Case ClIPs

Terms Analogous to 'Nonce' Terms May Require Structural Support

In Fintiv Inc. v. Paypal Holdings, Inc., Appeal No. 2023-2312 (Fed. Cir. Apr. 30, 2025), the Federal Circuit indicated that black box recitation of structure may operate as a substitute for means plus function under § 112 ¶ 6. View
Dupont Scope Must be Interpreted Consistently

In Apex Bank v. CC Serve Corp., No. 2023-2143 (Fed. Cir. Sep. 25, 2025), the Federal Circuit affirmed-in-part, vacated-in-part, and remanded the Trademark Trial and Appeal Board (TTAB) decision to sustain an opposition proceeding and refuse registration of the standard character mark and design mark for ASPIRE BANK for banking and financing services.View
Federal Circuit Affirms First-Filer Determination

In Global Health Solutions LLC (Burnam) v. Selner, No. 23-2009 (Fed. Cir. August 26, 2025), the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) did not commit reversible error in its application of the independent corroboration requirement. View
Federal Circuit Remands Due to Incorrect Claim Construction

In FMC Corp. v. Sharda USA, LLC, No. 2024-2335 (Fed. Cir. August 1, 2025), the Federal Circuit held that a claim term in an asserted patent cannot be construed solely based on disclosures in its provisional application and an unasserted patent in the same patent family. View
Allowed Claim Amendments Do Not Ensure Written Description Support

In Mondis Technology Ltd. et al. v. LG Electronics Inc. et al., Nos. 2023-2117, 2023-2116 (Fed. Cir. Aug. 8, 2025), the Federal Circuit held that there is no presumption that claim amendments made during prosecution that result in allowance are supported by adequate written description. View
Federal Circuit Reverses PTAB on Anticipation, Remands Obviousness

The Federal Circuit, in SIGRAY, INC. V. CARL ZEISS X-RAY MICROSCOPY, INC., 137 F.4th 1372 (Fed. Cir. May 23, 2025), reversed the PTAB’s anticipation holding and remanded the PTAB’s obviousness decision. View
Fed. Cir. Vacates $300M Verdict Against Apple

In a patent dispute between Optis Cellular Technology and Apple Inc., the Federal Circuit vacated a $300 million jury verdict in favor of Optis and ordered a new trial.View
Federal Circuit Clarifies Meaning of “Consisting Essentially Of”

In this case, the Federal Circuit held that, depending on context such as prosecution history, amending patent claims to use the transitional phrase “consisting essentially of” may limit the claims to exclude other elements that do not materially affect the basic and novel properties of the invention as claimed. View
Fed. Cir. Invalidates Atorvastatin Hemicalcium Salt Claim

Federal Circuit reversed the decision of the district court and invalidated dependent claim 6 directed to the hemicalcium salt of atorvastatin because claim 6 depended from parent claim 2 limited to atorvastatin acid.View
Federal Circuit Holds that Extrinsic Evidence May Not be Used to Contradict the Language in the Specification

The Federal Circuit, in HD Silicon Solutions LLC v. Microchip Technology, Inc., No. 2023-1397 (Fed. Cir. Feb. 6, 2025), reiterated that extrinsic evidence may be used only to assist in the proper understanding of the disputed limitation; it may not be used to vary, contradict, expand, or limit the claim language from how it is defined, even by implication, in the specification or file history.View
Federal Circuit Holds That a Trademarked Feature May Be Functional

In CeramTech GmbH v. Coorstek Bioceramics LLCs, the Federal Circuit held that CeramTech’s trademarks of the color pink for hip ceramic components were functional. View
During Claim Construction, Claims are to be Interpreted by Looking at Claim Language, Specification, Prosecution History, and, Where Relevant, Extrinsic Evidence

n Neonode Smartphone LLC v. Samsung Electronics Co., Ltd., No. 2023-2304 (Fed. Cir. Aug. 20, 2024), the Federal Circuit concluded that the district court erred by finding indefiniteness merely from multiple possible interpretations of “only one option,” and held that while a term may not appear in the specification, its meaning can be sufficiently clear through prosecution history distinguishing prior art to provide reasonable certainty to a POSITA about the claimed scope.View
Federal Circuit Holds That Functional Claim Limitations Can Have a Functional Construction That Does Not Specify the Physical Boundaries of Such Limitations

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Federal Circuit Reviewed the District Court’s Decision Invalidating Asserted Claims as Ineligible Subject Matter Under § 101

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Federal Circuit Held the Specification May Describe Numerous Embodiments Which Do Not Limit a Claim Term to a Meaning Narrower than What is Ordinarily Provided

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Claim Construction with Imaginary Commas

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Federal Circuit Holds That Even If No Explicit Claim Construction Took Place, If the Outcome of the Analysis of the Claim Term Establishes the Scope and Meaning of the Patented Subject Matter, Claim Construction Most Likely Occurred

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Federal Circuit Holds that a Claim Containing Both a Broad Limitation and a Narrower Limitation Within the Broad Limitation Is Not Indefinite, So Long as It Is Possible to Satisfy Both the Broad and Narrow Requirements

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The Federal Circuit Held that One-Off Statements May Not Limit Claim Interpretation On Their Own, but Must Be Viewed in Context as a Part of the Whole File

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The Federal Circuit Held that Mere Submission of Office Actions of an Unrelated (but commonly owned) Patent in an IDS Does Not Cause an Applicant to Adopt Statements in Those Office Actions, and is an Insufficient Basis to Limit Claim Scope.

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The Federal Circuit held that a lack of approximation language in a claimed range is not dispositive and may leave room for ambiguity which can require consideration of extrinsic evidence to determine the bounds of the claim.

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Federal Circuit holds that claim terms can be construed in reliance on their dictionary definition, when such construction is not inconsistent with the intrinsic evidence.

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Federal Circuit affirmed the ITC’s ruling that an open-ended claim may be construed to have a more limited, enabled scope, if the open-ended claimed range has an inherent upper limit.

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Federal Circuit Holds that Interference Proceedings Cannot be Applied to Pure AIA Patents and Applications

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Terms Analogous to 'Nonce' Terms May Require Structural Support

In Fintiv Inc. v. Paypal Holdings, Inc., Appeal No. 2023-2312 (Fed. Cir. Apr. 30, 2025), the Federal Circuit indicated that black box recitation of structure may operate as a substitute for means plus function under § 112 ¶ 6. View
Dupont Scope Must be Interpreted Consistently

In Apex Bank v. CC Serve Corp., No. 2023-2143 (Fed. Cir. Sep. 25, 2025), the Federal Circuit affirmed-in-part, vacated-in-part, and remanded the Trademark Trial and Appeal Board (TTAB) decision to sustain an opposition proceeding and refuse registration of the standard character mark and design mark for ASPIRE BANK for banking and financing services.View
Federal Circuit Affirms First-Filer Determination

In Global Health Solutions LLC (Burnam) v. Selner, No. 23-2009 (Fed. Cir. August 26, 2025), the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) did not commit reversible error in its application of the independent corroboration requirement. View
Federal Circuit Remands Due to Incorrect Claim Construction

In FMC Corp. v. Sharda USA, LLC, No. 2024-2335 (Fed. Cir. August 1, 2025), the Federal Circuit held that a claim term in an asserted patent cannot be construed solely based on disclosures in its provisional application and an unasserted patent in the same patent family. View
Allowed Claim Amendments Do Not Ensure Written Description Support

In Mondis Technology Ltd. et al. v. LG Electronics Inc. et al., Nos. 2023-2117, 2023-2116 (Fed. Cir. Aug. 8, 2025), the Federal Circuit held that there is no presumption that claim amendments made during prosecution that result in allowance are supported by adequate written description. View
Federal Circuit Reverses PTAB on Anticipation, Remands Obviousness

The Federal Circuit, in SIGRAY, INC. V. CARL ZEISS X-RAY MICROSCOPY, INC., 137 F.4th 1372 (Fed. Cir. May 23, 2025), reversed the PTAB’s anticipation holding and remanded the PTAB’s obviousness decision. View
Fed. Cir. Vacates $300M Verdict Against Apple

In a patent dispute between Optis Cellular Technology and Apple Inc., the Federal Circuit vacated a $300 million jury verdict in favor of Optis and ordered a new trial.View
Federal Circuit Clarifies Meaning of “Consisting Essentially Of”

In this case, the Federal Circuit held that, depending on context such as prosecution history, amending patent claims to use the transitional phrase “consisting essentially of” may limit the claims to exclude other elements that do not materially affect the basic and novel properties of the invention as claimed. View
Fed. Cir. Invalidates Atorvastatin Hemicalcium Salt Claim

Federal Circuit reversed the decision of the district court and invalidated dependent claim 6 directed to the hemicalcium salt of atorvastatin because claim 6 depended from parent claim 2 limited to atorvastatin acid.View
Federal Circuit Holds that Extrinsic Evidence May Not be Used to Contradict the Language in the Specification

The Federal Circuit, in HD Silicon Solutions LLC v. Microchip Technology, Inc., No. 2023-1397 (Fed. Cir. Feb. 6, 2025), reiterated that extrinsic evidence may be used only to assist in the proper understanding of the disputed limitation; it may not be used to vary, contradict, expand, or limit the claim language from how it is defined, even by implication, in the specification or file history.View
Federal Circuit Holds That a Trademarked Feature May Be Functional

In CeramTech GmbH v. Coorstek Bioceramics LLCs, the Federal Circuit held that CeramTech’s trademarks of the color pink for hip ceramic components were functional. View
During Claim Construction, Claims are to be Interpreted by Looking at Claim Language, Specification, Prosecution History, and, Where Relevant, Extrinsic Evidence

n Neonode Smartphone LLC v. Samsung Electronics Co., Ltd., No. 2023-2304 (Fed. Cir. Aug. 20, 2024), the Federal Circuit concluded that the district court erred by finding indefiniteness merely from multiple possible interpretations of “only one option,” and held that while a term may not appear in the specification, its meaning can be sufficiently clear through prosecution history distinguishing prior art to provide reasonable certainty to a POSITA about the claimed scope.View
Federal Circuit Holds That Functional Claim Limitations Can Have a Functional Construction That Does Not Specify the Physical Boundaries of Such Limitations

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Federal Circuit Reviewed the District Court’s Decision Invalidating Asserted Claims as Ineligible Subject Matter Under § 101

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Federal Circuit Held the Specification May Describe Numerous Embodiments Which Do Not Limit a Claim Term to a Meaning Narrower than What is Ordinarily Provided

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Claim Construction with Imaginary Commas

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Federal Circuit Holds That Even If No Explicit Claim Construction Took Place, If the Outcome of the Analysis of the Claim Term Establishes the Scope and Meaning of the Patented Subject Matter, Claim Construction Most Likely Occurred

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Federal Circuit Holds that a Claim Containing Both a Broad Limitation and a Narrower Limitation Within the Broad Limitation Is Not Indefinite, So Long as It Is Possible to Satisfy Both the Broad and Narrow Requirements

View
The Federal Circuit Held that One-Off Statements May Not Limit Claim Interpretation On Their Own, but Must Be Viewed in Context as a Part of the Whole File

View
The Federal Circuit Held that Mere Submission of Office Actions of an Unrelated (but commonly owned) Patent in an IDS Does Not Cause an Applicant to Adopt Statements in Those Office Actions, and is an Insufficient Basis to Limit Claim Scope.

View
The Federal Circuit held that a lack of approximation language in a claimed range is not dispositive and may leave room for ambiguity which can require consideration of extrinsic evidence to determine the bounds of the claim.

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Federal Circuit holds that claim terms can be construed in reliance on their dictionary definition, when such construction is not inconsistent with the intrinsic evidence.

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Federal Circuit affirmed the ITC’s ruling that an open-ended claim may be construed to have a more limited, enabled scope, if the open-ended claimed range has an inherent upper limit.

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Federal Circuit Holds that Interference Proceedings Cannot be Applied to Pure AIA Patents and Applications

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Federal Circuit Holds that Use of Open-ended Terms in the Specification (e.g. “including”) Does Not Allow for Claim Construction Including Non-disclosed Embodiments

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Federal Circuit Explained that Introduction of “A” Claim Element Followed by Recitation of “Said” Characteristics of that Element, Requires at Least One Element Having all of the Recited Characteristics

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Federal Circuit Affirmed the PTAB’s Ruling that the Petitioner has the Burden of Proof to Show that a POSA Would Equate Features from the Prior Art to Claim Features

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Federal Circuit Affirmed the PTAB’s Ruling that Claim Terms Should Not be Limited to a Disclosed Preferred Embodiment and Clarified that the PTAB May Expand on a District Court’s Claim Construction Where Necessary to Resolve a Dispute

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Federal Circuit Holds that “Highly Persuasive” Evidence is Required to Read Claims as Excluding a Preferred Embodiment of the Invention

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Federal Circuit Clarifies Extent of Permissible Claim Amendments During IPR Proceedings

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Federal Circuit Holds that a Definition Incorporated by Reference Does Not Necessarily Have to Limit a Definition in an Asserted Patent for the Same Term When the Two Definitions Are Not Competing.

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Federal Circuit Holds that Although Infringement May Be Decided Based on Capability of Infringing the Claims, the Alleged Infringing Product Must Be Able to Perform the Function in the Claim

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Federal Circuit Clarifies Applicability of Patent Term Adjustment Based on Appellate Review

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Federal Circuit Affirms Product-by-Process Claims Must Be Distinguished by Structure and Function

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Federal Circuit Relies on Prosecution History to Resolve Ambiguous Claim Language

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Federal Circuit Construes the Conjunction “and” in a List as “and/or” in Light of the Specification

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Federal Circuit Affirms TTAB Ruling Regarding Priority of Mark, Likelihood of Confusion, and Intent to Use

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Federal Circuit Holds that the Onus is on the Challenger to Prove by a Preponderance of the Evidence that 35 U.S.C. § 112 ¶ 6 Should Apply When a Claim Does Not Use “Means” Plus Function Language

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Federal Circuit Holds that 35 U.S.C. § 112 ¶ 6 Can be Applied to Claim Terms Which Combine a Generic Placeholder with Purely Functional Language, Even Absent the Word “Means”

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Federal Circuit Holds Determining the Definiteness of a Claim Feature Should not be Limited to the Claim Language, Standing Alone

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Federal Circuit Holds that a Party has Standing to Appeal an IPR Decision if their Activities are Similar to those Which Resulted in a Litigation or if there is a Risk of a Direct or Indirect Infringement Lawsuit

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Federal Circuit Holds Claimed Ranges Must be Expressly Disclosed to Satisfy Written Description Requirement

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Federal Circuit Requires “plain and ordinary meaning” to be Consistent With Intrinsic Evidence

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Federal Circuit Accords Patentable Weight to a Functional Limitation to Hold that Evidence Fails to Support a Reasonable Expectation of Success

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TTAB Holds that Reckless Disregard Satisfies the Requisite Intent for Fraud on the USPTO in Trademark Matters

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Federal Circuit Clarifies Standard for Finding Willful Infringement

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Federal Circuit Affirms District Court’s Claim Construction after Appellant First Argued a Preamble Limitation Showed Patent Eligible Subject Matter and then Later Argued the Preamble Limitation was Non-limiting

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Federal Circuit Held that Pleading Facially Inconsistent with Claim Does Not Satisfy the Pleading Requirement

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Federal Circuit Holds that the PTAB’s Construction Eliminating an Undisputed Claim Requirement Violated the APA

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Federal Circuit Holds that Intrinsic Evidence Supports a Broad Claim Construction

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Federal Circuit Holds that an Obviousness Determination by the PTAB is Not Supported by Substantial Evidence Where There is No Motivation to Modify the Single Cited Reference

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SCOTUS Grants USPTO Director Discretion to Review Decisions by PTAB

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Federal Circuit Holds that Generic Hardware, Without Inventive Concept, Configured to Perform a Well-known Idea and Practice, Does Not Make a Claim Patent Eligible

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Federal Circuit Holds that Prosecution History Disclaimer Can Arise from Both Claim Amendments and Arguments

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Federal Circuit Holds that a Standalone Reference Fails to Render Claims Obvious Due to Lack of Enablement

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Amazon Facing Possible $425 Million Fine for Alleged GDPR Privacy Violation

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Federal Circuit Finds Employee Assignment Obligations Do Not Cover Pre-Conception Ideas

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Inconsistent Statements Made During Prosecution Can Render Even Well-Known Claim Terms Indefinite

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Federal Circuit Holds that the District Court Added in a Limitation that is Not Being Claimed During Claim Construction, and also Misapplied the DOE When Applying a Correctly Construed Term

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Federal Circuit Finds that Challenger Lacks Standing to Appeal Decision on Validity of Licensed Patents

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Federal Circuit Clarifies Application of IPR Estoppel Provisions in Cases of Serial IPRs Brought by Different Entities

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Federal Circuit Holds that the Term “…user identification module configured to control access of…” is Indefinite Because the Specification Lacks a Corresponding Algorithm

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Federal Circuit Reverses W.D. Wash. on Summary Judgment of Non-infringement Based Upon Incorrect Implicit Claim Limitation Read Into a Configuration of an Accused Product

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Federal Circuit Holds that the PTAB Violated the Administrative Procedures Act by Failing to Provide Notice Before Finding an Allegedly Obvious Claim to be Anticipated in an IPR Final Written Decision

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Federal Circuit Holds “a plurality of” Should Apply to Each Element in a Series When “and” is Used Before the Last Element of the Series

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Federal Circuit Holds that a Patentee’s Disavowal of its Right to Appeal a Noninfringement Judgment in Federal Court Moots a Defendant’s Appeal of an IPR Involving the Same Claims

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Federal Circuit Holds that a Claim May be Found Ineligible Under § 101 if Directed Solely to Non-functional Printed Matter Where the Claim Contains No Additional Inventive Concept

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CAFC Affirmed a PTAB Claim Construction Regarding Human Antibodies.

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Federal Circuit Holds that the District Court Abused its Discretion in Denying Apple’s Petition for Transfer

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Federal Circuit Holds that a State Entity Cannot be Joined as an Involuntary Plaintiff, But an Exclusive Licensee of the Patent May Proceed as the Plaintiff if its Interests are Identical to the State Entity

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Federal Circuit Refuses to Allow for Structural Limitations in a Claim to be Met by Imaginary Lines of Demarcation Arbitrarily Drawn on Accused Product

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Federal Circuit Reminds Lower Court That A Party That Joins An Instituted IPR Proceeding Cannot Introduce New Grounds To The Proceeding

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Federal Circuit Holds that a Party is Not Estopped from Changing its Position on Inventorship Between IPR and Litigation so Long as No Court or Court-like Tribunal Relied on the Earlier Position

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CAFC Vacated the Lower Court Claim Construction Related to Antibodies and Antibody Fragments

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Federal Circuit Denies en banc Rehearing (6-6), and the Modified Panel Decision Partly Remands the Case for Further Consideration of Whether the Claims Requires More Than Merely Applying a Law of Nature

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Federal Circuit Holds that Standard-Essentiality is a Question of Fact for a Jury Rather than a Question to be Decided by a Judge as a Part of Claim Construction

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Federal Circuit Holds that Petitioners Have a Right to Appeal PTAB Decisions Directed to Any Challenged Claim, Regardless of Whether the Petitioner Addressed the Claims in Their Initial Petition

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Federal Circuit Holds that Pre-AIA § 102(e) References Are Applicable in an IPR But is Only Entitled to the Priority Date of a Provisional Application if the Disclosure Provides § 112 Support for the Claims in the Reference

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U.S. Supreme Court Holds that Common Nucleus of Operative Facts in a Previous Litigation Must be Established to Evidence a Common Claim for the Application of the Doctrine of Claim Preclusion

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Federal Circuit Holds that a Preferred Embodiment May Inform Claim Scope When the Claim Appears to be Limited to that Single Preferred Embodiment

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Federal Circuit Holds Written Instrument Can Be Reformed Under Contract Law To Effect Assignment

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CAFC Affirmed the Lower Court Claim Construction and Design Patent Infringement Ruling on a Copy-Cat Case of Children’s Chalk Holder Designs

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Failure To Mark By Licensee Not Excused After It Stopped Making The Products

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Federal Circuit Holds that Express License of a Patent Includes Implied License to Continuations

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Federal Circuit Holds that the Markush Group Recitation Limits Only the Specific Associated Element and Not the Entire Claim

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Federal Circuit Provides Important Refresher On Disavowal Of Claim Scope

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Service of Deficient Infringement Claim May Start One-Year IPR Filing Period

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Argument-based Estoppel May Limit Doctrine of Equivalents Even if Arguments Were Not Required to Secure Allowance

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Federal Circuit Holds that One-Step, One-Solution Process Does Not Infringe Three-Step, Three-Solution Process Under Doctrine of Equivalents, Which Applies Only in Exceptional Cases

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Federal Circuit Upholds Unusual Exceptional Case Finding On Issues Not Fully Litigated

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TTAB Coaxes Federal Circuit to Issue Precedential Decision to Warn About Webpages as Trademark Specimens

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Federal Circuit Clarifies Role Of Specification And Claim Language In Abstract Idea Analysis

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