IP(DC) Podcast: Patent Battles – New Patent Initiatives on the Hill & Notable CAFC/SCOTUS Decisions
Podcast: Patentable Subject Matter in 2019
Federal courts continue to grapple with whether profit disgorgement for design patent infringement is a legal remedy for juries or an equitable remedy for judges, an issue the US Court of Appeals for the Federal Circuit has...more
Our Patent Case Summaries provide a weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial...more
The District of Delaware recently denied a defendant’s motion to dismiss plaintiff’s demand for enhanced damages based on willful infringement pursuant to 35 U.S.C. § 284, explaining that neither a demand for damages under §...more
This Federal Circuit opinion analyzes the “very demanding standard” of judicial correction of erroneous wording of a patent claim. Background - Canatex Completion Solutions owns U.S. Patent No. 10,794,122. This patent...more
The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s decision finding claims directed to cladribine regimens for treating multiple sclerosis unpatentable as obvious....more
In a recent patent infringement case, Judge J. Paul Oetken (S.D.N.Y.) awarded attorneys’ fees under the Patent Act because the case was “exceptional,” but denied fees under 28 U.S.C. § 1927 and the court’s inherent authority...more
On October 17, 2025, almost one month after being sworn in as the Director of the USPTO, John Squires returned institution authority for proceedings under the America Invents Act (“AIA”) to himself. Previous Directors had...more
In the first proposed rulemaking issued under Director Squires, the USPTO proposes to modify the rules of practice relating to discretionary denials to institute Inter Partes Review (IPR) proceedings. The proposed rules...more
In this edition of The Precedent, we outline the decision in Steuben Foods Inc. v. Shibuya Hoppmann Corp. This case addresses whether the reverse doctrine of equivalents (RDOE) is a viable defense to patent infringement....more
While courts have often warned that hindsight bias should be avoided when assessing whether a patented invention would have been obvious to the skilled person, the application of this principle can be challenging in practice....more
On January 24, in Steuben Foods, Inc v. Shibuya Hoppman Corporation, the Federal Circuit found that Steuben had made a compelling argument that the common law Reverse Doctrine of Equivalents (RDOE) did not survive the 1952...more
Steuben Foods, Inc. v. Shibuya Hoppman Corp., Appeal No. 2023-1790 (Fed. Cir. Jan. 24, 2025) In its only precedential patent decision this week, the Federal Circuit addressed an “anachronistic exception, long mentioned but...more
As companies—and more recently, courts—have struggled to address the role of artificial intelligence (AI) in innovation, legislators are embroiled in a struggle of their own. Over the past two years, the Senate and House have...more
The PTAB denied institution of a second inter partes review (“IPR”) petition filed by Aylo Freesites (“Petitioner”) after having previously instituted inter partes review of Petitioner’s first petition related to the same...more
On June 28, 2024, the United States Patent and Trademark Office (“USPTO”) requested the public’s views on the current state of the common law experimental use exception to patent infringement and whether legislative action...more
As we move into the second half of the year, we are alerting you to 11 patent cases that you should look out for during the second half of 2024. This judicial mix touches on a range of industries and interests, such as...more
Precedential and Key Federal Circuit Opinions - SANHO CORP. v. KAIJET TECHNOLOGY INTERNATIONAL LIMITED, INC. [OPINION] (2023-1336, 7/31/24) (Dyk, Clevenger, Stoll) - Dyk, J. The Court affirmed the Board’s decision...more
In 2022, the Federal Circuit definitively ruled that artificial intelligence (AI) systems cannot be named inventors or co-inventors on patent applications, reinforcing the longstanding principle that only natural persons are...more
On December 4, 2023, the Federal Court issued its public judgment and reasons in two patent infringement actions pursuant to s. 6(1) of the Patented Medicines (Notice of Compliance) Regulations (“Regulations”) and two patent...more
Section 102 of the Patent Act holds that an invention may not be patented if it was in public use before the effective filing date of the patented invention. The public use bar to patenting is triggered if the invention is...more
The Court’s reasoning in Amgen v. Sanofi upholds the Federal Circuit’s long-standing requirement to enable the full scope of a claimed invention. Since the Patent Act of 1790, patent law has required describing inventions...more
In re: John L. Couvaras, Appeal No. 2022-1489 (Fed. Cir. June 14, 2023) In our Case of the Week, the Court of Appeals for the Federal Circuit affirmed a Patent Trial and Appeals Board decision that a patent application’s...more
On May 18, 2023, the Supreme Court unanimously affirmed the Federal Circuit's decision, Amgen Inc. v. Sanofi, 987 F.3d 1080 (Fed. Cir. 2021), that the claims of two of Amgen's patents were invalid for lack enablement. The...more
On May 18, 2023, the Supreme Court affirmed the Federal Circuit’s (CAFC) decision on enablement in Amgen Inc. v. Sanofi, 987 F.3d 1080 (CA Fed. 2021). The Court thus left in place a significant decision making it more...more
Since the Supreme Court’s decisions in Mayo Collaborative Servs. v. Prometheus Lab’ys, Inc., 566 U.S. 66 (2012), and Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014), “diagnostic” patent claims have repeatedly...more