Posts in Federal Circuit

Patent prosecution is often treated as a sequence of discrete tasks: respond to the office action. Amend the claim. Make the argument. Obtain allowance. Move on. Recent U.S. Court of Appeals for the Federal Circuit decisions show why that model is incomplete. The prosecution record can later shape infringement theories, affect whether a reference qualifies as prior art, and determine whether a statutory avenue for review remains available. The cases arise under different doctrines, but they support one durable conclusion: prosecution is part of the patent’s long-term risk allocation.

Following a July petition for writ of certiorari filed by Kahoot AS! asking the U.S. Supreme Court to consider whether the U.S. Patent and Trademark Office’s (USPTO’s) “settled expectations” doctrine for denying inter partes review (IPR) requests is authorized under the patent statute, the PTAB Bar Association and other amici this past week have urged the Court to take up…

Representative Scott Fitzgerald (R-WI) has introduced a bill to amend the Judicial Conduct and Disability Act, inspired by U.S. Court of Appeals for the Federal Circuit (CAFC) Judge Pauline Newman’s fight to restore her status as an active judge, following a three-year suspension of her duties initiated by CAFC Chief Judge Kimberly Moore.

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a decision today in In re Incept LLC, vacating and remanding a Patent Trial and Appeal Board (PTAB) decision that had affirmed an examiner’s rejection of a medical catheter patent application as obvious. Since the Board’s obviousness analysis relied on an incorrect construction of the claim term “flow barrier,” the CAFC declined to reach the underlying obviousness question and returned the case to the Board for further proceedings.

In a precedential decision issued Monday, the U.S. Court of Appeals for the Federal Circuit (CAFC) vacated a patent infringement judgment against Nine Energy Service Inc., holding that the Western District of Texas court incorrectly construed two terms of NCS Multistage’s patent and that an earlier sale relied upon by NCS did not qualify as a public disclosure under the America Invents Act (AIA).

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision today in TexasLDPC Inc. v. Broadcom Inc., reversing a district court’s dismissal of a patent and copyright infringement lawsuit brought by an exclusive licensee that had not joined the patent owner as a co-plaintiff. The court held that TexasLDPC Inc.’s license agreement with Texas A&M University (A&M) did not automatically terminate when TexasLDPC shifted its business to patent enforcement. The agreement conveyed “all substantial rights” in the asserted patents to TexasLDPC, making A&M “not otherwise a necessary party” under Federal Rule of Civil Procedure 19.

On Friday, the U.S. Court of Appeals for the Federal Circuit issued a ruling in AlterWAN, Inc. v. Amazon.com, Inc. affirming a stipulated final judgment of noninfringement entered by the District of Delaware and dismissing AlterWAN’s challenges to the district court’s construction of claims directed to wide area network (WAN) implementation. Dissenting to the majority opinion was U.S. District Judge Arun Subramanian, sitting by designation from the Southern District of New York, who took issue with the majority’s judgment resting on non-claim terms inferred as limitations from vague specification language and irrelevant prosecution history.

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision Friday in Moskowitz Family LLC v. Globus Medical, Inc., affirming a district court’s grant of summary judgment of noninfringement, its construction of the claim term “universal,” and its denial of a motion for judgment as a matter of law (JMOL) of infringement.

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a decision today in Guymon v. Squires, affirming a decision from the U.S. District Court for the Eastern District of Virginia dismissing with prejudice an inventor’s lawsuit challenging a patent term adjustment (PTA) determination. Circuit Judge Hughes wrote for the court, joined by Chief Judge Moore and Circuit Judge Lourie, and rejected each of the three arguments that Guymon raised on appeal.

Congress and the courts have spent two decades treating patents as active weapons in an ongoing commercial fight. That framing misses what patents actually are to most of the people who own them: inheritable property. Twenty-year terms outlast careers. Portfolios pass to spouses, children, foundations, and trusts. Licensing income can support a family for a generation after the inventor stops working…. The pending fights over funder disclosure — Suggestion 26-CV-8 before the Advisory Committee on Civil Rules, the USITC’s proposed 19 C.F.R. § 210.14a, and S.3826, the Litigation Funding Transparency Act of 2026 — are not really arguments about transparency. They are arguments about whether a solo inventor’s family keeps what the inventor spent 30 years building.

To prevent innocent individuals from being held liable while acting in good faith, the patent statute requires that patent owners put would-be infringers on notice of their intellectual property rights before they are able to hold them liable for any acts of infringement. But what does a notice letter need for it to count? How granular must it be? Are claim charts required?

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a decision today in Viavi Solutions Inc. v. Platinum Optics Technology Inc., affirming a Northern District of California ruling that awarded attorney’s fees to Platinum Optics Technology Inc. (PTOT) after finding Viavi Solutions Inc. litigated its patent infringement claims in a manner that met the standard for an “exceptional” case under 35 U.S.C. Section 285.

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a decision today in Biofer S.p.A. v. Vifor (International) AG affirming a judgment of non-infringement by the U.S. District Court for the Eastern District of New York in favor of Swiss Pharmaceutical company, Vifor (International) AG. The dispute centered on the construction of a claimed pH range recited in a patent covering a process for producing iron-sugar complexes used to treat iron deficiency.

Yesterday, the U.S. Court of Appeals for the Federal Circuit issued a ruling in Vieth v. MOM Enterprises, LLC affirming the Patent Trial and Appeal Board’s (PTAB) invalidation of Elaine and Dr. Reinhold Veith’s patent claims to methods of administering vitamin D to human beings. The Federal Circuit agreed that most of the claim construction and prior art arguments raised by the Vieths on appeal were forfeited for not being properly developed in the proceedings below, and also dismissed the Vieths’ contentions that they had established nexus between industry praise for its products and the challenged method claims.