, JTEKT appealed.978
The Federal Circuit dismissed the appeal for lack of standing. Standing for IPR
before the PTAB is granted by 35 U.S.C. § 311(a) and extends to all-comers; standing for
appeals from the PTAB to the Federal Circuit, however, is granted only by Article III and
extends only to those with concrete injuries, though IPR appellants face a softer standard
for showing redressability and immediacy because 35 U.S.C. § 141(c) promotes their
right to appeal.979 The appellant bears this burden.980 An IPR appellant meets her burden
by showing she is likely to infringe or face infringement suits, or is likely to have
contractual relationships affected by infringement or infringement claims; she does not
meet her burden merely by showing an economic injury from competition.981 Here,
JTEKT planned a product to compete with GKN’s—but, in its words, the concepts
remained unfixed and “there [was] nothing that c[ould] be analyzed for infringement.”982
The Federal Circuit held this insufficient to show standing. While conceding
infringement was not necessary to gain standing, demonstrating a more concrete risk of
infringement, of infringement suits, or of rights thereby affected was necessary.983
Return Mail, Inc. v. U.S. Postal Service, No. 1-1594, 2018 WL 2364663 (U.S. Oct. 26,
2018)
The Supreme Court granted certiorari984 as to “whether the government is a
‘person’ who may petition to institute review proceedings under the AIA.”985
The case concerns a patent that Return Mail alleges the U.S. Postal Office used.986
Because the federal government cannot be sued for patent infringement under the Patent
Act, Return Mail sued for compensation under 28 U.S.C. § 1498(a) at the U.S. Court of
Federal Claims.987 The U.S. Postal Office petitioned for a covered business method
(“CBM”) review at the Patent Trial and Appeal Board (“PTAB”).988 The PTAB initiated
976
JTEKT Corp. v. GKN Automotive Ltd., 898 F.3d 1217, 1221 (Fed. Cir. Aug. 3, 2018).
977
Id. at 1219.
978
Id.
979
Id. (citing Phigenix, Inc. v. Immunogen, Inc., 845 F.3d 1168, 1172 n.2 (Fed. Cir. 2017)).
980
Id. at 1221 (citing DaimlerChrysler Corp. v. Cuno, 547 U.S. 332, 342 (2006)).
981
982
Id. at 1221 (citing J.A. 1644 at ¶ 23).
983
Id. (citing MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 134 (2007)).
984
Return Mail, Inc. v. U.S. Postal Service, No. 1-1594, 2018 WL 2364663 (U.S. Oct. 26, 2018).
985
Petition for a Writ of Certiorari for Appellant, Return Mail, Inc. v. U.S. Postal Service, 2018
WL 2412130, at *I (U.S. May 14, 2018) (No. 17-1594).
986
Id.
987
Id.
988
Id.
93

the CBM, and invalidated Return Mail’s patent.989 On appeal, the Federal Circuit
affirmed, holding the PTAB had authority to initiate the proceeding.990
Return Mail petitioned for review on two questions. Its second question—
“whether a § 1498(a) action for the eminent domain taking of a patent license by the
government is a suit for patent ‘infringement’ under the AIA” 991—was not granted
certiorari. 992
989
Id.
990
Id.
991
Id.
992
See Return Mail, Inc., 2018 WL 2364663, at *1.
94

DESIGN PATENTS
Design Patent Claim Construction
In re Maatita, No. 2017-2013, 2018 WL 3965892 (Fed. Cir. Aug. 20, 2018)
Circuit held that the PTAB had misapplied § 112 in rejecting a design patent; a two-
dimensional disclosure can cover multiple three-dimensional embodiments so long as a
skilled artisan viewing the drawing can reasonably ascertain the scope of the claim.993
The ’677 design patent disclosed a shoe sole pattern using only a plan view; that
is, it disclosed a two-dimensional design related to a three-dimensional object. The
examiner showed that, fixing the depth of that pattern according to different elevation
views, at least four different designs could be enabled in three dimensions; the designer
argued the “three-dimensional implementations of [the] design are simply differences in
unclaimed subject matter.”994Nonetheless, the examiner rejected the patent for lack of
enablement and indefiniteness, and the PTAB affirmed.995
On appeal, the Federal Circuit reversed. The court clarified that “a design patent
is indefinite under § 112 if one skilled in the art, viewing the design as would an ordinary
observer, would not understand the scope of the design with reasonable certainty based
on the claim and visual disclosure.”996 So long as such reasonable certainty holds, “a
design patent can disclose multiple embodiments within its single claim . . . .”997 To
illustrate the rule, the court said a two-dimensional, plan-only disclosure would suffice
for claiming an ornamental design on rugs because any rug’s thickness would be
irrelevant to this infringement, but such a plan-only disclosure would not suffice for
claiming a teapot because “[t]he article would be infringing from one perspective but not
from another.”998 Applying the rule to this case, the court found “an infringer is not left in
doubt,” because “Maatita’s two-dimensional drawing clearly demonstrates the
perspective from which the shoe bottom should be viewed,”999 and a skilled artisan could
craft the design and assess infringement with reasonable certainty.1000
993
See In re Maatita, 2017-2013, 2018 WL 3965892, at *3-4 (Fed. Cir. 2018).
994
Id. at *4 (paraphrasing).
995
Id. at *1.
996
Id. at *3.
997
Id. at *4.
998
Id. at *5.
999
Id.
1000
Id. at *3 (citing Carnegie Steel Co. v. Cambria Iron Co., 185 U.S. 403, 437 (1902)). The court
discussed the relationship between enablement and definiteness. Id. at *3. Both have parallels in
the relationship between anticipation and infringement analysis. Id. at *4.
95

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RECENT DEVELOPMENTS IN PATENT LAW (SPRING 2019)

UPDATED THROUGH 5/1/2019

PATENTABLE SUBJECT MATTER .................................................................................... 6

Software and Business Method Cases ............................................................................. 6

Life Sciences Claims ....................................................................................................... 15

Printed Matter ................................................................................................................. 22

Electronic copy available at: https://ssrn.com/abstract=3384265

Enablement and Written Description ........................................................................... 26

Printed Publication ......................................................................................................... 30

On-Sale Bar ..................................................................................................................... 31

Experimental Use ............................................................................................................ 35

PTAB Burdens ................................................................................................................ 44

Obviousness and Inherency ........................................................................................... 45

Electronic copy available at: https://ssrn.com/abstract=3384265

Joint Infringement .......................................................................................................... 56

Prosecution History Estoppel......................................................................................... 57

Implied Waiver and Standard-Setting Organizations ................................................ 59

Electronic copy available at: https://ssrn.com/abstract=3384265

PRACTICE AND PROCEDURE ........................................................................................... 75

Personal Jurisdiction ...................................................................................................... 75

Exclusive Jurisdiction ..................................................................................................... 76

Forum Selection / Governing Law Clauses in License Agreements ........................... 78

Real Party in Interest...................................................................................................... 79

Piercing the Corporate Veil ........................................................................................... 83

Unreasonable Delay and Patent Term Adjustment ..................................................... 86

Inter Partes Review Procedure: Interpreting SAS Institute....................................... 89

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Inter Partes Review Procedure: Other ......................................................................... 90

DESIGN PATENTS .................................................................................................................. 95

Design Patent Claim Construction ................................................................................ 95

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Software and Business Method Cases

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Life Sciences Claims

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Enablement and Written Description

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1195–96 (Fed. Cir. 1999)).

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GoPro, Inc. v. Contour IP Holding LLC, Nos. 2017-1894, 2017-1936, 2018 WL

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