In 2024, the Federal Circuit issued eighteen opinions labeled “precedential” that were related to patent law. Quotations below omit citations and internal quotation marks. Here is a break-down:
Cytiva Bioprocess R&D AB v. JSR Corp.: Non-obviousness of novel compounds
Holdings:
Palo Alto Networks, Inc. v. Centripetal Networks, LLC et al.: Motivation to combine (Patent challenger appeals from unsuccessful IPR.)
Pfizer Inc. v. Sanofi Pasteur Inc.: Optimization of result-effective variables (Patent owner Pfizer challenges IPR holding of invalidity.)
Holdings:
Virtek Vision Internat'l ULC v. Assembly Guidance Systems, Inc.: Motivation (Patent owner Virtek and patent challenger Aligned Vision cross-appeals IPR findings of a subset of challenged claims invalid.)
Holdings:
Sanho Corp. v. Kaijet Tech. Int'l Ltd.: Excluding prior art under § 102(b)(2)(B) (Patent owner Sanho appeals invalidity finding by PTAB.)
35 U.S.C. § 102(b)(2): A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if–
(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
Holdings:
Weber v. Provisur Tech.: Printed publication requirement. (Patent challenger Weber appeals PTAB holding that Provisur's patents were not invalid.)
Holdings:
LKQ Corp. v. GM Global Tech. Operations, LLC: Design Patent Nonobviousness (Patent challenger LKQ appeals PTAB decision upholding GM's design patent on a vehicle front fender.)
Holdings: “We conclude that the Rosen-Durling test requirements—that (1) the primary reference be “basically the same” as the challenged design claim; and (2) any secondary references be “so related” to the primary reference that features in one would suggest application of those features to the other—are improperly rigid. The statutory rubric along with Supreme Court precedent including Whitman Saddle, Graham, and KSR, all suggest a more flexible approach than the Rosen-Durling test when determining obviousness.”
IOENGINE, LLC v. Ingenico Inc.: Printed matter doctrine (Fed. Cir. reversed PTAB's invalidation of claims related to portable data processing devices.)
Exemplary claim:
Claim 2: Code . . . configured to cause a communication to be transmitted to the . . . node
Claim 4: Wherein the communication caused to be transmitted to the . . . node facilitates transmission of encrypted communications from the . . . node to the terminal.”
Holdings:
Pacific Biosciences of California, Inc. v. Personal Genomics Taiwan, Inc.: “For identifying a single biomolecule”
Claim 1. An apparatus for identifying a single biomolecule, comprising:
a substrate having a light detector; and
a linker site formed over the light detector, the linker site being treated to affix the biomolecule to the linker site;
wherein the linker site is proximate to the light detector and is spaced apart from the light detector by a distance of less than or equal to 100 micrometers.
Holdings:
RAI Strategic Holdings v. Philip Morris Products: Claimed ranges (Appeal by patent owner RAI of post-grant review finding invalidity.)
ZyXEL Communications v. Unm Rainforest Innovations: Motion to Amend [MTA] Pilot Program. (ZyXEL appeals PTAB's grant to UNMRI's motion to amend and finding claim 8 nonobvious; UNMRI cross-appeals on other findings.)
37 C.F.R. § 42.121(b): A motion to amend claims must include a claim listing . . . and set forth: (1) The support in the original disclosure of the patent for each claim that is added or amended; and (2) The support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.
SoftView LLC v. Apple Inc.: Estoppel (Patent owner SoftView appeals PTAB invalidation of all claims based on estoppel)
37 C.F.R. § 42.73(d)(3): A patent applicant or owner is precluded from taking action inconsistent with the adverse judgment, including obtaining in any patent: (i) A claim that is not patentably distinct from a finally refused or canceled claim.
Holdings:
Cywee Group Ltd. v. ZTE (USA), Inc.: Joint IPR petitioners (Patent owner Cywee appeals IPR decision holding original and proposed amended claims unpatentable.)
Holdings:
Koss Corp. v. Bose Corp.: Mootness/Issue Preclusion
Holdings:
Platinum Optics Tech. v. Viavi Solutions: Standing (Patent challenger PTOT appeals a final written decision from IPR.)
Holdings:
Speck v. Bates: Interference - (Junior party Speck appeals PTAB's decision awarding priority to Bates.)
37 C.F.R. § 135(b)(1): A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent may not be made in any application unless such a claim is made prior to one year from the date on which the patent was granted.
Holdings:
Voice Tech v. Unified Patents: Appealing after Request for Rehearing (Patent owner Voice Tech appeals from PTAB finding all challenged claims obvious.)
Google LLC v. EcoFactor, Inc.: Claim construction and APA (Fed. Cir. vacated PTAB's claim construction.)
Pfizer Inc. v. Sanofi Pasteur Inc.: Director Review (Patent owner Pfizer challenges IPR holding of invalidity.)