IP Law Outline - 12-1-13

CAFC IP Law 12/1/2013
I. APPELLATE/DISTRICT COURT JURISDICTION/REVIEW ........................... 32

A. APPELLATE/DISTRICT COURT JURISDICTION .......................................... 32
Subject matter jurisdiction - generally ...................................................................... 32
Subject matter jurisdiction general principles.................................................... 32
Court must have subject matter jurisdiction ..................................................... 32
Burden is on the party asserting jurisdiction..................................................... 35
Federal courts have limited jurisdiction ............................................................ 35
CAFCs and district courts arising under jurisdiction ................................. 37
Statutory limitations to jurisdiction .................................................................. 55
Covenant not to sue ........................................................................................... 56
Dismissal on jurisdictional grounds .................................................................. 58
Jurisdictional discovery .................................................................................... 59
Jurisdiction over PTO appeals .......................................................................... 60
Final Judgment Rule ............................................................................................. 61
Generally ........................................................................................................... 61
Collateral order doctrine ................................................................................... 65
Denial of summary judgment motion, motion to dismiss not appealable......... 66
Non-appealable order is merged into subsequent final judgment ..................... 67
Stay order generally not appealable .................................................................. 68
Pending claims, counterclaims render district court judgment non-final ......... 68
Final judgment rule is not satisfied by stipulation ............................................ 70
District court findings are not a final judgment ................................................ 74
District courts holding must form the basis of appealed judgment ................. 74
Reinstatement of appeal .................................................................................... 74
Appeal from the PTO ........................................................................................ 75
Appeal from the ITC ......................................................................................... 75
Certification FRCP 54(b)................................................................................... 75
Injunctions/Interlocutory Orders ........................................................................... 78
Injunctions......................................................................................................... 78
Interlocutory orders ........................................................................................... 82
Standing .................................................................................................................... 87
Generally ............................................................................................................... 87
Constitutional vs. prudential standing................................................................... 94
Constitutional standing ..................................................................................... 94
Prudential standing joining (co)owner ........................................................... 98
Right to sue for infringement, and seek damages 35 USC 281, 100(d) ...... 101
Party needs legal title or all substantial rights ............................................. 107
Agreements assignments, licenses 35 USC 261 ........................................ 111
Generally ......................................................................................................... 111
Exclusive licensee ........................................................................................... 117
Bare licensee ................................................................................................... 122
Non-exclusive licensee ................................................................................... 123
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2008-2013 Michael G. Sullivan
Curing standing defects....................................................................................... 124
Dismissal for lack of standing............................................................................. 125
Appellate (CAFC) standing ................................................................................ 126
Declaratory judgment jurisdiction .......................................................................... 129
Generally actual controversy required ......................................................... 129
New standard Medimmune v. Genentech (S.C.) .......................................... 132
Old standard .................................................................................................... 151
Burden on DJ plaintiff ........................................................................................ 154
Standing, ripeness, and mootness requirements ................................................. 158
District courts discretion .................................................................................... 160
Existence of patent not enough ........................................................................... 163
Patentees lack of assurances or silence on enforcement.................................... 164
Patentees statements regarding enforcement ..................................................... 165
Prior, other pending litigation with the patentee ................................................. 166
Covenant not to sue ............................................................................................. 168
First-filed case rule ............................................................................................. 171
Past and future infringement ............................................................................... 173
Licensing of patents Medimmune v. Genentech (S.C.) .................................... 174
Supplemental jurisdiction ....................................................................................... 179
Generally ............................................................................................................. 180
State law claims .................................................................................................. 182
Infringement of foreign patents .......................................................................... 184
Pendent appellate jurisdiction ................................................................................. 185
Personal jurisdiction................................................................................................ 186
Generally ............................................................................................................. 186
General vs. specific jurisdiction .......................................................................... 187
General jurisdiction ......................................................................................... 188
Specific jurisdiction ........................................................................................ 188
CAFC law applies ............................................................................................... 198
Other issues ......................................................................................................... 199
Actions of exclusive licensee .......................................................................... 199
Cease and desist letters, offers of license........................................................ 200
Contracts ......................................................................................................... 201
Corporate officers ........................................................................................... 201
Employers vs. employees................................................................................ 202
Foreign defendants .......................................................................................... 202
Jurisdictional discovery .................................................................................. 204
Motion to dismiss FRCP 12(b)(2) ............................................................... 205
Suing the correct corporate entity ................................................................... 207
Third party ...................................................................................................... 207
Waiver FRCP 12(h)(1) ................................................................................ 207
Websites .......................................................................................................... 208
Venue ...................................................................................................................... 208
Service of process ................................................................................................... 208
B. APPELLATE/DISTRICT COURT REVIEW .................................................... 208
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Legislation - generally ............................................................................................ 209
Congress/patent-related legislation ......................................................................... 210
Treaties .................................................................................................................... 210
Agency/PTO decisions/regulations ......................................................................... 211
Agency/PTO decisions........................................................................................ 211
Administrative deference APA, Zurko (S.C.), Chenery doctrine ................ 211
Deference to PTO, examiners ......................................................................... 222
BPAI ............................................................................................................... 225
Agency/PTO regulations ..................................................................................... 229
Substantial deference/Chevron (S.C.) deference ............................................ 229
Attorney fee awards ................................................................................................ 237
Briefing and arguing the CAFC appeal waiver, joint appendix........................... 239
Briefing the appeal generally appeal strategy ............................................... 239
Attorney argument is not evidence ..................................................................... 239
Issues must be raised in opening brief with particularity reply brief is too late -
waiver .................................................................................................................. 240
Issue must be raised on appeal, or waiver........................................................... 242
Waiver during oral argument .............................................................................. 244
Length and number of briefs ............................................................................... 245
Concessions in briefs, at oral argument .............................................................. 245
Mischaracterizing, misquoting text, excessive hyperbole in briefs .................... 246
Striking portions of briefs ad hominem attacks ............................................... 247
Confidentiality in briefs ...................................................................................... 247
Joint appendix ..................................................................................................... 248
Choice of law CAFC vs. regional circuit law ..................................................... 248
Circumstantial evidence .......................................................................................... 253
Claim construction (CC) ......................................................................................... 253
Claim terms reviewed on appeal ......................................................................... 253
Claim terms must be in controversy ................................................................... 257
CAFC adopting new CC remand or new trial necessary? ............................... 259
District court must resolve CC disputes, which CC must be followed ............... 265
Doctrine of waiver .............................................................................................. 269
Object at trial stage to preserve CC for appeal ............................................... 276
Issue preclusion applied to CC ........................................................................... 277
Patent Office CC ................................................................................................. 279
Same CC for infringement and validity .............................................................. 279
Settlements from prior litigations ....................................................................... 280
Stare decisis adopting CC from earlier CAFC decisions ................................. 280
Untimely, premature CC issues .......................................................................... 281
Credibility determinations great deference given to fact finder .......................... 281
Cross appeals .......................................................................................................... 284
Appropriateness of cross appeals ........................................................................ 285
Conditional cross appeal ..................................................................................... 290
Final judgment needed ........................................................................................ 291
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Decisions of the district court (e.g., dismissals with prejudice, reasons for decision)
................................................................................................................................. 291
District court (BPAI, TTAB, ITC) must consider issue first .................................. 293
Generally ............................................................................................................. 295
Claim construction .............................................................................................. 300
Doctrine of waiver .............................................................................................. 303
Waiver on summary judgment ........................................................................ 315
District courts management of the trial stage ........................................................ 318
Dicta ........................................................................................................................ 320
Dismissal of appeal after settlement ....................................................................... 322
En banc review ........................................................................................................ 322
Error - by District Court and BPAI/TTAB ............................................................. 323
Generally ............................................................................................................. 323
Harmful error ...................................................................................................... 323
Harmless error rule ............................................................................................. 323
Invited error rule ................................................................................................. 326
Plain error rule .................................................................................................... 327
Ethics (and related issues) ....................................................................................... 327
Generally ............................................................................................................. 327
Attorney disqualification .................................................................................... 330
Exclusion of evidence ............................................................................................. 332
Federal Rules of Civil Procedure ............................................................................ 332
Finality of litigation, strategies ............................................................................... 333
Foreign tribunals ..................................................................................................... 333
Anti-suit injunctions............................................................................................ 333
Intervening decisions .............................................................................................. 334
Intervention in appeal ............................................................................................. 335
Judgments ............................................................................................................... 335
CAFC reviews judgments, not opinions ............................................................. 335
Summary affirmance ........................................................................................... 338
Remand necessary? - Remand for clarification .................................................. 338
Reversal of judgment .......................................................................................... 340
Subdelegation principle ...................................................................................... 341
Vacatur and remand ............................................................................................ 341
Judicial admissions ................................................................................................. 341
Judicial estoppel ...................................................................................................... 342
Judicial notice ......................................................................................................... 345
Juries, instructions and verdicts .............................................................................. 346
Juries generally; jury prejudice ........................................................................... 346
Jury instructions .................................................................................................. 348
Jury verdict.......................................................................................................... 354
Jurys award of damages ................................................................................. 354
General verdicts .............................................................................................. 355
Heavy burden to overturn jury verdict ............................................................ 357
Objecting to jury verdict ................................................................................. 357
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Reconciling inconsistent jury verdicts ............................................................ 360
Reversal of jury verdict ................................................................................... 360
Sufficiency of the evidence ............................................................................. 360
Jury taint.......................................................................................................... 361
Law of the case doctrine ......................................................................................... 362
Mandate rule, recalling the CAFCs mandate......................................................... 366
Merits panel not bound by action of single CAFC judge ....................................... 369
Mootness ................................................................................................................. 369
Mootness - generally ........................................................................................... 369
Validity addressed after noninfringement found Cardinal Chemical (S.C.) ... 372
Invalidity/IC on appeal moots infringement, other defenses .............................. 374
Valid claims infringed, no need to address other claims .................................... 378
Mootness removes the courts Article III jurisdiction ........................................ 379
Vacatur of judgment ....................................................................................... 380
MPEP/TMEP and Examiners Guidelines .............................................................. 381
Notice of appeal to the CAFC ................................................................................. 382
Expedited review ................................................................................................ 384
Preponderance of the evidence standard - infringement ......................................... 384
Prior panel decisions/CCPA/Court of Claims/Regional Circuits/BPAI/U.S. Supreme
Court/District Court ................................................................................................ 384
CAFC bound by decisions of predecessor courts ............................................... 384
Issue must be raised in prior decision to be binding precedent .......................... 386
Binding precedent not limited to its facts? ......................................................... 386
Later CAFC panel decision does not change prior panel decision unless prior
decision is overruled en banc; stare decisis ........................................................ 386
Rule 36 judgments .............................................................................................. 388
Regional circuit court decisions (prior to the CAFC) ......................................... 389
BPAI decisions.................................................................................................... 389
District court decisions ....................................................................................... 390
Supreme Court decisions .................................................................................... 390
Sanctions for violating FRAP or local rules of practice of the CAFC, frivolous
appeal ...................................................................................................................... 390
Secondary considerations - obviousness ................................................................. 392
Stay of injunction, or injunction, pending appeal ................................................... 392
Staying of appeal..................................................................................................... 393
Stipulations ............................................................................................................. 394
Transfer, reassignment to a different district court judge on remand, recusal of
judge, judicial bias .................................................................................................. 394
Unpublished decisions ............................................................................................ 395
Writs of mandamus 28 USC 1361, 1651 ........................................................ 396
C. STANDARDS OF REVIEW AND CHOICE OF LAW .................................... 406
Appeals from District Court (bench and jury trials), BPAI/TTAB, ITC (CIT), and
the Court of Federal Claims .................................................................................... 407
Bench trial ........................................................................................................... 407
Jury trial .............................................................................................................. 408
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BPAI/TTAB ........................................................................................................ 412
International Trade Commission (ITC) .............................................................. 419
Court of International Trade (CIT) ..................................................................... 422
Court of Federal Claims ...................................................................................... 423
Substantive/procedural issues (in alphabetical order)............................................. 423
Substantive/procedural patent issues .................................................................. 423
Anticipation..................................................................................................... 424
Antitrust claims, counterclaims ...................................................................... 428
Assignor estoppel ............................................................................................ 429
Best mode........................................................................................................ 429
Certificate of correction .................................................................................. 429
Claim construction .......................................................................................... 429
Damages, attorney fees, costs, interest ........................................................... 437
Design patents ................................................................................................. 448
Disclosure duty in SSOs ................................................................................ 448
Double patenting ............................................................................................. 449
Enablement ..................................................................................................... 450
Equitable defenses laches, equitable estoppel, waiver, unclean hands ........ 451
False marking .................................................................................................. 452
Incorporation by reference .............................................................................. 452
Indefiniteness .................................................................................................. 453
Inequitable conduct ......................................................................................... 454
Infringement .................................................................................................... 457
Injunctions....................................................................................................... 459
Interferences .................................................................................................... 467
Inventorship .................................................................................................... 468
Knowledge or intent under the patent law ...................................................... 469
Local rules in patent cases .............................................................................. 469
Obviousness .................................................................................................... 469
Ownership of patent ........................................................................................ 478
Patentable subject matter ................................................................................ 480
Preemption of state law by federal law ........................................................... 480
Priority to earlier filing date ............................................................................ 481
Prosecution history estoppel/all elements/vitiation and disclosure-dedication
rules/ensnarement ........................................................................................... 481
Reexamination ................................................................................................ 483
Reissue ............................................................................................................ 484
Repair vs. reconstruction ................................................................................ 485
Utility .............................................................................................................. 485
Willful infringement (and scope of waiver).................................................... 485
Written description; New matter ..................................................................... 487
Non-patent substantive issues ............................................................................. 489
Agency regulations ......................................................................................... 489
Arbitration ....................................................................................................... 489
Attorney disqualification ................................................................................ 489
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Bankruptcy ...................................................................................................... 489
Constitutionality of law and interpretation ..................................................... 490
Contract disputes, interpretation ..................................................................... 490
Eleventh Amendment (state) immunity, sovereign immunity of federal
government ..................................................................................................... 496
Federal Rules of Civil Procedure interpretation thereof .............................. 496
Laches (non-patent) ........................................................................................ 497
Mandate scope and interpretation ................................................................... 497
Piercing the corporate veil .............................................................................. 497
Statutory deception ......................................................................................... 497
Statutory interpretation ................................................................................... 497
Non-patent procedural issues .............................................................................. 499
Anti-suit injunction ......................................................................................... 499
Attorney-client privilege and waiver .............................................................. 499
Bifurcation of trial........................................................................................... 500
Claim and issue preclusions ............................................................................ 500
Credibility determinations .............................................................................. 501
Discovery issues.............................................................................................. 502
Dismissal of claims, counterclaims, defenses ................................................. 504
Dismissal of appeal ......................................................................................... 507
District courts interpretation of CAFC precedent.......................................... 507
District courts interpretation of CAFCs mandate ......................................... 507
District courts interpretation of its own orders .............................................. 507
Evidentiary rulings .......................................................................................... 507
Exhaustion of administrative remedies ........................................................... 514
Experts ............................................................................................................ 514
Joinder, severance, intervention and transfer .................................................. 514
Judical estoppel ............................................................................................... 516
Jurisdiction of district court ............................................................................ 516
Jurisdiction of CAFC over appeal................................................................... 521
Jury issues ....................................................................................................... 522
Leave to amend pleadings - complaint, answer .............................................. 528
Local court rules ............................................................................................. 529
Motion for leave .............................................................................................. 530
Motion for judgment on the pleadings ............................................................ 530
Motion for stay................................................................................................ 530
Motion to strike ............................................................................................... 530
Motion for summary judgment ....................................................................... 530
Motion for JMOL............................................................................................ 545
Motion for reconsideration ............................................................................. 554
Motion for new trial ........................................................................................ 554
Motion to amend findings ............................................................................... 558
Motion for relief from judgment ..................................................................... 558
Remand to district court .................................................................................. 559
Sanctions ......................................................................................................... 560
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Standing .......................................................................................................... 562
Statute of limitations ....................................................................................... 563
Stipulations ..................................................................................................... 563
Transfer, reassignment to a different district court judge on remand 28 USC
2106; recusal of judge ..................................................................................... 563
Waivers ........................................................................................................... 564
Writs of mandamus ......................................................................................... 564
II. BIOTECH/PHARMA CASES ............................................................................... 566
A. Biotech Cases ...................................................................................................... 566
B. Pharma/Hatch-Waxman Cases............................................................................ 570
C. Hatch-Waxman Issues ........................................................................................ 578
Generally ................................................................................................................. 580
Orange Book patent listings and patent use codes .................................................. 581
Paragraph IV certification ....................................................................................... 584
Thirty-month stay.................................................................................................... 586
180-day generic marketing exclusivity period ........................................................ 587
Stipulations by subsequent ANDA filers ................................................................ 588
Declaratory judgment jurisdiction .......................................................................... 589
Reverse payment settlements .............................................................................. 596
Injunctions............................................................................................................... 598
Preliminary injunction ........................................................................................ 598
Permanent injunction .......................................................................................... 599
Damages .................................................................................................................. 601
Willful infringement ............................................................................................... 601
Attorney fees and expert witness fees ..................................................................... 601
D. Patent Term Extension 35 USC 156 ............................................................. 604
Product in 35 USC 156(a) and (f) includes any salt form; active ingredient
defined..................................................................................................................... 604
Combination drug product ...................................................................................... 605
Extension for one patent only; first commercial marketing requirement - 35 USC
156(a)(5)(A) ............................................................................................................ 605
Interim extension 35 USC 156(e)(2) ................................................................. 606
Invalidity of patent term extension 35 USC 282, 4........................................ 606
Terminally disclaimed patents ................................................................................ 607
III. CLAIM CONSTRUCTION ................................................................................ 607
A. Phillips v. AWH Corp. (en banc) ........................................................................ 607
Claims and Claim Terms ........................................................................................ 610
Specification ........................................................................................................... 612
Prosecution History................................................................................................. 612
Extrinsic Evidence .................................................................................................. 613
Other Issues ............................................................................................................. 613
Appropriate weight must be attached to the various sources .............................. 613
Deference to District Courts claim construction ............................................... 614
Validity and claim construction .......................................................................... 614
Means-plus-function claims ................................................................................ 614
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B. Post-Phillips claim construction cases ................................................................ 615
C. Common claim terms (in alphabetic order) ........................................................ 624
D. Claim Construction Principles ............................................................................ 642
Claim construction - generally ................................................................................ 642
Claims define the invention .................................................................................... 645
Claim construction begins with the claims ............................................................. 658
Claim terms are given their ordinary and customary meaning ............................... 661
Ordinary and customary meaning is determined in view of the specification .... 669
Ordinary and customary meaning is determined at the time of the invention .... 671
Claim term as a commonly understood word ..................................................... 671
Claim term having particular meaning in the art ................................................ 673
Claim term used in the specification and/or prosecution history in a manner
inconsistent with its ordinary and customary meaning ....................................... 675
Claim construction sources ..................................................................................... 685
Appropriate weight must be attached to the sources .......................................... 688
Claim construction sources - generally ............................................................... 689
Claim language ............................................................................................... 689
Intrinsic evidence - generally .......................................................................... 690
Prosecution history.......................................................................................... 692
Dominance of the specification in claim construction ........................................ 695
Specification containing claim term definitions ............................................. 713
Prosecution history is less useful than the specification ..................................... 717
Prior art is intrinsic evidence .............................................................................. 719
Context of the claims and patent must be considered ............................................. 722
Context of the claims (both asserted and unasserted) ......................................... 725
Claim terms should not be ignored, or rendered superfluous or redundant .... 732
Context of the patent ........................................................................................... 735
Ambiguous or relative claim terms ......................................................................... 748
Antecedent basis ..................................................................................................... 750
Apparatus claims not limited by use or process of making ................................. 750
Beauregard claims ................................................................................................... 752
BPAI (PTAB)/PTO claims are given their broadest reasonable interpretation ... 752
Broadening of claims (to cover competitors product) ........................................... 760
Chemical/Pharma/Biotech claims ........................................................................... 761
Acids/salts ........................................................................................................... 762
Markush groups .................................................................................................. 762
Isomers, stereoisomers ........................................................................................ 762
Genus claims ....................................................................................................... 762
Claim construction is reviewed independently of infringement - but always takes
place in the context of the accused product ............................................................ 762
Claim term meaning is the same for all claims, related patents.............................. 765
Construction which excludes (preferred) embodiment(s), or the inventors device,
from the scope of the claims is rarely, if ever, correct ............................................ 770
Construction with a scienter requirement ............................................................... 777
Construing claims to save their validity.................................................................. 777
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Courts may not redraft claims, nonsensical construction ....................................... 779
Deference to district courts construction? ............................................................. 785
Dependent claims .................................................................................................... 787
Different terms in the claims (and the specification) are assumed to have different
meanings ................................................................................................................. 788
Disclaimer in the specification................................................................................ 790
Disclaimer must be clear ..................................................................................... 790
Disclaimer may be implicit ............................................................................. 799
Disclaimer precludes DOE infringement ............................................................ 818
Divisional applications........................................................................................ 819
Offensive use of disclaimer (to avoid prior art) .................................................. 819
Prosecution history cannot enlarge the specification .......................................... 820
Patentee pays the cost for a disclaimer ............................................................... 821
Narrow to broad claims is not a disclaimer ........................................................ 821
Disclaimer during prosecution ................................................................................ 821
General rule disclaimer based on amendments, statements distinguishing prior
art during prosecution ......................................................................................... 821
Disclaimer must be clear and unambiguous, unmistakable ................................ 830
Context of statements is important ................................................................. 840
Rescinding prosecution disclaimer ..................................................................... 842
Disclaimer during prosecution of related (vs. unrelated) applications, patents .. 843
Disclaimer must be of the claimed subject matter .............................................. 852
Disclaimer must by done by the applicant, not the examiner ............................. 853
Disclaiming more than necessary (to overcome prior art) .................................. 858
Disclaimer precludes DOE infringement ............................................................ 860
Disclaimer from mistakes made during prosecution .......................................... 861
Offensive use of prosecution disclaimer ............................................................. 861
Disclaimer during reexamination ........................................................................ 861
Means-plus-function claims ................................................................................ 862
Applicants subjective intent is irrelevant........................................................... 863
Disclaimer based on extrinsic evidence .................................................................. 863
Disclaimer - surrender of claims ............................................................................. 863
Doctrine of claim differentiation ............................................................................ 863
Generally presumption that each claim has different scope ............................ 863
Presumption is not a hard and fast rule ........................................................... 866
Independent claim construed based on dependent claims .................................. 871
Independent claim construed based on another independent claim .................... 876
Redundant, superfluous claims are disfavored ................................................... 877
Continuation application adding/omitting claim limitation from parent application
............................................................................................................................. 879
Extrinsic evidence ................................................................................................... 880
Generally ............................................................................................................. 880
Dictionaries ......................................................................................................... 884
Expert testimony ................................................................................................. 898
Admissions by accused infringer ........................................................................ 907
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Inventor testimony .............................................................................................. 908
Other court decisions .......................................................................................... 909
Reexamination examiner .................................................................................... 911
Industry standards, publications.......................................................................... 911
Regulations ......................................................................................................... 912
Foreign prosecution ................................................................................................ 913
Functional language ................................................................................................ 914
Incorporation by reference ...................................................................................... 914
Inoperable embodiments in claims ......................................................................... 916
Jepson claims .......................................................................................................... 917
Lexicographer rule .................................................................................................. 917
Generally giving claim term a special definition ......................................... 917
Lexicography must be clear ................................................................................ 921
Lexicography need not be explicit ...................................................................... 924
Markush claims ....................................................................................................... 926
Method claims steps not limited in order, unless implicit ................................... 927
Methods for measuring claim terms ....................................................................... 928
Means-plus-function claims 35 USC 112, 6 .................................................. 929
Generally claimed function and corresponding structure in the specification . 931
Claimed function ............................................................................................. 932
Corresponding structure .................................................................................. 934
Doctrine of claim differentiation does not override Section 112, 6 ............. 947
Equivalents ...................................................................................................... 948
Means recited in the claim? ............................................................................. 949
Step for function claim .................................................................................... 959
Infringement ........................................................................................................ 959
Invalidity ............................................................................................................. 959
Indefiniteness ...................................................................................................... 960
Preamble limiting or not?..................................................................................... 960
Generally ............................................................................................................. 962
Preamble reciting essential structure or steps, vs. stating merely the purpose or
intended use of the invention .............................................................................. 964
Preamble limiting when provides antecedent basis for claim terms ................... 967
Reliance on the preamble during prosecution is limiting ................................... 967
Preamble limiting ................................................................................................ 968
Preamble of Jepson claim is limiting .................................................................. 968
Product-based claim limited to process by which the product is made? ................ 969
Product-by-process claims .................................................................................. 972
Ranges ..................................................................................................................... 973
Reading limitations, embodiments (improperly) from the specification into the
claims vs. interpreting the claims based on the specification ................................. 973
Generally ............................................................................................................. 976
Fine line between the two axioms ....................................................................... 979
Clear disclosure is necessary for importing limitation ....................................... 981
Purposes/advantages/objectives/functions of the invention limiting? ................ 995
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Unclaimed features are not limiting .................................................................... 999
Preferred embodiments cannot be read into the claims .................................... 1002
Ranges, numeric limits.................................................................................. 1007
Claim terms usage and context ........................................................................ 1008
Drawings are not limiting ................................................................................. 1010
Single embodiment in the specification does not necessarily limit the claims . 1012
Textual reference in the claim is necessary ...................................................... 1018
Specification need not describe future embodiments ....................................... 1019
IV. INFRINGEMENT............................................................................................. 1019
A. 35 USC 271(a) direct infringement............................................................. 1019
General rules of direct infringement ..................................................................... 1019
Generally ........................................................................................................... 1019
Infringement determined in two steps............................................................... 1021
Claim construction vs. infringement ............................................................. 1022
Infringement requires that each and every claim element or step be performed
........................................................................................................................... 1025
Burden of proof ................................................................................................. 1029
Patentees commercial embodiment not used for determining infringement ... 1030
Separate patentability of the accused product does not preclude infringement 1031
Make .................................................................................................................. 1031
Use ..................................................................................................................... 1032
Offer to sell ........................................................................................................ 1033
Sale .................................................................................................................... 1035
Territorial reach of 35 USC 271(a) Within the United States ..................... 1035
Use without authority . . . during the patent term .............................................. 1041
B. 35 USC 271(b) active inducement of infringement .................................... 1042
Generally ............................................................................................................... 1046
Direct infringement required................................................................................. 1048
Intent required factual determination ................................................................. 1059
Inducement must be proven for all claim elements .............................................. 1073
Inducement occurring from foreign country ......................................................... 1073
Indemnity agreements ........................................................................................... 1074
C. 35 USC 271(c) contributory infringement .................................................. 1074
Generally ............................................................................................................... 1074
Direct infringement required................................................................................. 1075
Knowledge of infringement .................................................................................. 1076
Intent (knowing) ................................................................................................ 1076
Offer for sale or sale of a component . . . . ........................................................ 1077
Substantial non-infringing uses............................................................................. 1078
Material part of the invention ............................................................................ 1080
Within the United States.................................................................................... 1080
D. 35 USC 271(e)(1) FDA exemption, safe harbor...................................... 1080
Generally Merck v. Integra (S.C.) ...................................................................... 1080
Alternative uses/purposes of research are also exempt......................................... 1085
Basic scientific research is not exempt ................................................................. 1085
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Research tools ....................................................................................................... 1086
E. 35 USC 271(f) ................................................................................................ 1087
Active inducement ................................................................................................ 1087
Method/process inventions ................................................................................... 1087
Physical supply of components is required ....................................................... 1089
Software as a component Microsoft v. AT&T (S.C.), Eolas ........................... 1089
F. 35 USC 271(g), 295 ..................................................................................... 1091
G. 35 USC 272 .................................................................................................... 1093
H. Other Infringement Issues ................................................................................. 1093
Admissions by counsel ......................................................................................... 1093
Admissions in the specification and publications ................................................. 1093
Affirmative defenses to infringement 35 USC 282......................................... 1093
Apparatus, system vs. method claims ................................................................... 1094
Bankruptcy ............................................................................................................ 1097
Biotech/Pharma ..................................................................................................... 1098
Capable of, sometimes infringement .................................................................... 1099
De minimis infringement....................................................................................... 1104
Dependent claims .................................................................................................. 1105
Direct infringement is a strict liability offense ..................................................... 1105
Experimential use exception to infringement ....................................................... 1106
First sale (patent exhaustion) defense ................................................................... 1107
Quanta Computer v. LG Electronics (S.C.) ...................................................... 1107
First sale/patent exhaustion doctrine - generally .............................................. 1110
Licenses (and Covenants not to sue) ................................................................. 1120
Method claims ................................................................................................... 1120
Sale of components of the patented invention .................................................. 1123
Implied license from authorized sale ................................................................ 1124
First sale (patent exhaustion) and permissible repair vs. reconstruction .............. 1125
Permissible repair.............................................................................................. 1127
Future technology ................................................................................................. 1128
Implied license defense Met-Coil ...................................................................... 1128
Indirect infringement - generally .......................................................................... 1132
Invalid patent is not infringed ............................................................................... 1132
Joint infringement ................................................................................................. 1133
Joint tortfeasors ..................................................................................................... 1143
License defense to infringement ........................................................................... 1143
Means-plus-function claims - 35 USC 112, 6 ................................................. 1144
Personal liability for infringement ........................................................................ 1153
Piercing the corporate veil alter ego theory of infringement ............................. 1153
Practicing the prior art not a viable defense to infringement ............................. 1154
Product-by-process claims .................................................................................... 1155
Proof of infringement ............................................................................................ 1157
Burden of proof on the patentee........................................................................ 1157
Contributory infringement ................................................................................ 1159
Direct vs. indirect evidence of infringement..................................................... 1160
13
Doctrine of equivalents ..................................................................................... 1162
Infringement evidence expert testimony, testing, etc. ................................... 1166
Practicing industry standards ............................................................................ 1172
Process claims 35 USC 295 ........................................................................ 1172
Right to exclude .................................................................................................... 1173
Vacarious liability ................................................................................................. 1173
V. DOCTRINE OF EQUIVALENTS and PROSECUTION HISTORY ESTOPPEL
Festo (S.C.) ............................................................................................................ 1174
A. Doctrine of equivalents ................................................................................. 1177
Generally ........................................................................................................... 1177
DOE issues ........................................................................................................ 1185
After-arising technology ............................................................................... 1185
All limitations, elements rule .................................................................... 1186
Theory, evidence of equivalence .................................................................. 1188
Vitiation ........................................................................................................ 1190
Ensnarement of prior art ............................................................................... 1195
Foreseeability, narrow claiming.................................................................... 1197
Disclosure-dedication rule ......................................................................... 1199
Specific exclusion principle ...................................................................... 1201
Totality of circumstances considered............................................................ 1202
Function, way, result test .............................................................................. 1203
Insubstantial differences ............................................................................... 1204
One-to-one correspondence not required; equivalency when limitations,
components combined .................................................................................. 1205
B. Reverse doctrine of equivalents .................................................................... 1206
C. Prosecution history estoppel ......................................................................... 1207
Generally ........................................................................................................... 1208
Argument-based estoppel.................................................................................. 1210
Amendment-based estoppel Festo (S.C.) ....................................................... 1214
Narrowing amendments made for the purpose of patentability create a
rebuttable presumption of surrender ............................................................. 1214
Rebutting the presumption - generally.......................................................... 1220
Foreseeability ................................................................................................ 1222
Tangentialness............................................................................................... 1226
Some other reason for the amendment ...................................................... 1230
VI. WILLFUL INFRINGEMENT .......................................................................... 1231
A. In re Seagate Technology (en banc) ................................................................. 1232
B. Generally Objective recklessness standard .................................................... 1234
C. No affirmative duty of due care ........................................................................ 1241
D. Burden of proof ................................................................................................. 1242
E. Read v. Portec factors (9) for assessing enhanced damages for willful
infringement .............................................................................................................. 1244
F. Knorr-Bremse (en banc) ................................................................................... 1245
G. Advice of counsel defense to willful infringement ........................................... 1247
Advice of counsel defense - generally .................................................................. 1247
14
Competent opinion of counsel .............................................................................. 1249
When opinion of counsel obtained ....................................................................... 1250
Scope of waiver of attorney-client privilege and attorney work-product immunity
Seagate, Echostar ................................................................................................. 1251
Generally ........................................................................................................... 1252
Scope of waiver of attorney-client privilege ..................................................... 1252
Scope of waiver of attorney work-product immunity ....................................... 1253
Opinion counsel vs. litigation (trial) counsel - Seagate .................................... 1254
VII. REMEDIES....................................................................................................... 1256
A. DAMAGES 35 USC 284 ............................................................................ 1256
Damages - generally ............................................................................................. 1258
Damages in patent infringement cases - 35 USC 284, 286 .......................... 1258
Broad damages language of 35 USC 284 ...................................................... 1261
Apportionment of damages ............................................................................... 1262
Damages award for past infringement .............................................................. 1263
Double damages are not recoverable ................................................................ 1264
Liability of joint-tortfeasors .............................................................................. 1265
Successor liability ............................................................................................. 1266
Burden of proving damages, expert testimony ................................................. 1266
Marking/Notice of infringement for recovering damages 35 USC 287(a) . 1269
False marking 35 USC 292 ..................................................................... 1274
Damages for pre-verdict vs. post-verdict sales ................................................. 1280
Remittitur of damages, excessive damages award ............................................ 1281
State law claims ................................................................................................ 1282
Unlawful repair prolonging infringing use .................................................... 1282
Types of Damages................................................................................................. 1282
Lost Profits 35 USC 284 ............................................................................. 1282
Generally ....................................................................................................... 1283
Panduit test but for standard .................................................................. 1284
Patentees entitlement to lost profits ............................................................. 1292
Foreseeability ................................................................................................ 1293
Entire market value rule/convoyed sales ................................................... 1294
Price erosion lost profits ............................................................................... 1296
Other lost profits-related issues .................................................................... 1296
Reasonable Royalty 35 USC 284 ................................................................ 1298
Generally ....................................................................................................... 1301
Georgia-Pacific factors to determine reasonable royalty ............................. 1302
Determining the royalty base ........................................................................ 1313
Determining the royalty rate Georgia-Pacific factors ............................... 1315
Other reasonable royalty-related issues ........................................................ 1322
Enhanced damages 35 USC 284 ................................................................. 1324
Pre-judgment interest ........................................................................................ 1327
Post-judgment interest ...................................................................................... 1329
Costs FRCP 54(d)(1), 28 USC 1919, 1920 ............................................... 1329
Punitive damages .............................................................................................. 1334
15
Equitable remedies ............................................................................................ 1334
B. INJUNCTIONS 35 USC 283, FRCP 65 ..................................................... 1334
Preliminary Injunctions ......................................................................................... 1334
District courts discretion .................................................................................. 1338
Extraordinary relief - four-factor test for PI ..................................................... 1339
Likelihood of success on the merits .............................................................. 1341
Irreparable harm ............................................................................................ 1348
Balance of hardships ..................................................................................... 1354
Public interest................................................................................................ 1355
Other PI-related issues ...................................................................................... 1356
PI opinion has no conclusive bearing on later trial or appeal ....................... 1356
Contempt proceedings .................................................................................. 1357
Grant/denial of PI vs. stay of litigation pending reexamination ................... 1357
Stay of injunction, pending appeal................................................................ 1357
Scope of PI overbroad ................................................................................... 1358
PI against communicating ones patent rights .............................................. 1358
Willful infringement based on post-filing conduct - Seagate .................... 1359
Bond amount ................................................................................................. 1359
Permanent Injunctions .......................................................................................... 1360
eBay v. MercExchange (S.C.) ........................................................................... 1363
Generally an injunction is a drastic and extraordinary remedy ..................... 1366
District courts broad discretion ongoing royalty in lieu of injunction ......... 1366
Four-factor test of eBay (S.C.) .......................................................................... 1371
Irreparable injury .......................................................................................... 1372
Monetary damages inadequate to compensate injury ................................... 1380
Balance of hardships ..................................................................................... 1383
Public interest................................................................................................ 1385
Contempt proceedings ...................................................................................... 1387
Form and scope of injunction FRCP 65(d) .................................................... 1394
Need not practice the patent for an injunction eBay (S.C.) ............................ 1397
C. ATTORNEY FEES 35 USC 285 ................................................................ 1398
Attorney Fees 35 USC 285 ............................................................................. 1398
35 USC 285 attorney fees awarded in exceptional cases ............................ 1402
District courts discretion factors considered inherent power expert
witness fees ....................................................................................................... 1403
Two-step inquiry for determining attorney fees award..................................... 1406
Generally ....................................................................................................... 1406
Prevailing party ......................................................................................... 1407
Exceptional case............................................................................................ 1409
Other attorney fees-related issues ..................................................................... 1439
VIII. PRIORITY DATES 35 USC 119, 120 ...................................................... 1440
A. Generally claiming priority to an earlier application ..................................... 1441
B. Benefit of foreign application ........................................................................... 1442
C. Benefit of provisional application ..................................................................... 1443
D. Section 112, 1, requirements must be satisfied for the benefit of priority ..... 1444
16
E. Incorporation by reference ................................................................................ 1451
F. Priority date estoppel ........................................................................................ 1454
G. National stage application = PCT application and filing date .......................... 1454
H. Priority determination by the PTO .................................................................... 1454
I. Alternative priority dates asserted .................................................................... 1455
IX. DEFENSES TO INFRINGEMENT ................................................................. 1455
A. INVALIDITY GENERALLY ....................................................................... 1455
Presumption of validity 35 USC 282 .............................................................. 1455
Defenses to infringement 35 USC 282............................................................ 1465
Burden of proof never shifts ................................................................................. 1467
Priority date of patent............................................................................................ 1468
Prior art date of a patent reference ........................................................................ 1468
Antedating a prior art reference ............................................................................ 1468
Construe the claims first -- and compare the prior art to the claims as written .... 1470
Claims are construed the same way for infringement and invalidity.................... 1477
Scope and interpretation of prior art reference ..................................................... 1478
Invalidity based on procedural or technical requirements of 35 USC .................. 1480
Means-plus-function claims .................................................................................. 1480
Prior art before/not before the examiner ............................................................... 1481
Admissions in the specification or PH of prior art, or state of the prior art.......... 1487
Witness testimony corroboration required ......................................................... 1488
B. PATENTABLE SUBJECT MATTER 35 USC 101 ................................... 1491
Bilski v. Kappos (S.C.) .......................................................................................... 1508
In re Bilski (en banc)............................................................................................. 1509
Generally ............................................................................................................... 1513
Patentable subject matter 35 USC 101 ........................................................ 1513
Threshold question, claim construction ............................................................ 1514
Patentable subject matter, although broad, has limits ....................................... 1520
Four categories of patentable subject matter in 101 ...................................... 1521
Fundamental principles are not patentable subject matter - preemption .......... 1523
Abstract ideas and other fundamental principles are not patent-eligible ...... 1523
Machine-or-transformation test is not the sole test ....................................... 1536
Mental processes are not patent-eligible ....................................................... 1546
Biotech/Pharma ..................................................................................................... 1547
Business method and software patents ................................................................. 1549
Printed matter ........................................................................................................ 1553
C. ANTICIPATION .............................................................................................. 1554
Generally 35 USC 102(a), 102 (b), and 102(e) ............................................ 1554
Anticipation - standard .......................................................................................... 1554
Generally all claim elements must be disclosed, expressly or inherently, in a
single enabling prior art reference .................................................................... 1554
Disclosure of claim elements arranged as in the claim is required ............... 1564
Lists and limited genuses in prior art reference anticipate ........................... 1566
Additional functions, purposes in prior art reference are not relevant to
anticipation .................................................................................................... 1567
17
Anticipation vs. obviousness ............................................................................ 1568
Interpreting the prior art reference .................................................................... 1568
Accidental/unappreciated prior art ........................................................................ 1568
Biotech/Pharma ..................................................................................................... 1569
Biotech .............................................................................................................. 1569
Pharma .............................................................................................................. 1569
Anticipation by possession ........................................................................... 1569
Genus-species ............................................................................................... 1570
Enantiomers .................................................................................................. 1572
Claim covering several compositions (e.g., ranges) anticipated if the prior art
contains one Titanium Metals ............................................................................ 1572
Derivation 35 USC 102(f) ............................................................................... 1573
Drawings in the prior art ....................................................................................... 1574
Enablement of prior art ......................................................................................... 1574
Generally ........................................................................................................... 1575
Anticipation by prior art vs. enablement of the claimed invention................... 1579
Invention of the prior art need not have been made.......................................... 1580
Presumption of enablement for prior art patent or non-patent publication ....... 1581
Secondary references to show enablement ....................................................... 1582
Incorporation by reference in prior art reference .................................................. 1583
Inherency............................................................................................................... 1585
Inherency in the prior art - generally ................................................................ 1585
Knowledge of inherency not required at time of the prior art .......................... 1587
Necessary result for inherency .......................................................................... 1589
Patentability of a known composition, process................................................. 1591
Unappreciated properties are inherent .............................................................. 1593
Prior knowledge or use by others - 102(a)......................................................... 1593
Printed publication 35 USC 102(a) and 102(b) ........................................ 1593
Generally ........................................................................................................... 1593
Public accessibility is the key ........................................................................ 1594
Authenticity....................................................................................................... 1599
Witness testimony to prove prior publication ................................................... 1599
Public use bar 35 USC 102(b) ..................................................................... 1600
Generally - two-part test ................................................................................... 1600
Experimental use negates public use bar ....................................................... 1606
Other public use bar-related issues ................................................................ 1609
On sale bar 35 USC 102(b).......................................................................... 1609
Generally ........................................................................................................... 1609
Two-part test ..................................................................................................... 1611
Patented invention ..................................................................................... 1612
Commercial sale or offer for sale .............................................................. 1613
Ready for patenting ................................................................................... 1617
Experimentation negates invalidity................................................................... 1619
Method claims on sale? ................................................................................. 1622
Prior invention 35 USC 102(g) ....................................................................... 1624
18
Generally priority of invention ...................................................................... 1624
Burden of proof, production ............................................................................. 1627
Conception and reduction to practice ............................................................... 1628
Abandonment, suppression, concealment ......................................................... 1630
Printed matter ........................................................................................................ 1632
Product-by-process claims .................................................................................... 1633
Validity - generally ........................................................................................... 1633
Purpose of product-by-process claims .............................................................. 1635
Ranges ................................................................................................................... 1636
Teaching away is inapplicable to anticipation .................................................. 1637
That which infringes if later, anticipates if earlier ................................................ 1638
D. OBVIOUSNESS ............................................................................................... 1640
Generally - Obviousness 35 USC 103(a) ........................................................ 1652
General rule of obviousness legal conclusion, based on Graham v. John Deere
(S.C.) factual factors (4) ........................................................................................ 1656
Scope and content of the prior art ..................................................................... 1663
Level of ordinary skill in the art ....................................................................... 1665
Combining prior art/teaching, suggestion, or motivation to combine, modify prior art
............................................................................................................................... 1668
KSR v. Teleflex (S.C.) ........................................................................................ 1668
Two requirements for combining prior art........................................................ 1671
Motivation to combine, modify may be implicit in the prior art ...................... 1673
Generally flexible, expansive nature of obviousness, but reason needed .. 1673
KSR rules of obviousness applied ................................................................. 1687
Expert testimony needed? ............................................................................. 1700
Motivation implicit from the content of the prior art, nature of the problem
addressed, or common knowledge ................................................................ 1701
Avoidance of hindsight - motivation to combine prevents hindsight bias........ 1713
Reasonable expectation of success ................................................................... 1720
Obvious to try when a finite number of identified, predictable solutions in
the prior art .................................................................................................... 1726
Prior art ................................................................................................................. 1736
Analogous art ........................................................................................................ 1737
Teaching away ...................................................................................................... 1742
Patentability not negatived by the manner in which the invention was made .. 1751
Prima facie case of obviousness and rebuttal thereof ........................................... 1753
Unexpected results ............................................................................................ 1756
Ranges ........................................................................................................... 1761
Secondary considerations...................................................................................... 1766
Secondary considerations are always considered ............................................. 1771
Nexus required - generally ................................................................................ 1777
Commercial success .......................................................................................... 1782
Copying ............................................................................................................. 1790
Failure of others ................................................................................................ 1793
Praise by others ................................................................................................. 1794
19
Licensing ........................................................................................................... 1796
Long-felt, but unmet, need ................................................................................ 1797
Skepticism ......................................................................................................... 1798
Unexpected results ............................................................................................ 1800
Other obviousness issues ...................................................................................... 1802
Anticipation is the epitome of obviousness ................................................... 1802
Apparatus teaches obvious methods of using ................................................... 1803
Biotech .............................................................................................................. 1803
Pharma .............................................................................................................. 1804
Obviousness generally .................................................................................. 1804
Purified isomers, stereoisomers from prior art mixtures .............................. 1805
Genus-species ............................................................................................... 1805
Prima facie obviousness of structurally similar compounds, and rebuttal thereof
....................................................................................................................... 1806
Patentability of a prior art composition based on the discovery of a new use or
property ......................................................................................................... 1818
Patentability of combination formulation ..................................................... 1818
FDA submissions .......................................................................................... 1819
In vitro data predictive of in vivo conditions? .............................................. 1820
BPAI ................................................................................................................. 1820
Claim-by-claim basis, dependent claims, broader/narrower claims ................. 1820
103/ 102(g) prior art ..................................................................................... 1821
Enablement of prior art ..................................................................................... 1821
Expert testimony (e.g., expert report) to prove (non)obviousness .................... 1823
Inconsistency between views of different examiners ....................................... 1827
Inherency vs. obviousness ................................................................................ 1827
Inventors concessions of obviousness ............................................................. 1829
Printed matter .................................................................................................... 1829
Product vs. process of making product ............................................................. 1830
Process of making product of process public > 1 year before filing date ...... 1830
Ranges ............................................................................................................... 1831
Simultaneous, independent invention as (secondary) evidence of obviousness 1831
Terminal disclaimer .......................................................................................... 1832
E. INDEFINITENESS........................................................................................... 1832
Definiteness requirement 35 USC 112, second paragraph ............................ 1835
Generally ............................................................................................................... 1836
Claim not amenable to construction or insolubly ambiguous is indefinite ....... 1838
Prior art effect when determining definiteness ................................................. 1846
Claim not indefinite because difficult to construe ............................................ 1848
General principles of claim construction apply ............................................ 1850
Claims with scienter requirement ......................................................................... 1852
Close calls of indefiniteness during litigation favor the patentee ......................... 1852
Lack of antecedent basis ....................................................................................... 1852
Means-plus-function claims - 112, 6 .............................................................. 1853
Methods, tests and standards for measuring a claim feature, words of degree ..... 1867
20
Notice function of claims, functional language, claims covering both apparatus and
method................................................................................................................... 1870
Purpose of the invention considered ..................................................................... 1875
Words cannot be eliminated from a claim to satisfy the definiteness requirement
............................................................................................................................... 1876
Words of approximation and degree, relative terms ............................................. 1876
F. ENABLEMENT ............................................................................................... 1877
Enablement requirement 35 USC 112, first paragraph .................................. 1878
Generally ............................................................................................................... 1879
Biotech/Pharma ..................................................................................................... 1883
Biotech .............................................................................................................. 1883
Biotech/Pharma ................................................................................................. 1884
Pharma .............................................................................................................. 1886
Background section of patent can provide enablement ........................................ 1886
Claiming priority to an earlier application ............................................................ 1886
Commercial embodiment not required ................................................................. 1887
Construe claims first ............................................................................................. 1888
Enablement of claims vs. anticipatory prior art .................................................... 1888
Enablement and written description are separate requirements ............................ 1889
Evidence before the filing date to demonstrate enablement ................................. 1889
Improvement patents ............................................................................................. 1889
Incorporation by reference .................................................................................... 1889
Later-arising technology ....................................................................................... 1890
Nascent technology ........................................................................................... 1890
Undue breadth full scope of the claim not enabled............................................ 1890
Undue experimentation ......................................................................................... 1893
Generally In re Wands factors ....................................................................... 1895
Inventors failed attempts to practice the invention .......................................... 1897
Testimonial evidence regarding undue experimentation .................................. 1898
Expert testimony ........................................................................................... 1899
Utility requirement 35 USC 101 ..................................................................... 1899
G. WRITTEN DESCRIPTION.............................................................................. 1900
Written description requirement 35 USC 112, first paragraph ...................... 1905
Generally ............................................................................................................... 1905
Purpose of the written description requirement ................................................ 1905
Express support not required ............................................................................ 1906
Possession of the invention ............................................................................... 1907
Actual reduction to practice not required for written description ..................... 1913
No particular form of disclosure is required ..................................................... 1914
Original claims are part of the specification ..................................................... 1915
Obvious variants of disclosure is not written description ................................. 1915
Fact-based inquiry assess written description on a case-by-case basis.......... 1916
Negative claim limitation.................................................................................. 1918
Biotech/Pharma ..................................................................................................... 1918
Generally ........................................................................................................... 1918
21
Functional description alone does not satisfy the written description requirement
........................................................................................................................... 1921
Functional description requires a structure-function relationship ................ 1922
Biotech vs. chemical (pharma) inventions ........................................................ 1924
DNA and proteins ............................................................................................. 1924
Deposit of biological material ........................................................................... 1927
Chemical and biological genus (and species) claims ........................................ 1927
PTO Written Description Guidelines ................................................................ 1933
Gentry Gallery, Tronzo, Lizardtech specification too narrow for claim breadth
............................................................................................................................... 1934
Later claimed subject matter In re Ruschig, genus-species; New matter prohibition
under 35 USC 132 .............................................................................................. 1936
New matter prohibition ..................................................................................... 1938
Original claims provide written description support ........................................ 1941
Genus-species ................................................................................................... 1941
Teaching function of the written description quid pro quo ............................... 1942
Nature and scope of the invention determines adequate written description........ 1943
Written description and enablement are separate requirements - Vas-Cath ......... 1944
Drawings ............................................................................................................... 1946
Incorporation by reference .................................................................................... 1946
Expert and inventor testimony .............................................................................. 1947
H. BEST MODE .................................................................................................... 1949
Best mode requirement 35 USC 112, first paragraph .................................... 1949
Generally ............................................................................................................... 1949
Best mode violation measured by the claims ........................................................ 1953
Information that is routine, readily known to a POS in the art is not a best mode
violation ................................................................................................................ 1955
Biotech .................................................................................................................. 1956
I. UTILITY 35 USC 101 ................................................................................ 1956
Utility requirement 35 USC 101 ..................................................................... 1956
Generally ............................................................................................................... 1956
Biotech/Pharma ..................................................................................................... 1957
Biotech .............................................................................................................. 1957
Pharma .............................................................................................................. 1957
Commercial success may support utility of the invention .................................... 1958
J. INOPERABILITY ............................................................................................ 1958
K. INVENTORSHIP ............................................................................................. 1958
Conception ............................................................................................................ 1958
Generally ........................................................................................................... 1959
Biotech .............................................................................................................. 1964
Pharma .............................................................................................................. 1964
Corroboration required.......................................................................................... 1966
Joint inventorship, non-joinder ............................................................................. 1970
Correction of, invalidity of patent for, incorrect inventorship - misjoinder/nonjoinder
35 USC 256 ..................................................................................................... 1977
22
L. DOUBLE PATENTING ................................................................................... 1980
Generally ............................................................................................................... 1980
Same invention-type double patenting .............................................................. 1981
Obviousness-type double patenting ...................................................................... 1981
Generally ........................................................................................................... 1981
Pharma/Chemical .............................................................................................. 1989
Same invention vs. obviousness-type double patenting ................................ 1991
Obviousness vs. obviousness-type double patenting ........................................ 1991
Terminal disclaimers ......................................................................................... 1993
Restriction requirements - 121 shield, safe harbor ............................................ 1995
M. INEQUITABLE CONDUCT........................................................................ 1998
Generally ............................................................................................................... 2003
Pleading requirement FRCP 9(b)....................................................................... 2011
Materiality ............................................................................................................. 2014
Err on side of disclosure ................................................................................... 2014
Materiality standard .......................................................................................... 2015
Exception for affirmative egregious misconduct .............................................. 2024
Categories (3) of materiality, plus examples .................................................... 2026
Misrepresentations, omissions of material fact; and false information,
statements ...................................................................................................... 2026
Failure to disclose material information vs. cumulative information is not
material ......................................................................................................... 2030
Affidavits/declarations ...................................................................................... 2044
District court must decide the level of materiality ............................................ 2048
Prior art search is unnecessary .......................................................................... 2049
Foreign counterparts prior art references, statements .................................... 2049
Intent to deceive .................................................................................................... 2050
Materiality does not presume intent, which must be proven by showing a specific
intent to deceive .............................................................................................. 2050
Intent standard/inference of intent .................................................................... 2055
Inference of intent ......................................................................................... 2059
Gross negligence is not sufficient for inequitable conduct ........................... 2075
Affidavits/declarations ...................................................................................... 2077
Weighing, balancing of materiality and intent ...................................................... 2079
Other inequitable conduct-related issues .............................................................. 2082
Advisory jury on inequitable conduct ............................................................... 2082
Conduct after patent issuance ........................................................................... 2082
Credibility determinations ................................................................................ 2082
Effect of reissue or reexamination on inequitable conduct ............................... 2084
Improper payment of small entity fees ............................................................. 2085
Inequitable conduct applied to other claims, applications ................................ 2086
Inequitable conduct and invalidity are distinct issues....................................... 2087
Inequitable conduct vs. fraud ............................................................................ 2088
Misclaimed priority dates ................................................................................. 2088
Petitions to make special ................................................................................... 2089
23
Terminal disclaimers ......................................................................................... 2089
Unclean hands ................................................................................................... 2090
Withdrawal of patent(s) does not avoid inequitable conduct ............................ 2090
N. ANTITRUST/PATENT MISUSE .................................................................... 2090
Antitrust ................................................................................................................ 2090
Antitrust law generally, settlements .................................................................. 2090
Antitrust claim, counterclaim............................................................................ 2093
Noerr-Pennington immunity, and sham litigation exception ........................ 2094
Market power not presumed by patent ownership ............................................ 2096
Tying arrangements .......................................................................................... 2096
Unreasonable restraint of trade ......................................................................... 2097
Monopolization or attempted monopolization .................................................. 2098
Walker Process claim ....................................................................................... 2100
Patent misuse ........................................................................................................ 2103
Patent misuse - generally .................................................................................. 2103
35 USC 271(d) safe harbor ......................................................................... 2106
Tying arrangements .......................................................................................... 2106
Agreements not to compete .............................................................................. 2109
O. BAD FAITH LITIGATION ............................................................................. 2111
Sanctions FRCP 11 ............................................................................................ 2112
Rule 11 sanctions - generally ............................................................................ 2114
Pre-filing investigation required ....................................................................... 2115
Sanctions - generally ............................................................................................. 2118
P. LITIGATION MISCONDUCT ........................................................................ 2119
Courts possess inherent power to sanction litigation misconduct ..................... 2120
Q. LACHES, EQUITABLE ESTOPPEL, AND WAIVER................................... 2122
Equitable estoppel ................................................................................................. 2122
Laches ................................................................................................................... 2125
Prosecution Laches ............................................................................................... 2130
Waiver relinquishment of a known right ........................................................... 2131
R. CLAIM AND ISSUE PRECLUSIONS ............................................................ 2132
Generally ............................................................................................................... 2132
Claim preclusion (res judicata) ............................................................................. 2133
Defense of claim preclusion - generally ........................................................... 2136
Default judgment .............................................................................................. 2145
Defendant preclusion ........................................................................................ 2146
Dismissal with prejudice ................................................................................... 2146
Exceptions to claim preclusion ......................................................................... 2147
Offensive use of claim preclusion..................................................................... 2148
Suing joint tortfeasors ....................................................................................... 2149
Successive claims of patent infringement ......................................................... 2149
Patent and trademark invalidity claim in a later action..................................... 2152
Issue preclusion (collateral estoppel) .................................................................... 2152
Defensive collateral estoppel Blonder-Tongue (S.C.).................................... 2155
Elements for issue preclusion, and estoppel issues, types ................................ 2157
24
S. ASSIGNOR ESTOPPEL .................................................................................. 2162
T. OTHER DEFENSES ........................................................................................ 2163
Bona fide purchaser defense 35 USC 261....................................................... 2163
Unclean hands doctrine ......................................................................................... 2164
Other infringement defenses ................................................................................. 2164
X. SETTLEMENTS................................................................................................... 2165
A. Settlement agreements/Consent judgments ...................................................... 2165
Generally ............................................................................................................... 2166
Consent judgment ................................................................................................. 2168
Contempt order ..................................................................................................... 2169
Covenant not to sue ............................................................................................... 2170
Covenant not to challenge patent validity............................................................. 2170
Interpretation of settlement agreements ................................................................ 2171
Settlement correspondence exempt from discovery ............................................. 2174
Preclusion .............................................................................................................. 2174
Other issues ........................................................................................................... 2175
B. Arbitration and mediation ................................................................................. 2176
XI. DISTRICT COURT PRACTICE AND PROCEDURE ................................... 2178
A. Patent-related issues .......................................................................................... 2178
Claim interpretation .............................................................................................. 2178
How? ................................................................................................................. 2178
When? ............................................................................................................... 2179
Who? ................................................................................................................. 2180
Infringement .......................................................................................................... 2181
Claim selection.................................................................................................. 2181
Timeliness of asserting infringement theory..................................................... 2182
Fact findings regarding the accused product .................................................... 2182
Invalidity, unenforceability moots infringement .............................................. 2182
Infringement evidence ...................................................................................... 2182
Invalidity ............................................................................................................... 2182
Prior art statement - 35 USC 282 ....................................................................... 2183
B. District court practice and procedure ................................................................ 2183
Local court rules ................................................................................................... 2183
Local court rules - generally ............................................................................. 2183
Local patent rules .............................................................................................. 2184
Generally ....................................................................................................... 2184
Northern District of California (revised in 2008) ......................................... 2184
Pleading FRCP 3-15, 18 .................................................................................... 2185
General rules of pleading FRCP 7-9 .............................................................. 2185
Complaint FRCP 3, 4..................................................................................... 2194
Service of process FRCP 4-6 ......................................................................... 2194
Counterclaims FRCP 13 ................................................................................ 2195
Amendment of pleadings FRCP 15, 16 ......................................................... 2197
Statute of limitations ......................................................................................... 2202
Motions FRCP 7, 12 .......................................................................................... 2202
25
Motion for reconsideration ............................................................................... 2203
Dismissal FRCP 12(b) and (c), 41 ..................................................................... 2203
Transfer of venue - 28 USC 1404(a) and 1631................................................ 2211
Joinder of parties FRCP 19-22, Section 299 ...................................................... 2220
Consolidation and segregation of claims and parties FRCP 21, 42 ................... 2223
Intervention FRCP 24 ........................................................................................ 2223
Magistrate judge FRCP 72-73, 28 USC 636 ................................................... 2225
Forma pauperis 28 USC 1915 ......................................................................... 2225
Removal from state to federal court (and subsequent remand to state court) 28
USC 1446 and 1447 ......................................................................................... 2225
Stay of district court action, e.g., pending PTO action ......................................... 2226
Discovery FRCP 16, 26-37, 45 .......................................................................... 2228
Initial disclosures .............................................................................................. 2228
Protective orders ............................................................................................... 2228
Joint defense agreement .................................................................................... 2230
Interrogatories ................................................................................................... 2230
Admissions........................................................................................................ 2230
Depositions ....................................................................................................... 2231
Compelling discovery ....................................................................................... 2231
Expert testimony, fees ....................................................................................... 2233
Privileged information is exempt from discovery ............................................ 2234
Sanctions for discovery abuses ......................................................................... 2234
Document retention policies ............................................................................. 2237
Spoliation of evidence and documents, and sanctions for same ....................... 2238
Motion for Summary Judgment FRCP 56 ......................................................... 2242
Standard(s) for summary judgment .................................................................. 2248
Burden of proof ................................................................................................. 2251
[G]enuine dispute as to any material fact FRCP 56(a) .............................. 2255
[G]enuine dispute ...................................................................................... 2255
[M]aterial fact ............................................................................................ 2258
Summary judgment procedures FRCP 56(c) and (e) (former FRCP 56(e), i.e.,
that the non-movant must . . . set out specific facts . . . .) ............................. 2259
Affidavits, additional discovery FRCP 56(c)(4) and (d) ........................... 2262
When remand, reversal required ....................................................................... 2271
Summary judgment of infringement/noninfringement ..................................... 2271
Summary judgment of invalidity ...................................................................... 2282
Other summary judgment issues ....................................................................... 2282
Anticipation................................................................................................... 2282
Claim construction ........................................................................................ 2284
Cross motions................................................................................................ 2284
District courts role ....................................................................................... 2285
Enablement ................................................................................................... 2285
Inequitable conduct ....................................................................................... 2286
Inventorship .................................................................................................. 2288
Obviousness .................................................................................................. 2288
26
Written description........................................................................................ 2290
Expert testimony FRCP 26(a)(2), (b)(4), (e)(1) and (2), 37(c)(1); FRE 702-706
............................................................................................................................... 2291
Admissibility of expert testimony Daubert (S.C.), FRE 702 ......................... 2291
Attorney argument is no substitute for expert testimony .................................. 2299
Basis for experts opinion FRE 703 ............................................................... 2300
Expert qualified to testify? ................................................................................ 2301
Patent law expert also as technical expert..................................................... 2302
Expert reports exclusion of expert testimony ................................................ 2303
Expert testimony cannot be conclusory, evasive .............................................. 2307
Expert opinion on ultimate legal conclusion is not required ............................ 2309
Expert testimony must be consistent with the facts .......................................... 2309
Expert testimony unnecessary for simple technology, vs. needed for complex
technology ......................................................................................................... 2310
Expert testimony to prove infringement ........................................................... 2312
Expert testimony to prove invalidity................................................................. 2314
Expert deposition testimony ............................................................................. 2315
Improper expert testimony ................................................................................ 2315
Expert appointed by the district court FRE 706(a) ........................................ 2316
Pretrial FRCP 16, 26(a)(3) ................................................................................ 2317
Pretrial conference, order FRCP 16 ............................................................... 2317
Pretrial disclosures FRCP 26(a)(3) ................................................................ 2317
Pretrial stipulations ........................................................................................... 2317
Sealing court documents ................................................................................... 2318
Trial FRCP 32, 38-53 ........................................................................................ 2318
Evidence ............................................................................................................ 2318
Generally ....................................................................................................... 2318
Motions in limine .......................................................................................... 2321
Witness testimony ......................................................................................... 2323
Jury trial, selection, instructions and verdict FRCP 38-39, 47-49, 51 ............ 2324
Jury trial - generally FRCP 38 ................................................................... 2324
Right to jury trial Seventh Amendment ..................................................... 2325
Jury selection FRCP 47 ............................................................................. 2328
Jury instructions/objections thereto FRCP 51 ........................................... 2328
Jury verdict FRCP 49................................................................................. 2330
Motion for JMOL FRCP 50 (jury), 52(c) (without jury) ................................... 2331
Standard(s) for JMOL ....................................................................................... 2335
FRCP 50(a) ....................................................................................................... 2342
FRCP 50(b) ....................................................................................................... 2346
Motion for new trial FRCP 50, 59(a)-(d) .......................................................... 2348
Judgment FRCP 52, 54-55, 57-62 ..................................................................... 2350
Bench trial FRCP 52(a) ................................................................................. 2350
Entry of judgment FRCP 58 .......................................................................... 2351
Certification of judgment FRCP 54(b) .......................................................... 2351
Amend or add findings, alter or amend judgment FRCP 52(b), 59(e) .......... 2351
27
Relief from judgment FRCP 60 ..................................................................... 2352
Stay enforcement of judgment FRCP 62 ....................................................... 2356
Offer of judgment - FRCP 68 ........................................................................... 2357
Vacatur of judgment (upon settlement) ............................................................ 2357
Motion for attorney fees, costs FRCP 54(d) ...................................................... 2360
XII. STATUTORY INTERPRETATION ................................................................ 2360
A. Plain meaning of statutory language ................................................................. 2363
B. Tools of statutory construction ......................................................................... 2369
Canons of statutory construction .......................................................................... 2370
Legislative history................................................................................................. 2371
C. Other rules of statutory construction................................................................. 2373
XIII. IMMUNITY FROM PATENT SUIT ............................................................... 2374
A. Federal government .......................................................................................... 2374
Jurisdiction ............................................................................................................ 2374
28 USC 1498(a) ................................................................................................. 2375
Waiver of sovereign immunity ............................................................................. 2378
Invention Secrecy Act ........................................................................................... 2378
Taking under the Tucker Act ................................................................................ 2379
Government contractors ........................................................................................ 2379
B. States Eleventh Amendment .......................................................................... 2381
Immunity from patent infringement suits, defending DJ actions - generally ....... 2381
Immunity is waivable ........................................................................................ 2383
State officials .................................................................................................... 2386
C. Foreign government .......................................................................................... 2386
XIV. ATTORNEY-CLIENT PRIVILEGE AND WORK-PRODUCT IMMUNITY 2387
A. Attorney-client privilege vs. work-product immunity ...................................... 2387
B. Waiver of privilege ........................................................................................... 2388
C. Scope of waiver................................................................................................. 2389
XV. STATE AND OTHER FEDERAL LAW CLAIMS ......................................... 2390
A. OTHER FEDERAL LAW CLAIMS ................................................................ 2390
COPYRIGHTS ..................................................................................................... 2390
Standard of review/Choice of law..................................................................... 2390
Copyright infringement ..................................................................................... 2390
Generally ....................................................................................................... 2390
Ownership of copyright ................................................................................ 2393
Access and substantial similarity .................................................................. 2394
Expressions of ideas only are protectable ..................................................... 2396
Licensing/open source copyright licenses ................................................. 2397
Damages 17 USC 504 ............................................................................. 2398
Attorney fees 17 USC 505 ...................................................................... 2399
Other copyright-related issues .......................................................................... 2399
Architectural works ....................................................................................... 2399
Software ........................................................................................................ 2399
Copyright vs. contracts ................................................................................. 2400
DMCA........................................................................................................... 2400
28
LANHAM ACT (TRADEMARKS, TRADE DRESS, UNFAIR COMPETITION,
FALSE ADVERTISING) ..................................................................................... 2400
TRADEMARKS TTAB, District Court, and ITC ......................................... 2401
Generally ....................................................................................................... 2401
TTAB procedure ........................................................................................... 2402
Standard of review/Choice of law................................................................. 2402
Trademark, service mark - defined ............................................................... 2408
CAFC trademark cases ................................................................................. 2410
Trademark registration .................................................................................. 2414
Trademark continuum ................................................................................... 2415
Likelihood of confusion ................................................................................ 2429
Trademark infringement ............................................................................... 2445
Other Trademark Issues ................................................................................ 2450
TRADE DRESS ................................................................................................ 2464
Generally ....................................................................................................... 2464
Trade dress must be distinctive ..................................................................... 2465
Functional trade dress is not protectable ....................................................... 2466
UNFAIR COMPETITION................................................................................ 2468
FALSE ADVERTISING .................................................................................. 2470
STATE PRIVILEGE ............................................................................................ 2472
B. STATE LAW CLAIMS .................................................................................... 2472
Breach of confidential relationship ....................................................................... 2472
Breach of fiduciary duty ....................................................................................... 2472
Breach of contract ................................................................................................. 2473
Constructive trust .................................................................................................. 2476
Fraud ..................................................................................................................... 2476
Fraudulent concealment ........................................................................................ 2477
Fraudulent inducement of contract ....................................................................... 2477
Fraudulent misrepresentation ................................................................................ 2477
Intentional misrepresentation ................................................................................ 2477
Legal malpractice .................................................................................................. 2477
Partnerships ........................................................................................................... 2480
Ownership of patent(s) .......................................................................................... 2480
Tortious interference with prospective business relations (economic advantage) vs.
communicating patent rights ................................................................................. 2481
Tortious interference with contract ....................................................................... 2485
Trade libel ............................................................................................................. 2485
Trade secret misappropriation............................................................................... 2485
Unfair Competition ............................................................................................... 2490
Unfair Trade Act Claim ........................................................................................ 2490
Unjust enrichment ................................................................................................. 2491
C. FEDERAL PREEMPTION .............................................................................. 2491
Federal patent law preempts state law .................................................................. 2491
Patentees right to recover under state law is not preempted ................................ 2493
Types of federal preemption ................................................................................. 2495
29
Ownership or license matters are not preempted .................................................. 2495
Supremecy Clause ................................................................................................. 2495
XVI. PTO PRACTICE AND PROCEDURE ............................................................ 2495
A. Request for information by the examiner ......................................................... 2496
B. Appeal to the BPAI of the patent examiners rejections................................... 2497
C. Section 145 actions ........................................................................................... 2501
D. Continuations/CIPs/Divisionals....................................................................... 2505
E. Patent term adjustment 35 USC 154(b) ...................................................... 2506
F. Maintenance Fees.............................................................................................. 2507
G. Other issues ....................................................................................................... 2509
XVII. CORRECTION OF PATENTS .................................................................... 2509
A. Correction of patents - generally....................................................................... 2509
Certificates of Correction 35 USC 254, 255 ................................................. 2509
Correction by the district court ............................................................................. 2511
B. Reissue and Reexamination .............................................................................. 2513
Reissue .................................................................................................................. 2515
Section 251 remedial in nature - correctable error......................................... 2516
New matter not permitted in reissue application .............................................. 2520
Broadening reissue two year limitation and rule against recapture ............... 2520
Intervening rights .............................................................................................. 2528
Reexamination ...................................................................................................... 2529
Claim construction ............................................................................................ 2529
Burden of proof ................................................................................................. 2529
Substantial new question of patentability ...................................................... 2530
Claims may not be broadened ........................................................................... 2535
Intervening rights .............................................................................................. 2537
Inter partes reexamination................................................................................. 2540
XVIII. INTERFERENCES/PRIOR INVENTION ................................................... 2542
A. Interferences/Prior invention 35 USC 102(g), 135, 146, 291 ................... 2542
Generally 35 USC 135(a)................................................................................ 2543
35 USC 135(b)(1) and (b)(2) One year bar rule ............................................ 2544
Two-way test applied for determining an interference-in-fact ............................. 2546
Burden of proof preponderance of the evidence ................................................ 2546
Construction of the count ...................................................................................... 2547
District court action 35 USC 146 (after BPAI decision)................................. 2547
District court action 35 USC 291 (interference proceeding by district court) 2550
Evidence ................................................................................................................ 2551
Priority of invention .............................................................................................. 2552
Anticipation and Obviousness .............................................................................. 2553
Written description................................................................................................ 2553
Termination of interference once priority determined is not improper ................ 2554
B. Prior invention priority - 35 USC 102(g) .................................................... 2554
Priority .................................................................................................................. 2554
Corroboration ........................................................................................................ 2562
Derivation ............................................................................................................. 2564
30
XIX. INTERNATIONAL TRADE COMMISSION 19 USC 1337..................... 2565
A. Generally ........................................................................................................... 2569
B. Domestic injury requirement ............................................................................ 2569
C. Jurisdiction and standing................................................................................... 2573
D. Infringement and invalidity defenses ................................................................ 2575
Infringement defenses ........................................................................................... 2575
Invalidity defenses ................................................................................................ 2576
E. Remedies general and limited exclusion orders; cease and desist order ....... 2576
F. Enforcement of ITC orders ............................................................................... 2578
G. Corresponding district court action ................................................................... 2579
XX. OWNERSHIP ................................................................................................... 2580
A. In general .......................................................................................................... 2580
Invention presumptively belongs to its creator ..................................................... 2580
Presumption that named inventors are the true inventors ..................................... 2581
Patent ownership is distinct from inventorship ..................................................... 2581
B. Contracts generally ........................................................................................... 2582
C. Assignments and Licenses ................................................................................ 2583
Generally ............................................................................................................... 2583
Assignments .......................................................................................................... 2584
Licenses................................................................................................................. 2590
Shop rights doctrine........................................................................................... 2594
XXI. DESIGN PATENTS ......................................................................................... 2595
A. Generally ........................................................................................................... 2595
B. Ornamental vs. functional 35 USC 171 ...................................................... 2596
C. Infringement and invalidity............................................................................... 2599
Infringement - generally ....................................................................................... 2599
Test for infringement ordinary observer test .................................................. 2604
Invalidity - generally ............................................................................................. 2612
Test for invalidity designer of ordinary skill standard ................................... 2616
XXII. PLANT PATENTS - and Plant Variety Protection Act................................ 2618
A. Plant Patents 35 USC 161-164 .................................................................. 2618
B. Plant Variety Protection Act (PVPA) ............................................................... 2619
31
I. APPELLATE/DISTRICT COURT
JURISDICTION/REVIEW
A. APPELLATE/DISTRICT COURT JURISDICTION
Subject matter jurisdiction - generally
Subject matter jurisdiction general principles
Court must have subject matter jurisdiction
- Subject matter jurisdiction is a threshold

requirement for a courts power to exercise
jurisdiction over a case Dow Jones (Wawrzynski,
9/6/13; Semiconductor Energy Laboratory,
2/11/13)
- CAFC always has jurisdiction over a case to

determine its jurisdiction C.R. Bard
(Wawrzynski, 9/6/13 (n.1))
- A court in the first instance must determine

whether or not it has subject matter jurisdiction,
even sua sponte, i.e., when the issue is not raised
or contested by either party (Wawrzynski, 9/6/13;
Aevoe, 8/29/13 (citing Entegris); Avid
Identification Systems, 4/27/10; Larson, 6/5/09;
Litecubes, 4/28/08 (determining that questions
relating to the extraterritorial reach of the Patent
and Copyright Acts were factual elements of the
claims, and not jurisdictional); Immunocept,
10/15/07; BIO, 8/1/07; Entegris, 6/13/07
(contempt order); Intl Electronic Technology,
1/26/07 (Order))
- Basis for the district courts judgment must

be clear for appellate review a judgment is
reviewable only if it is possible for the
32
appellate court to ascertain the basis for the
judgment challenged on appeal (Jang,
7/15/08 (district courts judgment was
ambiguous as to how claim constructions
affected infringement by the accused
products))
- CAFC has inherent jurisdiction to determine

its jurisdiction over an appeal, addresses
jurisdiction sua sponte (Larson, 6/5/09
(CAFC requested supplemental briefing on
whether the district court properly exercised
federal question jurisdiction); Immunocept,
10/15/07)
- Threshold question of CAFCs appellate

jurisdiction must be considered before
turning to the merits (Aevoe, 8/29/13;
Genetics Institute, 8/23/11 (CAFC had
jurisdiction over appeal of Section 291
action despite expiration of patent after the
district court entered judgment,
distinguishing Albert and patent claim
disclaimer from expiration); Avid
Identification Systems, 4/27/10; Larson,
6/5/09; Crown Packaging, 3/17/09; Hyatt,
12/23/08; Intl Rectifier, 2/11/08)
- CAFC jurisdiction after a settlement

agreement, i.e., whether there exists a live
controversy between the parties the CAFC
must decide on its own (Avid Identification
Systems, 4/27/10 (the CAFC ruling it had
jurisdiction because the challenger remained
free under the agreement to oppose the
appeal on the merits)); See also
Laserfacturing, 9/17/12 (nonprecedential
CAFC had jurisdiction where stipulated
33
waiver between the parties did not resolve
and render moot their infringement dispute
citing Kimberly-Clark for rule that
settlements generally render a case moot,
unless the case as a whole remains alive
because other issues have not become
moot)
- Unasserted, or withdrawn patent claims

(Plantronics, 7/31/13 (n.3: vacating the
district courts invalidity of any unasserted
claims citing Fox Group); Fox Group,
11/28/12 (district court erred in also holding
unasserted claims invalid because lacked
jurisdiction over them where no case or
controversy after the patentee narrowed the
scope of the asserted claims before the court
ruled on the parties SJ motions same as in
Streck and distinguishing Scanner Techs.);
Sandisk, 10/9/12 (no CAFC jurisdiction over
withdrawn patent claims prior to the district
courts final judgment); Streck, 1/10/12;
Scanner Techs., 6/19/08 (district courts
subject matter jurisdiction over the validity
of unasserted claims was based on the
challengers counterclaims))
- Supreme Courts original exclusive jurisdiction

when a state sues another state 28 USC 1251(a)
(U. Utah, 8/19/13 (rejecting argument that the
district court lacked subject matter jurisdiction
where a state university sued the citizens of
another state, rather than the state itself, and the
state was not a real and substantial party in interest
relying on split 2nd Circuit case and
distinguishing Supreme Court cases; see also J.
Moore, dissenting))
34
- Whether state has a core sovereign interest
in the case (U. Utah, 8/19/13 (state was not
an indispensable and real party in interest
because states do not have a core sovereign
interest in inventorship (not sufficiently
grand), since states cannot be inventors; see
also J. Moore, dissenting the dispute is
about ownership of patents between two
states, and Section 1251(a) covers all
controversies between two or more states,
and the state (UMass) was a real party in
interest, and the majority confuses the
Supreme Courts exclusive jurisdiction
under Section 1251(a) with its discretion to
decide a case between states))
Burden is on the party asserting jurisdiction
- Burden - party seeking to exercise jurisdiction in

its favor bears the burden of establishing that such
jurisdiction exists (SafeTCare Mfg., 8/3/07; Voda,
2/1/07)
Federal courts have limited jurisdiction
- Federal courts are not courts of general

jurisdiction, but only have limited jurisdiction
must act within the bounds of Article III of the
Constitution and the statutes enacted by Congress
pursuant thereto; for that reason, every appellate
court has a special obligation to satisfy itself of its
own jurisdiction, as well as that of the lower
courts, regardless of whether the parties are
prepared to concede it Bender (S.C.) (LabCorp,
3/11/10 (because federal courts are courts of
limited jurisdiction, the CAFC does not take
35
jurisdiction over cases simply because they relate
to the res judicata effect of a prior judgment of the
court; see also J. Dyk, dissenting); Larson, 6/5/09;
Crown Packaging, 3/17/09; Ilor, 12/11/08
(CAFCs scope of jurisdiction depended on
whether the district courts judgment could be
construed to dismiss defendants counterclaims or
alternatively include a FRCP 54(b) certification);
SafeTCare Mfg., 8/3/07; BIO, 8/1/07; Voda,
2/1/07; Thompson, 12/8/06; Highway Equipment,
11/21/06); See also Kippen, 8/2/12
(nonprecedential vacating the district courts
entry of judgment on contract claims that were not
plead, ruling that federal courts may not resolve
claims not actually submitted for adjudication (10th
Cir.))
- District courts possess only the power

authorized by the Constitution and statute,
i.e., both Constitutional and statutory basis
are required for a court to have subject
matter jurisdiction (Voda, 2/1/07)
- Eleventh Amendment immunity

defense jurisdictional bar that need
not be raised in the trial court for
appeals court to consider issue
Edelman (S.C.) (Baum R&D,
10/10/07)
- Justiciable claim it must be a real and

substantial controversy admitting of specific
relief through a decree of a conclusive
character, as distinguished from an advisory
opinion Aetna Life Ins. Co. (S.C.)
(Sandisk, 10/9/12 (no controversy and
jurisdiction over patent claims the patentee
withdrew before the district courts final
36
judgment); In re Sones, 12/23/09 (See J.
Newman, dissenting the majority issued an
advisory opinion, because the case was
mooted by the appellants filing of a second
trademark application which resolved the
issue on appeal regarding the first
application); In re Omeprazole, 8/20/08
(district court had the authority and
jurisdiction after patent expiration to reset
the effective approval date of ANDAs under
section 271(e)(4)(A) to reflect the patentees
market exclusivity period))
- Under Article III, courts are not

permitted to resolve issues when it is
unclear that the resolution of the
question will resolve a concrete
controversy between interested parties
Coffman (S.C.) (Jang, 7/15/08
(referring to the risk of rendering an
advisory opinon when unclear as to
how the district courts claim
constructions affected infringement))
CAFCs and district courts arising under

jurisdiction
Generally standards, tests
- 28 USC 1331 and 1338(a) (district court

jurisdiction) 28 USC 1295(a)(1) (CAFC
jurisdiction) the CAFC and district courts have
exclusive jurisdiction to review cases which arise
under the patent laws Christianson v. Colt
(S.C.); under 1295(a)(1), the CAFC has
exclusive jurisdiction over appeals from a final
decision of a district court (see Final Judgment
Rule) if the jurisdiction of the district court was
37
based, in whole or in part, on section 1338
(Wawrzynski, 9/6/13; Forrester, 5/16/13 (district
court lacked jurisdiction over state law business
tort claims based on allegedly false statements
about U.S. patent rights concerning conduct taking
place entirely in Taiwan, and thus the possibility of
inconsistent judgments between state and federal
courts regarding patent scope did not arise in the
case citing Gunn v. Minton (S.C.)); Gunn v.
Minton, 2/20/13 (S.C.) (district court lacked
jurisdiction over state law legal malpractice claim,
where patent law issues were not sufficiently
substantial to create federal jurisdiction); Minkin,
5/4/12 (federal jurisdiction over state law, legal
malpractice claim; see also J. OMalley,
concurring issue needs en banc review);
Landmark Screens, 4/23/12 (federal jurisdiction
over state law fraud claim against patent attorney;
see also J. OMalley, concurring issue needs en
banc review); USPPS, 4/17/12 (federal jurisdiction
over state law claim for fraud and breach of
fiduciary duty against patent attorney; see also J.
OMalley, joined by J. Mayer, concurring
jurisdiction issue needs en banc review; see also J.
Prost, concurring disagreeing with J. OMalley);
Warrior Sports, 1/11/11 (CAFC had jurisdiction to
decide whether the district court improperly
dismissed for lack of Section 1338 jurisdiction);
Clearplay, 4/21/10 (no CAFC jurisdiction where
the case did not arise under the patent laws since
each of the claims in the complaint (relating to a
dispute stemming from the parties patent license
agreement) was based on at least one alternative,
non-patent law theory of liability); HIF Bio,
3/31/10 (CAFC had jurisdiction to decide that the
district court abused its discretion by declining
supplemental jurisdiction and remanding the
complaint to state court, where two causes of
38
action arose under Section 1338) [on remand
from S.C. after reversing the CAFCs 2007
decision; see also 6/14/10 nonprecedential
Order amending portion of opinion]; LabCorp,
3/11/10 (transferring appeal to the Tenth Circuit
where the action was a state law contract dispute
over know-how royalties brought based on
diversity jurisdiction; see also J. Dyk, dissenting
the CAFC had jurisdiction in part because the case
related to the res judicata effect of a prior arising
under CAFC judgment); Davis, 3/2/10
(jurisdiction over legal malpractice claim which
depended on patentability); Larson, 6/5/09
(because the plaintiff lacked standing, the district
court improperly exercised jurisdiction over the
plaintiffs action to correct inventorship under
Section 256); Jacobsen, 8/13/08 (CAFC had
jurisdiction over copyright infringement claim
where claim also was sought for DJ of patent
noninfringement); Litecubes, 4/28/08; Dominant
Semiconductors, 4/23/08; Immunocept, 10/15/07;
BIO, 8/1/07; Entegris, 6/13/07; Intl Electronic
Technology, 1/26/07 (Order)); ALSO, Section
1338(a) provides that the district courts shall have
original and exclusive jurisdiction of any civil
action arising under any Act of Congress
relating to patents, plant variety protection,
copyrights and trademarks (Astrazeneca, 2/9/12
(Section 271(e)(2) creates an artificial act of
infringement by the filing of an ANDA, for which
the district court has jurisdiction -- ruling that once
Congress creates an act of infringement,
jurisdiction in the district courts is proper under
Section 1338(a) - Allergan); LabCorp, 3/11/10;
Litecubes, 4/28/08 (questions relating to the
extraterritorial reach of the Patent and Copyright
Acts were elements of the claims, and not
jurisdictional); Air Measurement Techs., 10/15/07;
39
Immunocept, 10/15/07; BIO, 8/1/07; Thompson,
12/8/06); ALSO, the district court must have had
jurisdiction over at least one claim in the case
under section 1338 (Apotex, 10/27/03); See also
Memorylink, 5/2/11 (Order) (nonprecedential
denying motion to transfer appeal to the Seventh
Circuit where the district court and the CAFC had
jurisdiction over legal malpractice claim based on
underlying inventorship dispute, stating that the
CAFC must look to what the plaintiff would be
required to prove to prevail on the claim for
relief); WARF, 10/24/07 (nonprecedential
holding that the Bayh-Dole Act is outside the
CAFCs section 1295(a) jurisdiction, stating that
mere inclusion in Title 35 does not make a statute
a patent law under which a claim may arise;
petition for rehearing en banc was denied 1/08,
with J. Rader dissenting from the denial, with
whom J. Newman, J. Lourie, and J. Moore joined:
the Bayh-Dole Act, . . . is most certainly a patent
law, providing reasons)
- A final decision, as defined by the

Supreme Court, is a decision issued by the
trial court which ends the litigation on the
merits and leaves nothing for the court to do
but execute the judgment (Crown
Packaging, 3/17/09 (no question that final
judgment document ended the litigation on
the merits); SafeTCare Mfg., 8/3/07;
Entegris, 6/13/07; Intl Electronic
Technology, 1/26/07 (Order)); See Final
Judgment Rule
- District courts proper exercise of

jurisdiction under section 1338(a) the
claim must arise under the federal patent
laws in terms of a well-pleaded complaint
40
(Wawrzynski, 9/6/13; Forrester, 5/16/13
(rejecting possible federal patent law
preemption argument as a basis for federal
jurisdiction, because preemption is a defense
to the plaintiffs suit, which as a defense
does not appear on the face of a well-
pleaded complaint, and thus does not
authorize removal to state court);
Semiconductor Energy Laboratory, 2/11/13;
Minkin, 5/4/12 (federal jurisdiction over
legal malpractice claim; see also J.
OMalley, concurring issue needs en banc
review); Carter, 5/24/10; Clearplay, 4/21/10;
LabCorp, 3/11/10 (Under the well-pleaded
complaint rule, arising under jurisdiction is
determined from the plaintiffs statement of
his or her own claim unaided by anything
alleged in anticipation or avoidance of
defenses which it is thought the defendant
may interpose Christianson (S.C.));
Davis, 3/2/10; Touchcom, 8/3/09
(jurisdiction over a legal malpractice claim
involving patent validity); Larson, 6/5/09
(complaint not expressly pled to correct
inventorship under Section 256 was well-
pleaded as DJ claims under Florida law
relating to inventorship); Excelstor Tech.,
9/16/08; Litecubes, 4/28/08 (holding that
whether the allegedly infringing act
happened in the United States was a factual
element of the claims for patent and
copyright infringement, not a prerequisite
for subject matter jurisdiction); Dominant
Semiconductors, 4/23/08; Air Measurement
Techs., 10/15/07; Immunocept, 10/15/07;
BIO, 8/1/07; Thompson, 12/8/06; Venture
Industries, 8/7/06; Bonzel, 3/2/06;
Medimmune, 10/18/05; Nippon Telephone,
41
7/13/05; Apotex, 10/27/03); See also Lange,
3/27/13 (Order) (nonprecedential -
remanding for the district court to dismiss
attorney malpractice complaint because the
district court lacked jurisdiction over the
malpractice claims in view of Gunn v.
Minton (S.C.)); Byrne, 11/18/11
(nonprecedential addressing federal
jurisdiction over a state legal malpractice
claim requiring determining the patentability
of a hypothetical patent claim) [On 3/22/12,
a petition for rehearing en banc was
denied in a precedential order; Judge
Dyk, with whom Judges Newman and
Lourie joined, concurred in the denial of
the petition, stating: I see no reason to
revisit this courts repeated holdings that
where the outcome of malpractice cases
turns on federal patent law, federal
jurisdiction exists.; Judge OMalley
dissented from the denial in a 28-page
opinion, stating: It is time we stop
exercising jurisdiction over state law
malpractice claims. I dissent from the
courts refusal to consider this matter en
banc so that the case law through which
we have expanded the scope of our
jurisdiction to these purely state law
matters can be reconsidered and
revamped.; the U.S. Supreme Court
remanded Byrne for the CAFCs
consideration in light of the Courts
decision in Gunn v. Minton see below]
[On 10/5/12, the U.S. Supreme Court

granted certiorari in Gunn v. Minton, in
which the petitioner appealed from a case
in Texas state court, and the petitioner
42
questions exclusive federal jurisdiction
over state law malpractice claims; On
2/20/13, a unanimous Supreme Court
held that a malpractice claim against a
patent attorney does not arise under the
patent laws and was properly decided in
state court. The Court reasoned in part
that federal courts are not bound by state
precedents, and that allowing state courts
to resolve attorney malpractice cases
would not undermine the development of
a uniform body of patent law. The Court
thus overruled Air Measurement Techs.,
10/15/07, and Immunocept, 10/15/07, in
which the CAFC held that federal courts
have exclusive jurisdiction to hear patent
malpractice actions]
- Substantial question of patent law -

jurisdiction also extends to claims that
depend on resolution of a substantial
question of patent law based on well-
pleaded complaint (Forrester, 5/16/13 (no
substantial question of patent law under
Gunn v. Minton (S.C.) in state law tort
claims); Semiconductor Energy Laboratory,
2/11/13 (doctrine of assignor estoppel failed
to provide substantial issue of federal law
justifying federal jurisdiction over state law
claims); Minkin, 5/4/12 (state law claim for
legal malpractice); Landmark Screens,
4/23/12 (jurisdiction over state law fraud
claim); USPPS, 4/17/12 (state law claim for
fraud and breach of fiduciary duty against
patent attorney); ABB, 2/17/11 (n.3);
Warrior Sports, 1/11/11 (jurisdiction existed
where state law legal malpractice claim
required the court to resolve the merits of
43
the plaintiffs underlying infringement suit);
Clearplay, 4/21/10; LabCorp, 3/11/10;
Davis, 3/2/10 (one of multiple legal
malpractice claims depended on
patentability under U.S. law); Touchcom,
8/3/09; In re Ciprofloxacin, 10/15/08
(jurisdiction where fraud on the PTO
involved substantial question of patent law);
Excelstor Tech., 9/16/08; Litecubes,
4/28/08; Dominant Semiconductors,
4/23/08; Air Measurement Techs., 10/15/07
(patent infringement question is necessary
element of attorney malpractice claim and
raises substantial, contested question of
patent law intended for resolution in federal
court arising under jurisdiction under
1338); Immunocept, 10/15/07 (claim scope
determination involved in attorney
malpractice claim presented substantial
question of patent law jurisdiction
conferred under 1338); BIO, 8/1/07;
Thompson, 12/8/06; Bonzel, 3/2/06;
Medimmune, 10/18/05; Nippon Telephone,
7/13/05; Apotex, 10/27/03); the CAFC has
jurisdiction when patent law is a necessary
element of a well-pleaded, otherwise non-
patent, claim Christianson v. Colt (S.C.)
(BIO, 8/1/07 (patent law was necessary
element of plaintiffs federal preemption
claim); Thompson, 12/8/06; Parental Guide
of Texas, 4/21/06)
- Christianson (S.C.) two-part test a

federal courts exclusive jurisdiction
under section 1338(a) extends only to
those cases in which a well-pleaded
complaint establishes either 1) that
federal patent law creates the cause of
44
action, or 2) that the plaintiffs right
to relief necessarily depends on
resolution of a substantial question of
federal patent law, in that patent law
is a necessary element of one of the
well-pleaded claims Christianson
(S.C.) (Semiconductor Energy
Laboratory, 2/11/13 (district court
correctly dismissed complaint based
on the doctrine of assignor estoppel,
which satisfied neither of the above
requirements); Minkin, 5/4/12 (legal
malpractice claim); Landmark
Screens, 4/23/12; Warrior Sports,
1/11/11; Carter, 5/24/10 (jurisdiction
where patent law (ethical rules for
patent attorneys in the CFR and
MPEP) was a necessary element in a
malpractice claim, under Christianson
(S.C.)); Clearplay, 4/21/10 (no CAFC
jurisdiction where there was at least
one theory of liability in the
complaint for each of six asserted
state law claims for which it was not
necessary to resolve an issue of
federal patent law, addressing the
alternative, non-patent law theories of
liability for the six state law claims);
LabCorp, 3/11/10; Davis, 3/2/10
(district court had jurisdiction where
patent law was a necessary element of
a claim for legal malpractice which
depended on patentability);
Touchcom, 8/3/09 (district court had
subject matter jurisdiction over state
legal malpractice claim involving
analysis of patent claims and validity,
citing Immunocept) ; Larson, 6/5/09;
45
Excelstor Tech., 9/16/08; Litecubes,
4/28/08; Dominant Semiconductors,
4/23/08 (transfer of appeal from the
Ninth Circuit was appropriate where
patent law was a necessary element of
unfair competition claims based on
the patentees communication of its
patent rights); Air Measurement
Techs., 10/15/07 (patent infringement
is a necessary element of legal
malpractice claim, and thus section
1338 jurisdiction); Immunocept,
10/15/07 (claim drafting error was
necessary element of malpractice
cause of action, and thus there was
section 1338 jurisdiction; also citing
Air Measurement Techs., 10/15/07,
and earlier cases concluding that
patent infringement was a necessary
element of various claims); BIO,
8/1/07; Thompson, 12/8/06); See also
Personalized Media, 8/23/12
(nonprecedential no original patent
jurisdiction over breach of contract
claim); Nolen, 2/1/12 (Order)
(nonprecedential the CAFC lacked
jurisdiction where infringement claim
first required judicial action (recission
of assignment agreements, i.e.,
relating to patent ownership, a state
law issue) to vest title in the party
alleging infringement citing Jim
Arnold); In re Electro-Mechanical
Indus., 12/22/09 (nonprecedential
CAFC had jurisdiction over
bankruptcy estimation where the
underlying claim depended entirely
on patent law)
46
- CAFC limited to an analysis of
the well-pleaded complaint in
determining whether patent law
is a necessary element of the
claims (Wawrzynski, 9/6/13 (a
few references in the complaint
to the plaintiffs patent as
background fell far short of a
well-pleaded complaint of
patent infringement, and
instead raised only state law
claims; the complaint needed
infringement allegations, etc.);
Excelstor Tech., 9/16/08)
- Alternative theories claim supported

by alternative theories in the
complaint may not form the basis for
section 1338 jurisdiction unless patent
law is essential to each of those
theories Christianson (S.C.); well-
pleaded complaint must establish that
the right to relief necessarily depends
on resolution of a substantial question
of patent law, or the district courts
jurisdiction does not arise under
section 1338 (Semiconductor Energy
Laboratory, 2/11/13 (rejecting the
plaintiffs application of the artful
pleading rule where state law claims
were supported by alternative state
law theories that did not necessarily
require resolution of any disputed
substantial question of federal patent
law (assignor estoppel)); Warrior
Sports, 1/11/11; Clearplay, 4/21/10
(each of six state law claims relating
47
to a license agreement between the
parties did not require resolution of a
patent law issue, stating based on
Christianson (S.C.) -- in response to
the appellants argument that all of
the claims in the complaint stemmed
ultimately from a dispute founded on
allegations of patent infringement --
that [i]t is not enough that patent law
issues are in the air. Instead,
resolution of a patent law issue must
be necessary to every theory of relief
under at least one claim in the
plaintiffs complaint.); HIF Bio,
3/31/10 (inventorship determination
was not essential to the resolution of
various state law claim(s)); Davis,
3/2/10 (complaint presented multiple
claims for legal malpractice, rather
than one claim supported by
alternative theories (with one relating
to U.S. patent law and the other
relating to foreign patent law, which
thus did not raise any issue of U.S.
patent law); defining claim in a
complaint); Air Measurement Techs.,
10/15/07; Thompson, 12/8/06)
- State law claim - federalism concerns

of Grable (S.C.) (i.e., the Grable test)
must also be satisfied for a state law
claim, i.e., whether a state-law claim
necessarily raises a stated federal
issue, actually disputed and
substantial, which a federal forum
may entertain without disturbing any
congressionally approved balance of
federal and state judicial
48
responsibilities Grable (S.C.)
(Forrester, 5/16/13; Gunn v. Minton,
2/20/13 (S.C.) (district court lacked
jurisdiction over state law legal
malpractice claim, reasoning that
while such claims may necessarily
raise disputed questions of patent
law, those questions are not
substantial in the relevant sense);
Semiconductor Energy Laboratory,
2/11/13 (affirming dismissal of state
law claims); USPPS, 4/17/12 (J.
OMalley, joined by J. Mayer,
concurring jurisdiction lacking,
based on Grable factors);
Memorylink, 4/11/12 (Order) (J.
OMalley, dissenting from the denial
of en banc review of a prior Rule 36
affirmance); Byrne, 3/22/12 (Order)
(see below); LabCorp, 3/11/10 (state
law claim for breach of contract did
not depend on resolution of an
actually disputed and substantial
question of patent law, where the
patent infringement question was
undisputed and decided in a prior
CAFC appeal; see also J. Dyk,
dissenting); Air Measurement Techs.,
10/15/07; Immunocept, 10/15/07);
See also Byrne, 11/18/11
(nonprecedential addressing Grable
(S.C.) and federalism concerns with
regard to jurisdiction over a state legal
malpractice claim involving the
validity of a hypothetical patent
claim) [On 3/22/12, a petition for
rehearing en banc was denied in a
precedential order; Judge Dyk,
49
with whom Judges Newman and
Lourie joined, concurred in the
denial of the petition; Judge
OMalley dissented from the denial
in a 28-page opinion, arguing
federalism concerns based on
Grable (S.C.)]
- Strong federal interest in

adjudicating patent
infringement claims in federal
court because patents are issued
by a federal agency; federal
judges also have experience in
claim construction and
infringement matters (Air
Measurement Techs., 10/15/07)
- Doctrine of complete
preemption converting state
law claims into federal causes
of action (Clearplay, 4/21/10
(n.1: rejecting argument based
on the doctrine for CAFC
jurisdiction over state law
claims))
Defenses, counterclaims do not arise

under patent law
[***the AIA amended Section 1338 on

9/16/11 to include any claim for relief
under patent law as within a district
courts arising under jurisdiction No
State court shall have jurisdiction over
any claim for relief arising under any act
of Congress relating to patents . . .; also,
50
the AIA version of Section 1295 gives the
CAFC jurisdiction over appeals based on
a civil action in which a party has
asserted a compulsory counterclaim
arising under any Act of Congress
relating to patents.]
- [Old law] Defenses, counterclaims a case

raising a patent law defense, which includes
a claim asserted as a counterclaim, does not,
for that reason alone, arise under patent
law (Wawrzynski, 9/6/13 (the CAFC lacked
jurisdiction over a pre-AIA case in which a
patent counterclaim was filed after the AIA
effective date, and the complaint containing
and aligning only with state law claims
(contract allegations) confirmed that the
plaintiff did not intend to assert patent rights
-- thus transferring appeal to the Third
Circuit); Excelstor Tech., 9/16/08
(complaint failed to meet either prong of the
Christianson test because the asserted claim
of violation of the patent exhaustion doctrine
is a defense to patent infringement and not a
cause of action; patent law also was not a
necessary element of the claims by a patent
licensee, which instead raised state law
claims against the licensor for breach of
contract and fraud); Air Measurement
Techs., 10/15/07; BIO, 8/1/07 (mirroring
rule of Speedco inapplicable to claim to
enjoin enforcement of D.C. statute on
grounds of preemption; CAFCs jurisdiction
was based on plaintiffs well-pleaded
complaints), even if the defense is
anticipated in the complaint, and even if the
parties admit the defense is the only
question at issue in the case Christianson
51
(S.C.) (LabCorp, 3/11/10; Excelstor Tech.,
9/16/08; Air Measurement Techs., 10/15/07;
Thompson, 12/8/06); See also Derosa,
7/13/12 (Order) (nonprecedential -
transferring appeal to the Fourth Circuit, and
noting that the AIA amendment to 28 USC
1295(a)(1), which includes patent
compulsory counterclaims within the
CAFCs jurisdiction, applies only to a civil
action commenced on or after 9/16/11, the
enactment date of the law)
Subject matter jurisdiction vs. decision on

the merits
- Subject matter jurisdiction does not fail

simply because the plaintiff might be unable
to ultimately succeed on the merits; thus, a
failure to prove the allegations in the
complaint requires a decision on the merits,
not a dismissal for lack of subject matter
jurisdiction Bell (U.S.) (Astrazeneca,
2/9/12 (district court erred in dismissing
infringement claim under Section 271(e)(2)
based on lack of jurisdiction, rather than on
the merits, because the district courts
jurisdiction is met once a patentee alleges
that anothers filing of an ANDA infringes
under Section 271(e)(2)); Litecubes, 4/28/08
(whether the allegedly infringing activity
happened within the United States is an
element of the claim for patent infringement
under section 271(a), not a prerequisite for
subject matter jurisdiction))
- Limited and narrow exception to the

Bell rule if the federal claim pled is
52
immaterial and made solely for the
purposes of obtaining jurisdiction or
is wholly insubstantial and
frivolous (Litecubes, 4/28/08)
Well-pleaded complaint rule
- Well-pleaded complaint rule when the

complaint includes any issue exclusively
assigned to the CAFC, the CAFC must then
exercise jurisdiction of all issues in the case;
jurisdiction is determined at the outset of the
litigation and does not change (Wawrzynski,
9/6/13; LabCorp, 3/11/10 (citing rule that
the courts jurisdiction depends on the state
of things at the time of the action brought,
and that after vesting, it cannot be ousted by
subsequent events Keene (S.C.); see also
J. Dyk, dissenting); vs. Vornado (S.C.)
when a patent count is raised in a
counterclaim, the regional circuit has
jurisdiction of the appeal (Medimmune,
10/18/05)
Examples subject matter jurisdiction?
- Breach of contract (e.g., patent

license) claim no subject matter
jurisdiction based on section 1338 (
Clearplay, 4/21/10 (no CAFC
jurisdiction over six state law claims
relating to a patent license
agreement); LabCorp, 3/11/10 (see
also J. Dyk, dissenting); Excelstor
Tech., 9/16/08; Bonzel, 3/2/06); See
also DeRosa, 1/3/13 (Order)
53
(nonprecedential the CAFC lacked
jurisdiction over appeal of action
seeking recission of patent assignment
agreement based on breach, and to
restore ownership rights in the
patent); Personalized Media, 8/23/12
(nonprecedential no original patent
jurisdiction where the issue regarding
license scope did not relate to patents)
- Presence of patent in litigation does

not by itself require resolution of a
substantial question of patent law
(LabCorp, 3/11/10; Nippon
Telephone, 7/13/05)
- Res judicata effect of a prior CAFC

judgment no subject matter
jurisdiction (LabCorp, 3/11/10
(disagreeing with J. Dyk, dissenting,
that the court had jurisdiction because
a suit to enforce or determine the res
judicata effect of a prior judgment
arising under the federal patent laws
is itself a suit that arises under the
federal patent laws))
- State court (e.g., breach of contract)

vs. federal district court jurisdiction
(Excelstor Tech., 9/16/08; Bonzel,
3/2/06)
- Unjust enrichment claim patent law

not necessary element of well-
pleaded unjust enrichment claim
(Thompson, 12/8/06)
54
Declaratory judgment action
- Declaratory judgment action the CAFC

looks not to the DJ complaint, but to the
hypothetical action (well-pleaded complaint)
that the declaratory defendant would have
brought Speedco (ABB, 2/17/11 (same
rule applies when the DJ plaintiffs claim is
a non-federal (state law) claim or defense to
an infringement claim); LabCorp, 3/11/10
(declining CAFC jurisdiction where the DJ
defendants hypothetical claim was for
breach of contract under state law and did
not necessarily raise a patent law issue that
was actually disputed and substantial under
the Grable (S.C.) test))
- Jurisdiction over a DJ action exists

where there is a federal cause of
action (e.g., infringement) but only a
state law defense (ABB, 2/17/11
(making rule even though the
Supreme Court and other Circuits
have not decided the issue))
Transfer of appeal from regional circuit
- Transfer of case from regional circuit to the

CAFC if transfer decision is plausible, the
CAFC has jurisdiction (Parental Guide of
Texas, 4/21/06)
Statutory limitations to jurisdiction
- Critical to distinguish between a statutory

limitation that is truly jurisdictional (e.g., statutes
55
conferring subject matter jurisidiction only for
actions brought by specific plaintiffs, or for
specific amounts of relief) and one that is simply
an element of the claim that must be established on
the merits Arbaugh (S.C.) (Litecubes, 4/28/08
(that infringement must occur within the United
States to violate section 271(a) is an element of
the claim and not a jurisdictional prerequisite;
Arbaugh (S.C.) issued a readily administrable
bright line rule unless Congress clearly states
that a threshold limitation on a statutes scope shall
be jurisdicational, courts should treat the
restriction as non-jurisdictional in character; also
concluding that there is nothing unique about a
statutory limitation relating to the extraterritorial
scope of a statute that would convert what is
otherwise a factual element of the claim to a
restriction on a courts subject matter jurisdiction))
Covenant not to sue
On 1/9/13, the U.S. Supreme Court in Already v. Nike

ruled that a trademark plaintiffs voluntary dismissal of
its infringement suit, together with granting the defendant
a (broad) covenant not to sue, rendered the case moot by
removing the district courts Article III jurisdiction and
barring its consideration of the defendants counterclaim
of trademark invalidity. Justice Kennedy concurred,
joined by Justices Thomas, Alito and Sotomayor, to
emphasize that covenants are not an automatic means of
abandoning a suit to avoid adverse adjudication.
- Covenant not to sue eliminates case or controversy

for patent-related counterclaims, thus depriving the
district court of jurisdiction (Wawrzynski, 9/6/13
(covenant not to sue together with an admission of
noninfringement eliminated case or controversy to
56
support the district courts subsequent judgment of
noninfringement); Already, 1/9/13 (S.C.) (see
above); Dow Jones, 5/28/10 (district court had no
jurisdiction over the patent to render an
anticipation judgment after the patentee granted a
covenant not to sue); Revolution Eyewear, 2/13/09
(covenant not to sue for past infringement which
did not extend to future sales of the same product
sued upon did not divest the district court of
jurisdiction over declaratory counterclaims
applicable to future infringement); Highway
Equipment, 11/21/06); See also Enzo Biochem
(Order), 2/6/09 (nonprecedential leaving for the
district court to decide in the first instance whether
a stipulation not to sue on a patent mooted
counterclaim relating to the patent); See also
Declaratory judgment jurisdiction Covenant not
to sue
- Exception in Hatch-Waxman cases see

Declaratory judgment jurisdiction
Covenant not to sue
- Whether a covenant not to sue will divest

the trial court of jurisdiction depends on
what is covered by the covenant (Already,
1/9/13 (S.C.) (broad covenant not to sue
divested the district court of jurisdiction
over counterclaim of trademark invalidity);
Dow Jones, 5/28/10 (did not matter for
divesting the district court of jurisdiction
that the covenant not to sue did not include
the accused infringers parent company,
since a parent company is not liable for the
acts of its subsidiary); Revolution Eyewear,
2/13/09); See also Cooper Notification,
8/30/13 (nonprecedential district court
retained jurisdiction to dismiss patent claims
57
from suit with prejudice even though the
patentee had withdrawn the claims, based on
the patentees stipulation to dismissal with
prejudice followed by later withdrawing the
stipulation, stating rule that a district court
retains jurisdiction over a patent suit unless
there is a clear, unequivocal statement that
the potential infringer will not be sued
citing SanDisk)
- When the patentee gives a covenant not to

sue the alleged infringer, the district court
retains jurisdiction to determine disposition
of infringement claims under FRCP 41, and
claim for attorney fees under 35 USC 285
(Samsung Electronics, 4/29/08 (district court
retained jurisdiction of accused infringers
claim for attorney fees); Monsanto, 1/25/08
(district court had independent jurisdiction
based on a request for attorneys fees under
Section 285 to hold patents no longer in the
case were unenforceable for IC;
unenforceability of patent(s) automatically
follows holding of IC); Highway
Equipment, 11/21/06); See also Cooper
Notification, 8/30/13 (nonprecedential no
abuse of discretion by the district court in
dismissing patent claims with prejudice,
based on the patentees stipulation to
dismissal and promises to never again assert
the claims, applying same rule citing
Highway Equipment)
Dismissal on jurisdictional grounds
- Dismissal on jurisdictional grounds appropriate?
58
- Degree of intertwinement of jurisdictional
facts and facts underlying the substantive
claim determines the appropriate procedure
for resolving disputed facts (DDB
Technologies, 2/13/08 (dismissal by the
district court on jurisdictional grounds was
appropriate, holding no intertwinement
between jurisdictional issues and
infringement/validity issues, citing the
circuits which look to the degree of
intertwinement between jurisdictional facts
and facts underlying the merits of the cause
of action to determine whether dismissal on
jurisdictional grounds is appropriate or
whether resolution of the jurisdictional
issues must await until summary judgment
proceedings or a trial of the merits; see also
dissent, J. Newman the court improperly
designated various merits issues as
jurisdictional))
Jurisdictional discovery
- Discovery relating to jurisdiction
- Request for discovery on jurisdictional,

standing issues (Abbott, 1/13/12 (properly
denied where the plaintiff lacked standing
based on not owning the patents-in-suit, in
view of unambiguous contract language);
DDB Technologies, 2/13/08 (limited
discovery granted to determine whether the
patents in suit fell within the scope of an
employment agreement))
- Plaintiff must be given an opportunity

for discovery appropriate to the
59
motion to dismiss (DDB
Technologies, 2/13/08 (5th Cir.; where
jurisdictional and merits issues were
intertwined but separable, the district
court abused its discretion in denying
jurisdictional discovery))
Jurisdiction over PTO appeals
- BPAI jurisdiction over final rejections of the

BPAI 28 USC 1295(a)(4)(A) and 35 USC 141
(Loughlin, 7/11/12 (Section 1295(a)(4)
incorporates a finality requirement; the BPAIs
decision on priority was a final, adverse judgment
over which the CAFC had jurisdiction, where the
appellant under Board Rule 127(b) requested an
adverse judgment in an interference); Yorkey I,
4/7/10 (interference); In re Comiskey, 1/13/09 (en
banc); In re Trans Texas Holdings, 8/22/07
(reexamination); In re Kahn, 3/22/06); See also
Fleming, 8/12/13 (nonprecedential dismissing
case against PTO defendants where the plaintiff
never appealed the examiners final rejection to the
BPAI, the CAFC applying rule that exhaustion of
administrative remedies is a jurisdictional
prerequisite to filing a civil lawsuit arising from
the denial of a patent citing Leighton (D.C.
Cir.)); Wong, 7/9/09 (nonprecedential review of
the denial of a petition to revive lies in the U.S.
District Court); Avocent Redmond (Order), 2/6/09
(nonprecedential dismissing appeal for lack of
jurisdiction where the case was stayed pending
reexamination)
- Section 145 actions the CAFC has exclusive

jurisdiction of appeals of 145 actions (i.e.,
actions brought in the District Court for D.C. under
60
35 USC 145) under 28 USC 1295(a)(4)(C)
(Hyatt, 12/23/08; Hyatt, 6/28/07)
- Remand order for further agency

proceedings is generally not a final
judgment that forms the basis for the
CAFCs jurisdiction; however, there is an
exception to the final judgment rule under
Sullivan (S.C.) rule applied judiciously and
specifically only in rare situations where
denying appellate review would likely result
in the permanent loss of the agencys ability
to appeal the lower courts determination
(e.g., when a controlling Q of law) -
Travelstead (Hyatt, 12/23/08 (substantial
risk if appellate review denied that the PTO
would permanently lose its ability to
challenge the district courts interpretation
of section 1.192(c)(7)); Hyatt, 6/28/07
(MPEP rule))
Final Judgment Rule
Generally
- Final Judgment Rule 28 USC 1295(a)(1) 28 USC

1338 (patent cases) mirrors 28 USC 1291; parties may
appeal only a final decision of a district court
judgment must dismiss the entire case; if rule not met, the
CAFC dismisses the appeal for lack of jurisdiction
(Bosch, 6/14/13 (en banc); Sandisk, 10/9/12 (CAFC
lacked jurisdiction over claims the patentee withdrew
before the district courts final judgment); Orenshteyn,
7/26/12 (Order) (district courts order granting sanctions
was not final decision until amount of sanctions decided;
see also J. Newman, dissenting); Falana, 1/23/12 (district
courts exceptional case finding and attorney fees award
under Section 285 were not final decisions and
61
appealable before the amount of fees were quantified
Special Devices); Spread Spectrum, 9/26/11 (no CAFC
jurisdiction where the district courts order staying case
pending the result of another district court case was not a
final appealable order, where exceptions did not apply);
Crown Packaging, 3/17/09 (final judgment where
decision made as to every claim, including counterclaim
in previous order); Ilor, 12/11/08 (dismissing appeal
other than the denial of PI, where the district courts
judgment was construed not to dismiss the entire case,
and thus was not final); PSN Illinois, 5/6/08 (stipulated
judgment and dismissal was a final judgment); Nisus,
8/13/07 (no final decision for nonparty); SafeTCare Mfg.,
8/3/07; Entegris, 6/13/07; Pods, 4/27/07; Walter Kidde,
3/2/07; *Intl Electronic Technology, 1/26/07 (Order);
Enzo Biochem, 7/13/05; Pause Technology, 3/14/05;
Inland Steel, 4/9/04; E-Pass, 8/20/03; Nystrom, 8/8/03);
See also August Tech., 11/18/13 (nonprecedential civil
contempt order is not a final judgment, and thus is not
immediately appealable); PPC, 4/28/11 (nonprecedential
n.2: proper to appeal a final decision of the ITC on a
subset of asserted patents, because need not wait for a
final resolution concerning the other patents Allied);
Ping Yip, 5/28/10 (nonprecedential dismissal of
complaint, but with leave to amend, is not a final
judgment); Kersey, 11/18/09 (nonprecedential
dismissing appeal for lack of jurisdiction where the
district courts denial without prejudice of an application
for leave to file a complaint in forma pauperis was not a
final judgment); Air Turbine Tech., 4/24/09
(nonprecedential despite the separately appealable
denial of attorney fees under FRCP 54 (FRAP 4), there
was no final judgment and CAFC jurisdiction over the
denial of attorney fees under a contract fee provision
until the district court determined the amount of other
fees awarded, stating that [t]o find otherwise would
require Atlas to appeal related issues within a single case
at different times. Such a piecemeal appellate review is
62
inconsistent with this courts limitation of jurisdiction to
final judgments and would undermine judicial
economy); Enzo Biochem (Order), 2/6/09
(nonprecedential); Koninklijke Philips (Order), 2/6/09
(nonprecedential); CSIRO, 10/23/08 (nonprecedential
denying a motion to intervene is a final judgment subject
to appellate review; the CAFC may consider the merits of
the specific underlying reason for which intervention was
sought); Sollami Co., 7/18/08 (nonprecedential
dismissing appeal for lack of jurisdiction where the
district courts order granting stay pending reissue
proceedings was not an appealable final judgment when
the appellant failed to show that the order effectively put
it out of court); See also Subject Matter Jurisdiction
generally
- Finality is a predicate of the CAFCs jurisdiction,

because Art. III of the U.S. Constitution requires
that jurisdiction be premised on a case and
controversy without jurisdiction, courts would
be rendering advisory opinions (*Intl Electronic
Technology, 1/26/07 (Order))
- Federal courts have only limited jurisdiction,

and thus possess only that power authorized
by the Constitution and statute, which
cannot be expanded by judical decree
(SafeTCare Mfg., 8/3/07; BIO, 8/1/07)
- Final judgment is a decision by the district court

that ends the litigation on the merits and leaves
nothing for the court to do but execute the
judgment Parr (S.C.) (Fresenius USA, 7/2/13
(prior judgments were not sufficiently final to
render them immune from the effect of the PTOs
cancellation of the asserted claims during
reexamination, as affirmed by the CAFC on
appeal); Bosch, 6/14/13 (en banc); Spread
63
Spectrum, 9/26/11; Crown Packaging, 3/17/09;
SafeTCare Mfg., 8/3/07; Entegris, 6/13/07); See
also August Tech., 11/18/13 (nonprecedential);
Max Impact, 4/26/13 (Order) (nonprecedential
dismissing appeal as premature where no final
judgment); Pieczenik, 5/3/11 (Order)
(nonprecedential with the exception of certain
interlocutory orders, the CAFC only has
jurisdiction from final decisions of the district
court, citing S.C. rule); Ping Yip, 5/28/10
(nonprecedential applying rule); Randall May,
5/11/10 (nonprecedential CAFC jurisdiction
under 28 USC 1292(c)(2) (breach of contract
claim and infringement finding but no accounting);
Enzo Biochem (Order), 2/6/09 (nonprecedential)
- Decision on the merits is a final decision,

whether or not there remains for
adjudication a request for attorney fees
Budinich (S.C.) (Falana, 1/23/12)
- Exceptional case determination is a

separately appealable judgment (with
separate notice of appeal) which itself
must be final White (S.C.) (Falana,
1/23/12)
- Decision to award attorney fees under

Section 285 is not final and
appealable before the award has been
quantified Special Devices (Falana,
1/23/12)
- Civil (vs. criminal) contempt orders are

interlocutory, not final judgments, and thus
not appealable, even when a fine is assessed
Doyle, Fox (S.C.) (Aevoe, 8/29/13
(contempt order enforcing or interpreting an
64
injunction is generally not appealable until
final judgment, which is particularly so
where no sanction has yet been imposed for
the contempt citing Entegris); Entegris,
6/13/07); See also August Tech., 11/18/13
(nonprecedential compensatory civil
contempt applied (vs. criminal contempt,
which is immediately appealable); citing
Entegris)
- Must be a clear and unequivocal

manifestation by the trial court that the
decision ends the case (Crown Packaging,
3/17/09 (district court clearly intended final
judgment to resolve and dispose of all the
claims and counterclaims in the action))
- Parties must ascertain whether or not an appealed

judgment is final, and the CAFC shall cite counsel
for the failure to do so!! the parties are required
to certify that the judgment being appealed is final;
Fed. Cir. R. 28(a)(5) (and Fed. R. App. P.
28(a)(4)(B)) requires that the jurisdictional
statement include a representation that the
judgment or order appealed from is final or, if not
final, the basis for appealability) (SafeTCare Mfg.,
8/3/07; *Intl Electronic Technology, 1/26/07
(Order))
- Finality of judgments generally (Fresenius USA,

7/2/13 (distinguishing between different concepts
of finality, and their effect on preclusion))
Collateral order doctrine
- Collateral order doctrine narrow exception to the

final judgment rule when claims are immediately
65
appealable permits the appeal of trial court
orders affecting rights that will be irretrievably lost
in the absence of an immediate appeal at a
minimum must satisfy three conditions -
Richardson-Merrell (S.C.) (Apple, 8/23/13 (three
conditions were satisfied for the appeal of order
unsealing confidential information); U. Utah,
8/19/13 (denial of motion to dismiss based on
sovereign immunity of state university); Baum
R&D, 10/10/07 (denial of Eleventh Amendment
(state) immunity; appeal after trial on the merits
was proper); Intel, 7/14/06 (foreign sovereign
immunity); Competitive Techs., 6/30/04); See also
August Tech., 11/18/13 (nonprecedential see
n.4); Air Turbine Tech., 4/24/09 (nonprecedential
denial of costs or attorney fees under FRCP 54 is
collateral to, and separately appealable from, the
merits of an underlying suit FRAP 4; here,
however, the decision on appeal was the
interpretation of a contractual fee provision clause,
and not a Rule 54 motion)
- Denial of claim of immunity is typically

appealable immediately (Intel, 7/14/06)
Denial of summary judgment motion, motion to

dismiss not appealable
- Denial of SJ motion generally non-final and non-

appealable based on the final judgment rule
(Meadwestvaco, 9/26/13 (waiver of indefiniteness
on appeal by failing to raise issue at bench trial
after being denied SJ on issue because of material
fact issues for trial); Plantronics, 7/31/13 (the
CAFC declining to address arguments based on
issues the district court denied on SJ); Function
Media, 2/13/13 (rejecting the patentees appeal of
66
denial of SJ of infringement where
noninfringement was found at trial, applying 5th
Cir. law); LaserDynamics, 8/30/12 (n.5:
distinguishing entry of SJ from denial of SJ for
CAFC jurisdiction); Advanced Fiber, 4/3/12
(denial of SJ of validity not appealable where
requirements for pendent appellate jurisdiction
were not met, and the denial was not challenged as
an alternative basis for affirmance); Classen,
8/31/11 (see also J. Moore, dissenting CAFC
should have affirmed the denial of SJ of
anticipation); Advanced Software Design, 6/2/11
(appellate courts lack jurisdiction because denial of
SJ does not settle or even tentatively decide
anything about the merits of the claim Switz.
Cheese Assn (S.C.)); Comaper, 3/1/10 (infringers
challenge to the district courts denial of SJ was
improper, citing CAFC and 3rd Cir. law)); M.
Eagles Tool Warehouse, 2/27/06 (denial of SJ is
ordinarily not appealable)), BUT, subject to
exception - when the motion involves a purely
legal question and the factual disputes resolved at
trial do not affect the resolution of that legal
question (Revolution Eyewear, 4/29/09 (n.2: denial
of SJ motion for invalidity of claim (based on lack
of WD) was appealable where question of whether
there were fact issues to be tried relating to validity
was waived)); See also Nissim, 12/11/12
(nonprecedential remanding where the district
courts order denying motion for summary
enforcement of settlement agreement did not end
the litigation on the merits and therefore was not
final)
Non-appealable order is merged into subsequent final

judgment
67
- Non-appealable order may be considered to be
merged into a subsequent final judgment (Crown
Packaging, 3/17/09; Invitrogen, 11/18/05)
Stay order generally not appealable
- Stay order generally is not a final appealable order

-- but stay order is appealable if it puts the plaintiff
effectively out of court e.g., permanently or for a
protracted or indefinite period, or would have res
judicata effect (Spread Spectrum, 9/26/11 (order
staying suit against the defendants customers
pending the outcome of suit against the defendant
was not appealable where no exceptions applied));
See also EveryMD, 8/8/12 (Order)
(nonprecedential order staying litigation pending
inter partes reexamination was not appealable)
- Narrow exception where the stay effectively

disposes of the district court action Slip
Track (Spread Spectrum, 9/26/11); See also
EveryMD, 8/8/12 (Order) (nonprecedential)
Pending claims, counterclaims render district court

judgment non-final
- Pending claims and/or counterclaims, or

alternatively, no FRCP 54(b) certification by the
district court, render the district courts judgment
non-final for purposes of appeal (Spread Spectrum,
9/26/11 (stay order was not a final judgment where
did not dispose of claims and counterclaims); Ilor,
12/11/08 (judgment not final where counterclaims
not disposed of and the Rule 54(b) certification
requirements were not met); SafeTCare Mfg.,
8/3/07; *Intl Electronic Technology, 1/26/07
68
(Order)); See also Enzo Biochem (Order), 2/6/09
(nonprecedential); Koninklijke Philips (Order),
2/6/09 (nonprecedential); parties can stipulate that
district court dismiss claim or counterclaim
without prejudice, leaving no issues unresolved
(Lava Trading, 4/19/06 (counterclaims pending,
despite final judgment; see J. Mayer, dissenting);
Pause Technology, 8/16/05; Terlep, 8/16/05; Enzo
Biochem, 7/13/05)
- Affirmative defenses, but no counterclaims

presented - summary judgment of
noninfringement was proper final judgment
when defendant presented only affirmative
defenses and no counterclaims (Boss
Control, 6/8/05)
- District courts statement that the judgment

is final is by itself insufficient to establish
the CAFCs appellate jurisdiction (and the
parties cannot rely on it); for an appealable
judgment, the district court must issue a
judgment that decides or dismisses all
claims and counterclaims for each party
(i.e., a final judgment) or that makes an
express Rule 54(b) determination that there
is no just reason for delay (Ilor, 12/11/08
(district court simply stating in the judgment
that there is no just cause for delay did not
satisfy the requirements for immediate
appeal based on Rule 54(b); cites other
circuit court decisions for this rule);
SafeTCare Mfg., 8/3/07); See also August
Tech., 11/18/13 (nonprecedential district
courts interlocutory order titled Judgment
was not a final appealable order); Enzo
Biochem (Order), 2/6/09 (nonprecedential
district courts clear intention to end the case
69
was not sufficient for final judgment where
no express ruling made regarding pending
invalidity counterclaim)
- Sua sponte dismissal of claims,

counterclaims by the district court
(without notice to and input from the
parties) is improper (Ilor, 12/11/08
(citing 6th Cir. law))
- Discretion to dismiss (without prejudice)

counterclaim(s) when district court finds
noninfringement; mootness (Advanced
Software Design, 6/2/11 (CAFC noting that
the district courts dismissal of invalidity
counterclaims without prejudice after
granting SJ of noninfringement was not
appealed); Inpro II Licensing, 5/11/06;
Liquid Dynamics, 1/23/04)
- District courts dismissal of the action

dismissed the entire case, including the
counterclaims (Ilor, 12/11/08 (district
courts dismissal of the action in the
judgment failed to dismiss the entire case,
distinguishing Walter Kidde and stating that
the context in which the word action is
used cannot be ignored and thus ruling that
the judgment disposed of only the plaintiffs
half of the case, but not the defendants
counterclaims); Walter Kidde, 3/2/07)
- Judgment on certain counterclaims obviated

by judgment on another, to give final
judgment (Invitrogen, 10/5/05)
Final judgment rule is not satisfied by stipulation
70
- Final judgment rule cannot be satisfied by
stipulation, agreement of the parties (Sandisk,
10/9/12 (parties stipulation did not create the right
to appeal the district courts claim construction
rulings with respect to withdrawn claims where
such right otherwise did not exist); Scanner Techs.,
6/19/08; SafeTCare Mfg., 8/3/07; Intl Electronic
Technology, 1/26/07 (Order); Lava Trading,
4/19/06 (final judgment satisfied by stipulation);
Silicon Image, 1/28/05; Competitive Techs.,
6/30/04)
- Every federal appellate court has a special

obligation to satisfy itself of its own
jurisdiction even though the parties are
prepared to concede it Bender (S.C.)
(Sandisk, 10/9/12; Crown Packaging,
3/17/09; SafeTCare Mfg., 8/3/07; *Intl
Electronic Technology, 1/26/07 (Order))
- Absence of an objection by the

appellee is insufficient to vest the
court with subject matter jurisdiction
(SafeTCare Mfg., 8/3/07)
- Stipulation of final judgment - waiver

(Taylor Brands, 12/9/10 (Order) (addressing
waiver on appeal of issues settled on and
agreed to in stipulated final judgment, i.e.,
consent judgment); Toro, 1/20/04)
- Stipulated final judgment does not bar

an appeal of the underlying judgment
where parties consent only to the
form of the (final) judgment, and not
the substance of the judgment i.e.,
no waiver of the right to appeal, vs.
71
stipulated final judgment after a
settlement agreement or voluntary
dismissal (or with respect to collateral
issues not resolved by the district
courts order) waives the right to
appeal, in the absence of expressly
reserving the right Thomsen (S.C.)
(Taylor Brands, 12/9/10 (Order)
(party did not waive right to appeal
where agreed only to the form, and
not the substance, of a stipulated final
judgment))
Stipulation of noninfringement, invalidity based

on the district courts claim construction
- Stipulation of noninfringement, or invalidity

- stipulation filed by the parties asking the
district court to enter an appealable final
judgment of noninfringement (or invalidity)
based on the courts claim construction (3M
Innovative, 8/6/13; Typhoon Touch, 11/4/11
(affirming judgment of noninfringement
after affirming claim construction); Baran,
8/12/10 (stipulation remained effective after
affirming the district courts claim
constructions); Fresenius, 9/10/09
(infringement judgment cannot be altered by
a modified claim construction where the
accused infringer unconditionally stipulated
that the accused device infringed, and then
proceeded to argue invalidity at trial);
Nystrom, 9/8/09 (waiver of DOE
infringement in second action where
patentee stipulated to noninfringement
without reference to equivalents in the first
action must consider whether want to
72
pursue DOE infringement in the event the
district court construes claim terms
narrowly!); Paragon Solutions, 5/22/09
(stipulation made no mention of the facts to
support an alternative basis for affirming the
district courts noninfringement judgment
thus, make sure the stipulation contains all
the facts supporting noninfringement!);
Howmedica, 9/2/08 (the parties identified a
single claim term as dispositive of the
infringement issue, distinguishing Jang); U.
Texas, 7/24/08 (stipulation also based on SJ
of noninfringement); Jang, 7/15/08 (consent
judgment based on the parties stipulation
was remanded for clarification where the
stipulation did not explain why the district
courts claim construction resulted in
noninfringement by the accused products);
Helmsderfer, 6/4/08); See also Aerotel,
7/26/11 (nonprecedential where the parties
stipulate to noninfringement and invalidity
after a claim construction ruling, the CAFC
need only address the district courts
construction of the claims Altiris);
Southern Mills, 5/14/10 (nonprecedential
reversing consent judgment of
noninfringement based on the district courts
narrow construction); Lydall, 9/8/09
(nonprecedential stipulation of
noninfringement under which a decision on
appeal negating either of two appealed
constructions would negate the stipulation);
Cartner, 6/17/09 (nonprecedential final
judgment of invalidity entered after
stipulation that the claims were invalid for
lack of adequate WD support based on the
district courts claim construction); Tuna
Processors, 4/23/09 (nonprecedential
73
construing the scope of a stipulated final
judgment of noninfringement)
- Stipulated judgment of
noninfringement vacated once the
CAFC modifies the district courts
claim construction Howmedica
(Paragon Solutions, 5/22/09)
District court findings are not a final judgment
- Findings by the district court are not a final

decision within the meaning of 28 USC
1295(a)(1) (Nisus, 8/13/07)
District courts holding must form the basis of

appealed judgment
- Holding of the district court on an issue is not

properly before the CAFC on appeal if the holding
did not form the basis of any appealed judgment
(Star Scientific, 8/25/08 (CAFC unable to address
the district courts holding on priority where SJ
motion of anticipation was denied and not
appealed))
Reinstatement of appeal
- Reinstatement of appeal - allowed, if final judgment or

FRCP 54(b) certification by district court (Trading
Techs., 2/25/10 (the CAFCs jurisdiction ripened upon
the district courts entry of final judgment nunc pro
tunc); SafeTCare Mfg., 8/3/07; Inpro II Licensing,
5/11/06; Enzo Biochem, 7/13/05; Pause Technology,
3/14/05)
74
Appeal from the PTO
- Appeal to the CAFC from the PTO need final agency

action to appeal, i.e., an affirmance of an examiners final
rejection by the BPAI (Mikkilineni, 11/9/10
(nonprecedential))
Appeal from the ITC
- ITC order appealable under Section 1337(c)?

(Interdigital, 6/7/13 (interpreting Section 1337(c) and
holding that an ITC order terminating an investigation as
to a respondent in favor of arbitration was an appealable
final determination under Section 1337(c); see also J.
Lourie, dissenting based on the text and legislative
history of Section 1337(c), the CAFC lacked jurisdiction
over the appeal from the ITC order terminating the
investigation for arbitration))
Certification FRCP 54(b)
- Certification FRCP 54(b) (Bayer, 4/16/13 (n.3:

rejecting argument of no CAFC jurisdiction because the
district court had not decided damages, where the district
court granted partial final judgment under Rule 54(b)); In
re Cyclobenzaprine, 4/16/12 (nunc-pro-tunc Rule 54(b)
certificate from the district court moved for after filing
the appeal was sufficient to establish the CAFCs
jurisdiction, although the motion should have been filed
prior to filing the appeal); HTC, 1/30/12 (parties
stipulated to final judgment on SJ of invalidity ruling);
Imation, 11/3/09 (reversing judgment regarding scope of
patent cross-license); Ilor, 12/11/08 (stating the
requirements for a Rule 54(b) certification); Cat Tech.,
5/28/08; Warner-Lambert, 9/21/07; Arminak, 9/12/07
(counterclaims stayed); SafeTCare Mfg., 8/3/07; Intl
Electronic Technology, 1/26/07 (Order); O2 Micro,
75
11/15/06; Lava Trading, 4/19/06; Pause Technology,
3/14/05; Versa, 12/14/04; Apotex, 10/27/03; Nystrom,
8/8/03); See also August Tech., 11/18/13
(nonprecedential no appealable judgment under Rule
54(b)); Max Impact, 4/26/13 (Order) (nonprecedential
dismissing appeal because there was no final judgment
despite the language used in the district courts order
dismissing patent infringement claim, or Rule 54(b)
judgment, and multiple counts and counterclaims
remained pending before the district court); Warsaw
Orthopedic, 8/2/12 (Order) (nonprecedential dismissing
appeal that was based on the district court entering a final
judgment under Rule 54(b), ruling that a Rule 54(b)
judgment (which gives the CAFC jurisdiction over a
claim that is final except for an accounting under 28
USC 1292(c)(2)) is not final where the district court has
not yet determined ongoing royalties, because an ongoing
royalty is not the same as an accounting for
infringement damages); Imagecube, 6/20/11
(nonprecedential Rule 54(b) judgment entered
dismissing all of the patentees claims with prejudice, at
the request of the patentee who waived issues other than
claim construction by stipulating that it could not prove
infringement and thus the case was final with respect to
the defendant); Tyco Healthcare, 1/27/11 (Order)
(nonprecedential denying dismissal of appeal where
there was a final judgment despite pending IC and
antitrust counterclaims, where SJ of invalidity ended
litigation on the merits; two-fold inquiry under Rule
54(b))
- Patentee requested judgment of noninfringement

after district court issued narrow construction
(Computer Docking Station, 3/21/08 (motion for
SJ of noninfringement granted, while motion for
entry of judgment of noninfringement and
certification rejected); MBO Labs, 1/24/07
(summary judgment); MIT, 9/13/06 (stipulation);
76
Inpro II Licensing, 5/11/06 (stipulation); Lava
Trading, 4/19/06 (stipulation); Versa, 12/14/04)
- Stipulation by patentee of noninfringement,

and dismissal without prejudice of invalidity
counterclaim (Inpro II Licensing, 5/11/06)
- Stipulated judgment (of

noninfringement) must identify which
of the many claim construction issues
are dispositive? (Jang, 7/15/08
(consent judgment based on stipulated
judgment was remanded for
clarification where the judgment did
not explain how claim constructions
related to the accused product); MIT,
9/13/06)
- Summary judgment of noninfringement,

with dismissal of invalidity counterclaim
without prejudice (O2 Micro, 11/15/06)
- Pending claim (e.g., counterclaim) cannot be

impliedly dismissed by the district court; claim
must be expressly dismissed via certification under
FRCP 54(b) (Ilor, 12/11/08 (requirements of Rule
54(b) not met for counterclaims); SafeTCare Mfg.,
8/3/07; Lava Trading, 4/19/06 (counterclaims not
dismissed prior to final judgment, but appeal
allowed); Pause Technology, 3/14/05); See also
Allergan, 5/6/13 (Order) (nonprecedential same
as Lakim Indus. the district court had not yet
entered a final judgment regarding infringement of
additional patents, and the CAFC directed the
parties to immediately file a joint request for
certification under Rule 54(b)); Lakim Indus.,
5/3/13 (Order) (nonprecedential dismissing
appeal for lack of jurisdiction where invalidity
77
counterclaim was pending and there was thus no
final judgment, subject to reinstatement after the
district court entered a final judgment or
certification under Rule 54(b), followed by filing
another notice of appeal citing Pause Tech.)
- Bare recitation of the no just reason for

delay standard of Rule 54(b) is not
sufficient, by itself, to properly certify an
issue for immediate appeal; the district court
must set forth its basis for certifying the
judgment (Ilor, 12/11/08 (citing Moores
Federal Practice and 6th and 11th Circuit
cases in ruling that it must be apparent,
either from the district courts order or from
the record itself, that there is a sound reason
to justify departure from the general rule
that all issues decided by the district court
should be resolved in a single appeal of a
final judgment; here, 1) the judgment
neither cited Rule 54(b) nor set forth the
circumstances justifying immediate appeal,
but merely stated that there was no just
cause for delay, and 2) there otherwise was
no reason based on the record justifying
immediate appeal of issues, rather than in
connection with the final judgment))
- Scope of Rule 54(b) judgment whether claim

construction issues were properly before the CAFC
on appeal?; whether the scope of the Rule 54(b)
certification was broad enough to allow arguments
based on certain claim terms on appeal? (Warner-
Lambert, 9/21/07)
Injunctions/Interlocutory Orders
Injunctions
78
- Injunctions 28 USC 1292(a)(1) and (c) confers
jurisdiction on the CAFC to hear appeals from patent-
related orders granting, continuing, modifying, refusing
or dissolving injuctions, or refusing to dissolve or modify
injunctions (Aevoe, 8/29/13; Bosch, 10/13/11; Ilor,
12/11/08 (affirming denial of PI, while dismissing the
remaining claims on appeal based on lack of final
judgment); Procter & Gamble, 12/5/08; Erico Intl,
2/19/08 (PI); Entegris, 6/13/07 (CAFC without
jurisdiction over contempt order); Ormco, 8/30/06;
Cytologix, 9/21/05; Medimmune, 6/1/05); See also
Mikkelsen, 8/16/13 (nonprecedential n.2: reaching the
same result as the 11/2/12 Order below, and adding that
the entry of the injunction order implicitly denied the
pending Rule 60(b) motion, at least as to the injunction
citing 5th and 7th Cir. cases); In re Cyclobenzaprine,
2/14/13 (nonprecedential appeal from a request to
modify a (preliminary) injunction prospectively
appellate review of the grant or denial of prospective
modification is confined to the propriety of the denial of
the motion, and does not extend to the propriety of the
entry of the underlying injunction (rule prevents a party
from circumventing the time bar to appeal from the
underlying injunction); the movant failed to show the
required changed circumstances to warrant
modification); Mikkelsen Graphic Engr, 11/2/12 (Order)
(nonprecedential denying the appellees motion to
dismiss appeal of order granting injunction for lack of
jurisdiction, despite the district court not having ruled yet
on the appellees motions under FRCP 60(b) and 37(b));
Duhn Oil Tool, 1/19/10 (Order) (nonprecedential the
district courts order imposing an affirmative obligation
on the accused infringer was an express injunction, which
was appealable even though the enjoined party
volunteered to halt the allegedly infringing uses, since the
order prevented the enjoined party from changing its
mind before trial); Automated Merchandising Systems,
79
12/16/09 (nonprecedential only entry of PI order
required by Section 1292(a)(1) for appellate jurisdiction)
- 28 USC 1292(a) is narrowly construed, only a

limited exception to the final judgment rule;
litigant must show that interlocutory order might
have serious, perhaps irreparable consequences,
and that the order can be effectually challenged
only by immediate appeal Carson (S.C.) (Bosch,
10/13/11 (above showing need not be made on
appeal of interlocutory order that expressly grants
or denies a permanent injunction Carson
requirements apply only where there is no order
specifically granting or denying injunctive relief,
but rather argued that the appealed order had the
practical effect of granting or denying such relief
Cross Medical Prods.); Procter & Gamble, 12/5/08
(district courts order staying litigation pending
reexamination effectively denied the patentees
motion for PI, and thus satisfied the Carson (S.C.)
requirements); Entegris, 6/13/07); See also Duhn
Oil Tool, 1/19/10 (Order) (nonprecedential
appellant was not required to show serious or
irreparable consequences where the district courts
order was an immediately appealable PI under 28
USC 1292(c)(1))
- Interlocutory order clarifying or interpreting,

rather than modifying or continuing (i.e.,
prolonging or extending) an injunction is not
appealable (Aevoe, 8/29/13 (dismissing
appeal for lack of jurisdiction where the
district courts order appealed from clarified,
rather than modified, a PI applying 9th Cir.
law (whether an order modifies, rather than
clarifies or interprets, an injunction depends
on whether it substantially alters the legal
relations of the parties, which to determine
80
requires reviewing the substance of the
order) citing Entegris); Entegris, 6/13/07);
See also In re Cyclobenzaprine, 2/14/13
(nonprecedential)
- CAFC may have jurisdiction over appeal

where a district courts interlocutory order
effectively amounts to (i.e., has the
practical effect of) modifying, granting,
refusing, dissolving, or continuing an
injunction (Spread Spectrum, 9/26/11
(rejecting argument that stay order
effectively enjoined the plaintiff from suing
the defendants customers, stating: If every
stay qualified as an injunction, all stays
would be immediately appealable under
Section 1292(a)(1)); Procter & Gamble,
12/5/08 (CAFC had jurisdiction where the
district court effectively denied the
patentees motion for PI (without
considering the merits of the four PI factors)
by granting the accused infringers motion
for stay pending reexamination); Entegris,
6/13/07 (contempt order relating to PI
merely interpreted, rather than modified or
continued, injuction, and thus not
appealable)); See also Duhn Oil Tool,
1/19/10 (Order) (nonprecedential
affirmative obligation imposed in the district
courts order was an appealable express
injunction)
- Supreme Court has made clear that a

litigant must show more than that the
order has the practical effect of
granting or refusing an injunction for
an interlocutory order to be
immediately appealable Carson
81
(S.C.) (Spread Spectrum, 9/26/11
(district courts stay order did not
involve an injunction))
- CAFC has jurisdiction of appeal from permanent

injunction, even if no final judgment 28 USC
1295(a)(1) (Ormco, 8/30/06)
Interlocutory orders
- Interlocutory orders - 28 USC 1292(a)(1) appeal from

interlocutory order regarding injunction the CAFCs
appellate jurisdiction pursuant to 28 USC 1292(c)(1)
(Bosch, 10/13/11; Entegris, 6/13/07; Qualcomm,
10/20/06 (arbitration); Cross Medical Prods., 9/30/05)
- Order expressly granting or denying injunction

appealable under section 1292(a)(1); different
from an interlocutory order that has the practical
effect of granting or denying injunction (e.g., order
granting SJ of noninfringement), in which event
apply Carson (S.C.) factors (Bosch, 10/13/11
(interlocutory order expressly denying injunction
appealable); Spread Spectrum, 9/26/11; Procter &
Gamble, 12/5/08 (CAFC had jurisdiction where
the district courts grant of the accused infringers
motion for stay pending reexamination had the
practical effect of denying the patentees motion
for PI without considering the PI factors on the
merits); Cross Medical Prods., 9/30/05); See also
Duhn Oil Tool, 1/19/10 (Order) (nonprecedential
citing Cross Medical Prods.)
- Underlying SJ orders also reviewable because they

are inseparably connected to the merits of the PI
(Cross Medical Prods., 9/30/05)
82
- 28 USC 1292(a)(1) - district court order denying
an injunctive order, i.e., motion to compel
arbitration, appealable under FAA, even if no final
judgment (Microchip Tech., 5/13/04)
- Interlocutory order, judgment appeal thereof 28 USC

1292(b) (district courts order involves a controlling
question of law as to which there is a substantial ground
for difference of opinion and that an immediate appeal
from the order may materially advance the ultimate
termination of the litigation) and (c) (Bosch, 6/14/13 (en
banc) (addressing exception to final judgment rule in
Section 1292(c)(2) see below); Spread Spectrum,
9/26/11; Sky Technologies, 8/20/09; Regents of U. Cal.,
2/28/08; Air Measurement Techs., 10/15/07; Intl
Gamco, 10/15/07; Regents of U. Cal., 2/14/07 (Order);
Voda, 2/1/07 (foreign patent infringement claims); Intel,
7/14/06; Symbol, 9/9/05; Pause Technology, 3/14/05;
Silicon Image, 1/28/05; Nystrom, 8/8/03); See also
Fujitsu, 9/11/13 (Order) (nonprecedential denying
permission to appeal under Section 1292(b) regarding the
issue of whether a foreign parent company patent owner
may recover lost profits damages for its wholly-owned
U.S. subsidiarys lost sales; denied at least because
liability for patent infringement was undecided, and thus
granting the appeal on the lost profits issue would not
resolve any controlling question of law; see also J.
OMalley, dissenting); Bosch, 8/7/12 (Order)
(nonprecedential the CAFC sua sponte granted a
hearing en banc and requested the parties to file
briefs on the following questions: 1) Does 28 USC
1292(c)(2) (which provides that the CAFC shall have
exclusive jurisdiction (2) of an appeal from a
judgment in a civil action for patent infringement
which would otherwise be appealable to the [CAFC]
and is final except for an accounting) confer
jurisdiction on the CAFC to entertain appeals from
patent infringement liability determinations when a
83
trial on damages has not yet occurred?, and 2) Does
28 USC 1292(c)(2) confer jurisdiction on the CAFC
to entertain appeals from patent infringement liability
determinations when willfulness issues are
outstanding and remain undecided?; On 6/14/13, the
en banc CAFC answered that Section 1292(c)(2)
grants the court jurisdiction over appeals where the
district court has exercised its discretion to bifurcate
the issues of damages and willfulness from those of
liability, therefore holding yes for No. 1 (in a 7-2
decision (Judges Rader, Newman, Lourie, Dyk, Prost,
Moore, and Reyna; Judges OMalley and Wallach,
dissenting)) and yes for No. 2 (in a 5-4 decision
(Judges Rader, Newman, Lourie, Dyk, and Prost;
Judges Moore, Reyna, OMalley, and Wallach,
dissenting)), interpreting the term accounting to
include a damages trial and willfulness issues]; Metso
Minerals, 5/3/12 (Order) (nonprecedential appeal from
judgment which was final except for an accounting,
under Section 1292(c)(2)); Kimberly-Clark, 1/10/11
(Order) (nonprecedential granting permissive appeal to
decide discoverability of privileged documents arising
from mediation and arbitration proceedings); Shire
(Order), 2/6/09 (nonprecedential granting permission to
appeal order relating to the preclusive effect of an earlier
litigated claim construction)
- CAFCs jurisdiction applies to, and is limited by,

the order certified to the court, but is not tied to the
particular question formulated by the district court,
and thus the CAFC may consider all issues
discussed within the order Yamaha Motor (S.C.)
(Sky Technologies, 8/20/09)
- Doctrine of pendent jurisdiction at the appellate

level the CAFCs review of properly appealable
interlocutory order (e.g., PI order) also may
include review of otherwise nonappealable orders
84
(Ilor, 12/11/08 (declining to exercise discretion sua
sponte to consider along with the district courts
order denying a PI the district courts decision
granting SJ for noninfringement, where the parties
made no request for the CAFC to exercise such
discretion) consider the extent that review of the
appealable order will involve consideration of
factors relevant to the otherwise nonappealable
order (Procter & Gamble, 12/5/08 (along with
review of the district courts effective denial of the
patentees motion for a PI, the CAFC also had
jurisdiction over the district courts decision to
stay the litigation pending reexamination))
- Denial of a PI and stay order must be

considered together on appeal (Procter &
Gamble, 12/5/08 (citing 9th Cir. law))
- CAFC must exercise its own discretion in deciding

whether it will grant permission to appeal an
interlocutory order certified by a trial court 28
USC 1292(c)(1), 1292(d)(2) (Regents of U.
Cal., 2/28/08; Air Measurement Techs., 10/15/07;
Regents of U. Cal. (Order), 2/14/07); See also
Fujitsu, 9/11/13 (Order) (nonprecedential only
granted under rare circumstances; see also J.
OMalley, dissenting deciding the issues would
allow the parties to determine the value and risks
of the case, and save time and expense, stating that
the courts decision unnecessarily multiplies the
potential costs of patent litigation, despite an
opportunity to help hold them down);
Schwendimann, 4/26/13 (Order) (nonprecedential
CAFC declining to accept interlocutory appeal
regarding assignment and standing issue, based on
the arguments in the motion papers); Kimberly-
Clark, 1/10/11 (Order) (nonprecedential
discovery of privileged documents); Shire (Order),
85
2/6/09 (nonprecedential granting permission to
appeal order relating to preclusive effect of earlier
litigated claim construction); Sky Technologies,
9/10/08 (nonprecedential granting petition to
decide the issue of whether patent ownership was
transferred by operation of law, where the district
court ruled that no written assignment was needed,
for standing)
- Claim construction orders, i.e., where a district

court has decided a claim construction issue and
one party asserts error, are not subject to
interlocutory review (Regents of U. Cal. (Order),
2/14/07)
- Appeal of interlocutory order allowed in

unusual circumstance where consideration
of claim construction issue(s) in conjunction
with already-pending appeals regarding PI
motion would be an efficient use of judicial
resources and would facilitate resolution of
all claim construction disputes, where the
issues are intertwined and where the same
district court has revisited the claim
construction issues already before the court
in the other appeals (Regents of U. Cal.,
2/28/08; Regents of U. Cal. (Order),
2/14/07)
- Denial of a motion to dismiss for lack of subject

matter jurisdiction is generally not subject to
interlocutory review (Intel, 7/14/06 (motion to
dismiss for lack of DJ jurisdiction))
- Interlocutory rulings (e.g., SJ) merge with final

judgment reviewable on appeal (Crown
Packaging, 3/17/09; Invitrogen, 11/18/05)
86
Standing
Generally
- Standing constitutional prerequisite for the

CAFCs and district courts jurisdiction for a
justiciable Article III case or controversy
Vermont Agency (S.C.) (Wiav Solutions, 12/22/10;
Abraxis Bioscience, 11/9/10; Stauffer, 8/31/10
(any person has standing to sue for false marking
under Section 292 on behalf of the government);
Stanford U., 9/30/09 (district court lacked
jurisdiction to address validity of patents)
[affirmed by the U.S. Supreme Court, on 6/6/11,
in Stanford U. v. Roche]; Asymmetrx, 9/18/09;
Larson, 6/5/09 (no constitutional standing to sue
for correction of inventorship under Section 256,
where no ownership or other financial interest in
patents); Samsung Electronics, 4/29/08; Caraco,
4/1/08 (DJ action by Paragraph IV ANDA filer);
Morrow, 9/19/07 (bankruptcy and trust law); BIO,
8/1/07; Pods, 4/27/07; Teva, 3/30/07; Fuji Photo
Film, 1/11/07 (ITC); Propat Intl, 1/4/07; Figueroa,
10/11/06; Sicom Systems, 10/18/05; Schreiber
Foods, 3/22/05; Evident, 2/22/05; Fieldturf, 2/4/04;
Media Technologies, 7/11/03); See also Dalton,
6/13/11 (nonprecedential the case and
controversy restrictions do not apply to matters
before administrative agencies instead, for an
agency such as the PTO, standing is conferred by
statute)
- Article III, 2 of the Constitution confines

federal courts to deciding only cases or
controversies (see Constitutional
standing) - standing to sue or defend is an
aspect of the case-or-controversy
requirement of Article III (Astrazeneca,
87
2/9/12; Wiav Solutions, 12/22/10; Stauffer,
8/31/10; Samsung Electronics, 4/29/08)
- Appellate review - Article III standing

requirement must be met by persons
seeking appellate review, just as it
must be met by persons appearing in
courts of first instance (Samsung
Electronics, 4/29/08 (standing to bring
the appeal was assumed since the
CAFCs Article III jurisdiction could
be determined based on mootness))
- Congress by legislation may expand

standing to the full extent permitted by
Article III, thus permitting litigation by one
who otherwise would be barred; however,
Congress cannot expand standing beyond
the Article III jurisdiction of federal courts
(Teva, 3/30/07)
- Party invoking federal jurisdiction bears the

burden of establishing the elements required
for Article III standing (i.e., injury-in-fact,
causation, and redressability) Lujan (S.C.)
(MHL Tek, 8/10/11; Wiav Solutions,
12/22/10; Stauffer, 8/31/10 (plaintiff in qui
tam suit for false marking under Section 292
satisfied the Lujan (S.C.) requirements for
standing with respect to the governments
interest in enforcing its laws when
disobeyed); Larson, 6/5/09 (addressing
standing to sue to correct inventorship under
Section 256, distinguishing Chou where the
plaintiff, although not having an ownership
interest in the patents, still established the
elements for standing based on a concrete
financial interest in the patents); Caraco,
88
4/1/08 (contains an excellent analysis of the
elements of standing in the context of a
Hatch-Waxman case, referring to the
irreducible constitutional minimum of
standing); Teva, 3/30/07; Fuji Photo Film,
1/11/07 (ITC))
- Parties asserting federal jurisdiction

carry the burden of establishing their
standing under Article III (Stauffer,
8/31/10; Larson, 6/5/09 (plaintiff
failed to establish standing to correct
inventorship under Section 256,
where the plaintiff had no ownership
interest after assigning the patents,
and otherwise had no concrete
financial interest, or claimed no
purely reputational interest, in
correcting inventorship, under Chou,
Jim Arnold); Morrow, 9/19/07; Teva,
3/30/07; Voda, 2/1/07)
- Party bringing the action has the burden of

establishing standing to sue (MHL Tek,
8/10/11; Spine Solutions, 9/9/10; SiRF
Technology, 4/12/10 (alleged co-owner had
the burden of proving a prior assignment to
it by one of the co-inventors); Tyco,
12/7/09; Larson, 6/5/09; Teva, 3/30/07;
Sicom Systems, 10/18/05)
- Standing doctrine is intended to

require that the plaintiff is a proper
person to bring the suit; it does not
require that the plaintiff properly
allege all of the elements of his claim
standing requires a claim to an
89
injury of a legally cognizable right
(Stauffer, 8/31/10)
- Organizations may sue to redress its

members injuries, even without a
showing of injury to the association
itself United Food (S.C.) (BIO,
8/1/07)
- Plaintiff suing for patent infringement

must demonstrate that it held
enforceable title at the inception of
the lawsuit Paradise Creations
(Abraxis Bioscience, 11/9/10; Tyco,
12/7/09 (affirming the district courts
dismissal without prejudice for lack of
standing, where proof of ownership of
the asserted patents depended on the
correct interpretation of a contract and
information missing from the
contract; see also J. Newman,
dissenting the majority adopted a
new theory for excluding the patents
in suit from transfer to the plaintiff
under the contract))
- Standing is threshold jurisdictional issue in

any federal action must be present at time
the suit is brought, and can be raised at any
time (Abraxis Bioscience, 11/9/10; Stanford
U., 9/30/09 (questions of standing can be
raised at any time and are not foreclosed by,
or subject to, statutes of limitation -
Pandrol; dismissing case where the
defendant asserted ownership interest in
patent as a bar to the plaintiffs standing)
[affirmed by the U.S. Supreme Court, on
6/6/11, in Stanford U. v. Roche]; Larson,
90
6/5/09; Aspex Eyewear, 1/10/06; Sicom
Systems, 10/18/05; Fieldturf, 2/4/04)
- Because Article III standing is

jurisdictional, the CAFC must
consider the issue sua sponte even if
not raised by the parties, i.e., issue not
waived, and even though the district
court passed over it without comment
(Spine Solutions, 9/9/10 (standing is
jurisdictional and not subject to
waiver Pandrol); King, 8/2/10;
Asymmetrx, 9/18/09 (CAFC vacated
judgment on the merits after ruling
sua sponte that an exclusive licensee
lacked standing to sue without joining
the patent owner); Larson, 6/5/09
(CAFC asked for supplemental
briefing on whether the district court
had federal question jurisdiction
under Section 1338(a)); Fuji Photo
Film, 1/11/07 (ITC))
- General rule, but not absolute the

plaintiff must have initial standing
and continue to have a personal stake
in the outcome of the suit (Schreiber
Foods, 3/22/05)
- No retroactive standing (Abraxis

Bioscience, 11/9/10 (futile attempt to
correct critical error in title by nunc
pro tunc assignment; see also J.
Newman, dissenting retroactive
effect of agreement was proper under
New York state law) [petition for
rehearing en banc was denied on
3/14/11; J. Gajarsa, with whom J.
91
Linn and J. Dyk joined, concurred
in the denial of the petition,
disagreeing with the dissent that the
majority opinion created a federal
common law that displaced state
law in the area of patent
assignments . . . the majority
followed CAFC law in determining
that the plaintiff had no standing
under Article III to sue because it
did not own the patents at the time
of filing the suit . . . Abraxis did not
possess a written assignment of the
patents, as required under Section
261, from the owner thereof at the
time suit was filed . . . the dissents
position would apply state law to
effectively preempt federal law . . .
Notwithstanding New York law, it
is not possible to transfer an
interest in a patent unless one owns
the patents at the time of the
transfer.; J. OMalley, with whom
J. Newman joined, dissented from
the denial of the petition, opining
that the panel majoritys creation of
federal common law to govern
assignments of existing patents
conflicts not only with CAFC law,
but also Supreme Court law
restricting judicial preemption of
state law -- unless there exists a
significant conflict between state
law and some federal policy or
interest; DDB Techs. (holding that
federal law applied to interpreting
assignment agreements to future
inventions for purposes of deciding
92
standing) was not intended to create
a broad exception to encompass
assignments of existing (as opposed
to future) patents]; Walter Kidde,
3/2/07)
- Nunc pro tunc assignment

executed after filing of a
lawsuit cannot retroactively
cure standing that was deficient
at the time of filing - Enzo
(Abraxis Bioscience, 11/9/10
(n.4))
- Narrow exception a written

assignment expressly granting a
party the right to sue for past
infringement occurring before it
acquired legal title Moore
(S.C.) (Abraxis Bioscience,
11/9/10)
- Standing must be decided before

voluntary dismissal motion (Walter
Kidde, 3/2/07)
- Where standing and jurisdiction of a

trial court are lacking, an appellate
court may vacate a decision that was
rendered on the merits or, in rare
instances, order joinder of a necessary
party at the appellate level (MHL Tek,
8/10/11 (vacating SJ of
noninfringement where no standing to
sue); Stanford U., 9/30/09 (vacating
judgment of invalidity for
obviousness where no standing)
[affirmed by the U.S. Supreme
93
Court, on 6/6/11, in Stanford U. v.
Roche]; Asymmetrx, 9/18/09
(vacating judgment where neither
party argued on appeal that the patent
owner should be joined at the
appellate stage))
- Standing before an administrative agency,

e.g., PTO, is conferred by statute (Dalton,
6/13/11 (nonprecedential standing to
oppose trademark registration conferred by
Section 13 of the Lanham Act)
Constitutional vs. prudential standing
- Constitutional (Art. III) vs. prudential standing;

constitutional, need an injury in fact caused by the
defendant vs. prudential standing relates to
whether policy concerns are met (Wiav Solutions,
12/22/10; Morrow, 9/19/07; Figueroa, 10/11/06;
Evident, 2/22/05)
- Legal injury for constitutional standing the

touchstone of constitutional standing in a
patent infringement suit is whether a party
can establish that it has an exclusionary right
in a patent that, if violated by another, would
cause the party holding the exclusionary
right to suffer legal injury (Wiav Solutions,
12/22/10)
Constitutional standing
- Constitutional standing (Art. III requires

an actual, ongoing case or controversy, in
the absence of which, a court lacks
94
jurisdiction) (Astrazeneca, 2/9/12 (alleged
future FDA labeling amendments were
speculative and unripe for adjudication);
Wiav Solutions, 12/22/10; Stauffer, 8/31/10;
Samsung Electronics, 4/29/08 (patentees
offer to pay in full the accused infringers
attorney fees mooted the district courts case
and jurisdiction over the accused infringers
request for attorney fees; CAFC thus
vacated the district courts impermissible
advisory opinion as having been issued
without jurisdiction)) to establish
standing, a plaintiff must show that he
suffered an injury-in-fact that is both fairly
traceable to the challenged conduct of the
defendant and likely redressable by a
favorable judicial decision Lujan (S.C.)
(MHL Tek, 8/10/11; Wiav Solutions,
12/22/10; Stauffer, 8/31/10; Larson, 6/5/09;
Caraco, 4/1/08 (Paragraph IV ANDA filer
had standing to bring DJ action, despite
covenant not to sue); Morrow, 9/19/07; BIO,
8/1/07; Teva, 3/30/07; Fuji Photo Film,
1/11/07 (ITC); Figueroa, 10/11/06)
- Injury must be 1) concrete and

particularized, and 2) actual or
imminent, not conjectural or
hypothetical; injury need not have
been already manifested Lujan,
Babbitt (S.C.) (Stauffer, 8/31/10;
Caraco, 4/1/08; BIO, 8/1/07
(enjoining enforcement of statute));
See also August Tech., 11/18/13
(nonprecedential)
- Right to exclude is the legal

interest created by the patent
95
statutes; constitutional injury in
fact occurs when a party
performs at least one prohibited
action with respect to the
patented invention that violates
these exclusionary rights; the
party holding the exclusionary
rights to the patent (e.g., the
patent owner) suffers legal
injury in fact under the statute
(MHL Tek, 8/10/11; Wiav
Solutions, 12/22/10 (exclusive
licensee had standing to sue
where had exclusivity with
respect to the defendants);
Morrow, 9/19/07 (liquidation
plan separated right to sue for
infringement from right to
exclude trustee thus lacked
standing to sue even as a co-
plaintiff))
- Ripeness of claim for the

district courts jurisdiction
(Astrazeneca, 2/9/12 (district
court properly dismissed claim
for infringement under Section
271(e)(2) of method of use
patents, where alleged future
labeling amendments to be
required by the FDA for the
defendant generics to add
indications covered by the
patents were speculative and
unripe for adjudication citing
Texas v. U.S. (S.C.) (A claim
is not ripe for adjudication if it
rests on contingent future
96
events that may not occur as
anticipated, or indeed may not
occur at all.)))
- Only when a party (who lacks

all substantial rights) holds the
exclusionary rights to the patent
may the party join the legal title
owner in a suit to enforce
patent rights (Morrow, 9/19/07)
- Right to sue clause does not

confer standing; need
proprietary interest in the
patent, exclusionary rights to
suffer legal injury (Morrow,
9/19/07)
- Three general categories of plaintiffs

encountered when analyzing the
constitutional standing issue in patent
infringement cases: 1) those that can
sue in their own name alone (i.e.,
plaintiffs that hold all legal rights to
the patent as the patentee or assignee
(when patentee transfers to the
assignee all substantial rights to the
patent, becomes the effective
patentee) of all patent rights the
entire bundle of sticks); 2) those that
can sue as long as the patent owner is
joined in the suit (e.g., exclusive
licensee); and 3) those that cannot
even participate as a party to an
infringement suit (e.g., nonexclusive
licensee, lacks injury in fact and thus
constitutional standing) (Morrow,
9/19/07 (trustee in bankruptcy fell
97
into third category, lacked
exclusionary rights, injury in fact and
thus standing; See also dissent, J.
Prost, concluding that the trustee fell
into the second category, and had
sufficient rights to support co-plaintiff
standing); See also Aspex Eyewear,
8/1/08 (nonprecedential SJ of no
standing by exclusive licensee was
properly denied where evidence of
oral or implied exclusive license;
addressing the writing requirements
for exclusive licenses 35 USC
261); See also discussion below
- Only a patent owner or an

exclusive licensee can have
constitutional standing to bring
an infringement suit; a non-
exclusive licensee does not
(Spine Solutions, 9/9/10 (citing
Mars); Mars, 6/2/08 (patent
owners wholly owned
subsidiary was a non-exclusive
licensee and lacked standing))
Prudential standing joining (co)owner
- Prudential standing
- Patent owner should be joined in an

infringement suit brought by an
exclusive licensee (or more generally,
one who holds the exclusionary rights
to a patent but lacks all substantial
rights) avoids potential for multiple
litigations and multiple liabilities and
98
recoveries against the same infringer;
joinder also ensures that the
patentees rights are protected in a
suit brought by the licensee (A123
Systems, 11/10/10 (accused infringer
must join both the exclusive licensee
and the patentee in a DJ action
because the patentee is a necessary
party); Mann Foundation, 5/14/10
(both the patent owner and exclusive
licensee generally must be joined as
parties to the litigation brought by
either of them alone Aspex
Eyewear); Asymmetrx, 9/18/09
(exclusive licensee lacked all
substantial rights for standing without
the patent owner where the patent
owner retained substantial rights
under the patents (when the retained
rights were considered as a whole));
Intl Gamco, 10/15/07; Schwarz
Pharma, 10/12/07; IPVenture,
9/28/07; Morrow, 9/19/07; Propat
Intl, 1/4/07; Evident, 2/22/05)
- Joining the legal title holder

only satisfies prudential
standing requirements, but does
not cure constitutional standing
deficiencies (Morrow, 9/19/07)
- Patent owner is a necessary

party under FRCP 19, except
when the patentee is the
infringer or prudential concerns
are not at play in case
(Asymmetrx, 9/18/09
(addressing policy reasons for
99
joining the patent owner under
Rule 19); Morrow, 9/19/07;
Breckenridge Pharmaceutical,
4/7/06); See also In re KGK
Synergize, 10/9/09 (Order)
(nonprecedential denying
petition for writ of mandamus
regarding whether the district
court properly denied a motion
to dismiss a DJ action where
the patent co-owner United
States was not joined as a co-
defendant because of sovereign
immunity))
- Patent owner refuses or is

unable to join an exclusive
licensee as co-plaintiff the
licensee may make the patent
owner a party defendant by
process (or an involuntary
plaintiff); however, the patent
owner must first be given the
opportunity to join the
infringement action
(Asymmetrx, 9/18/09)
- All (legal) co-owners of a patent

normally must join as plaintiffs to
establish standing Crown Die &
Tool (S.C.) (Enovsys, 8/3/10 (ex-wife
of co-inventor ruled not a co-owner of
patents, pursuant to California divorce
decree); SiRF Technology, 4/12/10
(co-owner acting alone lacks standing
DDB Techs. the rule also applies
to ITC investigations); Stanford U.,
9/30/09 (Stanford lacked standing to
100
sue where the defendant Roche was
determined to be a co-owner of the
patents based on an earlier assignment
of rights from one of the co-inventors)
Roche]; U. of Pittsburgh, 6/9/09
(improper to dismiss with prejudice
for failing to timely join a necessary
party under FRCP 19(b), including
where it was a complex question . . .
present[ing] novel facts whether the
alleged co-owner was a necessary
party); Nartron, 3/5/09 (reversing SJ
of dismissal based on alleged co-
inventor not being joined as a
plaintiff); Lucent Techs., 9/25/08;
DDB Technologies, 2/13/08; Digeo,
11/1/07 (issue of defective title before
district court); IPVenture, 9/28/07;
Israel Bio-Engineering Project,
1/29/07; Israel Bio-Engineering
Project, 3/15/05); See also Gellman,
11/30/11 (nonprecedential lack of
standing without other co-owner);
Tavory, 10/27/08 (nonprecedential
also must be a patent co-owner to be
entitled to a portion of a damages
award on the patent)
Right to sue for infringement, and seek damages 35

USC 281, 100(d)
- Party suing for patent infringement has the burden

to show necessary ownership rights to support
standing to sue (Abbott, 1/13/12); See also Nolen,
2/1/12 (Order) (nonprecedential the CAFC lack
101
jurisdiction where the plaintiffs failed to make any
plausible allegations of ownership of the patents at
issue that did not first require judicial intervention)
- Patent statutes give rise to the right to sue others

for patent infringement, as well as define the
nature and source of the infringement claim and
determine the party that is entitled to judicial relief
[a] patentee shall have remedy by civil action
for infringement of his patent 35 USC 281;
patentee also includes successors in (legal) title
to the patentee, or exclusive licensee 35 USC
100(d) (effective patentee) (Abbott, 1/13/12
(affirming no standing to sue where the inventor
did not assign the invention in a consulting
agreement to the plaintiffs predecessor, despite
incorporation of earlier employment agreement;
see also J. Bryson, dissenting consulting
agreement may have incorporated assignment
covenant from the earlier agreement, and therefore
would have remanded for jurisdictional discovery
and consideration of extrinsic evidence of the
parties intent to incorporate the assignment
provision from the earlier agreement into the later
consulting agreement); Wiav Solutions, 12/22/10
(exclusive licensee had standing to sue where held
exclusionary rights in field of use relative to the
defendants); Tri-Star Electronics, 9/9/10 (affirming
the denial of motion to dismiss for lack of standing
where the mutual intent of the parties to the
assignment was to assign the patent rights to the
inventors employer, who was the successor of the
non-existent assignee); Enovsys, 8/3/10;
Asymmetrx, 9/18/09; Morrow, 9/19/07; Mymail,
2/20/07; Israel Bio-Engineering Project, 1/29/07;
Propat Intl, 1/4/07; Bicon, 3/20/06; Aspex
Eyewear, 1/10/06; Sicom Systems, 10/18/05;
Fieldturf, 2/4/04)
102
- Patent owner may assign or transfer
ownership interests in the patent as personal
property 35 USC 261 (Abbott, 1/13/12;
Akazawa, 3/31/08 (remanded to determine
whether a written assignment was needed
under Japanese intestacy law for transfer of
ownership in patent, and for standing to
sue); Intl Gamco, 10/15/07; Israel Bio-
Engineering Project, 1/29/07); See also Dow
Chemical, 1/24/12 (nonprecedential
patentee had standing to sue based on
interpretation of contract that did not
transfer the asserted patents to the patentees
holding company; see also J. Reyna,
dissenting patentee lacked standing under
the contract after transferring ownership in
the asserted patents)
- Patentee or his assignee may grant

and convey to another: 1) the whole
patent, 2) an undivided part or share
of that exclusive right, or 3) the
exclusive right under the patent within
and throughout a specified part of the
U.S.; a transfer of less does not
convey title and the right to sue, but
merely a license Pope (S.C.); #1 and
#3, assignee may sue in its name
alone; vs. #2, assignee may sue
jointly with the assignor
Waterman (S.C.) (MHL Tek, 8/10/11
(later assignment of patent rights was
not part of carve out provision of
earlier assignment agreement); A123
Systems, 11/10/10 (exclusive field of
use licensee was required to join
patent owner); Asymmetrx, 9/18/09
103
(discussing Waterman (S.C.)); Lucent
Techs., 9/25/08 (lack of standing to
sue in absence of patent co-owner);
Intl Gamco, 10/15/07; Morrow,
9/19/07 (n.8); Israel Bio-Engineering
Project, 1/29/07)
- Patent owner cannot split up its

ownership rights in a patent and
assign different claims to
different parties Pope (S.C.),
but an inventor of one or more
claims of the patent is an owner
of all claims of the patent
Israel Bio-Engineering (Lucent
Techs., 9/25/08 (to avoid
standing problem, advising the
filing of separate applications
on the inventions of different
inventors/owners, rather than
including all inventions in a
single application))
- One co-owner, possessing an

undivided part of the entire patent,
must join all other co-owners to
establish standing (SiRF Technology,
4/12/10; Stanford U., 9/30/09
Roche]; U. of Pittsburgh, 6/9/09;
Nartron, 3/5/09 (reversing dismissal
based on a failure to join an alleged
co-inventor as a plaintiff); Lucent
Techs., 9/25/08 (no standing without
patent co-owner who invented subject
matter of certain claims); DDB
Technologies, 2/13/08; IPVenture,
104
9/28/07); with certain exceptions, one
co-owner has the right to limit the
other co-owners ability to sue
infringers by refusing to join
voluntarily in the infringement suit
Ethicon, Schering v. Roussel-UCLAF;
absent the voluntary joinder of all co-
owners of a patent, a co-owner acting
alone will lack standing (DDB
Technologies, 2/13/08 (n.2: FRCP 19
does not permit the involuntary
joinder of patent co-owner in an
infringement suit brought by another
co-owner; all co-owners must
ordinarily consent to join as plaintiffs
in an infringement suit Ethicon;
citing two exceptions: 1) an exclusive
licensee may join the patent owner as
an involuntary plaintiff in an
infringement suit, and 2) a co-owner
who, by agreement, waives his right
to refuse to join suit, may be forced to
join an infringement suit; see also J.
Newman, dissenting Rule 19
requires that a plaintiff have the
opportunity to effect any necessary
joinder when the issue is raised) ;
Israel Bio-Engineering Project,
1/29/07); See also Gellman, 11/30/11
(nonprecedential co-owner and co-
inventor failed to obtain legal title (as
opposed to equitable title) from other
co-owner and co-inventor in alleged
employment contract)
- Exclusive licensee has standing to sue

a party has the right to sue for patent
infringement if the party has a legally
105
protected interest in the patent (i.e.,
an exclusionary right) created by the
Patent Act, so that it can be said to
suffer legal injury from the act of
infringement Propat Intl (Wiav
Solutions, 12/22/10); See Exclusive
licensee
- Transfer by operation of law - transfer of

patent ownership by other than a written
assignment under 261 (requiring that all
assignments of patent interest be in writing)
there is nothing that limits assignment as
the only means for transferring patent
ownership, since the case law illustrates that
patent ownership may be changed by
operation of law Stickle (applying Texas
law) (Sky Technologies, 8/20/09 (district
court correctly relied on Akazawa to
determine that patent ownership was
properly transferred without a writing by
operation of state foreclosure law; also
rejecting argument that Section 154 restricts
patent ownership to only three classes of
individuals, and ruling that Section 154 does
not specifically address transfers of patent
ownership; also ruling that holding was
supported by the policy justifications for
permitting transfers of patent ownership by
operation of law without a writing);
Akazawa, 3/31/08 (citing 154(a)(1) that
[e]very patent shall contain a short title of
the invention and a grant to the patentee, his
heirs or assigns, of the right to exclude
others from making, using, offering for sale,
or selling the invention throughout the
United States . . . .)); See also Gellman,
11/30/11 (nonprecedential stating general
106
rule with respect to an alleged contract to
transfer title to inventions in an unsigned
consulting agreement - citing Sky Techs.);
Sky Technologies, 9/10/08 (nonprecedential
granting permission to (interlocutory)
appeal issue certified by the district court of
whether a written assignment was needed
for standing, citing Akazawa)
Party needs legal title or all substantial rights
- Party must have sufficient ownership

interest in the patent to be entitled to sue for
infringement; infringement suit ordinarily is
brought by the party holding legal title in the
patent at the time of the infringement Rite-
Hite, Crown Die & Tool (S.C.) (Abbott,
1/13/12 (no standing where the plaintiff did
not own the patent based on earlier contract
between the inventor and the plaintiffs
predecessor); MHL Tek, 8/10/11 (plaintiff
lacked standing to sue where the patents in
suit claimed the inventions and
discoveries disclosed in a parent
application which was earlier assigned in
writing to a different entity); A123 Systems,
11/10/10 (patent owner was necessary and
indispensible party in suit brought by
exclusive field of use licensee); Spine
Solutions, 9/9/10; Mann Foundation,
5/14/10 (patent owner, despite there being
an exclusive licensee, had standing to sue
where retained substantial rights in the
patent); Asymmetrx, 9/18/09; Sky
Technologies, 8/20/09; Mars, 6/2/08;
Akazawa, 3/31/08 (ownership of patent for
standing by heirs of deceased patentee
107
determined based on Japanese intestacy
law); IPVenture, 9/28/07; Morrow, 9/19/07;
Mitutoyo, 9/5/07; Walter Kidde, 3/2/07;
Mymail, 2/20/07); if legal title not
transferred, then must convey all
substantial rights in the patent (vs. the
transferor retaining ownership rights in the
patent), and the transferee is treated as the
patentee; if neither of the above, need a
legally protected interest in the patent
created by the Patent Act, so that it can be
said to suffer legal injury from an act of
infringement (e.g., an exclusive licensee)
(Propat Intl, 1/4/07); See also Gellman,
11/30/11 (nonprecedential plaintiff must
prove sole legal ownership for standing - an
equitable claim to title alone will not suffice
- Arachnid)
- All substantial rights inquiry is a

proxy for the statutory requirement
that a party bringing an infringement
suit have the interests of a patentee
(i.e., exclusionary rights, rights to
assign and enforce patent)
(Asymmetrx, 9/18/09; Morrow,
9/19/07)
- Party holding all rights or all

substantial rights alone has
standing to sue for infringement
(Delano Farms, 8/24/11
(licensor was a necessary
defendant in DJ action where
not all substantial rights were
transferred to licensee); Mann
Foundation, 5/14/10;
Asymmetrx, 9/18/09 (exclusive
108
licensee did not have all
substantial rights and thus
could not sue without the patent
owner, where the patent owner
retained substantial rights in the
patents); Sky Technologies,
8/20/09; Morrow, 9/19/07)
- Substance of what was granted

(reflecting the parties intent),
not the form, which determines
patent rights Speedplay; see
also below (Asymmetrx,
9/18/09; Sky Technologies,
8/20/09 (patent title was
transferred by operation of state
foreclosure law without a
writing, so that the titleholders
subsequent transfer of title to
the appellee by assignment was
valid))
- Unilateral representation of
having all substantial rights
does not control (A123
Systems, 11/10/10 (unilateral
representation by exclusive
field of use licensee could not
alter the assignees own rights
in the patents))
- Plaintiff must demonstrate legal title

to the patent (determined by state law)
at the inception of the lawsuit to be
entitled to sue for infringement
(Abraxis Bioscience, 11/9/10
[petition for rehearing en banc was
denied on 3/14/11 see discussion
109
above]; Sky Technologies, 8/20/09;
Akazawa, 3/31/08 (addressing
whether the heirs of deceased patentee
held title to the patent under Japanese
law (analogous to a determination
based on state law) for standing);
Walter Kidde, 3/2/07; Mymail,
2/20/07 (Texas law)); See also
Gellman, 11/30/11 (nonprecedential
hired to invent doctrine is equitable
and creates only an obligation for an
employee to assign to an employer)
- Common corporate structure

does not overcome the
requirement that even between
a parent and a subsidiary, an
appropriate written assignment
is necessary to transfer legal
title from one to the other
(Abraxis Bioscience, 11/9/10)
- Fraud asserted with respect to chain

of title fraud relating to patent
ownership cannot be raised as defense
in federal court (unlike later-
discovered fraud relating to patent
procurement (i.e., unenforceability)
can always be raised as a defense),
because state law, not federal law,
addresses property ownership disputes
(Mymail, 2/20/07)
- When restriction on right to dispose

of assets, not all substantial rights
transferred Sicom Systems
(Asymmetrx, 9/18/09; Propat Intl,
1/4/07)
110
- Only the entity or entities that own or
control all substantial rights in a patent
can enforce rights controlled by the patent,
lest an accused infringer be subjected to
multiple suits and duplicate liability for a
single act of infringement; thus all entities
with an independent right to enforce the
patent are indispensable or necessary parties
to an infringement suit (Delano Farms,
8/24/11 (licensor USDA was a necessary
defendant in DJ action, where retained the
right to enforce the patents and approve
sublicenses, and reserved for itself a royalty-
free license); A123 Systems, 11/10/10
(patent owner was necessary and
indispensible party in DJ suit brought
against an exclusive field of use licensee);
Asymmetrx, 9/18/09; Intl Gamco, 10/15/07;
IPVenture, 9/28/07)
Agreements assignments, licenses 35 USC 261
Generally
- Agreements assignment vs. license? (A123

Systems, 11/10/10 (citing cases); Mann
Foundation, 5/14/10 (comparing an exclusive
license (where both the patent owner and the
licensee have standing to sue) and a virtual
assignment (where only the licensee has standing
to sue alone); Asymmetrx, 9/18/09; Aspex
Eyewear, 1/10/06; Sicom Systems, 10/18/05;
Fieldturf, 2/4/04); See also OWNERSHIP
Assignments and Licenses
- Construction of patent assignments and

license agreements is a matter of state
111
contract law (Preston, 7/10/12 (applying
Wyoming law (after certifying state law
question to the Wyoming Supreme Court) to
assignment provision in employment
agreement in determining that former
employer owned patents); Abraxis
Bioscience, 11/9/10 (applying CAFC law to
question of whether contractual language
effected a present assignment of patent
rights, or an agreement to assign rights in
the future; see also J. Newman, dissenting
patent conveyances are sales contracts
interpreted under state contract law, which
considers the intent of the parties) [petition
for rehearing en banc was denied on
3/14/11 see discussion above]; Tri-Star
Electronics, 9/9/10 (applying Ohio statutory
and common law, which was in accord with
CAFC law, to interpret patent assignment,
giving effect to the intent of the parties);
Mann Foundation, 5/14/10 (license
agreement interpreted under California law);
SiRF Technology, 4/12/10 (applying
California law, in concluding that the
patented invention was not related to or
useful in the business of the Employer
within the meaning of an employee
assignment agreement); Mars, 6/2/08
(applying Delaware law)); See also
OWNERSHIP Assignments and
Licenses
- Ownership depends on the substance of

what was granted through assignment, and
not the characterization of those rights as an
exclusive license or assignment; in
construing the substance of the assignment,
a court must carefully consider the intent of
112
the parties from the language of the grant
(MHL Tek, 8/10/11 (lack of standing based
on interpretation of earlier assignment
agreement); A123 Systems, 11/10/10 (need
to examine the actual transfer of rights in the
patent); Mann Foundation, 5/14/10;
Asymmetrx, 9/18/09 (exclusive license was
not effectively an assignment for the
licensee to sue without the patent owner,
where the patent owner retained substantial
rights under the patents); Mars, 6/2/08
(applying Delaware law); Intl Gamco,
10/15/07; IPVenture, 9/28/07 (only
agreement to assign, thus no assignment);
Morrow, 9/19/07 (n.7); Israel Bio-
Engineering Project, 1/29/07)
- Assignment must be in writing, while

license can be implied (Aspex
Eyewear, 1/10/06); See also Aspex
Eyewear, 8/1/08 (nonprecedential
remanding issue of whether standing
based on oral or implied exclusive
license; 35 USC 261)
- (Automatic) assignment vs.

agreement to assign i.e., does
hereby grant vs. agree to assign
(Preston, 7/10/12 (construing
assignment provision in employment
agreement as an automatic assignment
of future inventions, without the need
for additional acts which included
formal execution of documents
citing DDB Techs.); Abbott, 1/13/12
(no automatic assignment in
consulting agreement based on
incorporation of earlier employment
113
agreement); Abraxis Bioscience,
11/9/10 (comparing the two types of
agreements, where the agreement was
an agreement to assign in the future,
and thus a further assignment of
patents was needed; see also J.
Newman, dissenting district court
properly applied state contract law to
retroactive assignment, and agree to
assign cases are distinguishable)
[petition for rehearing en banc was
denied on 3/14/11 see discussion
above]; SiRF Technology, 4/12/10
(employee-assignment agreement was
an automatic assignment, expressly
granting rights with no further action
needed on the part of the employee);
Imation, 11/3/09 (contract
interpretation, not standing, at issue;
applying assignment-related cases to
construe a license agreements grant
language agrees to grant and does
hereby grant as a present license
grant that included the parties future
subsidiaries, citing DDB Techs.);
Stanford U., 9/30/09 (distinguishing
the language of two assignment
agreements, the first an employment
agreement with Stanford under which
the inventor agreed to assign (which
reflected a mere promise to assign
rights in the future) and the other that
recited that the inventor will assign
and do hereby assign to Cetus
(which effected a present assignment
of the inventors future inventions to
Cetus, which legal title vested before
the inventor assigned to Stanford))
114
Roche; Justice Breyer, with whom
Justice Ginsburg joined, dissented,
while Justice Sotomayor shared
Justice Breyers concern about the
CAFCs FilmTec rule above that
the rule undercuts the objectives
of the Bayh-Dole Act and that it
remains a technical drafting trap
for the unwary ]; Mars, 6/2/08 (in
one agreement, a transfer of the
entire interest of a patentee meant a
full assignment of the patent, i.e.,
transfer of title, whereas in another
agreement, an acknowledgement by
the parties of one partys rights failed
to assign title to the patent, but instead
assigned only the right to sue for past
infringement, citing Morrow, 9/19/07
(holding that transfer of the right to
sue for past infringement does not
convey title or standing in the
infringement action)); DDB
Technologies, 2/13/08 (applying
CAFC law, employment agreement
stating that employee agrees to and
does hereby grant and assign was an
automatic assignment, requiring no
further act on the part of the assignee,
rather than merely a promise to
assign, thus transferring title by
operation of law; equitable vs. legal
rights in the invention; assignor thus
precluded from asserting equitable
defenses, such as waiver and various
estoppels; see also J. Newman,
dissenting employment agreement,
115
patent ownership issues are decided
under state law, and equitable
defenses are relevant to ownership
issues); See Abraxis Bioscience,
11/9/10 - petition for rehearing en
banc was denied on 3/14/11 J.
OMalley, with whom J. Newman
joined, dissented from the denial of
the petition, discussing the federal
law exception applied in DDB to
interpreting assignment agreements
to future (as opposed to existing)
patents, and noting (in n.3) that
[m]any have questioned the
wisdom of DDB Technologies,
including whether the mere fact
that a particular question of
contract interpretation is intimately
bound up with the question of
standing is sufficient to justify
judicial preemption of state law;
IPVenture, 9/28/07 (employment
agreement)); See also Gellman,
11/30/11 (nonprecedential co-owner
lacked standing to sue without other
co-owner where language in unsigned
consulting agreement was merely an
obligation to assign in the future and
thus did not transfer legal title)
- Acknowledgement of one
partys rights in the patent does
not transfer title to the patent
(Mars, 6/2/08)
- Agreement to assign reflects a

mere promise to assign rights in
the future, not an immediate
116
transfer of expectant interests
IpVenture (Stanford U.,
9/30/09) [affirmed by the U.S.
Supreme Court, on 6/6/11, in
Stanford U. v. Roche]
- Agreement to assign patent,

must be implemented by a
written instrument (IPVenture,
9/28/07); See also Gellman,
11/30/11 (nonprecedential)
- Consent judgment lacked assignment

of right to enforce (Thatcher, 2/10/05)
- Post-agreement statements regarding

ownership are relevant (DDB
Technologies, 2/13/08 (assignment
provision in employment agreement
was ambiguous in part; remanded for
limited discovery on ownership,
jurisdictional (standing) issues);
IPVenture, 9/28/07 (employment
agreement))
- Termination provision when

transferees rights valid for only
limited period of time - all
substantial rights to patent are not
transferred and transferee is not owner
of patent, but instead is exclusive
licensee without all substantial rights
(Aspex Eyewear, 1/10/06)
Exclusive licensee
117
- Exclusive licensee a licensee is an
exclusive licensee of a patent (and has
standing to sue) if it holds any of the
exclusionary rights that accompany a patent
thus, depending on the scope of its
exclusionary rights, an exclusive licensee
may have standing to sue some parties and
not others, e.g., not a party who holds a
preexisting license to the patent, or who has
the ability to obtain such a license from
another party with the right to grant it (Wiav
Solutions, 12/22/10 (exclusive licensee had
standing to sue the defendants who did not
possess, and were incapable of obtaining, a
license to the exclusive licensees field of
exclusivity -- even though third parties had
the right to license the patent))
- Standard for exclusive licensee

standing whether the plaintiff
exclusive licensee has shown that it
has the right under the patents to
exclude the defendants from engaging
in the alleged infringing activity and
therefore is injured by the defendants
conduct (Wiav Solutions, 12/22/10)
- Exclusive licensee must usually bring suit

with patent owner, to satisfy prudential
standing concerns (Wiav Solutions,
12/22/10 (n.1: the plaintiff exclusive
licensee addressed any prudential standing
concerns by adding the patent owner to the
suit as a defendant patent owner); A123
Systems, 11/10/10; Mann Foundation,
5/14/10; Asymmetrx, 9/18/09; Intl Gamco,
10/15/07; Morrow, 9/19/07; Propat Intl,
1/4/07); otherwise to sue in its own name,
118
without joining the patent holder, exclusive
licensee must have all substantial rights in
the patent, e.g., right to enforce patent, right
to assign patent, to bring suit without patent
owner; the exclusive licensee in such a
case is effectively the assignee (Intl Gamco,
10/15/07; Morrow, 9/19/07; Central
Admixture Pharmacy Services, 4/3/07;
Bicon, 3/20/06; Aspex Eyewear, 1/10/06;
Sicom Systems, 10/19/05; Fieldturf, 2/4/04)
- Appellate standing entitled to appeal

alone - exclusive licensee not
possessing all substantial rights in the
patent need not join the patent owner
for standing to appeal; no danger of
alleged infringer being subject to
multiple infringement actions; patent
owner if not joined in the appeal
continues to be bound by the
judgments of the trial court and the
CAFC (Schwarz Pharma, 10/12/07
(case of first impression))
- Co-plaintiff standing of licensee

must hold at least some proprietary
rights under the patent (Wiav
Solutions, 12/22/10 (standing based
on an exclusive field of use license
relative to the defendants); Mitutoyo,
9/5/07 (exclusive right to sell products
made according to the patent
sufficient for standing, vs. exclusive
right to sell only licensors products is
insufficient))
- Exclusive licensee for standing

purposes a party must have
119
received, not only the right to practice
the invention within a given territory,
but also the patentees express or
implied promise that others shall be
excluded from practicing the
invention within that territory as well
(i.e., the right to exclude others); by
the same token, if the patentee allows
others to practice the patent in the
licensees territory, then the licensee
is not an exclusive licensee Rite-
Hite (Wiav Solutions, 12/22/10; Spine
Solutions, 9/9/10 (patent owners
sister company lacked standing to sue
(was a bare licensee rather than an
exclusive licensee), where there was
no express or implied promise by the
patent owner that others would be
excluded from practicing the patented
invention); Mars, 6/2/08 (wholly
owned, U.S. subsidiary was not
exclusive licensee, but rather a non-
exclusive licensee without
constitutional standing, when the
parent company, patent owner also
allowed its foreign subsidiary to
practice the patent in the U.S.))
- Exclusive license may be tantamount

to an assignment for purposes of
standing if it conveys to the licensee
all substantial rights to the patent,
conferring standing to sue solely on
the licensee (Mann Foundation,
5/14/10; (comparing exclusive
licenses and virtual assignments, and
examining the types of rights to the
patent transferred that render an
120
exclusive licensee the patent owner,
including the most important factor
which is the nature and scope of the
licensors retained right to sue
accused infringers); Asymmetrx,
9/18/09 (all substantial rights were not
conveyed); Intl Gamco, 10/15/07;
Aspex Eyewear, 1/10/06)
- Look at intention of the parties

and substance of the agreement
(Mann Foundation, 5/14/10;
Asymmetrx, 9/18/09 (no
standing where the patent
owner retained substantial
rights to the patents under the
agreement, including the right
to sue for infringement); Aspex
Eyewear, 1/10/06; Sicom
Systems, 10/18/05)
- Exclusive territorial licensee need not

join the licensor, patent owner to
maintain an infringement suit; license
confers standing as long as excludes
everyone else, including the patentee,
from practicing the patent within the
territory covered by the license
Waterman (S.C.); vs. exclusive field
of use licensee must join the licensor,
patent owner Pope (S.C.) (A123
Systems, 11/10/10 (no standing for
exclusive field of use licensee without
joining the patent owner, under long-
standing prudential standing
precedent); Intl Gamco, 10/15/07,
case of first impression, see also
dubitante opinion, S.J. Friedman))
121
- Exclusive enterprise license (a
hybrid between a territorial license
and a field of use license) does not
confer standing on the exclusive
licensee to bring a patent infringement
action in its own name only; does not
hold all substantial rights in the
patent; problem of multiplicity of
suits arising from exclusive field of
use license is not cured by adding
exclusive territorial restriction (Intl
Gamco, 10/15/07)
- Who owns patent? Need all

substantial rights to patent key
factor is where the right to sue for
infringement lies (Delano Farms,
8/24/11 (license must divest the
licensor of the right to enforce the
patent, citing Mann); Mann
Foundation, 5/14/10 (most important
factor); Asymmetrx, 9/18/09 (no
standing to sue by an exclusive
licensee alone where the patent owner
did not convey the entire right to
enforce the patents, stating that the
court has ruled before that the
exclusive right to sue is particularly
dispositive in cases when deciding
whether a patent owner must be
joined as a party, citing Abbott,
Vaupel); Aspex Eyewear, 1/10/06)
Bare licensee
122
- Bare licensee, i.e., a party with only a
covenant from the patentee that it will not be
sued for infringing the patent rights, lacks
standing to sue third parties for infringement
(Spine Solutions, 9/9/10); thus, case brought
by a bare licensee must be dismissed, and
licensee cannot cure its lack of standing by
joining the patentee as a party (Wiav
Solutions, 12/22/10; Propat Intl, 1/4/07)
- Bare licensee has no standing to sue,

even if the patent owners only
licensee in the territory a bare
license does not provide standing
without the grant of a right to exclude
others (Spine Solutions, 9/9/10)
Non-exclusive licensee
- Non-exclusive licensee has no constitutional

right to sue no standing, or right to join
suit with the patent owner, because a
nonexclusive licensee lacks the necessary
exclusionary rights under the patent statutes
and thus suffers no legal injury from
infringement (Wiav Solutions, 12/22/10;
Imation, 11/3/09 (in contract interpretation
case, explaining why non-exclusive licenses
granted in a cross-license agreement were
personal to the licensees); Mars, 6/2/08;
Morrow, 9/19/07; Bicon, 3/20/06; Sicom
Systems, 10/18/05; Schreiber Foods,
3/22/05)
- Non-exclusive patent license is

simply a promise not to sue for
infringement (Imation, 11/3/09 (citing
123
Transcore); Transcore, 4/8/09 (citing
several other cases))
Curing standing defects
- Curing standing defects before final judgment

Caterpillar (S.C.) (Abraxis Bioscience, 11/9/10
(lawsuit must be dismissed if the original plaintiff
lacked Article III initial standing, and the
jurisdictional defect cannot be cured after the
inception of the lawsuit (e.g., by a nunc pro tunc
assignment) Schreiber Foods) [petition for
rehearing en banc was denied on 3/14/11 see
discussion above]; Janssen, 9/4/08 (n.9); Mars,
6/2/08 (the patentee failed to reacquire title to the
patent in order to cure standing defects to collect
past infringement damages, stating that the
procedure described in Schreiber requires a
patentee to reacquire title to a patent to correct the
jurisdictional defect that arises when the plaintiff
loses title to the patent during the litigation; the
party instead acquired only the right to sue for past
infringement); IPVenture, 9/28/07 (post-filing
assignment does not cure standing defects?);
Schreiber Foods, 3/22/05)
- Transfer of the right to sue is not effectively

the same as a transfer of title to an expired
patent; allowing one divorced from the other
would create a risk of unnecessary third
party litigation, whether or not the patent has
expired (Mars, 6/2/08)
- Curing standing defects after dismissal for failure

to join a necessary party under FRCP 19(b) may
dismiss without prejudice, to allow the plaintiff to
cure the standing defect through the joinder of the
124
proper parties or an assignment of the necessary
patent rights (U. of Pittsburgh, 6/9/09 (alleged
failure to join a patent co-owner))
Dismissal for lack of standing
- Dismissal for lack of standing is jurisdictional and

is not an adjudication on the merits dismissal
should generally be without prejudice, particularly
when the defect is curable (Abraxis Bioscience,
11/9/10 (dismissal without prejudice); Tyco,
12/7/09 (dismissal without prejudice was proper
where the plaintiff may have been able to show it
owned the asserted patents, or may have been able
to obtain ownership of the patents); U. of
Pittsburgh, 6/9/09 (district court improperly
dismissed with prejudice for lack of standing,
citing the law of the CAFC, 3rd Cir., and other
circuits))
- Dismissal for lack of standing (i.e., on motion to

dismiss) with or without prejudice? (Tyco,
12/7/09 (rejecting argument that dismissal should
have been with prejudice, where there was no
undue prejudice to the movant, including that
ownership was not raised as an issue to be
litigated, but was instead first raised during cross
examination of the plaintiffs witness); U. of
Pittsburgh, 6/9/09 (dismissal with prejudice for
allegedly failing to timely join a necessary party (a
co-owner) under FRCP 19(b) was improper); DDB
Technologies, 2/13/08; IPVenture, 9/28/07; Walter
Kidde, 3/2/07; Sicom Systems, 10/18/05; Fieldturf,
2/4/04)
- Dismissal with prejudice when second

dismissal after attempted cure (U. of
125
Pittsburgh, 6/9/09 (distinguishing Sicom
where no previous attempt to cure); Sicom
Systems, 10/18/05)
- Dismissal with prejudice when plainly

unlikely that the standing defect can be
cured Fieldturf, Textile Prods. (Tyco,
12/7/09 (exception not applicable); U. of
Pittsburgh, 6/9/09 (dismissal with prejudice
was improper where the plaintiff could cure
the standing defect by adding a necessary
party))
- Dismissal of complaint when infringement

not within the U.S. (Hydril, 1/25/07
(dissent))
- Standing addressed through a motion for SJ

(U. of Pittsburgh, 6/9/09; Israel Bio-
Engineering Project, 1/29/07)
Appellate (CAFC) standing
- Appellate (CAFC) standing no standing if not

adversely affected by the judgment of the district
court (Taylor Brands, 12/9/10 (Order) (no standing
to appeal the denial of opponents motion for
attorney fees); Nisus, 8/13/07; Pods, 4/27/07;
Typeright Keyboard, 7/6/04); See also August
Tech., 11/18/13 (nonprecedential dismissing
appeal because no standing to appeal where party
was adjudged to willfully infringe but enhanced
damages were not awarded - citing Typeright
Keyboard); Research in Motion, 11/21/12 (Order)
(nonprecedential dismissing appeal because the
defendant could not appeal infringement where the
patent was held invalid in a final judgment, since
126
reversal as to infringement would not affect the
scope of the judgment applies in Section 337
cases citing Typeright Keyboard)
- Cannot appeal judgment if you won (Allflex

USA, 1/17/13; Eli Lilly, 7/20/04)
- Party must be aggrieved by judgment

below to appeal claim (Allflex USA,
1/17/13 (party cannot appeal findings
believed to be erroneous which are
unnecessary to support the district
courts decree in the partys favor
citing Supreme Court cases); Pods,
4/27/07); See also August Tech.,
- Nonparties
- Nonparties may not appeal from

judgments or other actions of a
district court; true even if the
nonparty asserts that a judgment, or
some action taken by the court in
reaching the judgment, has an adverse
effect on him (Nisus, 8/13/07); See
also Advanced Magnetic Closures,
the CAFC lacked jurisdiction over a
nonpartys appeal of a discovery order
denying its motion to quash, stating
that nonparties may secure review of
a discovery order by refusing to
comply with it and appealing a
consequent contempt order
Connaught Labs)
127
- Discovery orders are not
appealable (Advanced
Magnetic Closures, 1/27/10
(Order) (nonprecedential))
- Exception to the general rule

nonparty such as an attorney
held in contempt or otherwise
sanctioned by the district court
in the course of the proceedings
before the court (need some
type of formal action, e.g., a
formal reprimand, by the
district court) may appeal from
the order imposing sanctions,
either immediately or as part of
the final judgment in the
underlying case; once
sanctioned (or, more generally,
once the district court exercises
it power to punish for
misconduct), the matter
becomes personal to the
nonparty and is treated as a
judgment against him;
however, critical comments
directed to the attorney, e.g., in
an opinion, (or similarly, e.g.,
adverse findings regarding the
credibility of a witness) are not
directed at and do not alter the
legal rights of the nonparty
Precision Specialty Metals
(Allflex USA, 1/17/13 (CAFC
lacked jurisdiction over
sanctions issue where the
district court had not yet
imposed any sanction or issued
128
a final order regarding them -
citing Nisus); Nisus, 8/13/07
(district courts comments
regarding a prosecuting
attorneys conduct ruled as
inequitable conduct not
appealable))
- Nonparty harmed by a statement in a

courts opinion can petition for a writ
of mandamus 28 USC 1651, and
request that the statement be
expunged from the record (Nisus,
8/13/07)
- Party must seek reversal of judgment, rather

than just review of unfavorable rulings
(Pods, 4/27/07); See also August Tech.,
11/18/13 (nonprecedential alleged
erroneous findings, statements by the district
court are not appealable when the party won
below)
Generally actual controversy required
- Declaratory judgment jurisdiction - standing 28

USC 2201(a) (Declaratory Judgment Act a
case of actual controversy) applies to the types
of cases justiciable under Article III of the U.S.
Constitution (Cases or Controversies)
Medimmune v. Genentech (S.C.) (Organic Seed
Growers, 6/10/13; Matthews Intl, 9/25/12;
Myriad, 8/16/12 [on remand from the U.S.
Supreme Court]; 3M, 3/26/12; Arris Group,
5/19/11; ABB, 2/17/11; Teva, 10/6/10 (Hatch-
Waxman); Green Edge, 9/7/10 (improper dismissal
129
where case or controversy over counterclaims of
trademark noninfringement and invalidity in suit
for trademark infringement); Janssen, 9/4/08
(Hatch-Waxman); Prasco, 8/15/08 (no justiciable
case or controversy within the meaning of the DJ
Act and Article III despite the DJ defendant,
patentees failure to sign covenant not to sue); Cat
Tech., 5/28/08; Caraco, 4/1/08 (well established
that the phrase actual controversy in 2201(a)
includes any controversy over which there is
Article III jurisdiction Aetna Life Ins. (S.C.));
Micron Technology, 2/29/08; Adenta, 9/19/07;
Sony Electronics, 8/3/07; Benitec, 7/20/07; Teva,
3/30/07; Sandisk, 3/26/07; Plumtree Software,
12/18/06; Microchip Tech., 3/15/06; Medimmune,
10/18/05 [reversed by the U.S. Supreme Court
on 1/9/07; see discussion below]; Fort James,
6/22/05; Medimmune, 6/1/05; Electronics for
Imaging, 1/5/05; Capo, 10/25/04; Sierra Applied
Sciences, 4/13/04; Gen-Probe, 3/5/04); See also
BIOTECH/PHARMA CASES Hatch-Waxman
Issues Declaratory judgment jurisdiction
- Objectives of the DJ Act must be served if so,

dismissal of the case is improper; dismissal is
discretionary, but there must be well-founded
reasons for declining DJ jurisdiction (Revolution
Eyewear, 2/13/09 (dismissal of DJ counterclaims
was improper where covenant not to sue did not
extend to future sales of the same product sued
upon); Micron Technology, 2/29/08 (discretion is
not absolute; dismissal was improper); Sony
Electronics, 8/3/07; Electronics for Imaging,
1/5/05; Capo, 10/25/04); See also Astrazeneca,
10/30/13 (nonprecedential citing Capo)
- Objectives of the DJ Act need for, and

relief from uncertainty and delay
130
regarding the DJ plaintiffs legal rights
(Creative Compounds, 6/24/11; Revolution
Eyewear, 2/13/09; Cat Tech., 5/28/08 (that
the plaintiff need not bet the farm, or . . .
risk treble damages . . . before seeking a
declaration of its actively contested legal
rights vs. abandoning that which has a right
to do is precisely the type of dilemma to be
resolved by the DJ Act Medimmune (S.C.);
here, absent a DJ of noninfringement, the DJ
plaintiff would have been forced to bet the
farm by making the in terrorem choice
between a growing potential liability to the
patentee and abandoning it catalyst loading
activities); Caraco, 4/1/08 (being denied the
right to sell non-infringing generic drugs
was precisely the type of injury the DJ Act
was designed to remedy); Micron
Technology, 2/29/08 (purpose of the DJ Act
is to provide the allegedly infringing party
relief from uncertainty and delay regarding
its legal rights); Electronics for Imaging,
1/5/05)
- Patent can be a scarecrow (L. Hand)

(Revolution Eyewear, 2/13/09
(referring to the scare-the-customer-
and-run tactics that the DJ Act was
intended to obviate - Sandisk);
Medimmune, 10/18/05; Capo,
10/25/04)
- DJ Act is not an independent basis for subject

matter jurisdiction the court must have
jurisdiction from some other source, i.e., the suit
must meet the case or controversy requirement of
Article III (Matthews Intl, 9/25/12; Prasco,
8/15/08 (noting that district court jurisidiction also
131
requires a statutory basis for subject matter
jurisdiction (e.g., 28 USC 1338), as well as
personal jurisdiction over the defendant); Cat
Tech., 5/28/08)
New standard Medimmune v. Genentech (S.C.)
- [New standard] All the circumstances

test is the proper standard for determining
whether a DJ action satisfies the Article III
case or controversy requirement; the
standard for determining whether there is an
actual controversy (rooted in Article III of
the Constitution (cases and controversies))
for DJ jurisdiction: the question in each case
is whether the facts alleged, under all the
circumstances, show that there is a
substantial controversy, between parties
having adverse legal interests, of sufficient
immediacy and reality to warrant the
issuance of a DJ (Myriad, 6/13/13 (S.C.)
(n.3: petitioner had DJ jurisdiction under the
Medimmune (S.C.) test); Organic Seed
Growers, 6/10/13 (affirming dismissal for
lack of DJ jurisdiction based on no risk of
suit in view of the patentees representations
(in a letter and website disclaimer), and the
possibility of future infringement was too
speculative); Arkema, 2/5/13 (reversing the
denial of motion to supplement DJ
complaint with claims regarding newly
issued patents); Matthews Intl, 9/25/12
(dispute lacked the requisite immedicacy
and reality to support DJ jurisdiction, where
the DJ plaintiff had taken no steps toward
direct infringement, and there was no
evidence as to when, if ever, customers
132
would use the plaintiffs equipment in a
manner that could potentially infringe
method patents); Myriad, 8/16/12; Dey
Pharma, 4/16/12 (DJ jurisdiction over suit
by second ANDA filer to trigger first filers
exclusivity period); 3M, 3/26/12; Streck,
1/10/12; ABB, 2/17/11 (DJ jurisdiction
existed, while rejecting the DJ defendants
argument that the controversy involved
solely a state law issue); Green Edge, 9/7/10
(DJ jurisdiction over trademark
counterclaims); King, 8/2/10; Dow Jones,
5/28/10); See also Cisco Systems, 8/29/13
(nonprecedential affirming no DJ
jurisdiction where the patentee at oral
argument conceded noninfringement against
the DJ plaintiff-supplier and that there were
substantial noninfringing uses for the
suppliers products, despite pending lawsuits
against the suppliers customers applying
judicial estoppel; distinguishing Arkema and
Arris; also, no indemnity agreements
between the supplier and its customers);
ALSO, Article III requires that the dispute
be definite and concrete, touching the legal
relations of parties having adverse legal
interests, and that it be real and
substantial and admi[t] of specific relief
through a decree of conclusive character, as
distinguished from an opinion advising what
the law would be upon a hypothetical state
of facts, i.e., an advisory opinion
Medimmune v. Genentech (S.C.) (Matthews
Intl, 9/25/12 (judicial determination would
be premature where there was no specific
and concrete evidence as to how customers
would use the DJ plaintiffs equipment);
3M, 3/26/12; Streck, 1/10/12; Powertech,
133
9/30/11 (holding that the dispute as to
whether a license agreement required
royalty payments to be tied to valid patent
coverage was sufficient to support DJ
jurisdiction, leaving the merits-based
arguments to the district court on remand);
Creative Compounds, 6/24/11 (district court
lacked jurisdiction over DJ counterclaim of
patent invalidity where there was no
substantial controversy between the parties
concerning an adverse legal interest); Arris
Group, 5/19/11 (DJ jurisdiction based on a
suppliers possible contributory
infringement, where only the suppliers
customer was accused of (direct)
infringement); ALSO, the Supreme Courts
three-part framework for determining
whether an action presents a justiciable
Article III controversy is applied an action
is justiciable under Article III only where (1)
the plaintiff has standing, (2) the issues
presented are ripe for judicial review, and
(3) the case is not rendered moot at any
stage of the litigation See also Standing,
ripeness, and mootness requirements
(Matthews Intl, 9/25/12 (dispute not ripe
for review where immediacy and reality
requirements not met); Myriad, 8/16/12;
3M, 3/26/12 (dispute was framed as a
standing question); Teva, 10/6/10 (DJ
jurisdiction in Hatch-Waxman case);
Innovative Therapies, 4/1/10 (The specific
facts of each case must be considered, in
deciding whether a declaratory action is
warranted); Hewlett-Packard, 12/4/09;
Revolution Eyewear, 2/13/09 (district court
was not divested of jurisdiction over
declaratory counterclaims where covenant
134
not to sue for past infringement did not
extend to future sales of the same product
sued upon; analyzes each of the elements
being met for DJ jurisdiction under all the
circumstances, and not a request for an
advisory opinion under Medimmune (S.C.));
Janssen, 9/4/08; Prasco, 8/15/08 (lack of
immediacy and reality for justiciable
controversy was shown by a lack of
standing, i.e., absent an injury-in-fact fairly
traceable to the patentee, there could be no
immediate and real controversy; the
threshold burden of proving an immediate
and real controversy also was not met where
there was no concrete claim of a specific
right made by the parties prior to suit (e.g.,
an infringement claim by the patentee); thus,
reaching the merits of the case would
provide an advisory opinion, not permitted
under Article III); Cat Tech., 5/28/08 (ruling
that the second prong of the CAFCs DJ
jurisdiction test remains an important
element in the totality of the circumstances
considered under Medimmune (S.C.) the
issue of whether there has been meaningful
preparation to conduct potentially infringing
activity remains an important element in the
totality of circumstances which must be
considered in determining whether a
declaratory judgment is appropriate . . . If a
declaratory judgment plaintiff has not taken
significant, concrete steps to conduct
infringing activity, the dispute is neither
immediate nor real and the requirements
for justiciability have not been met);
Caraco, 4/1/08 (addressing the standing,
ripeness, and mootness requirements in the
context of the Hatch-Waxman Action; DJ
135
action by a subsequent Paragraph IV ANDA
filer satisfied the standing, ripeness, and
mootness requirements and thus presented a
justiciable Article III controversy); Micron
Technology, 2/29/08 (all the circumstances
must show a controversy); Adenta, 9/19/07;
Sony Electronics, 8/3/07 (Supreme Court
has not articulated a precise test, or bright-
line rule, for distinguishing cases that satisfy
the actual controversy requirement from
those that do not the difference between an
abstract question and a controversy
contemplated by the DJ Act is necessarily
one of degree); Benitec, 7/20/07; Teva,
3/30/07; Sandisk, 3/26/07); See also
Panavise Prods., 1/6/09 (nonprecedential
no immediacy and reality shown based on
the totality of the circumstances, including a
factual attack from the DJ defendant-
patentee that it had never seen or evaluated,
or was aware of, the plaintiffs product prior
to suit, and thus the plaintiffs allegations
were based on mere speculation);
Maxwell, 1/8/08 (nonprecedential - DJ
claims properly dismissed, under the
Medimmune (S.C.) standard, for lack of
subject matter jurisdiction and failure to
state a claim upon which relief could be
granted)
- Question is not whether the subjective

fear of suit is genuine, but whether the
DJ plaintiff has demonstrated a
substantial risk that the harm will
occur, which may prompt it to
reasonably incur costs to mitigate or
avoid that harm no DJ standing by
inflicting harm on self based on fears
136
of future hypothetical harm -- Clapper
(S.C.), Monsanto (S.C.) (Organic Seed
Growers, 6/10/13 (allegations of a
subjective chill from the patentee
not giving a covenant not to sue were
not an adequate substitute for a claim
of specific present objective harm or a
threat of future harm citing Clapper
(S.C.)))
- Objective, not subjective, standard

the objective words and actions of the
patentee are controlling conduct that
can be reasonably inferred as
demonstrating intent to enforce a
patent can create DJ jurisdiction
(Organic Seed Growers, 6/10/13;
Myriad, 8/16/12; Hewlett-Packard,
12/4/09 (irrelevant whether the patent
owner subjectively believed the DJ
plaintiff was infringing))
- DJ action cannot be defeated

simply by the stratagem of a
correspondence that avoids
magic words such as
litigation or infringement
Hewlett-Packard (3M, 3/26/12;
Arris Group, 5/19/11 (DJ
jurisdiction based on facts
including infringement related
meetings with the DJ plaintiff-
supplier, even though the
patentee accused only the
suppliers customer of (direct)
infringement, citing ABB for
the above rule); ABB, 2/17/11)
137
- Specific threat of infringement
litigation by the patentee is not
required to establish
jurisdiction (Arris Group,
5/19/11 (DJ jurisdiction over
supplier based on possible
contributory infringement
where only the suppliers
customer was accused of
(direct) infringement); ABB,
2/17/11) (DJ jurisdiction was
established by warning letters
sent by the patentee))
- In patent cases, DJ jurisdiction exists

where a patentee asserts rights under
a patent based on certain identified
ongoing or planned activity of another
party, and where that party contends
that it has the right to engage in the
accused activity without license
Sandisk (Arkema, 2/5/13; Myriad,
8/16/12 (DJ jurisdiction based on
demand for royalty payment);
Hewlett-Packard, 12/4/09 (district
court had DJ jurisdiction over a patent
holding company that sent a letter to
the DJ plaintiff referring to the
relevance of the patent to a specific
product line of the plaintiff, and
which gave a two-week deadline for
response, and the patent owner
declined to agree to a standstill period
to discuss the patent))
- Intended or not, the now more lenient

legal standard for DJ actions
facilitates or enhances the availability
138
of DJ jurisdiction in patent cases
(Innovative Therapies, 4/1/10
(affirming the dismissal of DJ action
despite the liberalized criteria for
DJ actions established in Medimmune
(S.C.)); Hewlett-Packard, 12/4/09
(citing above rule from Micron Tech.,
but adding that lowering the bar for
DJ jurisdiction does not mean no bar
at all a communication from a
patent owner to another party, merely
identifying its patent and the other
partys product line, without more,
cannot establish adverse legal
interests between the parties, let alone
the existence of a definite and
concrete dispute. More is required to
establish declaratory judgment
jurisdiction.); Cat Tech., 5/28/08
(citing Micron Tech.) presents
unique challenges (Micron
Technology, 2/29/08)
- Competing forum interests

between parties decided by
transfer analysis - the resulting
ease is accompanied by unique
challenges such as forum-
seeking races to the courthouse
between accused infringers and
patentees; thus the trial court
needs to consider the
convenience factors found in
the transfer analysis of 28 USC
1404(a) (Innovative
Therapies, 4/1/10
(distinguishing Micron
Technology); Micron
139
Technology, 2/29/08 (using
transfer analysis, the district
courts dismissal of a DJ action
was improper))
- Medimmune (S.C.) (in footnote 11)

overruled, eliminated the CAFCs
reasonable apprehension of
(imminent) suit test as the sole test
for jurisdiction, in favor of the all the
circumstances test (Streck, 1/10/12;
Powertech, 9/30/11; Arris Group,
5/19/11; ABB, 2/17/11; Innovative
Therapies, 4/1/10 (Although
Medimmune held that a reasonable
apprehension of suit for infringement
is not always required to establish
declaratory jurisdiction, the particular
circumstances must be considered);
Revolution Eyewear, 2/13/09; Prasco,
8/15/08 (While the Supreme Court
rejected the reasonable apprehension
of suit test as the sole test for
jurisdiction, it did not completely do
away with the relevance of a
reasonable apprehension of suit (see
below)); Cat Tech., 5/28/08; Caraco,
4/1/08; Micron Technology, 2/29/08;
Adenta, 9/19/07; Sony Electronics,
8/3/07; Benitec, 7/20/07; Honeywell,
5/25/07; Teva, 3/30/07; Sandisk,
3/26/07)
- Following Medimmune (S.C.),

proving a reasonable
apprehension of suit is one of
multiple ways that a DJ
plaintiff can satisfy the
140
Supreme Courts more general
all-the-circumstances test to
establish that an action presents
a justiciable Article III
controversy (Arkema, 2/5/13
(n.5); Streck, 1/10/12
(affirming no DJ jurisdiction
over unasserted or withdrawn
patent claims under the totality
of the circumstances, despite
the district courts incorrect
reliance on only a lack of a
reasonable apprehension of
suit); Prasco, 8/15/08; Caraco,
4/1/08)
- Second prong of the DJ test,

i.e., whether there has been
potentially infringing activity
or meaningful preparation to
conduct potentially infringing
activity, remains an important
element in the totality of the
circumstances (Organic Seed
Growers, 6/10/13 (DJ plaintiff
must allege significant,
concrete steps to conduct
infringing activity Cat Tech);
Matthews Intl, 9/25/12;
Myriad, 8/16/12 (concluding
DJ jurisdiction based on one DJ
plaintiffs preparation to
infringe, where the plaintiff was
prepared to and would use the
patented gene testing once the
patents were declared invalid);
Innovative Therapies, 4/1/10
(patentees knowledge of the
141
DJ plaintiffs representations to
the FDA that the plaintiffs
product had the same
technological characteristics
as the patentees approved
product did not create DJ
jurisdication); Prasco, 8/15/08
(not at issue where the DJ
plaintiff was making and
selling the accused product at
the time of the amended
complaint); Cat Tech., 5/28/08)
- No bright-line rule there is no

facile, all-purpose standard to police
the line between DJ actions that
satisfy the case or controversy
requirement and those that do not; to
the contrary, the difference between
an abstract question and a
controversy contemplated by the DJ
Act is necessarily one of degree
thus, unable to fashion a precise test
for determining in every case whether
there is such a controversy Md.
Cas. Co. (S.C.) (Organic Seed
Growers, 6/10/13; Matthews Intl,
9/25/12; Myriad, 8/16/12; 3M,
3/26/12; Streck, 1/10/12; Hewlett-
Packard, 12/4/09; Prasco, 8/15/08;
Cat Tech., 5/28/08); See also Panavise
Prods., 1/6/09 (nonprecedential
stating the rule, and that the lack of
direct pre-complaint communication
between a patentee and a DJ plaintiff
by itself (which the district had
concluded was in part dispositive of
the jurisdictional question) is not
142
sufficient to defeat subject matter
jurisdiction)
- Well-established in patent cases

that the existence of a case or
controversy must be evaluated
on a claim-by-claim basis
Webb (Streck, 1/10/12
(affirming the district courts
lack of jurisdiction over
unasserted patent claims))
- Unasserted or withdrawn patent

claims counterclaimant must
show a continuing case or
controversy with respect to
withdrawn or otherwise
unasserted claims (Fox Group,
11/28/12 (the district court
erred in also holding unasserted
claims invalid because lacked
jurisdiction over them where no
case or controversy
discussing Streck and Scanner
Techs.); Streck, 1/10/12
(relying in part on Hoffman-La
Roche (D.N.J.), and
distinguishing Scanner Techs.))
- Substantial controversy needed

between parties having adverse legal
interests, of sufficient immediacy
and reality to warrant the issuance of
a DJ (Organic Seed Growers, 6/10/13
(affirming lack of DJ jurisdiction
where there were no concrete plans to
infringe outside the scope of the
patentees representation (similar to a
143
covenant not to sue) that it would not
sue the appellants for inadvertently
using or selling trace amounts of
patented genetically modified seed,
and fear of future infringement going
outside the scope of the patentees
representation was too speculative
distinguishing Arkema); Arkema,
2/5/13 (reversing the denial of motion
to supplement DJ complaint with
claims regarding newly issued
patents, where there was a substantial
controversy with respect to the patents
based on the DJ plaintiffs intent to
supply U.S. auto manufacturers with
product for use in air conditioning
systems, which when used would
directly infringe method patents -
distinguishing Matthews; also, Arris
Group does not require accusations of
direct infringement for a suppliers
standing to seek a DJ regarding its
potential indirect infringement
liability); Matthews Intl, 9/25/12;
Myriad, 8/16/12; Arris Group,
5/19/11; Dow Jones, 5/28/10
(covenant not to sue divested the
district court of jurisdiction to decide
anticipation counterclaim); Innovative
Therapies, 4/1/10 (informal phone
conversations between employees of
the DJ plaintiff and DJ defendant did
not produce a controversy of such
immediacy and reality); Hewlett-
Packard, 12/4/09; Revolution
Eyewear, 2/13/09 (requirement met
where DJ counterclaimant was
prepared to return to market with
144
alleged infringing product); Prasco,
8/15/08 (complete lack of evidence of
a defined, preexisting dispute
between the parties; the patentees
marking of its products under section
287 provided little, if any, evidence
that it would enforce its patents, and
thus did not show an imminent threat
of harm sufficient to create an actual
controversy); Cat Tech., 5/28/08
(ruling (for the first time post-
Medimmune (S.C.)) that the second
prong of the CAFCs DJ jurisdiction
test, i.e., that the DJ plaintiff has taken
significant, concrete steps (made
meaningful preparation) to conduct
potentially infringing activity, must be
satisfied to meet the immediacy and
reality requirements for DJ
justiciability under Medimmune
(S.C.)); Micron Technology, 2/29/08
(the record evidence amply supported
a real and substantial dispute
between the parties, including where
the patentee filed an infringement suit
the day after the filing of the DJ
action); Adenta, 9/19/07; Sony
Electronics, 8/3/07; Benitec, 7/20/07;
Teva, 3/30/07; Sandisk, 3/26/07;
Microchip Tech., 3/15/06;
Medimmune, 10/18/05; Medimmune,
6/1/05; Teva, 1/21/05; Sierra Applied
Sciences, 4/13/04)
- Adverse legal interest

requires a dispute as to a legal
right, for example, an
underlying legal cause of action
145
that the DJ defendant could
have brought or threatened to
bring against the DJ plaintiff,
e.g., DJ plaintiff infringing the
DJ defendants patent; vs.
adverse economic interest or
economic injury of the DJ
plaintiff (e.g., unable to sell
products without subjecting
customers to possible litigation)
is not a legally cognizable
interest to confer DJ
jurisdiction (unless action is
brought against the
government) (Arkema, 2/5/13
(DJ jurisdiction where legal
right to the patented technology
disputed); Powertech, 9/30/11
(addressing adverse legal
interest of the licensee-supplier
(contributory infringement
based on direct infringement by
its customers) in Arris Group);
Creative Compounds, 6/24/11
(district court lacked DJ
jurisdiction over patent where
the DJ (counterclaim)
defendant had sent threatening
letters to customers of the DJ
plaintiffs predecessor only,
and the DJ plaintiff had at most
only an economic interest in
clarifying its customers rights
under the patent; also rejecting
argument that a fight over
competing patents showed an
underlying cause of action
under Section 291, where
146
neither party filed a Section 291
action, showed there was an
interference, nor sought to
identify common claimed
subject matter; also, exception
for when indemnity agreement
in place); Arris Group, 5/19/11
(basing DJ jurisdiction on other
well-established standards;
also, n.4: exception in Hatch-
Waxman cases); Benitec,
7/20/07; Microchip Tech.,
3/15/06); See also Personalized
Media, 8/23/12
(nonprecedential J. Mayer,
concurring no jurisdiction
over DJ action involving scope
of license, where the licensee
was asking for an advisory
opinion)
- Sufficient immediacy and

reality requirement of
Medimmune (S.C.) (Arkema,
2/5/13 (reversing the district
court, where the requirement
was met -- distinguishing
Matthews); Matthews Intl,
9/25/12 (immediacy and reality
requirements unmet); Myriad,
8/16/12; 3M, 3/26/12 (one year
passage of time until DJ action
filed did not counsel against
finding DJ jurisdiction where
the relevant circumstances
surrounding the patentees
assertion of patent rights had
not changed, and the need for
147
time to conduct a pre-filing
investigation of the patents
citing Myriad); Revolution
Eyewear, 2/13/09 (requirement
met for DJ counterclaims); Cat
Tech., 5/28/08 (requirements
for DJ of noninfringement were
met); Benitec, 7/20/07 (no
infringement based on
271(e)(1) exemption, plus
present or future plans for
infringement, showed absence
of sufficient immediacy and
reality; to allow such a scant
showing to provoke DJ
jurisdiction would be to allow
nearly anyone who so desired
to challenge a patent)); See
also Panavise Prods., 1/6/09
(nonprecedential lack of
jurisdiction where not alleged
that the DJ defendant restrained
the plaintiffs right to freely
market its products, and the DJ
complaint was based only on
assumptions about a threat of
future injury, ruling that the
real and immediate injury or
threat of future injury must be
caused by the defendants,
which is an objective standard
that cannot be met by a purely
subjective or speculative fear of
future harm Prasco)
- Concrete steps taken to

infringe - immediacy =
time, while reality (vs.
148
hypothetical) = whether
the infringement is
substantially fixed as
opposed to fluid and
indeterminate at the
time DJ relief is sought
(Arkema, 2/5/13
(distinguishing
Matthews); Matthews
Intl, 9/25/12 (DJ
plaintiff failed to provide
evidence of the specific
parameters under which
its units would likely be
operated, and thus
determine whether
infringing judicial
determination would be
an advisory opinion
based on hypothetical
facts); Cat Tech., 5/28/08
(significant, concrete
steps were taken to
infringe, and thus the
dispute was immediate
and real, where the DJ
plaintiff was prepared to
produce catalyst loading
devices as soon as
customized orders were
received from customers,
and all of the devices
were substantially fixed,
i.e., would not change in
design)); Medimmune,
10/18/05; Medimmune,
6/1/05; Teva, 1/21/05;
149
Sierra Applied Sciences,
4/13/04)
- Meaningful
preparation for making
or using the potentially
infringing product is
required; in general, the
greater the length of time
before potentially
infringing activity is
expected to occur, the
more likely the case
lacks the requisite
immediacy Sierra
Applied Scis. (Arkema,
2/5/13; Matthews Intl,
9/25/12; Myriad, 8/16/12
(some day intentions
do not support standing);
Cat Tech., 5/28/08)
- Sales literature for the

product or otherwise
disclosing the product to
potential customers is not
an indispensable
prerequisite as long as
all the circumstances
otherwise support DJ
jurisdiction (Cat Tech.,
5/28/08)
- Suppliers standing to bring DJ

action where only the suppliers
customers are accused of direct
infringement, if 1) supplier is
obligated to indemnify the
150
customer for infringement, or
2) dipute between the patentee
and supplier regarding induced
or contributory infringement =
the patentees implicit assertion
of indirect infringement
(Matthews Intl, 9/25/12 (n.4:
dispute not ripe for review);
Arris Group, 5/19/11 (DJ
jurisdiction based on possible
contributory infringement by
the DJ plaintiff-supplier))
- Standing, ripeness, and lack of

mootness doctrines can be a helpful
guide in applying the all-the-
circumstances test, as satisfying these
doctrines represents the absolute
constitutional minimum for a
justiciable controversy (3M, 3/26/12
(the parties framed the DJ issue as a
standing question); Prasco, 8/15/08
(knowledge of a patent is not enough
for standing; rather, it is the reality of
the threat of injury that is relevant to
the standing inquiry, not the
plaintiffs subjective apprehensions,
i.e., there must be an injury or threat
of injury caused by the defendant for
there to be an Article III case or
controversy)); See also Standing,
ripeness, and mootness requirements
Old standard
- [Old standard] Actual controversy

between interested parties (28 USC
151
2201(a)) is established based on the totality
of circumstances and a two-part test: 1) an
explicit threat or other action by the
patentee, which creates a reasonable
apprehension on the part of the DJ plaintiff
that it will face an infringement suit, and 2)
present activity by the DJ plaintiff which
could constitute infringement, or concrete
steps taken with the intent to conduct such
activity [The reasonable apprehension of
suit prong of the two-part test was
rejected by the U.S. Supreme Court in
Medimmune v. Genentech, decided on
1/9/07 (see footnote 11) see Sandisk v.
STMicroelectronics, 3/26/07 (The
Supreme Courts opinion in Medimmune
represents a rejection of our reasonable
apprehension of suit test . . . We leave to
another day the effect of Medimmune, if
any, on the second prong.); see
discussion of Medimmune v. Genentech
below] (Plumtree Software, 12/18/06;
Microchip Tech., 3/15/06; Medimmune,
10/18/05 [reversed by the U.S. Supreme
Court on 1/9/07]; Medimmune, 6/1/05;
Teva, 1/21/05; Sierra Applied Sciences,
4/13/04; Gen-Probe, 3/5/04)
- DJ plaintiffs purported apprehension

of its customers being sued, absent
any adverse legal interest existing
between the plaintiff and defendant
(or between the plaintiffs customers
and the defendant, with legal
relationship between the plaintiff and
customer, e.g., indemnity agreement)
does not satisfy reasonable
apprehension test (Creative
152
Compounds, 6/24/11 (economic
interest only in the absence of an
indemnity agreement between the DJ
plaintiff and its customers); Arris
Group, 5/19/11 (concluding other
bases for DJ jurisdiction); Microchip
Tech., 3/15/06); See also Cisco
Systems, 8/29/13 (nonprecedential
affirming no DJ jurisdiction over suit
by supplier, despite pending suits
against the suppliers customers,
where no indemnity agreements
between the supplier and customers,
and the supplier had not sought to
intervene in any of the customer
cases)
- Reasonable apprehension prong is a

constitutional, rather than prudential,
requirement (Teva, 1/21/05)
- Reasonable apprehension of
imminent suit is necessary (Teva,
1/21/05 [rejected by Medimmune
(S.C.)])
- Reasonable apprehension is not

dissipated by the passage of time,
where the patentee does not sign a
covenant not to sue; reasonable
apprehension may only be eliminated
in narrow circumstances because
otherwise a patent holder could
attempt extra-judicial patent
enforcement with scare-and-run
tactics that the DJ Act was intended to
forstall (Prasco, 8/15/08 (no DJ
jurisdiction despite the DJ defendant,
153
patentees failure to sign a covenant
not to sue); Plumtree Software,
12/18/06)
- Two-part test is objective (Capo,

10/25/04)
- Two-part test is applied

separately to different products,
to avoid the risk of an advisory
opinion (Sierra Applied
Sciences, 4/13/04)
Burden on DJ plaintiff
- Burden is on the party claiming DJ

jurisdiction to establish that such jurisdiction
existed at the time the claim for declaratory
relief was filed and that it has continued
since (Organic Seed Growers, 6/10/13;
Arkema, 2/5/13; Matthews Intl, 9/25/12;
Dey Pharma, 4/16/12 (question of whether a
controversy existed at a later stage of a DJ
action by a second ANDA filer was
governed by mootness doctrine the party
arguing the case is moot bears the heavy
burden of persuading the court); Streck,
1/10/12 (no DJ jurisdiction over unasserted
or withdrawn patent claims); Powertech,
9/30/11; Arris Group, 5/19/11; King, 8/2/10;
Dow Jones, 5/28/10; Innovative Therapies,
4/1/10 (amended complaint, which was
actually a supplemental complaint under
FRCP 15(d), did not create DJ jurisdiction
based on acts subsequent to the filing of the
original DJ complaint, citing the Benitec
rule); Janssen, 9/4/08; Benitec, 7/20/07 (DJ
154
counterclaims)); See also Cisco Systems,
8/29/13 (nonprecedential); Panavise Prods.,
1/6/09 (nonprecedential the DJ plaintiff
failed to demonstrate facts sufficient to rebut
the defendants factual challenge to DJ
jurisdiction)
- Case or controversy, presence or

absence thereof, is based on facts at
time the complaint was filed, and
must continue since the time the
complaint was filed (Streck, 1/10/12;
Innovative Therapies, 4/1/10 (DJ
jurisdiction is determined at the time
of the original complaint, rather than
at the time of an amended complaint,
distinguishing Prasco which did not
. . . change the rule that unless there
was jurisdiction at the filing of the
original complaint, jurisdiction could
not be carried back to the date of the
original pleading); Janssen, 9/4/08;
Benitec, 7/20/07) later events
cannot create jurisdiction (Prasco,
8/15/08 (issue of DJ jurisdiction was
based on the amended complaint, as
the proper focus in determining
jurisdiction are the facts existing at
the time the complaint under
consideration was filed);
Medimmune, 6/1/05; Sierra Applied
Sciences, 4/13/04); See also Panavise
Prods., 1/6/09 (nonprecedential the
allegations in the complaint are not
controlling if a DJ defendant
adequately challenges jurisdiction in
fact)
155
- Jurisdiction must exist at all
stages of review, and not
merely at the time the
complaint was filed Benitec
(Streck, 1/10/12)
- Jurisdiction based on events

subsequent to the original complaint
does not relate back to the filing date
of the original complaint (Matthews
Intl, 9/25/12 (affirming that district
court was without authority to
consider system patent issued and
added to case after the filing of the
original complaint, where the court
had no jurisdiction over method
patents in the original complaint);
Innovative Therapies, 4/1/10)
- If a party has actually been charged

with infringement, there is necessarily
a case or controversy adequate to
support (DJ) jurisdiction at that time
(i.e., via counterclaims) Cardinal
Chemical (S.C.) (Innovative
Therapies, 4/1/10; Benitec, 7/20/07
(addressing whether subsequent
events can divest the district courts
jurisdiction))
- Once burden has been met, absent

further information, the jurisdiction
continues; the burden of bringing
forth such further information may
logically rest with the party
challenging jurisdiction, but the actual
burden of proof remains with the
party seeking to invoke jurisdiction
156
(Dey Pharma, 4/16/12 (discussing
Benitec and the mootness doctrine as
applied to a DJ action by a second
ANDA filer to trigger a first ANDA
filers exclusivity period); Benitec,
7/20/07 (see J. Dyk, dissenting - that
Cardinal Chemical (S.C.) holds that
the burden shifts to the party seeking
to divest the court of jurisdiction to
prove there is no longer a current case
or controversy; a different test for
determining whether there is a case or
controversy applies when the
allegation of infringement is
withdrawn during the course of
litigation if a patentee files an
infringement suit and the particular
claim of infringement is mooted, an
invalidity counterclaim should not be
dismissed unless that patentee
demonstrates that there is no
possibility of a future controversy
with respect to invalidity Cardinal
Chemical (S.C.); important interest in
protecting the legal system against
manipulation by parties))
- DJ plaintiff need not present evidence

of indirect infringement for DJ
jurisdiction -- since the very purpose
of the DJ action is to seek a judicial
determination that the DJ plaintiff is
not indirectly infringing (Matthews
Intl, 9/25/12; Arris Group, 5/19/11)
- Allegations alone are insufficient to meet the

DJ plaintiffs burden to establish
jurisdiction, once challenged (3M, 3/26/12
157
(remanding for the district court to
determine facts in the first instance relevant
to whether DJ jurisdiction))
- DJ action for noninfringement by licensee

against the patentee-licensor the DJ
plaintiff (licensee) has the burden of
persuasion on noninfringement when the DJ
defendant (patentee-licensor) is unable to
bring a counterclaim for infringement
because of the license (Medtronic, 9/18/12
(providing as the reason for the above rule
that the accused infringer-licensee was the
party requesting relief from the court as to
its obligations under the license agreement)
granted certiorari in Medtronic v. Boston
Scientific the question presented is
whether, in a DJ action brought by a
licensee under Medimmune (i.e., where
the licensee was not required to break or
terminate its license agreement before
seeking the DJ), the licensee has the
burden to prove that its products do not
infringe the patent, or whether (as is the
case in all other patent litigation,
including other DJ actions), the patentee
must prove infringement?]
Standing, ripeness, and mootness requirements
- Standing and ripeness required - for a

justiciable Article III controversy, need
standing and ripeness (shown by all the
circumstances test) - the party instituting
the action must have standing (allege injury-
in-fact, i.e., personal injury fairly traceable
158
to the defendants allegedly unlawful
conduct, which is likely (rather than merely
speculative) to be redressed by the requested
relief Lujan (S.C.)), and that the issue be
ripe for adjudication (i.e., focuses on
whether the defendants actions have
harmed, are harming, or are about to harm
the plaintiff) (Myriad, 8/16/12 (passage of
time since threatening communications to
the DJ plaintiff from the patentee did not
detract from DJ jurisdiction); 3M, 3/26/12;
Prasco, 8/15/08; Caraco, 4/1/08 (closely
examines standing (and the elements of
standing), ripeness, and mootness
requirements in the context of a DJ action
brought by a subsequent Paragraph IV
ANDA filer); Teva, 3/30/07); See also
APPELLATE/DISTRICT COURT
JURISDICTION - Standing
- Injury in fact traceable to the patentee

the DJ plaintiff must allege an
affirmative act by the patentee
relating to the enforcement of his
patent rights SanDisk (3M, 3/26/12)
- Injury in fact alleged in most DJ

actions in the patent context for
establishing standing a restraint on
the free exploitation of non-infringing
goods or an imminent threat of such
restraint Red Wing Shoe Co.
(Prasco, 8/15/08; Caraco, 4/1/08)
- Patentee can cause such injury

in a variety of ways, including
creating a reasonable
apprehension of suit,
159
demanding the right to royalty
payments, or creating a barrier
to the regulatory approval of a
product that is necessary for
marketing (e.g., Caraco)
(Prasco, 8/15/08)
- Mootness doctrine requires that the

requisite personal stake that is
required for a party to have standing
at the outset of an action must
continue to exist throughout all stages
of the action (Caraco, 4/1/08 (NDA
holders unilateral covenant not to sue
a subsequent Paragraph IV ANDA
filer did not render moot the
subsequent ANDA filers DJ action,
where the covenant not to sue did not
eliminate the controversy, which
could only be resolved by a judgment
that determined whether the ANDA
filers generic drug was infringing));
See also Nissim, 12/11/12
(nonprecedential)
District courts discretion
- Discretion of district court - exercise of

jurisdiction over a DJ action is discretionary,
even if an actual controversy exists 28
USC 2201 court . . . may declare the
rights . . . (Matthews Intl, 9/25/12; 3M,
3/26/12 (declining to opine on a
discretionary decision that the district court
had yet to make, after remanding for fact
findings relevant to whether there was DJ
jurisdiction); Powertech, 9/30/11 (district
160
court abused its discretion in dismissing DJ
action by ignoring forum selection clause in
license agreement, in light of choice-of-law
provision manifesting the parties intent that
California law apply to the license
agreement); Teva, 10/6/10 (discretion also
applies to Hatch-Waxman cases despite
shall in Section 271(e)(5)); Innovative
Therapies, 4/1/10; Cat Tech., 5/28/08 (the
district court has no discretion to decide the
case when no actual controversy, but does
have discretion even when there is an actual
controversy); Micron Technology, 2/29/08
(discretion abused in dismissing DJ action);
Sony Electronics, 8/3/07; Teva, 3/30/07;
Sandisk, 3/26/07; Tegic Communications,
8/10/06; Capo, 10/25/04; Sierra Applied
Sciences, 4/13/04)
- Courts have unique and substantial

discretion under the DJ Act in
deciding whether to declare the rights
of litigants Wilton (S.C.) (Matthews
Intl, 9/25/12 (n.3); Innovative
Therapies, 4/1/10 (no abuse of
discretion in dismissing DJ action,
citing Sony); Sony Electronics,
8/3/07)
- Court must determine whether

resolving the case serves the
objectives for which the DJ Act was
created - Capo (Innovative Therapies,
4/1/10 (objectives of the DJ Act
would not be served where the DJ
plaintiff used informal phone
conversations with the patentees
employees as a ploy to create DJ
161
jurisdiction); Cat Tech., 5/28/08 (that
the plaintiff need not bet the farm, or
. . . risk treble damages . . . before
seeking a declaration of its actively
contested legal rights vs. abandoning
that which has a right to do is
precisely the type of dilemma to be
resolved by the DJ Act Medimmune
(S.C.))); See also Astrazeneca,
- Boundaries to a district courts

discretion (Teva, 10/6/10 (discretion
is not unbounded the district court
abused its discretion (as defined) in
declining DJ jurisdiction); Micron
Technology, 2/29/08; Sony
Electronics, 8/3/07) when there is an
actual controversy and a DJ would
settle the legal relations in dispute and
afford relief from uncertainty or
insecurity, in the usual circumstances
the DJ is not subject to dismissal
(Micron Technology, 2/29/08;
Sandisk, 3/26/07)
- Exercise of discretion must be

supported by a sound basis for
refusing to adjudicate an actual
controversy (Teva, 10/6/10 (no sound
basis); Sandisk, 3/26/07); See also
Astrazeneca, 10/30/13
(nonprecedential no abuse of
discretion in dismissing without
prejudice invalidity counterclaims
after noninfringement found - citing
Capo)
162
- Pending reexamination
suggested by the CAFC as a
basis for exercising discretion
to dismiss or stay DJ action
(Sony Electronics, 8/3/07)
- Infringement counterclaim in
response to a DJ action is not
necessary for the district courts
jurisdiction - Capo (Adenta, 9/19/07
(DJ of invalidity))
- Withdrawn patent claims district

court retains jurisidiction over request
for declaratory relief for invalidity of
withdrawn claims, when the patentee
does not withdraw related claims
(Honeywell, 5/25/07); See also
Astrazeneca, 10/30/13
(nonprecedential no abuse of
discretion in dismissing without
prejudice invalidity counterclaims
with respect to withdrawn claims)
Existence of patent not enough
- More is required for an actual controversy

than the existence of an adversely held
patent objective standard whether the
patentee manifested an intention to enforce
patent(s) (Organic Seed Growers, 6/10/13;
Matthews Intl, 9/25/12; Myriad, 8/16/12
(DJ jurisdiction based on only one DJ
plaintiff who alleged affirmative patent
enforcement actions directed at them by the
DJ defendant-patentee); 3M, 3/26/12;
Creative Compounds, 6/24/11 (DJ
163
(counterclaim) plaintiff had at most an
economic interest in clarifying its
customers rights under the DJ defendants
patent, and the existence of the DJ
defendants patent would not affect the DJ
plaintiffs own patent); Innovative
Therapies, 4/1/10 (Medimmune (S.C.) did
not hold that a patent can always be
challenged whenever it appears to pose a
risk of infringement); Hewlett-Packard,
12/4/09; Prasco, 8/15/08 (referring to the
bedrock rule that a case or controversy
must be based on a real and immediate
injury or threat of future injury that is
caused by the defendants an objective
standard that cannot be met by a purely
subjective or speculative fear of future
harm); Sandisk, 3/26/07; Teva, 1/21/05;
Capo, 10/25/04)
Patentees lack of assurances or silence on

enforcement
- Patentees refusal to give assurances that it

will not enforce its patent, although relevant
to the DJ determination, is not dispositive
(3M, 3/26/12; Arris Group, 5/19/11 (citing
Prasco for rule that relevant to DJ
determination, where the patentee refused to
grant a covenant not to sue); Prasco, 8/15/08
(stating with regard to the patentees failure
to sign a covenant not to sue after receiving
samples of the competitors product: A
patentee has no obligation to spend the time
and money to test a competitors product nor
to make a definitive determination, at the
time and place of the competitors choosing,
164
that it will never bring an infringement suit.
And the patentees silence does not alone
make an infringement action or other
interference with the plaintiffs business
imminent.); See also Covenant not to sue
Patentees statements regarding enforcement
- Direct communication between a patentee

and a DJ plaintiff is unnecessary to confer
standing Arrowhead; but, the nature and
extent of any communications between the
two are relevant factors for determining if
DJ jurisdiction (3M, 3/26/12 (DJ jurisdiction
existed based on facts where the patentees
counsel expressly told the DJ plaintiffs
counsel that a specific product may
infringe and that licenses are available);
Arris Group, 5/19/11 (DJ jurisdiction where
DJ plaintiff-supplier was within the
patentees primary intended audience))
- Patentee need not disclose deadlines

for DJ jurisdiction (3M, 3/26/12)
- Cease and desist letter DJ jurisdiction

(Green Edge, 9/7/10)
- DJ action cannot be defeated simply

by the stratagem of a correspondence
that avoids magic words such as
litigation or infringement
Hewlett-Packard (3M, 3/26/12; Arris
Group, 5/19/11; ABB, 2/17/11
(warning letters sent by the patentee
indicated an immediate controversy
surrounding infringement))
165
- Statements made by the patentees
employees (3M, 3/26/12 (distinguishing
Innovative Therapies where phone
conversation was initiated by the patentees
counsel); Innovative Therapies, 4/1/10
(impromptu statements regarding patent
enforcement made by the patentees
employees during informal phone
conversations with employees of the DJ
plaintiff in the guise of friendly
conversations did not constitute a threat of
suit for infringement against a device that
the patentee had not seen or evaluated for
infringement))
Prior, other pending litigation with the patentee
- Course of conduct of the patentee (e.g.,

prior suits involving the same technology,
and same parties, patents) considered in
assessing the totality of the circumstances
(Myriad, 8/16/12 (that DJ plaintiff was
aware that patentee was asserting patent
rights against other similarly situated parties
supported DJ jurisdiction); 3M, 3/26/12
(patentee was a direct competitor with a
history of enforcing its patent rights against
the DJ plaintiff); Powertech, 9/30/11 (DJ
jurisdiction based on other pending suits
(district court and ITC) by the patentee
regarding the same patent against the DJ
plaintiffs customers); Green Edge, 9/7/10
(single suit was not a pattern); Innovative
Therapies, 4/1/10 (no actual controversy was
established between the parties, despite the
patentees prior litigations, in the absence of
166
any act by the patentee directed toward the
DJ plaintiff, and where the patentee had not
seen and evaluated the DJ plaintiffs product
citing Prasco and distinguishing Micron
Tech.); Hewlett-Packard, 12/4/09 (n.1);
Prasco, 8/15/08 (prior litigious conduct is
one circumstance to be considered in
assessing whether the totality of
circumstances creates an actual
controversy); Micron Technology, 2/29/08;
Adenta, 9/19/07; Teva, 3/30/07; Plumtree
Software, 12/18/06); See also Panavise
Prods., 1/6/09 (nonprecedential the fact
that the defendant routinely enforced its
patent rights, when viewed under the totality
of the circumstances, was insufficient to
create an actual controversy, where the prior
lawsuits involving the same patent
concerned different products, and the DJ
plaintiff did not argue that its product was
similar to any of those accused products)
- Related litigation involving the same

technology and the same parties is
relevant in determining whether a
justiciable DJ controversy exists on
other related patents (Organic Seed
Growers, 6/10/13 (citing cases);
Arkema, 2/5/13; Prasco, 8/15/08
(prior suit based on different products
and unrelated patent failed to show
controversy); Teva, 3/30/07)
- An amorphous, widespread
understanding of a risk of suit is not
sufficient Myriad (Organic Seed
Growers, 6/10/13 (n.3))
167
Covenant not to sue
- Covenant (vs. promise) not to sue divests a

court of jurisdiction (Organic Seed Growers,
6/10/13 (covenant not to sue was not given,
but the patentees representations, which
unequivocally disclaimed any intent to sue
appellants for inadvertently using or selling
trace amounts of patented genetically
modified seed, had a similar effect, divesting
the district court of DJ jurisdiction the
patentees representations were binding as a
matter of judicial estoppel); Arris Group,
5/19/11 (DJ jurisdiction despite an alleged
express disclaimer of infringement and
counsels statements to the same effect
during CAFC oral argument, where neither
amounted to a covenant not to sue the DJ
plaintiff-supplier for indirect infringement;
n.15 citing cases); King, 8/2/10 (no case or
controversy and thus vacating invalidity
judgment based on a counterclaim against a
former patent owner who sold all rights in
the patents to the plaintiff and represented to
both the district court and the defendant that
it waived any right to seek damages for past
infringement a broad and unrestricted
covenant not to sue); Dow Jones, 5/28/10
(district court was divested of jurisdiction to
decide anticipation counterclaim after the
patentee granted a covenant not to sue,
despite any prudential reasons for the
district court to render the judgment);
Revolution Eyewear, 2/13/09 (covenant not
to sue for past infringement did not divest
the district court of jurisdiction over
declaratory counterclaims where the
covenant did not extend to future sales of the
168
same product sued upon; distinguished
district court cases where covenants not to
sue included future infringement of the same
product); Janssen, 9/4/08 (Caraco
distinguished; also, a covenant was not
deficient where having manufactured
language expressly covered all suppliers and
affiliates involved in manufacturing, as well
as downstream customers); Prasco, 8/15/08
(DJ defendant, patentees failure to sign
covenant not to sue was not dispositive of
whether or not DJ jurisdiction); Caraco,
4/1/08 (district court had jurisdiction over a
subsequent Paragraph IV ANDA filers DJ
action, despite the NDA holders covenant
not to sue the ANDA filer for infringement
(notably, the covenant did not concede
noninfringement of the subject patent),
because an actual controversy existed based
on the ANDA filers need to trigger the 180-
day exclusivity period of the first Paragraph
IV ANDA filer before the subsequent filers
ANDA could be approved); Monsanto,
1/25/08 (district court retained independent
jurisdiction to hold patents no longer in the
case were unenforceable for IC based on the
DJ plaintiffs request for attorney fees under
Section 285); Benitec, 7/20/07 (no actual
controversy based on all the circumstances
where the possibility of future infringement
was too speculative); Plumtree Software,
12/18/06; Tegic Communications, 8/10/06;
Microchip Tech., 3/15/06); See also Cisco
affirming no DJ jurisdiction where patentee
was willing to grant an unqualified covenant
not to sue); Merck, 7/16/08 (nonprecedential
- exception to the rule in the Hatch-Waxman
169
context, citing Caraco); Apotex v. Pfizer,
4/11/05 (nonprecedential - Apotexs appeal
was mooted by Pfizers covenant not to sue
Apotex for infringement (executed by Pfizer
only days before oral argument) a
covenant not to sue moots an action for
declaratory judgment); See also
JURISDICTION - Subject matter
jurisdiction
- Covenant not to sue is distinguishable

from a limited standstill period (for
the parties to discuss patent rights)
(Hewlett-Packard, 12/4/09)
- Covenant not to sue by the patentee

filed after a noninfringement decision
by the jury does not divest the district
court of jurisdiction to hear the
accused infringers counterclaims, vs.
covenant not to sue filed prior to
resolution of the underlying
infringement claim does divest the
district court of DJ jurisdiction (Dow
Jones, 5/28/10 (addressing rule, under
which the district court was unable to
decide an anticipation counterclaim);
Benitec, 7/20/07 (see J. Dyk,
dissenting the majority limit[s] the
availability of DJ jurisdiction to
challenge invalid and unenforceable
patents by allowing patentees to moot
such controversies by dismissing the
original infringement action and
covenanting not to bring suit on
existing products, without any
showing that the controversy will not
170
recur in the future); Fort James,
6/22/05)
- Mere promise not to sue does not

moot the actual controversy created
by the promissors acts (Sandisk,
3/26/07)
- Patentees failure to provide (sign) a

covenant not to sue is one circumstance to
consider in evaluating the totality of the
circumstances - although a patentees
refusal to give assurances that it will not
enforce its patent is relevant to the DJ
jurisdiction determination, it is not sufficient
to create an actual controversy some
affirmative action(s) by the DJ defendant-
patentee also generally will be necessary
(Arkema, 2/5/13 (absence of the patentee
granting a covenant not to sue supported DJ
jurisdiction citing Already v. Nike (S.C.));
3M, 3/26/12 (may add additional support for
an existing controversy); Arris Group,
5/19/11(DJ jurisdiction was based on several
facts, including the patentee not granting a
covenant not to sue); Prasco, 8/15/08 (the
patentees failure to sign a covenant not to
sue did not show, under the totality of the
circumstances, an actual controversy
between the parties of sufficient immediacy
and reality to warrant DJ jurisdiction)
First-filed case rule
- First-filed case rule is not determinative of

which court hears the dispute the more
appropriate analysis is for the district court
171
to apply the convenience factors for a
transfer action under 28 USC 1404(a), as
the real underlying dispute is the
convenience and suitability of competing
forums (Powertech, 9/30/11 (DJ action was
dismissed improperly in favor of pending
action in Texas, where transfer factors did
not favor the Texas venue and DJ actions
relating to the same patent were already
pending in the N.D. of Cal.); Innovative
Therapies, 4/1/10 (convenience factors did
not weigh against the district courts
dismissal of DJ action, and stating that
Micron did not hold that forum
convenience is the dominant consideration
relevant to the courts exercise of discretion
in every case); Micron Technology,
2/29/08 (where the parties (the accused
infringer filing a DJ action and the patentee
the next day filing an infringement action)
were really just contesting the location and
right to choose the forum of their inevitable
suit)
- First-filed case rule (when the accused

infringer files a DJ action in anticipation of
the patentee filing an infringement suit)
the first-filed case is favored unless it would
be unjust or inefficient to permit the first-
filed case to proceed to judgment district
court has discretion, applying principles of
comity (Merial, 5/31/12 (affirming denial of
motion to stay contempt proceedings in first
case in favor of a later DJ action alleging
noninfringement and invalidity of the same
patent); Innovative Therapies, 4/1/10
(infringement suits filed before the DJ
plaintiffs supplemental pleading were
172
favored, citing Electronics for Imaging);
Electronics for Imaging, 1/5/05)
- Customer suit exception

exception to the general rule that
favors the forum of the first-filed
action - a manufacturers action to
resolve patent infringement charges
against its customers receives
preferential treatment over a patent
owners earlier filed suit against the
customers (Spread Spectrum, 9/26/11
(rejecting the plaintiffs argument for
interlocutory review of stay order that
the district courts order resulted from
an erroneous application of the
customer suit exception, including
that no manufacturer DJ action was
involved in the case); Tegic
Communications, 8/10/06); See also
CSIRO, 10/23/08 (nonprecedential
customer suit doctrine under
which litigation against or brought by
the manufacturer of infringing goods
takes precedence over a suit by the
patent owner against the
manufacturers customers)
Past and future infringement
- Past infringement - jurisdiction can be based

on past infringement (just as a patentee can
bring a claim for past damages within 6
years) (Sierra Applied Sciences, 4/13/04)
- Patentee against a future infringer two

factors considered (Metabolite Labs, 6/8/04)
173
Licensing of patents Medimmune v. Genentech (S.C.)
- [Old rule] License = no actual

controversy under the DJ Act, 28 USC
2201(a), if a licensee in good standing - the
licensee has no reasonable apprehension of
suit absent a material breach of the license,
e.g., stop paying royalties a licensee in
good standing thus has no standing to sue
for DJ of patent invalidity, and a court has
no DJ jurisdiction - Gen-Probe (Pactiv,
6/5/06 (DJ plaintiff in breach of license
agreement = jurisdiction); Medimmune,
10/18/05 [On 1/9/07, the U.S. Supreme
Court reversed the CAFCs decision in
Medimmune, resolving the issue of
whether Article IIIs limitation of federal
courts jurisdiction to Cases and
Controversies, as reflected in the
actual controversy requirement of the
Declaratory Judgment Act, 28 USC
2201(a), requires a patent licensee to
terminate or be in breach of its license
agreement (i.e., refuse to pay royalties)
before it can seek a DJ action that the
underlying patent is invalid,
unenforceable, or not infringed; the
Supreme Court held, 8-1 (Justice
Thomas, dissenting), that the licensee
(Medimmune) was not required, insofar
as Article III is concerned, to break or
terminate the license agreement before
seeking a DJ action in federal court that
the underlying patent is invalid,
unenforceable, or not infringed; the
Court explained that the CAFCs rule
174
that the licensee must first refuse to pay
royalties, and thus risk treble damages
[as well as attorneys fees] and the loss of
80 percent of its business [because of an
injunction], before seeking a declaration
of its actively contested legal rights finds
no support in Article III; the Court
reasoned that the threat-eliminating
behavior (i.e., the payment of royalties
under protest) was effectively coerced
by the possibility of treble damages and
an injunction in the absence of payment,
citing Altvater v. Freeman, 319 U.S. 359
(1943) (which held that a licensees failure
to cease payment of royalties did not
render non-justiciable a dispute over the
validity of the patent]; Medimmune,
6/1/05; Metabolite Labs, 6/8/04; Gen-Probe,
3/5/04)
- Licensee need not repudiate license

agreement by refusing to pay royalties
in order to have standing to declare a
patent invalid, unenforceable, or not
infringed MedImmune (S.C.)
(Cummins, 12/5/12 (based on
Medimmune (S.C.), rejecting
argument for no res judicata based on
prior judgment in patent license
dispute case because the district court
lacked jurisdiction to adjudge the
invalidity and unenforceability of the
patents where the appellant had
continued making royalty payments);
Powertech, 9/30/11 (DJ plaintiff-
licensee under MedImmune (S.C.) was
not required to repudiate its license
agreement to define its rights and
175
obligations under its contract with the
patentee))
- Distinguished from Lear v. Adkins

(S.C.) = no licensee estoppel when
the DJ plaintiff is not a defaulting
licensee (Medimmune, 10/18/05)
- [Old rule] License = covenant not to

sue or disturb the licensees activities
deprives the court of DJ jurisdiction
(Medimmune, 6/1/05; Metabolite
Labs, 6/8/04)
- Offer of license conduct prior to the

existence of a license an affirmative act by
the patentee is required for DJ jurisdiction -
Sandisk (3M, 3/26/12 (DJ jurisdiction based
on the patentees license offer and that a
specific product may infringe); Innovative
Therapies, 4/1/10 (citing Sandisk rule, where
the patentees prior suits based on the patent
did not create DJ jurisdiction); Hewlett-
Packard, 12/4/09 (Medimmune (S.C.)
certainly lowered the bar for there being
DJ jurisdiction in the licensor-licensee
context; patent owner took the affirmative
step of twice contacting the DJ plaintiff
directly, and implicitly asserted its patent
rights against a specific product line of the
plaintiff); Sony Electronics, 8/3/07; Sandisk,
3/26/07, see also J. Bryson, concurring
virtually any invitation to take a paid license
would give rise to an Article III case or
controversy)
- Art. III jurisdiction may be met where

the patentee takes a position that puts
176
the DJ plaintiff in the position of
either pursuing arguably illegal
behavior or abandoning that which he
claims a right to do (Arkema, 2/5/13;
Adenta, 9/19/07 (DJ defendant
indicated an intent to assert rights
under the patent if the DJ plaintiff
failed to pay royalties under the
license agreement created
substantial controversy and DJ
jurisdiction; *the CAFC also relied on
the fact that the DJ plaintiff had
stopped paying the royalties, citing
Medimmune (S.C.))); the outer
boundaries of DJ jurisdiction depend
on the application of the principles of
DJ jurisdiction (from Medimmune
(S.C.)) to the facts and circumstances
of each case (Sony Electronics, 8/3/07
(license offers; negotiations; detailed
claims and prior art, validity analyses
(i.e., charts); damages requests);
Sandisk, 3/26/07)
- Holding of Sandisk Article III

jurisdiction may be met where the
patentee takes a position that puts the
DJ plaintiff in the position of either
pursuing arguably illegal behavior or
abandoning that which he claims a
right to do; where a patentee asserts
rights under a patent based on certain
identified ongoing or planned activity
of another party, and where that party
contends that it has the right to engage
in the accused activity without
license, an Art. III case or controversy
will arise and the party need not risk
177
an infringement suit by engaging in
the identified activity (i.e., need not
bet the farm, so to speak) before
seeking a declaration of its legal
rights - Sandisk (Arkema, 2/5/13;
Hewlett-Packard, 12/4/09 (DJ
jurisdiction over a patent holding
company that sent a letter referring to
the relevance of the patent to a
specific product line of the DJ
plaintiff, and gave a two-week
deadline for response, and the patent
owner declined to agree to a standstill
period to discuss the patent);
Revolution Eyewear, 2/13/09; Adenta,
9/19/07; Sony Electronics, 8/3/07;
Benitec, 7/20/07; Sandisk, 3/26/07)
- A party to licensing
negotiations is within its rights
to terminate negotiations when
they appear unproductive; thus,
a patentees continued
willingness to engage in
licensing negotiations does not
prevent a plaintiff from
maintaining a DJ action, i.e.,
one party is not required to
negotiate with the other (Sony
Electronics, 8/3/07; Sandisk,
3/26/07)
- Settlement, licensing negotiations
- Confidentiality agreements to
avoid the risk of a DJ action
(3M, 3/26/12 (n.2); Hewlett-
Packard, 12/4/09 (DJ
178
jurisdiction where the patent
owner failed to propose a
confidentiality agreement and
failed to agree to a standstill
period to discuss the patent);
Sandisk, 3/26/07, see also J.
Bryson, concurring)
- Filing a DJ action as a tactical

measure to improve the
plaintiffs bargaining position
in ongoing license negotiations,
which is not a purpose that the
DJ Act was designed to deserve
EMC (Sony Electronics,
8/3/07)
- Affirmative evidence
necessary (Hewlett-
Packard, 12/4/09 (DJ
jurisdiction where patent
rights were implicitly
asserted in letter); Sony
Electronics, 8/3/07)
- FRE 408 expressly relates to

evidence of efforts toward
compromising or attempting to
compromise a claim in
litigation and does not prevent
a party from relying on
licensing discussions and an
infringement study to support
its claims for DJ (Sandisk,
3/26/07)
Supplemental jurisdiction
179
Generally
- Supplemental jurisdiction 28 USC 1367

provides the statutory authority for district courts
to exercise supplemental jurisdiction over certain
claims outside their original jurisdiction (Dow
Jones, 5/28/10 (each claim over which a district
court exercises supplemental jurisdiction must
have standing on its own); HIF Bio, 3/31/10; HIF
Bio, 11/13/07 [reversed by S.C. and remanded];
Voda, 2/1/07 (no jurisdiction in U.S. courts for
infringement of foreign patent claims); Highway
Equipment, 11/21/06; Nippon Telephone, 7/13/05;
Air Turbine Tech., 6/7/05; On-Line Technologies,
10/13/04; Electronics, 8/18/03); See also Beriont,
- Proper exercise of subject matter jurisdiction

pursuant to 1367 requires both the
presence of jurisdiction under subsection (a)
and an appropriate decision, i.e., use of the
district courts discretion, to exercise that
jurisdiction under subsection (c); CAFC
must evaluate: 1) whether 1367 authorizes
such supplemental jurisdiction, and 2)
whether the district courts exercise of such
supplemental jurisdiction was within its
1367(c) discretion (Voda, 2/1/07)
- Exercise of supplemental jurisdiction

is within the discretion of the district
court - 1367(c) (lists reasons that
district court may decline to exercise
supplemental jurisdiction); discretion
is not unfettered (Semiconductor
Energy Laboratory, 2/11/13; HIF Bio,
3/31/10 (district court abused
discretion in declining supplemental
180
jurisdiction and remanding complaint
to state court, where two causes of
action arose under Section 1338) [on
remand from S.C. after reversing
the CAFCs 2007 decision; see also
6/14/10 nonprecedential Order
amending portion of opinion]; HIF
Bio, 11/13/07 (number of state law
claims remanded to state court)
[reversed by S.C. and remanded];
Voda, 2/1/07); See also Beriont,
8/6/13 (nonprecedential);
Personalized Media, 8/23/12
(nonprecedential supplemental
jurisdiction properly declined where
related litigation pending in another
forum)
- Discretion is not whim, and

limiting discretion according to
legal standards helps promote
the basic principle of justice
that like cases should be
decided alike a page of
history is worth a volume of
logic eBay (S.C.) (Roberts,
C.J., concurring) (Voda,
2/1/07)
- 1356(a) indicates that

1367(c) constitutes an express
statutory exception to the
authorization of jurisdiction
granted by 1367(a) (Voda,
2/1/07)
- When deciding whether to decline

supplemental jurisdiction under
181
1367(c), a federal court should
consider and weigh in each case, and
at every stage of the litigation: 1)
comity (spirit of cooperation in which
a domestic tribunal approaches the
resolution of cases touching the laws
and interests of other sovereign
states), 2) judicial economy, 3)
convenience (e.g., forum non
conveniens), 4) fairness, and 5) other
exceptional circumstances Chicago
(S.C.) (Voda, 2/1/07 (foreign patent
infringement claims))
- Statutory requirement of 1367(a) that

claims be so related to claims in the action
within such original jurisdiction that they
form part of the same case or controversy
under Article III is Congresss codification
of the Supreme Courts principles of
pendent and ancillary jurisdiction by which
the federal courts original jurisdiction over
federal questions carries with it jurisdiction
over state law claims that derive from a
common nucleus of operative fact (Voda,
2/1/07)
- When federal patent claim is

dismissed for lack of standing, the
district court cannot exercise
supplemental jurisdiction over
surviving state-law claims because
there was never an Article III case or
controversy (Larson, 6/5/09)
State law claims
182
- Supplemental jurisdiction over state law claims
28 USC 1367 when district court has original
jurisdiction over a patent infringement claim, court
also can adjudicate state law claims district
courts discretion (Semiconductor Energy
Laboratory, 2/11/13 (no abuse of discretion in
declining to exercise supplemental jurisdiction
over remaining state law claims where after
correctly dismissing purported federal law claim
(based on assignor estoppel)); HIF Bio, 3/31/10;
HIF Bio, 11/13/07 (number of state law claims
remanded to state court) [reversed by S.C. and
remanded]; Highway Equipment, 11/21/06;
Crater, 9/7/05; Air Turbine Tech., 6/7/05; On-Line
Technologies, 10/13/04); See also Beriont, 8/6/13
(nonprecedential); Clark, 1/8/08 (nonprecedential
district court properly dismissed state law claims
without prejudice under section 1367(c) after
dismissing federal claims over which it had
original jurisdiction)
- Abstention doctrines when apply, district

courts may be obligated not to decide state
law claims, or stay their adjudications
(Voda, 2/1/07)
- Relatedness requirement state law claims

must be sufficiently related to federal
claim(s), on which original jurisdiction
based same case or controversy under
Art. III; state and federal claims must derive
from common nucleus of operative fact
such that they would ordinarily be expected
to be tried in one proceeding (Highway
Equipment, 11/21/06)
- Similar acts or same

instrumentality - Mars (supplemental
183
jurisdiction over claim alleging
infringement of foreign patent)
(Highway Equipment, 11/21/06)
- State law decisions are not binding on a

federal court unless rendered by the states
highest court (if none, federal court must
predict how highest court would rule); when
a federal court interprets state law, federal
court must look to the rulings of the highest
state court (Microstrategy, 11/17/05)
Infringement of foreign patents
- Supplemental jurisdiction over infringement

claims based on foreign patents Mars factors
(Voda, 2/1/07 (no jurisdiction in U.S. courts over
infringement of foreign patents))
- Abstention doctrines conditions under

which federal courts may decline
jurisdiction (Voda, 2/1/07)
- Act of state doctrine prevents U.S. courts

from inquiring into the validity of a foreign
patent grant (Voda, 2/1/07)
- Local action doctrine (Voda, 2/1/07)
- Treaties ratified by the U.S. shall be the

supreme law of the land (U.S. Const., Art.
VI, cl.2) an agreement among sovereign
powers (Voda, 2/1/07)
- Paris Convention, PCT, and TRIPS do

not contemplate or allow one
184
jurisdiction to adjudicate patents of
another (Voda, 2/1/07)
- Based on treaties ratified by U.S., a

district courts supplemental
jurisdiction over infringement of
foreign patents could undermine the
obligations of the U.S. under such
treaties, which therefore constitutes an
exceptional circumstance to decline
jurisdiction under 1367(c)(4) (Voda,
2/1/07)
Pendent appellate jurisdiction
- Pendent or ancillary appellate jurisdiction the

CAFC has power to exercise pendent appellate
jurisdiction over other issues in extraordinary
circumstances, when they are inextricably
intertwined with or necessary to ensure
meaningful review of a properly appealed
collateral order; discretionary, even if above
requirement met Swint (S.C.) (U. Utah, 8/19/13
(the CAFCs pendent jurisdiction was not needed
to consider Rule 19 (indispensable party) issue on
appeal, which was not waivable citing 1st Cir.
law); Orenshteyn, 7/26/12 (Order) (declining to
exercise jurisdiction over appeal of sanctions order
(in the form of attorney fees and costs) where
amount not yet decided applying Swint (S.C.)
tests and discussing Falana as the closest
controlling precedent, and distinguishing
Majorette Toys; see also J. Newman, dissenting
recognizing judicial efficiency and economy
considerations for pendent jurisdiction); Advanced
Fiber, 4/3/12 (requirements not met with respect to
appeal of denial of SJ of validity); Falana, 1/23/12
185
(rejecting argument with respect to non-final
exceptional case finding and attorney fees award
where the amount of the award was not quantified
distinguishing Majorette Toys); Entegris,
6/13/07; Intel, 7/14/06); See also Aevoe, 4/26/13
(Order) (nonprecedential declining to exercise
pendent jurisdiction where there was no indication
that considering the issues in an appeal of
sanctions for violating a PI order would impact or
resolve the issues regarding the separate PI ruling
citing Entegris as a similar case)
Personal jurisdiction
Generally
- Pleading personal jurisdiction - alleging personal

jurisdiction generally, without asserting a specific
basis for the courts jurisdiction over defendant,
satisfies federal pleading standards (Merial,
5/31/12)
- Analysis of personal jurisdiction in federal court

begins with FRCP 4 (service of process on the
defendant(s)) FRCP 4(k)(1)(A) (apply the
applicable state long-arm statute and governing
principles from the forum state) and 4(k)(2) (three
requirements: 1) the plaintiffs claim arises under
federal law, 2) the defendant is not subject to
jurisdiction in any states courts of general
jurisdiction (negation requirement), and 3) the
exercise of jurisdiction comports with due process)
court entitled to consider Rule 4(k)(2) even
though not raised by the parties see also
Foreign defendants (Taurus IP, 8/9/13 (court of
the state in which the district court sits (Wisconsin)
needs to have jurisdiction over a non-consenting,
nonresident defendant (applying 7th Cir. law));
186
Technology Patents, 10/17/12 (not addressing the
issue of personal jurisdiction over foreign
defendants where the CAFC was able to decide
issue on the merits see n.1 (exception to the rule
that a federal court generally may not rule on the
merits of a case without first determining that it
has jurisdiction over the subject matter and the
parties)); Merial, 5/31/12 (district court properly
applied Rule 4(k)(2) in entering a default judgment
and injunction, even though defendant would have
consented to jurisdiction in Illinois; see also J.
Schall, dissenting district court can always rely
on Rule 4(k)(2), and the plaintiff is not required to
show jurisdiction in an alternative forum proposed
by the defendant, since the defendants consent
waives personal jurisdiction); Touchcom, 8/3/09
(applying Rule 4(k)(2) on appeal in reversing the
district courts dismissal for lack of personal
jurisdiction, see also J. Prost, dissenting; the
CAFC left unanswered the question whether a
Rule 4(k)(1)(A) analysis must precede a Rule
4(k)(2) analysis); Synthes (USA), 4/17/09)
General vs. specific jurisdiction
- General jurisdiction higher burden required

(continuous and systematic general business
contacts with the forum state; e.g., the defendant
sells products, services in state; also, the cause of
action need not relate to the defendants contacts
for jurisdiction see Goodyear (S.C.) (2011) for
general jurisdiction over foreign subsidiary) vs.
specific jurisdiction (AFTG-TG, 8/24/12; Grober,
7/30/12; Radio Systems, 4/25/11; Nuance,
11/12/10 (specific jurisdiction over a foreign
defendant); Touchcom, 8/3/09 (district court had
specific jurisdiction over Canadian defendants in a
187
legal malpractice claim based on the defendants
filing of an application at the U.S. PTO; see also J.
Prost, dissenting); Autogenomics, 5/18/09 (no
jurisdiction over a foreign DJ defendant-patentee);
Synthes (USA), 4/17/09 (specific jurisdiction
only); Avocent, 12/16/08 (**extensively discusses
personal jurisdiction over a DJ defendant-patentee,
and why there was no personal jurisdiction over
such defendant here; see also J. Newman,
dissenting); Campbell, 9/18/08 (twelve sales over
eight years in forum state, and website (not
directed to customers, and no sales made, in
forum), not enough for general jurisdiction);
Breckenridge Pharmaceutical, 4/7/06; Trintec
Indus., 1/19/05; Electronics, 8/18/03); See also
Marcinkowska, 8/20/09 (nonprecedential)
General jurisdiction
- Sporadic and insubstantial contacts with the

forum state are not sufficient to establish
general jurisdiction (Grober, 7/30/12 (no
general jurisdiction based on presence at
trade shows unrelated to the accused device,
or mention on website or advertisement in
the state); Autogenomics, 5/18/09 (classic
case); Campbell, 9/18/08 (classic case
thereof))
Specific jurisdiction
- Specific jurisdiction over the defendant if

the cause of action arises out of or relates
to the defendants in-state activity Burger
King (S.C.) (AFTG-TG, 8/24/12; Grober,
7/30/12; Nuance, 11/12/10; Autogenomics,
188
5/18/09; Synthes (USA), 4/17/09; Avocent,
12/16/08; Breckenridge Pharmaceutical,
4/7/06)
- Specific jurisdiction over non-consenting,

out-of-state defendant 2-part inquiry: 1)
does jurisdiction exist under state long-arm
statute, i.e., does the long-arm statute permit
service of process on the defendant under
the circumstances of the case? (FRCP 4(e),
4(k)(1)(A)), and if so, 2) would the courts
exercise of jurisdiction satisfy due process
requirements (i.e., the nonresident defendant
must have sufficient minimum contacts
such that the maintenance of the suit does
not offend traditional notions of fair play
and substantial justice; purposeful
availment of privilege of conducting
activities in state)?; sometimes, #1
collapses into #2 (AFTG-TG (parts
collapsed under Wyoming long-arm statute),
8/24/12; Grober, 7/30/12 (parts collapsed
together under California law); Radio
Systems, 4/25/11 (Tennessees long-arm
statute coterminous with due process
limitations); Nuance, 11/12/10; Patent
Rights Protection Group, 5/10/10
(jurisdiction in Nevada was not
unreasonable, where the defendants attended
trade shows in the state); Touchcom, 8/3/09
(collapsed together under Virginia long-arm
statute); Autogenomics, 5/18/09 (collapsed
together under California long-arm statute);
Avocent, 12/16/08 (collapsed together under
Alabama long-arm statute); **Campbell,
9/18/08 (extensively addresses the
requirements for specific jurisdiction,
including the three Burger King (S.C.)
189
factors for determining whether the
defendant has purposely established
minimum contacts with the forum state,
and whether the assertion of personal
jurisdiction would comport with fair play
and substantial justice; see also below)
Medical Solutions, 9/9/08 (second part not
considered where the plaintiff failed to make
out a prima facie showing of jurisdiction
under the DC long-arm statute); Pennington
Seed, 8/9/06; Breckenridge Pharmaceutical,
4/7/06; Playtex, 3/7/05; Trintec Indus.,
1/19/05; Electronics, 8/18/03); See also
Marcinkowska, 8/20/09 (nonprecedential
The constitutional test for personal
jurisdiction has two related components: the
minimum contacts inquiry and the fairness
inquiry)
- Long arm statutes
- Federal long-arm statute

FRCP 4(k)(2) (Synthes (USA),
4/17/09)
- Alabama long-arm statute

(Avocent, 12/16/08)
- California long-arm statute

(Grober, 7/30/12; Nuance,
11/12/10; Autogenomics,
5/18/09)
- Connecticut long-arm statute

(On-Line Technologies,
10/13/04)
190
- Delaware long-arm statute
(Commissariat a lenergie
atomique, 1/19/05)
- District of Columbia long-arm

statute (Medical Solutions,
9/9/08; Trintec Indus., 1/19/05)
- Florida long-arm statute

(Breckenridge Pharmaceutical,
4/7/06)
- Missouri long-arm statute

(Pennington Seed, 8/9/06)
- Nevada long-arm statute

(Patent Rights Protection
Group, 5/10/10)
- South Carolina long-arm statute

(Marcinkowska, 8/20/09
(nonprecedential))
- Tennessee long-arm statute

(Radio Systems, 4/25/11)
- Virginia long-arm statute

(Touchcom, 8/3/09)
- Washington long-arm statute

(Campbell, 9/18/08 (two-part
inquiry collapses into one))
- Wyoming long-arm statute

(AFTG-TG, 8/24/12)
- Due process limitations minimum

contacts, stream of commerce
191
theory Worldwide Volkswagon
(S.C.), Asahi (S.C.), J. McIntyre (S.C.)
(2011) (foreign defendant), Beverly
Hills Fan (AFTG-TG, 8/24/12
(affirming no jurisdiction over
defendants in Wyoming where
insufficient contacts under the
stream of commerce theory, based
on the courts review of the
allegations in the complaint (which
were nothing more than bare
formulaic accusation); contains
extensive discussion of the Supreme
Courts split in Asahi regarding the
scope of the stream of commerce
theory, and how a recent case
McIntyre (S.C.) did not resolve the
split and change the law; the CAFC
thus followed its own precedent on
the stream of commerce theory,
Beverly Hills Fan Co.; see also J.
Rader, concurring proposing a new
something more rule when applying
the stream of commerce theory,
based on the Supreme Court
precedent ); Nuance, 11/12/10
(jurisdiction based on an established
distribution channel, citing Beverly
Hills Fan); Touchcom, 8/3/09
(purposefully establishing minimum
contacts in the forum state is the
constitutional touchstone of the due
process inquiry Burger King (S.C.));
Synthes (USA), 4/17/09 (foreign
defendant shown to have minimum
contacts with the United States as a
whole for jurisdiction under FRCP
4(k)(2)); Avocent, 12/16/08 (remains
192
unclear whether contacts based solely
on the stream of commerce may be
sufficient to establish general
jurisdiction); Campbell, 9/18/08;
Commissariat a lenergie atomique,
1/19/05)
- CAFC applies a three part test

in determining whether exercise
of personal jurisdiction satisfies
due process requirements,
whether: 1) the defendant
purposefully directed its
activities at residents of the
forum state, 2) the claim arises
out of or relates to those
activities (#1 and #2 correspond
with the minimum contacts
prong of Intl Shoe (S.C.)), and,
if #1 and #2 are satisfied
(plaintiffs burden), 3) the
assertion of personal
jurisdiction is reasonable and
fair, i.e., would comport with
fair play and substantial
justice (burden shift to
defendant) Akro, Coyle,
Burger King (S.C.), Intl Shoe
(S.C.) (AFTG-TG, 8/24/12;
Grober, 7/30/12 (no specific
jurisdiction over defendant in
California based on
advertisement in national trade
publication, where was not
shown that the state was a
target market for the
defendant); Radio Systems,
4/25/11; Nuance, 11/12/10
193
(specific jurisdiction over a
foreign defendant under the
three prongs); Patent Rights
Protection Group, 5/10/10;
Touchcom, 8/3/09 (Canadian
defendants who as non-resident
U.S. patent agents filed and
prosecuted an application at the
U.S. PTO did not possess the
necessary minimum contacts
with Virginia, and thus were
not subject to jurisdiction in
federal court in Virginia under
a FRCP 4(k)(1)(A) analysis, but
did possess minimum contacts
with the U.S. as a whole for the
court to have jurisdiction under
FRCP 4(k)(2); see also J. Prost,
dissenting); Autogenomics,
5/18/09 (no specific jurisdiction
over a foreign defendant);
Synthes (USA), 4/17/09
(district court had specific
jurisdiction over a foreign
defendant under FRCP 4(k)(2));
Avocent, 12/16/08 (listing the
five Burger King factors; also,
the forseeability critical to
the due process analysis is that
the defendants conduct and
connection with the forum state
are such that he should
reasonably anticipate being
haled into court there Burger
King (S.C.)); Campbell, 9/18/08
(listing the five factors bearing
on the reasonableness inquiry
(#3 above) under the Burger
194
King (S.C.) standard);
Pennington Seed, 8/9/06); FOR
THE THIRD PRONG, the
burden of proof is on the
defendant, who must present a
compelling case that the
presence of some other
considerations would render
jurisdiction unreasonable (i.e.,
the exercise of jurisdiction
would offend principles of fair
play and substantial justice)
under the 5-factor Burger King
(S.C.) test (Nuance, 11/12/10;
Patent Rights Protection Group,
5/10/10; Touchcom, 8/3/09
(contains a detailed analysis of
the 5-factor test, as applied to
FRCP 4(k)(2); see also J. Prost,
dissenting, based on analysis of
the five factors, and concluding
that exercising jurisdiction
would be unreasonable);
Synthes (USA), 4/17/09
(contains a detailed analysis of
the 5-factor test, as applied to
the so-called federal long arm
statute FRCP 4(k)(2));
Campbell, 9/18/08;
Breckenridge Pharmaceutical,
4/7/06)
- Five factors may render

jurisdiction unreasonable
despite the presence of
minimum contacts
Burger King (S.C.)
(Touchcom, 8/3/09)
195
- Each defendants contacts with
the forum state must be
assessed individually Calder
(S.C.) (Avocent, 12/16/08)
- Infringement letter sent into the

forum state without more, not
sufficient under the reasonable
and fair prong (#3) to confer
personal jurisdiction in the
forum state Red Wing Shoe;
other activities, i.e., sufficient
additional conduct, beyond
merely informing others of its
patent rights, by the patentee in
the forum state are required for
jurisdiction (Radio Systems,
4/25/11; Autogenomics,
5/18/09; Avocent, 12/16/08
(extensively addresses issue,
that there must be other
activities directed at the forum
and related to the cause of
action besides the threatening
infringement letters Silent
Drive); Campbell, 9/18/08
(citing several examples of
other activities that were
sufficient to confer jurisdiction,
e.g., licensing the patent in the
forum state, in concluding that
the patentees attempts at
extra-judicial patent
enforcement in the forum state
went beyond simply informing
the accused infringer, DJ
196
plaintiff of the patentees
allegations of infringement))
- DJ defendant-patentees
commercial activities (e.g.,
sales and patent licensing (not
through an attorney)) in the
forum state do not necessarily
provide ground for personal
jurisdiction; rather, need patent
enforcement or defense efforts
in the forum (Radio Systems,
4/25/11 (following Avocent,
which did not distinguish
between commercialization
efforts directed generally at
residents of the forum state and
efforts directed specifically at
the DJ plaintiff, which focused
on creating a cooperative
business arrangement with the
DJ plaintiff to market the
patentees product);
Autogenomics, 5/18/09 (citing
Avocent); Avocent, 12/16/08
(extensively addresses issue;
see also J. Newman,
dissenting))
- Minimum contacts must be

alleged sufficiently in the
complaint to establish personal
jurisdiction (AFTG-TG,
8/24/12 (insufficient contacts
alleged under the stream of
commerce theory); Avocent,
12/16/08; Pennington Seed,
8/9/06)
197
CAFC law applies
- CAFC (patents) vs. regional circuit law; CAFC

law regarding compliance with federal due process
is applied to personal jurisdiction in patent cases
(Nuance, 11/12/10; Patent Rights Protection
Group, 5/10/10; Touchcom, 8/3/09; Synthes
(USA), 4/17/09; Avocent, 12/16/08; Medical
Solutions, 9/9/08 (the law of the forum governs the
first inquiry, i.e., the long arm statute); Pennington
Seed, 8/9/06; Breckenridge Pharmaceutical,
4/7/06; Rates Technology, 2/17/05; Electronics,
8/18/03)
- Personal jurisdictional issues in patent

infringement cases are reviewed under
CAFC law, not regional law (Grober,
7/30/12; Nuance, 11/12/10; Autogenomics,
5/18/09; Synthes (USA), 4/17/09)
- Defer to the interpretation of a states

long-arm statute given by the states
highest court, particularly whether or
not the statute is intended to reach the
limit of federal due process
(Touchcom, 8/3/09)
- Declaratory action for non-infringement is

intimately related to patent law and thus
governed by CAFC law regarding due
process (Autogenomics, 5/18/09; Avocent,
4/7/06)
- Suit involving both patent and non-patent

claims - CAFC law regarding due process
198
applies to question of personal jurisdiction
on non-patent claims if the resolution of the
patent infringement issue will be a
significant factor in determining liability
under the non-patent claims, vs. regional
circuit law applied when non-patent claims
not intimately linked to patent law (Taurus
IP, 8/9/13 (non-patent claims (7th Cir.));
Avocent, 12/16/08; Breckenridge
Pharmaceutical, 4/7/06)
Other issues
Actions of exclusive licensee
- Jurisdiction over patent owner when its exclusive

licensee (as opposed to a non-exclusive licensee) is
selling patented product in the state
(Autogenomics, 5/18/09 (rejecting argument
concerning an alleged exclusive licensee in the
forum state, quoting Avocent); Avocent, 12/16/08
(extensively addresses issue relating to jurisdiction
over the defendant-patentee based on the
patentees contractual undertaking with the
licensee which may impose certain obligations to
enforce the patent against infringers);
Breckenridge Pharmaceutical, 4/7/06)
- Mere receipt by patent owner of royalty

income from licensee for sales in the forum
state is an insufficient ground for personal
jurisdiction; instead, look to the defendants
relationship with the licensee to determine
the extent of defendants forum state
contacts, which requires examination of the
license agreement e.g., whether license
agreement creates continuing obligations
for the defendant in the forum state beyond
199
receipt of royalty income (Avocent,
4/7/06)
Cease and desist letters, offers of license
- Cease and desist letters, or attempts to license

patent patent owner may, without more, send
cease and desist letters to a suspected infringer, or
its customers, without being subjected to personal
jurisdiction (i.e., as the defendant in a DJ action for
noninfringement, invalidity) in the suspected
infringers home state Akro, Red Wing Shoe
(Radio Systems, 4/25/11; Autogenomics, 5/18/09
(email and in-person negotiations analogized to
cease and desist letters); Avocent, 12/16/08;
Campbell, 9/18/08; Breckenridge Pharmaceutical,
4/7/06)
- Other activities -- beyond sending an

infringement letter or otherwise
communicating infringement allegations --
by the patentee are required in the forum
state; the patentee must be engaged in
sufficient additional conduct in the forum
state, beyond merely informing others of its
patent rights, i.e., extra-judicial enforcement
efforts (Radio Systems, 4/25/11 (no
jurisdiction conferred based on the patentee
contacting the PTO regarding the DJ
plaintiffs allowed patent application);
Autogenomics, 5/18/09 (no specific
jurisdiction conferred where the plaintiff
failed to allege sufficient activities by the DJ
defendant-patentee relating to the validity
and enforcement of the patent in addition to
the cease-and-desist communications);
200
Avocent, 12/16/08; Campbell, 9/18/08
(jurisdiction conferred based on the
patentees other activities directed at the DJ
plaintiff and its customers at a trade show in
the forum state; also cited examples where
jurisdiction found based on other activities,
e.g., licensing the patent in the forum state,
enlisting a third party to take action against
the DJ plaintiff))
- Enforcement activities taking place

outside the forum state do not give
rise to personal jurisdiction in the
forum Avocent (Radio Systems,
4/25/11)
Contracts
- Contracts e.g. CDAs (Radio Systems, 4/25/11

(forum selection clause of CDA did not confer
jurisdiction, where the CDA did not pertain to the
patent in suit or the potentially infringing device,
since neither of which were confidential
information); Autogenomics, 5/18/09
(defendants agreement with a company in the
forum state did not confer jurisdiction, where it
neither involved the patent in suit nor was
analogous to the grant of a patent license);
Corporate officers
- Fiduciary shield doctrine buffers corporate officers

from personal jurisdiction when their official
duties are their only contact with a forum state
201
Nelson (S.C.) (Grober, 7/30/12 (applying 9th Cir.
law))
- Alter ego doctrine exception to the presumed

non-liability of a shareholder, director, or officer
of a corporate entity (Taurus IP, 8/9/13 (applying
the doctrine for jurisdiction over the controlling
entity, and in reverse to reach the assets of the
controlled entity, rather than the controlling entity
applying 7th Cir. and Wisconsin law, and Texas
law))
Employers vs. employees
- Status as employees does not insulate them from

jurisdiction, as each defendants contacts with the
forum state must be assessed individually Calder
(S.C.) (Campbell, 9/18/08 (likewise rejecting the
defendants argument for dismissal for being an
indispensable party as the patent owner))
Foreign defendants
- Foreign defendant-patentee in a DJ action

(Touchcom, 8/3/09 (n.3: citing 35 USC 293);
Autogenomics, 5/18/09 (no jurisdiction; see also J.
Newman, dissenting, referring to the CAFC again
restricting U.S. parties from access to the courts
when the patent is owned by a foreign entity,
despite the DJ defendants contacts and activities
in the forum state); Avocent, 12/16/08)
- Foreign defendant not subject to jurisdiction in any

state personal jurisdiction under FRCP 4(k)(2)
(federal long-arm statute) allows a district
court to exercise personal jurisdiction over a
202
defendant if: (1) the plaintiffs claim arises under
federal law, (2) the defendant is not subject to
jurisdiction in any states courts of general
jurisdiction (negation requirement), and (3) the
exercise of jurisdiction comports with due process
(Technology Patents, 10/17/12 (unnecessary to
decide personal jurisdiction over foreign phone
carriers, where the CAFC was able to decide issue
on the merits see n.1); Merial, 5/31/12; Bradford,
4/29/10 (addressing Touchcom and the 7th Cir.
approach applying the rule when the defendant
refuses to identify a state where suit is possible);
Touchcom, 8/3/09 (district court in Virginia had
personal jurisdiction over Canadian defendants
who as non-resident U.S. patent agents filed and
prosecuted an application at the U.S. PTO; see also
J. Prost, dissenting); Synthes (USA), 4/17/09
(district court had personal jurisdiction over a
foreign defendant under Rule 4(k)(2) where the
defendant admitted that it was not subject to
personal jurisdiction in any forum in the United
States, and the CAFC concluded that its three-part
test was satisfied for establishing minimum
contacts to comport with due process))
- Second requirement which party bears the

BOP? - the CAFC adopts the Seventh
Circuits approach that if the defendant
contends that he cannot be sued in the forum
state and refuses to identify any other where
suit is possible, then the federal court is
entitled to use Rule 4(k)(2) (Merial, 5/31/12;
Touchcom, 8/3/09 (remanding to determine
whether the defendants were subject to
personal jurisdiction in another state, or else
the plaintiff met its burden under Rule
4(k)(2))
203
- Third requirement, the due process analysis,
contemplates a defendants (minimum)
contacts with the United States as a whole,
as opposed to the state in which the district
court sits (Bradford, 4/29/10; Touchcom,
8/3/09; Synthes (USA), 4/17/09)
- Due process analysis same as the

due process analysis (i.e., three-part
test, plus the five Burger King (S.C.)
factors for the third prong) for
specific jurisdiction under Rule
4(k)(1)(A), except consider the
defendants contacts with the entire
United States (Touchcom, 8/3/09 (due
process was satisfied where legal
malpractice claims arose from the
defendants activities before a U.S.
agency, the PTO; see also J. Prost,
dissenting); See General vs. specific
jurisdiction
- Personal jurisdiction requirement which prevents

federal courts from exercising authority over
defendants without sufficient contacts with the
United States - is independent of the
extraterritorial reach of a federal statute the
personal jurisdiction requirement is an important
limitation on the jurisdiction of federal courts over
purely extraterritorial activity that is independent
of the extraterritorial reach of a federal statute or
the courts subject matter jurisdiction (Litecubes,
4/28/08 n.10 (personal jurisdiction over the
defendant was not disputed))
Jurisdictional discovery
204
- Jurisdictional discovery (Nuance, 11/12/10
(district court abused its discretion by dismissing
case after de facto denial of discovery, applying 9th
Cir. law); Patent Rights Protection Group, 5/10/10
(district court abused discretion where prejudice
shown by the denial of discovery); Autogenomics,
5/18/09 (detailing the showing required to
overcome a denial of jurisdictional discovery,
applying 9th Cir. law; no abuse of discretion in
denying request where no formal motion was made
-- dont make motion in the opposition to the
defendants motion to dismiss!); Synthes (USA),
4/17/09 (discovery relating to a foreign
defendants contacts with the United States for
purposes of FRCP 4(k)(2)); Medical Solutions,
9/9/08 (denied in part because the plaintiff failed to
make out a prima facie showing of jurisdiction
based on its complaint and response to the
defendants motion to dismiss); Breckenridge
Pharmaceutical, 4/7/06; Trintec Indus., 1/19/05;
Commissariat a lenergie atomique, 1/19/05)
- Relevance of discovery in patent cases

apply CAFC law (Autogenomics, 5/18/09
(n.2: relevance could not be evaluated
because no formal motion was made, or the
reasons otherwise that discovery was needed
were not provided to the district court);
Commissariat a lenergie atomique, 1/19/05)
Motion to dismiss FRCP 12(b)(2)
- Motion to dismiss for lack of personal jurisdiction

- FRCP 12(b)(2) (Autogenomics, 5/18/09; Synthes
(USA), 4/17/09; Avocent, 12/16/08; Medical
Solutions, 9/9/08; Rates Technology, 2/17/05;
205
Trintec Indus., 1/19/05; Commissariat a lenergie
atomique, 1/19/05)
- Plaintiff need only make a prima facie case

of jurisdiction over the defendant to defeat a
motion to dismiss (when no evidentiary
hearing is conducted) (AFTG-TG, 8/24/12;
Grober, 7/30/12; Nuance, 11/12/10;
Touchcom, 8/3/09 (because motion to
dismiss decided without conducting a
hearing); Autogenomics, 5/18/09 (because
the parties had not conducted discovery);
Synthes (USA), 4/17/09 (in the absence of
an evidentiary hearing); Avocent, 12/16/08;
Campbell, 9/18/08 (hearsay objections to the
plaintiffs affidavits not addressed as the
only issue was whether the uncontroverted
facts alleged by the plaintiff in its affidavits
and complaint supported a prima facie
showing that the district court has personal
jurisdiction over the defendants; different
when the district court conducts an
evidentiary hearing, where the plaintiff must
prove the district courts jurisdiction over
the defendant by a preponderance of the
evidence); Medical Solutions, 9/9/08 (no
prima facie case of use of accused device
at trade show shown; prima facie showing
also necessary to be permitted to conduct
jurisdictional discovery); Trintec Indus.,
1/19/05)
- Pleadings and affidavits are construed

in the light most favorable to the
nonmovant, plaintiff Elecs. for
Imaging (Nuance, 11/12/10;
Touchcom, 8/3/09 (in evaluating
whether the plaintiff met its burden,
206
the CAFC accepts the uncontroverted
allegations in the complaint as true
and resolves any factual conflicts in
the plaintiffs favor); the plaintiff,
however, is entitled to only those
inferences that are reasonable
Avocent, Pennington Seed
(Autogenomics, 5/18/09)
- Hearsay evidence may be considered in

connection with a motion to dismiss for lack
of personal jurisdiction Akro, Beverly Hills
Fan (Campbell, 9/18/08 (n.1))
Suing the correct corporate entity
- Suing correct corporate entity one that infringed

patent - e.g., subsidiary (Rates Technology,
2/17/05)
- Mere department of larger company

(Rates Technology, 2/17/05)
Third party
- Third party post-judgment to decide partys

liability (Cygnus, 9/30/03)
Waiver FRCP 12(h)(1)
- Waiver of personal jurisdiction, in event not

challenged FRCP 12(h)(1)
- Filing of a counterclaim (compulsory or

permissive) cannot waive partys objections
207
to personal jurisdiction, as long a FRCP
12(h)(1) requirements are met (Rates
Websites
- Jurisdiction based on websites cases differ

(Campbell, 9/18/08 (no general jurisdiction when
website not directed to customers in the forum
state); Trintec Indus., 1/19/05)
Venue
- Venue for a corporation, venue exists if personal

jurisdiction over the corporation, i.e., venue statute
28 USC 1391(c) (Trintec Indus., 1/19/05)
- Transfer of venue See DISTRICT COURT

PRACTICE AND PROCEDURE Transfer of
venue 28 USC 1404(a) and 1631
Service of process
- Service of process on a foreign defendant FRCP

4(f) (Merial, 5/31/12 (issue of insufficient service
waived where raised for the first time on appeal);
Nuance, 11/12/10 (addressing service of process
on a foreign defendant, including substitute service
and under the Hague Service Convention))
- Waiver of defense of improper service of

process, under Rule 12 (Nuance, 11/12/10)
B. APPELLATE/DISTRICT COURT REVIEW
208
Legislation - generally
- Legislation is presumed not to be retroactive, and

the legal effect of conduct should ordinarily be
assessed under the law that existed when the
conduct took place (Voda, 8/18/08 (n.10: The
principle that statutes operate only prospectively,
while judicial decisions operate retrospectively, is
familiar to every law student . . . Rivers (S.C.));
Optivus Tech., 11/16/06)
- Retroactive application of legislation, and

constitutionality thereof Act must clearly
indicate its retroactive application, and is it
justified by a rational legislative purpose?
Carlton (S.C.) (Presidio Components,
12/19/12 (AIA amendments to Section
292(a) applied to pending appeals looking
to the amendment language and legislative
history); Brooks, 12/13/12 (discussing
standard applied - in the context of
amendment under the AIA to Section 292(b)
retroactively eliminating qui tam false
marking suits))
- Whether a statute creates a private contract

or vested rights between the Government
and a party look to the language of the
statute (Brooks, 12/13/12)
- Presumption against extraterritoriality

longstanding principle of American law that
legislation of Congress, unless a contrary intent
appears, is meant to apply only within the
territorial jurisdiction of the United States EEOC
(S.C.) (Tianrui Group, 10/11/11 (interpreting
Section 337 to prohibit the importation of goods
made by misappropriating trade secrets in China))
209
Congress/patent-related legislation
- Great deference is given to Congresss policy

determinations in deciding whether legislation is
permissible under the Patent Clause of the
Constitution (Art. 1, 8, cl. 8 That Congress
shall have the power . . . [t]o promote the progress
of science and useful arts, by securing for limited
times to authors and inventors the exclusive right
to their respective writings and discoveries)
(Brooks, 12/13/12 (holding that Congresss
amendment to Section 292(b) under the AIA
retroactively eliminating qui tam false marking
suits was constitutional, determining that it was a
rational means of pursuing a legitimate legislative
purpose, stating that the CAFCs judicial review is
limited to determining whether Congresss actions
were a rational exercise of the legislative authority
conferred by the Patent Clause, to which the court
defers substantially to Congress); In re Ferguson,
3/6/09 (n.7: stating not the role of courts to make
(the concurrences) arguments based on policy and
philosophical grounds, but rather is the
responsibility of Congress to consider amending
the patent laws as necessary to recognize and allow
for innovation in the future); Figueroa, 10/11/06)
- PTO fees Congress may constitutionally

impose patent fees in amounts more than
what is used to fund PTO (Figueroa,
10/11/06)
Treaties
210
- Treaties not self-implementing, and thus
domestic implementing legislation is required (In
re Rath, 3/24/05 (Paris Convention, an executory
treaty, is not a self-executing treaty and requires
congressional implementation))
Agency/PTO decisions/regulations
Agency/PTO decisions
Administrative deference APA, Zurko (S.C.),

Chenery doctrine
- Administrative deference under Zurko

appellate (or district court) review of an
administrative decision is limited to the agency
record, i.e., the grounds relied on by the agency
In re Watts (In re Applied Materials, 8/29/12;
Interdigital, 8/1/12 (ITC); In re Aoyama, 8/29/11
(affirming invalidity based on indefiniteness of
means-plus-function claims, rather than the
BPAIs grounds of anticipation; see also J.
Newman, dissenting discussing Chenery (S.C.)
and In re Comiskey); In re Klein, 6/6/11 (n.1: PTO
on appeal improperly broadened the problem
addressed by the claimed invention, for
determining whether prior art was analogous
citing Chenery (S.C.)); Vizio, 5/26/10 (n.11: ITC
the CAFC cannot properly substitute its decision
on a discretionary issue (e.g., waiver) for that of
the Commission); Hyatt, 8/11/09 (addressing scope
of new evidence allowed in Section 145 actions)
[vacated]; In re Comiskey, 1/13/09 (en banc) (rule
distinguished based on Chenery (S.C.); see below;
see also J. Dyk, C.J. Michel, and J. Prost,
concurring in the denial of petition for rehearing en
banc, stating that the panel decision [which
affirmed the BPAIs claim rejections based on
211
unpatentable subject matter under Section 101,
rather than obviousness as relied on by the BPAI]
is entirely consistent with precedent allowing an
appellate tribunal to affirm an agency on
alternative legal grounds or to remand to the
agency to consider an alternative ground and that
it is also well established that an appellate court
has the power to decide a case on alternative legal
grounds without addressing [or rejecting] the
original ground of decision citing Koyo Seiko,
Schenck (S.C.)); Brand, 5/14/07 (PTO); Brown,
2/2/06 (PTO); In re Watts, 1/15/04 (PTO); Ulead
12/9/03 (dissent); Merck 10/30/03 (PTO)); See
also In re Avid Identification Systems, 1/8/13
(nonprecedential appellants argument not first
raised to the BPAI was waived, stating that the
CAFCs review of the BPAIs decision is confined
to the four corners of that record, because for
anything outside that record, the CAFC does not
have the benefit of the BPAIs informed judgment
on that issue for the courts review In re Watts);
In re Vaidyanathan, 5/19/10 (nonprecedential
rejecting the Solicitors new arguments on appeal
for how to interpret the cited prior art references,
ruling that the CAFCs review of the BPAIs
decision and whether supported by substantial
evidence must be based on the record and fact
findings of the BPAI, and not new arguments and
fact findings by the PTO for the first time on
appeal); In re Daneshvar, 2/18/10 (nonprecedential
the CAFC limiting its decision reversing the
BPAIs decision of unpatentability to the grounds
employed by the BPAI, on the record before it, for
affirming the examiners rejections, citing Chenery
(S.C.) and Buszard; also declining to consider the
PTOs citation of evidence not of record below); In
re Wheeler, 12/19/08 (nonprecedential reversing
the BPAIs anticipation rejection, and stating that
212
the court is powerless to affirm the administrative
action by substituting what it considers to be a
more adequate or proper basis)
- APA, 5 USC 706, governs the CAFCs

review of PTO proceedings Dickinson v.
Zurko (S.C.) (In re Leithem, 9/19/11; In re
Chapman, 2/24/10; In re Skvorecz, 9/3/09;
In re Comiskey, 1/13/09 (en banc) (rule
distinguished; see also J. Dyk, C.J. Michel,
and J. Prost, concurring in the denial of
petition for rehearing en banc, and
disagreeing with the dissent that Section 706
of the APA imposes a special requirement in
agency proceedings that the agencys
ground first be rejected before affirming on
an alternative ground); Aristocrat Techs.,
9/22/08 (rejecting the district courts
invalidity ruling under APA for the PTOs
improper revival of abandoned application);
In re Garner, 12/5/07; In re Buszard,
9/27/07; In re Omega, 7/23/07); under 35
USC 144, CAFC reviews BPAIs
decisions on the record before the [PTO]
(In re Comiskey, 1/13/09 (en banc) (rule
distinguished); Brand, 5/14/07); however,
the reviewing court shall decide all relevant
questions of law (In re Comiskey, 1/13/09
(en banc))
- Agency actions are set aside, under

the APA, only if arbitrary,
capricious, an abuse of discretion, or
otherwise not in accordance with law
5 USC 706(2)(A); factual findings
are reviewed for substantial evidence
(In re Leithem, 9/19/11 (BPAIs
affirmance of the examiners rejection
213
without remanding to give applicant
the opportunity to respond to the
BPAIs new ground of rejection was
not in accordance with law); Fred
Beverages, 5/12/10 (reversing the
TTABs decision as arbitrary and
capricious); In re Skvorecz, 9/3/09
(standard stated differently); Hyatt,
8/11/09 (affirming SJ by the district
court in Section 145 action where any
new evidence was properly excluded
and the BPAIs decision rejecting the
claims for lack of WD support was
supported by substantial evidence)
[vacated]; Tafas, 3/20/09 (also listing
reasons in Rule 706(2)(B)-(D))
[vacated on 7/6/09, and appeal
dismissed in Tafas, 11/13/09
(Order)]; Burandt, 6/10/08
(Directors denial of request for
reinstatement of patent after failing to
pay maintenance fees was neither
arbitrary or capricious, nor an abuse
of discretion); Bender, 6/21/07
(disciplinary action, sanctions against
attorney); Lacavera, 2/6/06; Star
Fruits, 1/3/05); See also Taylor,
8/4/09 (nonprecedential the PTOs
action in taking the applicants
maintenance fee payment without
notifying him of its deficiency, while
expiring his patent, was unreasonable,
and arbitrary and capricious, and
called for equitable relief by the
district court)
- Under the APA, the BPAIs

factual findings are reviewed to
214
determine whether they are
supported by substantial
evidence and the BPAIs legal
conclusions are review de novo
In re Gartside (In re
Chapman, 2/24/10; In re
Skvorecz, 9/3/09; Hyatt,
8/11/09 (discussing exceptions
to the limited review under the
APA, including where another
statute explicitly provides for
de novo review (Section 145
(district court review of BPAI
decision) does not); thus,
admission of new evidence in a
Section 145 action is limited by
the APA) [vacated]; In re
Garner, 12/5/07 (harmless
error); See also In re
Vaidyanathan, 5/19/10
(nonprecedential the entry of
the PTO into the deferential
review of the [APA] requires
the agency to provide support
for its findings In re Zurko);
See STANDARDS OF
REVIEW AND CHOICE OF
LAW BPAI/TTAB
- PTO decision reviewed for

abuse of discretion = decision
is based on erroneous
interpretation of the law, on
factual findings not supported
by substantial evidence, or
represents an unreasonable
judgment in weighing relevant
factors; the scope of review
215
under (the arbitrary and
capricious) standard is narrow
and court cannot substitute its
own judgment for that of
agency (Burandt, 6/10/08;
Lacavera, 2/6/06)
- While may not supply a reasoned basis for

the agencys action that the agency itself has
not given (under Chenery), the CAFC will
uphold a decision of less than ideal clarity if
the agencys path may reasonably be
discerned Bowman (S.C.) (In re Applied
Materials, 8/29/12)
- Subsequent PTO determination can have no

legal effect on an already-rendered judgment
of a court of competent jurisdiction; also, the
PTOs determination is not considered on
appeal if the district court did not address
the issue first (Technology Licensing,
10/10/08 (declining to re-weigh on appeal
the evidence before the district court based
on the PTOs subsequent reissue of the
patent in suit and reaching a different
conclusion than the district courts final
judgment the judicial process cannot be
held hostage to the agencys subsequent
review))
- Harmless error rule is applied to review of

agency decisions (In re Chapman, 2/24/10);
See also Error - by District Court and
BPAI/TTAB Harmless error rule
- APA cannot be used to challenge the PTOs

decision to issue patents (Pregis, 12/6/12
(third party was not entitled to sue the PTO
216
under the APA to challenge the PTOs
decision to issue patents))
- Agency actions (internal) generally are not

reviewable by the court, under APA (In re
Omega, 7/23/07 (TTAB); Bristol-Myers,
3/17/04 (J. Newman, dissenting)); See also
Sadeh, 5/12/10 (nonprecedential TTAB -
PTO has broad discretion, authority to
govern the conduct of proceedings)
- Courts should not readily intervene in

the day-to-day operations of an
administrative agency (In re Omega,
7/23/07)
- Requirement imposed by
trademark examiner was not so
extreme or unreasonable as to
warrant judicial intervention
into the internal procedures and
requirements of the PTO
trademark examination (In re
Omega, 7/23/07 (requiring
amendment to definition of
goods))
- BPAI must decide issue before the CAFC,

or district court (e.g., 146 action),
considers issue (In re Comiskey, 1/13/09 (en
banc) (rule distinguished; patentable subject
matter under 101); Boston Scientific
Scimed, 8/8/07 ( 146 action); Brown,
2/2/06); See also In re Daneshvar, 2/18/10
(nonprecedential CAFC not directing the
manner in which the PTO should proceed on
remand or indicate how the issue of
217
patentability should ultimately be resolved,
citing In re Lister)
- Exception a court may consider an

issue antecedent to and ultimately
dispositive of the dispute before it,
even an issue the parties fail to
identify and brief In re Seagate (In
re Comiskey, 1/13/09 (en banc)
(patentable subject matter under 101
is an antecedent question to 103
issue))
- Chenery doctrine
- CAFC cannot substitute new ground

for rejection to affirm the BPAIs
decision vs. exception (In re
Applied Materials, 8/29/12; In re
Aoyama, 8/29/11 (substituting
indefiniteness for anticipation; see
also J. Newman, dissenting); In re
Comiskey, 1/13/09 (en banc) (In re
Watts cited by J. Moore, J. Newman,
J. Rader, dissenting from denial of the
petition for rehearing en banc:
Courts, like us, are charged with
reviewing agency determinations.
There must be some limit to appellate
court authority to review agency
action, and . . . this court in Comiskey
crossed the line); In re Watts,
1/15/04); See also In re Daneshvar,
2/18/10 (nonprecedential relying on
Chenery (S.C.) to limit its decision to
the patentability grounds employed by
the BPAI, on the record before it)
218
- Reviewing court can (and should)
affirm an agency decision on a legal
ground not relied on by the agency if
there is no issue of fact, policy, or
agency expertise SEC v. Chenery
(S.C.) (Flo Healthcare Solutions,
10/23/12 (n.7: was proper for the
CAFC to apply a different claim
construction with regard to alleged
means-plus-function claims in
affirming the PTABs holding of
invalidity); In re Aoyama, 8/29/11
(affirming invalidity based on
indefiniteness, a Q of law, rather than
anticipation; see also J. Newman,
dissenting); In re Comiskey, 1/13/09
(en banc) (PTO))
- CAFC, applying Chenery, may,

where appropriate, affirm an
agency (e.g., PTO) on grounds
other than those relied upon by
the agency in rendering its
decision, when upholding the
agencys decision does not
depend upon making a
determination of fact not
previously made by the agency
(Interdigital, 8/1/12 (declining
to uphold the ITCs decision on
a ground not ruled on by the
agency); In re Comiskey,
1/13/09 (en banc) (several cases
cited and distinguished
involving fact questions))
- Q of law is a ground for

affirmance within the power of
219
the appellate court to formulate;
a legal question, reviewed on
appeal without deference, is not
a determination of policy or
judgment which the agency
alone is authorized to make
i.e., the Chenery (S.C.) doctrine
(In re Aoyama, 8/29/11; In re
Skvorecz, 9/3/09 (n.2: claim
construction issue did not raise
an issue of the Chenery
doctrine); Princo, 4/20/09 (n.8:
whether a patent claim could be
reasonably construed to cover
the technology at issue was a
legal matter within the CAFCs
competence to decide) [vacated
on 10/13/09, and reinstated in
part in Princo, 8/30/10 (en
banc)]; In re Comiskey,
1/13/09 (en banc) (statutory
(patentable) subject matter)
under Section 101 is a legal
question; see also J. Dyk, C.J.
Michel, and J. Prost, concurring
in denial of the petition for
rehearing en banc; see also J.
Moore, J. Newman, and J.
Rader, dissenting from denial
of the petition, opining that
under Chenery (S.C.) the
appellate court must determine
first that the agency ground was
erroneous before affirming on
an alternative ground)); See
also In re POD-NERS, 7/10/09
(nonprecedential the CAFC
was not precluded by Chenery
220
from affirming the BPAI on
obviousness (a Q of law)
despite the BPAI not explaining
its conclusion of obviousness in
detail, where to reject the
BPAIs ruling on the grounds
the BPAI gave for its decision
would have denied the BPAI
recourse to common sense
under KSR (S.C.); see also J.
Prost, concurring only in the
result)
- Agency must give reasoned

explanation for departing from
established precedent or
treating similar situations
differently the court looks
only to the reasons given by the
agency SEC v. Chenery (S.C.)
(Fred Beverages, 5/12/10
(TTAB abused its discretion by
denying a motion for leave to
amend a cancellation petition
because of the absence of fees,
where there was no rule and
was not established practice of
the TTAB))
- Remanding case for

consideration of alternative
issue (In re Comiskey, 1/13/09
(en banc) (remanding to PTO
for determination in the first
instance whether system claims
define patentable subject matter
under Section 101))
221
- District court is not bound by the PTOs
actions and must make its own independent
determination of patent validity (Medrad,
3/16/05)
- PTOs issuance of a related patent

does not affect the district courts
decision to invalidate patent (Medrad,
3/16/05)
Deference to PTO, examiners
- Attorney registration (Lacavera, 2/6/06)
- Deference due to the patent examiner, the PTO;

deference due to a qualified government agency
presumed to have done its job (Old Reliable
Wholesale, 3/16/11 (giving deference to the PTOs
patentability decision during reexamination, since
the PTO has acknowledged expertise in evaluating
prior art and assessing validity Hyatt (en banc));
Technology Licensing, 10/10/08 (no deference
regarding priority date determination where there
was no express evidence that the examiner
addressed the issue); Poweroasis, 4/11/08
(distinguishing Ralston, where deference given to
the PTOs priority determination); Zenon
Environmental, 11/7/07 (dissent, J. Newman);
Pharmastem, 7/9/07 (no deference given; see also
J. Newman, dissenting); North American
Container, 7/14/05; Prima Tek II, 6/22/05 (no
deference given)); See also St. Clair, 1/10/11
(nonprecedential reexamination procedure serves
an important role in providing a district court with
an expert view of the PTO Gould); Andersen,
11/19/08 (nonprecedential basis for overcoming
222
SJ of obviousness based on the same prior art
considered by the PTO)
- CAFC is not bound by the PTOs actions

and must make its own independent
determination of patent validity Medrad
(Novo Nordisk, 6/18/13 (no deference due
or added burden to overcome PTO factual
findings during prosecution in district court
infringement proceedings); Old Reliable
Wholesale, 3/16/11)
- Patent system depends primarily on PTOs

care in screening out invalid patents during
prosecution (Prima Tek II, 6/22/05 CAFC
concluded claims anticipated by PA which
was before the examiner)
- Deference to PTOs past practice whether

Congress has endorsed the views of the PTO in
subsequent legislation? (Myriad, 6/13/13 (S.C.)
(rejecting argument that the PTOs past practice of
awarding gene patents was entitled to deference,
where Congress had not endorsed the PTOs views
in subsequent legislation, and the government
argued that the PTOs past practice was not a
sufficient reason to hold gene patents patent-
eligible))
- Concern about patent holders reliance

interests arising from PTO determinations
where relevant, directed to Congress Mayo
(S.C.) (Myriad, 6/13/13 (S.C.) (n.7))
- Director of PTO charged with decision of whether

patent entitled to term extension (Pfizer, 8/2/06
(given great deference); Merck, 10/30/03)
223
- Director of PTO given the responsibility of
determining the circumstances under which late
payment of maintenance fees may be waived,
despite Congresss intent to permit patentees to
avoid the inequitable loss of patent rights (Burandt,
6/10/08 (rejecting arguments that an alleged
equitable title holders delay was unavoidable))
- Disciplinary actions against attorneys for violating

PTO rules on attorney conduct statutory
authority under 35 USC 32, and PTO
disciplinary rules 37 CFR, section 10, based on
35 USC 2(b)(2)(D) (Bender, 6/21/07 (exclusion
from PTO practice; invention promoters);
Sheinbein, 9/25/06)
- Exclusion from practice before PTO when

disbarred in another jurisdiction (Sheinbein,
9/25/06)
- Statute of limitations 5 years, under

28 USC 2462 (Sheinbein, 9/25/06)
- Request for information by examiner so long as

the examiners request for information is not
arbitrary or capricious, the applicant cannot
impede the examiners performance of his duty
Star Fruits (Hyatt, 6/28/07)
- Suspension or waiver of PTO rules by Rule 183

petition section 183 is cast in discretionary
terms, providing that the Director may waive a
requirement (Burandt, 6/10/08 (no error in
Directors not waiving maintenance fee
requirement))
- Reexamination results on patentability of claims

on appeal (K-Tec, 9/6/12 (non-final reexam
224
determinations are of little relevance and present a
risk of jury confusion citing Callaway); Old
Reliable Wholesale, 3/16/11 (giving deference to
the PTOs patentability decision during
reexamination, since the PTO has acknowledged
expertise in evaluating prior art and assessing
validity Hyatt (en banc)); Dow Jones, 5/28/10
(n.3: an ultimately final rejection of the claims
would fatally undermine the presumption of
validity and would moot the appeal)); See also
Kimberly-Clark, 6/1/11 (nonprecedential n.3:
claim rejections during inter partes reexamination
proceeding are relevant when evaluating the
likelihood of success on the merits for granting a
PI Procter & Gamble)
BPAI
- Agency must assure that the applicants petition is

fully and fairly treated at the administrative level,
without interim need for judicial intervention
APA, Zurko (In re Biedermann, 10/18/13; In re
Stepan, 10/5/11; In re Leithem, 9/19/11 (citing In
re Kumar); In re Kumar, 8/15/05); See also U. of
Southern California, 3/22/12 (nonprecedential
BPAIs opinion must contain sufficient findings
and reasoning to permit meaningful appellate
review, where the BPAI erred by insufficiently
explaining its decision not to modify the count to
allow the movant to claim priority to its
provisional application)
- Applicant is entitled to respond to new

arguments, evidence produced by the BPAI,
e.g., respond to new rejections, thrust of
rejections (In re Biedermann, 10/18/13; In re
Stepan, 10/5/11 (vacating and remanding
225
where the BPAIs reliance on Section 102(a)
instead of Section 102(b), and finding that
the applicants Rule 131 declaration was
deficient, was a new ground of rejection); In
re Leithem, 9/19/11 (vacating and
remanding BPAI decision affirming the
examiners rejection for the applicant to
have opportunity to respond to the BPAIs
new ground of rejection); In re Kumar,
8/15/05)
- BPAI making new ground of rejection

the ultimate criterion of whether a
rejection is considered new in a
decision by the BPAI is whether the
applicant has had fair opportunity to
react to the thrust of the rejection --
the BPAI need not recite and agree
with the examiners rejection in haec
verba to avoid issuing a new ground
of rejection In re Kronig (CCPA)
(In re Biedermann, 10/18/13; In re
Leithem, 9/19/11)
- BPAIs reliance on new facts

and rationales not previously
raised to the applicant by the
examiner, which change the
thrust of the rejection = new
ground of rejection In re
Kumar (In re Biedermann,
10/18/13; In re Stepan, 10/5/11
(BPAI does not have discretion
to designate a new ground of
rejection, i.e., when it relies on
facts or legal argument not
advanced by the examiner, but
instead is required under the
226
APA to provide notice to the
applicant); In re Leithem,
9/19/11 (BPAI made new
ground of rejection where
found new facts concerning the
scope and content of the prior
art and the differences between
the prior art and the claimed
invention, and these facts were
the principal evidence upon
which the BPAIs rejection was
based, and the applicant would
have responded differently had
the examiners rejection been
based on these facts))
- BPAIs decision must be based on the four corners

of the record under the substantial evidence
standard applied to the BPAIs fact findings, the
CAFC searches for evidence clearly set forth in the
record to justify the BPAIs conclusions; the
record of the BPAI is closed and the BPAIs
decision must be justified within the four corners
of the record Gartside (In re Applied Materials,
8/29/12; In re Stepan, 10/5/11 (see IV.
Conclusion); Brand, 5/14/07); See also Fluor Tec,
12/11/12 (nonprecedential n.1: declining to
consider prior art reference as knowledge of the
POS in the art, which was not before the BPAI
review of the BPAIs decision is confined to the
four corners of that record In re Watts); In re
Pepperball Techs., 3/7/12 (nonprecedential the
CAFC concluded that a claimed range was obvious
based on substantial evidence in the record that
was different from the reason the BPAI relied on
for concluding obviousness); In re Reuning,
4/25/08 (nonprecedential the BPAI is charged
with deciding factual issues in the first instance,
227
and thus should have substantively reviewed the
appellants arguments and examiners rejections
regarding obviousness, despite the appellants
procedural mistakes in its appeal brief; see also J.
Linn, concurring, stating that the BPAIs actions
were inconsistent with the PTOs mission: to
ensure that the intellectual property system
contributes to a strong global economy,
encourages investment in innovation, and fosters
entrepreneurial spirit)
- Contested, inter partes, proceedings before PTO

(e.g., interferences) the BPAIs fact findings
must be limited to the record before the agency;
PTOs regulations highlight the importance of a
comprehensive record in contested proceedings;
the BPAI in contested cases is an impartial
adjudicator of an adversarial dispute between two
parties (Brand, 5/14/07)
- BPAI cannot base fact findings in a

contested case on its own expertise the
BPAI is not permitted to base fact findings
on its expertise (although the BPAIs
expertise plays a role in interpreting record
evidence), rather than on the evidence in the
record (Brand, 5/14/07 (maybe different for
ex parte proceeding))
- BPAI cannot substitute its own

expertise for the knowledge of a POS
in the art, as supported by the record
(Brand, 5/14/07 (interference -
priority of invention, derivation))
- Examiners decision on patentability

affirmed by the BPAI on any grounds
supported by the record (Rexnord, 1/23/13
228
(appellee on appeal to the BPAI in inter
partes reexamination may argue any
alternative bases supported by the record to
affirm the examiners decision))
- BPAI cannot open issue on remand not raised by

party during appeal waiver (Brown, 2/2/06)
- Expert declarations BPAI has broad discretion as

to weight given to declarations offered during
prosecution (American Academy of Sciences,
5/13/04)
- CAFC defers to the BPAIs findings

concerning the credibility of expert
witnesses Velander (Yorkey II, 4/7/10
(BPAI was well within its discretion to give
more credibility to one partys expert over
the other partys unless no reasonable trier
of fact could have done so))
Agency/PTO regulations
Substantial deference/Chevron (S.C.) deference
- Agencys interpretation of its own regulations is

entitled to substantial deference and will be
accepted unless plainly erroneous or inconsistent
with the regulation (in situations of ambiguity)
Star Fruits, In re Sullivan (Belkin Intl, 10/2/12; In
re Stepan, 10/5/11 (PTOs regulatory interpretation
was due no deference in view of its statutory
obligation under the APA to provide prior notice to
the applicant of new facts and law asserted); In re
Lovin, 7/22/11 (BPAI reasonably interpreted Rule
41.37 to require substantive patentability
arguments for individual claims in an appeal
brief); Koninklijke Philips, 1/5/10 (rejecting the
229
BPAIs interpretation of the PTOs broadest
reasonable construction rule for interferences, as
applied to challenging a copied claim on WD
grounds, as contrary to the CAFCs rule in In re
Spina); Hyatt, 12/23/08 (BPAIs interpretation of
ground of rejection in 37 CFR 1.192(c)(7)); In re
Swanson, 9/4/08 (n.3); In re Garner, 12/5/07
(BPAI interpretation of new evidence in 37
CFR 41.202(d) (interference rule) was inconsistent
with the regulation); Firsthealth, 2/27/07 (TTAB);
Lacavera, 2/6/06; Star Fruits, 1/3/05); See also
Omura, 4/8/11 (nonprecedential BPAI properly
interpreted interference rules in entering adverse
judgment against patentee who conceded its claims
were unpatentable)
- BPAIs interpretation, application of PTO

regulations abuse of discretion
(Koninklijke Philips, 1/5/10 (abuse of
discretion defined; interference rule);
Stevens, 5/4/04; In re Sullivan, 3/22/04)
- Deference to agency regulations if reasonable,

permissible interpretation of a statute, then entitled
to Chevron deference (Wyeth, 5/3/10 (FDAs
interpretation of Section 156(g) (patent term
extension for animal drug patent) was reasonable
under Chevron analysis);Wyeth, 1/7/10 (PTOs
interpretation of Section 154(b) was not entitled to
deference under either Chevron (S.C.) or Skidmore
(S.C.), ruling that [b]ecause the language of the
statute itself controls this case and sets an
unambiguous rule for overlapping extensions, this
court detects no reason to afford special deference
to the PTOs interpretation); Tafas, 3/20/09
(applying Chevron deference to the PTOs
interpretation of the Patent Act under its
rulemaking authority of Section 2(b)(2) in
230
promulgating rules limiting the number of
continuations and RCEs, and number of claims)
[vacated on 7/6/09, and appeal dismissed in
Tafas, 11/13/09 (Order)]; Hyatt, 12/23/08;
Cooper Techs., 8/19/08 (concluding that the PTOs
interpretation of the inter partes reexam provision
of the AIPA (published in the Federal Register and
MPEP, but not the CFR) as including
continuations was reasonable and entitled to
Chevron deference); Bender, 6/21/07 (PTO;
disciplinary action against attorney); Brand,
5/14/07 (PTO); Lacavera, 2/6/06 (PTO); In re
Sullivan, 3/22/04 (PTO); Apotex, 10/27/03 (FDA))
- No deference is due to agency

interpretations at odds with the plain
language of a statute Smith (S.C.) (Wyeth,
1/7/10 (concluding that Section 154(b)s
language is clear, unambiguous, and
intolerant of the PTOs suggested
interpretation))
- Congress gave PTO authority to issue

(procedural) regulations entitled to
Chevron deference = given controlling
weight unless arbitrary, capricious, or
manifestly contrary to statute (In re Lovin,
7/22/11; Tafas, 3/20/09 (PTOs rules were
procedural) [vacated on 7/6/09, and appeal
dismissed in Tafas, 11/13/09 (Order)];
Cooper Techs., 8/19/08; In re Sullivan,
3/22/04)
- Chevron deference is given to the PTOs

interpretation of statutory provisions relating
to the conduct of proceedings in the PTO
(i.e., for making procedural or interpretive
rules, as opposed to substantive rules, which
231
the PTO is not authorized to make), pursuant
to the PTOs authority to administer such
statutory provisions by establishing
regulations governing the same, under 35
USC 2 (Bettcher Indus., 10/3/11 (PTOs
authority includes a prospective clarification
of ambiguous statutory language, citing
Cooper Techs.); Wyeth, 1/7/10 (not
addressing the district courts conclusion
that the PTOs regulation interpreting
Section 154(b) was a substantive, rather than
procedural, rule); Tafas, 3/20/09 (Chevron
deference given where the PTOs rules were
procedural and within the scope of its
rulemaking authority in Section 2(b)(2); see
also J. Rader, dissenting arguing that the
PTOs rules were substantive (as they
drastically change the existing law and alter
an inventors rights and obligations under
the Patent Act), not procedural, and thus
the PTO exceeded its statutory rulemaking
authority) [vacated on 7/6/09, and appeal
dismissed in Tafas, 11/13/09 (Order)]; In
re Swanson, 9/4/08 (n.3, citing Cooper
Techs. - distinguishing the PTO from the
BPAI, which is given no deference for
statutory interpretation), Cooper Techs.,
8/19/08); See also Mikkilineni, 11/9/10
(nonprecedential addressing substantive
vs. interpretive rule making, and concluding
that the Interim Section 101 Guidelines are
interpretive, rather than substantive, and
thus are exempt from the notice and
comment requirements of Section 553 of the
APA)
- PTO lacks substantive rulemaking

authority Merck v. Kessler, 35 USC
232
2 (Therasense, 5/25/11 (en banc)
(the CAFC is not bound by the
definition of materiality in PTO
rules); Koninklijke Philips, 1/5/10
(interference regulation disregarding
the CAFCs precedent in In re Spina
was ruled not to apply to the WD
challenge of a copied claim in the
interference))
- Chevron deference two-step

analysis applied 1) does the statute
(i.e., Congress) speak to the issue?
(i.e., employing the traditional tools
of statutory construction by
examining the statutes text, structure,
and legislative history, and applying
the relevant canons of interpretation),
and 2) if silent or ambiguous, was the
agencys interpretation based on a
permissible construction of the
statute?, i.e., the court defers to the
agencys reasonable interpretation of
the statute (Tianrui Group, 10/11/11
(ITCs reasonable interpretations of
Section 337 are entitled to deference);
Tafas, 3/20/09 (PTOs regulations
were both procedural and consistent
with the Patent Act, and thus valid,
except for the rule limiting the
number of continuations, which was
invalid in view of Section 120; see
also J. Bryson, concurring
proposing an alternative construction
of Section 120, which would permit
limiting the number of serial
continuations) [vacated on 7/6/09,
and appeal dismissed in Tafas,
233
11/13/09 (Order)]; Cooper Techs.,
8/19/08 (contains an excellent
analysis of why Chevron deference
was given to the PTOs interpretation
of the inter partes reexam provision of
the AIPA as including continuations);
Bender, 6/21/07; Brand, 5/14/07;
Lacavera, 2/6/06); See also
STATUTORY INTERPRETATION
- Agencys contemporaneous
construction of a statute is
given particular weight (Cooper
Techs., 8/19/08)
- Chevron (S.C.) step zero

whether courts should use the
Chevron framework at all
(Tafas, 3/20/09 (agencys
(PTOs) determination of the
scope of its own authority (and
whether Section 2(b)(2)
provides substantive
rulemaking authority) is not
entitled to Chevron deference)
[vacated on 7/6/09, and
appeal dismissed in Tafas,
11/13/09 (Order)])
- Even if a court has previously

resolved the specific question at
issue, the agencys construction
must be adopted unless the
prior court decision holds that
its construction follows from
the unambiguous terms of the
statute and thus leaves no room
for agency action Brand X
234
(S.C.) (In re Lovin, 7/22/11;
Tafas, 3/20/09 (CAFC in a
prior decision had determined
that Section 120
unambiguously does not limit
the number of continuations
that can be filed, thus
invalidating the PTOs rule
doing the same) [vacated on
7/6/09, and appeal dismissed
in Tafas, 11/13/09 (Order)])
- Whether congressional inaction

suggests an endorsement of the
agencys interpretation, i.e.,
Congress not amending the
provision when it had the
opportunity? (Cooper Techs.,
8/19/08 (concluding that
Congresss election not to
amend the disputed statutory
language further supported the
PTOs interpretation as being
reasonable))
- Congress is presumed to
be aware of pertinent
existing law (Cooper
Techs., 8/19/08
(presumed that Congress
was aware of the PTOs
interpretation of a statute,
which was published in
the Federal Register))
- Deference to an agencys statutory

interpretation Chevron (S.C.); Skidmore
(S.C.) (Interdigital, 8/1/12; (the ITCs
235
consistent interpretation of Section 337 that
licensing activities alone satisfy the
domestic industry requirement was entitled
to Chevron deference); Photocure, 5/10/10
(no deference was given to the PTOs
interpretation of Section 156 in denying a
patent term extension, where the PTOs
reasoning was neither persuasive nor
consistent, under Skidmore, and the statute
was not ambiguous, under Chevron (S.C.)))
- Neither Chevron nor Skidmore

permits a court to defer to an incorrect
agency interpretation (Photocure,
5/10/10 (stating the above rule, even
if some level of deference were owed
to the PTOs interpretation of Section
156))
- Deference due to agency positions on a legal

question (vs. fact question), under Chevron
(S.C.) (Brand, 5/14/07)
- Administrative regulations cannot

trump judicial precedent, which is as
binding on administrative agencies as
are statutes Rowe (Koninklijke
Philips, 1/5/10 (rejecting the BPAIs
application of interference regulation
as contrary to the CAFCs precedent
in In re Spina as relates to challenging
a copied claim in an interference on
WD grounds, reminding the district
court (which affirmed the BPAI on
this procedural ground) and the BPAI
that they must follow judicial
precedent instead of the PTOs
regulation because the PTO lacks the
236
substantive rulemaking authority to
administratively set aside judicial
precedent); Agilent Techs., 6/4/09)
- BPAI does not earn Chevron

deference on questions of substantive
patent law - Merck (Brand, 5/14/07)
- Gap-filling regulation (i.e., when

Congress did not directly address issue in
statute) entitled to deference, based on
authority delegated to the agency to make
rules to administer statutory scheme (In re
Lovin, 7/22/11; Cooper Techs., 8/19/08
(concluding the PTO gave a permissible
construction to statute where an
interpretational gap existed regarding the
statute); Apotex, 10/27/03 (FDA))
- Substantial deference to PTO in making and

interpreting (interference) regulations
Congress granted plenary power over PTO
practice (Koninklijke Philips, 1/5/10 (BPAI
abused discretion); Cooper Techs., 8/19/08;
Stevens, 5/4/04)
- New rule vs. old rules new procedural rules

applied if and only if they did not affect parties
reliance interests (Falkner, 5/26/06)
- Violation of equal protection whether regulation

in question is rationally related to legitimate
government interest (Lacavera, 2/6/06)
Attorney fee awards
237
- District court must provide a concise, clear explanation
of its reasons for finding an exceptional case, as well as
its reasons for awarding attorney fees, or when attorney
fees are denied despite the presence of one or more of the
limited circumstances for awarding fees, for the CAFC
to provide meaningful review (Spectralytics, 6/13/11;
Wedgetail, 8/12/09 (the district courts lack of a detailed
analysis for denying fees did not warrant reversal when
the record supported the denial, where the accused
infringer was unable to cite anything that could compel a
finding of exceptionality or would otherwise suggest a
need for the district court to provide its reasoning);
Innovation Techs., 6/16/08 (attorney fee award vacated
and the case remanded after the district court failed to
provide fact findings for concluding the case was
exceptional based on bad faith litigation); Intl
Rectifier, 9/23/05; Stephens, 12/29/04)
- Claim construction the district court is not

required definitively to determine the meaning of
the claims in considering whether a case is
exceptional; however, the court should make a
sufficient analysis of the claims probable meaning
to enable it to determine whether the patentees
proposed construction of the disputed language
was sufficiently plausible to justify filing suit
based upon that construction; next, if the claim
construction was permissible, there also must have
been sufficient evidence to justify the patentees
claim of infringement based on that construction
(Innovation Techs., 6/16/08 (district court failed to
construe the disputed claim terms prior to
determining the case was exceptional and
awarding the accused infringers attorney fees))
- Detail necessary in making exceptional case

findings is a matter largely within the district
courts discretion (Innovation Techs., 6/16/08)
238
- Because of the reputational and economic impact
of sanctions, the CAFC must carefully examine the
record when reviewing an exceptional case finding
Medtronic Navigation
- District courts reasons for denial of fees are unnecessary

when the record supports the denial Serio-US
(Wedgetail, 8/12/09 (remand was thus unwarranted,
citing Consolidated Aluminum: [n]o useful purpose
would be served by a remand to enable the district court
to tell us in express terms what we already know from the
record))
- Although an attorney fee award is not mandatory

when willful infringement has been found,
precedent establishes that the court should explain
its decision not to award attorney fees
Transclean (Spectralytics, 6/13/11)
Briefing and arguing the CAFC appeal waiver, joint appendix
Briefing the appeal generally appeal strategy
- Appeal strategy (Presidio Components, 12/19/12 (C.J.

Rader the CAFC rejecting the appellants attempt to
retry the case anew on appeal by asserting error on over a
dozen issues, and the cross-appellant responding with at
least five issues of its own, stating that [t]he parties
appeal strategy completely discounts and overlooks the
thorough, well-reasoned, and detailed opinions of the
district court. In nearly every respect, this court detects
no reversible error.))
Attorney argument is not evidence
- Attorney argument and unsworn fact statements are not

evidence - Laitram (Whitserve, 8/7/12 (arguments of
239
counsel cannot take the place of evidence lacking in the
record); Becton Dickinson, 7/29/10; Perfect Web,
12/2/09 (partys position on appeal was merely attorney
argument lacking evidentiary support); Gemtron, 7/20/09
(attorney argument made for the first time at oral
argument on appeal that the accused product was made
by a different process than reflected by the claim was not
evidence and thus could not rebut directly contradictory
video evidence and other evidence of the accused
infringers manufacturing process)); See also In re
Natures Remedies, 3/12/09 (nonprecedential evidence
of record did not support attorneys assertion at oral
argument)
Issues must be raised in opening brief with particularity

reply brief is too late - waiver
- Issues must be raised in opening brief with particularity

(to give the appellee a chance to respond); the reply brief
is too late (Aristocrat Techs., 3/13/13 (n.1); Arcelormittal
France, 11/30/12 (n.6: other secondary considerations
were not briefed sufficiently to preserve them, where the
patentee made only a passing reference to them); Aventis
Pharma, 4/9/12 (waiver of argument for nonobviousness,
which was raised only in the reply brief); Tyco
Healthcare, 6/22/11 (remarking that the appellant-
patentee failed to refer to articles as relevant prior art in
its opening brief; denying motion to strike portions of
reply brief as moot); Hynix, 5/13/11 (arguments in reply
brief are waived as not presented in the opening brief);
Advanced Magnetic Closures, 6/11/10; i4i, 3/10/10
(solitary sentence in opening brief failed to challenge the
denial of a post-verdict JMOL on willfulness); Titan Tire,
6/3/09; Voda, 8/18/08; Monsanto, 1/25/08 (reply brief
too late, but CAFC addressed the merits of argument
anyway); U.S. Philips, 11/2/07; In re Trans Texas
Holdings, 8/22/07; E-Pass Technologies, 1/12/07;
240
Optivus Tech., 11/16/06; Kao, 3/21/06; Smithkline
Beecham, 2/24/06; Cross Medical Prods., 9/30/05;
Evident, 2/22/05; Fuji Photo, 1/14/05)
- CAFC has discretion to consider arguments not

properly raised in opening brief (Advanced
Magnetic Closures, 6/11/10 (exception if results in
unfair procedure); Litecubes, 4/28/08 (CAFC
exercised its discretion to consider the district
courts denial of JMOL motions in view of the
unusual circumstances of the case where the issues
were briefed under the incorrect rubric of subject
matter jurisdiction); Smithkline Beecham,
2/24/06)
- Footnotes arguments in footnotes are not

preserved, and are waived (Mirror Worlds, 9/4/12;
Whitserve, 8/7/12; Otsuka, 5/7/12; Liquid
Dynamics, 6/1/06; Smithkline Beecham, 2/24/06)
- Waiver of arguments not presented in the opening

brief (Aventis Pharma, 4/9/12; Finjan, 11/4/10;
Advanced Magnetic Closures, 6/11/10 (waiver by
failing to argue against litigation misconduct as an
independent basis for awarding attorney fees);
Ajinomoto, 3/8/10 (conclusory, single sentence
assertion of no IC unaccompanied by developed
argumentation did not preserve the issue for
appeal); SEB, 2/5/10 (appeal of the district courts
modification of a pre-judgment attachment was
waived where the appellant made no arguments in
its briefs with respect to that appeal); Perfect Web,
12/2/09 (waiver where no obviousness arguments
were made specific to the dependent claims);
Revolution Eyewear, 4/29/09 (n.2); E-Pass
Technologies, 3/20/09; Litecubes, 4/28/08;
Monsanto, 1/25/08; Cordis, 1/7/08 (CAFC
decision that issued after the filing of all briefs, but
241
before oral arguments, did not change waiver);
U.S. Philips, 11/2/07; In re Trans Texas Holdings,
8/22/07 (failure to argue validity in view of
alternative broader claim construction); Takeda,
6/28/07; E-Pass Technologies, 1/12/07; Optivus
Tech., 11/16/06) ALSO - need developed
argument to avoid waiver (Voda, 8/18/08 (no
reasons given for obviousness); Halliburton,
1/25/08 (n.2: Judges are not like pigs, hunting for
truffles buried in briefs); Monsanto, 8/16/06;
Smithkline Beecham, 2/24/06); See also Garrido,
10/22/13 (nonprecedential reply brief was too
late); Shimano, 4/29/13 (nonprecedential n.1:
declining to consider the parties post-argument
submissions regarding whether issues were
presented to the examiner or BPAI during reexam,
and addressing instead only those arguments made
in the parties opening appeal and cross-appeal
briefs); Asia Pacific Microsystems, 3/6/13 (Order)
(nonprecedential on the appellees motion to
dismiss, summarily affirming the ITCs judgment
of a general exclusion order due to the appellants
waiver of contributory infringement argument on
appeal, where the appellant made a deliberate
choice of focusing its appeal on inducement, as
well as expressly acknowledged its desire to
abandon any argument regarding contributory
infringement); Radar Industries, 3/30/11
(nonprecedential n.5: waiver of argument not
sufficiently briefed)
- Waiver only to accused products on appeal

(U.S. Philips, 11/2/07, n.2)
Issue must be raised on appeal, or waiver
242
- Issue must be raised on appeal for the CAFC to address,
or waiver (Soverain Software, 9/4/13 (waiver on appeal
by the patentee for failing to separately argue the validity
of dependent claims when independent claim is invalid
citing Gardner, SIBIA Neurosciences); Voter Verified,
11/5/12 (waiver of indirect infringement based on rule in
Akamai (en banc) for not arguing on appeal); Santarus,
9/4/12 (waiver by not contending error by the district
court on issue); In re Antor Media, 7/27/12 (waiver by
the patentee of argument for lack of enablement of prior
art reference where was not raised in brief); Mezzalingua
Assocs., 10/4/11 (J. Reyna, dissenting n.3: exception
for pure question of law, e.g., statutory construction);
Cordance, 9/23/11 (waiver on appeal where arguments
were not presented specifically relevant to the patentees
entitlement to a new trial regarding the validity of two
claims); Tivo, 4/20/11 (en banc) (scope of injunction
must be challenged on direct appeal, and not later on
appeal from a contempt judgment); Innovention Toys,
3/21/11 (CAFC not reviewing the district courts
construction of movable to encompass the capability of
movement, because the accused infringer did not
challenge the district courts construction directly but
rather indirectly based on its application to the accused
product); Finjan, 11/4/10 (waiver where alternate claim
construction was not proposed or how it would affect the
jurys infringement finding); Amgen, 9/15/09 (declining
to apply waiver where appellant did not raise alternative
grounds of affirmance despite the appellees cross-appeal
relating to the claim); Baden Sports, 2/13/09 (waiver of
argument not made by cross appellant on appeal, making
instead another (losing) argument); In re Swanson,
9/4/08 (waiving arguments on the merits where the
appellant relied solely on statutory construction); Golden
Bridge Tech., 5/21/08 (appeal focused on an entirely
different argument from the one lost at the district court);
Halliburton, 1/25/08 (n.2); Princo (Order), 3/1/07;
Business Objects, 1/6/05)
243
- Argument by incorporation, such as by referring to
a summary judgment memoranda for legal analysis
in an appellate brief, violates FRAP 28(a)
(Monsanto, 8/16/06)
- CAFC generally declines to raise an issue sua

sponte that the parties have not presented WMS
Gaming (Rambus, 9/24/13)
- Merely stating disagreement with the trial court

does not amount to a developed argument
(Halliburton, 1/25/08 (n.2); Monsanto, 8/16/06;
Smithkline Beecham, 2/24/06)
- Objection to other partys waiver was waived for

failure to appeal (Princo (Order), 3/1/07)
- Party cannot argue an issue of which it lost at trial,

and which it has not appealed, if the CAFCs
acceptance of the argument would result in
reversal or modification of the judgment, rather
than an affirmance (Aquatex, 8/19/05)
Waiver during oral argument
- Waiver during oral argument (Celsis In Vitro, 1/9/12

(joint infringement argument raised for the first time
during oral argument waived); Delaware Valley, 3/11/10
(waiver of argument not (at least clearly) contested
during SJ proceeding was supported by counsels answer
to question of waiver during oral argument); Ultimax
Cement, 12/3/09 (dismissing appeal with respect to
patent after the patentee waived argument that the patent
was not invalid (thereby rendering moot its argument as
to infringement) by stating at oral argument that it was
not concerned with the district courts finding of
244
invalidity)); See also Joovy, 8/5/11 (nonprecedential
vacating IC judgment after appellee explicitly waived
remand to determine IC under Therasense (en banc) in
the event claim held invalid)
Length and number of briefs
- Extending the length of briefs - motion for leave to file

an extended brief is not invited or routinely granted
Fed. Cir. R. 28(c) (Therasense (Order), 2/2/09
(nonprecedential - party failed to show that an extension
of the word count for its reply brief was warranted,
despite multiple appellees))
- Single reply brief is permitted under FRAP 28(c),

regardless of how many appellee briefs are filed
(Therasense (Order), 2/2/09 (nonprecedential))
- Motion to strike reply brief improper attempt to obtain

the final word in the appeal, a practice that the CAFC
strongly discourages (Inventio, 6/15/11)
Concessions in briefs, at oral argument
- Concessions made in briefs, at oral argument (Bosch,

10/13/11 (n.6: counsel was unable to assure that the
infringer could satisfy a damages judgment and
prospective royalty payment in lieu of an injunction);
Atlantic Research, 10/6/11 (admission at oral argument
that patent did not disclose embodiment covered by
reissue patent claims, as construed); In re NTP I, 8/1/11
(patentees concessions made in reply brief could not be
reargued on remand: This was the opportunity for NTP
to appeal these issues. Given that it raised these issues,
but then conceded them, NTP is bound by these
concessions and may not reargue these points.); Erbe
245
Elektromedizin, 5/19/09 (term working channel of
endoscope did not include suction or gas delivery
because the appellant conceded in brief that a working
channel must be an instrument channel)); See also
Centillion Data Systems, 11/25/13 (nonprecedential for
a statement made to the court to be a judicial admission
it must be clear, deliberate, and unambiguous (applying
7th Cir. law) no judicial admission where statement
during a prior appeal was made in a different context);
Altair Engineering, 3/9/11 (nonprecedential CAFC
relying on concession made at oral argument); Cimline,
3/2/11 (nonprecedential no issue of fact to avoid SJ if
fail to respond to opponents arguments and answers to
panel questions during oral argument)
Mischaracterizing, misquoting text, excessive hyperbole in

briefs
- Mischaracterizing, misquoting text, failure to use

ellipses, in briefs (Rates Technology, 7/26/12 (CAFC
expressing disapproval of several misleading or improper
statements in brief, including headings factually incorrect
and citing a prior CAFC case as precedent, but failing to
note that the prior case was a nonprecedential Rule 36
judgment); Exergen, 8/4/09 (overstating the content of
expert testimony as the basis for infringement); Felix,
4/10/09 (finding highly misleading dictionary
definitions in brief (which omitted words without using
ellipses) that border[ed] on a misrepresentation to the
court and reminding counsel of the importance of
providing full, accurate, and undistorted quotations and
citations in briefing before this court); Monsanto,
1/25/08 (risks misleading this Court)); See also Nissim,
12/11/12 (nonprecedential n.4: excessive hyperbole in
the briefs made the parties difficult to take seriously and
unpleasant to read, and stripped both parties of their
credibility; also noting unprofessional statements and
246
misrepresentations in briefs); McZeal, 6/18/09
(nonprecedential n.2: appellee mischaracterized the
lower court opinion in brief); Medegen, 11/20/08
(nonprecedential counsel are responsible for ensuring
that the briefs contain accurate information)
Striking portions of briefs ad hominem attacks
- Striking portions of appellate briefs ad hominem

attacks of opponents are not condoned, and typically do
more harm than good to the party that launches them (In
re Cygnus Telecomms., 8/19/08 (reply brief accused the
appellee and its counsel of lying and committing a
crime that should be reported to the appropriate
authorities))
Confidentiality in briefs
- Confidentiality markings in briefs CAFC Rule 28(d) (In

re Violation of Rule 28(d), 3/29/11)
- Strong (but on absolute) presumption in favor of a

common law right of public access to court
proceedings Nixon (S.C.) (In re Violation of Rule
28(d), 3/29/11)
- Well settled that FRCP 26(c)(1) does not provide

an absolute privilege against disclosure of material
that a party might wish to mark as confidential
the rule instead permits a court to issue limited
protective orders to prevent the discovery or
disclosure of certain information, or to specify the
use that may be made of discovered information
(In re Violation of Rule 28(d), 3/29/11 (addressing
the effect of subsection G covering protection of
trade secrets and other commercial information))
247
Joint appendix
- Joint appendix - costs for preparing the joint appendix

for including briefing on motions, duplication of
materials Fed. Cir. R. 30 (In re Cygnus Telecomms.,
8/19/08 (motion denied)); See also Clearvalue, 8/1/11
(nonprecedential ordering cross-appellant to pay
appellant the costs for including improper and excessive
pages of materials in the joint appendix, and that cross-
appellant prepare a corrected joint appendix)
- Moving to strike portions of the appendix not part

of the record on appeal (which includes the
original papers and exhibits filed in the district
court Fed. Cir. R. 10(a)) (In re Cygnus
Telecomms., 8/19/08 (motion to strike denied))
Choice of law CAFC vs. regional circuit law
- CAFC law vs. regional circuit law (Wordtech Systems,

6/16/10 (damages in patent cases applying CAFC vs.
9th Cir. law); Fujifilm, 5/27/10; Judkins, 4/8/08 (giving
dominant effect to Federal Circuit precedent insofar as it
reflects considerations specific to patent issues with
respect to section 43(a) Lanham Act claim for bad faith
enforcement of patent); Mitutoyo, 9/5/07; O2 Micro,
11/15/06; Aero Products, 10/2/06; Louisville Bedding,
7/25/06; Invitrogen, 10/5/05; Lab Corp. of America,
9/30/04; Q-Pharma, 3/8/04; Sulzer, 2/14/04; Ferguson,
12/4/03; Electronics, 8/18/03); See also In re Cypress
Semiconductor, 4/2/09 (Order) (nonprecedential
preclusion (res judicata) question arising in an ITC
proceeding was governed by CAFC law, because any
appeal of the ITCs final determination would be within
the CAFCs exclusive jurisdiction)
248
- Patent-related, questions unique to U.S. patent law
apply CAFC law (Accenture, 9/5/13; Wordtech
Systems, 6/16/10 (damages in patent cases); Hyatt,
8/11/09 (CAFC law applied to exclusion of
evidence by the D.C. district court in Section 145
actions) [vacated]; Acumed, 5/13/08 (claim
preclusion applied to successive claims of patent
infringement); Dominant Semiconductors, 4/23/08
(CAFC law applied to whether state-law tort
claims are preempted by federal patent law); BIO,
8/1/07 (objectives of patent statute); Voda, 2/1/07
(supplemental jurisdiction over foreign patent
infringement claims); Aero Products, 10/2/06
(damages for both patent and trademark damages);
In re Echostar Communications, 5/1/06 (scope of
waiver of privilege for advice of counsel defense
to willfulness); Invitrogen, 10/5/05; Ferguson,
12/4/03)
- CAFC law applied to both substantive and

procedural issues intimately involved in the
substance of enforcement of the patent right
(Pregis, 12/6/12; Revision Military,
11/27/12 (preliminary injunction); Wordtech
Systems, 6/16/10 (patent damages);
Fujifilm, 5/27/10; Judkins, 4/8/08 (bad faith
enforcement of patent under section 43(a) of
Lanham Act); Voda, 2/1/07; O2 Micro,
11/15/06)
- CAFC law applies when deciding whether

particular written or other materials are
discoverable in a patent case, if those
materials relate to issue of substantive patent
law (In re Echostar Communications,
5/1/06)
249
- Procedural issue pertaining to or unique to patent
law apply CAFC law (Lazare Kaplan, 4/19/13
(review of grant of Rule 60(b) motion vacating
judgment that patent was not invalid, after the
CAFC broadened the claim construction in earlier
appeal Q of law for the CAFC because consistent
and uniform application by the district courts
required in patent cases citing Fiskars); Revision
Military, 11/27/12 (preliminary injunction);
Woods, 8/28/12 (applying Section 282); Teva,
12/1/11 (requirements of Section 102(g)); General
Protecht Group, 7/8/11 (PI against participation in
a district court suit for infringement and an ITC
investigation); Wordtech Systems, 6/16/10 (patent
damages); In re Deutsche Bank, 5/27/10
(discovery matter implicated issue of substantive
patent law); Baden Sports, 2/13/09 (modifying
injunction); Wechsler, 5/18/07; Voda, 2/1/07;
Walter Kidde, 3/2/07; O2 Micro, 11/15/06; Aero
Products, 10/2/06; Invitrogen, 10/5/05; Lab Corp.
of America, 9/30/04)
- Procedural issue that is not itself a

substantive patent law issue is nonetheless
governed by CAFC law if the issue pertains
to patent law, if it bears an essential
relationship to matters committed to
CAFCs exclusive control by statute, or if it
clearly implicates the jurisprudential
responsibilities of the CAFC in a field
within its exclusive jurisdiction (O2 Micro,
11/15/06)
- Regional circuit law applied (i.e., the law of the

regional circuit to which district appeals normally
lie), if not patent-related, if procedural question not
unique to CAFCs exclusive jurisdiction (Sanofi-
Aventis, 5/10/13 (applying 9th Cir. law to a denial
250
of an anti-suit (arbitration) injunction abuse of
discretion); Wi-Lan, 7/13/12 (scope of attorney-
client privilege, handling of subpoena (9th Cir.);
Landmark Screens, 4/23/12 (statute of limitations
issues - equitable estoppel, equitable tolling (9th
Cir.)); Ultimax Cement, 12/3/09 (attorney
disqualification (9th Cir.)); Imation, 11/3/09
(motion for judgment on the pleadings under
FRCP 12(c) (8th Cir.)); Stanford U., 9/30/09
(affirmative defenses under FRCP 8(c)(2) (9th
Cir.)) [affirmed by the U.S. Supreme Court, on
6/6/11, in Stanford U. v. Roche]; Garber, 6/26/09
(FRCP 60(b) motion and FRCP 41(a) dismissal
(7th Cir.)); Minks, 10/17/08 (reducing the jurys
damages award without offering a new trial); In re
Cygnus Telecomms., 8/19/08 (issues relating to SJ
proceedings (9th Cir.)); Research Corp. Techs.,
8/1/08 (9th Cir., evidentiary rulings); Amado,
2/26/08 (9th Cir.; FRCP 60(b)(6) motion relief
from judgment); Sitrick, 2/1/08 (9th Cir., waiver);
Innogenetics, 1/17/08 (7th Cir., forfeiture);
Mitutoyo, 9/5/07 (7th Cir., pleading FRCP
12(b)(6), failure to prosecute FRCP 41(b));
Walter Kidde, 3/2/07 (4th Cir., voluntary dismissal
motion under FRCP 41(a)(2)); Go Medical Indus.,
10/27/06; Aero Products, 10/2/06; Eolas
Technologies, 7/31/06; Louisville Bedding,
7/25/06; Intel, 7/14/06; Invitrogen, 10/5/05;
Ericsson, 8/04/05; Bowling, 4/11/05)
- Deference for regional circuit law is based

on the CAFCs concern for consistency of
future trial management (Eolas
Technologies, 7/31/06)
- Local court rules (of general applicability)

by definition not unique to patent law and
regional circuit law applied, vs. local rules
251
that apply only to patent cases (e.g., N.D.
Cal.)? (O2 Micro, 11/15/06)
- Local rules not only unique to patent

cases but also likely to directly affect
substantive patent law theories to be
presented at trial (e.g., infringement
contentions, and amendment thereof)
issues concerning the validity and
interpretation of such local patent
rules are intimately involved in the
substance of enforcement of the
patent right CAFC law applied (O2
Micro, 11/15/06)
- Regional circuit law not followed by the

CAFC when contrary to Supreme Court
precedent (Exigent Tech., 3/22/06)
- When the regional circuit, or state, has not

decided the issue, the CAFC determines,
predicts how the regional circuit, or state,
likely would decide the issue (Wi-Lan,
7/13/12 (predicting how the 9th Circuit
would have decided the scope of an express
extrajudicial (pre-litigation) waiver of
attorney-client privilege would have
looked to the heavy weight of authority from
the other circuits employing fairness
considerations to decide the scope of
waivers; see also J. Reyna, dubitante);
Corebrace, 5/22/09 (stating the rule for
when the states highest court has not
addressed the issue); Litecubes, 4/28/08
(CAFC predicted that the Eighth Circuit
would have found substantial evidence of
sales in the United States sufficient to
uphold the jurys finding of copyright
252
infringement); Walter Kidde, 3/2/07 (4th
Cir.); L&W, 12/14/06 (waiver doctrine);
Summit Technology, 1/26/06; Bowling,
4/11/05); See also Astrazeneca, 10/30/13
(nonprecedential predict how the regional
circuit (3rd Cir.) would decide issue in light
of the decisions of the circuits various
district courts, public policy, etc. citing
Panduit)
- Instructive to look to the law of other

circuits, courts (Delano Farms,
8/24/11 (looking to the analysis of
regional circuits where the CAFC had
not addressed sovereign immunity
issue); Corebrace, 5/22/09 (looking to
the law of the Court of Claims and the
California Supreme Court when the
issue had not been addressed under
Utah law); Litecubes, 4/28/08;
Summit Technology, 1/26/06)
Circumstantial evidence
- Circumstantial evidence to satisfy burden of proof;

hornbook law that direct evidence of a fact is not
necessary circumstantial evidence is not only sufficient,
but may also be more certain, satisfying and persuasive
than direct evidence (Jazz Photo, 2/28/06 (CIT)); See
also O2 Micro, 11/18/11 (nonprecedential stating rule,
where direct infringement for proving inducement was
shown by circumstantial evidence)
Claim construction (CC)
Claim terms reviewed on appeal
253
- Claim terms reviewed on appeal - CC or alleged
infringement of claim term(s) not addressed once
case decided on interpretation of another claim
term (Bayer Cropscience, 9/3/13 (the CAFC did
not construe claims where the patentees only
argument on appeal for infringement was that the
court adopt its proposed (and rejected) broad
construction citing Verizon and Leo Pharm.);
Saffran, 4/4/13 (J. Moore, dissenting
characterizing the courts construction of second
disputed claim term as dicta, where reversal of
infringement was mandated by reversal of the
district courts construction of a first disputed
claim term); Sandisk, 10/9/12 (claim construction
arguments relating to withdrawn claims were not
reviewable where they did not affect the final
judgment entered by the district court citing
MIT); Thorner, 2/1/12 (CAFC used its discretion in
considering claim term on appeal that was fully
briefed and argued below, distinguishing MIT);
Arlington Indus., 1/20/11; Erbe, 12/9/10 (n.3);
Intellectual Science, 12/15/09 (CAFC did not
address the district courts construction of claim
term where the patentee failed to show a genuine
issue of material fact to avoid SJ with respect to
another limitation addressed); Computer Docking
Station, 3/21/08 (second term not reviewed when
noninfringement decided based on first term);
Serio-Us Industries, 8/10/06; Panduit, 6/12/06;
Inpro II Licensing, 5/11/06; Exigent Tech.,
3/22/06; Boss Control (n.2), 6/8/05; Hoffer,
4/22/05); See also Fenner Investments, 3/15/10
(Order) (nonprecedential); Compare - all claim
terms on appeal should be reviewed, not just ones
needed to dispose of case (Honeywell, 6/22/06;
Inpro II Licensing, 5/11/06 (J. Newman, dissenting
citing Cardinal Chemical (S.C.)), plus other
CAFC cases, showing the conflict in the courts
254
decisions; not construing all disputed claim terms
on appeal, including those which the district court
construed broadly and thus may render the
claim(s) invalid, leaves a cloud of uncertainty on
the patent, its scope, and its validity); Hoffer,
4/22/05 (concurrence); Chimie, 4/11/05); See also
Amgen, 6/1/09 (nonprecedential not addressing
the construction of numerous other claim terms
appealed where none had any impact on the SJ of
noninfringement on appeal); Digene, 4/1/09
(nonprecedential other claim terms on appeal not
considered after the appellants concession of
noninfringement with respect to another term);
Contech, 2/13/09 (nonprecedential); Respironics,
12/16/08 (nonprecedential additional terms not
construed when they did not present any remaining
issues on remand)
- Additional terms considered
- CAFC construing additional term as

basis for noninfringement even
though construction of first term was
dispositive (Thorner, 2/1/12;
Decisioning.com, 5/7/08 (term
construed on appeal even though not
the basis of the district courts SJ of
noninfringement, because the CAFC
concluded the district court erred and
the term was identified by the parties
as a potentially-relevant term on
remand); Regents of U. Cal., 2/28/08
(done in the interest of judicial
efficiency, as term would be at issue
on remand since appeared in both
patents in suit); Honeywell, 5/25/07
(although only two of five contested
terms contributed to the SJ of
255
noninfringement, all terms were
construed on appeal, as the district
court discerned factual issues in
dipute regarding infringement of the
remaining terms); Honeywell,
6/22/06)
- Interpretation of other disputed claim

terms on appeal appropriate when
terms are likely to be at issue in a new
trial, or otherwise on remand (Deere,
12/4/12 (considering additional terms
where fully briefed on appeal and
may be important on remand); Apple,
10/11/12 (addressing claim
construction aspect of the district
courts likelihood of success analysis
in granting PI, because may become
important on remand); Aspex
Eyewear, 3/14/12; Thorner, 2/1/12;
Advanced Software Design, 6/2/11
(CAFC addressed construction of
term where may become important on
remand, and in the interest of judicial
economy); Arlington Indus., 1/20/11
(not construing additional terms
which required further briefing, and
also were at issue in a related appeal);
Verizon, 9/26/07); See also
Respironics, 12/16/08
(nonprecedential disputed claim
terms construed where remand was
necessary to reconsider infringement
and anticipation of patents)
- Withdrawn claims not reviewed on appeal

(Sandisk, 10/9/12 (CAFC lacked jurisdiction over
256
claims the patentee withdrew before the district
courts final judgment))
Claim terms must be in controversy
- Claim terms on appeal must be in controversy

only claim terms in controversy need be construed
(Fresenius, 9/10/09 (declining to consider claim
construction arguments where no reasons given
why a modified construction would affect the
infringement and/or validity judgments, citing
Jang rule); Jang, 7/15/08; Hakim, 2/23/07; MBO
Labs, 1/24/07; Serio-Us Industries, 8/10/06;
Nautilus Group, Order 2/16/06 (cross-appeal
containing unappealed CC rejected; See also
Cross appeals); NTP, 8/2/05; Sandisk, 7/8/05)
- CC is directed to claims or claim terms

whose meaning is disputed as applied to the
patentees invention in the context of the
accused device (Jang, 7/15/08; Hakim,
2/23/07)
- Accused product considered for context, in

order to focus claim construction on
disputed claim terms only (Jang, 7/15/08;
MIT, 9/13/06; Exigent Tech., 3/22/06) (See
also CLAIM CONSTRUCTION section)
- CAFC addressing only CC issues presented

by the judgment under review (Aspex
Eyewear, 3/14/12 (CAFC in the interest of
judicial economy exercised its discretion in
deciding CC issues presented by the parties
that were likely to be dispositive on remand
as to infringement, even though the district
courts CC rulings did not result in a
257
judgment of noninfringement); Thorner,
2/1/12 (CAFC exercised its discretion in
deciding CC of additional term citing
MIT); Miken Composites, 2/6/08; MIT,
9/13/06); See also E8 Pharmaceuticals,
11/6/13 (nonprecedential affirming (in
brief paragraph) noninfringement, basing
decision solely on its agreement with the
district courts construction of a single
phrase (randomly primed PCR-derived
RCG), and not reaching any other issues
raised on appeal)
- CAFC chose not to vacate district

courts construction of terms not on
appeal (Monsanto, 10/4/07)
- When no dispute as to the meaning of a term that

could affect the disputed issues of the litigation,
CC may not be necessary (Jang, 7/15/08 (referring
to the risk of rendering an advisory opinion as to
CC issues that do not actually affect the
infringement controversy between the parties,
citing Coffman (S.C.)); Hakim, 2/23/07)
- CAFC lacks the power to construe claim

terms not disputed by the parties (MBO
Labs, 1/24/07)
- CAFC reviewing the meaning of the district

courts CC, where no challenge to the CC
itself (Cordis, 9/28/11 (reviewing the
ordinary meaning of CC given to the jury
regarding claim term undulating and terms
crest and trough in the instruction))
- Party must propose alternative meanings for

terms that might affect claim validity, and
258
also explain why i.e., must tell CAFC why
claim terms are disputed (Hakim, 2/23/07)
CAFC adopting new CC remand or new trial necessary?
- Adopting new CC
- CAFC sustaining judgment based on CC not

relied on by the district court Nautilus
Group (MIT, 9/13/06)
- CAFC has authority to adopt entirely new

CC not proposed by either party (Bancorp
Services, 7/26/12 (using rule as basis for
construing claim terms in the first instance
on appeal); Marine Polymer, 3/15/12 (en
banc) (n.4 citing Exxon Chem. Patents)
but CAFC hesitant to do so (Kim, 9/20/06);
See also LSI Industries, 5/22/08
(nonprecedential CAFC appeared to adopt
new CCs sua sponte for multiple terms)
- CAFC has an independent obligation

to construe patent terms because of
this obligation, the CAFC need not
accept the constructions proposed by
either party, or that of the district
court, when it determines that all of
the constructions are incorrect
(Bancorp Services, 7/26/12 (using
rule as basis for construing claim
terms in the first instance on appeal
citing Praxair); Therasense, 1/25/10
(rejecting both the district courts
construction and patentees proposed
construction in affirming SJ of
noninfringement) [vacated on
259
4/26/10, and reinstated by
Therasense, 5/25/11 (en banc)];
Praxair, 9/29/08 (also rejecting the
district courts construction as
incorrect))
- Whether remand, or new trial, is necessary
- Remand or new trial necessary? where the

CAFCs CC modified the district courts CC
- new trial regarding infringement or
invalidity may be necessary (Power
Integrations, 3/26/13 (remanding after
reversing the district courts CC for the
court to determine whether any new and
material issues on infringement or validity
were distinct and separable such that a
new trial limited only to those issues would
not unduly prejudice either party citing
Gasoline Prods. (S.C.); also ordering a new
trial to determine damages for both pre-
verdict and post-verdict direct infringement,
where the issues were distinct and separable
from other issues); Arcelormittal France,
11/30/12 (party seeking new trial must show
that they were prejudiced by the district
courts CC error Verizon; remanding for a
new trial on infringement and obviousness
based on the CAFCs new CC, where the
district courts CC error prejudiced the
patentee with respect to obviousness by
preventing the jury from properly
considering the patentees evidence of
commercial success); Dealertrack, 1/20/12
(remanding SJ of noninfringement after
modified CC); Markem-Imaje, 9/9/11
(remanding SJ of noninfringement after
modified CC); August Tech., 8/22/11
260
(vacating and remanding based on new CC);
In re NTP I, 8/1/11 (remanding to BPAI for
new validity determination based on
modified (narrower) construction by the
CAFC); Lexion Medical, 4/22/11 (district
court did not abuse discretion by permitting
additional factual (expert) testimony on
remand from new CC by the CAFC); Lazare
Kaplan, 12/22/10 (remand was necessary
where infringement by accused machines
could not be determined with any certainty
under the CAFCs new broader CC);
Laryngeal Mask, 9/21/10 (vacating and
remanding SJ of noninfringement based on
erroneous CC); Adams, 8/5/10 (vacating and
remanding from SJ of noninfringement after
broadening the claim construction); Silicon
Graphics, 6/4/10 (remanding after reversing
erroneous CC); Haemonetics, 6/2/10
(reversing incorrect CC and remanding);
Pressure Products, 3/24/10 (reversing
erroneous CC of means-plus-function
limitation and remanding); Therasense,
1/25/10 (SJ of noninfringement was still
appropriate under the correct construction)
[vacated on 4/26/10, and reinstated by
Therasense, 5/25/11 (en banc)]; Ultimax
Cement, 12/3/09 (vacating noninfringement
judgment and remanding after modifying
construction of term (anhydride)); Kara
Technology, 9/24/09 (remanding for the
district court to decide infringement in the
first instance based on the CAFCs broader
construction, so that alternative arguments
of noninfringement could be presented);
Cardiac Pacemakers, 8/19/09 (changed CC
did not permit new anticipation arguments
on remand where the CC was not the basis
261
for distinguishing the prior art); Linear
Tech., 5/21/09 (remanding for infringement
determination under the correct CC);
Praxair, 9/29/08 (remand necessary, as was
not a case in which the record was clear that
the accused device did or did not infringe);
Lucent Techs., 5/8/08 (vacate and remand);
Solomon Techs., 5/7/08 (remand not
necessary where an incorrect aspect of the
ITCs construction did not affect the courts
conclusion as to noninfringement); PSN
Illinois, 5/6/08 (no remand and affirming SJ
of noninfringement although concluding that
the district court construed the disputed term
too narrowly, because of no infringement
even under the correct CC); Verizon,
9/26/07 (new trial necessary); Cytologix,
9/21/05); See also Capital Machine, 4/15/13
(nonprecedential vacating SJ of
noninfringement and remanding after
correcting the district courts CC of several
terms, where was unclear from the district
courts final judgment whether the
construction of any one claim term was
case-dispositive); Harris, 1/17/13
(nonprecedential for new trial, must show
that district courts erroneous CC prejudiced
the validity case below - Eaton); Accentra,
1/4/13 (nonprecedential remanding for the
district court to consider obviousness
arguments in the first instance after
correcting the district courts claim
construction); Furnace Brook, 7/22/11
(nonprecedential J. OMalley, dissenting
applying collateral estoppel based on a prior
CAFC panel decision was improper where
the original panel should have remanded the
case after modifying the CC); Seiko Epson,
262
5/20/10 (nonprecedential vacating SJ of
invalidity and remanding after narrowing
CC); Ilight Technologies, 4/20/10
(nonprecedential modifying the district
courts CC and remanding for the jury to be
instructed that a hollow waveguide does not
infringe (as a matter of law due to a PH
disclaimer)); Smith & Nephew, 12/2/09
(nonprecedential reversing infringement
judgment and remanding for a new jury trial
where the district courts construction was
erroneous); Cartner, 6/17/09
(nonprecedential judgment of invalidity
based on lack of WD vacated and remanded
after modifying CC); Norgren, 5/26/09
(nonprecedential remanding for the ALJ to
decide obviousness in the first instance
under the correct claim construction); LSI
Industries, 5/22/08 (nonprecedential
remanded after new CC)
- Alternative basis for affirmance of

noninfringement, based on the
construction of another claim term
(Paragon Solutions, 5/22/09 (rejecting
alternative basis where fact issues
remained with respect to the other
claim term))
- Affirming jury verdict despite change

in CC, where the jury verdict in view
of the modified CC is supported by
substantial evidence (Function Media,
2/13/13)
- Where an infringement verdict relies

on an incorrect construction of the
disputed claim terms, the CAFC may
263
grant JMOL or order a new trial to
correct the error, depending on the
degree of difference between the
incorrect construction and the correct
construction; if no reasonable jury
could have found infringement under
the correct claim construction, the
CAFC may reverse a district courts
denial of JMOL without remand
Harris (Saffran, 4/4/13 (reversing
denial of JMOL of noninfringement,
and holding no infringement as a
matter of law based on the correct
CC); 800 Adept, 8/29/08 (reversing
the trial courts judgment of
infringement, which was based on an
improper jury instruction and
incorrect claim construction); Finisar,
4/18/08 (holding erroneous
construction of one term harmless
error and of another term requiring
vacatur and remand of the
infringement verdict)); See also
Harris, 1/17/13 (nonprecedential
stating rule, citing Finisar, and
remanding for further consideration of
infringement in view of the correct
CC where noninfringing feature was
only an option of the accused system);
Smith & Nephew, 12/2/09
(nonprecedential reversing
infringement judgment, while
remanding where [r]easonable jurors
could find infringement even under
the revised claim construction);
Lexion Medical, 8/28/08
(nonprecedential nullifying and
vacating/remanding jury verdict of
264
infringement because of incorrect
claim construction); Heuft
Systemtechnik, 6/25/08
(nonprecedential reversing the
district courts denial of motion
JMOL of noninfringement and
remanding with instructions to enter
judgment in favor of the accused
infringer where noninfringement was
undisputed based on the correct
construction)
District court must resolve CC disputes, which CC must be

followed
- District court must construe the meaning and

scope of disputed claim terms Q of law -
required by Markman (en banc) (O2 Micro,
4/3/08)
- Court, not the jury must resolve CC disputes

when the parties raise an actual dispute
regarding the proper scope of claims, the
court, not the jury, must resolve that dispute
Markman (en banc) (explaining why
judges are better suited to find the acquired
meaning of patent terms) (Function Media,
2/13/13 (no O2 Micro problem where the
case was like Verizon, and not O2 Micro,
because the issue was whether improper
arguments, not questions of claim scope,
were submitted to the jury); Lazare Kaplan,
12/22/10 (rejecting argument that the trial
judge left the jury to construe term rigid
frame by providing dictionary definitions
of the terms along with reading the claim
language); Finjan, 11/4/10 (O2 Micro rule
265
was inapplicable where the defendants
attempted to resurrect a CC already rejected
by the district court); Verizon, 4/16/10
(distinguishing O2 Micro, where the
patentee failed to argue during trial that any
specific claim term was misconstrued or
needed further clarification); Pressure
Products, 3/24/10 (supplementing the claim
construction was proper in view of the
district courts better understanding of the
invention at trial, specifically defining the
term score line for the jury which was not
previously defined); Kinetic Concepts,
2/2/09 (district courts failure to instruct the
jury on the construction of the term
wound was harmless because the jury
adopted the correct construction (based on
expert testimony) in rendering its verdict of
nonobviousness; also distinguishing O2
Micro, that while it permits a remand for
further claim construction, it does not
require one, particularly here where the
district court initially construed the term but
later vacated its construction because the
parties did not use the (broader) construction
in front of the jury; see also J. Dyk,
dissenting the district courts failure to
construe the term wound was clear error,
citing O2 Micro); Innovation Techs.,
6/16/08; O2 Micro, 4/3/08 (district court
improperly failed to construe disputed term
only if for the jury because believed to
have a well-understood definition)); See also
Creative Internet Advertising, 4/22/11
(nonprecedential district court erred in
leaving a central CC question to the jury);
Alloc, 2/18/10 (nonprecedential the district
court erred (albeit harmlessly due to the
266
CAFCs obviousness ruling) by submitting
claim construction to the jury)
- Once a district court has construed the

relevant claim terms, and unless
altered by the district court, then that
legal determination governs for
purposes of trial; no party may
contradict the courts CC to a jury
(Exergen, 8/4/09 (patentee made
misleading statement to the jury
which directly contradicted the
district courts earlier CC of term
(internal temperature)); See also
Warsaw Orthopedic, 1/26/11
(nonprecedential n.2 counsels
narrower construction suggested to
the jury could not be substituted for
the broader construction instructed by
the district court)
- District court has an obligation to resolve

any issues regarding CC, especially when
the parties request CC (unless lacking
merit), and particularly when the case is
tried to a jury, where delegation is improper
(Lazare Kaplan, 12/22/10 (parties dispute
concerned factual questions relating to the
test for infringement for the jury, and not the
proper claim construction of the disputed
(positional accuracy) limitation,
distinguishing O2 Micro); Kinetic Concepts,
2/2/09 (J. Dyk, dissenting improper to
argue claim construction to the jury because
the risk of confusing the jury is high when
experts opine on claim construction); O2
Micro, 4/3/08 (district court failed to
construe claims where the parties disputed
267
not the meaning of the term only if, but
rather the scope that should be encompassed
by this claim language); Verizon, 9/26/07
(dissent, J. Gajarsa)); See also Lexion
Medical, 8/28/08 (nonprecedential district
court failed to construe vigorously
disputed claim term)
- Where claim meaning is disputed, the CAFC

must be furnished sufficient findings and
reasoning to permit meaningful appellate
scrutiny - Nazomi (In re Katz Patent
Litigation, 2/18/11 (remanding the district
courts construction which was unclear as to
what was required of the accused system);
Innovation Techs., 6/16/08 (addressing the
extent to which the district court must
construe disputed claim terms before
considering whether the case is
exceptional for awarding attorney fees))
- Not all terms need be construed - district courts are

not (and should not be) required to construe every
limitation present in a patents asserted claims, but
rather, claim construction is a matter of resolution
of disputed meanings and technical scope, to
clarify and when necessary to explain what the
patentee covered by the claims, for use in the
determination of infringement (O2 Micro, 4/3/08)
- District court has discretion to decide CC issues

from the bench (Lava Trading, 4/19/06)
- District court is not bound by the CC arguments of

the parties Exxon (Bancorp Services, 7/26/12
(CAFC using rule as basis for construing terms in
the first instance on appeal); Marine Polymer,
3/15/12 (en banc) (n.4))
268
- District courts inconsistent claim construction
(Vita-Mix, 9/16/09 (district court improperly
modified claim construction between Markman
hearing and SJ proceedings by broadening the
scope of disclaimer))
- District court adopting one partys CC for

purposes of SJ motion - when district court
adopted CC of the patentee (rather than conducting
its own CC) for purposes of summary judgment
motion, the CAFC also adopted the CC for
purposes of appeal i.e., CAFC does not construe
claim terms in first instance (Perfect Web, 12/2/09
(noting that the patentee offered no reason why
adopting the accused infringers construction
would have changed the obviousness outcome);
Applied Medical Resources, 5/15/06)
- District court construing claim term(s) sua sponte

(e.g., within findings of fact and conclusions of
law), the CAFC reviews de novo (Conoco,
8/17/06); See also MEMS Tech. Berhad, 6/3/11
(nonprecedential proper for ITC to construe term
on its own even though not advanced by the
parties)
- District court is permitted to clarify its earlier CC

(Function Media, 2/13/13 (the patentee failed to
request further construction citing Cordis);
Cordis, 9/28/11 (district court only clarified what
was inherent in its CC, which merely made plain
what should have been obvious to the jury))
Doctrine of waiver
269
- Doctrine of waiver apply CAFC law - cannot
change the scope of CC on appeal (SkinMedica,
8/23/13 (CAFC declining to consider for the first
time on appeal a reference cited on the face of the
patent for CC purposes, which the patentee waived
by not raising it at the district court); Amkor
Technology, 8/22/12 (waiver); Highmark, 8/7/12
(n.5); Chicago Board, 5/7/12; Noah Systems,
4/9/12 (no waiver where CC and indefiniteness
arguments on appeal were presented to the district
court several times); Digital-Vending, 3/7/12
(waiver where construction argued on appeal was
substantially different in scope from what was
argued below); Enovsys, 8/3/10; Telcordia Techs.,
7/6/10 (no waiver of CC on appeal where the
patentee did not change its proposed CC from a
prior case and appeal on the same patent and claim
term against a different defendant); Schindler,
1/15/10 (n.1: declining to alter the district courts
construction of term where the patentee had agreed
with the construction below); Net Moneyin,
10/20/08 (new and broader construction of claimed
function on appeal was improper); Broadcom,
9/24/08; O2 Micro, 4/3/08; Mymail, 2/20/07;
Conoco, 8/17/06; Lava Trading, 4/19/06; NTP,
8/2/05; Superguide, 2/12/04; In re Watts, 1/15/04);
See also District court . . . must consider issue
first Claim construction
- Agreed-to CC before the district court

cannot be changed on appeal (e.g., simply
because it resulted in an adverse ruling on
SJ) (Versata Software, 5/1/13 (accused
infringer was not allowed to object to a
claim construction it proposed or agreed to
at trial, including that it did not ask the
district court to construe whether term
computer instructions excluded source
270
code citing Function Media); Chicago
Board, 5/7/12 (parties expressly agreed
during CC phase that term system memory
means is a means-plus-function limitation);
Digital-Vending, 3/7/12 (patentee waived its
right to challenge on appeal by stipulating to
construction that the district court adopted
citing Superguide; patentee also failed to
challenge the district courts denial of its
motion for reconsideration); Mymail,
2/20/07)
- Appellate court has discretion whether to

apply waiver (SkinMedica, 8/23/13 (CAFC
not considering reference cited on the face
of the patent for CC purposes for the first
time on appeal, based on fairness where the
district court had not first considered and
provided context for the reference); ePlus,
11/21/12 (no waiver of indefiniteness
argument where was raised and denied on SJ
by the district court); Absolute Software,
10/11/11 (declining use of discretion given
the district courts careful CC procedure
using a special master) limited to
exceptional circumstances; whether change
in argument represents the same concept
raised to district court (HTC, 1/30/12
(distinguishing Harris); Martin, 8/20/10
(suggesting that the patentee could have
argued on appeal for a construction of the
disputed term compliance structure as
having a commercial production standard);
Amgen, 9/15/09 (waiver not applied to
alternative grounds of affimance not
included in brief, citing Harris); Harris,
8/5/05)
271
- District court found waiver with respect to
claim term because the party failed to raise it
during the CC phase of case (Broadcom,
9/24/08 (proposed construction of term
(networks) waived when first raised in
post-jury trial motions); Central Admixture
Pharmacy Services, 4/3/07)
- Failing to raise CC dispute on appeal

waiver (Whitserve, 8/7/12 (n.4: waiver
where no substantive discussion of CC in
opening brief); Innovention Toys, 3/21/11
(waiver where the accused infringer did not
challenge the district courts CC (of term
movable to mean capable of movement)
directly but rather indirectly based on its
application to the accused product))
- New CC, or new issues, argued for the first

time on appeal = waiver (SkinMedica,
8/23/13; Regents of U. Minn., 6/3/13
(waiver on appeal of claim constructions not
argued to the district court); Versata
Software, 5/1/13; Aristocrat Techs., 3/13/13
(waiver of newly cited extrinsic evidence
related to CC on appeal where not part of
district court record citing Conoco);
Amkor Technology, 8/22/12; Noah Systems,
4/9/12 (no waiver on appeal); Digital-
Vending, 3/7/12; Absolute Software,
10/11/11 (waiver of CC argument on appeal
where failed to object to special masters
report and recommendation); Retractable
Techs., 7/8/11 (no waiver where argument
presented in substance to the district court);
Enovsys, 8/3/10 (waiver on appeal of newly
argued narrow CC for a means-plus-function
limitation, where the accused infringer never
272
disputed or requested clarification of the
district courts broad definition of the
corresponding structure of the means
limitation, and otherwise failed to object to
the CC before the jurys infringement
verdict; see also J. Newman, dissenting
arguing that the panel confounded CC with
infringement, where the accused infringer
presented at trial (and thus did not waive)
defenses to infringement which were the
same as arguing a narrower CC of the
corresponding structure); Vizio, 5/26/10 (J.
Clevenger, dissenting; see also the majority
(in n.7) concluding that raising the issue
below as one of infringement rather than CC
can hardly result in a waiver); Cordis,
3/31/09 (several instances of waiver cited);
Net Moneyin, 10/20/08; Broadcom, 9/24/08;
Golden Bridge Tech., 5/21/08; O2 Micro,
4/3/08; Conoco, 8/17/06; Exigent Tech.,
3/22/06), BUT can use different language to
describe the same concept (O2 Micro,
4/3/08; Gaus, 4/1/04); See also District
court . . . must consider issue first Doctrine
of waiver
- New CC dispute - litigants waive their

right to present new claim
construction disputes if they are raised
for the first time after trial, e.g., after
presentation of evidence to the jury
(Versata Software, 5/1/13; Cordis,
9/28/11 (accused infringer on JMOL
motion sought to clarify, rather than
alter, the district courts CC); Lazare
Kaplan, 12/22/10 (waiver on appeal
where CC argument was made for the
first time in post-trial motion);
273
Enovsys, 8/3/10 (arguing new CC in
the renewed JMOL motion was too
late and thus waived); Cordis, 3/31/09
(claim construction arguments raised
for the first time after trial, including
in a motion for JMOL more than a
year after the jurys infringement
verdict, were too late, citing
Conoco)); amounts to an implicit
concession that meanings of claim
terms are clear and not in need of
construction (Broadcom, 9/24/08
(networks); Conoco, 8/17/06)
- Party prevailing on an issue of

claim construction cannot argue
(on JMOL motion) for a
differing construction following
an adverse jury verdict
Hewlett Packard (Cordis,
9/28/11)
- New or additional arguments in

support of the same CC scope = no
waiver - while a waiver may occur if
a party raises a new issue on appeal, a
waiver will not necessarily occur if a
party simply presents new or
additional arguments in support of the
scope of its CC argued to the district
court CCS Fitness (Highmark,
8/7/12 (n.5); Net Moneyin, 10/20/08
(not merely new arguments in support
of previous construction); O2 Micro,
4/3/08 (no waiver despite making new
arguments with respect to CC argued
to the district court))
274
- Party is not restricted from seeking to
clarify or defend the original scope of
its CC Interactive Gift Express
(Cordis, 9/28/11 (accused infringer
only sought clarification of CC for
purposes of motion for JMOL of
noninfringement))
- New arguments protecting the

original breadth of the partys
CC are not a waiver well-
established that parties may
raise specific CC arguments for
the first time on appeal that
protect the original breadth of
the partys proposed CC by
rejecting the imposition of an
additional limitation not
required or recited by the CC
Interactive Gift Express
arguments must simply be
consistent with the CC
proffered by the party below
(Marine Polymer, 9/26/11)
[vacated]
- Practical differences in case were absent

(other partys positions unchanged by new
CC argument), so no waiver (Lava Trading,
4/19/06)
- Terms of art in patent law with its own

construction (e.g., consisting of) no
waiver (Conoco, 8/17/06)
- Failure to ask district court for CC = waiver

(Bettcher Indus., 10/3/11 (party was not permitted
to ask for a new CC for terms on the eve of trial
275
where it did not request a CC in response to the
district courts Markman order indicating no CC
disputes); Eli Lilly, 7/20/04)
Object at trial stage to preserve CC for appeal
- Object at trial, and object to jury instructions, to

preserve CC argument for appeal (Function Media,
2/13/13 (waiver); Lazare Kaplan, 12/22/10
(waiver); Enovsys, 8/3/10 (waiver where no
objection made); O2 Micro, 4/3/08 (further
objection to the district courts pre-trial CC ruling
after Markman hearing would have been not only
futile but unnecessary Cardiac Pacemakers);
Verizon, 9/26/07; Andersen, 1/26/07; Kim,
9/20/06; Serio-Us Industries, 8/10/06; Callicrate,
10/31/05; Union Carbide, 10/3/05; Koito Mfg.,
8/23/04); See also Smith & Nephew, 12/2/09
(nonprecedential n.2: no waiver based on the
above rule from O2 Micro)
- Failure to object to special masters CC in

report and recommendation waiver
(Absolute Software, 10/11/11)
- Failure to challenge/object to district courts

construction of claim term, coupled with
concession of infringement of claim term,
precluded CAFC review (Callicrate,
10/31/05)
- Objection to construction of term(s) need

not be renewed at time of jury instructions
when CC issues were fully litigated and
decided at the Markman stage of the
litigation (Sandisk, 10/9/12 (applying rule
where claim construction arguments were
276
not repeated during SJ proceeding citing
O2 Micro); Blackboard, 7/27/09 (no waiver
of CC argument where the defendant had
made its position sufficiently clear to the
district court, both at trial and during JMOL
proceedings); O2 Micro, 4/3/08 (term only
if disputed)); See also Lighting Ballast
Control, 1/2/13 (nonprecedential - applying
rule; no waiver where the district courts
interlocutory rulings regarding CC (e.g., SJ)
were merged into the final judgment) [en
banc review was granted on 3/15/13, and
the opinion was vacated and the appeal
reinstated]
Issue preclusion applied to CC
- Issue preclusion (collateral estoppel) applied to

CC? (Aspex Eyewear, 4/19/13; Kinetic Concepts,
8/13/12 (prior panel construction of claims was
binding on the district court and the present panel);
Arlington Indus., 1/20/11 (relying on prior district
courts construction of the same terms of the same
patent as one basis for construction); Finisar,
4/18/08 (consulting and adopting the claim
construction of the same terms of the same patent
by the N. D. of California); Louisville Bedding,
7/25/06 (issue not addressed by CAFC); Applied
Medical Resources, 5/15/06; Inpro II Licensing,
5/11/06); See also Furnace Brook, 7/22/11
(nonprecedential see also J. OMalley,
dissenting); Smith & Nephew, 12/2/09
(nonprecedential relying on claim construction of
another related term from a prior case involving
the same patent in ruling on infringement,
anticipation and obviousness in the present case);
Shire (Order), 2/6/09 (nonprecedential granting
277
permission to appeal interlocutory order to decide
whether a patentee who settles an earlier
infringement case after issuance of a Markman
ruling is precluded by collateral estoppel from
relitigating claim construction issues determined in
the prior case); See also Law of the case
doctrine; CLAIM CONSTRUCTION Extrinsic
evidence Other court decisions; CLAIM AND
ISSUE PRECLUSIONS Issue preclusion
(collateral estoppel)
- BPAI/PTO is not bound by a district courts

claim construction in an earlier infringement
case, i.e., BPAI/PTO was not a party, or a
privy, in the prior proceeding, and thus was
not accorded a full and fair opportunity to
litigate the issue in the earlier case
Blonder-Tongue, Parklane Hosiery (S.C.)
(In re Trans Texas Holdings, 8/22/07); See
also St. Clair, 1/10/11 (nonprecedential
noting that during reexamination, five
examiners, including three SPEs, rejected a
prior district courts interpretation of the
claim language, and ruling that [b]ecause
an examiner in reexamination can be
considered one of ordinary skill in the art,
his construction of the asserted claims
carries significant weight)
- BPAI bound by the CAFCs prior

construction of term? (In re NTP I, 8/1/11
(CAFC adopting its earlier construction of
term electronic mail system, where the
BPAI had construed the term more broadly
during reexamination))
- PTOs construction of same term, while not

controlling, as support for the CAFCs CC
278
of term? (Saffran, 4/4/13 (n.7: both
construing the corresponding structure for
means-plus-function claim the same))
Patent Office CC
- Patent Office CC reasonableness In re

Morris; 37 CFR 41.200(b) (A claim shall be
given its broadest reasonable construction in light
of the specification of the application or patent in
which it appears) (In re NTP I, 8/1/11; In re
Suitco Surface, 4/14/10 (rejecting the BPAIs
unreasonably broad CC during reexamination);
Yorkey I, 4/7/10 (the CAFCs review of the
BPAIs CC is limited to determining only
whether the claim construction was reasonable);
Bigio, 8/24/04; See also St. Clair, 1/10/11
(nonprecedential examiner during reexamination
is considered one of ordinary skill, and thus his
construction of the asserted claims during litigation
carries significant weight); In re Johnston, 1/30/06
[Phillips cited as the standard for CC by the
PTO/BPAI]); See also CLAIM
CONSTRUCTION BPAI/PTO claims are
given their broadest reasonable interpretation
- CAFC vacating the BPAIs narrow

construction (far short of the broadest
reasonable construction), but, because was
unnecessary to adopt the CAFCs alternative
construction to resolve the appeal, leaving
that question to a later forum where the issue
is determinative (Leo Pharm., 8/12/13)
Same CC for infringement and validity
279
- Infringement and validity same CC used for both
(Symantec, 4/11/08; Kim, 9/20/06); See also
INVALIDITY GENERALLY Claims are
construed the same way for infringement and
invalidity
Settlements from prior litigations
- Settlements from prior litigations given no weight

in claim construction in later litigation FRE 408
(Vanderlande Indus., 5/3/04); See also Shire
(Order), 2/6/09 (nonprecedential granting
permission to appeal issue of whether prior
settlement of infringement case after issuance of
Markman ruling precluded the patentee from
rearguing claim construction in a later case)
Stare decisis adopting CC from earlier CAFC decisions
- Stare decisis adopting the same claim

construction as in an earlier CAFC case where
construction of the same term was a necessary
predicate to the determination of the prior
litigation why claim interpretation is a purely
legal question under Markman (S.C.) (Rambus,
9/24/13 (CAFCs construction of term was not
inconsistent with earlier appeal, in which issue was
not presented by the parties); Trading Techs.,
8/30/13 (district court erred in relying on the CC in
a prior CAFC case involving related patents for the
purpose of invalidating claims in related patents
for lack of WD support comparing and
contrasting the purposes of CC with the WD
requirement); Hynix, 5/13/11 (CAFC was bound
by its prior (pre-Phillips) CC of the term bus
from the same patents in a related case, where the
280
prior case applied the same CC principles as
adopted in Phillips, and in post-Phillips cases,
including the use of dictionaries for understanding
the commonly understood meaning of words,
stating that this court is not writing on a clean
slate); Abbott Labs, 10/21/08; Roche Palo Alto,
7/9/08; MetLife, 6/2/08 (prior panel decision
regarding the same claim term of patent required
the construction adopted by the district court);
Symantec, 4/11/08 (binding effect of CAFCs
construction of term in earlier case not disputed;
construction for disputed term in preamble other
than determined on appeal would vitiate the
meaning the CAFC previously gave the term
storage in earlier related case); Miken
Composites, 2/6/08); See also Function Media,
3/7/13 (nonprecedential CAFC was bound by its
prior CC of terms citing Hynix); Brady
Construction, 8/15/08 (nonprecedential CAFC
follows the claim construction of prior panels
absent exceptional circumstances, citing Miken);
See also Law of the case doctrine
Untimely, premature CC issues
- Untimely CC issues - CAFC does not hear

untimely (i.e., premature) CC issues, because not
properly before the court (Broadcast Innovation,
8/19/05)
Credibility determinations great deference given to fact finder
- Credibility determinations, the weighing of evidence, and

the drawing of legitimate inferences from the facts, are
highly factual and thus great deference is given to the
fact finder; almost invariably left to the jury, trial court
281
(if also the fact finder) (Presidio Components, 12/19/12;
Celsis In Vitro, 1/9/12 (district court had wide
discretion in weighing expert credibility in granting a
PI, which determinations further supported
nonobviousness); Bettcher Indus., 10/3/11 (regarding
competence of opinion of counsel, and the
reasonableness of reliance thereon, to support lack of
inducement); Clearvalue, 3/24/09 (appellants testimony
was not credible for avoiding discovery sanctions, citing
Medichem); Acumed, 12/30/08 (district courts discretion
in determining the publics interest in granting
injunction); Qualcomm, 12/1/08 (rejecting (twice) the
argument that the district courts findings lacked
sufficient evidentiary support, or that the evidence should
be interpreted differently, since the district court was in
the best position to determine the significance and
implications of the record testimony in the first instance,
and the cited testimony provided sufficient evidentiary
support for its findings; also stating that litigation
misconduct prevented further evidence on the issue);
Eisai, 7/21/08 (no intent to deceive); MetLife, 6/2/08
(credibility disputes in SJ declarations cannot be resolved
on SJ); Litecubes, 4/28/08; Honeywell Intl, 4/18/08 (see
also J. Newman, dissenting No deference is owed to a
district courts conclusion predicated upon findings it did
not state or explain where the district courts reluctance
to state the facts on which its conclusions regarding
prosecution history estoppel rested, as FRCP 52 requires,
negates the traditional deference); Monsanto, 2/5/08
(unreliability of witness, inconsistent testimony);
Monsanto, 1/25/08; Acumed, 4/12/07 (willfulness,
reliance on opinion of counsel); Old Town Canoe, 5/9/06
(jury, obviousness); Jazz Photo, 2/28/06 (CIT);
Medichem, 2/3/06; Tap Pharmaceutical, 8/18/05;
Warner-Lambert, 8/11/05; Syntex, 5/18/05; Fuji Photo,
1/14/05)
282
- Credibility determinations by the trial judge are virtually
never clear error (Celsis In Vitro, 1/9/12; Scanner Techs.,
6/19/08 (emphasizing the requirement of the Supreme
Court rule that the trial judges credibility findings must
not be internally inconsistent, concluding that there
were inconsistencies in the district courts assessment of
conflicting witness testimony as to whether copious
notes were taken); Litecubes, 4/28/08; Honeywell Intl,
4/18/08 (forseeability of an alleged equivalent based on
expert testimony); Monsanto, 1/25/08; JVW Enterprises,
10/3/05); See also Mitsubishi Chemical, 8/2/11
(nonprecedential CAFC accepted the district courts
selection of appropriate translation of Japanese reference
given by conflicting expert testimony)
- Deference is appropriate because only the trial

judge can be aware of the variations in demeanor
and tone of voice that bear so heavily on the
listeners understanding of and belief in what is
said (Medichem, 2/3/06)
- Trial court (or jury) has the responsibility to weigh

the evidence and evaluate the credibility of
witnesses (Meadwestvaco, 9/26/13 (district court
found the patentees expert more credible on
infringement the district court is given broad
discretion in determining credibility because the
court saw the witnesses and heard their testimony);
Celsis In Vitro, 1/9/12; MetLife, 6/2/08 (credibility
disputes are not resolved on SJ); Litecubes,
4/28/08 (faced with conflicting expert testimony,
the jury was entitled to credit one experts
testimony over anothers in finding infringement);
Adenta, 9/19/07); the weighing of conflicting
evidence is a task within the special province of
the trial judge who, having heard the evidence, is
in a better position than the appeals court to
evaluate it (Liquid Dynamics, 6/1/06 (jury;
283
infringement, willfulness, IC); Jazz Photo, 2/28/06
(CIT))
- Substantial evidence supports jury verdict? But cannot

disturb jurys credibility determination (Presidio
Components, 12/19/12 (jury had the ultimate discretion
to evaluate credibility and weigh the patentees experts
testimony of infringement, even if his direct and cross-
examination were not entirely consistent citing Kinetic
Concepts and 9th Cir. law); Edwards Lifesciences,
11/13/12 (jury verdict of infringement was supported by
substantial evidence, despite that testimony at trial was in
direct conflict); Kinetic Concepts, 8/13/12 (jury verdict
of nonobviousness was supported by substantial
evidence, including based on inference that the patentees
experts were more credible and persuasive); Kinetic
Concepts, 2/2/09 (applying 5th Cir. law regarding
conflicting expert testimony, affirming the jurys verdict
of nonobviousness and noninfringement); Praxair,
9/29/08 (the jury is not required to accept an experts
testimony, opinion); Liquid Dynamics, 6/1/06; Fuji
Photo, 1/14/05)
- Court cannot second-guess jury determination

(e.g., credibility of witnesses, reevaluate weight of
evidence, or substitute its version of the facts for
the jurys version) deference given (Edwards
Lifesciences, 11/13/12; Liquid Dynamics, 6/1/06;
NCube, 1/9/06)
Cross appeals
(Lazare Kaplan, 4/19/13 (district court on remand erred in

relying on Rule 60(b) as a substitute for a cross-appeal, thus
reversing the district courts grant of Rule 60(b) relief vacating
its judgment that the patent was not invalid, where the appellee
failed to cross-appeal the validity judgment, as required by the
284
cross-appeal rule, in the earlier appeal; see also J. Dyk,
dissenting the district court correctly used Rule 60(b)(5) to
decide validity under the CAFCs broadened claim
construction); Radio Systems, 3/6/13 (invalidity is not an
alternative ground for affirming a noninfringement judgment,
absent cross appeal; see also J. Newman, dissenting would
have reached the invalidity issue, since the district court
decided the issue and was asserted by the appellee as an
alternative ground for affirming judgment in its favor); Amkor
Technology, 8/22/12; *Aventis Pharma, 3/24/11 (Order)
(granting motion to dismiss improper cross-appeal, which was
particularly egregious in light of CAFC precedent);
Therasense, 1/25/10; Stanford U., 9/30/09 [affirmed by the
U.S. Supreme Court, on 6/6/11, in Stanford U. v. Roche];
Praxair, 9/29/08; Howmedica, 9/2/08 (n.2); Voda, 8/18/08;
Symantec, 4/11/08; Liebel-Flarsheim, 3/22/07; Optivus Tech.,
11/16/06; MIT, 9/13/06; North American Container, 7/14/05;
Home Depot, 6/16/05; Boss Control, 6/8/05; Lighting World,
9/3/04; Novartis, 7/8/04; Typeright Keyboard, 7/6/04; Chiron,
3/30/04; Ericsson, 12/9/03; Resonate, 8/5/03)
Appropriateness of cross appeals
- Appropriateness of cross-appeals (Amkor Technology,

8/22/12; *Aventis Pharma, 3/24/11 (Order) (attorneys
are not free . . . to game the system by filing a cross-
appeal to obtain the final word in briefing and the
improper use of a cross-appeal directly contrary to
[CAFC] precedent may meet with sanctions); Funai,
9/1/10 (n.2); Therasense, 1/25/10 (CAFC lacking
jurisdiction over improper cross-appeal); Stanford U.,
9/30/09 [affirmed by the U.S. Supreme Court, on
6/6/11, in Stanford U. v. Roche]; Qualcomm, 12/1/08;
Praxair, 9/29/08; Voda, 8/18/08; Lucent Techs., 5/8/08
(n.10, citing Symantec); Symantec, 4/11/08 (laches was
inappropriate cross-appeal when cross-appellant was
granted SJ of noninfringement); Liebel-Flarsheim,
285
3/22/07; Optivus Tech., 11/16/06; Nautilus Group, Order
2/16/06; North American Container, 7/14/05; Boss
Control, 6/8/05; Lighting World, 9/3/04; Typeright
Keyboard, 7/6/04); See also Eli Lilly, 8/31/10 (Order)
(nonprecedential ordering dismissal of improperly filed
cross-appeals because the defendants could make their
arguments concerning infringement and additional
grounds of invalidity as appellees)
- Party has standing to cross-appeal only if

adversely affected by the appealed judgment in
some particular which it seeks to have modified
Typeright Keyboard (Amkor Technology, 8/22/12
(risk of reversal on appeal is not an adverse effect
sufficient to sustain a cross-appeal); *Aventis
Pharma, 3/24/11 (Order) (dismissing egregiously
improper cross-appeal which was based on
additional claims for invalidity and
noninfringement, following the clear precedent
of Typeright Keyboard); Therasense, 1/25/10;
Praxair, 9/29/08 (the CAFC has repeatedly
explained this); Symantec, 4/11/08)
- Cross appeals are necessary and appropriate only

when a party seeks to enlarge its own rights under
the judgment or lessen the rights of its adversary
under the judgment cross-appeal rule is
inveterate and certain Morley Constr. (S.C.)
thus, a properly filed cross-appeal requires that,
upon acceptance of appellees argument, the
CAFCs decision would result in the reversal or
modification of the judgment rather than an
affirmance (Lazare Kaplan, 4/19/13 (appellee was
precluded from obtaining a judgment of invalidity
on remand (along with the grant of a Rule 60(b)
motion for relief from the district courts earlier
judgment of validity) where the appellee failed to
cross-appeal the district courts validity judgment
286
(which was distinct from the district courts
judgment of noninfringement) citing Odetics and
Radio Steel); *Aventis Pharma, 3/24/11 (Order)
(improper cross-appeal because, if successful,
would not have expanded the scope of the
judgment in the appellees favor); Therasense,
1/25/10 (no basis for cross-appeal of infringement
where the district court entered judgment of
invalidity as to all the asserted claims); Stanford
U., 9/30/09 (cross-appellants arguments would
expand its rights under the judgment, although
mistakenly characterized as alternative grounds
for affirmance) [affirmed by the U.S. Supreme
Court, on 6/6/11, in Stanford U. v. Roche];
Praxair, 9/29/08 (although cross-appeal was
dismissed, the CAFC considered the arguments as
alternative grounds for affirming the district
courts judgment); Howmedica, 9/2/08 (n.2);
Symantec, 4/11/08 (improper cross-appeal where
the CAFCs determination of laches claim in the
appellees favor precluding the patentees recovery
of damages would have no effect on the district
courts judgment of noninfringement); MIT,
9/13/06; North American Container, 7/14/05)
- Cross appeals cannot be used to preserve

rights in the district court at a later time
(North American Container, 7/14/05)
- Cross appeal is unnecessary, inappropriate

for a party to present alternative arguments
for affirmance of a trial courts decision;
however, the appellee can otherwise present
on appeal all arguments supported by the
record as alternative grounds for affirming
the district courts judgment (Radio
Systems, 3/6/13 (J. Newman, dissenting);
Rexnord, 1/23/13 (applying rule in the
287
context of an appellee before the BPAI in an
inter partes reexamination the appellee is
able to argue alternative bases supported by
the record to affirm the examiners
decision); *Aventis Pharma, 3/24/11 (Order)
(additional arguments for affirmance must
be raised in the appellees primary briefing);
Green Edge, 9/7/10 (after reversing SJ of
invalidity based on best mode violation, also
not affirming the district courts decision on
alternative grounds of invalidity raised on
SJ); Funai, 9/1/10 (n.2: denying motion to
strike portion of cross-appeal reply brief
discussing literal infringement, stating that
procedural uncertainty can arise as to
whether a particular issue is properly
presented as an alternative reason for
supporting the judgment, or by cross-appeal
when the cross-appellant states that the issue
has independent consequences); Therasense,
1/25/10 (not reaching alternative argument
of noninfringement after affirming judgment
of invalidity on the merits); Titan Tire,
6/3/09 (unnecessary to reach various
alternative grounds for affirmance);
Qualcomm, 12/1/08 (equitable estoppel
defense was properly raised on appeal as an
alternative ground to uphold judgment based
on waiver, rather than as a cross-appeal);
Praxair, 9/29/08 (CAFC considered
noninfringement arguments as alternative
grounds for affirmance); Howmedica, 9/2/08
(n.2); Voda, 8/18/08 (n.4: dismissing the
patentees literal infringement argument as
an alternative basis for supporting the
infringement judgment as improperly raised
on cross-appeal); Symantec, 4/11/08 (laches
arguments could be considered as an
288
alternative ground for sustaining the district
courts judgment of noninfringement
Typeright Keyboard); Liebel-Flarsheim,
3/22/07; Cross Medical Prods., 3/20/07); See
also Respironics, 12/16/08 (nonprecedential)
- Cross-appeal is necessary for urging

invalidity as a new ground on which to
support a judgment of noninfringement,
since a judgment of invalidity is broader
than a judgment of noninfringement
Typeright Keyboard (Lazare Kaplan,
4/19/13; Radio Systems, 3/6/13 (citing
Typeright Keyboard; see also J. Newman,
dissenting cross appeal was unnecessary
see listing of cases above); Symantec,
4/11/08 (cross-appeals directed to invalidity,
IC, and improper inventorship were proper
because they expanded the scope of a
judgment of noninfringement)); See also
Altair Engineering, 3/9/11 (nonprecedential
n.2 relying on rule)
- Issue on cross-appeal must be inextricably

intertwined with issue on appeal, or when
resolution of one issue is necessary to
ensure meaningful review of another (Boss
Control, 6/8/05)
- Standing for cross-appeal - no standing if

not adversely affected by judgment of the
district court; party has no right of cross-
appeal from decision in its favor (Radio
Systems, 3/6/13 (J. Newman, dissenting
see listing of cases above); *Aventis
Pharma, 3/24/11 (Order); Praxair, 9/29/08
(no standing to cross-appeal infringement
where the district court also found the patent
289
unenforceable); Symantec, 4/11/08 (CAFC
lacked jurisdiction over laches claim where
the cross-appellant won on infringement at
the district court); Nautilus Group, Order
2/16/06; Typeright Keyboard, 7/6/04;
Phillips, 4/8/04)
Conditional cross appeal
- Conditional cross appeal
- Cardinal Chemical does not require review of

conditionally appealed invalidity findings (Boss
Control, 6/8/05)
- Party who prevails on noninfringement has no

right to file conditional cross-appeal to introduce
new arguments or challenge claim construction,
but may simply assert alternative grounds in record
for affirming judgment (Lazare Kaplan, 4/19/13
(appellee could have filed a conditional cross-
appeal for the CAFC to address validity on appeal
in the event it broadened the district courts claim
construction in response to the patentees appeal of
noninfringement; see also J. Dyk, dissenting
filing a conditional cross-appeal was not required);
*Aventis Pharma, 3/24/11 (Order) (rejecting
conditional cross-appeal based on additional
invalidity and noninfringement arguments, where
the patent was held invalid and unenforceable
below); Vita-Mix, 9/16/09 (conditional cross-
appeal filed with regard to validity and laches);
Optivus Tech., 11/16/06; Nautilus Group, Order
2/16/06 (See J. Newman, dissenting - all other
circuits, and the Supreme Court, recognize
conditional or protective cross-appeals so that
correct law applied in event case remanded for
290
new trial; cross-appeals of claim construction-
based judgments (seeking conditional review of
certain unappealed claim terms) present special
situation); Phillips, 4/8/04)
Final judgment needed
- Final judgment needed for cross-appeal but none if

denial of SJ regarding affirmative defense (vs.
counterclaim) (Lighting World, 9/3/04)
Decisions of the district court (e.g., dismissals with prejudice,

reasons for decision)
- Dismissal of claim with prejudice = judgment on the

merits (Juniper Networks, 4/29/11 (appropriate where
amended complaint for false marking could not be saved
by amendment, applying 9th Cir law); Koninklijke
Philips, 1/5/10 (reversing and remanding the district
courts sua sponte dismissal of the complaint with
prejudice in a Section 146 action, where the parties
agreed that the dismissal was tantamount to a sua sponte,
de facto SJ); Tyco, 12/7/09 (dismissal without prejudice
for lack of standing was proper, distinguishing dismissal
with prejudice from dismissal without prejudice); U. of
Pittsburgh, 6/9/09 (dismissal with prejudice for lack of
standing was improper based on allegedly failing to
timely join a necessary party under FRCP 19(b), which is
not an adjudication on the merits, and thus should not
have preclusive effect); Highway Equipment, 11/21/06
(prevailing party for attorney fees under 285); Power
Mosfet Techs., 8/17/04 (prevailing party for costs
under FRCP 54(d)(1))); See also Reese, 12/21/12
(nonprecedential stipulated judgment of dismissal with
prejudice operated as an adverse adjudication on the
merits of the claim); Kersey, 11/18/09 (nonprecedential
291
the district courts denial without prejudice of the
appellants application for leave to file a complaint in
forma pauperis was not a final judgment and thus not
appealable); Andersen, 11/19/08 (nonprecedential
dismissal of invalidity counterclaim without prejudice
under FRCP 41(a)(2) was proper and not an abuse of
discretion after the district courts consideration of the
Highway Equipment factors)
- Dismissal with prejudice bars a subsequent action

between the same parties or their privies on the
same claim, but a dismissal without prejudice,
although it constitutes a final termination of the
first action, does not bar a second suit H.R.
Techs. (Tyco, 12/7/09)
- Dismissal with prejudice as a sanction (U. of

Pittsburgh, 6/9/09 (dismissal with prejudice was
improper for an untimely and unfair attempt to
join a party))
- Dismissal with prejudice should rarely be

used as a (drastic) sanction, e.g., for undue
delay (U. of Pittsburgh, 6/9/09 (district court
failed to discuss any of the Third Circuits
four factors for determining whether
dismissal with prejudice is appropriate))
- Voluntary dismissal with prejudice, based on a

covenant not to sue and granted pursuant to the
district courts discretion under FRCP 41(a)(2)
has the necessary judicial imprimatur to constitute
a judicially sanctioned change in the legal
relationship of the parties Buckhannon (S.C.)
(Highway Equipment, 11/21/06)
- District courts conclusions given only prospective (vs.

retroactive) effect Chevron (S.C.) (Fuji Photo, 1/14/05)
292
- District court must provide sufficient reasoning for its
decision - reason for remand (Osram Sylvania, 12/13/12
(reversing SJ of anticipation and obviousness where the
district court failed to make fact findings, explain
reasoning for SJ); Lexion Medical, 4/22/11 (district court
need not provide all details for judgment); Titan Tire,
6/3/09 (rejecting argument that the trial court failed to
adequately communicate the reasoning behind its
decision); Warner-Lambert, 8/11/05)
- Sua sponte dismissal with prejudice amounted to a

sua sponte, de facto SJ, where the plaintiff was not
given an opportunity to present arguments and new
witness testimony (Koninklijke Philips, 1/5/10
(Section 146 action, applying 9th Cir. law))
District court (BPAI, TTAB, ITC) must consider issue first
(Rembrandt Vision, 8/7/13 (declining to upend the district

courts JMOL of noninfringement for failure to prove with
admissible evidence based on (circumstantial) evidence not
raised below); Technology Patents, 10/17/12 (CAFC not
considering noninfringement argument raised for the first time
on appeal as an alternative ground of affirmance); Ninestar
Tech., 2/8/12 (CAFC used discretion and considered
constitutional arguments on appeal that were not presented first
to the ITC); HTC, 1/30/12 (providing reasons for rule, and
citing other circuits); Harari, 9/1/11 (declining to decide
WD/priority support issue before the BPAI did); Allergan,
5/19/11 (rejecting argument on appeal based on a solubility
table made of record below, but which was not the subject of
testimony calling the district courts attention to the table);
Crown Packaging, 4/1/11 (obviousness issues were not finally
resolved by the district court for the CAFC to consider on
appeal); Old Reliable Wholesale, 3/16/11 (exception where the
result of reexam occurred after the district courts decision);
293
Centillion Data Systems, 1/20/11 (CAFC not deciding induced
infringement where the district court had not yet determined all
direct infringement issues); Green Edge, 9/7/10 (remanding for
district court to decide obviousness); Ring Plus, 8/6/10 (CAFC
declined to make inference where the district court made no
inference); Novo Nordisk, 4/14/10 (declining to address patent
misuse in the first instance); MBO Labs, 4/12/10 (declining to
address noninfringement arguments for the first time on appeal,
after reversing part of the district courts invalidity judgment);
Clock Spring, 3/25/09; Crown Packaging, 3/17/09; In re
Comiskey, 1/13/09 (en banc) (BPAI; rule distinguished); In re
DBC, 11/3/08 (BPAI; that two APJs on the panel were
unconstitutionally appointed); In re Alonso, 10/30/08 (BPAI);
Technology Licensing, 10/10/08 (PTOs reissue of the patent in
suit subsequent to the district courts final judgment of
anticipation (and that the patentee was not entitled to earlier
application filing dates), but prior to conclusion of the appeal of
the district courts judgment, could not modify the judgment
where the district court had not considered the effect of the
reissue first); Praxair, 9/29/08 (waiver of argument that omitted
prior art was cumulative); Innovation Techs., 6/16/08 (fact
findings supporting exceptionalcase); Golden Bridge Tech.,
5/21/08 (waiver of (lack of) anticipation argument, which is a
question of fact to be decided by the district court); DuPont,
5/14/08 (n.7 claim construction and invalidity defenses to PI
motion); Akazawa, 3/31/08 (determinations of foreign law
relating to patent ownership); Pfizer, 3/7/08 (n.5 - exception
when a predicate legal issue necessary to resolving issues on
appeal); Innogenetics, 1/17/08 (forfeiture of argument not
timely raised for trial courts consideration; also waiver of
argument); Aventis Pharma, 9/11/07; Boston Scientific Scimed,
8/8/07 ( 146 action); In re Omeprazole, 4/23/07; Highway
Equipment, 11/21/06 (litigation misconduct); Optivus Tech.,
11/16/06; Medrad, 10/16/06; Cook Biotech, 8/18/06; Venture
Industries, 8/7/06; Amgen, 8/3/06; Lava Trading, 4/19/06;
Wilson Sporting Goods, 3/23/06; Brown, 2/2/06 (BPAI); Aspex
Eyewear, 1/10/06; Perricone, 12/20/05; Clontech, 5/5/05; Fuji
Photo, 1/14/05; Business Objects, 1/6/05; Vastfame Camera,
294
10/7/04 (ITC); Blount, 4/19/04; Monsanto, 3/30/04; In re Watts,
1/15/04; U. West Virginia, 9/3/03; Novo, 12/5/03); Hoffmann-
La Roche, 10/11/12 (nonprecedential patentee failed to show
in PI brief evidence of secondary considerations, instead
incorporating by reference discussion from SJ brief District
judges are not archaeologists.; see also J. Newman, dissenting
district court approved of the incorporation practice);
Lingamfelter, 8/9/12 (nonprecedential waiver for being too
late in challenging the introduction of evidence into the record
in inter partes reexamination); PPC, 4/28/11 (nonprecedential
n.4: premature for the CAFC to consider remedies where the
ITC had not yet made findings on the proper remedy and
bonding); Alcohol Monitoring Systems, 1/24/11
(nonprecedential declining to address additional
noninfringement arguments for the first time on appeal);
Benedict, 3/3/10 (nonprecedential vacating and remanding
default judgment in a cancellation proceeding to the TTAB to
address in the first instance the applicability of a trademark rule
to the case)
Generally
- General rule of waiver - that a federal appellate court

does not consider issue, arguments not presented to the
district court (Aristocrat Techs., 3/13/13 (n.1: rejecting
on appeal extrinsic evidence for construing claim term
that was not part of district court record); Digital-
Vending, 3/7/12; Ninestar Tech., 2/8/12 (applying
exception to waiver rule); HTC, 1/30/12; Absolute
Software, 10/11/11 (waiver of claim construction
argument where timely objections were not made to the
special masters construction); Allergan, 5/19/11
(rejecting argument on appeal based on evidence of
record but not brought to the district courts attention by
testimony); Taylor Brands, 12/9/10 (Order) (n.2:
addressing waiver of issues on appeal by a party upon
settlement and consent judgment); Clock Spring, 3/25/09
295
(waiver of argument that the invalidity of the dependent
claims needed to be addressed separately from the
independent claims); Crown Packaging, 3/17/09 (n.9:
referring to a few notable exceptions, such as some
jurisdictional matters); Praxair, 9/29/08; Golden Bridge
Tech., 5/21/08); See Doctrine of waiver
- Waiver is discretionary - while appellate courts are

given the discretion to decide when to deviate from
the general rule, prudential considerations
articulated by the U.S. Supreme Court counsel
against hearing arguments for the first time on
appeal absent limited circumstances Hormel
(S.C.), Forshey (Ninestar Tech., 2/8/12 (CAFC
used discretion and heard constitutional challenges
on appeal as justice may require Hormel
(S.C.)); HTC, 1/30/12 (waiver on appeal where (5)
exceptions did not apply); Absolute Software,
10/11/11 (CAFC not finding in the case any of the
five reasons an appellate court will consider an
issue not presented below citing LEA Dynatech);
In re DBC, 11/3/08 (waiver of argument that two
APJs on panel were unconstitutionally appointed
to the BPAI); Golden Bridge Tech., 5/21/08 (four
limited circumstances from Forshey, or any
other special circumstances, in which hearing
arguments for the first time on appeal would be
appropriate, were not present); See Doctrine of
waiver
- Waiver is not jurisdictional but a prudential

concern left primarily to the discretion of the
courts of appeals to be exercised on the facts
of individual cases Singleton (S.C.)
(Ninestar Tech., 2/8/12)
- Supreme Court proceeds on a case-by-case

basis in determining whether the
296
circumstances of the particular case warrant
excusing the failure to timely object (In re
DBC, 11/3/08 (rejecting the patentees
Appointments Clause challenge, citing the
patentees lack of diligence to present the
issue (to the BPAI) of which it was, or
should have been, aware; excusing waiver
would encourage what Justice Scalia has
referred to as sandbagging))
- Exceptions where an appellate court might

excuse a partys failure to preserve an issue:
1) the issue involves a pure question of law
and refusal to consider it would result in a
miscarriage of justice, 2) the proper
resolution is beyond any doubt, 3) the
appellant had no opportunity to raise the
objection at the district court level, 4) the
issue presents significant questions of
general impact or of great public concern, or
5) the interest of substantial justice is at
stake L.E.A. Dynatech (HTC, 1/30/12
(exceptions did not apply, where the law
underlying new invalidity argument on
appeal was well established))
- Constitutional challenges not waived when

relate to the foundations of governmental
process (Ninestar Tech., 2/8/12)
- Waiver inapplicable to significant

questions of general impact or of great
public concern Interactive Gift Express
(Ninestar Tech., 2/8/12 (constitutional
arguments not waived))
- CAFC is not a fact finder appellate courts review

district court judgments; they do not find facts
297
Middleton (Lazare Kaplan, 4/19/13 (CAFC was unable to
enter judgment of infringement, where the district court
disposed of case based on invalidity and thus made no
findings of fact on, and dismissed infringement as moot
citing Golden Bridge Tech. for rule); Osram Sylvania,
12/13/12 (reversing SJ of obviousness where the district
court failed to explain, provide fact findings in support of
the judgment, stating that the trial court must must
explain how it reached the conclusions it does,
particularly where there is evidence in the record
supporting the non-movants position; also noting that
the challenger failed to respond to the trial courts order
to submit findings of fact and conclusions of law); 3M,
3/26/12 (remanding for the district court to decide in the
first instance factual issues relevant to whether DJ
jurisdiction); Micron Technology, 5/13/11 (remanding
for the district court to make proper factual findings
regarding bad faith for sanctioning the patentees
spoliation of documents); Hynix, 5/13/11 (J. Gajarsa,
joined by J. Newman, dissenting the majoritys
substitute fact findings improperly went beyond the
duties of an appellate court); Gaylord, 2/25/10
(responding to arguments raised sua sponte by the
dissenting judge); Fresenius, 9/10/09 (fact issues relating
to jurys anticipation finding were waived where not
properly raised in JMOL motion); Golden Bridge Tech.,
5/21/08 (declining to consider an argument as to what a
prior art reference discloses, a fact finding, when the
argument, without any justification, is raised for the first
time on appeal)); See also Hoffmann-La Roche, 10/11/12
(nonprecedential CAFC was reviewing what the district
court decided, and not what the Patent Office had
decided during reexamination; see also J. Newman,
dissenting)
- Party cannot reverse its position on appeal from what it

argued below, including if was based on a mistake or
attorney argument (Garrido, 10/22/13 (nonprecedential
298
the patentee could not advocate one position during
reexam (the date of a prior art reference), and then, when
that position had been accepted by the PTO, reverse its
position on appeal; also PTAB reply brief was too late
citing cases))
- CAFC deciding issue that the district court declined to

consider below (because raised too late) even if not
raised below, the CAFC considers issue when a
predicate legal issue necessary to a resolution of the
issues on appeal (Pfizer, 3/7/08 (n.5 - purely legal issue
of whether 35 USC 121 applied to CIP applications
considered for the first time on appeal))
- CAFC does not consider invalidity grounds (e.g.,

additional invalidating prior art references), not relied on
by, and not appealed from, the district court (Perricone,
12/20/05); See also Ernie Ball, 1/24/13 (nonprecedential
CAFC sua sponte held claims invalid as indefinite,
even though the accused infringer only asserted invalidity
under Section 112 generally)
- Failure to identify genuine issue regarding

publication status of a reference (Optivus Tech.,
11/16/06)
- Post-trial briefing
- Failing to properly move for JMOL at the close of

the evidence precludes a challenge on appeal to the
sufficiency of the evidence underlying the jurys
fact findings (Fresenius, 9/10/09 (patentee waived
review of jurys anticipation findings where
improperly raised (in a footnote) in both the Rule
50(a) and 50(b) (renewed) motions for JMOL))
299
- CAFC need not address issues not raised in post-
trial, proposed findings of fact before the district
court (In re Omeprazole, 4/23/07)
- CAFC affirming district courts judgment based on

ground supported by the record, and adequately raised
below, but not the basis of district courts decision
(Cheese Systems, 8/6/13 (affirming infringement based
on literal infringement, rather than DOE infringement -
citing Hydril); K-Tech, 4/18/13 (CAFC was unable to
find alternative ground for affirmance citing Hydril);
King, 8/2/10 (affirming SJ of invalidity on the alternative
ground of anticipation, rather than on the district courts
basis of Section 101 non-statutory subject matter)
discretionary, not mandatory; more appropriate for the
district court to address in the first instance (Hydril,
1/25/07); See also Uniloc USA, 8/7/08 (nonprecedential
considering several alternative grounds for affirming SJ
of noninfringement beyond those reached by the district
court)
Claim construction
- Claim construction
- CAFC does not construe claim terms in the first

instance (Meyer, 8/15/12 (applying exception to
the rule, construing term providing in the first
instance on appeal, where the district court did not
formally construe the term despite the parties
arguing its scope and meaning in SJ briefing, and
where the record was sufficiently developed and
only the scope of the term was at issue on appeal);
Digital-Vending, 3/7/12 (applying rule to
construction of the term server and remanding
for the district court to consider alternative non-
infringement argument in the first instance);
300
Absolute Software, 10/11/11; In re Katz Patent
Litigation, 2/18/11; Wavetronix, 7/29/09
(construing disputed claim term (probability
density function estimation) in the first instance,
where the terms construction was the key issue for
deciding infringement and there were no material
issues of fact as to how the accused system
worked, and for three other reasons: 1) apparent
that the district courts views on the matter were
exhausted, 2) both parties agreed that the CAFC
should construe the term, and 3) the record was
sufficiently developed to construe the term without
prejudicing either party); Revolution Eyewear,
4/29/09 (accused infringer conceded that stable
support was not a limitation of the disputed
claim); Broadcom, 9/24/08; CSIRO, 9/19/08
(waiver of argument that claim preamble not
limiting); Innovation Techs., 6/16/08 (district court
did not construe claims prior to determining the
case was exceptional based on bad faith
litigation); MetLife, 6/2/08 (remanded after the
district court failed to explicitly construe the
claims and whether terms in the preamble required
that the claim steps be performed for the purpose
of management or administration of insurance
policies); Zenith Electronics, 4/16/08 (CAFC
declined to consider claim construction arguments
that the district court failed to evaluate on SJ); O2
Micro, 4/3/08; Cook Biotech, 8/18/06; Amgen,
8/3/06; Applied Medical Resources, 5/15/06); See
also In re Avid Identification Systems, 1/8/13
(nonprecedential appellant waived argument that
the examiner failed to perform Section 112,
paragraph 6, analysis for means-plus-function
limitation, where the appellant did not make the
argument first to the BPAI; see also J. Clevenger
dissenting the PTOs broadest reasonable
interpretation for means-plus-function claim
301
language is that statutorily mandated by Section
112, paragraph 6); Roche Diagnostics, 1/25/12
(nonprecedential remanding for district court to
consider new CC argument raised in motion for
reconsideration but not addressed by the district
court before appeal, and where the parties did not
dispute that the argument should be addressed on
the merits on appeal); Lexion Medical, 8/28/08
(nonprecedential CAFC construed vigorously
disputed claim term (predetermined
temperature) in the first instance); See also
Claim construction (CC) Doctrine of waiver
- Although the CAFC reviews the district

courts claim construction de novo, this
review is not an independent analysis in the
first instance; the CAFC requires sufficient
findings and reasoning to permit meaningful
appellate scrutiny Nazomi (Wavetronix,
7/29/09 (stating that the CAFCs review,
although de novo, is not to function as an
independent analysis in the first instance
Nazomi); Zenith Electronics, 4/16/08
(CAFC lacked an adequate foundation upon
which to weigh the parties respective claim
construction arguments)); See also Roche
Diagnostics, 1/25/12 (nonprecedential)
- District court must perform a complete claim

construction analysis first (Zenith Electronics,
4/16/08), including in the context of the accused
device (MIT, 9/13/06; Lava Trading, 4/19/06;
Wilson Sporting Goods, 3/23/06)
- District courts failure to conduct claim

construction focusing on specific claim
language, but rather interpreting all claims
narrowly based on the specification when
302
the CAFC is able to fully comprehend the
specification, PH, and claims and can
determine that the district court arrived at
the correct conclusion, need not exalt form
over substance and vacate an essentially
correct decision; the CAFC reviews
decisions, not opinions (Ormco, 8/24/07, see
also D.J. OMalley, dissenting)
- Need for comparison of accused products to

accused claims without knowledge of
accused products, the CAFC lacks proper
context for accurate claim construction;
without context of the accused products,
processes, the appeal is akin to an advisory
opinion on patent scope (MIT, 9/13/06;
Lava Trading, 4/19/06 (appeal allowed));
See also CLAIM CONSTRUCTION
Doctrine of waiver
- Doctrine of waiver waiver of arguments presented for

the first time on appeal, by failing to raise them in a form
for decision by the trial court, or BPAI (Meadwestvaco,
9/26/13 (waiver on appeal by not raising indefiniteness at
trial, after being denied SJ on issue because of material
fact issues for trial); ePlus, 11/21/12 (no waiver of
indefiniteness argument on appeal where the infringer
argued and was denied SJ on indefiniteness, despite not
renewing the argument during trial but only later
generally during JMOL briefing; also, the CAFC does
not readily find waiver when argrument relates to a Q of
law not being raised for the first time on appeal citing
cases); Energy Transportation Group, 10/12/12 (waiver
of remittitur of damages argument that should have been
made first to the district court in connection with the
grant of JMOL of DOE noninfringement); Wrigley,
303
6/22/12 (n.3: no waiver where party presented the
essence of its anticipation and obviousness arguments on
appeal sufficiently to the district court Warner-
Lambert); Merial, 5/31/12 (waiver of service of process
argument made for the first time on appeal); In re Baxter,
5/17/12 (waiver of validity argument relating to means
limitation, where was not timely raised to the BPAI, and
exceptional circumstances were absent In re Watts, In
re DBC); Digital-Vending, 3/7/12; Ninestar Tech., 2/8/12
(exception to waiver applied for constitutional challenges
not first presented to the ITC); HTC, 1/30/12 (waiver of
new invalidity argument that was based on well
established law regarding means-plus-function claiming;
exceptions to waiver thus inapplicable, and
distinguishing Harris, because the argument on appeal
was a concept distinct from what was argued to the
district court see also Claim construction (CC)
Doctrine of waiver); Celsis In Vitro, 1/9/12 (several
instances of waiver); In re Construction Equipment Co.,
12/8/11 (n.3: waiver on appeal of arguments made only
by the dissenting judge (Newman) that reexamination
proceedings in which the patent was held invalid were
unconstitutional or barred by res judicata or issue
preclusion where the patent was previously finally
adjudged valid by a district court and the CAFC in an
infringement case against the same party); Cordance,
9/23/11 (waiver of non-invalidity arguments regarding
two patent claims omitted from the district courts order
granting JMOL of no invalidity,where the patentee did
not seek an amended judgment as to the omitted claims);
Monsanto, 9/21/11 (no waiver of Section 287(a) lack of
actual notice/marking defense to infringement damages
where pro se defendant sufficiently argued lack of notice
to the district court, albeit not citing Section 287(a) as the
legal basis); Retractable Techs., 7/8/11 (no waiver, where
claim construction argument presented in substance to
the district court); Siemens, 2/24/11 (waiver by failing to
argue in district court the relevance of another patent to
304
equivalency); Uniloc, 1/4/11 (waiver of invalidity in new
trial where invalidity was not raised in the motion for
new trial); Akamai Techs., 12/20/10 (joint infringement
argument waived on appeal with respect to certain
patents where not developed at the trial court) [vacated
and en banc review granted, on 4/20/11]; Finjan,
11/4/10 (waiver of damages argument not raised in post-
trial motions); Green Edge, 9/7/10 (party waived separate
invalidity arguments on appeal, where it realigned itself
as a defendant after the district court decided the other
defendants SJ motions of invalidity); Eli Lilly, 9/1/10
(rejecting argument on the merits (for an exception to the
waiver rule) that the proper resolution of a double
patenting issue raised for the first time on appeal was
beyond any doubt); In re Giacomini, 7/7/10 (waiver for
failure to make argument first to the BPAI); Wordtech
Systems, 6/16/10; Ortho-McNeil, 5/10/10 (waiver of
objection to an injunctions scope); In re Suitco Surface,
4/14/10 (waiving separate anticipation argument for
dependent claim where not raised before the BPAI, and
no reason was provided for not separately arguing the
dependent claim citing In re Watts); Delaware Valley,
3/11/10 (n.3: argument waived that the district court
erred in relying on an incomplete deposition);
Ajinomoto, 3/8/10 (assertion of alternative priority date
was waived where not first argued until after trial);
Therasense, 1/25/10 (waiver on SJ, citing Fresenius)
[vacated on 4/26/10, and reinstated by Therasense,
5/25/11 (en banc)]; In re Lister, 9/22/09 (n.4: waiver
where argument not made to the BPAI; also, no waiver
where appeal brief sufficiently expressed the
applicants disagreement with the examiners finding on
the alleged waived issue); Fresenius, 9/10/09 (waiver
based on improperly raising jurys anticipation findings
(as a footnote) in JMOL motion); Touchcom, 8/3/09 (no
waiver where the plaintiff had no opportunity to argue
the rule to the district court); In re McNeil-PPC, 7/31/09
(no waiver of (lack of) anticipation argument where the
305
PTOs reading of the applicants appeal brief before the
BPAI was unduly parsimonious and the argument was
adequately made); Blackboard, 7/27/09 (argument on
appeal was not waived where was made with sufficient
timeliness and clarity during the trial proceedings
(including by objecting to testimony from the patentees
expert regarding claim construction), but adding that the
question of waiver was a difficult one because the
defendant did not consistently and clearly present its
current argument throughout the district court
proceedings, e.g., at the Markman hearing vs. at trial);
Gemtron, 7/20/09 (waiver for failing to move to exclude
expert testimony regarding nonobviousness); Titan Tire,
6/3/09 (appellant made no arguments regarding
secondary considerations to the trial court, citing Sage
Products); Baden Sports, 2/13/09 (waiver applied where
certain false advertising arguments made on appeal were
not made at trial; waiver also shown by failure to object
to jury instruction); Sd-Chemie, 1/30/09 (declining to
consider validity of dependent claims on appeal where
not raised in SJ papers or in opening brief on appeal); In
re Comiskey, 1/13/09 (en banc) (BPAI; n.6); Rentrop,
12/18/08 (accused infringer waived argument that jury
instruction on obviousness was improper based on KSR
(S.C.), where the argument was not first brought to the
district courts attention despite KSR being decided four
months before the district courts decision on post-trial
motions and entry of final judgment, citing Sage
Products stating in part: No matter how independent
an appellate courts review of an issue may be, it is still
no more than that a review . . . [T]his court does not
review that which was not presented to the district
court); In re DBC, 11/3/08 (BPAI); In re Alonso,
10/30/08 (BPAI both inefficient and wasteful of
administrative and judicial resources); Kyocera
Wireless, 10/14/08 (waiver of obviousness argument not
presented at proper time, until after the ALJ of the ITC
had made an initial determination, and neither the
306
challengers expert reports nor written testimony
contained an obviousness opinion); Praxair, 9/29/08
(waiver of argument that omitted prior art was
cumulative); Broadcom, 9/19/08 (waiver on appeal of
arguments not presented to the ALJ and/or in petition for
review of the ALJs determination to ITC); CSIRO,
9/19/08 (waiver for failing to argue below that the claim
preamble was not limiting); Howmedica, 9/2/08 (no
waiver, n. 6); Voda, 8/18/08 (n.6: waiver of prosecution
history estoppel arguments on appeal where also waived
by failing to raise them in post-trial motion for JMOL);
Golden Bridge Tech., 5/21/08 (waiver of (lack of)
anticipation argument where the patentee unequivocally
admit[ted] that its factual contention [that a prior art
reference lacked a claim element, which element was
indisputably distinct from the element argued missing
from the prior art to the district court] was an entirely
new argument raised for the first time on appeal and
never presented to the district court); Sitrick, 2/1/08
(waiver of objection to transfer order, objection to venue
(9th Cir. law applied)); Halliburton, 1/25/08
(indefiniteness issues); Immunocept, 10/15/07 (5th Cir.
law applied); Aventis Pharma, 9/11/07 (status of prior
art); Israel Bio-Engineering Project, 1/29/07; Abraxis
Bioscience, 11/15/06; Cook Biotech, 8/18/06 (except for
certain circumstances); Lava Trading, 4/19/06;
Clontech, 5/5/05; Fuji Photo, 1/14/05; Lamle, 1/7/05;
Caterpillar, 10/28/04; Blount, 4/19/04; Monsanto,
3/30/04; In re Watts, 1/15/04); See also NYU, 8/7/13
(nonprecedential the CAFC vacating the district courts
anticipation judgment with respect to dependent claims
because the district court failed to consider additional
claim limitation, with the CAFC noting that the patent
challenger did not argue waiver on appeal, but rather
addressed the issue on its merits, and even admitted non-
waiver); In re Schreer, 5/21/13 (nonprecedential only
one of the appellants arguments regarding
nonobviousness was properly before the CAFC on
307
appeal, while the other arguments made on appeal for
why the application should have been allowed were
waived for not first presenting them to the BPAI citing
In re Watts); In re Sutton, 11/20/12 (nonprecedential
n.2: new argument on appeal regarding the lack of
teaching in a prior art reference was waived where the
examiner and the BPAI did not have an opportunity to
provide factual findings on the argument citing In re
Watts); Lingamfelter, 8/9/12 (nonprecedential waiver
for being too late in challenging the introduction of
evidence into the record, where the appellant in inter
partes reexamination never put the examiner and BPAI
on notice that the meaning and scope of written
comments in Section 314(b)(2) was at issue, and thus
waived his challenge to third party requesters evidence);
In re Yufa, 2/8/12 (nonprecedential waiver on appeal
where commercial success was not substantively argued
to the PTO); Stamps.com, 6/15/11 (nonprecedential
several instances of waiver); Taylor, 7/8/10
(nonprecedential waiver of argument not made during
an earlier appeal); Singhal, 5/6/09 (nonprecedential);
Pivonka, 2/19/09 (nonprecedential BPAI; several
instances of waiver, including waiver of objections to
BPAI decisions, citing In re Watts); Cardiac Pacemakers,
12/18/08 (nonprecedential addressing waiver issues
relating to remand)
- Any party who fails to raise an argument in the

trial court does so at his peril; ordinarily, the
CAFC declines to consider arguments that were
not presented to the district court (Fresenius,
9/10/09; Exergen, 8/4/09 (patentee expressly
waived DOE infringement before trial, relying
only on literal infringement, despite making
argument on appeal according to the court
sounding in the doctrine of equivalents rather
than literal infringement); Israel Bio-Engineering
308
Project, 1/29/07 (gray area not bound by the
precise arguments below))
- Waived issues addressed when they are

necessary to the resolution of other issues
directly before the CAFC on appeal - Pfizer
(Cordis, 9/28/11 (IC issues relating to parent
patent were necessarily before the CAFC,
since patents were inextricably linked
where the enforceability of the parent patent
was a predicate issue necessary to the
courts determination of the enforceability
of the patent on appeal; also citing rule that
the question presented on appeal comprises
subsidiary questions fairly included therein))
- Failure to raise argument, or presenting only

a skeletal or undeveloped argument, to the
trial court is a waiver CBOCS W (S.C.)
(A123 Systems, 11/10/10 (waiver of
argument that the district court did not
permit discovery of license agreement where
the discovery was not requested); Fresenius,
9/10/09 (one specific challenge to the jurys
anticipation finding before the trial court did
not preserve all possible challenges to that
finding)); See also Taylor, 7/8/10
(nonprecedential vague argument can
result in waiver)
- Inclusion of an argument in a secondary

role in trial court briefing suffices to avoid
waiver (Howmedica, 9/2/08, n.6)
- Principle of issue preservation does not

require particular words, but only that the
trial court be fairly put on notice as to the
309
substance of the issue Nelson (S.C.) (In re
Baxter, 5/17/12; Howmedica, 9/2/08, n.6)
- Case law specificity is not required to

preserve a point of error for appeal (In re
Baxter, 5/17/12 (arguments on appeal made
to the BPAI were not waived even though
the arguments made to the BPAI did not
specifically name the cases primarily relied
upon on appeal))
- Waiver where the party (patentee) had

multiple opportunities to raise, and could
have, and should have, raised its . . . new
and entirely different ground on appeal to
the district court (HTC, 1/30/12; Golden
Bridge Tech., 5/21/08 (referring to the
unfairness of allowing a party to raise a new
and different argument on appeal after
losing on another argument before the
district court)); See also Respironics,
12/16/08 (nonprecedential accused
infringer missed multiple opportunities to
have the jury consider other claim elements
for infringement)
- Legal arguments waived where possible, every

legal argument should be presented first to the trial
court (Rentrop, 12/18/08 (argument that jury
instruction on obviousness was improper based on
KSR (S.C.) was waived, as it could have been
made first to the district court where KSR was
decided four months before the district courts
entry of final judgment))
- Change in law before entry of the district

courts final judgment waiver on appeal of
arguments based on the change in law not
310
brought first to the district courts attention
(Rentrop, 12/18/08)
- Change in law after the district courts

judgment appropriate for the CAFC to
decide an issue not specifically raised by the
parties where there have been significant
changes in applicable law since the trial
courts decision (Whitserve, 8/7/12 (J.
Mayer, dissenting Supreme Courts Mayo
decision, which issued after the briefs were
filed, makes clear that the patents are invalid
under Section 101 for disclosing no
inventive concept))
- Agency action a party cannot seek for the first

time on appeal to raise a new ground on appeal for
setting aside an agency action; the ground must be
presented first to the agency (In re Construction
Equipment Co., 12/8/11 (n.3: waiver for failing to
make constitutionality or claim/issue preclusion
arguments first to the BPAI during reexamination;
see also J. Newman, dissenting waiver was
inapplicable to the above arguments); In re Suitco
Surface, 4/14/10 (waiving separate argument with
respect to dependent claim); In re Comiskey,
1/13/09 (en banc) (BPAI; n.6); In re DBC, 11/3/08
(BPAI; unconstitutional appointment of APJs on
the panel); In re Alonso, 10/30/08 (BPAI); See
also In re Stauffer, 7/24/08 (nonprecedential
waiver of argument on appeal not presented to the
BPAI, that the BPAI did not specifically identify
the level of ordinary skill)
- Two primary purposes for requiring that a

party object to the agency first: 1) gives the
agency an opportunity to correct its own
311
mistakes, and 2) promotes judicial efficiency
Woodford (U.S.) (In re DBC, 11/3/08)
- Arguments underlying an issue or claim are not

waived; only need to press issue or claim to the
district court (Highmark, 8/7/12 (n.5: where issue
was properly presented, parties are not limited to
the precise arguments they made below); Israel
Bio-Engineering Project, 1/29/07; Warner-
Lambert, 8/11/05)
- Anticipation defense not waived on appeal when

argue only obviousness to the district court
anticipation is the epitome of obviousness
(MercExchange, 3/16/05)
- DOE - waiver for failure to address DOE in the

district court (Nystrom, 9/8/09 (waiver of DOE
infringement claim in second action where
stipulated to noninfringement based on a narrow
claim construction without reference to equivalents
in the first action - must consider whether want to
pursue DOE infringement in the event the district
court construes claim terms narrowly!); Boss
Control, 6/8/05)
- Waiver of function and result prongs, when

only argued way prong to the district court
- Evidentiary issues should be addressed in the first

instance by the district court; objections not raised
before the district court are ordinarily considered
waived (Bosch, 10/13/11 (n.5: challenges raised
for the first time on appeal to the admissibility of
testimony of the patentees officers were waived,
stating that evidentiary objections not raised before
the district court are waived, unless plain error
312
shown); *Lucent, 9/11/09 (implicit objection on
appeal to the district court judge failing to be a
gatekeeper of the damages evidence was waived
for failing to object at trial); Gemtron, 7/20/09
(waiver for failing to move to exclude or strike
expert testimony regarding unexpected results for
nonobviousness as contrary to the specification);
Warner-Lambert, 8/11/05)
- Technical competency of an expert report

(Warner-Lambert, 8/11/05)
- Failure to raise argument below excused, where

reasons given? (Digital-Vending, 3/7/12 (patentee
presented no reason to deviate from the general
rule of waiver with respect to construing term not
construed by the district court); HTC, 1/30/12
(waiver was not excused, where exceptions were
inapplicable); Eli Lilly, 9/1/10 (rejecting argument
on the merits that the proper resolution of a double
patenting issue raised for the first time on appeal
was beyond any doubt); In re Suitco Surface,
4/14/10 (waiver where no reason given for not
separately arguing dependent claim to BPAI
citing In re Watts); In re Watts, 1/15/04)
- Forfeiture forfeit arguments when not timely

presented for trial courts consideration
(Innogenetics, 1/17/08 (7th Cir.))
- Invalidity arguments not raised to ALJ (ITC), with

knowledge of opponents proposed broad claim
construction (Kinik, 3/25/05)
- Waiver by counsel
- Litigant is bound by the acts or omissions

of his chosen lawyer (Singhal, 5/6/09
313
(nonprecedential appellants argument that
his response to the defendants SJ motion
filed by his lawyer was contrary to his
instructions was not availing; the clients
remedy is against the attorney in a suit for
malpractice))
- New appellate counsel raising new

arguments is not an exception to waiver
new appellate counsel does not present an
exceptional case or circumstance for not
applying waiver (Golden Bridge Tech.,
5/21/08)
- Waiver of arguments on remand the waiver rule

prevents a party from arguing on remand what it
should have argued at trial or on appeal Tronzo
(Cardiac Pacemakers, 8/19/09 (waiving IC
arguments on remand; also, no waiver of argument
on remand where the party could not have been
expected to raise the argument at trial))
- BPAI under well-established rules of waiver, the

BPAI is not required on remand to consider
grounds of rejection that were not contested, or
subgroupings of claims not requested within a
ground of rejection, by the applicant in the initial
appeal to the BPAI (Hyatt, 12/23/08 (waiver
applied in the context of Rule 1.192(c)(7))); See
also In re Guess, 6/9/09 (nonprecedential stating
the general waiver rule for claims not argued
separately)
- TTAB no waiver of correct test for prior use, for

opposing trademark registration, despite arguing
more stringent test (First Niagara Insurance
Brokers, 1/9/07)
314
- Waiver of invalidity defenses (e.g., obviousness)
when assert too late (Pandrol, 9/19/05)
Waiver on summary judgment
- Summary judgment
- Evidence not before the district court at the

time of the SJ proceeding cannot be invoked
to challenge the SJ order on appeal
(Wellman, 4/29/11 (patentee forfeited its
right to present new best mode evidence on
appeal not argued in its SJ briefing or at oral
argument, because a party cannot advance
new theories or raise new issues on appeal in
order to secure a reversal of the district
courts SJ order (applying 3rd Cir. law));
Centillion Data Systems, 1/20/11 (not
addressing the issue of whether a single
statement in an incorporated brief is
sufficient to preserve an issue); Delaware
Valley, 3/11/10 (n.1: declining to consider
declaration evidence first submitted with a
motion for reconsideration of a grant of SJ
of invalidity based on the on-sale bar; also
not considering argument waived by not
clearly making it during the SJ proceeding,
as admitted during oral argument); Sd-
Chemie, 1/30/09 (validity of dependent
claims not considered on appeal); In re
Cygnus Telecomms., 8/19/08 (applying 9th
Cir. law, addressing the question of whether
a party appealing from a SJ order may point
to any evidence that was introduced in the
district court, or is limited to the evidence
submitted in connection with the (opposition
to) SJ motion, and ruling the latter, stating
315
that it does not matter if the evidence was
otherwise part of the record in the district
court and thus the record on appeal; quoting
from the 9th Cir. the sound reasons behind
the rule); Golden Bridge Tech., 5/21/08;
MEC, 4/1/08 (citing L&W, but not deciding
the scope of the appellate record where the
trial record differed for cases in a
consolidated appeal); Immunocept, 10/15/07
(appellant also failed to make argument in
Rule 59 motion to alter or amend the
judgment); L&W, 12/14/06); See also
Singhal, 5/6/09 (nonprecedential waiver
where the appellant did not oppose a motion
for SJ and raised new arguments and
presented evidence for the first time on
appeal relating to co-inventorship); Uniloc
USA, 8/7/08 (nonprecedential affirming SJ
on alternative grounds of record not adopted
by the district court dissent - appellees
always have the right to assert alternative
grounds for affirming the judgment that are
supported by the record)
- Issue waived when raised for the first time

in a request for reconsideration of SJ
determination (Delaware Valley, 3/11/10
(n.1: district court could not have considered
declaration evidence first submitted with a
motion for reconsideration); Lamle, 1/7/05)
- New claim construction arguments

made in request for reconsideration
(Lava Trading, 4/19/06)
- Waiver of arguments for purposes of SJ,

when movant focused only on certain other
arguments (Osram Sylvania, 12/13/12 (n.1:
316
CAFC not considering prior art references
raised for the first time on appeal); Research
Corp., 12/8/10 (the CAFC reversing instead
of vacating SJ of invalidity (for the accused
infringer to argue lack of enablement on
remand) where the SJ motion was solely
based on lack of WD, which should have
been denied); Golden Bridge Tech., 5/21/08
(waiver when the patentee focused on an
entirely different basis for no anticipation
during SJ proceedings); Warner-Lambert,
9/21/07 (movant waived argument
challenging the validity, e.g., accuracy and
reliability, of testing, when focused on
arguments relating to precision of testing))
- Notice of scope of SJ (Charles

Machine Works, 7/26/13 (district
court erred by including prototypes
within scope of SJ of
nonininfringement, where the
patentee lacked notice of scope))
- Waiver when arguments not raised in

opposition to a motion for SJ (Marine
Polymer, 3/15/12 (en banc); Advanced
Software Design, 6/2/11 (no waiver of
infringement position which was argued first
in SJ reply brief in response to arguments
for noninfringement in opposition brief);
Wellman, 4/29/11; Therasense, 1/25/10
(patentee waived argument for no
anticipation) [vacated on 4/26/10, and
reinstated by Therasense, 5/25/11 (en
banc)]; In re Cygnus Telecomms., 8/19/08
(even if affidavit was otherwise of record in
the district court, applying 9th Cir. law);
Israel Bio-Engineering Project, 1/29/07);
317
See also Mikkelsen, 8/16/13
(nonprecedential an alleged infringers
failure to raise an invalidity defense in
opposition to a motion for SJ of
infringement is not a waiver of that defense
Pandrol); Singhal, 5/6/09
(nonprecedential); Vehicle IP, 1/6/09
(nonprecedential waiver where arguments
made in SJ briefs were not equivalent to
argument made for the first time on appeal);
See also Stamps.com, 6/15/11
(nonprecedential district courts
consideration of supplementary declarations
presented for the first time in a SJ reply brief
was waived)
- Waiver for failure to raise issue at trial, after

denial of SJ on issue (Meadwestvaco,
9/26/13)
District courts management of the trial stage
- District courts are given broad discretion to control and

manage their dockets (CLS Bank, 7/9/12 (district court
has discretion to decide the order of validity issues, i.e.,
Section 101 patent eligibility need not always be decided
first) [vacated and en banc review granted on 10/9/12];
Procter & Gamble, 12/5/08 (stay pending reexamination);
Amado, 2/26/08 (extending stay of injunction))
- Effect of appellate mandate the principle holds

true regardless of whether a district courts order is
incorporated into an appellate mandate an
appellate mandate does not turn a district court
judge into a robot, carrying out earlier orders that
become inappropriate based on subsequent facts or
318
law (Amado, 2/26/08 (order extending the stay of
injunction))
- Trial judges are entitled to decide the order in

which they hear and decide issues pending before
them, i.e., in a manner that they consider efficient
(Amado, 2/26/08; Nilssen, 10/10/07)
- District courts are given broad latitude, discretion in

managing trial practice (Baron Services, 5/7/13 (J.
Reyna, dissenting n.3); ePlus, 11/21/12 (district court
properly excluded damages evidence which would have
delayed trial); Outside the Box Innovations, 9/21/12
(unless the ruling is manifestly erroneous basing an
evidentiary ruling on an erroneous view of the law is an
abuse of discretion per se (11th Cir.)); Powell, 11/14/11
(n.2: broad discretion to set the order of trial); Baran,
8/12/10 (broad discretion given to fashion case
management deadlines); Asyst Techs., 10/10/08 (no
abuse of discretion in permitting the accused infringer to
amend defenses, and assert new prior art, where the claim
scope was changed in a prior CAFC appeal in case);
Tivo, 1/31/08 (determining jury prejudice); Nilssen,
10/10/07; Shum, 8/24/07 (bifurcation); Collegenet,
8/2/05; Lab Corp, 9/30/04)
- Trial judges are entitled to arrange the priority of

issues in a manner that they consider efficient
(Nilssen, 10/10/07)
- Selection of claims in patent(s) for asserting

infringement (In re Katz Patent Litigation, 2/18/11
(district courts claim selection procedure was
proper)); See also Stamps.com, 6/15/11
(nonprecedential district courts limiting the
number of claims asserted was proper where left
open the possibility of asserting additional claims
319
on a showing of need, by showing good cause
citing In re Katz)
- Trial courts discretion (with respect to bifurcation

of trial) is not without limits court must ensure
that a litigants constitutional right to a jury trial is
preserved (Shum, 8/24/07)
- Modifying, extending the stay of injunctions

broad equitable authority given to district courts
(Amado, 2/26/08 (done to preserve the status quo
while motions affecting the injunction were under
advisement)); See also STANDARDS OF
REVIEW AND CHOICE OF LAW
Injunctions
- District courts orders
- District court orders; must provide clear notice of

the requirements of orders - FRCP 83(b) (MIT,
9/13/06 (5th Cir.))
- Distict courts interpretation of its order is entitled

to deference unless the interpretation is
unreasonable or is otherwise an abuse of
discretion; the district court is in the best position
to interpret its own orders (Amado, 2/26/08 (that
appeal in order staying an injunction included a
petition for certiorari; also interpretation of an
order regarding escrow account))
- Local court rules (MIT, 9/13/06)
Dicta
- Dicta from prior Federal Circuit opinions relying on

dicta where the language is instructive and consistent
320
with the courts present holding (K-Tech, 4/18/13 (J.
Wallach, concurring n.1: describing dictum); Kappos v.
Hyatt, 4/18/12 (S.C.) (U.S. Supreme Court stating with
regard to dicta that [a]lthough that discussion was not
strictly necessary to Butterworths holding it was also not
the kind of ill-considered dicta that we are inclined to
ignore, and also noting that the Court in three later cases
reiterated Butterworths well-reasoned interpretation);
Creative Compounds, 6/24/11 (CAFC relied on dicta
where its reasoning was sound); In re Tanaka, 4/15/11
(stating that while the CAFC has since characterized as
dictum Judge Richs view that a reissue patent adding a
narrower claim to hedge against invalidity is proper, the
CAFC has not departed from it); Boehringer
Ingelheim, 1/25/10 (stating that [e]ven though we may
not technically be bound by this language in Lonardo
[that a terminal disclaimer must be filed before expiration
of the reference patent to overcome obviousness-type
double patenting], it is instructive and our holding is
consistent with it))
- Dicta from prior CAFC opinions relied on by party

rejected (TecSec, 10/2/13 (rejecting analysis in
prior CAFC case for why term system memory
means was a means-plus-function term as non-
binding dictum citing Zoltek); Inventio, 6/15/11
(appellees reliance on dicta from two prior CAFC
cases was unavailing and dictum from another
(nonprecedential) CAFC case cited to argue as a
matter of law was overly broad reading of the
case))
- Dicta by the CAFCs predecessor, the Court of Claims

and CCPA (In re Tanaka, 4/15/11 (following Judge
Richs dictum in a footnote in Handel (CCPA); see also
J. Dyk, dissenting); Hornback, 4/15/10 (the CAFCs
interpretation of Section 183 was consistent with the
Court of Claims interpretation noted in dicta))
321
Dismissal of appeal after settlement
- CAFC should not dismiss appeal after it has been decided

(Tivo, 5/10/11 (Order) (en banc) (nonprecedential
denying joint motion to dismiss appeal after settlement,
which was filed after en banc decision issued, stating that
granting the motion to dismiss (before issuance of the
courts mandate), which would result in a modification or
vacatur of the courts en banc judgment, was neither
required nor a proper use of the judicial system))
- Settlement before issuance of the CAFCs decision, or

the parties agreeing to a disposition of the matter
dependent upon the courts decision counsels duty to
inform the court of entering into any such agreement
before issuance of the courts decision, i.e., which may
raise a question of mootness (Tivo, 5/10/11 (Order) (en
banc) (nonprecedential))
En banc review
- CAFC does not rehear appeals simply because a non-

panel member disagrees with its result Amgen (J.
Lourie, concurring); FRAP 35(a) (J. Lourie, Order
denying petition for rehearing en banc, 5/21/07, in Pfizer,
3/22/07)
- Procedure for en banc review (Abbott Labs, 5/18/09 (en

banc) (J. Newman, dissenting, J. Mayer and J. Lourie,
joining, arguing that the majority had given no notice of
its sua sponte en banc action, contrary to the FRAP and
the CAFCs own operating procedures))
- Rule 36 judgments (Memorylink, 4/11/12 (Order) (J.

OMalley, dissenting explaining reasons for Rule 36
322
judgments, and circumstances when issued, and
entitlement to en banc review))
- When conflicts arise between panel decisions of the

CAFC, the ensuing uncertainty is of national scope,
contravening the purpose of establishing the court;
Justices Scalia and OConnor have highlighted the need
for en banc review to correct panel errors within the
circuit that are likely otherwise to come before the U.S.
Supreme Court (J. Newman, Order denying petition for
rehearing en banc, 5/21/07, in Pfizer, 3/22/07)
Error - by District Court and BPAI/TTAB
Generally
- Errors so grievous as to render the trial unfair (Norian,

4/6/04)
Harmful error
- Harmful error (Venture Industries, 8/7/06)
- When the district court applies the wrong standard

of review (Venture Industries, 8/7/06 (6th Cir.)
(standard for prejudice under FRCP 60(b)(3))
Harmless error rule
- Harmless error rule 28 USC 2111 (harmless error

when errors or defects do not affect the substantial
rights of the parties); FRCP 61 (harmless error, unless
error affects the substantial rights of the party or refusal
to take action is inconsistent with substantial justice);
FRE 103(a) (a party may claim error in a ruling to admit
or exclude evidence only if the error affects a substantial
323
right of the party) (Outside the Box Innovations, 9/21/12
(improperly excluded expert testimony affected the
patentee substantial rights in showing nonobviousness);
Wellman, 4/29/11 (district courts finding on best mode
was harmless error since did not affect substantial rights
of the parties); Siemens, 2/24/11 (harmless error where
exclusion of evidence did not affect the outcome of case);
Advanced Magnetic Closures, 6/11/10 (considering
inadmissible hearsay evidence during a bench trial
almost impossible for a district court to commit
reversible error by admitting inadmissible evidence
during a bench trial); Vanderbilt U., 4/7/10 (concluding
harmless error despite the district courts erroneous
statements regarding the law of joint inventorship and a
misunderstanding of the relevance of case law to the facts
of the case; see also J. Dyk, dissenting would have
vacated and remanded the case, requiring the district
court to make findings of fact in light of the correct law);
In re Chapman, 2/24/10 (applying the harmless error rule
to review of a BPAI decision); Intl Seaway Trading,
12/17/09 (rejecting harmless error arguments by accused
design patent infringers); Felix, 4/10/09 (district courts
erroneous construction of claim term engaging was
harmless since did not affect its infringement
determination); Henkel, 3/18/09 (n.2: BPAIs improper
treatment of irrelevant declaration testimony as support
for prior RTP was harmless error given the BPAIs
explicit disavowal of any reliance on it); Kinetic
Concepts, 2/2/09 (harmless error in not instructing jury
on claim construction where the jury adopted the correct
construction); Netcraft, 12/9/08 (district courts failure to
consider the PH was harmless error when the CAFC
reached the same claim construction having considered
it); Praxair, 9/29/08 (n.11: harmless error in intent
finding for IC); Finisar, 4/18/08 (harmless error where
correction of the district courts erroneous claim
construction would not have changed the jurys verdict;
the CAFCs reversal of the district courts construction
324
had no discernible effect on the jurys verdict);
Monsanto, 2/5/08 (admission of report harmless when
cumulative and did not appear to have any prejudicial
effect); Takeda, 6/28/07; Pfizer, 3/22/07; *Walter Kidde,
3/2/07; PC Connector Solutions, 5/6/05; In re Watts,
1/15/04); See also Paradox Security Systems, 7/19/10
(nonprecedential district courts claim construction
errors were harmless where infringement was not shown
based on the patentees proposed construction); Alloc,
2/18/10 (nonprecedential the district courts submission
of claim construction to the jury relative to infringement
was harmless due to the CAFCs obviousness ruling)
- BPAI decision (In re Chapman, 2/24/10

(concluding that the BPAIs errors in its fact
findings regarding the scope of the primary
reference were harmful because they increased the
likelihood the applicant was erroneously denied a
patent on grounds of obviousness: Because we
cannot say with confidence that the Board would
have reached the same conclusion in the absence
of these errors, we are persuaded they are indeed
harmful Kotteakos (S.C.)); Henkel, 3/18/09
(interference); In re Garner, 12/5/07 (interference);
In re Watts, 1/15/04)
- Judicial review provision of the APA

includes a harmless error rule 5 USC 706
([D]ue account shall be taken of the rule of
prejudicial error) (In re Chapman, 2/24/10)
- Harmless error rule applies to appeals from

the BPAI just as it does in cases originating
from district courts In re Watts (In re
Chapman, 2/24/10)
- Burden of showing that the error is

harmful normally falls upon the party
325
attacking the agencys determination
Shinseki (S.C.) (In re Chapman,
2/24/10)
- TTAB decision (U. of South Carolina, 1/19/10

(nonprecedential TTABs error regarding
DuPont factor in concluding likelihood of
confusion was harmless where the parties SC
marks were legally indentical and appeared in the
same classes of goods in the same trade channels))
- Dismissal of counterclaims, along with voluntary

dismissal of complaint, did not affect the
defendants substantial rights, and thus was
harmless (Walter Kidde, 3/2/07)
- Party must articulate how its rights are affected so

that the CAFC can determine whether they are
indeed rights, whether they are substantial, and
whether they have been affected (Wedgetail,
8/12/09 (quoting the Supreme Courts summary of
the doctrine of harmless error -- including that
where unclear why an erroneous ruling was
harmful, the party seeking reversal must explain
why the erroneous ruling caused harm -- and
holding that similarly the appellant had the burden
to prove that the district court clearly erred in
failing to find an exceptional case or abused its
discretion in failing to award attorney fees), e.g., a
partys decision to invoke work product protection
does not trump the statutory directive that requires
the CAFC to disregard errors that do not affect the
substantial rights of the parties (Walter Kidde,
3/2/07)
Invited error rule
326
- Invited error rule when a party invited the error
(Harris, 8/5/05; Sulzer, 2/14/04); See also O2 Micro,
11/18/11 (nonprecedential waiver by invited error of
challenge to form of an injunction where the infringer
proposed the challenged language citing Harris)
- Taking bold position at trial that later appears

extreme or is abandoned does not invite error
(Harris, 8/5/05)
Plain error rule
- Plain error standard deferential applied when error

not preserved at trial (Function Media, 2/13/13 (no plain
error was shown for granting new trial based on alleged
improper arguments not objected to at trial, applying 5th
Cir. law); Wordtech Systems, 6/16/10 (plain error found
in jury instructions, where not objected to); Minks,
10/17/08 (applying 11th Cir. law, ruling that jury
instruction regarding willfulness was not plain error);
Praxair, 9/29/08 (failure to object during closing
argument); Harris, 8/5/05)
Ethics (and related issues)
Generally
- Attorneys must assist the court in the administration of

justice Allen Engg (Counsel must remember that they
are not only advocates for their clients; they are also
officers of the court and are expected to assist the court in
the administration of justice, particularly in difficult
cases involving complex issues of law and technology)
(Eon-Net, 7/29/11 ([A]n attorney, in addition to his
obligation to his client, also has an obligation to the court
and should not blindly follow the clients interests if not
supported by law and facts); Tokai, 1/31/11 (playing
327
fast and loose with discovery rules as relates to expert
reports); Exergen, 8/4/09 (n.2: calling out the patentees
counsel for argument that drifted from the record or the
[district] courts [claim construction] rulings, which
included: 1) overstating the content of expert testimony,
2) telling the jury to essentially ignore a claim
requirement, and 3) directly contradicting the district
courts construction of a claim term in a misleading
statement to the jury; with the CAFC stating: While this
form of advocacy may have resulted in a short-lived
victory at trial, it does not serve the interests of the client
or the interests of the court Allen Engg); See also
Boss Indus., 5/28/09 (nonprecedential finding that the
accused infringers discovery practices (including date-
stamping documents to be filed with the district court
using the courts time stamp, but then not actually filing
the documents, by placing them in the courts drop-box,
until several days after the filed stamp was placed on
the documents (which happened several times)) were
less than commendable and stating that [t]his type of
conduct during litigation is unacceptable and reflects a
lack of respect for both the opposing party and the
court); Tuna Processors, 4/23/09 (nonprecedential
stating that the patentees proposed claim construction
which was contrary to the entire purpose and design of
the patent and its claims was simply . . . an attempt to
cloud the issue); Respironics, 12/16/08 (nonprecedential
holding that the defendant acted too late in arguing that
the district court failed to have the jury consider other
claim elements for infringement when the court and
parties understood that only one element would
determine infringement); Lacks Indus., 11/21/08
(nonprecedential stating in response to counsels
equating witness speculation with clear and convincing
evidence of invalidity: It is our opinion that, an effective
advocate would better serve the clients interests, and
become a more trustworthy officer of the court, by using
sound judgment to deal with less favorable facts, not by
328
asserting questionable statements, even when under
pressure.); LSI Industries, 5/22/08 (nonprecedential
reemphasizing that an attorney has a duty not only to
zealously advocate on behalf of his client, but also to aid
the court in the fair and efficient administration of
justice; the record revealed that counsel made little
effort to simplify the case, instead presenting the district
court with a firestorm of issues and arguments
including an aggressive use of statements in the PH to
argue disavowal of claim scope ))
- Ad hominem attacks on opponents are not

condoned, and typically do more harm than good
to the party that launches them (In re Cygnus
Telecomms., 8/19/08 (reply brief accused the
appellee and its counsel of lying and committing
a crime that should be reported to the appropriate
authorities))
- Misconduct mere disagreement between the

parties, e.g., of the content of prior art references,
is not evidence of misconduct (Garrido, 10/22/13
(nonprecedential))
- Frivolous arguments on appeal (Iovate Health

Sciences, 11/19/09 (patentees argument that the
claim term enhancing muscle performance
excluded increasing muscle strength border[ed]
on the frivolous where the patent specification
and the patentees infringement allegations
referred to muscle strength as a proxy for the claim
term))
- Motion to strike reply brief improper

attempt to obtain the final word in the
appeal, a practice that the CAFC strongly
discourages (Inventio, 6/15/11 (motion to
strike was improper where it reargued the
329
merits of the case, had a nasty tone, and
border[ed] on the type of frivolous and
wasteful litigation tactics that [the CAFC
has] previously frowned upon))
- Frivolous appeal based on selective citation of the

applicable law and significant misrepresentations
of the record (E-Pass Technologies, 3/20/09 (see
also J. Bryson, dissenting agreeing in part that
the appellants briefs on appeal fell short of the
standards we expect of counsel in this court))
- Mischaracterizing, misquoting in briefs (Exergen,

8/4/09 (overstating the content of expert testimony
as the basis for infringement); Felix, 4/10/09
(dictionary definitions of claim terms, which
omitted words without using ellipses, were highly
misleading and border[ed] on a misrepresentation
to the court)); See also Briefing the CAFC
appeal waiver, joint appendix
- Improper confidentiality markings in briefs (In re

Violation of Rule 28(d) (imposing sanctions of
$1,000 on counsel for extensive use of improper
confidentiality markings in briefs, contrary to
CAFC Rule 28(d)))
- Disciplining attorneys under FRAP 46(c) for

failure to comply with any court rule (In re
Violation of Rule 28(d) (sanctioning attorney for
improper confidentiality markings, contrary to
CAFC Rule 28(d)))
Attorney disqualification
- Attorney disqualification (In re Shared Memory

Graphics, 9/22/11 (Order) (granting mandamus and
330
ordering the district court to vacate order disqualifying
the patentees law firm, where the defendant waived
future conflicts of interest in a joint defense agreement in
a prior litigation; see also J. Newman, dissenting: If
there is doubt, it must be resolved in favor of the entity
whose information is in jeopardy and disagreeing that
the waiver applied to the clear-cut conflict situation in
the case, and stating that professional responsibility in
the legal system does not distinguish between a written
agreement to protect information received as an attorney,
and the ethical obligation to protect information received
as an attorney. The possible adverse use of such
information, flowing from a change in the lawyers
employment, is prohibited under any theory.); Ring
Plus, 8/6/10 (affirming denial of motion to disqualify for
allegedly improper ex parte communications with the
opponents director and officer, applying 5th Cir. law);
Ultimax Cement, 12/3/09 (no abuse of discretion,
applying 9th Cir. law, where the district court had a sound
basis for not disqualifying the defendants counsel who
had represented the plaintiffs former employer in the
prosecution of a patent, and where there was no working
attorney-client relationship between the defendants
counsel and the plaintiff); See also In re U. of South
Florida, 1/12/12 (Order) (nonprecedential - denying
mandamus relief with respect to the denial of motion to
withdraw as counsel where good cause not shown to
permit withdrawal, based on prejudice, delay to the
proceedings and added expense, and that the opposing
party would not suffer any specific or material harm
since there was no disclosure of confidential information
relating to the action, applying Pennsylvania Rules of
Professional Conduct); Outside the Box Innovations,
2/1/10 (nonprecedential applying the Georgia Rules of
Professional Conduct, disqualifying appellate counsel
where their partner was an expert witness for the
opposing party regarding the amount of attorney fees,
and their client had not waived the conflict); CSIRO,
331
10/23/08 (nonprecedential applying 5th Cir. law, which
looks to the ABA Model Rules - substantial
relationship test (and three factors) used for deciding
disqualification based on former representation of a
client); Touchcom, 10/6/08 (nonprecedential applying
the Virginia Model Rules relating to former clients and
an unpublished state law opinion (as the case arose out of
the E.D. of Virginia), the CAFC granted a motion to
disqualify opposing counsel from representing the
opponent in the appeal where counsel represented both
the opponent and the movant (in a deposition) during a
prior litigation)
Exclusion of evidence
- District court must consider unfair and prejudicial

surprise to party that may result from allowing evidence
at trial this is the purpose of the FRCP and 35 USC
282, as well as the purpose of discovery generally i.e.,
to enable parties to obtain factual information needed to
prepare their case for trial (*Innogenetics, 1/17/08
(anticipatory prior art reference disclosed on the last day
of discovery was excluded, even though patent
challenger technically complied with the requirements of
section 282; lots of evidence excluded, with the CAFC
referring generally to the pitfalls of playing fast and
loose with rules of discovery and repeated occurrences
of . . . manipulation of the litigation process); Primos,
6/14/06)
Federal Rules of Civil Procedure
- Federal Rules should be given their plain meaning

(General Mills, 7/31/07 (on petition for rehearing))
332
- Where meaning of Rule 12 is unambiguous (FRCP
12(a)(4)), CAFC declined to ignore the text of the
rule in service of a purported purpose (General
Mills, 7/31/07 (on petition for rehearing))
Finality of litigation, strategies
- Parties bound by result of the contest; policy concern

even stronger when the case ended by deliberate choice
of the parties, i.e., settlement (Louisville Bedding,
7/25/06)
- Parties bound by their litigation strategies tactical

decision made to concede facts, even though the actual
circumstances did not necessarily support the conclusion;
party held to the consequences of its choices; party not
permitted to reverse course late in the proceedings simply
because it realizes its litigation strategy was unsuccessful
(Transclean, 1/18/07 (judical estoppel))
Foreign tribunals
Anti-suit injunctions
- U.S. courts have the power to enjoin parties from

pursuing litigation before foreign tribunals
factors applied in evaluating a request for an anti-
suit injunction (Sanofi-Aventis, 5/10/13 (affirming
the denial of an anti-suit injunction of a foreign
arbitration, applying factors under 9th Cir. law,
including recognizing that the U.S. has a strong
policy in favor of forum selection clauses; see also
J. Dyk, concurring the lack of identical issues in
the two proceedings (a threshold consideration
that must necessarily be met before an anti-suit
injunction may issue) was alone sufficient to
demonstrate that the district court had not abused
333
its discretion thus, did not read the majoritys
opinion as holding that the remaining factors,
comity and public policies favoring forum
selection clauses, necessarily foreclose anti-suit
injunctions where the issues are the same (majority
agreed in n.6))
Intervening decisions
(Fresenius USA, 7/2/13 (applying the general rule, to the PTOs

cancellation of claims, that an appellate court must apply the
law in effect at the time it renders its decision (under Thorpe
(S.C.) and Bradley (S.C.)), including prior to issuing its
mandate ending the litigation, stating that the CAFCs decisions
giving effect to the PTOs cancellation of claims asserted in
pending suits are fully consistent with its duty to apply the law
in effect at the time it renders a decision); Powell, 11/14/11 (IC
standard heightened by Therasense (en banc) which was
decided between the filing of briefs and oral arguments);
Epistar, 5/22/09 (issue not ripe until the CAFCs decision
regarding the scope of ITC limited exclusion order); Golden
Bridge Tech., 5/21/08 (listed as an exception to waiver);
Amado, 2/26/08 (between an appellate decision and the
proceedings on remand); Monsanto, 1/25/08 (intervening
CAFC decision between filing of briefs and oral arguments;
district courts jurisdiction to hold patents no longer part of the
case unenforceable for inequitable conduct); Cordis, 1/7/08
(intervening law between filing of briefs and oral arguments;
waiver for failure to raise argument concerning joint
infringement in briefs); Glaxo(2), 1/29/04; Sulzer, 12/9/03)
- Decision is not intervening if the parties have a

reasonable opportunity to raise an issue with respect to
the decision prior to issuance of the appellate mandate
(Amado, 2/26/08 (not an intervening decision, and
mandate rule not precluded, where party failed to raise
eBay (S.C.)s effect on the appeal, which was decided
334
during the time between the CAFC briefing and oral
argument))
- Supreme Court decisions well-settled that when the

U.S. Supreme Court applies a rule of federal law to the
parties before it, that rule is the controlling interpretation
of federal law and must be given full retroactive effect in
all cases still open on direct review and as to all events,
regardless of whether such events predate or postdate
announcement of the rule Harper (S.C.) (Fresenius
USA, 7/2/13 (applying rule to the PTOs cancellation of
claims in a reexamination during pending litigation
regarding those claims); Amado, 2/26/08 (intervening
effect of Microsoft v. AT&T relating to Section 271(f)
infringement))
Intervention in appeal
- Intervening in appeal a court of appeals may, but only

in an exceptional case for imperative reasons, permit
intervention where none was sought in the district court
(Apeldyn, 11/2/12 (Order) (nonprecedential denying
intervention where the movant presented no position
relating to the substance of the appeal in which its
interest was adverse to the appellants))
Judgments
CAFC reviews judgments, not opinions
- CAFC reviews judgments of the district court, not

opinions (In re Chamber of Commerce, 4/3/12 (TTABs
judgment was supported by substantial evidence, despite
fact that the opinion could have been more helpful had it
explicitly tied its evidentiary findings to individual
services recited in the application); Avid Identification
Systems, 4/27/10 (intent to deceive for IC affirmed based
on evidence in the record); Comaper, 3/1/10 (n.4: party
335
did not need to also appeal related JMOL order to
preserve issue of inconsistent jury verdict for appeal);
Wavetronix, 7/29/09 (n.1: the existence of alleged legal
and factual errors in the district courts opinion does
not, in itself, compel reversal, stating the above rule); U.
of Pittsburgh, 6/9/09 (distinguishing rule where the
district courts judgment was not supported by the
record); Eli Lilly, 2/24/09 (J. Prost, dissenting stating
that the district courts opinion still must contain
sufficient findings and reasoning to permit meaningful
appellate scrutiny, citing Gechter, Nazomi); Scanner
Techs., 6/19/08 (agreeing with the district courts
judgment of obviousness based on the merits, as
supported by expert testimony, despite the patentee
taking issue with the crisp nature of the district courts
decision); Mangosoft, 5/14/08 (the district courts
construction of the disputed term local was correct
based on the intrinsic evidence, despite the patentees
arguments that the court improperly relied on a technical
dictionary using the pre-Phillips (en banc) methodology
of Texas Digital); Ormco, 8/24/07 (claim construction);
Acumed, 4/12/07; Depuy Spine, 11/20/06 (claim
construction, noninfringement); Optivus Tech., 11/16/06
(obviousness)) thus, CAFC determines whether theres
sufficient evidence in record to sustain judgment
(Lawman Armor, 2/22/06; Bruno, 1/11/05; Gemstar,
9/16/04)
- CAFC considers additional arguments to affirm

judgment, as long as appealed and presented to
district court, although not adopted by district
court (Wavetronix, 7/29/09 (n.1: citing Supreme
Court law: The party that prevailed below may
defend a judgment on any ground which the law
and record permit that would not expand the relief
that has been granted); Titan Tire, 6/3/09
(unnecessary to reach various alternative grounds
for affirmance); Depuy Spine, 11/20/06)
336
- Affirming the district courts judgment on
alternative grounds (Nystrom, 9/8/09
(affirming based on waiver for failure to
include a DOE infringement claim in a
previously adjudicated suit, instead of based
on noninfringement under DOE))
- CAFC may affirm SJ on a ground supported

in the record but not addressed by the
district court, e.g., ignore any erroneous
basis that the district court may have
employed Anderson (S.C.) (Cheese
Systems, 8/6/13 (affirming infringement
based on literal infringement, rather than
DOE infringement - citing Hydril);
Wavetronix, 7/29/09 (affirming the district
courts SJ of noninfringement, albeit on
different grounds); Clock Spring, 3/25/09
(affirming SJ of invalidity based on public
use bar, rather than obviousness, citing
Aquatex); Aquatex, 2/27/07); See also
Oracle, 4/28/10 (nonprecedential)
- CAFC reviews judgments, and not trial court

orders (e.g., claim construction orders) if the
district courts judgment did not depend on the
interpretation of a particular term, the CAFC does
not review the district courts construction of the
term (Sandisk, 7/8/05)
- CAFC reviews only the district courts

finished product, not its process (Mangosoft,
5/14/08 (claim construction); Ormco,
8/24/07; Acumed, 4/12/07); See also
Panavise Prods., 1/6/09 (nonprecedential
ruling that the district court correctly based
its dismissal of a DJ action on the totality of
337
the circumstances under Medimmune (S.C.)
despite creating the misimpression that a
single factor was dispositive)
- CAFC reviews decisions, not opinions

(Ormco, 8/24/07 (claim construction))
- CAFC may, on occasion, affirm a district

courts judgment in the absence of a
recitation of its reasons for entering the
judgment (because of rule) (Lexion Medical,
4/22/11 (where the record adequately
supports the judgment, the district court
does not have an obligation to recite every
detail of its reasoning citing U. of
Pittsburgh); U. of Pittsburgh, 6/9/09)
Summary affirmance
- Summary affirmance appropriate, inter alia, when the

position of one party is so clearly correct as a matter of
law that no substantial question regarding the outcome of
the appeal exists (Public Patent, 5/3/13 (Order)
(nonprecedential summarily affirming the district
courts judgment of lack of standing in false marking
case based on the AIA and Brooks); Asia Pacific
Microsystems, 3/6/13 (Order) (nonprecedential on the
appellees motion to dismiss, the CAFC summarily
affirmed the ITCs judgment granting a general exclusion
order, after the appellant waived contributory
infringement argument on appeal by failing to raise the
issue in its brief))
Remand necessary? - Remand for clarification
- Generally
338
- CAFC need only remand when it has no way to
affirm or reverse the district courts action under
review; remand in a case thought to be completed
is a step not lightly taken Consolidated
Aluminum (remand was unnecessary even though
the district court did not expressly set forth its
findings and reasons for denying attorney fees,
where the record supported the denial) (Janssen,
9/25/09 (n.12: no remand for fact findings by the
district court regarding utility and enablement was
necessary where the record did not support a
finding of utility responding to J. Gajarsas
dissent that it was improper for the majority to
have conducted its own fact findings on the
issues); Wedgetail, 8/12/09 (remand was
unwarranted where the appellant failed to
demonstrate based on the record either that the
district court clearly erred in failing to find the
case exceptional or that the accused infringer was
harmed by the district courts failure to entertain a
motion for attorney fees, citing Consolidated
Aluminum); Honeywell Intl, 4/18/08 (no remand
needed to apply strictly FRCP 52s requirement
that the district court find the facts specially,
where the record otherwise supplied sufficient
evidence to affirm the district courts holding of
prosecution history estoppel))
- Remand for clarification
- Remand for clarification is appropriate where a

judgment is ambiguous; the Supreme Court has
recognized the authority to remand for clarification
judgments that suffer from ambiguity, particularly
when the ambiguity implicates jurisdictional
concerns (Jang, 7/15/08 (vacating the judgment (a
consent judgment based on the parties joint
339
stipulation of noninfringement) and remanding to
the district court for clarification regarding which
claim construction rulings affected infringement
and how those rulings related to the accused
product))
- For an appellate court to fulfill its role of judicial

review, it must have a clear understanding of the
grounds for the decision being reviewed - Nazomi
(Eli Lilly, 2/24/09 (J. Prost, dissenting); Research
Corp. Techs., 8/1/08 (remanding SJs for proper
determination on the merits where motions were
granted without a proper analysis regarding IC and
thus the CAFC lacked findings and conclusions for
adequate review)); See also Baker Hughes, 10/9/09
(Order) (nonprecedential vacating grant of PI
and remanding where the district court failed to
make findings regarding irreparable harm, and thus
there was not enough in the record for the CAFC
to provide meaningful review)
Reversal of judgment
- Disagreements with the district courts fact findings

cannot be the basis for reversal clear error with respect
to the fact findings is required (Astrazeneca, 6/10/08
(nonprecedential))
- Reversal of judgment the CAFC can reverse judgment

if remand unnecessary (Douglas Dynamics, 5/21/13
(reversing SJ of noninfringement and granting SJ of
infringement); Dey, 5/20/13 (n.5: addressing issue; see
also J. Newman, dissenting would have reversed SJ of
invalidity based on a prior public use without remand,
where the facts regarding the alleged prior public use in a
clinical trial were not disputed); Ultimax Cement,
12/3/09 (reversing the district courts SJ of
340
indefiniteness, and directing the district court to enter SJ
that the disputed claim is not indefinite); Finisar, 4/18/08;
Seachange Intl, 6/29/05)
- CAFC may reverse a district courts denial of

JMOL without remand if no reasonable jury could
have found infringement under the proper claim
construction (Finisar, 4/18/08)
- Reversal and remand of district courts dismissal of

complaint under FRCP 12(b)(6) CAFC expresses no
substantive views on remaining issues on remand
(Hydril, 1/25/07)
Subdelegation principle
- Subdelegation principle (Apotex, 10/27/03)
Vacatur and remand
- CAFCs vacatur of judgment signals that, although the

district courts prior decision rested on erroneous
grounds, a proper claim construction might support a
judgment (summary or otherwise) in favor of either
party, depending on the evidence and argument
submitted to the district court on remand and considered
by the district court in the first instance; vacatur and
remand by the U.S. Supreme Court neither indicates nor
suggests that the lower courts decision was erroneous
(E-Pass Technologies, 1/12/07 (SJ))
Judicial admissions
- Binding judicial or evidentiary admissions made before

the district court? (DuPont, 5/14/08 (n.3 - finding no
341
admissions made when party had corrected its earlier
positions regarding the priority date))
Judicial estoppel
- Judicial estoppel equitable doctrine, invoked at courts

discretion factors applied (S.C.) (Organic Seed
Growers, 6/10/13 (the patentees representations (that it
would not sue the DJ plaintiff-appellants for inadvertent
infringement), which the court relied on to defeat the
appellants DJ claims, was binding as a matter of judicial
estoppel); Source Search, 12/7/09 (district court did not
abuse its discretion in allowing newly cited prior art
references despite delay in submitting them in a
supplemental invalidity expert report, where the patentee
waited nine months after being served with the report to
object, and during that time conducted discovery on the
prior art); Decisioning.com, 5/7/08 (patentee not
judicially estopped when challenged the district courts
claim construction); Finisar, 4/18/08 (patentee estopped
from proving willfulness after successfully defending
against laches defense); Biomedical Patent Mgt.,
10/23/07; Transclean, 1/18/07; Bonzel, 3/2/06; Sandisk,
7/8/05); See also Fitness Quest, 5/12/09 (nonprecedential
minority view in the Sixth Circuit)
- Judicial estoppel applies when a party takes a later

position that is inconsistent with a former position
in the same or related litigation, on which the party
had been successful and had prevailed based on the
former position (Organic Seed Growers, 6/10/13;
Honeywell Intl, 4/18/08 (no judicial estoppel
where the record did not link the accused
infringers success on various issues to the partys
former statement; also, judical estoppel where the
patentee successfully argued for a broader
definition of an alleged equivalent for establishing
342
DOE infringement than it later urged with respect
to the foreseeability issue (dicta?)); Biomedical
Patent Mgt., 10/23/07; Transclean, 1/18/07;
Bonzel, 3/2/06); See also Cisco Systems, 8/29/13
(nonprecedential affirming no DJ jurisdiction
where the patentee was judicially estopped by
conceding noninfringement at oral argument
citing Organic Seed Growers); Speedtrack,
4/16/13 (nonprecedential applying 9th Cir. law);
LSI Industries, 5/22/08 (nonprecedential no
judicial estoppel where no previous success)
- Well-established that a party who

successfully argues one position is estopped
from later adopting a contrary position in a
case involving the same patent U.S.
Philips (Organic Seed Growers, 6/10/13);
See also Centillion Data Systems, 11/25/13
(nonprecedential no judicial admission
during prior appeal where statement was
made in a different context)
- Purpose of the doctrine is to protect the

integrity of the judicial process by
prohibiting parties from deliberately
changing positions according to the
exigencies of the moment (Biomedical
Patent Mgt., 10/23/07); See also Speedtrack,
- Courts differ on whether the application of

judicial estoppel is limited to inconsistent
factual assertions only, vs. legal conclusions
as well; the CAFC has applied the doctrine
to inconsistent positions on questions of law,
e.g., claim construction (Transclean,
1/18/07); See also Fitness Quest, 5/12/09
343
(nonprecedential judicial estoppel can
apply to claim construction arguments)
- Party prevailing on an issue of claim

construction cannot argue (on JMOL
motion) for a differing construction
following an adverse jury verdict
Hewlett Packard (Cordis, 9/28/11)
- No estoppel if new complaint is sufficiently

different from earlier action (Bonzel, 3/2/06)
- Non-exclusive factors (applied by the Supreme

Court) that guide a courts decision whether to
apply judicial estoppel: 1) partys later position
must be clearly inconsistent with its earlier
position; 2) the party must have succeeded in
persuading a court to adopt the earlier position,
thereby posing a risk of inconsistent court
determinations; and 3) the party would derive an
unfair advantage or impose an unfair detriment on
the opposing party if not estopped New
Hampshire (S.C.); factors are not exhaustive
(Organic Seed Growers, 6/10/13; Source Search,
12/7/09 (applying 3rd Circuits miscarriage of
justice rule); Biomedical Patent Mgt., 10/23/07
(inconsistent positions were excused by a
substantial intervening change in federal (Supreme
Court) law); Transclean, 1/18/07); See also
Speedtrack, 4/16/13 (nonprecedential no abuse
of discretion in refusing to apply judicial estoppel,
where claim construction argument to the district
court was not clearly inconsistent with earlier
invalidity argument during reexam, nor was the
previous argument successful enough, or any
unfair detriment to the party arguing for estoppel,
applying 9th Cir. law); Altair Engineering, 3/9/11
(nonprecedential patentee not estopped from
344
changing its characterization of the accused
product, where it had not prevailed in any phase of
the case); Fitness Quest, 5/12/09 (nonprecedential
judical estoppel did not apply to claim
construction arguments which were not clearly
inconsistent with earlier ones)
- Judicial estoppel is not favored to prevent claim

construction arguments from evolving after the PI
stage, because know more about the claim terms
after discovery (Sandisk, 7/8/05)
- Party cannot assert position on appeal that is

directly opposed to the position the party
successfully urged at trial (Lava Trading, 4/19/06);
the positions must be entirely inconsistent (Cross
Medical Prods., 9/30/05)
- Cannot argue inconsistent position on

appeal, from trial (Atlantic Research,
10/6/11 (not addressing whether the patentee
was judicially estopped from asserting
contradictory claim construction arguments
on appeal, but viewing the patentees tactics
with extreme disfavor); Transclean,
1/18/07; Lava Trading, 4/19/06; Cross
Medical Prods., 9/30/05; Metabolite Labs,
6/8/04)
- Party not estopped from altering unsuccessful

position before trial court (Lava Trading, 4/19/06)
Judicial notice
- Judicial notice may be taken at any stage of a proceeding

Group One (Function Media, 2/13/13 (n.4: taking
judicial notice of the asserted claims being held invalid
345
by the PTO during reexam, even though the decision was
not available to the district court citing Old Reliable);
Old Reliable Wholesale, 3/16/11)
- Judicial notice of events arising after a district

court judgment the CAFC has discretion on
appeal to consider events as to which judicial
notice is appropriate that arise after a judgment
(Function Media, 2/13/13; K-Tec, 9/6/12 (SJ was
appropriate regardless of whether the CAFC
considered post-judgment reexam decision citing
Marine Polymer); Marine Polymer, 9/26/11 (n. 2:
citing Supreme Court and circuit court decisions
for rule) [vacated])
- Judicial notice taken of a decision from another

court or agency Advanced Software Design
(Function Media, 2/13/13 (taking judicial notice of
PTO decision during reexam); Marine Polymer,
9/26/11 (taking judicial notice of a decision by the
PTO in a reexamination of the patent on appeal
which occurred after the district courts judgment)
[vacated]; Old Reliable Wholesale, 3/16/11
(taking judicial notice of the fact that the PTO
confirmed the patentability of the claims)); See
also St. Clair, 1/10/11 (nonprecedential n.1:
CAFC took judicial notice of the examiners
remarks in the reexamination record in construing
the claims citing Standard Havens)
Juries, instructions and verdicts
Juries generally; jury prejudice
- Juries - generally
- Almost invariable assumption of the law that

jurors follow their instructions Shannon (U.S.)
346
(Finjan, 11/4/10 (presumption that jurors followed
instructions was not rebutted); Z4 Technologies,
11/16/07)
- Jury required to fully consider and weigh all

evidence presented at trial (Summit Technology,
3/26/04)
- Jury determination (i.e., credibility, reevaluate

weight of evidence) are jury functions thus,
cannot be second-guessed by the court deference
required (Versata Software, 5/1/13 (great
deference given to the jurys fact findings and
verdict applying 5th Cir. law, and citing Agrizap);
Verizon, 4/16/10 (conflicting expert testimony
regarding infringement and invalidity (anticipation
and obviousness) for the jury to decide); Praxair,
9/29/08 (jury not required to accept an experts
testimony, opinion); Wechsler, 5/18/07; Applied
Medical Resources, 1/24/06; NCube, 1/9/06)
- Jury prejudice
- Comments, statements by counsel must be

taken in context when determining jury
prejudice (Verizon, 4/16/10 (alleged
improper statements by counsel and experts
to the jury regarding claim scope);
Callaway, 8/14/09 (defendant did not object
to three patent examiners statement in
opening argument itself as being unfairly
prejudicial, in contending that the district
court should have allowed evidence of a
parallel reexamination before the jury);
Praxair, 9/29/08 (attorney argument in
closing statement was not plain error where
merely pointed out the lack of evidence to
prove anticipation); Tivo, 1/31/08 (no
347
prejudice shown when the jury told of the
absence of opinions of counsel, which
related only to willfulness claim rejected by
the district court); Cordis, 1/7/08 (counsels
statements during closing arguments were
made in the context of arguments for why
his partys method was the more rational
approach for determining infringement, and
thus unlikely improperly influenced the
jury))
- District court is in a far better position

to determine how statements would
have been understood by the jury and
whether unfairly prejudicial to partys
defense (Commil USA, 6/25/13; Tivo,
1/31/08)
Jury instructions
- Jury instructions
- Erroneous jury instruction, unless harmless,

requires a new trial (Commil USA, 6/25/13
(vacating damages award and remanding for a new
trial based on erroneous and prejudicial instruction
on induced infringement); LaserDynamics, 8/30/12
(new trial motion rejected); Bettcher Indus.,
10/3/11; Atlantic Research, 10/6/11 (declining to
address objections to Allen charges to the jury,
where the CAFC granted new trial based on jury
taint); Verizon, 4/16/10 (lack of instruction was
harmless); SEB, 2/5/10 (the patentee failed to ask
the CAFC to order a new trial on willfulness,
despite the district courts conclusion that the
jurys willfulness verdict could have gone either
way under the intervening Seagate test)); See also
348
Metso Minerals, 5/14/13 (nonprecedential
erroneous jury instruction at a minimum required a
new trial, but instead reversing as a matter of law
(the denial of JMOL of obviousness) the district
courts judgment of nonobviousness based on the
jurys verdict and award of $31.6 million in
damages (including double damages for willful
infringement), where the district courts instruction
on the prior art references for obviousness was
erroneous and prejudical, i.e., not harmless (the
erroneous jury instruction could not have changed
the result))
- Jury instructions are reviewed for

correctness as a matter of law (Edwards
Lifesciences, 11/13/12)
- Appeal based on erroneous jury instruction

altering judgment, request for new trial FRCP 51
- Objection to jury instruction under FRCP

51(c) required party must object to jury
instructions before the jury retires to
consider its verdict, stating distinctly the
matter objected to and the grounds for
objection - rule gives fair notice to the trial
judge of the precise nature of objections to a
charge and permits corrections before the
jury retires rule thus prevents unnecessary
repeat trials; otherwise, a party may appeal a
jury instruction only upon a showing that it
contains plain error that affects substantial
rights not preserved under FRCP 51(d)
FRCP 51(d)(2) (LaserDynamics, 8/30/12
(clear error was not shown, under 5th Cir.
law, for granting a new trial); Cordis,
9/28/11 (where no objection made, the jury
verdict is tested by the charge actually given
349
under the ordinary meaning of the language
of the instruction Hewlett-Packard);
Lazare Kaplan, 12/22/10 (waiver where
attempts to change the trial courts mind by
objection would not have been futile (2nd
Cir. applies fundamental error
standard)); Shum, 12/22/10 (rejecting
general challenge to jury instructions, which
lacked detail both as to the nature of the
error and resulting prejudice); Funai, 9/1/10
(waiver where failure to object, but the
CAFC addressed jury instruction regarding
notice of infringement anyway (9th Cir.));
SEB, 2/5/10 (no fundamental error
(defined) in jury instruction regarding direct
infringement for which a timely objection
was not made, applying 2nd Cir. law);
Lucent, 9/11/09 (jury instructions regarding
damages not addressed on appeal where
parties did not object or propose own
instructions and object when not given);
Kinetic Concepts, 2/2/09 (applying plain
error rule under 5th Cir. law in denying
challenge, concluding that the obviousness
instruction was probably [not] responsible
for an incorrect verdict where none of the
cited prior art taught the claimed method);
Minks, 10/17/08 (applying 11th Cir. law,
ruling that jury instruction on willfulness
was not plain error where infringer failed to
demonstrate that the plain error affected its
substantial rights in that there would be a
different outcome under Seagates objective
recklessness standard); Praxair, 9/29/08
(objection to claim construction preserved);
Voda, 8/18/08 (10th Cir.); Serio-Us
Industries, 8/10/06 (4th Cir.) (plain error
resulting in a miscarriage of justice
350
required; disputed claim construction)); See
also Inventio AG, 11/27/12 (nonprecedential
waiver where party did not object to the
courts clear jury instruction)
- Claim construction (Verizon,

9/26/07 (CAFC decided that need not
address the issue of whether raising
claim construction issues at the
Markman stage excuses compliance
with Rule 51 objection requirement));
See also Lee, 11/21/13
(nonprecedential n.3: no waiver
citing Cardiac Pacemakers); Black &
Decker, 1/7/08 (nonprecedential -
applying futility exception under 7th
Cir. law, objection was not required to
avoid waiver where the party
proposed and argued for its
construction at the Markman hearing
Cardiac Pacemakers))
- Invited error where the party

challenging instruction failed to
object and actually proposed the
instruction thus, not reviewable at
all, or at most was subject to review
under the plain error standard
(Kinetic Concepts, 2/2/09 (assuming
no invited error); Cordis, 1/7/08
(instruction on obviousness not
improper under KSR (S.C.))
- Objections to instruction must be

specific FRCP 51, or waiver (Serio-
Us Industries, 8/10/06 (4th Cir.);
Union Carbide, 10/3/05; Collegenet,
8/2/05; Eli Lilly, 7/20/04)
351
- Setting aside jury verdict, and
granting new trial, based on erroneous
jury instructions must establish that:
1) instruction was legally erroneous,
and 2) the error had prejudicial effect
(defined as inconsistent with
substantial justice FRCP 61); a
party seeking to alter a judgment
based on erroneous jury instructions
must establish: 1) proper and timely
objection made, 2) legally erroneous
instruction (considered as a whole), 3)
had prejudicial effect, and 4)
requested alternative instruction that
would have remedied the error; if the
error could not have changed the
result, the erroneous instruction is
harmless; prejudicial error only exists
if there was sufficient evidence at trial
to support finding ((non)infringement,
(in)validity) under the correct
instruction (Bettcher Indus., 10/3/11
(movant failed to show that jury
instruction on anticipation was wrong
or that it suffered prejudice);
Therasense, 1/25/10 (no prejudicial
effect from jury verdict of
anticipation or obviousness where
the patent claims were obvious as a
matter of law, even though jury
instruction on anticipation was legally
erroneous, and thus harmless error);
Amgen, 9/15/09 (instructions were
legally sufficient and non-prejudicial
based on the circumstances); Minks,
10/17/08 (actual notice under Section
287(a), applying 11th Cir. law); Z4
352
Technologies, 11/16/07 (applying 5th
Cir. law regarding granting new trial
based on erroneous obviousness
instruction); Verizon, 9/26/07; Serio-
Us Industries, 8/10/06; Primos,
6/14/06 (prejudical effect defined);
Union Carbide, 10/3/05; Cytologix,
9/21/05; NTP, 8/2/05; Seachange
Intl, 6/29/05); See also Ceats,
- Futility exception - FRCP 51

prevents party from assigning
error to incorrect jury
instruction = futility
exception; limited exception
for pointless formality
(Verizon, 9/26/07 (see also
dissent, C.J. Michel);
Collegenet, 8/2/05; Cardiac
Pacemakers, 8/31/04; see also
Black & Decker, 1/7/08
(nonprecedential; applying
futility exception under 7th Cir.
law, because party had
proposed and argued for its
construction at Markman
hearing))
- New trial granted based on

erroneous jury instructions
must establish the four factors
above, or otherwise erroneous
instruction is harmless error
(Seachange Intl, 6/29/05)
- Motion for JMOL (post-verdict) unnecessary for a

party to challenge a jury verdict by establishing
353
that the judge committed legal error or abused his
discretion in instructing the jury (Rentrop,
12/18/08 (party challenged jury instruction on
appeal in the absence of a motion for JMOL of
obviousness); Minks, 10/17/08; Kim, 9/20/06)
Jury verdict
Jurys award of damages
- Damages jury award the CAFC sustains

jury damages award unless the amount is
grossly excessive or monstrous, clearly not
supported by the evidence, or based only on
speculation or guesswork Interactive
Pictures (Synqor, 3/13/13); the jury is
awarded discretion with evidence of
damages (Edwards Lifesciences, 11/13/12
(affirming the jurys damages award of lost
profits and reasonable royalty damages);
Finjan, 11/4/10 (uphold the jurys award if
there exists a reasonable basis to do so (3rd
Cir.)); Minks, 10/17/08 (district court in
reducing jurys damages award improperly
substituted its conclusion for that of the jury
by independently assessing the sufficiency
of the factual evidence relating to
compensatory (reasonable royalty)
damages); DSU Medical, 12/13/06)
- In setting damages, the jurys function

is to weigh contradictory evidence, to
judge the credibility of the witnesses,
and to resolve factual disputes
(Finjan, 11/4/10)
354
- District courts discretion to set aside an
excessive jury award Seventh Amendment
requires the option of a new trial (Minks,
10/17/08 (applying 11th Cir. law, contrasting
a reduction in the award based on legal error
vs. reexamining the jurys fact
determinations, which is not permitted
without the offer of a new trial))
- Reducing the jurys damages award

the district court cannot reduce the
jurys compensatory damages award
without offering the option of a new
trial required by the Reexamination
Clause of the Seventh Amendment
(Minks, 10/17/08 (the patentee was
entitled the option of a new trial on
damages under the Seventh
Amendment where the district court
improperly reduced the jurys
compensatory damages award (from
over $1 million to $28 K) without
offering a new trial))
General verdicts
- General verdicts errors fatal to a general verdict

different rules apply depending upon whether the
flaw is in the legal theory or the evidence Griffin
(S.C.) (Cordance, 9/23/11 (comparing situations
when a jury is left with the option of relying on a
legally inadequate theory vs. factually inadequate
theory, applying Griffin (S.C.), a criminal case, in
the civil context, as the Third Circuit would do);
Funai, 9/1/10 (J. Linn, concurring citing i4i rule
on general verdicts); i4i, 3/10/10 (rejecting
argument that the general verdict must be set aside
355
unless both of the patentees alternative legal
theories, contributory infringement and induced
infringement, were supported by substantial
evidence; the general verdict was upheld since
there was substantial evidence supporting either
legal theory); SEB, 2/5/10; Therasense, 1/25/10
(rejecting the patentees arguments for a new trial
to the extent that the jurys verdict of anticipation
or obviousness was a general verdict, citing rules
applicable to review of general verdicts))
- General verdict rule where one or more

multiple claims is found legally invalid, a
reviewing court must reverse and order a
new trial if unable to determine whether the
invalid theory tainted the verdict; the rule
also applies where the jury received multiple
legal theories of liability (SEB, 2/5/10
(hopeless ambiguity in verdict form where
was unclear from the record whether the
jury found damages based on inducement
alone, based on direct infringement alone, or
both, and thus the general verdict rule
required that the CAFC affirm only after
determining that the jurys finding of both
direct infringement and inducement was
proper, citing S.D.N.Y. case for rules))
- General verdict of DOE infringement not

specifying which claim terms, if any, were
literally infringed; substantial evidence
supported literal infringement of claim term
(Cordis, 1/7/08)
- General verdict of invalidity upheld if

sufficient evidence to support any of the
alternative theories of invalidity the
critical question is whether the evidence,
356
taken as a whole, was sufficient to support
the jurys verdict Northpoint Tech.
(Cordance, 9/23/11 (vacating the district
courts JMOL ruling on lack of WD alone as
improper where the absence of any ruling by
the district court on the sufficiency of the
evidence on both theories (lack of WD and
derivation) presented to the jury with respect
to claim 9, the district court had no basis not
to sustain the jurys general verdict on the
lack of WD theory alone))
- General verdict of obviousness (or Qs of

law generally) proper as long as the jury
has been properly instructed on the law
(Wyers, 7/22/10 (J. Linn, concurring
comparing general vs. special verdicts))
Heavy burden to overturn jury verdict
- Heavy burden to overturn jury verdict, e.g., via

motion for JMOL (Cordance, 9/23/11; Andersen,
1/26/07)
Objecting to jury verdict
- Objecting to jury verdict (before jury discharged)
- Inconsistent jury verdicts (Function Media,

2/13/13 (no waiver in Fifth Circuit when
special verdict under FRCP 49(a), but
waiver when general verdict under Rule
49(b), and thus addressing whether the
verdict was general or special -- objection
waived to inconsistent jury verdicts on
infringement and validity where verdict was
357
a general verdict; comparing the differences
between general and special verdicts);
Comaper, 3/1/10 (granting a new trial
because of inconsistent jury verdicts on
obviousness, citing Callaway, despite no
objection before the jury was dismissed,
where no objection was required under
Third Circuit law to challenge on appeal an
inconsistent verdict which was a special
verdict under FRCP 49(a), other than to
have made a post-verdict motion for a new
trial); Callaway, 8/14/09 (granting new jury
trial on obviousness despite the defendant
not objecting to inconsistent general verdict
in which the jury found a dependent claim
obvious while finding its independent claim
nonobvious); Depuy Spine, 6/1/09
(affirming the denial of a motion for new
trial on reasonable royalty damages where
the patentee failed to object to the jurys
inconsistent verdict before the jury was
dismissed, applying the First Circuits iron-
clad rule barring untimely inconsistency
objections); Praxair, 9/29/08 (rejecting
argument that the jurys infringement and
validity verdicts were inconsistent); L&W,
12/14/06)
- Inconsistent verdict at the most could

result in a new trial, not entry of
invalidity as a matter of law, i.e., there
is no priority among inconsistent
verdicts (Comaper, 3/1/10 (reason for
reversing the district court and
granting a new trial, under Third
Circuit law, where the jurys verdict
was irreconcilably inconsistent and
the district court improperly favored
358
the verdict of nonobviousness over
the verdict of obviousness); Callaway,
8/14/09 (granting a new trial on
obviousness, under Third Circuit law,
where the trial judge improperly
accepted one irreconcilably
inconsistent verdict over the other,
when the evidence supported either of
the two verdicts); Praxair, 9/29/08
(n.15))
- Waiver of objections
- Waiver rule promotes judicial

efficiency by requiring that the trial
court be given a chance to let the
original jury resolve any
inconsistency in its responses
(Function Media, 2/13/13 (objection
before jury dismissed is the only way
to cure an inconsistent general verdict
without new trial, where no detailed
special verdict to review); Callaway,
8/14/09 (affirming no waiver by the
defendant where the patentees
counsel raised the issue of
inconsistent jury verdicts during a
sidebar before the jury was excused
without objection from the
defendants counsel, but the trial
judge did not have the jury fix the
inconsistency before entry of final
judgment); L&W, 12/14/06)
- Pragmatic justification behind the

waiver doctrine is to prevent misuse
of procedural rules (e.g., plain error
exception) to obtain a new trial when
359
inconsistencies in jurys verdict are
most efficiently resolved by the
original jury (Function Media,
2/13/13 (stating reasons for waiver
rule); L&W, 12/14/06)
Reconciling inconsistent jury verdicts
- Reconciling inconsistent jury verdicts after the

jury is dismissed (Comaper, 3/1/10 (granting a new
trial after the district court improperly reconciled
inconsistent jury verdicts on obviousness in favor
of nonobviousness); Callaway, 8/14/09)
- Reconciliation of inconsistent jury verdicts

must be consistent with the evidence and
theories adduced at trial (Callaway, 8/14/09
(agreeing with the district courts rejection
of argument that general verdict was not
irreconcilably inconsistent with regard to
five asserted claims found not to be invalid,
where the patents and asserted claims (along
with evidence and theories) were presented
to the jury as a group, and not on a claim-
by-claim basis, applying Third Circuit law))
Reversal of jury verdict
- Noninfringement not on mere inferences (DSU

Medical, 12/13/06)
Sufficiency of the evidence
360
- Insufficiency of the evidence in support of jurys
verdict must be raised in post-trial motion for the
CAFC to hear appeal (Kemin Foods, 9/25/06)
- Rule that a jury verdict is reviewed for support by

substantial evidence does not mean that the
reviewing court must ignore the evidence that does
not support the jury verdict; record reviewed as a
whole Reeves (S.C.) (Integra, 7/27/07)
- Weighing sufficiency of the evidence in

reviewing the sufficiency of the evidence to
support the jurys verdict, the CAFC may inquire
only whether the findings necessary to the jurys
verdict are supported by the evidence, and the
inquiry must be conducted in light of the patent
challengers burden to overcome the presumption
of validity (L&W, 12/14/06)
- Substantial evidence of (non)obviousness

(Kinetic Concepts, 2/2/09 (claimed method
was nonobvious); DSU Medical, 12/13/06)
- Contributory and inducing infringement

(DSU Medical, 12/13/06)
Jury taint
- Jury taint when a colorable claim of jury taint

surfaces during jury deliberations, the trial court
has a duty to investigate the allegation promptly,
and undertake an adequate inquiry to determine
whether the alleged incident occurred and if so,
whether it was prejudicial, and to ensure that the
jurors can remain impartial; inquiry is covered by
FRE 606(b) (Atlantic Research, 10/6/11 (vacating
jury verdict and reversing the denial of motion for
361
mistrial based on the jury being tainted by
extraneous evidence brought into the jury room by
a juror during deliberations, where the district
court failed to conduct an adequate investigation
into possible jury taint (1st Cir. law)))
Law of the case doctrine
- As a general rule, the law of the case doctrine prohibits a

court from revisiting an issue once it has been decided in
pending litigation; the law of the case does not involve
preclusion after final judgment, but rather it regulates
judicial affairs before final judgment the doctrine rests
on the need for judicial economy a court will not
generally revisit an issue once decided in the litigation
Mendenhall (Outside the Box Innovations, 9/21/12)
- Once a case has been decided on appeal, the rule adopted

is to be applied, right or wrong, absent exceptional
circumstances, in the disposition of the lawsuit doctrine
is limited to issues that were actually decided, either
explicitly or by necessary implication (TecSec, 10/2/13
(law of the case doctrine did not preclude the patentee
from rearguing claim construction in later appeal, for the
same reasons that the mandate rule did not apply);
Transocean, 11/15/12 (CAFCs prior ruling of prima
facie case of obviousness (that two prior art references
taught every limitation of the asserted claims and
provided a motivation to combine their teachings) was
law of the case, and thus the district court erred by
permitting the jury to engage in fact finding regarding
whether the references disclose all the claim elements);
Outside the Box Innovations, 9/21/12 (see also J.
Newman, dissenting); Uniloc, 1/4/11 (applying law of the
case to the CAFCs prior infringement ruling); In re
Omeprazole, 8/20/08 (prior denial of petition for
mandamus regarding trial by jury was the law of the
362
case); Dominant Semiconductors, 4/23/08 (n.4: law of
the case principles applied to the Ninth Circuits transfer
of appeal to the CAFC); Intl Rectifier, 2/11/08; Ormco,
8/24/07; E-Pass Technologies, 1/12/07); See also Smith
& Nephew, 1/16/13 (nonprecedential law of the case
doctrine was inapplicable where the CAFC did not
construe the disputed term in the prior appeal in the
case); Lacks Indus., 11/21/08 (nonprecedential);
Energizer Holdings, 4/21/08 (nonprecedential J. Schall
- Whenever a panel of an appellate court definitively
decides an issue [here, relating to claim construction], the
issue cannot be reconsidered by a lower court on
rehearing the case or by a second panel of the appellate
court Gould, Gindes)
- Refusing to reopen, relitigate issues that have been

decided, plus narrow exceptions (Outside the Box
Innovations, 9/21/12; Toro, 9/13/04; AFG Indus.,
7/13/04)
- Departure from the doctrine is rare and only in

exceptional cases; one of three factors required
to depart from the doctrine: 1) discovery of new
and material evidence not presented in the prior
action, or 2) an intervening change of controlling
legal authority, or 3) a showing that the prior
decision is clearly incorrect and its preservation
would work a manifest injustice (Outside the Box
Innovations, 9/21/12; Ormco, 8/24/07) clear
error leading to manifest injustice is judged under
a stringent standard: A mere suspicion of error,
no matter how well supported, does not warrant
reopening an already decided point; court needs
to be convinced to a certainty that the prior
decision wasnt correct (Toro, 9/13/04; AFG
Indus., 7/13/04); See also Lacks Indus., 11/21/08
(nonprecedential no law of the case where new
and substantially different documentary
363
evidence was not of record during the prior
appeal); Monsanto, 4/23/08 (nonprecedential
ruling that none of the exceptions to the law of the
case doctrine applied where the CAFC in a prior
appeal affirmed the district courts holding of
inequitable conduct)
- Claim construction
- A claim construction by a prior panel

decision of the CAFC ordinarily
remains the law of the case unless it is
in conflict with a subsequent decision
by the court sitting en banc or the
Supreme Court (Kinetic Concepts,
8/13/12 (the CAFCs legal conclusion
in a prior decision to construe claims
to include limitation was binding on
the district court and is binding on this
panel); Nystrom, 9/8/09 (applying
the same constructions to terms in
first and second suits relating to
different accused products); MetLife,
6/2/08 (law of the case doctrine not
mentioned); E-Pass Technologies,
1/12/07)
- CAFCs prior affirmance of the

district courts PI order does not make
the district courts claim construction
in the PI proceeding the law of the
case (Outside the Box Innovations,
9/21/12 (contrasting from when the
district court has performed a separate
full Markman hearing prior to
rendering its claim construction at the
PI stage, and there is no new evidence
that would alter that construction,
364
arguments concerning the preliminary
or tentative nature of the claim
construction are less availing; see also
J. Newman, dissenting); SEB, 2/5/10)
- District courts claim construction in

connection with grant of SJ was law
of the case (Andersen, 1/26/07)
- Invalidity
- Obviousness law of the case applied

(Transocean, 11/15/12 (CAFCs prior
ruling of prima facie case based on
the cited prior art); Ormco, 8/24/07)
- Decision of regional circuit to transfer case

to the CAFC (BIO, 8/1/07; Parental Guide
of Texas, 4/21/06)
- Doctrine limited to issues that were actually

decided, either explicitly or by necessary
implication, in the earlier litigation (e.g., claim
construction) (Transocean, 11/15/12 (citing Toro);
Intl Rectifier, 2/11/08 (necessarily decided by
implication); Toro, 9/13/04)
- Issues not decided by the reviewing court in

a prior proceeding are not covered by law of
the case doctrine (E-Pass Technologies,
1/12/07; Liquid Dynamics, 6/1/06); See also
Smith & Nephew, 1/16/13 (nonprecedential
citing Liquid Dynamics); Lacks Indus.,
11/21/08 (nonprecedential no law of the
case where on sale bar issues were not
decided in prior appeal); Energizer
Holdings, 4/21/08 (nonprecedential J.
Linn, concurring)
365
- Doctrine does not apply to parties and accused
devices that were not yet part of the litigation at
the time of the earlier appellate decision (E-Pass
Mandate rule, recalling the CAFCs mandate
- Mandate rule - provides that issues actually decided on

appeal - those within the scope of the judgment appealed
from, minus those explicitly reserved or remanded by the
court - are foreclosed from further consideration; the
mandate rule forecloses reconsideration of issues
implicitly or explicitly decided on appeal; issues need not
be raised on appeal for the mandate rule to apply
(TecSec, 10/2/13 (mandate rule did not bar the patentee
from challenging the district courts claim construction in
a later appeal after a first appeal was summarily affirmed
without opinion in a Rule 36 judgment -- it could not be
concluded that the CAFC expressly or by necessary
implication decided the claim construction issues in the
first appeal; comparing to Supreme Court law on
summary dispositions affirming the judgment below
without opinion; see also J. Reyna, dissenting the
mandate rule precluded the patentee from relitigating
claim construction issues on appeal that were part of the
courts prior Rule 36 affirmance of noninfringement);
Transocean, 11/15/12; Cordis, 9/28/11 (district courts
determination on remand of no intent to deceive and no
IC was proper where consistent with the CAFCs
mandate to the district court to make certain (case
determinative) fact findings regarding intent to deceive);
Amado, 2/26/08 (because the district courts grant of a
permanent injunction was within the scope of the
judgment appealed from, and the injunction was not
challenged, the mandate rule barred the district courts
reconsideration of the initial issuance of (as opposed to
366
reasons to modify see below) the injunction)); See also
Smith & Nephew, 1/16/13 (nonprecedential CAFCs
mandate in earlier appeal in the case did not encompass
an issue that was not presented to the court - Exxon);
Taylor, 7/8/10 (nonprecedential applying the mandate
rule in denying the appellants request to re-open the
proceedings to decide damages claim); McZeal, 6/18/09
(nonprecedential district court on remand explicitly
disregarded the CAFCs prior mandate that the complaint
met the notice pleading requirements to survive a Rule
12(b)(6) motion to dismiss The district court lacked
the power to ignore our mandate Briggs (S.C.) (noting
that an inferior court has no power or authority to
deviate from the mandate issued by an appellate court));
Applied Medical Resources, 2/24/09 (nonprecedential -
parties vigorously disputed the CAFCs earlier mandate);
Cardiac Pacemakers, 12/18/08 (nonprecedential the
mandate rule requires that the district court follow an
appellate decree as the law of the case; the mandate rule
barred consideration of anticipation defense on remand
where new arguments were not raised by the CAFCs
new claim construction); Central Admixture Pharmacy
Services, 6/16/08 (nonprecedential ruling that the
CAFCs earlier decision and mandate in a prior appeal of
the case were clear, and that the district court was not at
liberty on remand to dispose of the case on procedural
grounds); Pellegrini, 6/5/08 (nonprecedential citing
Engel Indus. for the above rule, and rejecting the
appellants new argument for 271(f) infringement based
on Eolas the scope of the issues presented to the CAFC
on appeal must be measured by the scope of the
judgment appealed from, and not by the arguments
advanced by the appellant)
- After the CAFCs mandate issues, the mandate

rule forecloses reconsideration of issues implicitly
or explicitly decided on appeal; for an issue to be
implicitly decided, it must be decided by necessary
367
implication; in interpreting the courts mandate,
both the letter and the spirit of the mandate must
be considered Amado, Laitram, Engel Indus.
(TecSec, 10/2/13)
- Mandate rule requires that the district court follow

an appellate decree as the law of the case Sibbald
(S.C.) (Cardiac Pacemakers, 8/19/09 (reinstating
jury verdict that patent was valid, since according
to explicit instructions in the mandate, any new
trial on remand was limited to an assessment of
infringement and calculation of damages, and thus
the district courts SJ of anticipation based on the
CAFCs new claim construction was improper));
See also Taylor, 7/8/10 (nonprecedential district
court properly followed the CAFCs mandate as
law of the case)
- Granting of retrospective relief vs. prospective

relief the mandate rule does not preclude
prospective relief (Amado, 2/26/08 (mandate rule
did not preclude the district court from modifying,
or dissolving an injunction that it determined to be
no longer equitable (citing FRCP 60(b)(6) and the
district courts wide discretion under eBay (S.C.)
to determine the appropriateness of injunctive
relief)))
- Mandate rule is the reason for waiver of issues

(within the scope of the district courts judgment)
not raised by the appellant in the opening brief
(Amado, 2/26/08); See also Taylor, 7/8/10
(nonprecedential applying rule where the
appellant failed to appeal damages claim in the
opening brief during an earlier appeal); See also
Briefing CAFC appeal, waiver
368
- Recalling the CAFCs mandate the power to recall a
mandate should be exercised sparingly and only upon a
showing of good cause (Mars, 3/9/09 (Order)); See also
Enzo Biochem, 2/6/09 (Order) (nonprecedential
alternative request to recall mandate and reinstate appeal
not addressed)
- Recall is appropriate when a mandate does not

contain instructions concerning the allowance of
interest on a money judgment as required by FRAP
37(b) (Mars, 3/9/09 (Order) (applying 3rd Cir. law,
the CAFCs mandate, which erroneously under
Rule 37(b) did not contain instructions concerning
an award of post-judgment interest after the court
modified the district courts judgment, was
recalled and amended to order the district court to
award post-judgment interest on damages
determined on remand))
- Request for recall timely made, or waived? (Mars,

3/9/09 (Order) (motion for recall filed 6 months
after mandate was timely due to ongoing
negotiations between the parties, and the CAFCs
more lenient view in Tronzo to allowing
argument based on Rule 37(b)))
Merits panel not bound by action of single CAFC judge
(Fort James, 6/22/05)
- Motion for reconsideration of decision by single CAFC

judge Fed. Cir. R. 27(l) (Fort James, 6/22/05)
Mootness
Mootness - generally
369
- Case is moot when the issues presented are no longer
live or the parties lack a legally cognizable interest in
the outcome; where a controversy between the parties has
ended, the case becomes moot and will be dismissed,
however convenient it might be to have question decided
for future cases (Allflex USA, 1/17/13 (dismissing (one-
party) appeal as moot based on settlement agreement
between the parties, distinguishing cited Supreme Court
and CAFC cases in which the appeal was not mooted by
settlement agreement); Dey Pharma, 4/16/12 (addressing
mootness doctrine in the context of a second generic
ANDA filer seeking a DJ to trigger the first ANDA
filers exclusivity period the patentee had the heavy
burden to prove that the case became moot citing
Cardinal Chemical (S.C.) and other cases); Praxair,
9/29/08 (n.7: settlement agreement between the parties
pending appeal did not affect the CAFCs duty and
obligation to resolve the issues presented on appeal,
where the agreement (in which the parties agreed upon
set amounts of damages due based upon the outcome of
the appeal) did not resolve the dispute as a whole and the
parties continued to have an ongoing interest in the
dispute; however, agreement that the patentee would not
seek an injunction rendered that issue moot); Jacobsen,
8/13/08 (no mootness in PI context where not clear that
the alleged conduct could not recur); In re Omeprazole,
8/20/08 (challenge to the merits of the district courts
order was moot because the patentees FDA exclusivity
period had elapsed); Yingbin-Nature, 7/31/08 (no actual
injury alleged when case was moot where ITCs general
exclusion order was supported by the infringement of
unappealed claims)); See also Markem-Imaje, 3/25/13
(nonprecedential the CAFC dismissed appeal because
the parties settled the case after the district courts final
judgment that left no legitimate, continuing case or
controversy quoting Allflex); Laserfacturing, 9/17/12
(nonprecedential CAFC had jurisdiction over appeal
where the case was not rendered moot by a stipulated
370
waiver and settlement between the parties that did not
resolve the parties infringement dispute, stating rule
from Kimberly-Clark that settlements generally render a
case moot, unless the case as a whole remains alive
because other issues have not become moot); Systems
Division, 10/29/08 (nonprecedential appeal dismissed
as moot where stipulated settlement entered while the
appeal was pending made it impossible for the court to
grant any effectual relief whatever to a prevailing party
- Nasatka)
- Appeal dismissed when moot (Allflex USA,

1/17/13 (CAFC dismissing (one-party) appeal on
ground of mootness and the lack of a real
controversy between the parties where they had
settled the suit for a lump sum, except for a
$50,000 contingent payment that the loser would
receive if it won on any of certain appealed issues,
concluding that the appellant failed to identify a
relationship between the contingent payment and
the issues on appeal, stating that the parties have
simply placed a side bet on the outcome of the
appeal, which is not enough to avoid a ruling of
mootness relying on Aqua Marine); Tafas,
11/13/09 (Order) (dismissal of appeal was required
after the PTO rescinded its proposed rules that
formed the basis of the litigation))
- Disposing of moot cases Munsingwear (S.C.)

(Systems Division, 10/29/08 (nonprecedential
Munsingwear vacatur was not appropriate)); See
Vacatur of judgment
- Voluntary cessation of challenged conduct moots a

case only if it is absolutely clear that the allegedly
wrongful behavior could not reasonably be
expected to recur Adarand Constructors (S.C.)
(Jacobsen, 8/13/08 (PI matter not moot))
371
Validity addressed after noninfringement found Cardinal
Chemical (S.C.)
- After CAFC finds noninfringement, still must address

invalidity counterclaim(s) (Telcordia Techs., 7/6/10;
Solomon Techs., 5/7/08 (invalidity is not a separate claim
before the ITC, but instead one ground for determining
that the importation and sale of allegedly infringing
articles do not infringe a valid and enforceable United
States patent under 19 USC 1337(a)(1)(B));
Sinorgchem, 12/21/07; Kim, 9/20/06; Old Town Canoe,
5/9/06), BUT NOT affirmative defenses of invalidity, or
unenforceability (Qualcomm, 12/1/08 (unenforceability
of patent upheld along with judgment of noninfringement
where waiver defense was pled only as an affirmative
defense, citing McKesson (regarding affirmative defense
of IC)); Johns Hopkins, 10/2/08; Solomon Techs., 5/7/08;
Sinorgchem, 12/21/07 (decisions on affirmative defenses
of invalidity would be necessary only if DOE
infringement was found on remand); Pods, 4/27/07;
Freedman Seating, 8/11/05); See also Speedtrack,
4/16/13 (nonprecedential CAFC not addressing
invalidity cross-appeal that was contingent on the CAFC
vacating the district courts SJ of noninfringement);
Aerotel, 7/26/11 (nonprecedential CAFC addressed and
vacated the district courts Consent Judgment of
indefiniteness of a means-plus-function claim which was
asserted solely as an affirmative defense)
- Cardinal Chemical (S.C.) counterclaims (e.g.,

invalidity and unenforceability) are not disposed of
by decision on appeal of noninfringement
(Telcordia Techs., 7/6/10; Lincoln National,
6/23/10 (CAFC not deciding whether the district
court abused its discretion in denying leave to
amend a DJ complaint (to add a Section 101
372
ineligible subject matter claim), based on no case
or controversy after the CAFCs noninfringement
ruling distinguishing the Cardinal Chemical
(S.C.) rule because the district court never decided
the Section 101 claim on the merits; see also J.
Clevenger, dissenting in part, arguing that the
denial of leave should have been affirmed based on
no abuse of discretion, even if the CAFC was not
compelled to adjudicate invalidity); Kim, 9/20/06;
Old Town Canoe, 5/9/06 (But see J. Mayer, dissent
once CAFC affirms noninfringement, district
courts invalidity rulings should be vacated and the
case remanded with instructions to dismiss,
because theres no longer jurisdiction (actual
controversy) to decide DJ counterclaims);
Medimmune, 10/18/05; Freedman Seating,
8/11/05; Seachange Intl, 6/29/05; Fort James,
6/22/05)
- DJ counterclaim of invalidity is an
independent claim Cardinal Chemical
(S.C.) (Telcordia Techs., 7/6/10)
- Cardinal Chemical (S.C.) rule is

inapplicable when the district court does not
address invalidity on the merits (Lincoln
National, 6/23/10 (not addressing Section
101claim where the district court denied
leave to amend DJ complaint to add the
claim))
- Noninfringement moots affirmative defense of

invalidity, not counterclaim (but must argue
counterclaim separately on appeal) (Silicon
Graphics, 6/4/10 (waiver and/or abandonment of
invalidity counterclaims for purposes of re-arguing
invalidity on remand, where failed to litigate them
through trial and failed to expressly request the
373
district court to dismiss them without prejudice (as
well as failed to argue on appeal how a claim
construction ruling would affect the district courts
disposition of the counterclaims)); Pods, 4/27/07)
- ITC practice in upholding the ITCs final order,

which is a determination that section 337 has, or
has not, been violated, the CAFC is not required to
address every possible ground on which the
Commissions order might be sustained, and thus
the CAFC may affirm a final determination on the
basis of noninfringement without addressing
invalidity Sinorgchem (Solomon Techs., 5/7/08
(declining to decide or remand enablement issue
after determining that claim term was construed
incorrectly))
- Cardinal Chemical scarecrow patents (Medimmune,

10/18/05)
- Mootness relates to basic dispute between the parties, not

merely the relief requested; thus, although subsequent
acts may moot a request for particular relief or a count,
the constitutional requirement of a case or controversy
may be supplied by the availability of other relief (Jazz
Photo, 2/28/06 (CIT))
Invalidity/IC on appeal moots infringement, other defenses
- Noninfringement judgment on appeal does not moot

invalidity (Cardinal Chemical (S.C.)) vs. invalidity
judgment on appeal moots claim construction,
infringement issues (Marrin, 3/22/10 (district court
properly did not rule on infringement after finding
anticipation: There can be no infringement of claims
deemed to be invalid); Ball Aerosol, 2/9/09 (*CAFC
addressed infringement issues after holding the claims
374
obvious); Sundance, 12/24/08 (obviousness); Carnegie
Mellon U., 9/8/08 (lack of written description); Zenith
Electronics, 4/16/08 (clear that a finding of
noninfringement does not moot a counterclaim for
inequitable conduct); Zenon Environmental, 11/7/07
(cross-appeal seeking reversal of district courts grant of
SJ of noninfringement not reached once CAFC ruled that
patent was invalid as anticipated); Aventis Pharma,
9/11/07 (obviousness); Automotive Techs., 9/6/07
(enablement); Optivus Tech., 11/16/06; Ormco, 8/30/06;
Flex-Rest, 7/13/06; Old Town Canoe, 5/9/06; IPXL
Holdings, 11/21/05; MercExchange, 3/16/05; Typeright
Keyboard, 7/6/04); See also Boss Indus., 5/28/09
(nonprecedential the patentees discovery-related
motions relating to invalidity counterclaims were moot,
and the CAFC could not remand for further litigation,
after affirming the district courts constructions of the
dispositive claim terms under which the patentee had
conceded noninfringement; citing cases in which
discovery issues on appeal were rendered moot by the
CAFCs invalidity rulings); Poweroasis, 4/11/08
(nonprecedential - vacating district courts grant of SJ of
noninfringement after holding the patent invalid in
related case decided the same day)
- Invalidity mooting other issues on appeal
- Claims held invalid (for obviousness), no need to

address other issues, including infringement, other
invalidity, and/or unenforceability issues (Pregis,
12/6/12; Clearvalue, 2/17/12 (CAFC not
addressing JMOL motions and arguments for
invalidity and noninfringement after reversing the
denial of motion for JMOL of anticipation);
Cordance, 9/23/11 (other issues not addressed once
all claims were held invalid); In re Klein, 6/6/11
(CAFC not reaching alternative arguments for
nonobviousness after holding the claimed
375
invention nonobvious after finding the prior art
references relied on by the BPAI were non-
analogous art); Centocor, 2/23/11 (invalidity based
on WD mooted other issues); Western Union,
12/7/10; Martin, 8/20/10 (infringement and
standing issues not addressed); Orion, 5/17/10
(remaining validity arguments not addressed once
anticipation found); Ariad, 3/22/10 (en banc);
Therasense, 1/25/10 (WD not addressed once
claims held obvious); Ultimax Cement, 12/3/09
(patentees argument on appeal as to infringement
was rendered moot after waiving argument during
oral argument that the patent was not invalid);
Perfect Web, 12/2/09 (not addressing anticipation
and unpatentable subject matter under Section 101
where all the asserted claims were held obvious);
Ecolab, 6/9/09; In re Kubin, 4/3/09 (invalidity
under Section 112 not addressed once claims were
held obvious); Monolithic Power Systems, 3/5/09;
Rothman, 2/13/09 (IC remained viable on appeal,
while other invalidity defenses were moot); Ball
Aerosol, 2/9/09 (infringement was addressed after
ruling claims were obvious); Boston Scientific
Scimed, 1/15/09; Sundance, 12/24/08; CSIRO,
9/19/08 (infringement issue addressed after
vacating SJ of nonobviousness); Agrizap, 3/28/08
(we limit our discussion to only that which is
necessary, when the patent law aspects of the case
can be decided entirely on the grounds of
obviousness)); See also Astrazeneca, 10/30/13
(nonprecedential anticipation was not addressed
once claims held obvious); Metso Minerals,
5/14/13 (nonprecedential); Inventio AG, 11/27/12
(nonprecedential vacating the remainder of the
district courts decision after holding the claims
obvious which rendered moot the other issues
appealed by the parties); Siemens, 3/9/10
(nonprecedential anticipation not addressed once
376
obviousness affirmed); Alloc, 2/18/10
(nonprecedential although not needing to address
infringement, noting that the district court erred
(albeit harmlessly due to the CAFCs obviousness
ruling) by submitting claim construction to the
jury); Friskit, 1/12/09 (nonprecedential); Tokyo
Keiso, 1/9/09 (nonprecedential)
- Invalidity based on obviousness not addressed

once the CAFC affirms invalidity judgment based
on anticipation (Orion, 5/17/10; In re Gleave,
3/26/09; Clock Spring, 3/25/09 (obviousness
question not addressed after finding invalidity due
to prior public use))
- Invalidity based on anticipation not addressed,

once the CAFC affirmed the district courts
holding of obviousness (Alza, 9/6/06)
- Not reviewing on appeal all appealed

invalidity issues (e.g., anticipation along
with obviousness) distorts context of jury
verdict (Pharmastem, 7/9/07, J. Newman,
dissenting)
- Invalidity for anticipation based on a second prior

art reference not addressed once invalidity
judgment affirmed based on a first reference
(Golden Bridge Tech., 5/21/08)
- Inequitable conduct claim moot after the CAFC holds

patent invalid? (Ariad, 4/3/09 (addressing IC after
holding patent invalid for lack of WD) [vacated on
8/21/09, and reinstated in Ariad, 3/22/10 (en banc)];
Rothman, 2/13/09 (IC claim not moot, at least in part
because of costs issue); Zenith Electronics, 4/16/08 (IC
counterclaim not moot where not all claims of the patent
were held invalid, distinguishing Liebel-Flarsheim in
377
which all of the asserted claims were held invalid);
Agrizap, 3/28/08; Liebel-Flarsheim, 3/22/07; Pfizer,
3/22/07)
- Inequitable conduct is not mooted by invalidity of

only certain claims, because renders the entire
patent unenforceable, rather than just the claims
invalidated (Qualcomm, 12/1/08 (appeal of
unenforceability not mooted by failure to appeal
noninfringement); Atlanta Attachment, 2/21/08
(remanded for IC/intent determination after
holding the disputed claim invalid based on the
on sale bar); In re Omeprazole, 4/23/07)
- Inequitable conduct moots other issues (Praxair, 9/29/08;

Monsanto, 1/25/08 (invalidity and noninfringement (jury
findings) not addressed once CAFC affirmed the district
courts holding of unenforceability for inequitable
conduct)); See also Synthon, 6/17/08 (nonprecedential
issues of infringement and validity not reached by the
CAFC after affirming the district courts findings of IC
and exceptional case, and the award of attorney fees)
- Unenforceability bars a finding of infringement,

and similarly moots any issue of invalidity
(Praxair, 9/29/08 (the reason why cross-appeal was
improper))
Valid claims infringed, no need to address other claims
- Once claims declared to be valid and infringed, no need

to address remaining claims in patent, or other patents
(Allergan, 5/1/13 (n.2: no need to address other patents
having the same expiration date, after holding claim valid
and infringed); Pfizer, 3/7/08 (because no invalidity
counterclaim, generic claims were not adjudged once
species claims concluded to be valid and infringed, i.e.,
378
made no practical difference to the judgment whether
other claims infringed, citing Cardinal Chemical (S.C.)))
Mootness removes the courts Article III jurisdiction
- No longer an actual, ongoing case or controversy as

required for a federal courts Article III jurisdiction when
a case becomes moot (In re Sones, 12/23/09 (See J.
Newman, dissenting the appellants actions mooted the
issue on appeal, and the majority thus issued an advisory
opinion); Qualcomm, 12/1/08 (failure to appeal
noninfringement judgment did not moot appeal of
unenforceability judgment (based on a failure to disclose
patents to a standards-setting organization), which has a
broader scope than a noninfringement judgment);
Samsung Electronics, 4/29/08 (patentees offer to pay the
full amount of the accused infringers attorney fees
rendered the case moot so that the district court was
without jurisdiction to enter an order denying the
attorney fees)); See also Nissim, 12/11/12
(nonprecedential district court erred in dismissing case
based on mootness in view of settlement agreement; see
also J. Moore, dissenting district court did not abuse its
discretion by relinquishing jurisdiction (which the court
clearly and unambiguously did), since a courts decision
to retain jurisdiction to enforce a settlement agreement is
entirely discretionary)); Cornish, 6/13/11
(nonprecedential interlocutory appeal of denial of a PI
was rendered moot by the district courts final judgment);
Enzo Biochem (Order), 2/6/09 (nonprecedential leaving
for the district court to decide in the first instance
whether a stipulation not to sue on a patent mooted
counterclaim relating to the patent); Merck v. Apotex,
7/16/08 (nonprecedential Apotexs noninfringement
and invalidity counterclaims were rendered moot by
events during the pendency of the appeal); See also
Standing Constitutional standing
379
- Addressing issue on appeal unnecessary for
deciding appeal when the issue will continue to be
important to the ultimate disposition of the case on
remand (Predicate Logic, 10/9/08)
- Once a case is moot, a district court is prohibited

from issuing further opinions on the merits, which
would be impermissible advisory opinions
issued without the courts jurisdiction (Samsung
Electronics, 4/29/08); See also Nissim, 12/11/12
(nonprecedential)
Vacatur of judgment
- Vacatur of judgment (Tessera, 5/23/11 (holding

moot portion of appeal and vacating as moot ITC
judgment regarding patents which expired since
bringing suit, because the ITC has a limited
statutory mandate and can only issue an exclusion
order barring future conduct, and thus nothing
remained before the ITC with respect to the
expired patents); See also Rogers, 11/16/11
(Order) (nonprecedential dismissing appeal and
vacating the district courts dismissal of case, for
same reason as in FLFMC); FLFMC, 10/19/11
(Order) (nonprecedential vacating the district
courts standing determination in qui tam false
marking case where the circumstance which
rendered the case moot was the amendment of
Section 292(b) by Congress, over which the parties
had no control citing Tafas and U.S. Bancorp
(S.C.)); See also DISTRICT COURT PRACTICE
AND PROCEDURE Vacatur of judgment
(upon settlement)
380
MPEP/TMEP and Examiners Guidelines
- MPEP
- Judicial notice given to extent they do not conflict

with the patent statute, 35 U.S.C., and regulations,
but not binding on the CAFC (In re Hubbell,
3/7/13; Belkin Intl, 10/2/12 (MPEP does not have
the force of law, and is only entitled to judicial
notice as the PTOs official interpretation of
statutes and regulations with which it is not in
conflict - Molins); Janssen, 9/25/09 (citing Fisher);
In re Fisher, 9/7/05)
- Statutes rank higher than regulations,

which rank higher than the MPEP (Belkin
Intl, 10/2/12 (arguably conflicting
provisions in the CFR and MPEP did not
trump the statute))
- Although the MPEP does not have the force of

law, it is well known to those registered to practice
in the PTO and reflects the presumptions under
which the PTO operates Critikon (McKesson,
5/18/07)
- Although the MPEP does not have the force of law

or the force of the rules in 37 CFR, it is made
available to the public and describes procedures on
which the public can rely (Eli Lilly, 8/24/12
(although not controlling, the MPEP supported the
district courts judgment on double patenting); In
re Skvorecz, 9/3/09 (purpose for PTO giving
claims their broadest reasonable interpretation);
Hyatt, 6/28/07); See also Taylor, 8/4/09
(nonprecedential the PTOs course of action in
taking the applicants maintenance fee payment,
while expiring his patent without notifying him as
381
provided by the MPEP that his payment was
inadequate, was arbitrary and capricious)
- TMEP
- TMEP guidelines, procedures for examiners =

PTOs established policy; instructive, but is not
established law (In re Sones, 12/23/09 (citing
Pennington Seed); Pennington Seed, 10/19/06)
Notice of appeal to the CAFC
- Timeliness of CAFC appeal 30-day appeal period is

measured from a final order, judgment only (Extreme
Networks, 9/30/10 (nonprecedential no final judgment
where pre-judgment interest was unresolved); Ping Yip,
5/28/10 (nonprecedential))
- Timely filing a NOA is a jurisdictional requirement,

which cannot be waived and is not subject to equitable
tolling (Tessera, 5/23/11 (NOA with respect to certain
issue was timely filed within 60 days of the ITCs final
determination, under the ITCs regulations, even though
the ITC in its notice to review decided to review only
certain other issues); In re McNeil-PPC, 7/31/09 (See
also J. Dyk, dissenting the CAFC did not have
jurisdiction to hear an untimely filed appeal from a BPAI
decision); See also Joovy, 7/18/13 (Order)
(nonprecedential dismissing appeal filed beyond the
statutory 30-day deadline); Haynes, 6/8/09
(nonprecedential unable to waive or equitably toll
timely filing of NOA in the CAFC based on timely (but
incorrectly) filing in the Ninth Circuit))
- Motion to stay permanent injunction pending appeal,

which satisfies the notice requirements of FRAP 3 and
382
the timing requirement of FRAP 4, qualifies as a notice
of appeal (Intl Rectifier, 2/11/08)
- Notice of appeal must be amended to reference later

district court orders, or the CAFC lacks jurisdiction to
hear challenge to those later orders (Dippin Dots,
2/9/07); See also Unitronics, 12/3/08 (nonprecedential
time to appeal did not begin to run until after FRCP 60
motion for reconsideration decided)
- FRCP 4(a)(2) designed for situations in which

the unskilled litigant files a NOA from a decision
that he reasonably but mistakenly believes to be a
final judgment, while failing to file a NOA from
the actual final judgment; applies equally where
the formal judgment appears to be appealable even
though not final (Pods, 4/27/07)
- Renewing motion for JMOL (FRCP 50(b)) tolls time for

filing NOA until motion resolved FRAP 4(a)(i) (Fort
James, 6/22/05)
- Notice of appeal from a BPAI decision 35 USC 142

and 37 CFR 1.304(a)(1) file with the Director of the
PTO within two months from the date of the [BPAI]
decision (In re McNeil-PPC, 7/31/09 (NOA from a
decision of the BPAI was timely filed, interpreting the
date of the decision in the statute and regulation, in view
of the facts and opinion testimony, as the mailing date
rather than the date of decision typed on the BPAIs
order; see also J. Dyk, dissenting opining that the date
of the decision in the statute and regulation was the date
typed on the BPAIs order (Decided: May 30, 2008),
not the mailing date, and thus the appeal was untimely
filed and beyond the CAFCs jurisdiction to review))
383
- Waiver of appeal rights must be clear and express
(Andersen, 5/17/11 (nonprecedential no waiver of
appeal rights in settlement agreement))
Expedited review
- Motion for expedited review by the CAFC

(Sanofi-Aventis, 9/10/09 (nonprecedential
granting motion after generic defendants lunched
generic product after the FDA granted final
approval of ANDAs despite the CAFCs stay of
the district courts noninfringement judgment
about 1 month elapsed between motion and oral
argument, and only 8 days between oral argument
and the courts written opinion))
Preponderance of the evidence standard - infringement
- Preponderance of evidence means the greater weight of

evidence - evidence which is more convincing than the
evidence which is offered in opposition to it (Jazz Photo,
2/28/06 (CIT)); See also ADC Telecom., 6/16/08
(nonprecedential it is the patentees burden to introduce
preponderant evidence of infringement, rather than the
accused infringers burden to present evidence of
noninfringement); Astrazeneca, 6/10/08 (nonprecedential
defining and applying the standard in concluding
noninfringement by the accused drug product)
Prior panel decisions/CCPA/Court of Claims/Regional

Circuits/BPAI/U.S. Supreme Court/District Court
CAFC bound by decisions of predecessor courts
- CAFC bound by decisions of its predecessor courts, the

CCPA and the Court of Claims South Corp. (Fed. Cir.
384
1982) (Interdigital, 6/7/13 (n.6: the CAFC adopted the
decisions of the CCPA as binding precedent); In re
Staats, 3/5/12 (CAFC was bound by In re Doll (CCPA
1970) in holding that Doll did not distinguish between
broadened claims filed in a continuing reissue application
after the two-year limit of Section 251 which were
related vs. unrelated to the broadened claims filed within
the two-year limit); In re Tanaka, 4/15/11 (relying on
prior CCPA decisions under doctrine of stare decisis in
interpreting reissue statute, Section 251; see also J. Dyk,
dissenting issue of whether adding a dependent claim in
a reissue patent to hedge against invalidity of the original
claims was proper should have been decided anew, since
none of the prior cases squarely addressed or decided the
issue); In re Chippendales, 10/1/10 (bound by prior
CCPA decision until overruled en banc); Hornback,
4/15/10 (the CAFC honor[ed] its predecessor court (the
Court of Claims) by interpreting Section 183 the same);
In re Bose, 8/31/09 (interpretation of a prior CAFC case
had no precedential force, as it would have conflicted
with binding precedents from the CCPA, i.e., which have
never been overturned en banc); Corebrace, 5/22/09
(Court of Claims decisions bind the CAFC); Boston
Scientific Scimed, 8/8/07; Astrazeneca, 7/23/07; In re
Stereotaxis, 10/27/05)
- Where decisions of the CCPA conflict, the later

issued decision controls because the CCPA always
sat en banc and therefore later decisions overcome
earlier inconsistent ones (Ateliers, 5/21/13 (n.3:
rejecting the dissents argument that a later CCPA
case controlled the best mode issue, where the
earlier CCPA case was cited for its rule in another
CCPA case after the later CCPA case);
Astrazeneca, 7/23/07; In re Rath, 3/24/05)
385
Issue must be raised in prior decision to be binding
precedent
- Issue must have been raised in prior decision to be

binding precedent (Highmark, 12/6/12 (Order) (J. Dyk
and J. Newman, concurring - n.2: regarding the issue of
the proper standard of review); Orenshteyn, 7/26/12
(Order) (issue of pendent jurisdiction was not raised in
prior CAFC case in which the court reviewed an
unquantified attorney fees award); Sundance, 12/24/08
(there was no ruling in prior CAFC case that testimony
from a patent law expert regarding infringement and
validity was appropriate))
Binding precedent not limited to its facts?
- Necessary implications of a cases holding are not

limited to the facts of that case Herbs Welding (S.C.)
(In re Staats, 3/5/12 (rejecting the PTOs argument that
prior binding CCPA case should be limited to its specific
facts))
Later CAFC panel decision does not change prior panel

decision unless prior decision is overruled en banc; stare
decisis
- Later CAFC panel decision does not change prior panel

decision unless prior decision is overruled en banc
(Bosch, 6/14/13 (en banc); Ateliers, 5/21/13 (n.3:
rejecting the accused infringers argument for invalidity
based on a best mode violation that earlier precedential
panel decisions requiring intentional concealment for a
best mode violation have been superseded by conflicting
panel decisions, stating that [t]hat is incorrect, for if
conflict had arisen, the rule is that the earlier panel
decision controls unless overruled en banc.; see also J.
386
Prost, dissenting); Zoltek, 3/14/12 (en banc in part)
(Since a panel of this court cannot reverse a prior panel
decision, the court sua sponte voted to take Part I-B of
this opinion en banc for the limited purpose of vacating
the Zoltek III opinion.); In re Staats, 3/5/12 (suggesting
need for en banc review of prior binding CCPA case);
McKesson, 4/12/11 (see J. Newman, dissenting))
[vacated and en banc review granted, on 5/26/11];
Abbott Labs, 10/21/08 (J. Newman, regarding the law on
the standard for granting a PI; also, the later of two prior
CAFC panel decisions was relied on for construing claim
term where the earlier panel decision did not address the
issue); Technology Licensing, 10/10/08; Cohesive
Techs., 10/7/08 (bound by Seagate (en banc)s decision
not to overrule Beatrice Foods); Chiron, 3/30/04); See
also Novo Nordisk, 6/18/13 (nonprecedential reason
for rejecting argument that panel decision changed the
law on obviousness); Cardiac Pacemakers, 12/18/08
(nonprecedential stating that [a]s a panel, we cannot
reverse the holding of another panel of this court)
- CAFC may not disregard a prior decision of the

court regarding the same subject matter
(Monsanto, 2/5/08)
- Prior CAFC decision must have addressed,

i.e., present[ed] a rule or reasoning
regarding, the issue currently on appeal to be
considered precedent (General Protecht
Group, 7/8/11 (no direct conflict of panel
opinions as is necessary to invoke the
CAFCs rule of precedence);Takeda,
4/10/09 (prior CAFC decision affirming a
district courts decision in all respects was
not precedent where the disputed issue of
double patenting was not specifically
addressed))
387
- Panel may recommend en banc review of prior
panel decision (Medimmune, 6/1/05)
- Prior panel decisions are binding precedent on

subsequent panels unless and until overturned en
banc (In re Staats, 3/5/12; Powertech, 9/30/11;
McKesson, 4/12/11 [vacated and en banc review
granted, on 5/26/11]; Technology Licensing,
10/10/08 (ruling that a prior decision must be
interpreted in accordance with the accepted law
regarding burdens of proof for invalidity);
Medimmune, 10/18/05); where there is a direct
conflict, the precedential decision is the first
(Medimmune, 6/1/05; Phonometrics, 11/26/03;
Phonometrics, 11/21/03; But see Chiron, 3/30/04)
- Prior panel decision disregarded if at odds

with later panel decision (Chiron, 3/30/04)
- Stare decisis the CAFC and district courts are

bound by the CAFCs legal precedents (Bosch,
6/14/13 (en banc) (the CAFCs interpretation of
term accounting in 28 USC 1292(c)(2) to
include a damages trial was based in part on 25
years of CAFC precedent We do not take our
precedent lightly.); Powertech, 9/30/11 (the
district court, which improperly dismissed DJ
action, was bound on remand to apply the CAFCs
ruling on patent exhaustion in a related case
involving the same patent))
Rule 36 judgments
- Rule 36 judgment of affirmance without opinion a Rule

36 judgment simply confirms that the trial court entered
the correct judgment, while not endorsing or rejecting
any specific part of the trial courts reasoning the
388
judgment has no precedential value and cannot establish
applicable Federal Circuit law (except to the extent that
the citation is in support of a claim of claim preclusion,
issue preclusion, judicial estoppel, law of the case, and
the like Fed. Cir. R. 32.1(c)) (TecSec, 10/2/13
(patentee was not precluded in later appeal from
challenging the district courts claim construction, which
issue was not explicitly or implicitly decided by the
CAFC in an earlier Rule 36 judgment, which affirmed
the district courts judgment which was based on
alternative grounds for noninfringement; adding that had
claim construction been the only issue in the earlier
appeal, and had that construction been essential to
sustaining the judgment of noninfringement, the
preclusive effect of the Rule 36 judgment would have
been undeniable citing Rates Technology; see also J.
Reyna, dissenting allowing the appeal of the district
courts claim construction gave the patentee a second
bite at the apple and undermined the utility of Rule 36;
the district courts claim construction was critical and
necessary to the CAFCs decision to issue the Rule 36
affirmance of noninfringement); Rates Technology,
7/26/12)
Regional circuit court decisions (prior to the CAFC)
- Patent law decisions of regional circuits not binding,

but may be considered as persuasive authority (Abbott
Labs, 3/20/13)
BPAI decisions
- BPAI decisions persuasive but not binding precedent

on the CAFC (Noelle, 1/20/04)
389
District court decisions
- District court decisions may inform the issue but are not
binding precedent on the CAFC (Streck, 1/10/12 (noting
that decision not binding, but persuasive); In re NTP II,
8/1/11; Burandt, 6/10/08 (decisions of the E.D. Va. were
not binding precedent, in contrast to dispositive CAFC
precedent))
Supreme Court decisions
- Supreme Court decisions - courts of appeals must follow

the precedents of the U.S. Supreme Court until the Court
itself chooses to expressly overrule them Independent
Ink (Technology Licensing, 10/10/08; In re Nuijten,
9/20/07)
Sanctions for violating FRAP or local rules of practice of the

CAFC, frivolous appeal
- Frivolous appeal FRAP 38 (E-Pass Technologies,

3/20/09 (attorney fees awarded as sanctions); Caraco,
4/1/08 (J. Friedman, dissenting arguing an appeal was
frivolous was sanctionable conduct); In re violation of
Rule 28(c), 11/5/04); See also Panavise Prods., 1/6/09
(nonprecedential denying motion for sanctions under
FRAP 38 despite the appeal (of a dismissal of the
appellants DJ action) being very weak from both a
factual and a legal stand point, and noting that this
appeal approaches wasting the courts time and unduly
delaying more deserving litigants); Systems Division,
10/29/08 (nonprecedential awarding attorney fees
(against the appellant and his attorneys, jointly and
severally) for frivolous appeal where the appellant
persisted in the appeal after it became incontrovertibly
moot and the CAFC warned the appellant against
390
proceeding with a frivolous appeal); F&G Research,
1/31/08 (nonprecedential awarding sanctions under
FRAP 38 in the form of attorneys fees for a frivolous
appeal, both as filed and as argued)
- Appeal can be frivolous as filed and/or frivolous as

argued (E-Pass Technologies, 3/20/09 (appeal was
both, where the appellant identified no reversible
error by the district court and made significant
misrepresentations of the record and the law to the
CAFC; see also J. Bryson, dissenting (would not
impose sanctions, although agreeing that the
appellant misrepresented the record)))
- Frivolous as filed when the appellant fails

to explain how the trial court erred or to
present cogent or clear arguments for
reversal (E-Pass Technologies, 3/20/09
(motion for sanctions based on frivolous
appeal granted with respect to one of
multiple appellees; see also J. Bryson,
dissenting)
- Frivolous as argued when the appellant

makes significant misrepresentations of the
record and the law to the CAFC (E-Pass
- Frivolous appeal as a whole, even in the

presence of a few non-frivolous arguments
(E-Pass Technologies, 3/20/09 (responding
to J. Brysons dissent))
- Amount of sanction under Rule 38 is within the

CAFCs discretion (E-Pass Technologies, 3/20/09)
- CAFC grants motion for fees and costs only when

an appeal is clearly hopeless and unquestionably
391
without any possible basis in fact or law (Judkins,
4/8/08 (slim odds of prevailing on appeal of denial
of PI not involving claim construction is not
none; movant must show by reference to specific
features of the appeal that it was clearly
hopeless))
- Counsel jointly and severably liable for sanctions

(E-Pass Technologies, 3/20/09 (where frivolous
appeal was based in part on the frivolous nature
of the advocacy in support of it, we consider the
attorney who wrote and signed the briefs to be
equally responsible))
Secondary considerations - obviousness
- CAFC can consider evidence of secondary considerations

without need for remand when the district court ignores
such evidence (Transocean, 8/18/10 (only proper in the
context of SJ if, drawing all justifiable inferences in favor
of the patentee, the objective evidence cannot rebut the
prima facie case); Iron Grip Barbell, 12/14/04)
Stay of injunction, or injunction, pending appeal
- Stay of injunction, or injunction, pending appeal

movant must establish a strong likelihood of success on
the merits or, failing that, demonstrate a substantial case
on the merits provided that the harm factors militate in its
favor Hilton (S.C.); the CAFC assesses the movants
chances of success on the merits and weighs the equities
as they affect the parties and the public DuPont,
Standard Havens, Hilton (S.C.) (Apple, 7/19/12 (Order)
(nonprecedential denying motion to stay PI); Sciele
Pharma, 2/6/12 (Order) (nonprecedential vacating and
remanding PI because the district court failed to make
392
appropriate fact findings and conclusions of law
regarding the defendants obviousness arguments, and
instead simply stated that the defendant relied on only
prior art before the PTO during prosecution and therefore
failed to raise a substantial question that its obviousness
argument was likely to succeed at trial); Duramed,
7/27/11 (Order) (nonprecedential denying temporary
injunction pending appeal); Eplus, 7/14/11 (Order)
(nonprecedential denying stay of injunction pending
appeal); Celsis In Vitro, 7/1/11 (Order) (nonprecedential
burden for injunction pending appeal not met based on
four factors); General Protecht Group, 1/18/11(Order)
(nonprecedential denying stay pending appeal of PI);
Streck, 1/18/11 (Order) (nonprecedential denying stay
pending appeal of injunction); Mytee Products, 9/15/10
(Order) (nonprecedential - movant failed to meet burden
to obtain stay of injunction pending appeal); Eli Lilly,
8/31/10 (Order) (nonprecedential the patentee Lilly met
its burden to obtain an injunction pending appeal, where
the district courts judgment included invalidity based on
lack of enablement)
- Injunction pending appeal against prevailing

generic drug defendant (In re Cyclobenzaprine,
4/16/12)
Staying of appeal
- Staying an appeal based on the CAFCs inherent power

to control the disposition of cases on its docket (Bunzl
Processor, 5/24/12 (Order) (nonprecedential denying
stay of appeal pending proceedings in related district
court action, where a stay for such a lengthy period of
time was unwarranted))
393
Stipulations
- Parties can stipulate to almost anything but jurisdiction

(Scanner Techs., 6/19/08 (unasserted claims in both
patents in suit were invalidated based on the parties
unambiguous pre-trial stipulation that the case would
stand or fall on a single representative claim, citing
Shelcore)); See also Inventio AG, 11/27/12
(nonprecedential the patentee was bound by its
stipulation reflected in the district courts jury
instruction)
- Courts are not bound to accept, as controlling,

stipulations as to questions of law Estate of Sanford
(S.C.), Technicon Instrs. (Alexsam, 5/20/13 (n.9: CAFC
was not required to apply a preponderance of evidence
standard to obviousness because the parties stipulated to
standard in jury instruction))
Transfer, reassignment to a different district court judge on

remand, recusal of judge, judicial bias
- Transfer to a different district court judge 28 USC

2106 - transfer request considered with great caution, and
the CAFC, in the absence of personal bias, grants such a
request only in unusual circumstances (Move, 3/4/13
(denying request after concluding accusations were
wholly without merit); Stauffer, 8/31/10 (n.4: denying
request where neither argument for reassignment was
presented, nor had the district courts decisions shown
any basis for doing so); TriMed, 6/9/10 (granting
reassignment where the judge simply adopted the fact
findings and conclusions of law of the accused infringer
in granting SJ of invalidity was necessary to preserve
the appearance of justice, applying 9th Cir. law); Cardiac
Pacemakers, 8/19/09 (en banc) (seeing no reason to
interfere with the internal operations of the 7th Cir.);
394
Garber, 6/26/09 (citing the default rule of the 7th Cir.,
despite not addressing the request for reassignment where
case dismissed without prejudice); Cohesive Techs.,
10/7/08 (reassignment not ordered under 1st Cir.s three-
part test); Research Corp. Techs., 8/1/08 (applying 9th
Cir. law, request was granted after concluding that the
strongly expressed convictions of the trial court in this
case may not be easily and objectively reconsidered));
See also McZeal, 6/18/09 (nonprecedential n.5:
plaintiff failed to meet burden of showing that the judge
abused his discretion in not recusing himself, citing the
Supreme Court rule that judicial rulings alone almost
never constitute a valid basis for a bias or partiality
motion Liteky (S.C.)); Cardiac Pacemakers, 12/18/08
(nonprecedential seeing no reason to interfere with the
internal operations of the Seventh Circuit, and thus
leaving the determination of reassignment to a different
judge on remand to that circuits internal rules and
procedures, where there was no evidence that the judge
was impartial or biased); Uniloc USA, 8/7/08
(nonprecedential recusal of district court judge under
28 USC 455(a) - applying 1st Cir. law, district court did
not abuse its discretion in denying motion for recusal,
even where the court had hired an intern having financial
ties to the defendant); See also Pieczenik, 3/22/12
(nonprecedential); Odom, 5/4/11 (nonprecedential
concluding no merit in allegations of judicial bias by the
district court)
Unpublished decisions
- Reliance on unpublished decision when published

decision(s) fail to answer question (Tessera, 5/23/11
(citing 2003 unpublished decision (as a see, e.g. cite)
specific to issue of the proper time to file a NOA from an
ITC determination); Revolution Eyewear, 4/29/09 (citing
2006 nonprecedential CAFC decision in support of ruling
395
relating to WD support); Venture Industries, 8/7/06 (6th
Cir.))
Writs of mandamus 28 USC 1361, 1651
- Writ of mandamus 28 USC 1361, 1651, and petition

for same to compel district court to act in certain way
for challenging the district courts non-appealable orders
(In re EMC, 5/4/12 (Order) (granting petition in part and
directing the district court to decide issues relating to a
motion to sever and transfer); In re MSTG, 4/9/12
(Order) (denying petition where the district court did not
clearly abuse its discretion in ordering the production of
settlement negotiation documents, where there was no
federal settlement negotiation privilege); In re Shared
Memory Graphics, 9/22/11 (Order) (ordering the district
court to vacate order disqualifying the patentees law
firm); In re Verizon, 3/23/11 (Order) (ordering transfer of
venue); In re BP Lubricants, 3/15/11 (Order) (granting
petition and directing the district court to grant motion to
dismiss complaint for false marking with leave to amend
in accordance with the particularity requirement of FRCP
9(b)); In re Vistaprint, 12/15/10 (Order); In re Acer
America, 12/3/10 (Order); In re Zimmer Holdings,
6/24/10 (Order) (ordering transfer of venue); In re
Deutsche Bank, 5/27/10 (vacating and remanding order
exempting lead counsel from a patent prosecution bar in
a protective order); In re Nintendo, 12/17/09 (ordering
transfer of venue); In re Hoffmann-La Roche, 12/2/09
(ordering transfer of venue); In re Genentech (Order),
5/22/09 (ordering transfer of venue); In re Volkswagen of
America (Order), 5/22/09 (petition for transfer of venue
was properly denied where there were multiple lawsuits
involving the same patents and issues in the E.D. of
Texas, and thus transfer was not in the interest of justice);
In re TS Tech (Order), 12/29/08 (granting petition and
holding that the district court clearly abused its
396
discretion in denying motion to transfer venue); In re
Roche Molecular Systems, 2/1/08 (mandamus relief
denied); Princo (Order), 3/1/07; In re Echostar
Communications, 5/1/06; In re Technology Licensing,
9/12/05; Hornback, 4/19/05); See also In re Broadcom,
4/23/13 (Order) (nonprecedential denying mandamus
relief to dismiss or transfer case from E.D. Texas, where
the district court, applying 5th Cir. law, properly applied
transfer analysis under Section 1404(a) (convenience of
the parties) instead of Section 1406(a) to forum-selection
clause in agreement specifying New York jurisdiction);
In re Fusion-IO, 12/21/12 (Order) (nonprecedential
denying mandamus relief requesting order to transfer, but
directing the district court to act on motion to transfer
before proceeding to any motion on the merits of the
action); Kimberly-Clark, 1/10/11 (Order)
(nonprecedential denying petition while granting
petition for interlocutory appeal under 28 USC 1292(b)
regarding discovery of privileged documents); See also
STANDARDS OF REVIEW AND CHOICE OF LAW
Writs of mandamus
- Remedy of mandamus is an extraordinary remedy,

to be reserved for extraordinary situations (Princo
(Order), 3/1/07); writ is available in extraordinary
situations to correct a clear abuse of discretion or
usurpation of judicial power (In re EMC, 5/4/12
(Order); In re MSTG, 4/9/12 (Order); In re
Link_A_Media Devices, 12/2/11 (Order) (exacting
standard was satisfied established that the
Delaware district courts decision denying transfer
motion amounted to a failure to meaningfully
consider the merits of the motion (3rd Cir.)); In re
Shared Memory Graphics, 9/22/11 (Order); In re
BP Lubricants, 3/15/11 (Order) (granting petition
where the CAFC had not yet decided the basic
and undecided question of whether FRCP 9(b)
applies to pleading false marking, and district
397
courts were in considerable disagreement on the
issue thus, deciding the matter before final
judgment presented an issue important to proper
judicial administration LaBuy (S.C.)); In re
Microsoft, 1/5/11 (Order) (clear abuse of
discretion in denying transfer by E.D. of Texas); In
re Vistaprint, 12/15/10 (Order) (denying petition
where the district courts denial of transfer motion
was supported by judicial economy); In re Acer
America, 12/3/10 (Order) (patently erroneous
denial of transfer); In re Deutsche Bank, 5/27/10;
In re Nintendo, 12/17/09 (Order); In re Genentech
(Order), 5/22/09; In re Volkswagen of America
(Order), 5/22/09; In re TS Tech (Order), 12/29/08;
In re Roche Molecular Systems, 2/1/08; In re
Echostar Communications, 5/1/06 (privilege
issues)); See also In re Zoltek, 8/2/13 (Order)
(nonprecedential denying mandamus relief (for
not meeting requirements for such extraordinary
relief) to order the district court to permit further
discovery relating to secondary considerations,
where the petitioner did not establish that denial of
discovery precluded it from litigating the merits of
its case or that trial would be a waste of judicial
resources); In re Medical Components, 8/2/13
(Order) (nonprecedential denying mandamus
relief for order that the district court lift stay of
counterclaim pending reexamination of the
plaintiffs patents, or alternatively order the district
court to dismiss the counterclaim without prejudice
under Rule 41(a)(2)); In re Broadcom, 4/23/13
(Order) (nonprecedential); In re EMC, 1/29/13
(Order) (nonprecedential denial of transfer
motion was not so unreasonable as to warrant
mandamus relief, where the district court properly
considered transfer factors, including judicial
economy); In re Princeton Digital Image, 11/26/12
398
relief where the district court properly transferred
action against a foreign defendant under Section
1404(a)); In re Dell, 10/23/12 (Order)
(nonprecedential denying mandamus relief to
direct the district court to impose a protective order
against a law firm from accessing confidential and
sensitive information where one of the firms
attorneys was previously barred from access to the
confidential information); In re Shukh, 10/16/12
relief to vacate the denial of motion to compel
production of privileged documents); In re Altera,
7/20/12 (Order) (nonprecedential denying
mandamus relief regarding denial of transfer,
where the district court considered the merits of
transfer and all of the parties had incorporated in
Delaware and some witnesses would potentially
find Delaware more convenient, distinguishing
Link_A_Media); In re Amazon.com, 5/1/12
relief regarding denial of transfer motion); In re
Google, 2/6/12 (Order) (nonprecedential petition
denied where agreed with the district court that the
disputed email was not privileged); In re U. of
South Florida, 1/12/12 (Order) (nonprecedential -
denying mandamus relief with respect to
disqualification of counsel); In re SDI Techs.,
mandamus relief with respect to the denial of
motion to stay litigation pending reexamination);
In re Apple, 1/12/12 (Order) (nonprecedential the
petitioners delay in connection with transfer
motion in the E.D. of Texas militated against
granting mandamus relief, and there was an
argument that the petitioner did not meet its burden
below of showing that the transferee venue was
clearly more convenient, on which the CAFCs
prior decisions granting mandamus relief and
399
transfer are based); In re Aim Sports, 11/14/11
(Order) (nonprecedential denying petition
regarding the district courts order granting
monetary and evidentiary sanctions); In re Wyeth,
12/20/10 (Order) (nonprecedential mandamus
standard, which may be used to correct a patently
erroneous denial of transfer, is an exacting one); In
re Oracle, 11/1/10 (Order) (nonprecedential); In re
Apple, 5/12/10 (Order) (nonprecedential
demanding standard required for issuing a writ
of mandamus was not met where not shown that
the transferee district was more convenient); In re
KGK Synergize, 10/9/09 (Order) (nonprecedential
petition denied requesting reversal of the district
courts orders denying the defendants motion to
dismiss a declaratory judgment action where the
patent co-owner United States was not also sued
(due to sovereign immunity) or joined as a co-
defendant)); In re Telular, 4/3/09 (Order)
(nonprecedential denying petition relating to
transfer of venue, including where party waited
five months to file the petition); In re Cypress
Semiconductor, 4/2/09 (Order) (nonprecedential);
Enzo Biochem (Order), 2/6/09 (nonprecedential);
In re Volkswagen, 9/26/08 (nonprecedential); In re
Freescale Semiconductor, 6/25/08
(nonprecedential)
- Writ may only issue to confine an inferior

court to a lawful exercise of its prescribed
jurisdiction or to compel it to exercise its
authority when it is its duty to do so Roche
(S.C.) (Princo (Order), 3/1/07); See also In
re Nintendo, 9/25/13 (Order)
(nonprecedential)
- Privilege issues - writ may issue to prevent

the wrongful exposure of privileged
400
communications, including review of
discovery orders that turn on claims of
privilege - after meeting three criteria (In re
Seagate Technology, 8/20/07 (en banc)); See
also In re Shukh, 10/16/12 (Order)
(nonprecedential denying mandamus relief
to vacate the denial of motion to compel
production of privileged documents
contrasting with In re Seagate since there
was no indication that a privilege would be
lost if review was denied until final
judgment)
- Settlement negotiation privilege (In re

MSTG, 4/9/12 (Order) (no clear abuse
of discretion in ordering production of
settlement documents, where there
was no privilege))
- Protecting confidential information (In re

Dell, 10/23/12 (Order) (nonprecedential
denying mandamus relief to obtain a
protective order barring law firm from
accessing confidential and sensitive
information during discovery))
- Disqualification of counsel (In re Shared

Memory Graphics, 9/22/11 (Order)); See
also In re U. of South Florida, 1/12/12
(Order) (nonprecedential - mandamus
denied)
- Party seeking writ bears burden of proving that it

lacks adequate alternative means to obtain the
relief sought, and that its right to issuance of the
writ is clear and indisputable (In re EMC, 5/4/12
(Order); In re MSTG, 4/9/12 (Order); In re Shared
Memory Graphics, 9/22/11 (Order) (mandamus
granted regarding disqualification order where the
401
patentee would have had to litigate patent without
the counsel of its choice); In re Vistaprint,
12/15/10 (Order); In re Deutsche Bank, 5/27/10; In
re Nintendo, 12/17/09 (Order) (granting writ and
ordering transfer from the E.D. of Texas to the
W.D. of Washington, despite no decision by the
district court on the petitioners motion for
reconsideration where the court clearly abused its
discretion when deciding the original motion); In
re Hoffmann-La Roche, 12/2/09 (granting writ of
mandamus and ordering transfer of venue from
E.D. of Texas to North Carolina); In re Genentech
(Order), 5/22/09; In re Volkswagen of America
(Order), 5/22/09; In re TS Tech (Order), 12/29/08
(clear and indisputable right to writ demonstrated,
to direct the district court to transfer venue); In re
Roche Molecular Systems, 2/1/08 (petitioner failed
to show that it could not obtain the relief sought by
appellate review after final judgment); In re
Seagate Technology, 8/20/07 (en banc); Princo
(Order), 3/1/07; In re Echostar Communications,
5/1/06); See also In re Nintendo, 9/25/13 (Order)
(nonprecedential adding that once the above
prerequisites are met, the district courts decision
whether to issue the writ is largely one of
discretion citing Kerr (S.C.); granting mandamus
relief because of the district courts failure to
exercise its discretion by addressing severance of
claims/parties (retailers) and transfer issues prior to
joinder of claims issues (under the new joinder
Section 299 and FRCP 18, 20 and 21, and the
transfer statute)); In re U. of South Florida, 1/12/12
(Order) (nonprecedential); In re SDI Techs.,
1/12/12 (Order) (nonprecedential burden for
entitlement to mandamus relief was not met where
a stay of litigation pending reexamination is
subject to the district courts sound discretion); In
re Aliphcom, 2/9/11 (Order) (nonprecedential no
402
abuse of discretion in granting transfer based on
judicial efficiency); In re KGK Synergize, 10/9/09
(Order) (nonprecedential CAFC noted that the
petitioner could have sought certification of the
district courts orders under 28 USC 1292(b) --
and otherwise failed to show that it could not
obtain adequate relief on appeal after final
judgment); In re Telular, 4/3/09 (Order)
(nonprecedential mandamus was inappropriate
where a rational legal argument supported the
district courts ruling denying motion to transfer);
In re Cypress Semiconductor, 4/2/09 (Order)
(nonprecedential denying petition where the
petitioner failed to show that the ITC clearly and
indisputably erred in ruling that the investigation
may proceed, as not precluded by a prior vacated
invalidity judgment); Enzo Biochem (Order),
2/6/09 (nonprecedential); In re Volkswagen,
9/26/08 (nonprecedential denying petition for
writ to order district court to vacate orders
transferring case and dismissing state law claims
where the petitioners right was not clear and
indisputable, particularly on matters within the
district courts discretion); In re Freescale
Semiconductor, 6/25/08 (nonprecedential right to
writ not shown to be clear and indisputable where
the ITC provided a sufficient basis for denying a
stay pending reexamination)
- Court may deny a petition for mandamus

[i]f the facts and circumstances are
rationally capable of providing reasons for
what the district court has done Cordis,
In re Volkswagen (5th Cir.) (In re Nintendo,
12/17/09 (Order); In re Genentech (Order),
5/22/09 (simply no rational argument that
the clearly more convenient venue was not
the transferee district))
403
- Hardship, inconvenience not sufficient for
mandamus relief - that the petitioner may
suffer hardship, inconvenience, or an
unusually complex trial does not provide a
basis for a court to grant mandamus (In re
Roche Molecular Systems, 2/1/08 (see also
J. Newman, dissenting trial on
infringement issues should not proceed
without first resolving threshold questions of
ownership of the inventions); See also In re
Zoltek, 8/2/13 (Order) (nonprecedential
rejecting argument for permitting further
discovery that petitioner prejudiced because
it may take years to successfully appeal
from an adverse ruling); In re AGA Medical,
mandamus directing the district court to
dismiss a DJ action); In re SDI Techs.,
petition with respect to denial of motion to
stay litigation pending reexamination); In re
KGK Synergize, 10/9/09 (Order)
(nonprecedential citing In re Roche
Molecular Systems); In re Freescale
Semiconductor, 6/25/08 (nonprecedential
rejecting argument that ITCs denial of stay
pending reexamination would lead to
tremendous wastes of time, money and
resources)
- No other means requirement not

intended to ensure that the petitioner exhaust
every possible avenue of relief at the district
court before seeking mandamus relief (e.g.,
if motion for reconsideration would have
been futile), but rather the purpose is to
ensure that the writ will not be used as a
404
substitute for the regular appeals process
Cheney (S.C.) (In re Nintendo, 12/17/09
(Order); In re TS Tech (Order), 12/29/08)
- Seeking mandamus for denial of

venue transfer meets the no other
means requirement, as interlocutory
review of a transfer order under 28
USC 1292(b) is unavailable (In re
Nintendo, 12/17/09 (Order) (same as
Genentech); In re Genentech (Order),
5/22/09 (absent a transfer of venue,
the petitioner would have been unable
on appeal from an adverse final
judgment to show that it would have
won the case had it been litigated in
the other venue); In re TS Tech
(Order), 12/29/08 (also addressing the
practical effect of an appeal of an
improper failure to transfer a case
after an adverse final judgment))
- Mandamus review of (discovery)

orders when the petition presents
important issue of first impression, or
one in which courts have disagreed
(In re BP Lubricants, 3/15/11 (Order)
(district courts disagreed as to the
pleading requirements for false
marking); In re Deutsche Bank,
5/27/10 (patent prosecution bar for
litigation attorneys in a protective
order)); See also In re Nintendo,
mandamus may be appropriate in
certain cases to further supervisory or
instructional goals where issues are
405
unsettled and important citing In re
BP Lubricants)
- Reversible error is not a basis for mandamus

relief (In re Roche Molecular Systems,
2/1/08); See also In re SDI Techs., 1/12/12
(Order) (nonprecedential); In re KGK
Synergize, 10/9/09 (Order)
(nonprecedential); In re Telular, 4/3/09
(Order) (nonprecedential); In re Cypress
Semiconductor, 4/2/09 (Order)
(nonprecedential); In re Volkswagen,
9/26/08 (nonprecedential); In re Freescale
Semiconductor, 6/25/08 (nonprecedential
stating that a court may deny mandamus
relief even though on normal appeal, a court
might find reversible error)
- Party need not refuse to comply with court order,

when challenging only part of order, for
entitlement to mandamus (In re Echostar
Communications, 5/1/06)
- Nonparty harmed by a statement in a courts

opinion can petition for a writ of mandamus 28
USC 1651, and request that the statement be
expunged from the record (Nisus, 8/13/07)
- Issuance of writ discretionary? (Princo (Order),

3/1/07)
- CAFC does not decline to issue a writ

because substantive patent law is not
implicated (Princo (Order), 3/1/07)
C. STANDARDS OF REVIEW AND CHOICE OF LAW
406
Appeals from District Court (bench and jury trials), BPAI/TTAB,
ITC (CIT), and the Court of Federal Claims
The Federal Circuit provides the following levels of deference

to an appeal from a bench trial, jury trial, PTO proceeding (BPAI and
TTAB), the ITC (CIT) and the Court of Federal Claims:
Bench trial
- Bench trial judgment reviewed for errors of law and

clearly erroneous findings of fact; errors of law, reviewed
de novo; findings of fact, clearly erroneous standard
applied (Meadwestvaco, 9/26/13; Pozen, 9/28/12;
Medtronic, 9/18/12 (legal conclusions, such as who bears
the burden of proof, reviewed de novo); Preston, 7/10/12;
Otsuka, 5/7/12; Koninklijke Philips, 1/5/10 (district court
abused discretion by basing sua sponte SJ in a Section
146 action on an erroneous conclusion of law); Procter &
Gamble, 5/13/09; Zenon Environmental, 11/7/07; Forest
Labs, 9/5/07; Honeywell, 5/25/07; Pfizer, 3/22/07;
Abbott Labs, 11/9/06; Conoco, 8/17/06; Pfizer, 8/2/06;
Novo Nordisk, 10/5/05; Clontech, 5/5/05; Merck,
1/28/05; Golight, 1/20/04; Dow, 9/5/03; Ferguson,
12/4/03; Merck, 10/30/03; Cyanamid, 9/3/03); See also
Astrazeneca, 6/10/08 (nonprecedential the district
courts determinations in concluding noninfringement
were based on the courts fact findings and thus could not
be overturned unless clearly erroneous)
- Clearly erroneous (clear error) standard defined

a finding is clearly erroneous when although
there is evidence to support the finding, the
reviewing court on the entire evidence is left with
the definite and firm conviction that a mistake has
been committed. (Preston, 7/10/12; Otsuka,
5/7/12; Forest Labs, 9/5/07; Alza, 9/6/06; Pfizer,
8/2/06; Novo Nordisk, 10/5/05; Clontech, 5/5/05;
407
Merck, 1/28/05; Centricut, 12/6/04; Ruiz, 1/29/04;
Ferguson, 12/4/03; Merck, 10/30/03; Cyanamid,
9/3/03)
- Appellant must disturb the detailed and

thorough fact findings underlying the district
courts decision; must explain why CAFC
should have a definite and firm conviction
that mistakes were made by the district court
in its fact finding, e.g., explain why the
district court was not entitled to rely on the
evidence favorable to the appellee, or
demonstrate the the evidence favorable to
appellant heavily outweighed the evidence
favorable to the appellee (Forest Labs,
9/5/07 (affirming district courts no
anticipation and nonobviousness rulings))
- Fact-finder committed no clear error when

record viewed in its entirety renders the
district courts account of the evidence
plausible or discloses two permissible
readings of the evidence (Novo Nordisk,
10/5/05)
- Factual findings basic precept that district court

must consider the totality of the evidence; consider
synergy of evidence (Alza, 9/6/06)
Jury trial
- Jury verdict must be supported by substantial evidence

(i.e., sufficiency of the evidence) (Cordis, 9/28/11
(addressing the requirements of substantial evidence
standard); i4i, 3/10/10 (the CAFC stating that because
we are in large part reviewing what the jury found, our
review is limited and deferential, where the district court
408
concluded that the jurys $200 million damages award
was supported by sufficient evidence); Fresenius, 9/10/09
(obviousness verdict based on implicit fact findings was
supported by substantial evidence, e.g., expert testimony
and exhibits); Exergen, 8/4/09 (successful jury verdict
was short-lived where not supported by substantial
evidence); Monolithic Power Systems, 3/5/09 (jury
verdict of obviousness supported by substantial evidence,
including unrebutted expert testimony; substantial
evidence defined); Broadcom, 9/24/08; Litecubes,
4/28/08 (denial of JMOL motions affirmed where the
jury was presented with sufficient evidence to establish
that infringement occurred within the United States);
Agrizap, 3/28/08 (fraudulent misrepresentation; reversal
of denial of motion for JMOL as to obviousness, citing
KSR (S.C.)); Tivo, 1/31/08 (expert testimony was
substantial evidence of infringement); Cordis, 1/7/08
(expert testimony as substantial evidence of
infringement); Z4 Technologies, 11/16/07
(infringement/validity; substantial evidence supported the
jurys verdict, even under the CAFCs modified claim
construction); Paice, 10/18/07 ((non)infringement;
Adenta, 9/19/07 (invalidity based on public use/on sale
bars); Acco Brands, 9/12/07; Pharmastem, 7/9/07 (see
also dissent, J. Newman, regarding appellate review of
jury verdict); Wechsler, 5/18/07; Dystar, 10/3/06; Kemin
Foods, 9/25/06; *Liquid Dynamics, 6/1/06; On Demand
Machine, 3/31/06; Applied Medical Resources, 1/24/06;
Sorensen, 10/31/05; Cytologix, 9/21/05; Northpoint,
5/28/05; MercExchange, 3/16/05; Lisle, 2/11/05;
*Unitherm Food Systems, 7/12/04 [In January 2006,
the U.S. Supreme Court in Unitherm Food Systems
reversed the CAFC on other grounds, holding that the
losing party in a jury trial must renew its FRCP 50
motion for JMOL after the verdict in order to argue
sufficiency of the evidence on appeal]; Akamai, 9/15/03
(see dissent))
409
- Substantial evidence defined is more than a
mere scintilla and is such relevant evidence as a
reasonable mind might accept as adequate to
support a conclusion (Monolithic Power Systems,
3/5/09 (substantial evidence supported jury verdict
that prior art patent rendered claimed invention
obvious))
- Explanation urging jurors to rely on

speculation, without more, is often
insufficient, as it is well-established that
speculation does not constitute substantial
evidence (*Lucent, 9/11/09)
- Determine whether a reasonable jury, fact finder,

on the correct construction of the law, could
reasonably have reached the verdict reached by the
jury in the case (Adenta, 9/19/07); that is, was
there substantial evidence in support of the verdict,
when disputed questions of fact and factual
inferences are resolved in favor of the party that
received the verdict? (i4i, 3/10/10 (the CAFC was
unable to review the jurys implicit factual
findings underlying its verdict of nonobviousness
where the challenger failed to file a pre-verdict
JMOL motion); Monolithic Power Systems, 3/5/09
(CAFC presume[s] that the jury resolved the
underlying factual disputes [here, relating to
obviousness] in favor of the verdict winner and
leave[s] those presumed findings undisturbed if
they are supported by substantial evidence
Jurgens); Agrizap, 3/28/08 (reversal of denial of
motion for JMOL as to obviousness, citing KSR
(S.C.)); On Demand Machine, 3/31/06); See also
ADC Telecom., 6/16/08 (nonprecedential motion
for JMOL of infringement was properly denied
when a reasonable jury could have accepted the
accused infringers experts testimony criticizing
410
the patentees testing methods for infringement;
CAFC must draw all reasonable inferences in
favor of the prevailing party, and not make
credibility determinations or substitute [its] view
of the conflicting evidence for that of the jury
Akamai Techs.)
- Question is whether the jurys verdict is

sustainable on the evidence presented, not
whether the CAFC could have or would
have gone the other way on the evidence
presented (Pharmastem, 7/9/07, dissent, J.
Newman)
- Trial court is rarely entitled to disregard jury

verdicts that are supported by substantial
evidence, and cannot choose to ignore a
legitimate finding that is part of a special
verdict (Wechsler, 5/18/07 (9th Cir.))
- Injunction based on a jury verdict of infringement

whether the patentee presented substantial
evidence of infringement (Kemin Foods, 9/25/06;
Cytologix, 9/21/05)
- Jury verdict must be upheld unless there is no

legally sufficient evidentiary basis for a reasonable
jury to find as the jury did (Acco Brands, 9/12/07
(validity, infringement))
- Jury verdict supported by substantial evidence

despite the CAFCs change in claim construction
(Function Media, 2/13/13)
- Jurys verdict on legal issue also resolves all

genuinely disputed underlying factual issues in
favor of the verdict winner (Lisle, 2/11/05)
411
- Black box jury form (jury answers yes or
no on a claim), CAFC presumes all factual
disputes were resolved in favor of the
verdict (Agrizap, 3/28/08 (where the jury
answered no on a special verdict form to
whether a patent claim was obvious))
- Substantial evidence of noninfringement (literal

and DOE) jury is given substantial deference
(Kemin Foods, 9/25/06)
- Whether evidence, taken as a whole, was sufficient

to support the jurys verdict thus, the inadequacy
of any particular item of evidence would not
undermine the verdict as a legal matter (i4i,
3/10/10 (citing Northpoint); Northpoint, 6/28/05)
- Substantial evidence in reviewing factual

issues for substantial evidence, the inquiry is
whether a reasonable jury, given the record
before it viewed as a whole, could have
arrived at the conclusion it did Dawn
Equip. (Broadcom, 9/24/08 (substantial
evidence based on expert testimony to
support a reasonable jurys conclusion of
infringement where the jury presented with
the claim language (selectively couples)
without interpretation based on the intrinsic
evidence))
- Whether the record taken as a whole would

support the verdict in the mind of a
reasonable person (Adenta, 9/19/07; Acco
Brands, 9/12/07; Liquid Dynamics, 6/1/06)
BPAI/TTAB
412
- BPAI/TTAB decision standards of the APA, 5 USC
706, applied by the CAFC in reviewing BPAI decisions;
legal conclusions reviewed de novo for correctness in
law; factual findings reviewed for (lack of) substantial
evidence In re Gartside, APA (Sanofi-Aventis, 11/5/13
(interference conception factual question); Randall
Mfg., 10/30/13; Rambus, 9/24/13; In re Adler, 7/18/13;
Smith & Nephew, 7/9/13 (reversing nonobviousness
where the BPAIs decision was mainly the result of
analytical errors the CAFC discussed, and not the BPAIs
resolutions of factual questions); In re Morsa, 4/5/13;
Dawson, 3/25/13 (n.1: explaining the basis for affirmance
as only that the BPAIs decision that the junior party
failed to carry its burden of proof on conception was
supported by substantial evidence and there was no error
of law, rather than the CAFC deciding conception in the
first instance); Flo Healthcare Solutions, 10/23/12;
Belkin Intl, 10/2/12 (BPAIs jurisdiction); In re Abbott
Diabetes Care, 9/28/12; In re Antor Media, 7/27/12;
Loughlin, 7/11/12 (statutory construction); In re Mouttet,
6/26/12; Hollmer, 6/7/12 (interference); In re Baxter,
5/17/12 (CAFC has limited scope of review in appeal
from BPAI decision); In re Montgomery, 5/8/12; Pioneer
Hi-Bred, 2/28/12; In re Construction Equipment Co.,
12/8/11 (reexamination); In re Stepan, 10/5/11
(reexamination); In re NTP II, 8/1/11 (reexamination);
Goeddel, 9/7/10 (interference); In re Giacomini, 7/7/10;
In re Chapman, 2/24/10; In re Skvorecz, 9/3/09; In re
Kubin, 4/3/09; In re Gleave, 3/26/09; In re Basell,
11/13/08; In re Alonso, 10/30/08 (substantial evidence
defined); In re Swanson, 9/4/08; In re Garner, 12/5/07; In
re Buszard, 9/27/07; In re Trans Texas Holdings, 8/22/07
(fact findings regarding prior art); M2 Software, 6/7/06
(TTAB); Sharp, 5/30/06 (TTAB); Falkner, 5/26/06
(substantial evidence defined); In re Slokevage,
3/21/06 (TTAB) (substantial evidence defined);
Brown, 2/2/06; In re Stereotaxis, 10/27/05 (TTAB); In re
Fisher, 9/7/05; In re Kumar, 8/15/05 (substantial
413
evidence defined); Capon, 8/12/05; Rasmusson,
6/27/05; Shen Mfg., 12/17/04 (TTAB); Fulton, 12/2/04
(substantial evidence defined); In re Oppedahl, 6/25/04
(TTAB); American Academy of Science, 5/13/04; In re
Ngai, 5/13/04; Stevens, 5/4/04; Sullivan, 3/22/04; In re
Watts, 1/15/04; Curtis, 1/6/04); See also Lingamfelter,
8/9/12 (nonprecedential the CAFC does not re-weigh
the evidence and decide the case based on its own
independent view of the record, where the record
contained ample evidence to support the BPAIs
conclusion of obviousness, and stating that the CAFC
must review the Boards decision deferentially for
substantial evidence and that [s]ubstantial evidence
review is a deferential standard citing Kappos v. Hyatt
(S.C.)); In re Pond, 1/18/12 (nonprecedential
anticipation supported by substantial evidence, based on
reasonable construction of term unitary, one-piece
construction); U. of South Carolina, 1/19/10
(nonprecedential TTAB); Pivonka, 2/19/09
(nonprecedential obviousness supported by substantial
evidence, where expert testimony was unrebutted); In re
Stauffer, 7/24/08 (nonprecedential obviousness
supported by substantial evidence)
- Fact findings the CAFCs review of the BPAIs

decision is confined to the factual record compiled
by the BPAI; thus, the substantial evidence
standard is appropriate for the courts review of
BPAIs fact findings Gartside (In re Applied
Materials, 8/29/12; In re NTP II, 8/1/11; In re
Alonso, 10/30/08; In re Fisher, 9/7/05); an
agencys decision will be set aside if arbitrary,
capricious, an abuse of discretion, or otherwise not
in accordance with the law; and factual findings
are set aside if unsupported by substantial evidence
in the record - Zurko, Gartside (Pioneer Hi-Bred,
2/28/12; Falkner, 5/26/06; Energizer Holdings,
1/25/06; Capon, 8/12/05; Arnold, 3/24/04)
414
- Substantial evidence defined factual
determinations affirmed if based on such
relevant evidence as a reasonable mind
might accept as adequate to support a
conclusion or if a reasonable mind might
accept the evidence to support the finding,
or less than the weight of the evidence but
more than a mere scintilla of evidence (In re
Adler, 7/18/13; In re Morsa, 4/5/13
(scintilla); In re Abbott Diabetes Care,
9/28/12; In re Applied Materials, 8/29/12; In
re Antor Media, 7/27/12; In re Mouttet,
6/26/12; In re Baxter, 5/17/12; In re
Skvorecz, 9/3/09; Henkel, 3/18/09 (BPAI);
In re Alonso, 10/30/08; Falkner, 5/26/06; In
re Slokevage, 3/21/06 (TTAB); Harris,
5/25/05 (BPAI); In re Crish, 12/21/04
(PTO/BPAI); Bilstad, 10/7/04; Koito Mfg.,
8/23/04; In re Oppedahl, 6/25/04 (TTAB);
Akamai, 9/15/03; Honeywell, 8/26/03)); See
also Lingamfelter, 8/9/12 (nonprecedential);
In re Pond, 1/18/12 (nonprecedential also
means something less than the weight of
the evidence but more than a mere scintilla
of evidence In re Suitco Surface); In re
Speas, 4/9/08 (BPAI) (nonprecedential
also defining substantial evidence as
something less than the weight of the
evidence but more than a mere scintilla of
evidence)
- Agency decision can be supported by

substantial evidence, even where the
record will support several reasonable
but contradictory conclusions
Gartside, In re Jolley (In re Morsa,
4/5/13 (the epitome of a decision that
415
must be sustained upon review for
substantial evidence In re Jolley); In
re Applied Materials, 8/29/12 (the
BPAIs interpretation of prior art
reference, which was different from
the applicants, was supported by
substantial evidence); In re Mouttet,
6/26/12 (characterized as the epitome
of a decision that must be sustained
upon review for substantial evidence
In re Jolley); Henkel, 3/18/09; In re
Alonso, 10/30/08; In re Translogic
Technology, 10/12/07; Falkner,
5/26/06); See also Rambus, 6/28/13
(nonprecedential J. Wallach,
dissenting the BPAIs anticipation
findings were supported by
substantial evidence); In re Stauffer,
7/24/08 (nonprecedential agencys
decision to favor one conclusion over
another is the epitome of a decision
to be sustained upon review for
substantial evidence)
- BPAIs decision must be

affirmed if any reasonable fact
finder could have arrived at the
same conclusion - Gartside
(Henkel, 3/18/09; In re Alonso,
10/30/08)
- CAFCs task is to determine

whether the BPAIs decision is
evidence, and not how the
CAFC would decide the case in
the first instance (Henkel,
3/18/09 (substantial evidence
416
standard of review compelled
the CAFCs affirmance of the
BPAIs interpretation of
documentary evidence found to
corroborate an actual RTP;
citing cases for the general rule
that the CAFC may not
substitute its interpretation of
the evidence for the BPAIs
reasonable inferences, so long
as the BPAIs inferences are
evidence in the record as a
whole)); See also Rambus,
6/28/13 (nonprecedential J.
Wallach, dissenting implicit
in his opinion); In re Pepperball
Techs., 3/7/12 (nonprecedential
the CAFC concluded that a
claimed range was obvious
based on substantial evidence
in the record that was different
from the reason the BPAI relied
on for concluding obviousness)
- Substantial evidence determination

requires an examination of the record
as a whole, taking into account both
the evidence that justifies and detracts
from an agencys opinion - Gartside
(In re Alonso, 10/30/08; Falkner,
5/26/06)
- Broad conclusory statements

standing alone are not evidence
In re Kotzab (Rambus,
6/28/13 (nonprecedential
rejecting the BPAIs
417
anticipation finding where it
failed to explain how the prior
art met the relevant claim term;
see also J. Wallach, dissenting
the BPAIs anticipation
findings were supported by
substantial evidence, citing
Kotzab))
- Speculation does not constitute

substantial evidence
Novosteel (U. of South
Carolina, 1/19/10
(nonprecedential TTABs
findings were not substantial
evidence where based on
speculation))
- Harmless error found (Falkner, 5/26/06); See also

U. of South Carolina, 1/19/10 (nonprecedential
TTABs error regarding purchaser sophistication
was harmless where the parties SC marks were
legally identical and appeared on the same classes
of goods in the same trade channels)
- Legal conclusions - under the APA, the law as

interpreted and applied by the agency receives
plenary review on appeal (Regents of U.
California, 7/17/06; Falkner, 5/26/06; Energizer
Holdings, 1/25/06; Capon, 8/12/05; Arnold,
3/24/04)
- BPAIs statutory construction Q of law,

without deference (Loughlin, 7/11/12;
Regents of U. California, 7/17/06)
- New ground of rejection whether the

BPAI relied on a new ground of rejection
418
Q of law, reviewed de novo (In re
Biedermann, 10/18/13; Rambus, 9/24/13; In
re Stepan, 10/5/11); See also In re Nouvel,
- Res judicata Q of law (Sharp, 5/30/06

(TTAB))
International Trade Commission (ITC)
- International Trade Commission (ITC) rulings of the

ITC are reviewed based on the standard of the APA, 5
USC 706(2)(E) (19 USC 1337(c)) - the ITCs fact
findings are reviewed for substantial evidence (i.e.,
more than a mere scintilla and such relevant evidence
as a reasonable mind might accept as adequate to support
a conclusion) on the record as a whole, while its legal
determinations, including the legal standard to be
applied, are reviewed de novo, without deference, for
correctness (Microsoft, 10/3/13 (CAFC addressing a
fundamental limit on its role in reviewing evidentiary
sufficiency where the finder of fact has applied proper
legal standards; referring to the deferential substantial
evidence standard of review); Apple, 8/7/13; Norgren,
11/14/12 (affirming the ITCs conclusion of obviousness
as based on substantial evidence, stating that it is not the
CAFCs responsibility to re-weigh de novo the evidence
on close factual questions; see also J. Moore, dissenting);
Amkor Technology, 8/22/12; Ninestar Tech., 2/8/12;
Mezzalingua Assocs., 10/4/11; Tessera, 5/23/11;
Spansion, 12/21/10 (substantial evidence standard
defined); General Protecht Group, 8/27/10 (see also J.
Newman, dissenting, arguing that the majority found its
own facts, applied theories not raised by any party, used
incorrect standards of review, and did not provide the
patentee or ITC with an opportunity to respond to the
courts new arguments and adjudications: This is an
419
inappropriate appellate process); Pass & Seymour,
8/27/10; Vizio, 5/26/10 ; Deere, 5/26/10; Ajinomoto,
3/8/10; Crocs, 2/24/10; Linear Tech., 5/21/09 (discussing
several instances of substantial evidence (or no
substantial evidence) of infringement or
noninfringement); Erbe Elektromedizin, 5/19/09; Amgen,
4/30/09 (statutory interpretations and rulings of law
receive plenary review, applying the standards of the
APA); Kyocera Wireless, 10/14/08; Yingbin-Nature,
7/31/08 (substantial evidence supported ITCs
determination that written description requirement was
satisfied; substantial evidence defined); Osram GMBH,
10/31/07; Bourdeau Bros., 3/30/06 (substantial evidence
defined); Energizer Holdings, 1/25/06; Sorensen,
10/31/05; SKF USA, 9/14/05; Fuji Photo Film, 10/7/04;
Vanderlande Indus., 5/3/04; Kinik, 3/25/04); See also
Linear Tech., 8/28/08 (nonprecedential anticipation
finding supported by substantial evidence, defined
more than a mere scintilla, but something less than the
weight of the evidence)
- CAFC must affirm an ITC determination if it is

reasonable and supported by the record as a whole,
even if some evidence detracts from the ITCs
conclusion Nippon Steel (Tessera, 5/23/11;
Spansion, 12/21/10)
- Deferential review of the ITCs findings of fact

with respect to the structure and functionality of
the accused products (Pass & Seymour, 8/27/10)
- Agency fact findings, under the APA, are

sustained unless they are arbitrary, capricious or
unsupported by substantial evidence, and agency
rulings of law are reviewed for correctness 5
USC 706(2)(E) (Norgren, 11/14/12 (ITCs
conclusion of obviousness was not arbitrary and
420
capricious despite finding the claims nonobvious
before remand); Energizer Holdings, 1/25/06)
- ITC reviews all of the ALJs findings de

novo Deere (Norgren, 11/14/12 (rejecting
argument that the Commission must uphold
the decision of the ALJ unless clearly
erroneous))
- CAFC reviews the final determination of the

Commission, i.e., the CAFC may not
substitute its own judgment on the ground
that it believes the ALJs view is more
reasonable (Spansion, 12/21/10)
- Possibility of drawing two inconsistent

conclusions from the evidence does not
prevent an agencys finding from being
supported by substantial evidence (Norgren,
11/14/12; Yingbin-Nature, 7/31/08); See
also Linear Tech., 8/28/08 (nonprecedential)
- ITC is a creature of statute, and must find authority

for its actions in its enabling statute (Kyocera
Wireless, 10/14/08 (addressing the ITCs authority
under 19 USC 1337(d) to issue exclusion
orders))
- Chevron deference if Congress has not directly

and unambiguously spoken to the precise question
at issue, deference must be given to the
interpretation, if reasonable, of the agency charged
with a statutes administration (Kyocera Wireless,
10/14/08 (Chevron deference defined); *Vastfame
Camera, 10/7/04 (Chevron deference defined);
Kinik, 3/25/04); See also STATUTORY
INTERPRETATION
421
- CAFCs jurisdiction over appeal from the ITC 28
USC 1295(a)(6) and 19 USC 1337(c)
(Spansion, 12/21/10; Epistar, 5/22/09; Erbe
Elektromedizin, 5/19/09; Kyocera Wireless,
10/14/08; Honeywell, 8/26/03)
- Remedies
- Injunctive relief - limited exclusion orders

(LEOs) reviewed for whether arbitrary,
capricious, an abuse of discretion, or
otherwise not in accordance with law
(Spansion, 12/21/10; Epistar, 5/22/09)
- Civil penalty assessed under Section 1337(f)

abuse of discretion (Ninestar Tech., 2/8/12
(abuse of discretion defined))
- Domestic industry requirement presents issues of

law and fact; fact issues reviewed for substantial
evidence (Motiva, 5/13/13 (appeal presented only
fact issues))
- Summary determinations plenary review,

without deference as a Q of law, and in accordance
with the standards for summary judgment 19
CFR 210.18(b) (Epistar, 5/22/09; Amgen,
4/30/09)
Court of International Trade (CIT)
- Court of International Trade (CIT) conclusions of law

reviewed de novo; following trial, courts factual
findings reviewed for clear error (i.e., CAFC accepts
CITs fact findings unless left with a definite and firm
conviction that a mistake has been committed); CITs
decisions on evidentiary issues reviewed for abuse of
422
discretion (Jazz Photo, 2/28/06 (CIT)); See also NSK
Corp. v. ITC, 10/25/13 (en banc review denied (7-3),
regarding standard of review, the concurring judges
(Lourie, Dyk, Prost, Moore, OMalley) stating that there
is no legal justification for the CAFC to adopt a rule
requiring deference to the substantial evidence
determinations of the CIT in its review of the ITC,
comparing the case under the APA to when district courts
review agency action for substantial evidence, and the
district court decisions are reviewed by courts of appeals,
the appellate courts conduct a non-deferential second
level of substantial evidence review, applying the same
standard as the district court, and that every circuit has
adopted that position, including the CAFC; Judges
Wallach, Rader, and Reyna dissented from the denial of
en banc review)
Court of Federal Claims
- Court of Federal Claims review legal conclusions de

novo and factual findings for clear error (Gaylord,
5/14/12; Gaylord, 2/25/10)
- Damages award abuse of discretion (Gaylord,

5/14/12)
- Jurisdiction - the CAFC reviews without deference

the Court of Federal Claims determination on its
jurisdiction; the plaintiff bears the burden of
establishing jurisdiction by a preponderance of the
evidence Taylor (Hyde, 7/8/09
(nonprecedential))
Substantive/procedural issues (in alphabetical order)
Substantive/procedural patent issues
423
Anticipation
- Anticipation Q of fact clearly erroneous (clear error)

standard applied in a bench trial and substantial evidence
standard applied in a jury trial (and BPAI, ITC decision);
depends on the proper claim construction legal issue
(Taurus IP, 8/9/13 (SJ of anticipation); Apple, 8/7/13
(ITC); Cheese Systems, 8/6/13; Regents of U. Minn.,
6/3/13; In re Morsa, 4/5/13; Synqor, 3/13/13 (jury);
Osram Sylvania, 12/13/12; Arcelormittal France,
11/30/12 (jury); Flo Healthcare Solutions, 10/23/12;
ActiveVideo Networks, 8/24/12; Amkor Technology,
8/22/12 (ITC); In re Rambus, 8/15/12 (BPAI); Whitserve,
8/7/12 (jury); In re Antor Media, 7/27/12; In re
Montgomery, 5/8/12; Clearvalue, 2/17/12 (jury); Bard,
2/10/12 [vacated in part after remanded on 6/14/12];
In re Aoyama, 8/29/11; Genetics Institute, 8/23/11; In re
NTP I, 8/1/11 (BPAI); Retractable Techs., 7/8/11 (jury);
Tessera, 5/23/11; Astrazeneca, 11/1/10; Green Edge,
9/7/10; In re Giacomini, 7/7/10 (BPAI); Encyclopaedia
Britannica, 6/18/10; TriMed, 6/9/10; Vizio, 5/26/10
(ITC); Orion, 5/17/10 (jury); In re Suitco Surface,
4/14/10 (BPAI - defining substantial evidence); Enzo
Biochem, 3/26/10 (reversing SJ of anticipation where
genuine issues of material fact); Marrin, 3/22/10; Intl
Seaway Trading, 12/17/09 (design patents); In re
Skvorecz, 9/3/09; Exergen, 8/4/09 (jury); In re McNeil-
PPC, 7/31/09 (BPAI no substantial evidence, indeed,
no evidence of anticipation); Ecolab, 6/9/09 (jury
verdict of no anticipation was not supported by
substantial evidence); Linear Tech., 5/21/09 (ITC);
Cordis, 3/31/09; In re Gleave, 3/26/09; Sanofi-
Synthelabo, 12/12/08; Praxair, 9/29/08 (substantial
evidence supported the jurys verdict of no invalidity);
Leggett & Platt, 8/21/08; Voda, 8/18/08 (jury); Golden
Bridge Tech., 5/21/08; Finisar, 4/18/08; Zenith
Electronics, 4/16/08; Z4 Technologies, 11/16/07 (jury);
Zenon Environmental, 11/7/07; Forest Labs, 9/5/07
424
(*clear error defined, and CAFC emphasized that
appellant must establish for reversal); Ormco, 8/24/07;
Liebel-Flarsheim, 3/22/07; Eli Lilly, 12/26/06; Impax
Labs, 11/20/06 (clearly erroneous defined); Sram,
10/2/06; Amgen, 8/3/06 (clear error defined); Atofina,
3/23/06 (clearly erroneous defined); IPXL Holdings,
11/21/05; Seachange Intl, 6/29/05; Prima Tek II,
6/22/05; Eolas, 3/2/05; Alza, 12/10/04; Koito Mfg.,
8/23/04 (jury); Power Mosfet Techs., 8/17/04; Glaxo,
7/27/04 (bench; clearly erroneous std. defined); TI
Group, 6/30/04 (jury); American Academy of Science,
5/13/04 (BPAI); In re Ngai, 5/13/04; Medichem,
12/23/03; Merck 10/30/03; Elan, 10/2/03; BJ Services,
8/6/03)
- Anticipation is a question of fact, including

whether or not an element is inherent in the prior
art (In re Gleave, 3/26/09; Eli Lilly, 12/26/06)
- Anticipation is a question of fact, but validity is a

question of law (Liebel-Flarsheim, 3/22/07)
- Incorporation by reference into a prior art

document see Incorporation by reference
- On sale bar Q of law, reviewed de novo,

without deference, based on underlying issues of
fact reviewed for clear error (bench) or
substantial evidence (jury) (Hamilton Beach,
8/14/13; Leader Technologies, 5/8/12 (jury);
Adenta, 9/19/07 (jury); Motionless Keyboard,
5/29/07; Honeywell, 5/25/07; Plumtree Software,
12/18/06; Enzo Biochem, 9/30/05; General
Motors, 7/28/05; Sparton, 2/28/05; Poly-America,
9/14/04; Unitherm Food Systems, 7/12/04; Elan,
5/5/04; Dow, 9/5/03)
425
- Meaning of statutory terms on sale or
public use Q of law, reviewed without
deference (Motionless Keyboard, 5/29/07)
- Commercial offer for sale - whether

there has been a commercial offer for
sale is governed by federal common
law (Plumtree Software, 12/18/06)
- Printed publication public accessibility - Q of

law, de novo (where no facts in dispute), based on
underlying factual determinations (Voter Verified,
11/5/12; Orion, 5/17/10; In re Lister, 9/22/09;
Cordis, 3/31/09 (issue reviewed de novo where the
facts regarding the inventors monographs were
not disputed); Kyocera Wireless, 10/14/08; SRI
Intl, 1/8/08; Bruckelmyer, 4/20/06; Klopfenstein,
8/18/04; Typeright Keyboard, 7/6/04; Norian,
4/6/04)
- Public accessibility of reference Q of fact

(In re NTP I, 8/1/11)
- Authenticity of document Q of fact (In re

NTP I, 8/1/11 (BPAIs findings regarding
authenticity of prior art document were
supported by substantial evidence))
- Enablement of prior art reference Q of

law, based on underlying fact findings
(Impax Labs, 10/3/08; Forest Labs, 9/5/07;
Impax Labs, 11/20/06; Novo Nordisk,
10/5/05)
- Prior art what a prior art reference discloses in an

anticipation analysis is a factual determination
(Praxair, 9/29/08 (jury); Golden Bridge Tech.,
5/21/08 (given as a reason for why the CAFC
426
could not decide the issue on appeal, but rather is a
question for the fact finder, here, the district court);
Kim, 9/20/06); See also In re Pond, 1/18/12
(nonprecedential anticipation supported by
substantial evidence); Creative Internet
Advertising, 4/22/11 (nonprecedential reasonable
jury would not have interpreted prior art references
in a way that would invalidate the claims); Ortho-
McNeil, 8/26/09 (nonprecedential genuine
questions of material fact precluded SJ of
anticipation, including whether the teachings of
one working example applied to another working
example)
- Public use bar Q of law, reviewed de novo,

based on underlying fact issues, reviewed for clear
error (bench trial) (Dey, 5/20/13 (see also J.
Newman, dissenting) Leader Technologies, 5/8/12
(jury); American Seating, 1/29/08; Adenta, 9/19/07
(jury); Invitrogen, 10/5/05; Lisle, 2/11/05;
Bernhardt, 10/20/04; Unitherm Food Systems,
7/12/04); See also Pronova Biopharma, 9/12/13
(nonprecedential)
- Meaning of statutory terms on sale or

public use Q of law, reviewed without
deference (Motionless Keyboard, 5/29/07)
- Prior invention - 35 USC 102(g)
- Priority, conception, and RTP are Qs of law

which are based on subsidiary factual
findings (Amkor Technology, 8/22/12;
Teva, 12/1/11)
- RTP of prior invention Q of law,

based on subsidiary factual findings
(Z4 Technologies, 11/16/07)
427
- Abandonment, suppression, or concealment
Q of law, supported by underlying facts
(Flex-Rest, 7/13/06)
- District courts legal conclusions regarding

the requirements of Section 102(g) CAFC
law applied plenary review (Teva,
12/1/11)
Antitrust claims, counterclaims
- Antitrust claims, counterclaims reviewed de novo;

apply CAFC law when claim premised on bringing of
patent infringement suit, vs. elements of antitrust claim
not unique to patent law, apply regional circuit law
(Erbe, 12/9/10; Honeywell, 5/25/07; Dippin Dots, 2/9/07
(counterclaim); Hydril, 1/25/07; Unitherm Food Systems,
7/12/04)
- Questions about whether conduct in procuring or

enforcing a patent is sufficient to strip a patentee
of its immunity from the antitrust laws are decided
based on CAFC law (Honeywell, 5/25/07)
- Relevant market apply regional circuit law (IGT,

12/17/12 (9th Cir.))
- Definition of the relevant market Q of fact

(IGT, 12/17/12)
- Walker Process claim actual fraud upon the PTO

governed by CAFC law; basic elements of antitrust
violation (e.g., relevant product market) defined by
regional circuit law (Dippin Dots, 2/9/07)
428
Assignor estoppel
- Assignor estoppel requires balancing of equities

within sound discretion of trial court, abuse of discretion
(Pandrol, 9/19/05; Checkpoint Systems, 6/20/05)
Best mode
- Best mode violation Q of fact, depends on the

applicants intent, proved by C&C evidence clear error
(In re Cyclobenzaprine, 4/16/12; Green Edge, 9/7/10;
Ajinomoto, 3/8/10; Allvoice Computing, 10/12/07;
Cardiac Pacemakers, 8/31/04; High Concrete Structures,
7/29/04)
- Scope of the invention to which the best mode

applies is a Q of law, reviewed de novo
(Ajinomoto, 3/8/10)
Certificate of correction
- Certificate of correction - 35 USC 255 invalidating a

COC for impermissible broadening; first element,
whether the corrected claims are broader than the original
claims Q of law (since claim construction is a Q of
law); second element, whether the error and its correction
would both be clearly evident to a POS in the art =
factual question (Central Admixture Pharmacy Services,
4/3/07)
Claim construction
- Claim construction exclusively within the province of

the court - CAFC law applied - Q of law Markman (en
banc), reviewed de novo, without deference to the district
429
courts (or ITCs, or BPAIs (PTOs)?) interpretation
Cybor (en banc) (Microsoft, 10/3/13 (ITC); TecSec,
10/2/13 (including means-plus-function claims);
Meadwestvaco, 9/26/13; Sunovion, 9/26/13; Rambus,
9/24/13 (BPAI citing In re Baker Hughes); Bayer
Cropscience, 9/3/13; SkinMedica, 8/23/13; Leo Pharm.,
8/12/13 (BPAI broadest reasonable interpretation);
Taurus IP, 8/9/13; Apple, 8/7/13; 3M Innovative, 8/6/13;
Cheese Systems, 8/6/13 (C.J. Rader: Claim construction
presents only legal questions. citing Cybor);
Plantronics, 7/31/13; Teva, 7/26/13; Charles Machine
Works, 7/26/13; Regents of U. Minn., 6/3/13; Douglas
Dynamics, 5/21/13; Aventis, 5/20/13; Uship, 5/8/13;
Biogen Idec, 4/16/13; Saffran, 4/4/13; Power
Integrations, 3/26/13 (means-plus-function claims);
Synqor, 3/13/13; Aristocrat Techs., 3/13/13; Radio
Systems, 3/6/13; Function Media, 2/13/13; Accent
Packaging, 2/4/13; C.W. Zumbiel, 12/27/12 (BPAI see
below); Deere, 12/4/12; Arcelormittal France, 11/30/12;
Flo Healthcare Solutions, 10/23/12 (PTAB); Energy
Transportation Group, 10/12/12; Sandisk, 10/9/12; In re
Abbott Diabetes Care, 9/28/12 (BPAI); Medtronic,
9/18/12; Woods, 8/28/12; ActiveVideo Networks,
8/24/12; Meyer, 8/15/12; In re Rambus, 8/15/12; 01
Communique Lab, 7/31/12; Grober, 7/30/12; Bancorp
Services, 7/26/12 [claim construction being a pure
issue of law under Cybor (en banc) was the basis for
the CAFC construing terms in the first instance on
appeal]; Toshiba, 6/11/12; In re Baxter, 5/17/12; In re
Montgomery, 5/8/12 (BPAI broadest reasonable
interpretation); Chicago Board, 5/7/12 (means-plus-
function claims); Noah Systems, 4/9/12; Aventis Pharma,
4/9/12; Advanced Fiber, 4/3/12; Ergo Licensing, 3/26/12;
Marine Polymer, 3/15/12 (en banc); Digital-Vending,
3/7/12; MySpace, 3/2/12 [CAFC weigh[s] carefully
the guidance provided by the trial court]; Pioneer Hi-
Bred, 2/28/12 (BPAI interference); Mettler-Toledo,
2/8/12; Thorner, 2/1/12; Falana, 1/23/12; Dealertrack,
430
1/20/12; Powell, 11/14/11; Absolute Software, 10/11/11;
Atlantic Research, 10/6/11; IGT, 10/6/11; Cordance,
9/23/11; Markem-Imaje, 9/9/11; Harari, 9/1/11; AIA
Engg, 8/31/11 (scope of reissue claims); In re Aoyama,
8/29/11 (means-plus-function claims); August Tech.,
8/22/11; CBT Flint Partners, 8/10/11; In re NTP I, 8/1/11
(BPAI reexamination); In re NTP II, 8/1/11 (BPAI);
Eon-Net, 7/29/11; Retractable Techs., 7/8/11 [petition
for rehearing en banc was denied on 10/31/11; J.
Moore, joined by C.J. Rader, dissented from the
denial of the petition, and J. OMalley dissented
separately both dissents argued that the court
should have granted en banc review to reconsider the
de novo standard of review of Cybor (en banc) and
whether deference should be given to the district
courts claim construction the Supreme Court in
Markman held that claim construction is a mongrel
practice, meaning that it is a mixed Q of law and fact
and that deference should be given to the factual
parts]; American Calcar, 6/27/11; Inventio, 6/15/11;
Tessera, 5/23/11 (distinguishing claim construction
standard from infringement standard); Hynix, 5/13/11;
Lexion Medical, 4/22/11; American Piledriving, 3/21/11;
Innovention Toys, 3/21/11; Hologic, 2/24/11; Arlington
Indus., 1/20/11; Lazare Kaplan, 12/22/10; Akamai
Techs., 12/20/10 [vacated and en banc review granted,
on 4/20/11]; Erbe, 12/9/10; Finjan, 11/4/10; Astrazeneca,
11/1/10; Solvay, 10/13/10; Laryngeal Mask, 9/21/10;
Fujitsu, 9/20/10; Spine Solutions, 9/9/10; General
Protecht Group, 8/27/10 (ITC); Ring Plus, 8/6/10;
Adams, 8/5/10; Intervet, 8/4/10; Becton Dickinson,
7/29/10; Telcordia Techs., 7/6/10; Haemonetics, 6/2/10;
Dow Jones, 5/28/10 [adding that the CAFC takes into
account the views of the trial judge . . . and that
common sense dictates that the trial judges view
will carry weight]; Vizio, 5/26/10; Honeywell, 5/25/10;
Bradford, 4/29/10; SiRF Technology, 4/12/10; Power-
One, 3/30/10; Pressure Products, 3/24/10; i4i, 3/10/10;
431
Richardson, 3/9/10 (design patent); Trading Techs.,
2/25/10 [J. Rader emphasized that despite the trial
courts central role for claim construction, including
the evaluation of expert testimony, the CAFC may
not give any deference to the trial courts factual
decisions underlying its claim construction and that
Cybor (en banc) requires a review of the district
courts claim construction without the slightest iota of
deference; D.J. Clark, concurring, commented
separately on the de novo standard of review for
claim construction, warning that it may result in the
unintended consequences of discouraging settlement,
encouraging appeals, and, in some cases, multiplying
the proceedings]; SEB, 2/5/10; Therasense, 1/25/10
5/25/11 (en banc)]; Schindler, 1/15/10; Koninklijke
Philips, 1/5/10 (interpreting the PTOs broadest
reasonable interpretation regulation for interferences);
Ultimax Cement, 12/3/09; Kara Technology, 9/24/09;
Edwards Lifesciences, 9/22/09; Vita-Mix, 9/16/09;
Martek Biosciences, 9/3/09; Callaway, 8/14/09;
Wavetronix, 7/29/09; U. of Pittsburgh, 7/23/09; Gemtron,
7/20/09; Ecolab, 6/9/09 (also specifying PH disclaimer);
Agilent Techs., 6/4/09; Paragon Solutions, 5/22/09;
Epistar, 5/22/09 (ITC); Linear Tech., 5/21/09 (ITC); Erbe
Elektromedizin, 5/19/09 (ITC); Abbott Labs, 5/18/09;
Every Penny Counts, 4/30/09; Felix, 4/10/09; Cordis,
3/31/09; ICU Medical, 3/13/09; Boston Scientific
Scimed, 1/15/09; Welker Bearing, 12/15/08; Ilor,
12/11/08; Netcraft, 12/9/08; Net Moneyin, 10/20/08;
Kyocera Wireless, 10/14/08; Cohesive Techs., 10/7/08;
Howmedica, 9/2/08; 800 Adept, 8/29/08 [citing Cybor
for the proposition: Though in claim construction
matters we give due weight to a trial courts claim
construction, ultimately claim construction is a matter
of law the final responsibility for which lies with us];
DSW, 8/19/08; Voda, 8/18/08; U. Texas, 7/24/08; Roche
Palo Alto, 7/9/08; Tip Systems, 6/18/08; Helmsderfer,
432
6/4/08; MetLife, 6/2/08; Lucent Techs., 5/8/08;
Decisioning.com, 5/7/08; PSN Illinois, 5/6/08; Finisar,
4/18/08; Zenith Electronics, 4/16/08; Symantec, 4/11/08;
MEC, 4/1/08; Ortho-McNeil, 3/31/08; Regents of U.
Cal., 2/28/08; Chamberlain Group, 2/19/08; Miken
Composites, 2/6/08; Tivo, 1/31/08 [where the district
court relied on extrinsic evidence (expert testimony
and a technical dictionary), the CAFC stated:
Although we have characterized claim construction
as a question of law even when it involves competing
presentations of extrinsic evidence, . . . we recognize
that there is substantial force to the proposition that
such a conclusion is indistinguishable in any
significant respect from a conventional finding of fact,
to which we typically accord deference. (citing Cybor
and Amgen, 8/3/06, including the various opinions
dissenting from and concurring in denial of rehearing
en banc, as addressed below; Judges Gajarsa, Linn
and Dyk concurred in Amgen, stating that the
appropriate case for en banc review of the Cybor issue
is where, like in Tivo, the district court relied on
conflicting expert testimony to interpret the claims
when the claims, written description and PH did not
resolve the claim construction in the field of the art);
perhaps with this in mind, the Tivo court added that if
it had treated the district courts ruling as a finding of
fact, it would have upheld the ruling in light of the
more deferential clear error standard applicable to
factual findings]; Oatey, 1/30/08 [claim construction
reviewed de novo including any factual findings on
which the claim construction depends]; Trimed,
1/29/08; Innogenetics, 1/17/08; Baldwin Graphic
Systems, 1/15/08; Sinorgchem, 12/21/07; Stumbo,
11/28/07; Elbex Video, 11/28/07; Z4 Technologies,
11/16/07; U.S. Philips, 11/2/07; Osram GMBH,
10/31/07; In re Translogic Technology, 10/12/07;
Allvoice Computing, 10/12/07; Monsanto, 10/4/07; Cias,
9/27/07; Verizon, 9/26/07; Warner-Lambert, 9/21/07; In
433
re Nuijten, 9/20/07; Acco Brands, 9/12/07; L.B. Plastics,
9/12/07; Gillespie, 9/6/07; In re Trans Texas Holdings,
8/22/07; SafeTCare Mfg., 8/3/07; Motionless Keyboard,
5/29/07; Pods, 4/27/07; In re Omeprazole, 4/23/07;
Intamin, 4/18/07; Acumed, 4/12/07; MBO Labs, 1/24/07;
Ortho-McNeil, 1/19/07; E-Pass Technologies, 1/12/07;
Abbott Labs, 1/5/07; Ventana Medical Systems,
12/29/06; Planet Bingo, 12/13/06; Depuy Spine,
11/20/06; Optivus Tech., 11/16/06; Abraxis Bioscience,
11/15/06; Aero Products, 10/2/06; Sram, 10/2/06; Cook
Biotech, 8/18/06; Conoco, 8/17/06; Serio-Us Industries,
8/10/06; Amgen, 8/3/06 [petitions for panel rehearing
and rehearing en banc were denied in an order issued
11/24/06; four judges (Michel, Rader, Newman and
Moore) dissented, asserting that Cybors rule of de
novo review of claim construction (i.e., that the
district courts claim construction receives no
deference) should be reconsidered - C.J. Michel and J.
Rader asserted that the time has come for us to re-
examine Cybors no deference rule the claim
construction question cannot be answered without
assessing, at least implicitly, what the average artisan
knew and how she thought about the particular
technology when the patent claims were written and
that trial judges are arguably better equipped than
appellate judges to make these factual determinations,
especially in close cases; J. Newman dissented
separately, stating that the court should speak en
banc to clarify that it is appropriate, and necessary, to
look at what has in fact been invented, prosecuted,
and patented, and construe the claims accordingly . . .
[I]f the meaning [of a claim term] is recognized as a
case-specific finding of fact, appellate review warrants
deference to the trier of fact, a deference here lacking
. . . The Federal Circuits position that patent
interpretation requires more rigorous appellate
review than other fact/law issues has not well
withstood the test of experience. It is time to reopen
434
the question and to rethink, en banc, the optimum
approach to accuracy, consistency, and predictability
in the resolution of patent disputes; there also were
two concurrences, one by J. Lourie and the other by
J. Gajarsa, J. Linn and J. Dyk, who asserted that
although not endorsing the en banc decision in Cybor,
and willing to reconsider limited aspects of Cybor, the
appropriate case in which to do so, which was not the
present case, is when the language of the claims, the
written description, and the prosecution history on
their face did not resolve the question of claim
interpretation, and the district court found it
necessary to resolve conflicting expert evidence to
interpret particular claim terms in the field of the
art vs. No deference is due a district courts legal
interpretation of the claim language, written
description, and prosecution history that an appellate
court is equally competent to interpret; On 5/14/07,
the U.S. Supreme Court denied Amgens petition for
certiorari]; Flex-Rest, 7/13/06; LG Electronics, 7/7/06;
Honeywell, 6/22/06; Primos, 6/14/06; Panduit, 6/12/06;
Inpro II Licensing, 5/11/06; Lava Trading, 4/19/06; On
Demand Machine, 3/31/06; Atofina, 3/23/06;
Schoenhaus, 3/15/06; Purdue Pharma, 2/1/06; IPXL
Holdings, 11/21/05; JVW Enterprises, 10/3/05 (means-
plus-function claims); Nystrom, 9/14/05; Pause
Technology, 8/16/05; North American Container,
7/14/05; Sandisk, 7/8/05; Boss Control, 6/8/05; Syntex,
5/18/05; PC Connector Solutions, 5/6/05; Playtex,
3/7/05; Lisle, 2/11/05; Gemstar, 9/16/04; Irdeto Access,
9/14/04; Power Mosfet Techs., 8/17/04; TI Group,
6/30/04 (infringement and invalidity); Liquid Dynamics,
1/23/04; CFMT, 11/12/03; Merck 10/30/03; Deering,
10/17/03); See also Ilight Technologies, 4/20/10
(nonprecedential whether PH disclaimer applies is a Q
of law reviewed de novo)
435
- Means-plus-function claims whether the
limitation should be regarded as a means-plus-
function limitation, as well as the function and
corresponding structure Qs of law, reviewed de
novo (Ibormeith IP, 10/22/13 (whether adequate
disclosure of structure, algorithm); TecSec,
10/2/13; Power Integrations, 3/26/13; Inventio,
6/15/11 (same as Trimed); Welker Bearing,
12/15/08; Trimed, 1/29/08 (determining whether
the relevant claim language contains a means-plus-
function limitation); Applied Medical Resources,
5/15/06; JVW Enterprises, 10/3/05; Gemstar,
9/16/04; Lighting World, 9/3/04; Linear
Technology, 6/17/04; Nomos, 2/4/04)
- Equivalents substantiality of differences

between patented structure and accused
structure - Q of fact (Applied Medical
Resources, 5/15/06 (dissent); On Demand
Machine, 3/31/06)
- No deference to district courts construction

precedent establishes that no deference is owed to
the district courts claim construction or to any
underlying factual findings predicate to construing
the meaning and scope of the claims (Advanced
Fiber, 4/3/12 (reviewed without formal deference
to the district court, although we give careful
consideration to that courts decision); Marine
Polymer, 3/15/12 (en banc) (claim construction
reviewed without formal deference on appeal,
although we give respect to the judgments of the
district courts); 800 Adept, 8/29/08 (due weight
given to a trial courts claim construction); Oatey,
1/30/08; Gillespie, 9/6/07); See also Cooper
Notification, 8/30/13 (nonprecedential the CAFC
stating that we recognize and benefit from the
436
expertise and vantage point of the trial court
judge citing Marine Polymer)
- PTOs claim construction CAFC not bound de

novo review (Rambus, 9/24/13 (citing In re Baker
Hughes, and In re Rambus for proposition that
[w]hile claims are generally given their broadest
possible scope during prosecution, the Boards
review of the claims of an expired patent is similar
to that of a district courts review.); C.W.
Zumbiel, 12/27/12 (ruling that although the PTO
gives claims the broadest reasonable interpretation
consistent with the written description, claim
construction by the PTO is a Q of law reviewed de
novo, just as the CAFC reviews claim construction
by the district court citing In re Baker Hughes);
Flo Healthcare Solutions, 10/23/12 (see additional
views of J. Plager and J. Newman); Pioneer Hi-
Bred, 2/28/12 (construction and comparison of the
claims in an interference); Sram, 10/2/06); See also
Rambus, 6/28/13 (nonprecedential rejecting the
BPAIs construction of signal as unreasonably
overbroad where the specification made clear that
the term was used in a narrower sense)
- Settlement agreement parties agreed that the

district courts claim construction order would
determine future infringement; thus, no de novo
review by the CAFC (Semitool, 4/6/06)
Damages, attorney fees, costs, interest
- Damages damages in patent cases regional circuit law

is applied to procedural issues and CAFC law to
substantive and procedural issues pertaining to patent law
Wordtech Sys., Aero Products (Whitserve, 8/7/12 (2nd
Cir.); Finjan, 11/4/10; Aero Products, 10/2/06)
437
- Damages Q of fact (Integrated Tech., 11/4/13 (jury
amount of damages reviewed for substantial evidence);
Power Integrations, 3/26/13; Transocean, 11/15/12
(affirming the jurys damages award that was supported
by substantial evidence, even though the CAFC may not
have awarded such a high royalty); Powell, 11/14/11
(same as Lucent); Lucent, 9/11/09 (amount of reasonable
royalty damages awarded by jury substantial
evidence); Minks, 10/17/08 (amount of reasonable
royalty damages); Golight, 1/20/04; Ericsson, 12/9/03;
Ferguson, 12/4/03; Utah Products, 12/4/03)
Damages - generally
- Damages award
- Choice of damages theory, methodology for

calculating damages abuse of discretion
(ActiveVideo Networks, 8/24/12; Lucent,
9/11/09; Golden Blount, 2/15/06)
- Broad deference given to the district court -

in reviewing damages awards in patent
cases, the CAFC gives broad deference to
the conclusions reached by the trier of fact
(Whitserve, 8/7/12 (district courts are given
broad discretion to interpret verdict forms);
Telcordia Techs., 7/6/10 (district court was
given broad discretion in interpreting jury
verdict form as encompassing only damages
for past infringement); Mars, 6/2/08;
Amado, 2/26/08 (whether the damages
amount was a reasonable exercise of the
district courts discretion); Monsanto,
5/24/07); See also Heeling Sports, 4/3/09
438
(nonprecedential methodology for
calculating a reasonable royalty)
- Abuse of discretion reviewed for

erroneous conclusion of law, clearly
erroneous factual findings, or a clear
error of judgment amounting to an
abuse of discretion Rite-Hite,
Golight (Siemens, 2/24/11 (abuse of
discretion where the district court
committed legal error in not awarding
damages for infringing products made
before patent expiration); Telcordia
Techs., 7/6/10; Mars, 6/2/08; Amado,
2/26/08; Monsanto, 2/5/08)
- Constructive notice (marking) under Section

287(a) Q of fact (Funai, 9/1/10)
- District court - patentee bears BOP by a

preponderance of the evidence (Union
Carbide, 10/3/05)
- Factual findings regarding damages clear

error; jury findings substantial evidence
(Integrated Tech., 11/4/13 (jury amount of
damages); Taurus IP, 8/9/13 (district courts
findings regarding the sufficiency of proof
for damages - clear error (7th Cir.)); Power
Integrations, 3/26/13 (presuming that the
jurys damages award was based on direct
infringement, stating that when the jury
returns a general verdict (on damages), the
CAFC presumes the existence of fact
findings implied from the jurys having
reached that verdict citing 3rd and CAFC
law); ActiveVideo Networks, 8/24/12 (jury);
439
Lucent, 9/11/09 (jury); Acco Brands,
9/12/07 (jury); Golden Blount, 2/15/06)
- Jurys damages award standard of review

for upholding or setting aside damages
award (Power Integrations, 3/26/13 (3rd Cir.
jurys damages award is not disturbed
unless unsupported by substantial evidence,
or is contrary to the limits established by law
CAFC must honor the jurys determination
of damages to the extent supported by
substantial evidence); Whitserve, 8/7/12
(damages award was not supported by
substantial evidence, where the district court
failed to scrutinize the evidence on JMOL
motion); Lucent, 9/11/09; Revolution
Eyewear, 4/29/09 (9th Cir.); Monsanto,
5/24/07; DSU Medical, 12/13/06; Union
Carbide, 10/3/05)
- Motion for remittitur of damages

abuse of discretion (LaserDynamics,
8/30/12 (5th Cir.))
- Jurys damages award must be upheld

unless the amount is grossly excessive
or monstrous, clearly not supported
by the evidence, or based only on
speculation or guesswork (Integrated
Tech., 11/4/13; i4i, 3/10/10 (the
CAFC was unable to reach the issue
regarding the jurys damages award of
$200 million, where the infringer did
not file a pre-verdict JMOL motion on
damages; the CAFC had to review the
verdict under the much narrower,
highly deferential standard applicable
to denials of new trial motions on
440
damages, which the infringer did not
meet); Revolution Eyewear, 4/29/09
(9th Cir.)), clearly not supported by
the evidence or based only on
speculation or guesswork (i4i, 3/10/10
(same as above); Lucent, 9/11/09;
Monsanto, 5/24/07)
- Subsidiary decisions regarding damages

abuse of discretion (Union Carbide, 10/3/05;
Insituform Techs., 10/4/04)
Types of damages
- Types of damages legally compensable for patent

infringement CAFC law applied without
deference Rite-Hite (Power Integrations,
3/26/13)
- Lost profits Q of law, reviewed de novo

(Siemens, 2/24/11; Depuy Spine, 6/1/09; Cohesive
Techs., 10/7/08; Mars, 6/2/08; American Seating,
1/29/08; Mitutoyo, 9/5/07; Wechsler, 5/18/07;
DSU Medical, 12/13/06; Depuy Spine, 11/20/06;
Poly-America, 9/14/04; Juicy Whip, 9/3/04)
- Availability of lost profits is Q of law for the

court, not the jury; thus, only after the court
has decided, as a matter of law, that lost
profits are available does the jury then get to
determine the amount of those lost profits
(Wechsler, 5/18/07)
- Causation of lost profits (i.e., under the but

for factors) is a classical jury question
Brooktree (Versata Software, 5/1/13)
441
- Existence of noninfringing substitute Q of
fact, reviewed for clear error (Cohesive
Techs., 10/7/08)
- Reasonable royalties abuse of discretion

(Fresenius, 9/10/09 (defined, citing Mitutoyo);
Mitutoyo, 9/5/07 (defined); Harris, 8/5/05); See
also In re Electro-Mechanical Indus., 12/22/09
(nonprecedential - defined)
- Reasonable royalty damages amount Q of

fact (Minks, 10/17/08)
- Reasonable royalty calculation the

methodology (i.e., accounting method) for
damages reviewed for an abuse of discretion
and the damage amount reviewed for clear
error (Mars, 6/2/08)
- Supplemental damages - for post-verdict

infringement abuse of discretion - Amado
(Synqor, 3/13/13)
- Enhanced damages 284 - abuse of discretion

(Whitserve, 8/7/12 (abuse of discretion where
damages denied without independent justification;
defined); Bard, 2/10/12 [vacated in part after
remanded on 6/14/12]; Powell, 11/14/11;
Spectralytics, 6/13/11; Funai, 9/1/10; i4i, 3/10/10
(no abuse of discretion in enhancing $200 million
damages award by $40 million, where the district
court made detailed factual findings based on the
Read v. Portec factors); Acco Brands, 9/12/07;
Golden Blount, 2/15/06; NCube, 1/9/06; Union
Carbide, 10/3/05 (enhanced damages for
exceptional case); Harris, 8/5/05;
MercExchange, 3/16/05; Fuji Photo, 1/14/05); See
also In re Electro-Mechanical Indus., 12/22/09
442
(nonprecedential no abuse of discretion in
doubling damage award based on willfulness)
- Costs FRCP 54(d) and 28 USC 1920
- Award of costs under Rule 54(d) and

Section 1920 regional circuit law applied
abuse of discretion (Synopsys, 11/23/11
(burden is on the losing party to demonstrate
why the costs should not be awarded (9th
Cir.)); Shum, 12/22/10 (presumption in
favor of awarding costs to the prevailing
party (9th Cir.)); Ortho-McNeil, 6/10/09 (4th
Cir.))
- Abuse of discretion, but discretion

limited to awarding costs within scope
of 28 USC 1920 (Synopsys, 11/23/11;
Summit Technology, 1/26/06)
- Whether expense recoverable

under 28 USC 1920 issue of
statutory construction de
novo review, apply regional
circuit law (Synopsys,
11/23/11; Summit Technology,
1/26/06)
- Bifurcated inquiry CAFC and regional

circuit law (Power Mosfet Techs., 8/17/04)
- Prevailing party defining term for

purposes of patent litigation CAFC law
applied Q of law de novo review (Shum,
12/22/10)
- Prejudgment interest grant or denial abuse of

discretion (Energy Transportation Group,
443
10/12/12; Whitserve, 8/7/12 (abuse of discretion
where the district court specifically instructed the
jury not to award interest on damages, and the
court gave no further analysis or justification for
denying interest); Sanofi-Aventis, 10/18/11 (abuse
of discretion defined); Group One, 5/16/05); See
also Hildebrand, 5/7/09 (nonprecedential)
- Post-judgment interest application of FRAP 37

law of the regional circuit applied (Depuy Spine,
6/1/09 (1st Cir.); Mars, 3/9/09 (Order) (3rd Cir.))
- Remittur of excessive damages - procedural issue,

not unique to patent law abuse of discretion
(Power Integrations, 3/26/13 (3rd Cir. district
courts decision on remittitur cannot be disturbed
absent a manifest abuse of discretion); Revolution
Eyewear, 4/29/09 (decision against remittitur is
reversed only on a showing of clear abuse of
discretion (9th Cir.)); Imonex, 5/23/05)
- Amount of remittitur (Power Integrations,

3/26/13 (3rd Cir. whether it exceeds the
maximum award supported by the evidence
reviewed for substantial evidence))
Attorney and expert fees
- Attorney fees award exceptional case - 285 CAFC

law applied; two-step process: whether the prevailing
party proved by C&C evidence that the case is
exceptional -- Q of fact -- clear error; decision to award
attorney fees, or whether the fee award, amount was
appropriate and justified -- abuse of discretion; legal
conclusions and legal standard applied by the district
court reviewed de novo, without deference (Integrated
Tech., 11/4/13; Monolithic Power Systems, 8/13/13;
444
Taurus IP, 8/9/13 (noting that because of the reputational
and economic impact of sanctions, the CAFC must
carefully examine the record when reviewing an
exceptional case finding citing Medtronic Navigation);
Highmark, 8/7/12 (standard for awarding attorney fees
for bad faith litigation - see below and see also J. Mayer,
dissenting); Bard, 2/10/12 [vacated in part after
remanded on 6/14/12]; Marctec, 1/3/12; Powell,
11/14/11; Eon-Net, 7/29/11; Old Reliable Wholesale,
3/16/11; Ilor, 1/11/11 (reversing attorney fees award
where the patentees claim construction was not
objectively baseless); Lazare Kaplan, 12/22/10;
Advanced Magnetic Closures, 6/11/10; Leviton Mfg.,
5/28/10; Aspex Eyewear, 5/24/10; Taltech, 5/12/10;
Medtronic Navigation, 4/26/10; Forest Group, 12/28/09;
Wedgetail, 8/12/09 (defining abuse of discretion); Depuy
Spine, 6/1/09; Revolution Eyewear, 4/29/09 (finding of
no willful infringement was not clearly erroneous); ICU
Medical, 3/13/09 (fact findings not shown to be clearly
erroneous in awarding attorney fees, including finding
based on an honest mistake); Takeda, 12/8/08 (attorney
fees awarded under Section 271(e)(4)); Qualcomm,
12/1/08; Minks, 10/17/08; Research Corp. Techs., 8/1/08;
Scanner Techs., 6/19/08 (clear error and abuse of
discretion where the district court erred in finding IC);
Nilssen, 6/17/08 (clear error and abuse of discretion
defined); Innovation Techs., 6/16/08 (attorney fee award
was vacated and the case remanded after the district court
failed to make any fact findings as to why the case was
exceptional under section 285); Computer Docking
Station, 3/21/08; Monsanto, 2/5/08; Innogenetics,
1/17/08; Digeo, 11/1/07; Adenta, 9/19/07; Acco Brands,
9/12/07; In re Omeprazole, 4/23/07; Propat Intl, 1/4/07;
Highway Equipment, 11/21/06; Serio-Us Industries,
8/10/06; Agfa, 6/26/06; Kao, 3/21/06; Golden Blount,
2/15/06; NCube, 1/9/06; Fieldturf Intl, 1/5/06; Perricone,
12/20/05; IPXL Holdings, 11/21/05; Intl Rectifier,
9/23/05; MEMC Electronic, 8/22/05; Frazier, 8/2/05;
445
Imonex, 5/23/05; Evident, 2/22/05; Junker, 2/8/05;
Stephens, 12/29/04 (clear error defined); Franks Casing,
11/30/04; Juicy Whip, 9/3/04; Power Mosfet Techs.,
8/17/04; Glaxo, 7/27/04 (abuse of discretion defined);
Metabolite Labs, 6/8/04; Inland Steel, 4/9/04; Q-Pharma,
3/8/04; Golight, 1/20/04; Sulzer, 2/14/04; Phonometrics,
11/26/03; Deering, 10/17/03); See also Sanctions
- Abuse of discretion a district court abuses its

discretion when its decision is based on clearly
erroneous findings of fact, is based on erroneous
interpretations of the law, or is clearly
unreasonable, arbitrary or fanciful Cybor (Bard,
2/10/12 [vacated in part after remanded on
6/14/12]; Ilor, 1/11/11; Wedgetail, 8/12/09;
Takeda, 12/8/08; Nilssen, 6/17/08; MEMC
Electronic, 8/22/05; Glaxo, 7/27/04)
- Clear error a finding is clearly erroneous when,

despite some supporting evidence, the reviewing
court on the entire evidence is left with the definite
and firm conviction that a mistake has been
committed (Nilssen, 6/17/08; Digeo, 11/1/07;
MEMC Electronic, 8/22/05)
- De novo review of whether the district court

applied proper legal standard (Marctec, 1/3/12;
Digeo, 11/1/07 (legal standard under 285); IPXL
Holdings, 11/21/05; Stephens, 12/29/04; Glaxo,
7/27/04)
- Prevailing party apply CAFC law - de novo

review (Shum, 12/22/10 (costs under Rule 54(d));
In re Omeprazole, 4/23/07; RFR Industries,
2/16/07; Highway Equipment, 11/21/06; Inland
Steel, 4/9/04)
446
- Exceptional case finding based on bad faith
litigation (claim or defense) threshold objective
prong is a Q of law based on underlying mixed
questions of law and fact determination is made
by the court as a matter of law and is reviewed de
novo, without deference Bard; factual findings
with regard to subjective bad faith prong clear
error review (Taurus IP, 8/9/13; Checkpoint
Systems, 3/25/13 (the CAFC may conduct a
retrospective assessment of the merits of the entire
litigation to determine whether the record
supports a reasonable argument as to the facts and
the law citing Highmark); Highmark, 8/7/12 (see
also J. Mayer, dissenting rejecting Bard, as
exceptional case finding is a Q of fact, subject to
clear error review, and thus the district courts
determination regarding the objectively baseless
(or reasonableness) prong for bad faith litigation
should be given deference) [On 12/6/12, in a per
curiam order, the CAFC (6-5) denied rehearing
en banc; J. Dyk, joined by J. Newman,
concurred with the denial, opining that the
district courts objective baselessness (or
reasonableness) determination is reviewed de
novo, and stating that the question in this case
is whether claim construction, which is a
question of law in a merits determination . . .
should nonetheless be treated as something else
in an objective reasonableness determination;
J. Moore, J. Rader, J. OMalley, J. Reyna and
J. Wallach, each of them part of two separate
dissenting opinions, dissented from the denial,
opining that the objective baselessness
determination should be reviewed for clear
error, rather than de novo - and more generally
that all elements of the exceptional case
determination, including objective baselessness,
should be reviewed for clear error with
447
deference given to the district court judge on
factual determinations; J. Mayer (who
dissented in the panel opinion) did not
participate in the decision regarding rehearing
en banc; On 10/1/13, the U.S. Supreme Court
granted certiorari, and the question presented
is: Whether a district courts exceptional case
finding under Section 285, based on its
judgment that a suit is objectively baseless, is
entitled to deference])
- Dismissal with prejudice - effect on the availability

of attorney fees apply CAFC law Q of law, de
novo review (vs. lack of uniformity in regional
circuits on availability of attorney fees after
dismissal with prejudice) (RFR Industries, 2/16/07
(dismissal without prejudice); Highway
- Expert witness fees under the district courts inherent

authority - abuse of discretion (Marctec, 1/3/12)
Design patents
- Design patents design ornamental or functional? Q of

law clear error review (PHG Technologies, 11/17/06)
- Design patent infringement ordinary observer and point

of novelty tests are factual inquiries undertaken by the
fact finder, after the claim is construed by the court
(Egyptian Goddess, 8/29/07 [On 9/22/08, the en banc
CAFC in Egyptian Goddess eliminated the point of
novelty test, and held that the ordinary observer
test is the sole test for determining design patent
infringement])
Disclosure duty in SSOs
448
- Existence of a duty to disclose patents in standards-
setting organizations (SSOs) Q of law, with factual
underpinnings Rambus (Qualcomm, 12/1/08)
Double patenting
- Double patenting Q of law, de novo review, without

deference (Eli Lilly, 8/24/12; Sun, 7/28/10; Boehringer
Ingelheim, 1/25/10; Amgen, 9/15/09; Procter & Gamble,
5/13/09; In re Fallaux, 5/6/09; Takeda, 4/10/09; In re
Basell, 11/13/08; Pfizer, 3/7/08; Astrazeneca, 7/23/07;
Perricone, 12/20/05)
- De novo review is appropriate because double

patenting is a matter of what is claimed, and
therefore is treated like claim construction upon
appellate review (Amgen, 9/15/09; Astrazeneca,
7/23/07)
- Non-statutory (obviousness-type) double patenting

Q of law, de novo review, without deference,
based on underlying findings of fact reviewed for
clear error (district court) or substantial evidence
(BPAI) In re Longi (In re Hubbell, 3/7/13; Eli
Lilly, 8/24/12; Otsuka, 5/7/12; Sun, 7/28/10;
Boehringer Ingelheim, 1/25/10; Amgen, 9/15/09;
Procter & Gamble, 5/13/09)
- One-way or two-way analysis applies? Q of

law, reviewed without deference (In re
Hubbell, 3/7/13; In re Fallaux, 5/6/09; In re
Basell, 11/13/08)
- Section 121 safe harbor whether the
requirements of Section 121 have been satisfied Q of law without
deference Bristol-Myers (St. Jude Medical, 9/11/13)
449
Enablement
- Enablement Q of law with factual underpinnings (e.g.,

undue experimentation, In re Wands factors) factual
findings, issues are reviewed for clear error (definite and
firm conviction that a mistake has been made) or
substantial evidence (jury), while the ultimate legal
conclusion is reviewed de novo, without deference AK
Steel (Teva, 7/26/13; Wyeth, 6/26/13; In re Morsa,
4/5/13; Cephalon, 2/14/13; Transocean, 11/15/12;
Magsil, 8/14/12; In re Antor Media, 7/27/12; Streck,
1/10/12 (jury trial JMOL of enablement at the close of
evidence); In re NTP I, 8/1/11 (whether prior art
reference was enabling); Green Edge, 9/7/10;
Transocean, 8/18/10; Alza, 4/26/10; Janssen, 9/25/09;
Martek Biosciences, 9/3/09 (evidence supported jurys
implicit finding that undue experimentation not required
to practice dependent claims, as well the jurys ultimate
conclusion that invalidity was not proven by C&C
evidence); In re Gleave, 3/26/09 (prior art reference
enabled claimed antisense inhibitors for anticipation);
Impax Labs, 10/3/08 (prior art patent failed to enable the
claimed invention for anticipation); Sitrick, 2/1/08;
Monsanto, 10/4/07; Automotive Techs., 9/6/07; Ormco,
8/24/07; Liebel-Flarsheim, 3/22/07; Amgen, 8/3/06;
Liquid Dynamics, 6/1/06; Falkner, 5/26/06 (BPAI,
interference); Old Town Canoe, 5/9/06; Invitrogen,
11/18/05; Sorensen, 10/31/05; Warner-Lambert, 8/11/05;
Koito Mfg., 8/23/04 (jury); Chiron, 3/30/04; CFMT,
11/12/03; Elan, 10/2/03)
- Printed publication Q of law, with underlying

fact findings (Impax Labs, 10/3/08; In re Elsner,
8/16/04)
450
- Q of law, but amenable to resolution by jury if
issues are factual in nature (Martek Biosciences,
9/3/09 (evidence supported jurys implicit finding
of no undue experimentation); BJ Services, 8/6/03)
- Undue experimentation Q of law, based on

underlying facts (Northpoint, 6/28/05, dissent)
- Skill level in the art Q of fact - clear error

(Alza, 4/26/10)
Equitable defenses laches, equitable estoppel,

waiver, unclean hands
- Laches and equitable estoppel abuse of discretion

A.C. Aukerman (Integrated Tech., 11/4/13 (no abuse of
discretion in not finding laches, where the patentees
delay was not unreasonable); Radio Systems, 3/6/13
(district court abused discretion concluding the patentee
was equitably estopped with respect to later issued
patent; see also J. Newman, dissenting); Hor, 11/14/12
(laches decision rendered on SJ is reviewed for an abuse
of discretion unless genuine issues of material fact
preclude SJ Ultimax Cement); Aspex Eyewear,
5/24/10; Ultimax Cement, 12/3/09 (abuse of discretion
standard need not be applied where genuine issues of
material fact precluded SJ of laches); Qualcomm,
12/1/08; Serdarevic, 7/16/08 (abuse of discretion
defined); Symantec, 4/11/08; Intirtool, 5/10/04)
- Unclean hands defense to laches equitable

defense within the sound (broad) discretion of the
district court Princess Cruises (Hor, 11/14/12)
- Prosecution laches equitable defense abuse of

discretion, while legal standard applied reviewed
451
de novo (Cancer Research, 11/9/10; Symbol,
9/9/05)
- Waiver relinquishment of a known right abuse of

discretion (Qualcomm, 12/1/08 (waiver of right to assert
patents against those practicing standard where the
patentee breached its duty to disclose patents to a
standards-setting organization; also defining abuse of
discretion standard, citing A.C. Aukerman))
- Unclean hands equitable defense trial court has broad

discretion Princess Cruises (Hor, 11/14/12)
False marking
- False marking 35 USC 292 clear error (Forest

Group, 12/28/09 (clear error defined))
- False marking fines abuse of discretion Forest

Group (Presidio Components, 12/19/12)
Incorporation by reference
- Incorporation by reference whether and to what extent

material has been incorporated by reference into a host
document Q of law - reviewed de novo, using the
reasonable POS in the art standard (Apple, 8/7/13;
Hollmer, 6/7/12; Harari, 9/1/11; Harari, 4/19/10
(reasonable examiner standard applied for applications,
i.e., whether the identity of the incorporated reference is
clear to a reasonable examiner in light of the documents
presented); Verizon, 4/16/10; Callaway, 8/14/09; Zenon
Environmental, 11/7/07, see also J. Newman, dissenting
the question of what material would be understood as
incorporated by reference, i.e., based on the reasonable
POS in the art standard, is a Q of fact the question of
452
what would be reasonably conveyed to a person skilled
in the relevant art is a classical Q of fact Bilstad (WD
case, whether patentee had possession of invention); the
majority ignored the district courts extensive fact
findings, which have not been shown to be clearly
erroneous district courts finding ends the inquiry);
Cook Biotech, 8/18/06)
- In making the above determination, the standard of

one reasonably skilled in the art should be used to
determine whether the host document describes the
material to be incorporated by reference with
sufficient particularity Advanced Display (Zenon
Environmental, 11/7/07)
- Anticipation context, which is a Q of fact when

both, separate inquiries are at issue, the courts role
is to determine what material in addition to the
host document constitutes the single reference,
while the fact finders role is to determine whether
the single reference describes the claimed
invention Advanced Display (Zenon
Indefiniteness
- Indefiniteness 35 USC 112, 2 whether a claim

reasonably apprises those skilled in the art of its scope is
Q of law, reviewed de novo, without deference drawn
from the court being the construer of the claims; factual
findings in support of legal conclusion reviewed for clear
error (Ibormeith IP, 10/22/13 (means-plus-function
claim, and whether adequate corresponding structure,
disclosure of algorithm citing Typhoon Touch); Teva,
7/26/13; Biosig Instruments, 4/26/13; Function Media,
2/13/13; ePlus, 11/21/12; Noah Systems, 4/9/12; Ergo
Licensing, 3/26/12; HTC, 1/30/12; Typhoon Touch,
453
11/4/11; IGT, 10/6/11; Star Scientific, 8/26/11; Wellman,
4/29/11; Spansion, 12/21/10 (ITC); Green Edge, 9/7/10;
Funai, 9/1/10; Telcordia Techs., 7/6/10; Haemonetics,
6/2/10; Honeywell, 5/25/10; Hearing Components,
4/1/10; Power-One, 3/30/10; Enzo Biochem, 3/26/10;
Trading Techs., 2/25/10; Ultimax Cement, 12/3/09;
Amgen, 9/15/09; Cordis, 3/31/09; Kinetic Concepts,
2/2/09; Net Moneyin, 10/20/08; Technology Licensing,
10/10/08; Praxair, 9/29/08; Star Scientific, 8/25/08;
MEC, 4/1/08; Allvoice Computing, 10/12/07; Young,
6/27/07; Biomedino, 6/18/07; Aero Products, 10/2/06;
Energizer Holdings, 1/25/06; IPXL Holdings, 11/21/05;
Cross Medical Prods., 9/30/05; Marley Mouldings,
8/8/05; Datamize, 8/5/05; Home Depot, 6/16/05; Hoffer,
4/22/05; Howmedica, 3/28/05; Glaxo, 7/27/04; Bancorp,
3/1/04; Utah Products, 12/4/03; BJ Services, 8/6/03)
- Q of law, but amenable to resolution by jury if

issues are factual in nature (Green Edge, 9/7/10;
Praxair, 9/29/08 (rejecting expert testimony
supporting indefiniteness because indefiniteness
is a legal rather than a factual question); BJ
Services, 8/6/03)
Inequitable conduct
- Inequitable conduct both materiality and intent to

deceive are Qs of fact, and must be proven by C&C
evidence the underlying threshold findings of C&C
evidence of materiality and intent to deceive are
reviewed deferentially for clear error thus, not reversed
on appeal unless the CAFC has a definite and firm
conviction that a mistake has been made; the overall
conclusion of IC abuse of discretion (Intellect Wireless,
10/9/13; Novo Nordisk, 6/18/13; Astrazeneca, 12/14/12;
1st Media, 9/13/12; Aventis Pharma, 4/9/12; Powell,
11/14/11; Cordis, 9/28/11; American Calcar, 6/27/11;
454
*Therasense, 5/25/11 (en banc) (district courts factual
findings regarding what reasonable inferences may be
drawn from the evidence reviewed for clear error);
Lazare Kaplan, 12/22/10; Cancer Research, 11/9/10;
Golden Hour Data Systems, 8/9/10; Ring Plus, 8/6/10;
Orion, 5/17/10; Taltech, 5/12/10; Avid Identification
Systems, 4/27/10; Ariad, 3/22/10 (en banc); Trading
Techs., 2/25/10; Therasense, 1/25/10 [vacated];
Astrazeneca, 9/25/09 (once IC determined, the district
court may in its discretion declare the patent permenantly
unenforceable); Larson Mfg., 3/18/09 (defining clear
error and abuse of discretion); Rothman, 2/13/09
(standard of review applied to jury verdict of IC differs
from the usual case); Rentrop, 12/18/08 (compelling
evidence of materiality and intent to deceive required to
overturn the district courts holding of no IC);
Technology Licensing, 10/10/08; Cohesive Techs.,
10/7/08; Johns Hopkins, 10/2/08; Praxair, 9/29/08; Star
Scientific, 8/25/08 (district courts findings on materiality
and intent to deceive were clearly erroneous); Research
Corp. Techs., 8/1/08; Eisai, 7/21/08 (vs. SJ standard is
without deference); Scanner Techs., 6/19/08; Aventis
Pharma, 5/14/08; Pfizer, 3/7/08; Monsanto, 1/25/08;
Innogenetics, 1/17/08; Nilssen, 10/10/07; Adenta,
9/19/07; Acco Brands, 9/12/07; Young, 6/27/07;
Honeywell, 5/25/07; McKesson, 5/18/07; In re
Omeprazole, 4/23/07; eSpeed, 3/20/07 (both defined);
Cargill, 2/14/07 (both defined); Dippin Dots, 2/9/07;
L&W, 12/14/06; (finding of no intent to deceive not
clearly erroneous); Impax Labs, 11/20/06 (abuse of
discretion and clearly erroneous defined); Flex-Rest,
7/13/06; Agfa, 6/26/06; Liquid Dynamics, 6/1/06;
Atofina, 3/23/06 (clearly erroneous defined); Kao,
3/21/06; Ferring, 2/15/06; Digital Control, 2/8/06; Purdue
Pharma, 2/1/06 [petition for rehearing granted;
previous opinion, issued 6/7/05 and reported at 410
F.3d 690, was withdrawn and replaced by this
opinion; IC holding vacated and remanded]; Novo
455
Nordisk, 10/5/05; Warner-Lambert, 8/11/05 (both
defined); Pharmacia, 8/10/05; Frazier, 8/2/05; Syntex,
5/18/05; Eolas, 3/2/05; Bruno, 1/11/05; Alza, 12/10/04;
Intirtool, 5/10/04; Norian, 4/6/04; CFMT, 11/12/03)
- Abuse of discretion the CAFC may reverse if the

district courts decision is based on clearly
erroneous findings of fact, or on a misapplication
or misinterpretation of applicable law, or
evidences a clear error of judgment on the part of
the district court (American Calcar, 6/27/11 (citing
Star Scientific rule); Cancer Research, 11/9/10;
Technology Licensing, 10/10/08 (no abuse of
discretion by applying the wrong law regarding
cumulative prior art); Star Scientific, 8/25/08
(CAFC must reverse as an abuse of discretion
when IC determination is based on clearly
erroneous finding of materiality and/or intent);
Research Corp. Techs., 8/1/08 (stating that the
CAFC must reverse [w]here a court premises its
inequitable conduct determination upon clearly
erroneous findings of fact or a misapplication of
law); eSpeed, 3/20/07; Novo Nordisk, 10/5/05)
- Because of limited scope of review, the

CAFC cannot second-guess the district
courts decision (Kao, 3/21/06)
- Abuse of discretion occurs when (1) the district

courts decision is clearly unreasonable, arbitrary,
or fanciful, (2) the courts decision is based on an
erroneous construction of the law, (3) the courts
factual findings are clearly erroneous, or (4) the
record contains no evidence upon which the court
rationally could have based its decision Impax
Labs (1st Media, 9/13/12; Larson Mfg., 3/18/09;
Scanner Techs., 6/19/08; Nilssen, 10/10/07;
Cargill, 2/14/07)
456
- Pleading IC adequately particularity
requirement of FRCP 9(b) procedural matter,
apply CAFC law (*Exergen, 8/4/09 (providing a
roadmap for how to properly plead IC); Central
Admixture Pharmacy Services, 4/3/07)
- Reasonable inferences drawn from the evidence

factual findings reviewed for clear error
(Therasense, 5/25/11 (en banc))
- Teaching of prior art Q of fact (Digital Control,

2/8/06)
- Ultimate determination of IC is committed to the

discretion of the district court, because IC is an
equitable issue (Rothman, 2/13/09 (parties agreed
to have the jury determine both the fact issues and
ultimate issue of IC); Scanner Techs., 6/19/08;
Astrazeneca, 7/23/07; Old Town Canoe, 5/9/06)
- Jury verdict review fact issues and

ultimate issue of IC substantial evidence
(Rothman, 2/13/09)
Infringement
- Infringement whether literal or under DOE, Q of fact;

reviewed for clear error when tried to the court (bench
trial) and for substantial evidence when tried to a jury (or
at the ITC) substantial deference given to the fact
finder; the BOP is preponderance of the evidence
(Meadwestvaco, 9/26/13 (no clear error in finding that
term quenching (meaning rapidly cooled) was met);
Sunovion, 9/26/13; Cheese Systems, 8/6/13; Teva,
7/26/13; Charles Machine Works, 7/26/13; Power
Integrations, 3/26/13; Move, 3/4/13; Brilliant
457
Instruments, 2/20/13; Cephalon, 2/14/13; Presidio
Components, 12/19/12 (jury); Pregis, 12/6/12 (jury);
Transocean, 11/15/12 (jury); Pozen, 9/28/12 (DOE
bench trial); Mirror Worlds, 9/4/12 (jury); ActiveVideo
Networks, 8/24/12 (jury); 01 Communique Lab, 7/31/12;
Absolute Software, 10/11/11; Star Scientific, 8/26/11
(jury); Retractable Techs., 7/8/11 (DOE/PHE); Tessera,
5/23/11 (ITC); Innovention Toys, 3/21/11; Siemens,
2/24/11; Uniloc, 1/4/11 (jury - contrasting with claim
construction Q of law); Finjan, 11/4/10; Astrazeneca,
11/1/10 (clear error defined); Spine Solutions, 9/9/10;
Verizon, 4/16/10 (jury); Hearing Components, 4/1/10
(jury); i4i, 3/10/10 (jury); Richardson, 3/9/10 (design
patent); Resqnet.com, 2/5/10; Schindler, 1/15/10;
Amgen, 9/15/09; Lucent, 9/11/09 (jury); Exergen, 8/4/09
(jury); Wavetronix, 7/29/09 (literal and DOE); Linear
Tech., 5/21/09 (ITC); Cordis, 3/31/09 (jury - DOE);
Crown Packaging, 3/17/09 (function prong of DOE test);
Lucent Techs., 9/25/08 (jury); U. Texas, 7/24/08; Roche
Palo Alto, 7/9/08 (noninfringement under reverse DOE);
Scanner Techs., 6/19/08 (clear error defined); Litecubes,
4/28/08 (jury); Finisar, 4/18/08; Regents of U. Cal.,
2/28/08 (DOE); Miken Composites, 2/6/08 (literal and
DOE); Z4 Technologies, 11/16/07 (jury); U.S. Philips,
11/2/07 (literal and DOE); Monsanto, 10/4/07; Acco
Brands, 9/12/07 (jury); L.B. Plastics, 9/12/07; SafeTCare
Mfg., 8/3/07; Leapfrog Enterprises, 5/9/07; In re
Omeprazole, 4/23/07; Acumed, 4/12/07 (jury); Ortho-
McNeil, 1/19/07; Planet Bingo, 12/13/06 (equivalents
is Q of fact, clearly erroneous std.); Depuy Spine,
11/20/06; Optivus Tech., 11/16/06; Abraxis Bioscience,
11/15/06 (clearly erroneous defined); Kemin Foods,
9/25/06 (jury); Alza, 9/6/06; Cook Biotech, 8/18/06;
Conoco, 8/17/06; Serio-Us Industries, 8/10/06; *Pfizer,
8/2/06; Flex-Rest, 7/13/06; Panduit, 6/12/06; Applied
Medical Resources, 5/15/06; Lava Trading, 4/19/06;
Atofina, 3/23/06 (clearly erroneous defined); Golden
Blount, 2/15/06 (clear error defined); Sorensen, 10/31/05;
458
JVW Enterprises, 10/3/05 (clearly erroneous defined);
Research Plastics, 8/18/05; Terlep, 8/16/05; Pause
Technology, 8/16/05; Freedman Seating, 8/11/05;
Warner-Lambert, 8/11/05; North American Container,
7/14/05; Boss Control, 6/8/05; Syntex, 5/18/05; Nazomi,
4/11/05; Playtex, 3/7/05; Lisle, 2/11/05; Centricut,
12/6/04; Gemstar, 9/16/04 (ITC, substantial evidence);
Power Mosfet Techs., 8/17/04; Dynacore Holdings,
3/31/04; Glaxo (2), 1/29/04; Liquid Dynamics, 1/23/04);
See also ADC Telecom., 6/16/08 (nonprecedential
substantial evidence supported the jury verdict of
noninfringement, in the form of the accused infringers
criticisms of the patentees testing method for
infringement presented by expert testimony to the jury)
- Implied license defense to infringement

existence vel non of license Q of law, reviewed
de novo (LaserDynamics, 8/30/12)
Injunctions
Preliminary injunction
- Preliminary injunction 35 USC 283 CAFC

law applied (exception below in Aevoe) - grant or
denial of PI, made after taking into account the
relevant factors, is within the discretion of the trial
court abuse of discretion; underlying factual
determinations reviewed for clear error and legal
conclusions de novo (Lifescan, 11/4/13 (to the
extent the district courts decision to grant a PI
depends on Qs of law, reviewed de novo); Aevoe,
8/29/13 (regional circuit law applied to reviewing
and interpreting a decision granting, denying or
modifying a PI citing Abbott Labs (9th Cir.));
Aria Diagnostics, 8/9/13; Revision Military,
11/27/12 (CAFC law is applied to PIs, likelihood
of success in establishing infringement
459
Hybritech); Apple, 10/11/12 (abuse of discretion in
granting PI where no causal nexus between alleged
harm and alleged infringement); Momenta, 8/3/12;
Sciele Pharma, 7/2/12 (abuse of discretion in
granting PI, based on erroneous interpretation of
validity law); Apple, 5/14/12; Celsis In Vitro,
1/9/12 (no abuse of discretion in granting PI
defined); General Protecht Group, 7/8/11;
Astrazeneca, 11/1/10; Titan Tire, 6/3/09 (no abuse
of discretion in denying PI where the design
patentee was not likely to succeed with regard to
validity because of obviousness); Abbott Labs,
5/18/09 (no abuse of discretion in denying PI
based on narrow claim construction); Altana
Pharma, 5/14/09 (no abuse of discretion in denying
PI where there was a substantial question of
obviousness and no irreparable harm); Ilor,
12/11/08 (no abuse of discretion denying PI based
on correct claim construction); Procter & Gamble,
12/5/08 (district court abused discretion by
effectively denying PI by granting motion to stay
litigation pending reexamination; abuse of
discretion defined); Abbott Labs, 10/21/08 (J.
Newman; abuse of discretion defined); DuPont,
5/14/08 (abuse of discretion in denying PI motion);
Judkins, 4/8/08 (Lanham Act case, applying CAFC
and 3rd Cir. law; abuse of discretion defined); Erico
Intl, 2/19/08; Chamberlain Group, 2/19/08 (PI
vacated because of erroneous claim construction);
Somerset, 10/4/07; GP Industries, 9/20/07 (district
court applied 8th Cir. law); Entegris, 6/13/07
(defined; dissolution of PI); Abbott Labs, 1/5/07
(defined); Sanofi-Synthelabo, 12/8/06 (abuse of
discretion defined; deferential standard applied);
PHG Technologies, 11/17/06; Abbott Labs,
6/22/06 (defined); Curtiss-Wright Flow Control,
2/15/06; Varco, 2/1/06; Pfizer, 11/22/05; Gillette,
460
4/29/05; National Steel Car, 1/29/04; Ranbaxy,
11/26/03)
- Abuse of discretion in granting or denying a

preliminary injunction occurs when the
district court made a clear error of judgment
in weighing the relevant factors or exercised
its discretion based upon an error of law,
e.g., erroneous claim construction, or clearly
erroneous factual findings (Momenta,
8/3/12; Sciele Pharma, 7/2/12; Celsis In
Vitro, 1/9/12; General Protecht Group,
7/8/11; Astrazeneca, 11/1/10; Titan Tire,
6/3/09; Procter & Gamble, 12/5/08; Abbott
Labs, 10/21/08 (J. Newman); Judkins,
4/8/08; Erico Intl, 2/19/08 (see also J.
Newman, dissenting: the court failed to
recognize the standard of review for a PI);
Entegris, 6/13/07; Abbott Labs, 1/5/07;
Sanofi-Synthelabo, 12/8/06; Abbott Labs,
6/22/06; See also Core Labs, 8/7/13
(nonprecedential for PI in federal diversity
case, applying federal procedural law and
Texas state substantive law for trade secret
misappropriation); Automated
Merchandising Systems, 12/16/09
(nonprecedential district court erred in
granting PI, where the court also stayed the
litigation pending reexam); Novo Nordisk,
7/30/08 (nonprecedential reverse when the
district courts denial of PI would amount to
an abuse of discretion upon reversal of an
erroneous finding); Outside the Box
Innovations, 1/15/08 (nonprecedential;
erroneous claim construction can be legal
error, leading to an abuse of discretion in
denying a PI motion))
461
- District courts erroneous claim
construction in granting PI is legal
error that may constitute an abuse of
discretion requiring the CAFC to
vacate the injunction - SRAM
(Chamberlain Group, 2/19/08 (PI
vacated based on erroneous claim
construction))
- Burden heavier for appellant when seeking

to reverse the denial of a PI than seeking to
reverse the grant of a PI New England
Braiding (Aria Diagnostics, 8/9/13 (citing
Altana standard); Altana Pharma, 5/14/09
(stating that when a PI is denied, the movant
must show not only that one or more of the
factors relied on by the district court was
clearly erroneous, but also that a denial of
the preliminary relief sought would amount
to an abuse of the courts discretion upon
reversal of an erroneous finding; no abuse
of discretion shown in denying PI despite
the district courts findings regarding a prior
art reference being in error))
- Grant overturned only on a showing that the

court abused its discretion, committed error
of law, or misjudged the evidence (Celsis In
Vitro, 1/9/12; Abbott Labs, 10/21/08 (J.
Newman, with J. Archer concurring in the
judgment);Curtiss-Wright Flow Control,
2/15/06)
- Issue of law to the extent the district

courts decision is based on an issue of law,
review de novo (Lifescan, 11/4/13; Sanofi-
Synthelabo, 12/8/06)
462
- Bond amount apply law of regional circuit
(Astrazeneca, 10/30/13 (nonprecedential Q
of law whether a district court may
retroactively increase a bond amount
plenary review (3rd Cir.)))
Permanent injunction
- Injunctions (grant, deny, modify, and scope

thereof) an act of equitable discretion by the
district court - CAFC law applied abuse of
discretion; factual findings made in support of the
injunction clear error; the district courts
conclusion as to each eBay (S.C.) factor abuse of
discretion; to the extent the district courts decision
is based on an issue of law, reviewed de novo
(Apple, 11/18/13; Broadcom, 10/7/13; Douglas
Dynamics, 5/21/13 (reversing the denial of
permanent injunction); Versata Software, 5/1/13;
Presidio Components, 12/19/12 (district court
clearly erred in finding no irreparable injury, thus
abusing its discretion by denying a permanent
injunction); ePlus, 11/21/12; ActiveVideo
Networks, 8/24/12; Whitserve, 8/7/12; Novo
Nordisk, 7/30/12 (Order) (district courts
mandatory injunction was an abuse of discretion);
Streck, 1/10/12 (scope of injunction not
overbroad); Bosch, 10/13/11 (denial of injunction
was abuse of discretion - defined); Spine
Solutions, 9/9/10; Ortho-McNeil, 5/10/10 (no
abuse of discretion in issuing an injunction
commensurate with the patent rights of exclusion);
Novo Nordisk, 4/14/10 (reversing and vacating an
injunction that ordered an NDA holder to correct
patent information in the Orange Book, which was
based on the district courts incorrect interpretation
of the counterclaim provision of the 2003 Hatch-
463
Waxman Act); i4i, 3/10/10 (no abuse of discretion
in granting injunction of narrow scope); Fresenius,
9/10/09; Ecolab, 6/9/09 (abuse of discretion
defined); Baden Sports, 2/13/09; Acumed,
12/30/08 (abuse of discretion defined); Ilor,
12/11/08 (PI case); Broadcom, 9/24/08; Voda,
8/18/08 (abuse of discretion defined); Amado,
2/26/08 (broad discretion in modifying
injunctions, post-eBay (S.C.)); Innogenetics,
1/17/08 (abuse of discretion defined); Abbott Labs,
10/11/07 (extending injunction); Verizon, 9/26/07;
Forest Labs, 9/5/07; Conoco, 8/17/06 (extending
injunctive relief); Fuji Photo, 1/14/05; Lab Corp.
of America, 9/30/04; Intl Rectifier, 9/13/04;
Metabolite Labs, 6/8/04); See also In re
Cyclobenzaprine, 2/14/13 (nonprecedential
denial of request to modify injunction
prospectively)
- Abuse of discretion standard when the

district court acts based upon an error of law
or clearly erroneous factual findings, or
commits a clear error of judgment (in
weighing relevant factors) - Ecolab (Apple,
11/18/13; Broadcom, 10/7/13; Presidio
Components, 12/19/12; ActiveVideo
Networks, 8/24/12; Bosch, 10/13/11)
- Clear error of judgment occurs

when the record contains no basis on
which the district court rationally
could have made its decision or if the
judicial action is arbitrary, fanciful or
clearly unreasonable Datascope
(Bosch, 10/13/11)
- Issue of law reviewed de novo, without

deference (Presidio Components, 12/19/12;
464
Bosch, 10/13/11; Novo Nordisk, 4/14/10
(injunction was based on the district courts
statutory interpretation, an issue of law
citing Sanofi-Synthelabo))
- Award of an ongoing royalty-bearing license

and refusal to issue a permanent injunction
abuse of discretion (Presidio Components,
12/19/12; Whitserve, 8/7/12; Bard, 2/10/12
[vacated in part after remanded on
6/14/12])
- Royalty-bearing license during appeal

and refusal to issue immediate
injunction abuse of discretion (On
Demand Machine, 3/31/06)
- Interpretation of the terms of an injunction Q of

law, reviewed de novo (Tivo, 4/20/11 (en banc)
(see dissent); Abbott Labs, 10/11/07)
- Injunction satisfies FRCP 65(d)? Q of law,

reviewed de novo, without deference (Forest Labs,
9/5/07; Intl Rectifier, 9/13/04)
- Injunctions of parallel actions reviewed under

CAFC law abuse of discretion immediately
appealable under 28 USC 1292(a)(1) CAFC has
jurisdiction (Lab Corp. of America, 9/30/04)
- Contempt of injunction (nCube, 10/10/13; Merial,

5/31/12; Tivo, 4/20/11 (en banc); Fujifilm,
5/27/10; Intl Rectifier (1), 3/18/04)
- District courts decision to conduct a

contempt proceeding CAFC law applied -
abuse of discretion (Tivo, 4/20/11 (en banc);
465
Abbott Labs, 10/11/07 (abuse of discretion
defined))
- Grant or denial of motion for contempt of

injunction, finding of contempt of injunction
by infringement CAFC law applied
abuse of discretion (nCube, 10/10/13 (abuse
of discretion, by definition, occurs when the
district courts decision rests on an error of
law); Merial, 5/31/12; Tivo, 4/20/11 (en
banc); Fujifilm, 5/27/10; Abbott Labs,
10/11/07)
- District courts contempt finding must

be supported by C&C evidence of
infringement (nCube, 10/10/13; Tivo,
4/20/11 (en banc); Abbott Labs,
10/11/07)
- Sanctions awarded for violating

injunction abuse of discretion (Tivo,
4/20/11 (en banc))
- Factual findings underlying contempt

decision, during contempt proceeding, e.g.,
more than colorable differences between
the infringing and modified products, vs.
colorable differences, continued
infringement Q of fact - reviewed for clear
error (nCube, 10/10/13; Merial, 5/31/12;
Tivo, 4/20/11 (en banc); Conoco, 8/17/06)
- Non-party to an injunction whether

proceeded in active concert with another
party bound by the injunction, under FRCP
65(d)(2)(C) Q of fact reviewed for clear
error (Merial, 5/31/12)
466
Interferences
- Interferences
- BPAI decision priority (conception and RTP) are

legal conclusions reviewed without deference;
underlying factual findings are reviewed for
substantial evidence (Henkel, 3/18/09 (RTP;
substantial evidence defined); Brand, 5/14/07;
Henkel, 5/11/07; Velander, 11/5/03; Chen,
10/22/03; Taskett; 9/26/03)
- Corroboration Q of fact (Medichem,

2/3/06)
- Derivation Q of fact (Brand, 5/14/07)
- Priority (conception and RTP) Qs of law

de novo review, based on underlying facts
(e.g., corroboration, derivation) reviewed
for substantial evidence (Streck, 10/20/11
(Section 146 action (clear error)); Yorkey II,
4/7/10 (the BPAI erred in holding that the
junior party failed to establish a prima facie
case of an actual RTP prior to the senior
partys benefit date; defining substantial
evidence); Henkel, 3/18/09 (inventors
appreciation of RTP); Brand, 5/14/07
(derivation); Medichem, 2/3/06; Taskett,
9/26/03)
- Sufficiency of testing to show an

invention works for its intended
purpose Q of fact (Streck, 10/20/11
(Section 146 action (clear error)))
- Reasonable diligence (35 USC 102(g)) Q

of fact (Brown, 2/2/06)
467
- Section 146 action Qs of law (priority -
conception and RTP) de novo review, based on
factual findings clear error (Streck, 10/20/11;
Rolls-Royce, 5/5/10)
- Section 291 action
- Interference-in-fact = findings of fact,

standards of review for anticipation and
obviousness (Medichem, 2/3/06; Medichem,
12/23/03)
- Interpreting an interference count Q of law

(Bilstad, 10/7/04)
Inventorship
- Inventorship mixed Q of law and fact; Q of law,

reviewed without deference, with underlying factual
findings reviewed for clear error, substantial evidence
(Bard, 2/10/12 [vacated in part after remanded on
6/14/12]; Falana, 1/23/12; Teva, 12/1/11 (Section
102(g)); Shum, 12/22/10; Spansion, 12/21/10 (ITC);
Vanderbilt U., 4/7/10; U. of Pittsburgh, 7/23/09; Nartron,
3/5/09; Cook Biotech, 8/18/06; Checkpoint Systems,
6/20/05; Ford, 6/15/05; Caterpillar, 10/28/04; Gemstar,
9/16/04; Linear Technology, 6/17/04; Cyanamid, 9/3/03;
BJ Services, 8/6/03)
- Conception legal conclusion, based on

underlying factual findings (Taurus IP, 8/9/13;
Spansion, 12/21/10; Invitrogen, 11/18/05)
- Joint inventorship, nonjoinder must prove by

C&C evidence (Falana, 1/23/12 (nonjoinder
proven); Shum, 12/22/10; Vanderbilt U., 4/7/10
468
(non-joinder); U. of Pittsburgh, 7/23/09
(misjoinder); Nartron, 3/5/09 (non-joinder); Ford,
6/15/05; Eli Lilly, 7/20/04)
- Substantial evidence assess relative to

BOP (Eli Lilly, 7/20/04)
- 35 USC 291 action prove prior invention

preponderance of the evidence standard; no
presumption of validity (Eli Lilly, 7/20/04)
Knowledge or intent under the patent law
- Knowledge or intent under the patent law fact

determinations reviewed for clear error (Dynacore
Holdings, 3/31/04)
Local rules in patent cases
- Local rules in patent cases decisions enforcing local

rules in patent cases abuse of discretion (O2 Micro,
11/15/06 (abuse of discretion defined)); See also Kruse
Tech., 10/8/13 (nonprecedential interpretation or
validity of local rule apply CAFC law); Speedtrack,
4/16/13 (nonprecedential no abuse of discretion in
refusing to allow amendment of infringement contentions
where the patentee was not diligent and the accused
infringer would be prejudiced - citing O2 Micro for
standard)
Obviousness
- Obviousness Q of law, reviewed de novo, without

deference, based on underlying findings of fact, reviewed
for clear error (bench trial) or substantial evidence
469
(BPAI; ITC; jury (i.e., grant or denial of motion for
JMOL)) (Ohio Willow Wood, 11/15/13; Broadcom,
10/7/13; Meadwestvaco, 9/26/13; Rambus, 9/24/13
(BPAI); St. Jude Medical, 9/11/13 (jury); Leo Pharm.,
8/12/13 (BPAI Q of law where no unresolved issues of
fact); Apple, 8/7/13 (ITC); Cheese Systems, 8/6/13 (the
factual findings underlying SJ of nonobviousness are
reviewed under the SJ standard); Plantronics, 7/31/13;
Teva, 7/26/13; In re Adler, 7/18/13; Novo Nordisk,
6/18/13; Alexsam, 5/20/13; Allergan, 5/1/13; Bayer,
4/16/13; In re Morsa, 4/5/13; Power Integrations, 3/26/13
(jury); Synqor, 3/13/13; Soverain Software, 1/22/13;
C.W. Zumbiel, 12/27/12 (BPAI); Pregis, 12/6/12 (jury);
Arcelormittal France, 11/30/12; Norgren, 11/14/12; Flo
Healthcare Solutions, 10/23/12; Pozen, 9/28/12 (bench);
In re Droge, 9/21/12; Santarus, 9/4/12; In re Applied
Materials, 8/29/12; Woods, 8/28/12 (jury); ActiveVideo
Networks, 8/24/12; Amkor Technology, 8/22/12 (ITC);
Kinetic Concepts, 8/13/12; Alcon Research, 8/8/12; In re
Antor Media, 7/27/12; In re Mouttet, 6/26/12; Sciele
Pharma, 7/2/12; Mintz, 5/30/12; In re Baxter, 5/17/12
(limited scope of review of BPAI decision under
substantial evidence standard); Otsuka, 5/7/12; In re
Cyclobenzaprine, 4/16/12 (emphasizing the CAFCs
plenary review to determine whether, as a legal matter,
the evidence satisfies the C&C standard of proof);
Aventis Pharma, 4/9/12; Star Scientific, 8/26/11;
Unigene Labs, 8/25/11; Genetics Institute, 8/23/11; In re
NTP I, 8/1/11; Retractable Techs., 7/8/11 (jury); In re
Klein, 6/6/11; In re Kao, 5/13/11 (the BPAI relied on
erroneous reasoning, based on conjecture, in making the
factual determinations that underlied its conclusion that
the claim was obvious, and that its factual findings were
therefore unsupported by substantial evidence, stating
that the BPAIs own conjecture does not supply the
requisite substantial evidence to support the rejections);
Innovention Toys, 3/21/11 (clear error in several of the
factual findings underlying obviousness); Tokai, 1/31/11
470
(affirming SJ of obviousness); In re Glatt, 1/5/11
(defining substantial evidence); Uniloc, 1/4/11; Western
Union, 12/7/10; Daiichi Sankyo, 9/9/10 (defining clear
error); Spine Solutions, 9/9/10 (jury); Green Edge,
9/7/10; Eli Lilly, 9/1/10; Martin, 8/20/10; Transocean,
8/18/10; Wyers, 7/22/10 (J. Linn, concurring
addressing the standard of review for general jury
verdicts, i.e., absent special interrogatories)); TriMed,
6/9/10; Vizio, 5/26/10 (ITC); Honeywell, 5/25/10 (CFC);
Rolls-Royce, 5/5/10; Power-One, 3/30/10; i4i, 3/10/10;
Media Techs., 3/1/10 (underlying factual determinations
are reviewed for clear error in a bench trial unless, as is
the case here, no material facts are in dispute); In re
Chapman, 2/24/10; Crocs, 2/24/10 (ITC defining
substantial evidence); Therasense, 1/25/10 [vacated, and
petition for rehearing en banc granted, on 4/26/10];
Source Search, 12/7/09; Perfect Web, 12/2/09; Lucent,
9/11/09; Fresenius, 9/10/09 (jurys implicit findings
underlying obviousness verdict were supported by
substantial evidence); Callaway, 8/14/09 (jury); Bayer
Schering, 8/5/09 (defining clear error); Ecolab, 6/9/09
(denial of motion for JMOL of obviousness); Altana
Pharma, 5/14/09; Procter & Gamble, 5/13/09; In re
Kubin, 4/3/09; Cordis, 3/31/09 (jury); Monolithic Power
Systems, 3/5/09 (jurys findings regarding teachings of
prior art patent implicit within the obviousness verdict
were supported by substantial evidence); Rothman,
2/13/09; Kinetic Concepts, 2/2/09 (jurys verdict of
nonobviousness was supported by substantial evidence,
including expert testimony that the prior art did not teach
the claimed method); Boston Scientific Scimed, 1/15/09
(*reversing jury verdict, denial of motion for JMOL of
obviousness, and emphasizing that the CAFC is the
ultimate decision maker on the question of
obviousness); In re DBC, 11/3/08 (BPAI); Johns
Hopkins, 10/2/08; CSIRO, 9/19/08; Voda, 8/18/08 (jury
JMOL standard); Eisai, 7/21/08 (standard for SJ of
nonobviousness); Muniauction, 7/14/08; Scanner Techs.,
471
6/19/08; Finisar, 4/18/08 (standard for JMOL
determination); Agrizap, 3/28/08 (jurys fact findings of
nonobviousness, although reviewed deferentially, failed
to legally support the ultimate conclusion as to
obviousness, citing KSR (S.C.)); In re Translogic
Technology, 10/12/07 (BPAI); Daiichi Sankyo, 9/12/07;
Aventis Pharma, 9/11/07; Forest Labs, 9/5/07 (clear error
defined); In re Sullivan, 8/29/07 (BPAI; substantial
evidence defined); In re Trans Texas Holdings, 8/22/07
(fact findings regarding PA); In re Icon Health and
Fitness, 8/1/07 (BPAI); Pharmastem, 7/9/07; Takeda,
6/28/07; Leapfrog Enterprises, 5/9/07; Syngenta Seeds,
5/3/07 (nonprecedential) (jury); In re Omeprazole,
4/23/07; Pfizer, 3/22/07 (clear error defined); Dippin
Dots, 2/9/07 (jury; JMOL); Eli Lilly, 12/26/06; Optivus
Tech., 11/16/06; *Dystar, 10/3/06; *Alza, 9/6/06; Ormco,
8/30/06; *In re Kahn, 3/22/06 (BPAI; substantial
evidence defined); Kao, 3/21/06; Medichem, 2/3/06; In re
Kumar, 8/15/05; Princeton Biochemicals, 6/9/05 (jury;
substantial evidence defined); Harris, 5/25/05 (BPAI;
substantial evidence defined); Syntex, 5/18/05; Group
One (jury), 5/16/05; Eolas, 3/2/05; Merck, 1/28/05; Iron
Grip Barbell, 12/14/04; Alza, 12/10/04; Cardiac
Pacemakers, 8/31/04; Koito Mfg., 8/23/04 (jury); TI
Group, 6/30/04 (jury); Norian, 4/6/04 (jury); Ruiz,
1/29/04; Golight, 1/20/04; In re Watts, 1/15/04 (BPAI);
Medichem, 12/23/03; Dow, 9/5/03); See also Lexion
Medical, 8/28/08 (nonprecedential jurys verdict that
claims not obvious did not change on appeal the district
courts prior grant of JMOL of obviousness)
- Analogous art Q of fact (Arcelormittal France,

11/30/12 (jury); In re Klein, 6/6/11 (BPAI);
Innovention Toys, 3/21/11; Wyers, 7/22/10;
CSIRO, 9/19/08 (fact issues based on expert
declaration and report could not be resolved on
SJ); In re Icon Health and Fitness, 8/1/07 (BPAI);
In re Bigio, 8/24/04)
472
- BPAI substantial evidence (such relevant
evidence as a reasonable might accept as adequate
to support a conclusion) the CAFC takes into
account evidence that both justifies and detracts
from the factual determinations, and the court must
uphold the BPAIs determination if a reasonable
mind might accept the evidence as adequate to
support the BPAIs factual conclusions (In re
Applied Materials, 8/29/12; In re Glatt, 1/5/11);
See also In re Pepperball Techs., 3/7/12
(nonprecedential the CAFC concluding that a
claimed range was obvious based on substantial
evidence that was different from the reason the
BPAI relied on for concluding obviousness; the
CAFC also highlighting the need to challenge
substantial evidence on appeal with respect to all
the appealed claims separately and prior art
references)
- Bench trial underlying factual determinations are

reviewed for clear error, unless no material facts
are in dispute (Media Techs., 3/1/10)
- Jury trial underlying findings of fact, whether

explicit or implicit within the jurys verdict of
(non)obviousness, are reviewed for substantial
evidence, followed by examining the ultimate legal
conclusion of obviousness de novo to see whether
it is correct in light of the jurys factual findings
the CAFC finds adequately supported (Synqor,
3/13/13 (affirming jury verdict of nonobviousness
as based on sufficient evidence, including lack of
motivation to combine and objective evidence);
Pregis, 12/6/12 (record contained substantial
evidence to support the jurys implicit finding that
the prior art did not teach away); Kinetic Concepts,
8/13/12 (rejecting argument that the district court
473
used the jury as an advisory jury under FRCP
39(c)(1) (in actions not triable to a jury by right),
where instead the court gave the obviousness issue
to the jury (in a special verdict form under FRCP
49(a)) to decide along with the Graham (S.C.)
factual issues as an advisory jury, but whose
ultimate determination was reserved for the court);
Mettler-Toledo, 2/8/12 (the CAFC presumes that
the jury found the facts supporting its obviousness
verdict); Retractable Techs., 7/8/11 (CAFC unable
to conclude obviousness, in light of the jurys
underlying factual findings of nonobviousness);
Spectralytics, 6/13/11 (addressing the jurys role in
determining obviousness, including submitting
legal issue to the jury Railroad Dynamics the
CAFC first presumes that the jury resolved the
underlying factual disputes in favor of the verdict
winner and leaves those presumed findings
undisturbed if they are supported by substantial
evidence (here, teaching away by prior art
machines, as supported by expert testimony); the
CAFC then examines the district courts legal
conclusion de novo to see whether it is correct in
light of the presumed jury fact findings Jurgens);
Uniloc, 1/4/11 (deference given to jury on fact
issues, e.g., what the prior art discloses); Spine
Solutions, 9/9/10 (jurys facting finding of not
obvious for a POS in the art to combine the two
cited references, which was implicit in its verdict
of nonobviousness, was supported by substantial
evidence); Wyers, 7/22/10 (J. Linn, concurring
comparing general and special verdicts); Hearing
Components, 4/1/10; Fresenius, 9/10/09 (reversing
grant of JMOL where jurys implicit findings were
supported by substantial evidence); Callaway,
8/14/09 (implicit finding of fact that prior art did
not teach hardness limitation for the claimed golf
ball was supported by substantial evidence);
474
Ecolab, 6/9/09 (reversing jury verdict of
nonobviousness); Monolithic Power Systems,
3/5/09 (affirming jury verdict based on implicit
fact findings regarding teachings of prior art patent
as supported by substantial evidence); Rothman,
2/13/09 (affirming denial of motion for JMOL of
nonobviousness); Kinetic Concepts, 2/2/09;
Boston Scientific Scimed, 1/15/09 (no substantial
evidence to support the jurys nonobviousness
verdict); Johns Hopkins, 10/2/08; Voda, 8/18/08;
Muniauction, 7/14/08; Finisar, 4/18/08; Dippin
Dots, 2/9/07); See also Inventio AG, 11/27/12
(nonprecedential); Syngenta Seeds, 5/3/07
(nonprecedential)
- When a jury has found a claim to be

(non)obvious, the CAFC presumes the jury
resolved all factual disputes in favor of the
verdict Agrizap (Alexsam, 5/20/13 (citing
Transocean); Power Integrations, 3/26/13
(for verdict of nonobviousness, the CAFC
was bound to assume that the jury resolved
the evidence of secondary considerations in
the patentees favor citing Third Circuit
case); Synqor, 3/13/13; Pregis, 12/6/12)
- Motivation to combine, prior art teaching or

teaching away, reasonable expectation of success,
secondary considerations Qs of fact (Rambus,
9/24/13 (whether reason to combine prior art
references); Power Integrations, 3/26/13
(secondary considerations); Pregis, 12/6/12 (prior
art teaching and motivation to combine);
Arcelormittal France, 11/30/12 (prior art teaching,
motivation to combine (jury properly concluded
that the accused infringer had established a prima
facie case of obviousness)); Santarus, 9/4/12
(teaching away); Kinetic Concepts, 8/13/12 (prior
475
art teaching, whether reason to combine prior art
references); In re Mouttet, 6/26/12 (teaching
away); In re Hyon, 5/24/12 (reason, motivation to
combine references); In re Baxter, 5/17/12 (what a
reference teaches); Mettler-Toledo, 2/8/12
(teaching of prior art reference, and teaching
away); In re Construction Equipment Co., 12/8/11
(reason, motivation to combine references);
Spectralytics, 6/13/11 (teaching away); Hynix,
5/13/11 (motivation to combine); Uniloc, 1/4/11
(teaching of prior art reference); Transocean,
8/18/10 (teaching of prior art reference, and
motivation to combine references); Honeywell,
5/25/10 (teaching of prior art reference); In re
Chapman, 2/24/10 (teaching away); Therasense,
1/25/10 (teaching of prior art reference) [vacated
on 4/26/10, and reinstated by Therasense,
5/25/11 (en banc)]; In re Kubin, 4/3/09 (teaching
of prior art reference); In re Trans Texas Holdings,
8/22/07 (BPAI); Alza, 9/6/06; Medichem, 2/3/06);
See also In re Sutton, 11/20/12 (nonprecedential
whether motivation to combine references is a
pure question of fact In re Gartside); In re
Pepperball Techs., 3/7/12 (nonprecedential
affirming BPAI on obviousness where substantial
evidence supported factual findings regarding the
teaching of the prior art references and motivation
to combine and modify the references, including
substantial evidence not relied on the BPAI with
respect to a broad claimed range which the CAFC
concluded would have been obvious based on
routine experimentation)
- Motivation to combine Q of fact (In re

Construction Equipment Co., 12/8/11;
Wyers, 7/22/10 (may be addressed on SJ or
JMOL in appropriate circumstances KSR
(S.C.)); i4i, 3/10/10; CSIRO, 9/19/08
476
(vacating SJ of nonobviousness based on
disputed issues of material fact regarding
motivation to combine prior art references);
Optivus Tech., 11/16/06; Alza, 9/6/06;
Cardiac Pacemakers, 8/31/04)
- Reasonable expectation of success from

making such a combination (Alza, 9/6/06)
- Underlying factual inquiries include Graham

factors: 1) the scope and content of the prior art, 2)
the differences between the claimed invention and
the prior art, 3) the level of ordinary skill in the art
at the time the invention was made, and 4)
objective evidence of nonobviousness (Rambus,
9/24/13; Cheese Systems, 8/6/13; Teva, 7/26/13; In
re Adler, 7/18/13; Alexsam, 5/20/13; Allergan,
5/1/13; In re Morsa, 4/5/13; Pregis, 12/6/12;
Norgren, 11/14/12; Outside the Box Innovations,
9/21/12; Santarus, 9/4/12; Alcon Research, 8/8/12;
In re Mouttet, 6/26/12; In re Baxter, 5/17/12;
Aventis Pharma, 4/9/12; Star Scientific, 8/26/11;
Retractable Techs., 7/8/11; Innovention Toys,
3/21/11 (addressing level of skill in the art); Tokai,
1/31/11; Western Union, 12/7/10; Daiichi Sankyo,
9/9/10; Green Edge, 9/7/10; Eli Lilly, 9/1/10;
Martin, 8/20/10; Transocean, 8/18/10; Wyers,
7/22/10; TriMed, 6/9/10 (several disputed factual
questions, including the content of the prior art,
required reversal of SJ); Power-One, 3/30/10; i4i,
3/10/10 (claims not obvious in light of the jurys
implicit factual findings); In re Chapman, 2/24/10;
Crocs, 2/24/10; Source Search, 12/7/09; Perfect
Web, 12/2/09; Lucent, 9/11/09 (jury); Fresenius,
9/10/09 (jury); Ecolab, 6/9/09; Altana Pharma,
5/14/09; In re Kubin, 4/3/09 (analysis of
obviousness must be based on these factual
inquiries); Monolithic Power Systems, 3/5/09;
477
Rothman, 2/13/09; Kinetic Concepts, 2/2/09
(nonobviousness verdict affirmed where the scope
and content of the prior art, factual questions to be
determined by the jury, did not disclose the
claimed method); CSIRO, 9/19/08 (disputed issues
of material fact regarding scope and content, and
the differences between the claimed invention and
the prior art references); Eisai, 7/21/08;
Muniauction, 7/14/08; Scanner Techs., 6/19/08;
Finisar, 4/18/08 (scope and content of the prior art
changed after reversing the district courts denial
of motion for JMOL of anticipation of an
independent claim, as the elements of the claim
became prior art for obviousness with respect to
the dependent claims); Daiichi Sankyo, 9/12/07; In
re Icon Health and Fitness, 8/1/07; Pharmastem,
7/9/07; Dippin Dots, 2/9/07; Eli Lilly, 12/26/06;
Optivus Tech., 11/16/06; Alza, 9/6/06)
Ownership of patent
- Ownership of patent
- Questions of necessary parties, as well as

ownership rights, receive plenary review Rite-
Hite (IPVenture, 9/28/07)
- Ownership of, legal title to patent state law, not

federal law, is applied (Enovsys, 8/3/10 (patent
ownership determined based on a California state
divorce decree); Stanford U., 9/30/09 [affirmed by
the U.S. Supreme Court, on 6/6/11, in Stanford
U. v. Roche]; Sky Technologies, 8/20/09; Larson,
6/5/09 (state court needed to decide ownership
issue before federal district court could have
standing over the plaintiffs claim to correct
inventorship under Section 256); Akazawa,
478
3/31/08 (applying Japanese intestacy law
(analogous to the principle of applying state law)
to ownership of the patent following the patent
owners death); Mymail, 2/20/07); See also
Beriont, 8/6/13 (nonprecedential); Nolen, 2/1/12
(Order) (nonprecedential the CAFC lacked
jurisdiction over infringement claim where patent
ownership issue needed to be decided first - citing
Mymail)
- Assignment vs. transfer of ownership by

operation of law - federal law usually is used
to determine the validity and terms of an
assignment, but state law controls any
transfer of patent ownership by operation of
law not deemed an assignment (Sky
- Whether a patent assignment clause

creates an automatic assignment or
merely an obligation to assign relates
to standing in patent cases, and thus is
a matter of federal law DDB Techs.
(Stanford U., 9/30/09 [affirmed by
the U.S. Supreme Court, on 6/6/11,
in Stanford U. v. Roche]; Sky
- Employer/employee determination Q of law,

applied to fact (Israel Bio-Engineering Project,
3/15/05)
- Assignment of ownership state contract law

applied (Euclid Chemical, 4/1/09 (applying Ohio
law); Mars, 6/2/08; Akazawa, 3/31/08; Cook
Biotech, 8/18/06); See also Beriont, 8/6/13
(nonprecedential)
479
- Construction of patent assignment
agreements is a matter of state contract law
Mars (Euclid Chemical, 4/1/09)
Patentable subject matter
- Patent-eligible (statutory) subject matter under 35 USC

101 Q of law, reviewed de novo, without deference;
legal conclusion may contain underlying factual issues
(Accenture, 9/5/13 (legal conclusion may contain
underlying factual issues citing Ultramercial);
Ultramercial, 6/21/13 (highlighting the various factual
issues to be resolved, based on the CAFCs decision in
CLS Bank (en banc), and therefore that these issues and
the requirement for C&C evidence of invalidity normally
render dismissal under Rule 12(b)(6) improper); Bancorp
Services, 7/26/12; CLS Bank, 7/9/12 [vacated and en
banc review granted on 10/9/12]; Fort Properties,
2/27/12; Dealertrack, 1/20/12; Ultramercial, 9/15/11
[vacated and remanded by the U.S. Supreme Court
on 5/21/12]; Cybersource, 8/16/11; Prometheus Labs,
12/17/10 [reversed by the U.S. Supreme Court, on
3/20/12]; Research Corp., 12/8/10; Astrazeneca, 11/1/10
(printed matter); SiRF Technology, 4/12/10; In re
Ferguson, 3/6/09; In re Comiskey, 1/13/09 (en banc); In
re Bilski, 10/30/08 (en banc); In re Nuijten, 9/20/07)
Preemption of state law by federal law
- Preemption of state law claim by federal patent law Q

of law, de novo; decided under CAFC law (In re
Ciprofloxacin, 10/15/08 (CAFC did not rule whether
state antitrust claim (based on fraud on the PTO and
sham litigation) was preempted by federal patent law,
after concluding that no fraud occurred); Ford, 6/15/05);
See also Tavory, 10/27/08 (nonprecedential unjust
480
enrichment claim preempted by federal patent
(inventorship) law)
Priority to earlier filing date
- Priority whether patent entitled to earlier priority date

(i.e., the effective filing date) purely a Q of law if the
facts underlying that determination are undisputed;
reviewed without deference Broadcast Innovation (In
re Owens, 3/26/13 (priority of design patent application);
Hollmer, 6/7/12; Star Scientific, 8/26/11 (district courts
determination of priority date reviewed without
deference); Research Corp., 12/8/10; Bradford, 4/29/10;
DuPont, 5/14/08 (non-provisional application was
entitled to the filing date of a provisional application as a
matter of law based on the undisputed facts contained in
the PH); Go Medical Indus., 10/27/06)
- Whether the intervening patents in a chain of

priority maintain the requisite continuity of
disclosure Q of law, reviewed de novo - Zenon
(Hollmer, 6/7/12)
- Whether a priority document contains sufficient

disclosure to comply with the WD aspect of
Section 112, first paragraph Q of fact (In re
Owens, 3/26/13; Research Corp., 12/8/10 (CAFC
decided without deference, because the question
was framed as entitlement to an earlier filing date,
rather than whether there was adequate WD
support); Bradford, 4/29/10)
Prosecution history estoppel/all elements/vitiation

and disclosure-dedication rules/ensnarement
481
- Prosecution history estoppel/all elementsrule/
disclosure-dedication rule/ensnarement legal
limitations to DOE infringement - Q of law, reviewed de
novo, while underlying fact issues reviewed for clear
error (Integrated Tech., 11/4/13 (PHE); Trading Techs.,
8/30/13 (PHE); Regents of U. Minn., 6/3/13 (PHE);
Energy Transportation Group, 10/12/12 (PHE); Sandisk,
10/9/12 (disclosure-dedication rule); Duramed, 7/21/11
(foreseeability); Retractable Techs., 7/8/11 (statements in
the specification criticizing the prior art limiting the
scope of equivalents); Spine Solutions, 9/9/10 (PHE);
Funai, 9/1/10 (PHE); Intervet, 8/4/10 (PHE); Trading
Techs., 2/25/10 (PHE and all elements rule); Depuy
Spine, 6/1/09 (ensnarement); Felix, 4/10/09 (PHE);
Honeywell Intl, 4/18/08 (PHE); O2 Micro, 4/3/08
(PHE); Regents of U. Cal., 2/28/08 (PHE); Intl Rectifier,
2/11/08 (PHE); U.S. Philips, 11/2/07 (no vitiation of
recited numeric range); Schwarz Pharma, 10/12/07
(PHE); Festo, 7/5/07 (PHE); Ortho-McNeil, 1/19/07
(vitiation); Depuy Spine, 11/20/06; Conoco, 8/17/06;
Amgen, 8/3/06; Panduit, 6/12/06 (PHE, all elements
rule); Pfizer, 11/22/05; Biagro, 9/13/05; Aquatex,
8/19/05; Research Plastics, 8/18/05; Terlep, 8/16/05;
Seachange Intl, 6/29/05; Chimie, 4/11/05; Business
Objects, 1/6/05; Toro, 9/13/04 (disclosure-dedication
rule); Honeywell Intl, 6/2/04 (en banc); Glaxo (2),
1/29/04; Ranbaxy, 11/26/03)
- Legal limitations on the applicability of DOE are

determined as a matter of law Abbott Labs
(Trading Techs., 2/25/10; Nystrom, 9/8/09 (See J.
Raders additional views regarding the doctrine of
claim vitiation, opining that the vitiation doctrine
is really subsumed within the test for equivalents
itself, and thus highlighting the conflicting
problem with judges deciding vitiation (a Q of
law) vs. juries deciding equivalents (a Q of fact));
Depuy Spine, 6/1/09 (legal limitations to the DOE
482
(e.g., PHE, all elements rule, ensnarement of
prior art) are Qs of law for the court to decide, not
the jury (although an advisory verdict under FRCP
39(c) may be helpful), including any underlying
factual issues (e.g., based on expert testimony and
other extrinsic evidence relating to the relevant
factual inquiries of the various defenses); U.S.
Philips, 11/2/07)
- Ensnarement, like PHE, is to be determined

by the court, either on a pretrial motion for
partial SJ or on a motion for JMOL at the
close of the evidence and after the jury
verdict Warner-Jenkinson (S.C.) (Depuy
Spine, 6/1/09)
- DOE vitiation Q of law de novo (Charles

Machine Works, 7/26/13 (vitiation is a legal
determination that the evidence is such that no
reasonable jury could determine two elements to
be equivalent citing Deere); Cordis, 3/31/09)
- Presumption of surrender and whether rebutted

under Festo, which are subject to underlying fact
issues, are properly decided by the court, not a jury
Q of law, de novo review, while underlying
factual issues are reviewed for clear error Festo
(en banc) (Integrated Tech., 11/4/13; Duramed,
7/21/11 (foreseeability); Depuy Spine, 6/1/09
(ensnarement); Honeywell Intl, 4/18/08; Festo,
7/5/07; Amgen, 8/3/06; Biagro, 9/13/05)
Reexamination
- Reexamination whether based on a substantial new

question of patentability Q of law, de novo, in light of
how the prior art reference was previously considered
483
Q of fact reviewed for substantial evidence (In re NTP
II, 8/1/11 (what the examiner considered during the
original prosecution Q of fact); In re Swanson, 9/4/08)
- Amendments improperly enlarging the scope of a

claim, under Section 305 matter of claim
construction, reviewed de novo (Predicate Logic,
10/9/08)
- Amendment changing the scope of a claim under

Section 307 (intervening rights) Q of law de
novo (Marine Polymer, 9/26/11 (absolute
intervening rights is a pure Q of law) [vacated];
Predicate Logic, 10/9/08)
Reissue
- Reissue violation of 35 USC 251 whether surrender

of recaptured subject matter has occurred - Q of law,
based on underlying facts reviewed for clear error (bench
trial) or substantial evidence (BPAI) (Greenliant
Systems, 8/22/12; In re Youman, 5/8/12; AIA Engg,
8/31/11; In re Mostafazadeh, 5/3/11; MBO Labs, 4/12/10
(applying substantial evidence standard to district court);
Forest Labs, 9/5/07; Medrad, 10/16/06; Medtronic,
10/12/06; Kim, 9/20/06; North American Container,
7/14/05)
- Comparing the scope of original patent claims and

reissue claims Q of law, de novo review (AIA
Engg, 8/31/11)
- Improper broadening reissue (filed more than two

years after issuance of the original patent) under 35
USC 251, and determining whether a change in
claim scope for intervening rights under 35 USC
252 Qs of law de novo see Reexamination
484
(Predicate Logic, 10/9/08); See also Brady
Construction, 8/15/08 (nonprecedential relating
to the invalidity of a broadening reissue filed more
than two years after grant of the original patent,
stating that [w]hether the claims of a reissue
patent violate 35 USC 251, and thus are invalid,
is a question of law, which we review de novo)
- Whether an applicant satisfies the statutory

requirements of 35 USC 251 Q of law, de
novo; BPAIs underlying factual findings reviewed
for substantial evidence (In re Youman, 5/8/12; In
re Tanaka, 4/15/11 (issue reviewed de novo in the
absence of disputed facts citing Serenkin); In re
Serenkin, 3/6/07)
Repair vs. reconstruction
- Repair vs. reconstruction - repair is an affirmative

defense to a claim of infringement legal issue based on
underlying facts; legal determinations reviewed without
deference, and factual determinations reviewed for
substantial evidence (Fuji Photo Film, 1/11/07)
Utility
- Utility requirement 35 USC 101 Q of fact (In re

Fisher, 9/7/05)
Willful infringement (and scope of waiver)
- Willful infringement Q of fact, which must be proven

by C&C evidence reviewed for clear error, or
substantial evidence (jury); threshold objective prong Q
of law for the court, based on underlying mixed questions
485
of law and fact de novo review, without deference;
second (subjective) prong is a Q of fact reviewed for
substantial evidence (Power Integrations, 3/26/13; Bard,
6/14/12 (en banc) (whether the threshold objective prong
is met is a Q of law for the court, based on underlying
mixed questions of law and fact, subject to de novo
review); Bard, 2/10/12 (jury) [vacated and remanded
on 6/14/12, after the CAFC granted rehearing en banc
for the limited purpose of authorizing the panel to
revise the portion of the opinion addressing
willfulness and the award of attorney fees and
enhanced damages; the 2/10/12 judgment was thus
vacated in part, and the panels opinion was modified
in accordance with the new panel opinion
accompanying the courts order, in which the panel
held that the legal standard for the threshold
objective prong for willfulness is a Q of law for the
court, based on underlying mixed questions of law
and fact, which is subject to de novo review; see also
J. Newman, dissenting concurring with the legal
standard, but dissenting from the majoritys decision
to remand, where there was evidence in the record of
substantial defenses to infringement]; Powell, 11/14/11
(jury finding supported by substantial evidence; also,
objective reasonableness of defense to infringement for
avoiding willfulness is decided by both the jury (issues of
fact) and the court (issues of law e.g., claim
construction, IC defenses)); Spine Solutions, 9/9/10 (jury
verdict of willfulness was not supported by substantial
evidence); i4i, 3/10/10 (jury verdict was supported by
substantial evidence); Revolution Eyewear, 4/29/09
(issues of fact relating to willful infringement underlying
equitable intervening rights were matters for the court,
not a jury); Cohesive Techs., 10/7/08; Innogenetics,
1/17/08; Acco Brands, 9/12/07 (jury); Acumed, 4/12/07;
Golden Blount, 2/15/06 (clear error defined); Harris,
8/5/05; Fuji Photo, 1/14/05; Metabolite Labs, 6/8/04;
Golight, 1/20/04); See also Lee, 11/21/13
486
(nonprecedential objectiveness inquiry is a Q of law
reviewed de novo); Calico, 7/18/13 (nonprecedential
citing Bard standard); Harris, 1/17/13 (nonprecedential
objective prong is a Q of law, which the district court
decides de novo Bard)
- Scope of waiver abuse of discretion; because willful

infringement and the scope of waiver accompanying the
advice of counsel defense invoke substantive patent law,
CAFC law applied Echostar (In re Seagate
Technology, 8/20/07 (en banc)) Innogenetics, 1/17/08
- District courts decision regarding the scope of

waiver of privilege, underlying petition for writ of
mandamus abuse of discretion (In re Seagate
Technology, 8/20/07 (en banc); In re Echostar
Written description; New matter
- Written description Q of fact (Synthes USA, 10/29/13

(affirming jury verdict of lack of WD based on claim
broadening during prosecution, which was supported by
substantial evidence); Trading Techs., 8/30/13; In re
Bimeda Research, 7/25/13 (BPAI substantial evidence
defined); Novozymes, 7/22/13; Synqor, 3/13/13 (jury
finding of entitlement to earlier filing date); Energy
Transportation Group, 10/12/12 (jury verdict of adequate
WD was supported by substantial evidence); Pozen,
9/28/12 (bench trial clear error); Bard, 2/10/12 (jury)
[vacated in part after remanded on 6/14/12]; Streck,
1/10/12; Atlantic Research, 10/6/11; Harari, 9/1/11
(BPAI); Boston Scientific, 6/7/11; Hynix, 5/13/11 (the
CAFCs review of the district courts denial of a new
trial and denial of JMOL on WD is severely
circumscribed as a factual issue already decided by a jury
and approved by the district court); Crown Packaging,
487
4/1/11; Centocor, 2/23/11 (jury finding of adequate WD
was not supported by substantial evidence); In re Katz
Patent Litigation, 2/18/11; Laryngeal Mask, 9/21/10;
Spine Solutions, 9/9/10 (SJ of adequate WD); Eli Lilly,
9/1/10 (district courts finding of lack of WD was not
clearly erroneous); Honeywell, 5/25/10; Yorkey I, 4/7/10
(interference the BPAIs adequate WD finding was
supported by substantial evidence); Yorkey II, 4/7/10;
Ariad, 3/22/10 (en banc) (jury); Martek Biosciences,
9/3/09 (jury finding of priority was supported by
substantial evidence); In re Skvorecz, 9/3/09; Hyatt,
8/11/09 [vacated]; Agilent Techs., 6/4/09; Cordis,
3/31/09 (jury application entitled to priority of
provisional application); ICU Medical, 3/13/09; In re
Alonso, 10/30/08; Technology Licensing, 10/10/08;
Yingbin-Nature, 7/31/08; Poweroasis, 4/11/08; Falkner,
5/26/06; Kao, 3/21/06 (clear error defined); Invitrogen,
11/18/05; Pandrol, 9/19/05; Bilstad, 10/7/04; Koito Mfg.,
8/23/04 (following jury verdict); Glaxo, 7/27/04 (Q of
law, de novo review; mistake?); Intirtool, 5/10/04; U.
Rochester, 2/13/04; Curtis, 1/6/04)
- Inquiry is a factual one and must be assessed on a

case-by case basis (Ariad, 3/22/10 (en banc);
Yingbin-Nature, 7/31/08)
- Written description is a question of fact, judged

from the perspective of one of ordinary skill in the
art as of the relevant filing date Vas-Cath, Lilly
(Streck, 1/10/12; Spine Solutions, 9/9/10
(determining support for term not expressly
disclosed in the specification); Bradford, 4/29/10
(determining priority date); In re Alonso, 10/30/08;
Falkner, 5/26/06)
- New matter prohibition under 35 USC 132 Q of fact

(CSIRO, 9/19/08)
488
Non-patent substantive issues
Agency regulations
- District courts interpretation of agency regulations

reviewed without deference (Nilssen, 10/10/07 (payment
of small entity fees))
Arbitration
- Arbitration questions of arbitrability regional circuit

law applied, if not relating to enforcement of patent right
(Promega, 3/28/12 (7th Cir.); Qualcomm, 10/20/06 (9th
Cir.))
- Arbitrability of a claim the CAFC reviews de

novo the district courts determination that the
parties have contractually bound themselves to
arbitrate disputes, and its factual findings for clear
error (Promega, 3/28/12 (7th Cir.); DataTreasury,
4/16/08 (also, when determining the scope of an
arbitration clause, the Fifth Circuit applies the state
law that governs the agreement))
Attorney disqualification
- Attorney disqualification regional circuit law applied

abuse of discretion (Ring Plus, 8/6/10 (no abuse of
discretion in denying motion to disqualify (5th Cir.));
Ultimax Cement, 12/3/09 (sound basis for the district
courts actions (9th Cir.)); See also In re U. of South
Florida, 1/12/12 (Order) (nonprecedential - no abuse of
discretion in denying motion to withdraw, based on
several factors (3rd Cir.))
Bankruptcy
489
- Estimation of value of claim abuse of discretion (In re
Electro-Mechanical Indus., 12/22/09 (nonprecedential
applying 5th Cir. law))
Constitutionality of law and interpretation
- Constitutionality of law and interpretation plenary

review (Brooks, 12/13/12; Xechem Intl, 8/31/04)
- Constitutionality of an act of Congress Q of law

reviewed de novo (Brooks, 12/13/12
(amendment to Section 292 in the AIA
retroactively eliminating qui tam suits was
constitutional))
Contract disputes, interpretation
- Contract interpretation
- Interpretation of a contract Q of law, reviewed de

novo, without deference (Alexsam, 5/20/13
(affirming noninfringement based on sublicense
terms of agreement); Intel, 12/17/12 (patent license
agreement governed by California law); Abbott,
1/13/12; Rembrandt, 4/18/11 (construing license
and side agreement to determine whether
defendants supplier was a proper sublicensee for
purposes of invoking patent exhaustion); Silicon
Graphics, 6/4/10 (applying Delaware law); Mann
Foundation, 5/14/10; (applying California law to a
license agreement); Epistar, 5/22/09 (applying
California law to settlement agreements); Lucent
Techs., 9/25/08 (joint development agreement);
Howmedica, 9/2/08 (settlement agreement);
Nilssen, 10/10/07); See also Buckhorn, 9/19/13
490
(nonprecedential applying California law to fee
provision in settlement agreement); Convolve,
7/1/13 (nonprecedential - NDA); In re
Cyclobenzaprine, 2/14/13 (nonprecedential); Air
Turbine Tech., 4/24/09 (nonprecedential attorney
fee provision); NISTAC, 4/23/09 (nonprecedential
donation agreement)
- Interpretation of contract terms generally

reviewed under regional circuit law, unless under
the CAFCs exclusive control (Sanofi-Aventis,
10/18/11 (settlement agreement (2nd Cir. de novo
review of the district courts interpretation));
Corebrace, 5/22/09 (under 10th Cir. law, contract
terms are construed based on the law of the
jurisdiction identified in the contract, here, Utah
law); DDB Technologies, 2/13/08 (although state
law governs contract interpretation generally,
patent assignment clause was intimately bound up
with the question of standing in patent cases, and
thus federal (CAFC) law applied to question of
automatic assignment provision, while state
contract law otherwise applied to the interpretation
of an employment agreement; see also J. Newman,
dissenting: disputes arising from employment
agreements are and have always been a matter of
state law); Sevenson, 2/21/07 (CAFC law
applied); Depuy Spine, 11/20/06 (1st Cir.)); See
also Buckhorn, 9/19/13 (nonprecedential
applying 6th Cir. law, and California state law, to
settlement agreement); Bennett Marine, 9/19/13
(nonprecedential settlement agreement (11th Cir.,
applying Florida law)); Air Turbine Tech., 4/24/09
(nonprecedential contract interpretation in the
context of an attorney fee provision abuse of
discretion or clear error (11th Cir.)); NISTAC,
4/23/09 (nonprecedential applying Michigan
law)
491
- Contract interpretation relevant to patent
infringement, government contracts CAFC
law applied Q of law, de novo (Sevenson,
2/21/07)
- Waiver of validity challenge in settlement

agreement apply CAFC law (Baseload
Energy, 9/9/10)
- State law applied to contract interpretation (Intel,

12/17/12 (applying California law to interpret
whether patent license agreement extended to
reissue patents); Preston, 7/10/12 (rejecting
interpretation that would have produced an absurd
result contrary to Wyoming law in an assignment
provision of employment agreement); Abbott,
1/13/12 (applying New Jersey law absent
ambiguity, the intention of the parties is to be
ascertained by the language of the contract thus,
a request for discovery of extrinsic evidence
regarding the parties intent was properly denied
where the agreement was unambiguous; see also J.
Bryson, dissenting); Sanofi-Aventis, 10/18/11
(applying New York law to settlement agreement);
Powertech, 9/30/11 (remanding for the district
court to decide, based on California law, whether
implied in license agreement that royalty-bearing
products must be tied to valid patent coverage); In
re Shared Memory Graphics, 9/22/11 (Order)
(applying Washington law and the Restatement of
Contracts to interpret provision in joint defense
agreement waiving future conflicts of interest
looking to the document as a whole, being careful
to avoid an interpretation that would render part of
the agreement superfluous, and where the district
courts reading of the provision was contrary to the
intent of the parties to protect confidential
492
information; see also J. Newman, dissenting); Tri-
Star Electronics, 9/9/10 (applying Ohio law to
patent assignment, giving effect to the intention of
the parties); Mann Foundation, 5/14/10 (applying
California law to license agreement); SiRF
Technology, 4/12/10 (applying California law to
meaning of assignment terms); Tyco, 12/7/09
(applying Delaware law, under which a court
effectuates the parties intent -- here, regarding
ownership of the asserted patents for standing to
sue)); See also Buckhorn, 9/19/13 (nonprecedential
applying California law to settlement
agreement); Convolve, 7/1/13 (nonprecedential
California law); In re Cyclobenzaprine, 2/14/13
(nonprecedential applying Delaware law to
interpret settlement agreement); Dow Chemical,
1/24/12 (nonprecedential affirming standing to
sue, applying Delaware law to agreement which
allegedly transferred the asserted patents to the
patentees holding company look within the four
corners of an unambiguous contract without
resorting to extrinsic evidence; see also J. Reyna,
dissenting contract was ambiguous); Randall
May, 5/11/10 (nonprecedential admissibility of
parol evidence under California law); Applera,
3/25/10 (nonprecedential applying California law
to inventions assignment in employment
agreement)
- State contract law applied in interpreting a

settlement agreement (Sanofi-Aventis,
10/18/11 (New York law); Epistar, 5/22/09
(California law); Howmedica, 9/2/08;
Semitool, 4/6/06); See also Buckhorn,
9/19/13 (nonprecedential applying
California state contract law to broad fee-
shifting provision, in accordance with
settlement agreement, under which contracts
493
are interpreted without deference on appeal,
and whether the contract or provisions
thereof are unconscionable ultimately is a Q
of law); Bennett Marine, 9/19/13
(nonprecedential reversing the district
courts judgment of breach of settlement
agreement, which was based on
infringement, after reversing the district
courts infringement finding Florida law);
Beriont, 8/6/13 (nonprecedential); In re
Cyclobenzaprine, 2/14/13 (nonprecedential
Delaware law)
- State contract law applied in interpreting a

(patent) license agreement (Intel, 12/17/12
(applying California law); Powertech,
9/30/11 (whether term implied in license
agreement, under California law); Mann
Foundation, 5/14/10; Imation, 11/3/09
(patent license agreement unambiguously
included Imations future subsidiaries,
applying New York contract law))
- Ambiguity of contract language state law applied

- Q of law, de novo (Tyco, 12/7/09 (applying
Delaware law, dictionary definitions, and cases in
the patent context in interpreting the contractual
phrase related to pending litigation; see also J.
Newman, dissenting focusing on the contract text
and intent of the parties, under Delaware law and
common law principles); Corebrace, 5/22/09
(applying Utah law); Epistar, 5/22/09 (applying
three basic rules for contract interpretation under
the California Civil Code, based on which contract
interpretation is governed by the objective intent of
the parties as embodied in the words of the
contract); Euclid Chemical, 4/1/09 (see also J.
Newman, dissenting); DDB Technologies, 2/13/08
494
(Texas law; whether patents in suit were covered
by the assignment clause of an employment
agreement); Depuy Spine, 11/20/06 (Indiana law);
Panduit, 6/12/06 (Illinois); Parental Guide of
Texas, 4/21/06; Semitool, 4/6/06; Microstrategy,
11/17/05); See also Air Turbine Tech., 4/24/09
(nonprecedential applying Florida law, holding
that a fee provision (legal costs and expenses) in
light of the (parol) evidence clearly expressed a
mutual intent to provide for attorney fees, despite
being subject to two interpretations; see also J.
Plager, dissenting appropriate to defer to the
district courts reasoned explanation of what his
states law requires); NISTAC, 4/23/09
(nonprecedential applying Michigan law in
concluding that the language of a donation
agreement (the term practice . . . of patent rights)
unambiguously released Ford from all claims
arising from the plaintiffs enforcement of the
donated patents; see also J. Bryson, dissenting
would have remanded for factual resolution of the
ambiguity, including the consideration of extrinsic
evidence of the parties intent, since interpretation
of ambiguous contracts under Michigan law is a
question of fact for the trier of fact))
- Consent judgment/consent decree = form of

contract, thus rules of contract interpretation apply
Q of (state) law, de novo review; factual findings
reviewed for clear error (Semitool, 4/6/06 (Cal.);
Thatcher, 2/10/05; Unova, 3/31/04); See also
Reese, 12/21/12 (nonprecedential de novo
review of the district courts interpretation of a
consent judgment (9th Cir.))
- Licenses whether implied license created as a

result of the parties conduct ultimate conclusion
is legal one based on underlying findings of fact
495
regarding the parties conduct and the existence of
consideration Wang (Depuy Spine, 11/20/06
(exclusive license))
- Regional circuit law is applied to contractual

disputes, including disputes involving
license agreements (Corebrace, 5/22/09
(Tenth Circuit applies the law of the
jurisdiction identified in the contract, here,
Utah law); DataTreasury, 4/16/08)
- Pretrial stipulation, like contract interpretation Q

of law reviewed de novo (Scanner Techs.,
6/19/08; Fuji Photo, 1/14/05)
Eleventh Amendment (state) immunity, sovereign

immunity of federal government
- Eleventh amendment immunity, and waiver thereof

CAFC law applied - plenary review (U. Utah, 8/19/13;
A123 Systems, 11/10/10; Biomedical Patent Mgt.,
10/23/07; Baum R&D, 10/10/07; Vas-Cath, 1/23/07;
Tegic Communications, 8/10/06)
- Eleventh amendment immunity for patent

infringement claims apply CAFC law
(Biomedical Patent Mgt., 10/23/07; Pennington
Seed, 8/9/06)
- Waiver of sovereign immunity apply CAFC law (U.

Utah, 8/19/13; Delano Farms, 8/24/11 (looking to
analysis of regional circuits with regard to waiver of
sovereign immunity by federal agency))
Federal Rules of Civil Procedure interpretation

thereof
496
- Federal Rules of Civil Procedure interpretation or
application thereof apply regional circuit law (Woods,
8/28/12 (application - 11th Cir. broad discretion to
fashion discovery sanctions); RFR Industries, 2/16/07 (5th
Cir.))
Laches (non-patent)
- Laches defense (non-patent) unfair prejudice personal

to defendant raising defense (Israel Bio-Engineering
Project, 3/15/05)
Mandate scope and interpretation
- Scope and interpretation of the CAFCs mandate by the

district court, CAFC de novo review (TecSec, 10/2/13
(CAFCs review); Transocean, 11/15/12; Cordis,
9/28/11; Cardiac Pacemakers, 8/19/09)
Piercing the corporate veil
- Alter ego whether a corporation is the alter ego of an

individual regional circuit law applied (Wechsler,
5/18/07 (9th Cir., applying state law))
Statutory deception
- Statutory deception Q of fact (Clontech, 5/5/05)
Statutory interpretation
- Statutory interpretation Q of law de novo review,

without deference (Abbott Labs, 3/20/13 (Section 24
497
issuance of subpoenas in contested cases); Belkin Intl,
10/2/12 (BPAI inter partes reexam statutes Sections
312, 313); In re Beineke, 8/6/12 (BPAI Section 161
(plant patents)); Loughlin, 7/11/12 (BPAI Section
135(b)(2)); Marine Polymer, 3/15/12 (en banc) (Section
307(b) intervening rights in reexamination);
Astrazeneca, 2/9/12 (claim for infringement under
Section 271(e)(2) of method of use patents); Adair,
2/7/12 (Section 135(b)(1) bar); Bettcher Indus., 10/3/11
(estoppel provision of Section 315(c)); In re NTP II,
8/1/11 (BPAI - Section 120 and Sections 301 et seq.); In
re Giacomini, 7/7/10 (BPAI Section 102(e));
Encyclopaedia Britannica, 6/18/10 (Section 120);
Advanced Magnetic Closures, 6/11/10 (Section 102(f));
Ortho-McNeil, 5/10/10 (Section 156); Novo Nordisk,
4/14/10 (counterclaim provision of the 2003 amendment
to the Hatch-Waxman Act); Boehringer Ingelheim,
1/25/10 (scope of Section 121 safe-harbor provision);
Wyeth, 1/7/10 (patent term adjustment under Section
154(b)); Forest Group, 12/28/09 (offense in Section
292); Eli Lilly, 2/24/09 (J. Prost, dissenting thirty-
month statutory stay under the Hatch-Waxman Act);
Aristocrat Techs., 9/22/08 (ruling that improper revival
of an abandoned application is not a defense to
infringement under Section 282); In re Swanson, 9/4/08
(interpreting the scope of the substantial new question
of patentability requirement of amended Section 303);
Cooper Techs., 8/19/08 (PTOs interpretation of inter
partes reexam provision of AIPA); Proveris, 8/5/08 (35
USC 271(e)(1)); Boston Scientific Scimed, 8/8/07 (35
USC 119); Merck, 3/29/07; Medrad, 10/16/06; Regents
of U. California, 7/17/06 (BPAI); Intel, 7/14/06; Zoltek,
3/31/06; Microstrategy, 11/17/05; Union Carbide,
10/3/05; Broadcast Innovation, 8/19/05; NTP, 8/2/05;
AT&T, 7/13/05; Eolas, 3/2/05; Cardiac Pacemakers,
8/31/04; Stevens, 5/4/04; National Steel Car, 1/29/04;
Bayer, 8/22/03)
498
- Interpretation of state law Q of law, de novo
review (Phillips, 4/8/04)
- Review of district courts interpretation of statutes

and regulations is without deference; the CAFC
may address arguments beyond those originally
presented by parties to the district court (Broadcast
Innovation, 8/19/05)
- Statutory and Constitutional analysis Q of law

reviewed without deference (Zoltek, 3/31/06)
Non-patent procedural issues
Anti-suit injunction
- Anti-suit injunction grant or denial thereof abuse of

discretion (Sanofi-Aventis, 5/10/13 (affirming denial of
anti-suit injunction of foreign arbitration, applying 9th
Cir. law))
Attorney-client privilege and waiver
- Attorney-client privilege and waiver, generally apply

law of regional circuit fact question (Wi-Lan, 7/13/12
(applying 9th Cir. law to the scope of waiver of attorney-
client privilege reviewed de novo); Fort James,
6/22/05); See also In re Google, 2/6/12 (Order)
(nonprecedential applying 9th Cir. law whether the
burden of establishing privilege met, and rulings on the
scope of the attorney-client privilege reviewed de novo;
whether communication protected by privilege mixed
question of law and fact reviewed without deference)
- District courts determination of material protected

by the attorney-client privilege abuse of
discretion (Unigene Labs, 8/25/11)
499
- Crime-fraud exception to attorney client privilege
CAFC law applied (Unigene Labs, 8/25/11)
Bifurcation of trial
- Bifurcation of trial FRCP 42(b) - abuse of discretion

(Shum, 8/24/07)
Claim and issue preclusions
- Claim preclusion whether a claim is barred by claim

preclusion (res judicata) is a Q of law reviewed de novo
(Levi Strauss, 6/18/13; Cummins, 12/5/12 (7th Cir.);
Superior Indus., 11/27/12 (8th Cir.); Gillig, 4/20/10;
Nystrom, 9/8/09 (whether to bar an infringement claim
based on prior litigation); Roche Palo Alto, 7/9/08;
Acumed, 5/13/08; Nasalok Coating, 4/14/08 (TTAB); In
re Bose, 2/8/07 (TTAB)); no deference; law of regional
circuit applied (Roche Palo Alto, 7/9/08 (9th Cir.);
Transclean, 1/18/07 (8th Cir.); Pactiv, 6/5/06 (2nd Cir.);
Media Technologies, 7/11/03); See also American Rice,
11/16/09 (nonprecedential TTAB)
- Privity Q of law or fact? split in authority

(Transclean, 1/18/07)
- Regional circuit law applied to cases turning on

general principles of claim preclusion, as opposed
to a rule of law having special application to patent
cases, for which CAFC law is applied (Cummins,
12/5/12 (applying Illinois state law (i.e., the law of
the state in which the court sits Semtek (S.C.))
governing res judicata, under 7th Cir. law);
Superior Indus., 11/27/12 (8th Cir; the CAFC looks
to CAFC precedent to resolve underlying issues of
substantive patent law, such as the operative facts
500
involved in a claim for patent infringement citing
Acumed); Aspex Eyewear, 3/14/12 (n.1: the
question whether a particular claim in a patent case
is the same as or separate from another claim has
special application to patent cases, and thus
CAFC law is applied); Nystrom, 9/8/09 (applying
CAFC law, same as Roche and Acumed); Roche
Palo Alto, 7/9/08 (whether two infringement
claims constitute the same claim is an issue
particular to patent law); Acumed, 5/13/08
(whether two claims for patent infringement are
identical is a claim preclusion issue that is
particular to patent law and thus was analyzed
under CAFC law; also, there was no significant
difference between CAFC and 9th Cir. law with
respect to claim preclusion))
- Collateral estoppel (issue preclusion) de novo, plenary

review - law of regional circuit applied, except for
aspects having unique or special application to patent
cases, CAFC law is applied (Ohio Willow Wood,
11/15/13 (applying CAFC law); TecSec, 10/2/13 (4th
Cir.); Levi Strauss, 6/18/13; Aspex Eyewear, 4/19/13
(11th Cir.); Transocean, 8/18/10 (5th Cir.); Source Search,
12/7/09 (3rd Cir. abuse of discretion); In re Trans Texas
Holdings, 8/22/07 (questions of issue preclusion
reviewed without deference, citing CAFC law); Abbott
Labs, 1/5/07 (7th Cir.) (invalidity; application of
Blonder-Tongue); Applied Medical Resources, 1/24/06
(9th Cir.); Novartis, 7/8/04); See also Reese, 12/21/12
(nonprecedential in the Ninth Circuit, the availability of
collateral estoppel is a mixed Q of law and fact reviewed
de novo, while the district courts decision to accord
preclusion and apply collateral estoppel is reviewed for
abuse of discretion)
Credibility determinations
501
- Credibility determination (e.g., credit testimony of one of
two or more witnesses) made by district court great
deference given to the district court regarding credibility
of witnessess - clear error review (Medichem, 2/3/06;
Warner-Lambert, 8/11/05)
Discovery issues
- Discovery questions regional circuit law applied -

abuse of discretion (Apple, 8/23/13 (sealing and
unsealing of judicial records, confidential documents (9th
Cir. review de novo whether the district court used the
correct legal standard)); Cheese Systems, 8/6/13 (grant of
motion to strike testimony as a discovery sanction (7th
Cir.)); Wi-Lan, 7/13/12 (contempt proceedings, motion to
quash subpoena abuse of discretion (9th Cir.)); Abbott,
1/13/12 (denial of discovery (11th Cir.)); Eli Lilly,
2/24/09 (district court properly extended thirty-month
stay under Hatch-Waxman Act based on alleged
discovery abuses (7th Cir. and CAFC law defining
abuse of discretion)); Computer Docking Station, 3/21/08
(Rule 56(f) motion (7th Cir.)); DDB Technologies,
2/13/08 (denial of plaintiffs request for jurisdictional
discovery relating to standing was an abuse of discretion
(5th Cir.); noting rule in other circuits of abuse of
discretion if denial of jurisdictional discovery causes
prejudice to the litigant); Apotex, 11/16/07 (refusing to
compel discovery of material protected by attorney-client
privilege under crime-fraud exception (7th Cir.)); Group
One, 5/16/05; Commissariat a lenergie atomique,
1/19/05)
- Substantial deference given by the CAFC to a

district courts decisions on discovery issues (DDB
Technologies, 2/13/08 (discretion abused, given
502
the central relevance of the information sought in
discovery to the district courts jurisdiction))
- Discovery requests (e.g., timeliness) apply regional

circuit law (Commissariat a lenergie atomique, 1/19/05)
- Discovery of materials related to an issue of substantive

patent law apply CAFC law (In re MSTG, 4/9/12
(Order) (determining whether a privilege or other
discovery limitations protect disclosure of information
related to reasonable royalties))
- Sealing an unsealing of judicial records, confidential

documents regional circuit law applied abuse of
discretion (Apple, 8/23/13 (defining abuse of discretion))
- Expert fees award FRCP 26(b)(4)(C) - regional circuit

law applied abuse of discretion (Nilssen, 6/17/08 (7th
Cir.))
- Jurisdictional discovery relevance thereof the

relevance of a request for jurisdictional discovery
CAFC law applied (DDB Technologies, 2/13/08 (limited
jurisdictional discovery requested was relevant to the
existence of subject matter jurisidiction, i.e., plaintiffs
standing); Commissariat a lenergie atomique, 1/19/05)
- Denial of jurisdictional discovery regional circuit

law applied abuse of discretion (Abbott, 1/13/12
(11th Cir.); Autogenomics, 5/18/09 (9th Cir.))
- Sanctions FRCP 37 See Sanctions
- Spoliation of evidence reasonably forseeable standard

date when litigation was reasonably forseeable Q of
fact - reviewed for clear error (Micron Technology,
5/13/11 (district court did not clearly err in finding
spoliation of documents))
503
- Sanctions abuse of discretion (Micron
Technology, 5/13/11); See also Adams & Assocs.,
3/18/13 (nonprecedential district court abused
discretion (in committing legal error) by imposing
an adverse inference sanction for spoliation absent
a finding of bad faith (applying 10th Cir. law))
Dismissal of claims, counterclaims, defenses
- Dismissal of claim under FRCP 4 for failure to timely

serve a defendant abuse of discretion (Fraser, 7/8/09
(nonprecedential (1st Cir.)))
- Dismissal of (affirmative) defense under FRCP 8(c)(2)

abuse of discretion (Stanford U., 9/30/09 (9th Cir.);
[affirmed by the U.S. Supreme Court, on 6/6/11, in
Stanford U. v. Roche])
- Dismissal of claim under FRCP 12(b)(1) and (b)(2) Q

of law, de novo review (Taurus IP, 8/9/13 (denial of
motion to dismiss for lack of personal jurisdiction (7 th
Cir.)); U. Utah, 8/19/13 (1st Cir.); Semiconductor Energy
Laboratory, 2/11/13; Pennington Seed, 8/9/06); See also
Marcinkowska, 8/20/09 (nonprecedential Rule 12(b)(2)
de novo review, and underlying fact findings clear
error (4th Cir.)); Wong, 7/9/09 (nonprecedential
dismissal by the Court of Federal Claims under Rule
12(b)(1) Q of law, no deference)
- In reviewing decision, the CAFC accepts the

plaintiffs well-pleaded factual allegations as true
and draws all reasonable inferences in its favor (U.
Utah, 8/19/13 (1st Cir.); Astrazeneca, 2/9/12
(CAFC test[s] the sufficiency of a complaint as a
matter of law, accepting as true all non-conclusory
allegations of fact); Pennington Seed, 8/9/06)
504
- Dismissal of claim under FRCP 12(b)(6) for failure to
state a claim upon which relief can be granted - apply
procedural law of the regional circuit de novo, plenary
review, applying the same standards as the district court
(Ultramercial, 6/21/13 (9th Cir.); K-Tech, 4/18/13 (9th
Cir.); Accent Packaging, 2/4/13 (5th Cir.); Superior
Indus., 11/27/12 (8th Cir.); Matthews Intl, 9/25/12
(dismissal of state law claims, citing CAFC cases); R+L
Carriers, 6/7/12 (6th Cir.); Ultramercial, 9/15/11 [vacated
and remanded by the U.S. Supreme Court on
5/21/12]; Juniper Networks, 4/29/11 (9th Cir.); Gillig,
4/20/10; Hornback, 4/15/10 (9th Cir.); Corebrace, 5/22/09
(10th Cir.; reviewed de novo because the sufficiency of a
complaint is a Q of law); In re Ciprofloxacin, 10/15/08
(state law antitrust claims preempted by federal patent
law? CAFC did not answer); McZeal, 9/14/07 (5th Cir.);
Mitutoyo, 9/5/07 (7th Cir.); General Mills, 5/16/07;
Merck, 3/29/07 (3rd Cir.); Glenayre Electronics, 4/11/06;
Xechem Intl, 8/31/04; Ferguson, 12/4/03; Bayer,
8/22/03); See also Reese, 12/21/12 (nonprecedential
accept all factual allegations in the complaint as true and
construe them in the light most favorable to the
nonmoving party (9th Cir.)); Colida, 10/6/09
(nonprecedential 2nd Cir.); Marcinkowska, 8/20/09
(nonprecedential 4th Cir.); Wong, 7/9/09
(nonprecedential dismissal by the Court of Federal
Claims Q of law, no deference); NISTAC, 4/23/09
(nonprecedential 6th Cir.)
- Dismissal by Court of Federal Claims without

deference (Figueroa, 10/11/06)
- Dismissal of counterclaims apply regional circuit law -

without deference (Serio-Us Industries, 8/10/06 (4th
Cir.))
505
- Dismissal under FRCP 41 regional circuit law applied
abuse of discretion (Euclid Chemical, 4/1/09 (6th Cir.;
failure to prosecute under FRCP 41(b) abuse of
discretion); Mitutoyo, 9/5/07 (7th Cir.; failure to
prosecute under FRCP 41(b) abuse of discretion);
Walter Kidde, 3/2/07 (4th Cir.); RFR Industries, 2/16/07
(5th Cir.)); See also Cooper Notification, 8/30/13
(nonprecedential dismissal of litigation claims with
prejudice (3rd Cir.)); McZeal, 6/18/09 (nonprecedential
sua sponte dismissal for failure to prosecute abuse of
discretion (5th Cir., citing RFR Indus.))
- Voluntary dismissal, without prejudice, under

FRCP 41(a)(2) district court has discretion
whether to grant voluntary dismissal, and whether
to impose terms and conditions on dismissal
(Walter Kidde, 3/2/07 (4th Cir.)); See also In re
Medical Components, 8/2/13 (Order)
(nonprecedential nonmovants arguments
supported finding of legal prejudice sufficient for
the district court to deny motion for voluntary
dismissal (10th Cir.))
- Dismissal for forum non conveniens abuse

of discretion (Bonzel, 3/2/06)
- Dismissal with prejudice within the sound discretion

of the district court is the decision of whether dismissal is
with or without prejudice; regional circuit law applied
abuse of discretion; factual findings clear error (Tyco,
12/7/09 (2nd Cir.); U. of Pittsburgh, 6/9/09 (3rd Cir.)); See
also Cooper Notification, 8/30/13 (nonprecedential 3rd
Cir.)
- Dismissal with prejudice as a sanction? regional

circuit law applied (U. of Pittsburgh, 6/9/09 (3rd
Cir.))
506
Dismissal of appeal
- CAFCs practice is not to dismiss an appeal with or

without prejudice (Bio-Mimetics, 1/10/11
(nonprecedential declining to dismiss appeals with
prejudice, as the parties requested))
District courts interpretation of CAFC precedent
- District courts interpretation of CAFC precedent Q of

law, de novo review (Cordis, 1/7/08 (district court
properly barred party and its experts from interpreting a
prior CAFC decision for the jury); Toro, 9/13/04)
District courts interpretation of CAFCs mandate
- District courts interpretation of CAFCs mandate Q of

law, without deference (E-Pass Technologies, 1/12/07);
See also Applied Medical Resources, 2/24/09
(nonprecedential whether the district court followed the
CAFCs mandate Q of law, reviewed de novo)
District courts interpretation of its own orders
- District courts interpretation of its own orders entitled

to deference unless unreasonable or otherwise an abuse
of discretion (Amado, 2/26/08)
Evidentiary rulings
- Evidentiary rulings law of the regional circuit applied -

- abuse of discretion (Meadwestvaco, 9/26/13 (4th Cir.);
Rembrandt Vision, 8/7/13 (exclusion of expert testimony
regarding testing not in expert report (11th Cir.)); Cheese
507
Systems, 8/6/13 (exclusion of expert testimony (7th Cir.));
Versata Software, 5/1/13 (5th Cir.); Power Integrations,
3/26/13 (3rd Cir.); Synqor, 3/13/13 (no abuse of
discretion in excluding non-final reexamination evidence
from the jury (5th Cir.)); ePlus, 11/21/12 (4th Cir.);
Energy Transportation Group, 10/12/12 (3rd Cir. show
the district court acted irrationally and arbitrarily); Pozen,
9/28/12 (n.6: declaration testimony was not admissible
under residual hearsay rule of FRE 807 (5th Cir.));
Outside the Box Innovations, 9/21/12 (abuse of
discretion by improperly excluding technical expert
testimony; also was not harmless error under circuit law
(11th Cir. basing an evidentiary ruling on an erroneous
view of the law is an abuse of discretion per se)); K-Tec,
9/6/12 (probative value of evidence outweighed potential
for unfair prejudice (10th Cir.)); LaserDynamics, 8/30/12
(5th Cir.); Woods, 8/28/12 (11th Cir.); ActiveVideo
Networks, 8/24/12 (4th Cir.); Meyer, 8/15/12 (several
errors by the district court in excluding evidence (7th
Cir.)); Falana, 1/23/12 (6th Cir.); Streck, 1/10/12 (8th
Cir.); Bettcher Indus., 10/3/11 (6th Cir.); Star Scientific,
8/26/11 (4th Cir.); Retractable Techs., 7/8/11 (no abuse of
discretion (5th Cir.)); Lexion Medical, 4/22/11 (7th Cir.);
Siemens, 2/24/11 (3rd Cir.); Tokai, 1/31/11 (excluding
evidence on SJ (9th Cir.)); Green Edge, 9/7/10 (8th Cir.);
Verizon, 4/16/10 (4th Cir.); Delaware Valley, 3/11/10 (no
abuse of discretion in excluding declarations for
opposing SJ motion in which the testimony contradicted
deposition testimony (11th Cir.)); i4i, 3/10/10 (no abuse
of discretion in admitting survey evidence for estimating
the amount of infringing use for calculating damages,
which was supported by expert testimony (5th Cir.));
Davis, 3/2/10 (6th Cir.); Trading Techs., 2/25/10 (7th
Cir.); SEB, 2/5/10 (manifestly erroneous (2nd Cir.));
Martek Biosciences, 9/3/09 (3rd Cir.; abuse of discretion
defined); Callaway, 8/14/09 (3rd Cir.); Hyatt, 8/11/09 (no
abuse of discretion in excluding new evidence in a
Section 145 action which was withheld from the PTO)
508
[vacated]; Transcore, 4/8/09 (5th Cir.; exclusion of parol
evidence was not an abuse of discretion); Monolithic
Power Systems, 3/5/09 (9th Cir.; court appointed
independent expert witness under FRE 706(a)) Baden
Sports, 2/13/09 (9th Cir.); Proveris, 8/5/08 (1st Cir.;
limiting and excluding expert testimony in support of
invalidity); Research Corp. Techs., 8/1/08 (9th Cir.;
exclusion of expert testimony, grant of motions in
limine); Aventis Pharma, 5/14/08 (9th Cir.); Monsanto,
2/5/08 (8th Cir.); Innogenetics, 1/17/08 (7th Cir.; several
examples of excluded evidence); Pharmastem, 7/9/07
(General Electric (S.C.) cited for abuse of discretion
standard for excluding expert testimony); Honeywell,
5/25/07 (3rd Cir. - four factor test for evaluating exercise
of discretion); DSU Medical, 12/13/06; O2 Micro,
11/15/06 (9th Cir.); Kim, 9/20/06; Cook Biotech, 8/18/06
(7th Cir.); Flex-Rest, 7/13/06; Primos, 6/14/06; Liquid
Dynamics, 6/1/06 (7th Cir.); Kao, 3/21/06; Applied
Medical Resources, 1/24/06 (9th Cir., also must show
prejudicial error); *Microstrategy, 11/17/05; Invitrogen,
10/5/05; NTP, 8/2/05; Air Turbine Tech., 6/7/05; Sulzer,
2/14/04; Utah Products, 12/4/03)
- Regional circuit law applied, except to the extent

that such rulings implicate substantive patent law
(Martek Biosciences, 9/3/09 (no abuse of
discretion in excluding alleged prior inventors
evidence of invalidating prior invention under
Section 102(g), where inventors testimony was
not corroborated, applying CAFC law))
- Admission of evidence abuse of discretion

(Pozen, 9/28/12 (declaration testimony (5th Cir.));
SEB, 2/5/10 (expert testimony, 2nd Cir.);
Monsanto, 2/5/08 (expert testimony, 8th Cir.))
- Admission of prejudicial evidence (Chiron,

3/30/04)
509
- Exclusion of evidence (on a motion in limine)
abuse of discretion (Meadwestvaco, 9/26/13
(arguments to exclude expert testimony on
infringement because the expert did not follow the
parameters in the patent went to infringement, and
not admissibility (the experts testimony was not
legally irrelevant, despite varying slightly from the
district courts claim construction) (4th Cir.));
ePlus, 11/21/12; Meyer, 8/15/12 (abuse of
discretion in granting several motions in limine,
including ones which prevented the accused
infringer from presenting an obviousness defense
and where the excluded prior art was disclosed to
the patentee in interrogatory responses, applying
7th Cir. law must show both that the district court
erred in excluding evidence and that the exclusion
prejudiced its substantial rights); Falana, 1/23/12
(district courts exclusion of exhibits without
explanation was harmless error where the exhibits
were cumulative of testimony, and did not result in
substantial injustice under 6th Cir. law); Streck,
1/10/12 (noting the level of deference given to
district courts with respect to motions in limine,
order of proof and presentation of evidence);
Siemens, 2/24/11 (3rd Cir.); Green Edge, 9/7/10
(evidence of trademark damages was improperly
excluded (8th Cir.)); Becton Dickinson, 7/29/10
(exclusion of infringement theory not properly
raised during discovery); Verizon, 4/16/10;
Delaware Valley, 3/11/10; Martek Biosciences,
9/3/09 (no abuse of discretion in excluding
evidence of alleged invalidating prior invention
under Section 102(g)); Callaway, 8/14/09 (no
abuse of discretion in excluding evidence of a
parallel inter partes reexamination in which the
PTO rejected the claims of the same patents
relying on the same prior art relied on in the
510
litigation, as would confuse the jury and cause
prejudice); Hyatt, 8/11/09 [vacated]; Aventis
Pharma, 5/14/08 (lack of relevance; 9th Cir.);
Innogenetics, 1/17/08 (several examples); Cordis,
1/7/08 (FRE 403); O2 Micro, 11/15/06; Primos,
6/14/06)
- Untimeliness
- Damages evidence on eve of trial

would disrupt trial and cause
unacceptable delay, and subject other
party to unjustified risk of prejudice
district court has wide latitude in
managing trial practice (ePlus,
11/21/12)
- FRCP 37(b)(2) - for failure to obey

order regarding discovery abuse of
discretion (Chimie, 4/11/05)
- Denial of leave to supplement expert

report (O2 Micro, 11/15/06)
- Untimely deposition errata sheet

(after 30 days) excluded under FRCP
30(e) (Delaware Valley, 3/11/10)
- Evidence and argument to jury abuse of

discretion (Juicy Whip, 9/3/04)
- Expert testimony - exclusion or admission of

expert testimony abuse of discretion
(Meadwestvaco, 9/26/13 (4th Cir.); Rembrandt
Vision, 8/7/13 (11th Cir.); Cheese Systems, 8/6/13
(exclusion of supplemental expert declaration on
SJ containing testimony submitted after the close
of discovery was not an abuse of discretion (7th
511
Cir.)); Power Integrations, 3/26/13 (3rd Cir.); ePlus,
11/21/12 (damages testimony was properly
excluded as based on flawed and unreliable
methodology the applicable abuse of discretion
standard of review is highly deferential (4th
Cir.)); Outside the Box Innovations, 9/21/12
(expert testimony on nonobviousness was
improperly excluded (11th Cir.)); Meyer, 8/15/12
(expert testimony on obviousness was improperly
excluded); Mintz, 5/30/12; Lexion Medical,
4/22/11 (district court on remand had wide
discretion to supplement the record with new
factual (expert) declarations consistent with the
CAFCs new claim construction); i4i, 3/10/10 (no
abuse of discretion in admitting the patentees
experts testimony on damages, since the facts
relied on for his opinion went to the weight, not
admissibility, of the testimony (5th Cir.)); Davis,
3/2/10 (no abuse of discretion in striking paragraph
from patent experts affidavit in support of SJ
motion where the testimony was absent from his
expert report); Trading Techs., 2/25/10 (no abuse
of discretion in admitting patent expert testimony
regarding the WD requirement without drawing
any legal conclusions (7th Cir.)); SEB, 2/5/10
(district courts admission of expert testimony by
combined patent and technical expert was not
manifestly erroneous, as the district court enjoys
wide latitude to determine admissibility,
applying 2nd Cir. law); Callaway, 8/14/09 (no
abuse of discretion in excluding expert testimony
and underlying fact testimony regarding test golf
ball evidence, under FRE 403, that ran the risk of
causing undue prejudice by leading the jury to give
excessive weight to the challengers obviousness
arguments); Monolithic Power Systems, 3/5/09
(district court did not abuse discretion by
appointing an independent expert witness under
512
FRE 706(a) (9th Cir.)); Sundance, 12/24/08 (district
court abused discretion by admitting testimony
from patent law expert relating to infringement and
validity); Voda, 8/18/08 (no abuse of discretion
where the jury was instructed about an experts
lack of qualifications); Proveris, 8/5/08 (excluding
and limiting expert testimony not an abuse of
discretion); Zenith Electronics, 4/16/08 (n.3:
district court properly found no basis for
disqualifying technical expert) ; Monsanto, 2/5/08
(8th Cir.); Tivo, 1/31/08 (limiting expert testimony
regarding invalidity); Innogenetics, 1/17/08 (no
abuse of discretion in excluding expert report
when was insufficient to support jury finding of
obviousness); Honeywell, 5/25/07; Monsanto,
5/24/07 (damages); Hakim, 2/23/07; Kim, 9/20/06;
Flex-Rest, 7/13/06; Liquid Dynamics, 6/1/06 (7th
Cir.); Imonex, 5/23/05; Utah Products, 12/4/03);
See also Cooper Notification, 8/30/13
(nonprecedential no abuse of discretion in
excluding untimely supplemental infringement
reports filed after the district courts SJ decision,
applying four factors under 3rd Cir. law); Byrne,
11/18/11 (nonprecedential district court abused
its discretion by sua sponte excluding an inventors
affidavit opposing SJ, where the movant never
argued that the inventor was not a POS in the art
for purposes of testifying as an expert); Duramed,
3/25/11 (nonprecedential accused infringer failed
to show that the district court abused its discretion
in excluding testimony on prior use which was
uncorroborated)
- Expert declarations whether sufficient is a

question of fact (e.g., no experimental data or other
evidence) (In re Kumar, 8/15/05)
513
- Exclusion of expert declaration by
magistrate judge was discretionary (Hakim,
2/23/07)
- District courts ruling turns on interpretation of a

Federal Rule of Evidence plenary review (Power
Integrations, 3/26/13 (3rd Cir.))
Exhaustion of administrative remedies
- Exhaustion of administrative remedies regional circuit

law applied (Optivus Tech., 11/16/06 (9th Cir.))
Experts
- Expert opinions applicable standard controlling the

factual foundation necessary to support an experts
opinion regional circuit law applied Novartis (Davis,
3/2/10 (6th Cir. conclusory statements with no
supporting facts are insufficient to establish a factual
dispute that will defeat SJ))
Joinder, severance, intervention and transfer
- Joinder and severance CAFC law applied under FRCP

20(a), because joinder in patent cases is based on an
analysis of the accused acts of infringement, which
involves substantive issues unique to patent law (In re
EMC, 5/4/12 (Order) (applying CAFC law to whether
motion to sever (of a motion to sever and transfer) should
be granted); Insituform Techs., 10/4/04 (abuse of
discretion)); See also In re Nintendo, 9/25/13 (Order)
(nonprecedential CAFC law applied to severance
(Section 299 and Rules 20 and 21), but also look to sister
circuits for guidance)
514
- Motion to intervene FRCP 24 abuse of discretion
(Stauffer, 8/31/10 (district court made an error of law in
denying the governments motion to intervene under
Rule 24(a)(2) (2nd Cir.)); Israel Bio-Engineering Project,
3/15/05 (Rule 24(a)(2)))
- Necessary, indispensable party FRCP 19 regional

circuit law applied - abuse of discretion (U. Utah, 8/19/13
(1st Cir.); A123 Systems, 11/10/10 (1st Cir.); Bonzel,
3/2/06); See also Kippen, 8/2/12 (nonprecedential - 10th
Cir.)
- Questions of necessary parties, as well as

ownership rights, receive plenary review Rite-
Hite (IPVenture, 9/28/07)
- Transfer to another district court 28 USC 1404(a)

regional circuit law applied - abuse of discretion (In re
EMC, 5/4/12 (Order) (motion to sever and transfer
applying CAFC law to the underlying issue of whether
motion to sever should be granted); In re Link_A_Media
Devices, 12/2/11 (Order) (applying writ of mandamus
law (3rd Cir.)); Micron Technology, 5/13/11 (3rd Cir.))
- Federal court sitting in diversity applies the

procedural law of the forum, and upon transfer of
venue under Section 1404(a), the substantive law
of the transferor state continues to apply, for a
transfer for convenience of the defendant does not
change the law governing the plaintiffs state law
claims Van Dusen (S.C.), Hanna (S.C.) (Core
Labs, 8/7/13 (nonprecedential))
- Transfer of appeal to another circuit 28 USC 1631

(Zoltek, 3/14/12 (en banc in part) (transfer from Court of
Federal Claims to district court abuse of discretion, and
issues of law reviewed de novo); Medimmune, 10/18/05)
515
Judical estoppel
- Judicial estoppel regional circuit law applied - abuse of

discretion (Source Search, 12/7/09 (3rd Cir.); Biomedical
Patent Mgt., 10/23/07 (9th Cir.); Transclean, 1/18/07;
Bonzel, 3/2/06; Sandisk, 7/8/05); See also Speedtrack,
4/16/13 (nonprecedential 9th Cir.); Fitness Quest,
5/12/09 (nonprecedential the application of judicial
estoppel is reviewed de novo in the Sixth Circuit)
Jurisdiction of district court
- Jurisdiction of the district court Q of law, reviewed de

novo, without deference (Forrester, 5/16/13; Astrazeneca,
2/9/12; Powertech, 9/30/11; Advanced Magnetic
Closures, 6/11/10 (district court retains jurisdiction to
consider a motion for attorney fees under Section 285,
and to make findings of IC - Monsanto); HIF Bio,
3/31/10; Davis, 3/2/10; Excelstor Tech., 9/16/08;
Litecubes, 4/28/08; DDB Technologies, 2/13/08 (district
courts underlying factual determinations reviewed for
clear error) ; Monsanto, 1/25/08; HIF Bio, 11/13/07
[reversed by S.C. and remanded]; Air Measurement
Techs., 10/15/07; Abbott Labs, 10/11/07; Fuji Photo
Film, 8/23/06)
- Subject matter jurisdiction Q of law, reviewed de

novo; underlying factual findings clear error
(Forrester, 5/16/13; Pregis, 12/6/12 (dismissal of
APA claims against the PTO); Astrazeneca,
2/9/12; Powertech, 9/30/11; Arris Group, 5/19/11;
ABB, 2/17/11; Excelstor Tech., 9/16/08;
Litecubes, 4/28/08; DDB Technologies, 2/13/08
(whether all co-owners of patent were properly
joined); Abbott Labs, 10/11/07 (district court had
516
SMJ under the Hatch-Waxman Act to conduct
contempt proceedings))
- Subject matter jurisdiction whether actual

controversy under Article III exists Q of
law, de novo review (Dey Pharma, 4/16/12;
Powertech, 9/30/11; Arris Group, 5/19/11;
Green Edge, 9/7/10; King, 8/2/10; Samsung
Electronics, 4/29/08; Micron Technology,
2/29/08; Highway Equipment, 11/21/06);
See also Dismissal of DJ action
- Standing to sue for patent infringement

reviewed without deference Rite-Hite
(Abbott, 1/13/12)
- Dismissal of DJ action (counterclaim) for lack of

subject matter jurisdiction on a motion to
dismiss - whether Article III jurisdiction exists
grant or denial - Q of law, reviewed de novo,
without deference, with underlying factual findings
reviewed for clear error (Organic Seed Growers,
6/10/13; Arkema, 2/5/13; Myriad, 8/16/12; 3M,
3/26/12 (remanding for the district court to decide
in the first instance factual issues relevant to
whether DJ jurisdiction); Powertech, 9/30/11;
Creative Compounds, 6/24/11; Arris Group,
5/19/11; Green Edge, 9/7/10; Hewlett-Packard,
12/4/09; Janssen, 9/4/08; Cat Tech., 5/28/08;
Caraco, 4/1/08; Micron Technology, 2/29/08;
Adenta, 9/19/07; Sony Electronics, 8/3/07; Teva,
3/30/07; Sandisk, 3/26/07; Plumtree Software,
12/18/06; Teva, 1/21/05; Gen-Probe, 3/5/04)
- Actual controversy to support jurisdiction

under the DJ Act Q of law, de novo
review; factual determinations made in
resolving Q of law clear error (Matthews
517
Intl, 9/25/12; Myriad, 8/16/12; Hewlett-
Packard, 12/4/09; Janssen, 9/4/08; Cat
Tech., 5/28/08 (DJ of noninfringement was
proper); Sony Electronics, 8/3/07 (relevant
facts undisputed, so reviewed de novo);
Teva, 3/30/07; Sandisk, 3/26/07; Plumtree
Software, 12/18/06; Microchip Tech.,
3/15/06; Fort James, 6/22/05; Medimmune,
6/1/05; Sierra Applied Sciences, 4/13/04;
Gen-Probe, 3/5/04)
- District courts exercise of jurisdiction over

DJ action is discretionary, even if actual
controversy exists 28 USC 2201 court
. . . may declare the rights . . . deferential,
abuse of discretion standard applied;
however, district courts discretion is not
without bounds (Powertech, 9/30/11 (district
court abused its discretion in dismissing DJ
action); Green Edge, 9/7/10; Cat Tech.,
5/28/08 (DJ of noninfringement was
proper); Micron Technology, 2/29/08 (abuse
of discretion defined; although broad, the
district courts discretion is not absolute);
Sony Electronics, 8/3/07 (abuse of discretion
defined); Tegic Communications, 8/10/06;
Electronics for Imaging, 1/5/05; Capo,
10/25/04; Sierra Applied Sciences, 4/13/04)
- District court may exercise its

discretion to dismiss (or stay) a case if
the courts decision is consistent with
the purposes of the DJ Act and
considerations of wise judicial
administration (Micron Technology,
2/29/08 (district courts dismissal was
improper, as not consistent with the
518
purposes of the DJ Act); Sony
- DJ jurisdiction for
noninfringement/invalidity CAFC
law applied (Myriad, 8/16/12; 3M,
3/26/12; Adenta, 9/19/07; Microchip
Tech., 3/15/06; Medimmune, 6/1/05)
- Personal jurisdiction apply CAFC law (to patent

claim) - Q of law reviewed de novo; underlying
facts reviewed for clear error (Grober, 7/30/12;
Merial, 5/31/12 (findings of fact bearing on
personal jurisdiction clear error); Nuance,
11/12/10; Patent Rights Protection Group, 5/10/10;
Touchcom, 8/3/09; Autogenomics, 5/18/09;
Synthes (USA), 4/17/09; Avocent, 12/16/08;
Medical Solutions, 9/9/08)
- CAFC law applied because the jurisdictional

issue is intimately involved with the
substance of the patent laws Avocent,
Beverly Hills Fan (Grober, 7/30/12;
Autogenomics, 5/18/09)
- Analyzing personal jurisdiction for

compliance with federal due process,
CAFC law is applied (Touchcom,
8/3/09)
- Defer to the interpretation of a states

long-arm statute given by the states
highest court, particularly whether or
not the statute is intended to reach the
limit of federal due process
(Touchcom, 8/3/09 (Virginia))
519
- Non-patent claims apply law of regional
circuit (Taurus IP, 8/9/13 (breach of contract
case (7th Cir. reviews de novo the denial of
a motion to dismiss for lack of personal
jurisdiction, drawing any factual inferences
in favor of the nonmovant)))
- Denial of jurisdictional discovery abuse of

discretion (Nuance, 11/12/10 (9th Cir.));
Patent Rights Protection Group, 5/10/10
(discretion abused by denial, applying 9th
Cir. law); Autogenomics, 5/18/09 (no abuse
of discretion where no formal motion made;
9th Cir); Medical Solutions, 9/9/08 (no abuse
of discretion for denying discovery based on
insufficient declaration testimony; DC Cir.))
- Service of process no deference when no

evidentiary hearing (Nuance, 11/12/10 (9th
Cir.))
- Supplemental jurisdiction 28 USC 1367

abuse of discretion (Semiconductor Energy
Laboratory, 2/11/13; HIF Bio, 3/31/10 (while the
district court has discretion not to exercise
supplemental jurisdiction over state law claims, it
has no discretion to remand to state court claims
arising under federal law); HIF Bio, 11/13/07
[reversed by S.C. and remanded]; Voda, 2/1/07);
See also In re Volkswagen, 9/26/08
(nonprecedential applying 6th Cir. law to district
courts decision not to exercise jurisdiction over
state law claims)
- Jurisdiction over settlement agreement entirely

discretionary abuse of discretion (Nissim,
12/11/12 (nonprecedential see also J. Moore,
dissenting))
520
Jurisdiction of CAFC over appeal
- Jurisdiction of CAFC over appeal Q of law, de novo

review determined under CAFC law (Aevoe, 8/29/13;
Bosch, 10/13/11 (CAFC jurisdiction over permanent
injunction); Spread Spectrum, 9/26/11; HIF Bio, 3/31/10
[on remand from S.C. reversing the CAFCs 2007
decision see below]; Ilor, 12/11/08 (whether district
courts judgment sufficiently confers CAFCs
jurisdiction under Rule 54(b)); Litecubes, 4/28/08; Intl
Rectifier, 2/11/08 (failure to file a notice of appeal);
HIF Bio, 11/13/07 (review of remand order dismissed)
[On May 6, 2009, the U.S. Supreme Court reversed
the CAFCs ruling dismissing as non-appealable its
review of the district courts order remanding state
law claims to state court based on a lack of
supplemental jurisdiction, despite the language in 28
USC 1447(d) stating that such orders are not
reviewable on appeal; the Court ruled that Section
1447(d)s ban on appeals applies to remand orders for
lack of subject matter jurisdiction, whereas this case
involved a remand for lack of supplemental
jurisdiction under Section 1367(c)]; Nisus, 8/13/07;
BIO, 8/1/07; Entegris, 6/13/07; Walter Kidde, 3/2/07;
Voda, 2/1/07; Intl Electronic Technology, 1/26/07
(Order)); CAFCs jurisdiction depends on district courts
jurisdiction (Israel Bio-Engineering Project, 1/29/07
(standing to sue); Thompson, 12/8/06; Bonzel, 3/2/06;
Cross Medical Prods., 9/30/05; Nippon Telephone,
7/13/05; Enzo Biochem, 7/13/05; Howmedica, 3/22/05;
Schreiber Foods, 3/22/05; Pause Technology, 3/14/05);
See also August Tech., 11/18/13 (nonprecedential)
- Certification of appeal under Rule 54(b) two-fold

inquiry 1) whether the certified claim was final
reviewed de novo, and 2) whether the district
521
courts determination of no just reason for delay
was correct abuse of discretion W.L. Gore
(Tyco Healthcare, 1/27/11 (Order)
(nonprecedential))
- DJ action see Dismissal of DJ action
- Personal jurisdiction de novo review, without

deference (Commissariat a lenergie atomique,
1/19/05)
- Scope of CAFCs jurisdiction apply CAFC law

(Silicon Image, 1/28/05)
- Standing to sue Q of law, de novo review; if the

appellant did not have standing to maintain an
infringement action, then jurisdiction is not proper
on appeal (Israel Bio-Engineering Project, 1/29/07)
Jury issues
- Jury demand timeliness of demand for a jury trial under

FRCP 38(b) law of the regional circuit de novo
review (Richardson, 3/9/10 (district court properly denied
motion for a jury trial based on inadvertence (9th Cir.))
- Denial of untimely jury demand under FRCP 39(b)

abuse of discretion (Richardson, 3/9/10 (district
courts discretion in granting an untimely demand
for a jury trial under Rule 39(b) is narrow, and the
movant must show some cause beyond mere
inadvertence (9th Cir.))
- Jury bias law of regional circuit implied (vs. actual)

bias Q of law, de novo; actual bias is factual question,
entitled to deference (Caterpillar, 10/28/04)
522
- Jury taint abuse of discretion (Atlantic Research,
10/6/11 (district court abused its discretion where failed
to conduct an adequate investigation of possible jury taint
(1st Cir.)))
- Jury instructions based on incorrect law (e.g.,

erroneous claim construction) de novo review for legal
error (Commil USA, 6/25/13; Bettcher Indus., 10/3/11;
Siemens, 2/24/11 (DOE instruction and preponderance
standard of proof applied where the alleged equivalent
was separately patented were correct); Therasense,
1/25/10 (instruction on anticipation was incorrect);
Minks, 10/17/08; Broadcom, 9/24/08; Voda, 8/18/08
(change in willfulness law after Seagate (10th Cir.)); On
Demand Machine, 3/31/06; Sulzer, 2/14/04; Chiron,
3/30/04)
- CAFC reviews legal standards that the jury applied

in reaching its verdict to determine whether they
were correct as a matter of law (Commil USA,
6/25/13; Siemens, 2/24/11; Broadcom, 9/24/08;
Flex-Rest, 7/13/06; Primos, 6/14/06)
- Claim construction reviewed for prejudicial legal

error to warrant a new trial (Z4 Technologies,
11/16/07 (correct instruction on claim construction
would not have changed the result, given the
evidence presented substantial evidence
supported jurys verdict); Verizon, 9/26/07;
Cytologix, 9/21/05; Lisle, 2/11/05; Arlington,
9/25/03)
- Erroneous jury instructions
- Erroneous jury instruction may warrant new

trial, or a court may consider whether, on the
correct instruction, the jury could have
reached only one verdict, and reverse
523
judgment (Voda, 8/18/08 (jury verdict on
willfulness may have changed under new
Seagate standard (10th Cir.)); On Demand
Machine, 3/31/06)
- Law of the regional circuit applied (Lazare

Kaplan, 12/22/10 (2nd Cir.); Funai, 9/1/10
(9th Cir.); i4i, 3/10/10 (5th Cir. abuse of
discretion, and subject to harmless error
review); Kinetic Concepts, 2/2/09 (5th Cir.);
Minks, 10/17/08 (11th Cir.); Voda, 8/18/08
(10th Cir.); Cordis, 1/7/08 (3rd Cir.; plain
error standard applied); Z4 Technologies,
11/16/07 (5th Cir.); Flex-Rest, 7/13/06 (6th
Cir.))
- CAFC looks to the entire jury charge to

determine whether the jury instructions
provided sufficient guidance on the legal
principles, and alter the judgment only if the
error was prejudical (Commil USA, 6/25/13;
Synqor, 3/13/13; Bettcher Indus., 10/3/11;
Siemens, 2/24/11; Therasense, 1/25/10;
Amgen, 9/15/09; Minks, 10/17/08;
Broadcom, 9/24/08; Voda, 8/18/08 (assess
whether jury instruction was harmless);
Cordis, 1/7/08 (challenge to instruction was
subject to the plain error standard when
the challenging party failed to object and
actually proposed the instruction;
obviousness under KSR (S.C.)); Z4
Technologies, 11/16/07 (obviousness,
burden of proof on invalidity (5th Cir.))
jury instructions must be both legally correct
and sufficiently comprehensive to address
factual issues (DSU Medical, 12/13/06;
Flex-Rest, 7/13/06); See also Ceats, 4/26/13
(nonprecedential any error in jury
524
instruction on prior invention was harmless
citing NTP)
- Jury instruction regarding patent law CAFC law

applied - de novo, without deference (Commil
USA, 6/25/13; Synqor, 3/13/13; Bettcher Indus.,
10/3/11; Siemens, 2/24/11 (instruction on DOE
infringement where the alleged equivalent was
separately patented was proper); Trading Techs.,
2/25/10 (jury instruction on WD was not legally
erroneous); Therasense, 1/25/10 (instruction on
anticipation was legally erroneous but not
prejudicial, and thus harmless error); Amgen,
9/15/09 (n.13: noting an issue as to whether CAFC
or regional circuit law is applied to patent law-
related jury instructions, citing Kinetic Concepts);
Broadcom, 9/24/08; DSU Medical, 12/13/06;
Eolas, 3/2/05)
- CAFC reviews (trial record and) jury

instructions in their entirety and only orders
a new trial when errors in the instructions as
a whole clearly mislead the jury DSU
(Commil USA, 6/25/13; Synqor, 3/13/13
(instructions regarding inducing and
contributory infringement as a whole in the
context of the trial informed the jury that
actual pre-suit knowledge of the patent was
necessary for pre-suit damages - citing
Therasense); Bettcher Indus., 10/3/11;
Siemens, 2/24/11 (citing DSU); i4i, 3/10/10
(did not matter that the district courts
instruction differed from Section 271(c), as
the CAFC reverses a jury verdict only if the
charge as a whole creates a substantial doubt
as to whether the jury has been properly
guided in its deliberations Baker);
Therasense, 1/25/10 (the full trial record and
525
the jury instructions in their entirety must be
examined because instructions take on
meaning from the context of what happened
at trial, including how the parties tried the
case and their arguments to the jury
Sulzer); Broadcom, 9/24/08 (new trial not
granted where instruction regarding
inducing infringement with respect to
opinions of counsel for disproving the intent
element was appropriate)); See also Ceats,
4/26/13 (nonprecedential applying rules
above from DSU Medical and Therasense in
rejecting the patentees argument that the
district courts jury instruction on prior
invention was in error)
- District courts refusal to give a

particular instruction constitutes
reversible error only if the requested
instruction was (1) correct as a matter
of substantive law, (2) not
substantially incorporated into the
charge as rendered, and (3) integral to
an important point in the case
Seahorse Marine (Amgen, 9/15/09)
- JMOL motion unnecessary - notwithstanding the

absence of a motion for JMOL, a party may still
challenge a jury verdict by establishing that the
judge committed legal error in instructing the jury
(Minks, 10/17/08; Flex-Rest, 7/13/06)
- Jury question district court has wide discretion in

responding to a jury question abuse of discretion
(Cordis, 1/7/08 (district courts handling of jurys
question was appropriate); DSU Medical, 12/13/06)
526
- Jury trial right thereto whether party entitled to jury
trial Q of law, reviewed de novo, without deference
(Depuy Spine, 6/1/09 (legal limitations to the DOE (e.g.,
PHE, all elements rule, ensnarement of prior art) are
questions of law for the court to decide, not the jury,
including any underlying factual issues); Paice, 10/18/07;
Agfa, 6/26/06)
- Patentees right to a jury trial CAFC law applied

because the question implicates the courts
jurisprudential responsibilities in a field within its
exclusive jurisdiction, i.e., patent law - Gardco
(DDB Technologies, 2/13/08 (holding no right to a
jury trial on disputed jurisdictional facts (regarding
standing to sue for infringement) that also
implicate the merits of the plaintiffs cause of
action, and which was an issue of first impression
for the court))
- Preliminary to the Seventh Amendment inquiry,

court must be satisfied that the statute in question
cannot be read in a manner that avoids the
constitutional question Tull (S.C.) (Paice,
10/18/07 (interpreting 35 USC 283 as not
granting patentees the right to a jury trial for
purposes of awarding relief, i.e., injunctions,
thereunder)
- *Jury verdict review sufficiency of the evidence to

support jury verdict, or trial judge errs as a matter of law
(L&W, 12/14/06; Kim, 9/20/06; Syngenta Seeds, 7/28/06
(infringement); Primos, 6/14/06; Applied Medical
Resources, 1/24/06; Unitherm Food Systems, 7/12/04 [In
January 2006, the U.S. Supreme Court reversed in
part, holding that the losing party in a jury trial must
renew its FRCP 50 motion after the verdict in order
to argue sufficiency of the evidence on appeal])
527
- Inconsistent jury verdicts and waiver of objections
to such verdicts procedural - regional circuit law
applied (Function Media, 2/13/13 (no waiver in
Fifth Circuit when special verdict under FRCP
49(a)) Callaway, 8/14/09 (Third Circuit has not
directly spoken to whether an objection is required
to preserve error in the face of inconsistent jury
verdicts, but the question did not need to be
resolved as waiver did not occur); Wechsler,
5/18/07 (9th Cir.); L&W, 12/14/06 (6th Cir.))
- Claim that jury verdict is inconsistent

reviewed de novo (Callaway, 8/14/09
(deciding issue de novo); Wechsler, 5/18/07)
- Jury damages award (Siemens, 2/24/11; Minks,

10/17/08; Monsanto, 9/7/04 (reversal))
- District courts decision to reduce the jurys

damages award (without offering the option
of a new trial) regional circuit law applied
(Siemens, 2/24/11 (abuse of discretion (3rd
Cir.); Minks, 10/17/08 (Q of law de novo
(11th Cir.)))
Leave to amend pleadings - complaint, answer
- Leave to amend complaint, answer FRCP 15(a), 16

grant or denial - regional circuit law applied - abuse of
discretion (High Point Design, 9/11/13 (denial of an
untimely request to amend a pleading (2nd Cir.)); Chicago
Board, 5/7/12 (no abuse of discretion in denying leave to
amend complaint, where good cause was not shown
(7th Cir.)); Aventis Pharma, 4/9/12 (no abuse of
discretion in granting motion, where good cause shown
to modify scheduling order (3rd Cir.)); Sanofi-Aventis,
10/18/11 (denial based on legal interpretation reviewed
528
de novo (2nd Cir.)); Unigene Labs, 8/25/11 (2nd Cir.);
Creative Compounds, 6/24/11 (no abuse of discretion in
denying a tardy and unduly prejudicial motion to
amend (11th Cir.)); Advanced Software Design, 6/2/11
(district court did not abuse discretion in denying motion
to amend complaint where good cause under Rule 16 was
not shown (8th Cir.)); Lincoln National, 6/23/10 (J.
Clevenger, dissenting (8th Cir.)); Pressure Products,
3/24/10 (5th Cir.); Ultimax Cement, 12/3/09 (denial of
leave to amend after the deadline has passed under Rule
16 (9th Cir.)); Exergen, 8/4/09 (district court did not
abuse discretion in denying motion for leave to amend
the answer to allege IC, where the movants proposed
allegations failed to satisfy the heightened pleading
requirement of FRCP 9(b); 1st Cir.); Net Moneyin,
10/20/08 (denial of motion to amend complaint was not
an abuse of discretion where the defendant did not
consent, expressly or impliedly, under FRCP 15(b) to
litigate inducement claim; 9th Cir.); Central Admixture
Pharmacy Services, 4/3/07 (11th Cir., answer);
Medimmune, 10/18/05; Innova/pure water, 8/11/04;
Ferguson, 12/4/03)
- Motion to amend pleadings regional circuit law

applied abuse of discretion (Pressure Products,
3/24/10 (5th Cir.); Optivus Tech., 11/16/06 (9th
Cir.))
Local court rules
- Local court rules abuse of discretion; CAFC gives

broad deference to the trial courts application of local
procedural rules (Sandisk, 7/8/05)
- Interpretation of local rules of the district court

apply regional circuit law (RFR Industries, 2/16/07
(5th Cir.))
529
Motion for leave
- Motion for leave, denial thereof regional circuit law

applied abuse of discretion (Acco Brands, 9/12/07 (5th
Cir.))
Motion for judgment on the pleadings
- Motion for judgment on the pleadings regional circuit

law applied plenary review, de novo, without deference
(Brooks, 12/13/12 (9th Cir.); Allergan, 5/24/11 (reviewing
grant de novo (9th Cir.)); Imation, 11/3/09 (8th Cir.);
Merck, 3/29/07 (3rd Cir.))
Motion for stay
- District courts issuance of stay when jurisdiction on

appeal proper, abuse of discretion (Procter & Gamble,
12/5/08); See also In re SDI Techs., 1/12/12 (Order)
(nonprecedential stay of litigation pending PTO
proceeding is subject to the sound discretion of the
district court); Automated Merchandising Systems,
12/16/09 (nonprecedential stay of litigation reviewed
for abuse of discretion, citing Procter & Gamble))
Motion to strike
- Motion to stike regional circuit law applied abuse of

discretion (Acumed, 12/30/08 (9th Cir.))
Motion for summary judgment
530
- Motion for summary judgment FRCP 56
- Grant of SJ in a patent infringement suit is

governed by Anderson v. Liberty Lobby (S.C.) and
other CAFC cases - de novo review, without
deference the CAFC decides whether there are
genuinely disputed material facts, reapplying the
standard used by the district court See
DISTRICT COURT PRACTICE AND
PROCEDURE - Summary Judgment FRCP 56
for the standard(s); denial of SJ abuse of
discretion (exceptions, e.g., 7th Cir. reviewed de
novo); see also alternative grant or denial of SJ
reviewed under the law of the regional circuit
(Ohio Willow Wood, 11/15/13 (collateral estoppel,
obviousness, no IC); Ibormeith IP, 10/22/13
(indefiniteness); Keurig, 10/17/13
(noninfringement patent exhaustion (3rd Cir.));
Meadwestvaco, 9/26/13 (nonobviousness);
Sunovion, 9/26/13 (noninfringement (3rd Cir.));
Network Signatures, 9/24/13 (inequitable
conduct); High Point Design, 9/11/13 (invalidity
(obviousness) of design patent (2nd Cir.));
Accenture, 9/5/13 (patent-ineligible subject matter
(3rd Cir.)); Bayer Cropscience, 9/3/13
(noninfringement); Trading Techs., 8/30/13 (WD,
PHE (7th Cir. grant or denial of SJ reviewed
without deference)); SkinMedica, 8/23/13
(noninfringement (9th Cir.)); Hamilton Beach,
8/14/13 (anticipation on-sale bar (4th Cir.));
Taurus IP, 8/9/13 (anticipation, noninfringement,
breach of warranty in settlement agreement (7th
Cir. denial of SJ reviewed de novo, where
motion involved a purely legal question)); Cheese
Systems, 8/6/13 (infringement (DOE) (7th Cir. and
CAFC)); Plantronics, 7/31/13 (noninfringement,
obviousness); Charles Machine Works, 7/26/13
(noninfringement (8th Cir.)); Wyeth, 6/26/13 (lack
531
of enablement (3rd Cir.)); Regents of U. Minn.,
6/3/13 (noninfringement, anticipation); Ateliers,
5/21/13 (best mode violation); Douglas Dynamics,
5/21/13 (noninfringement (7th Cir.)); Dey, 5/20/13
(public use bar); Uship, 5/8/13 (noninfringement);
Baron Services, 5/7/13 (noninfringement); Biosig
Instruments, 4/26/13 (indefiniteness (2nd)); Bayer,
4/16/13 (nonobviousness (9th Cir.)); Frolow,
3/15/13 (scope of patent license, noninfringement
by licensed articles (3rd Cir.)); Synqor, 3/13/13
(infringement); Aristocrat Techs., 3/13/13
(noninfringement (9th Cir.)); Radio Systems,
3/6/13 (noninfringment, including based on
equitable estoppel (9th Cir.)); Move, 3/4/13
(noninfringement); Brilliant Instruments, 2/20/13
(noninfringement (9th Cir.)); Function Media,
2/13/13 (indefiniteness); Accent Packaging, 2/4/13
(noninfringement); Parallel Networks, 1/16/13
(noninfringement); Presidio Components, 12/19/12
(false marking); IGT, 12/17/12 (antitrust
counterclaim (9th Cir)); Intel, 12/17/12 (license
defense to infringement); Osram Sylvania,
12/13/12 (anticipation, obviousness); Cummins,
12/5/12 (res judicata barring suit (7th Cir.)); Deere,
12/4/12 (noninfringement); Fox Group, 11/28/12
(invalidity based on prior invention under Section
102(g) (4th Cir.)); Voter Verified, 11/5/12
(noninfringement, obviousness, indefiniteness);
Technology Patents, 10/17/12 (noninfringement);
Sandisk, 10/9/12 (noninfringement); Outside the
Box Innovations, 9/21/12 (noninfringement (11th
Cir.)); K-Tec, 9/6/12 (literal infringement,
obviousness (non-analogous art) (10th Cir.));
LaserDynamics, 8/30/12 (implied license, patent
exhaustion (5th Cir.)); ActiveVideo Networks,
8/24/12 (anticipation (4th Cir.)); Greenliant
Systems, 8/22/12 (invalidity of reissue claims for
violating the rule against recapture); Meyer,
532
8/15/12 (infringement); Magsil, 8/14/12 (lack of
enablement); Raytheon, 8/1/12 (trade secret
misappropriation (5th Cir.)); 01 Communique Lab,
7/31/12 (noninfringement); Grober, 7/30/12
(noninfringement sua sponte SJ (9th Cir.));
Bancorp Services, 7/26/12 (patent eligibility); CLS
Bank, 7/9/12 (patent eligibility (D.C. Cir.))
[vacated and en banc review granted on
10/9/12]; Toshiba, 6/11/12 (noninfringement);
Mintz, 5/30/12 (noninfringement, obviousness);
Minkin, 5/4/12 (legal malpractice (3rd Cir.));
Landmark Screens, 4/23/12 (fraud (9th Cir.)); Noah
Systems, 4/9/12 (indefiniteness); Advanced Fiber,
4/3/12 (noninfringement, lack of willful
infringement); Marine Polymer, 3/15/12 (en banc)
(infringement); MySpace, 3/2/12 (invalidity
anticipation and obviousness); Fort Properties,
2/27/12 (patent-eligible subject matter);
Dealertrack, 1/20/12 (noninfringement, patent-
eligible subject matter (9th Cir.)); Streck, 1/10/12
(lack of WD); Teva, 12/1/11 (invalidity prior
invention under Section 102(g)(2) (3rd Cir.));
Absolute Software, 10/11/11 (noninfringement (5th
Cir.)); Atlantic Research, 10/6/11 (lack of WD);
IGT, 10/6/11 (infringement, noninfringement);
Monsanto, 9/21/11 (infringement); Markem-Imaje,
9/9/11 (noninfringement); AIA Engg, 8/31/11
(invalidity of reissue based on violating recapture
rule in Section 251); Unigene Labs, 8/25/11
(nonobviousness); Cybersource, 8/16/11
(patentable subject matter); CBT Flint Partners,
8/10/11 (indefiniteness); Duramed, 7/21/11
(noninfringement); American Calcar, 6/27/11
(noninfringement); Creative Compounds, 6/24/11
(prior invention Section 102(g)); Tyco
Healthcare, 6/22/11 (obviousness); Boston
Scientific, 6/7/11 (lack of WD); Advanced
Software Design, 6/2/11 (noninfringement joint
533
infringement and inducement); Hynix, 5/13/11
(noninfringement); Billups-Rothenberg, 4/29/11
(WD, anticipation); Wellman, 4/29/11 (best mode,
indefiniteness); Lexion Medical, 4/22/11
(infringement (7th Cir.)); Rembrandt, 4/18/11
(patent exhaustion, indefiniteness); McKesson,
4/12/11 (noninfringement) [vacated and en banc
review granted, on 5/26/11]; Crown Packaging,
4/1/11 (WD, anticipation); American Piledriving,
3/21/11 (noninfringement); Innovention Toys,
3/21/11 (infringement, nonobviousness); Hologic,
2/24/11 (anticipation); In re Katz Patent Litigation,
2/18/11 (noninfringement, invalidity); Tokai,
1/31/11 (obviousness); Centillion Data Systems,
1/20/11 (noninfringement, anticipation); Arlington
Indus., 1/20/11 (noninfringement); Shum, 12/22/10
(state law claims (9th Cir.)); Prometheus Labs,
12/17/10 (patent-eligible subject matter) [reversed
by the U.S. Supreme Court, on 3/20/12]; Erbe,
12/9/10 (noninfringment, trademark and trade
dress infringement, antitrust counterclaim);
Research Corp., 12/8/10 (patent-eligible subject
matter, entitlement to earlier filing date); Solvay,
10/13/10 (infringement and noninfringement; prior
invention under section 102(g)(2)); Laryngeal
Mask, 9/21/10 (noninfringement, lack of WD);
Fujitsu, 9/20/10 (noninfringement (contributory
and inducement)); Spine Solutions, 9/9/10
(noninfringement (literal and DOE), WD);
Baseload Energy, 9/9/10 (contractual estoppel
under settlement agreement from challenging
patent validity and enforceability); Green Edge,
9/7/10 (best mode, anticipation (prior sales),
obviousness, indefiniteness, enablement); Funai,
9/1/10 ((non)infringement literal/no literal
infringement); Transocean, 8/18/10
(noninfringement (offer for sale, sale), no
willfulness, obviousness, lack of enablement);
534
Baran, 8/12/10 (noninfringement); Ring Plus,
8/6/10 (noninfringement); Adams, 8/5/10
(noninfringement); Intervet, 8/4/10
(noninfringement); King, 8/2/10 (anticipation, non-
statutory subject matter); Sun, 7/28/10
(obviousness-type double patenting);
Encyclopaedia Britannica, 6/18/10 (SJ based on
statutory interpretation); Pequignot, 6/10/10 (false
marking); TriMed, 6/9/10 (anticipation,
obviousness); Silicon Graphics, 6/4/10
(noninfringement); Dow Jones, 5/28/10
(anticipation, obviousness); Leviton Mfg., 5/28/10
(IC, vexatious litigation); Aspex Eyewear, 5/24/10
(equitable estoppel SJ reviewed for an abuse of
discretion); Ortho-McNeil, 5/10/10 (patent term
extension under Section 156); Optium, 5/5/10 (IC);
Bradford, 4/29/10 (noninfringement, priority date);
Enzo Biochem, 3/26/10 (indefiniteness,
anticipation); Marrin, 3/22/10 (anticipation);
Delaware Valley, 3/11/10 (on-sale bar); Davis,
3/2/10 (legal malpractice); Media Techs., 3/1/10
(obviousness); Trading Techs., 2/25/10
(noninfringement; denial of SJ regarding priority
date); Therasense, 1/25/10 (noninfringement,
anticipation) [vacated on 4/26/10, and reinstated
by Therasense, 5/25/11 (en banc)]; Schindler,
1/15/10 (noninfringement); Wyeth, 1/7/10
(statutory interpretation - patent term adjustment
under Section 154(b)); Koninklijke Philips, 1/5/10
(review of sua sponte SJ under 9th Cir. law;
anticipation, obviousness, WD, priority); Intl
Seaway Trading, 12/17/09 (anticipation of design
patents); Intellectual Science, 12/15/09
(noninfringement); Source Search, 12/7/09
(infringement, obviousness, indefiniteness);
Ultimax Cement, 12/3/09 (noninfringement,
laches, indefiniteness, trade secret
misappropriation); Perfect Web, 12/2/09
535
(obviousness); Iovate Health Sciences, 11/19/09
(anticipation); Stanford U., 9/30/09 (patent
ownership (9th Cir.)) [affirmed by the U.S.
Supreme Court, on 6/6/11, in Stanford U. v.
Roche]; Astrazeneca, 9/25/09 (no IC); Kara
Technology, 9/24/09 (breach of contract (NDA));
Vita-Mix, 9/16/09; (infringement (including
trademark), invalidity, laches); Prometheus Labs,
9/16/09 (patentable subject matter); Amgen,
9/15/09 (infringement, obviousness-type double
patenting); Cardiac Pacemakers, 8/19/09
(invalidity, damages, IC); Callaway, 8/14/09 (no
anticipation); Wavetronix, 7/29/09
(noninfringement); Hyatt, 8/11/09 (affirming the
BPAIs WD rejections in a Section 145 action)
[vacated]; Gemtron, 7/20/09 (infringement);
Agilent Techs., 6/4/09 (lack of WD); Abbott Labs,
5/18/09 (noninfringement); Revolution Eyewear,
4/29/09 (infringement, no lack of WD in reissue);
Felix, 4/10/09 (noninfringement literal and
DOE); Takeda, 4/10/09 (double patenting);
Transcore, 4/8/09 (infringement barred by patent
exhaustion, implied license, and legal estoppel);
Euclid Chemical, 4/1/09 (ownership, construction
of patent assignment agreement); Clock Spring,
3/25/09 (public use bar, Lanham Act false
advertising); Tafas, 3/20/09 (PTO rules) [vacated
on 7/6/09, and appeal dismissed in Tafas,
11/13/09 (Order)]; Crown Packaging, 3/17/09
(function prong of DOE test); ICU Medical,
3/13/09 (noninfringement, written description);
Nartron, 3/5/09 (co-inventorship); Ball Aerosol,
2/9/09 (obviousness, infringement; stating that SJ
decisions (here, including denial of motion for
SJ of obviousness, but also sua sponte grant of SJ
of validity) are reviewed de novo); Ricoh,
12/23/08 (noninfringement, obviousness); Welker
Bearing, 12/15/08 (noninfringement); Netcraft,
536
12/9/08 (noninfringement); Net Moneyin, 10/20/08
(anticipation; noninfringement based on waiver);
In re Ciprofloxacin, 10/15/08 (federal antitrust
claims); Predicate Logic, 10/9/08 (invalidity for
broadening claim scope on reexam); Cohesive
Techs., 10/7/08 (noninfringement (including
DOE)); Praxair, 9/29/08 (indefiniteness);
Aristocrat Techs., 9/22/08 (invalidity based on
improper revival); CSIRO, 9/19/08
(nonobviousness; cross-motions for SJ regarding
anticipation, infringement and new matter
reviewed under the clearly erroneous standard after
the parties stipulated that the district court make
fact findings with respect to disputed factual
issues); Carnegie Mellon U., 9/8/08 (lack of
written description; noninfringement); Star
Scientific, 8/25/08 (indefiniteness); Leggett &
Platt, 8/21/08 (invalidity (anticipation,
obviousness)); DSW, 8/19/08 (noninfringement);
Cooper Techs., 8/19/08 (PTOs interpretation of
AIPA); In re Cygnus Telecomms., 8/19/08 (on-sale
bar, noninfringement; 9th Cir.); Research Corp.
Techs., 8/1/08 (noninfringement, invalidity, IC);
U. Texas, 7/24/08 (noninfringement); Eisai,
7/21/08 (nonobviousness; IC); Serdarevic, 7/16/08
(laches defense to inventorship claim; state statutes
of limitations); Roche Palo Alto, 7/9/08
(infringement, literal and no reverse DOE;
validity); Tip Systems, 6/18/08 (noninfringment,
literal and DOE); Burandt, 6/10/08 (reinstatement
of patent after not paying maintenance fees); Mars,
6/2/08 (lost profits damages); MetLife, 6/2/08
(noninfringement); Golden Bridge Tech., 5/21/08
(anticipation); Mangosoft, 5/14/08
(noninfringement); Lucent Techs., 5/8/08
(noninfringement); Decisioning.com, 5/7/08
(noninfringement); PSN Illinois, 5/6/08
(noninfringement); Dominant Semiconductors,
537
4/23/08 (no bad faith communication of patent
infringement); Zenith Electronics, 4/16/08
(noninfringement (implied license), *anticipation
(prior public use) excellent SJ analysis of the
elements of prior public use, IC); Nasalok Coating,
4/14/08 (TTAB; claim preclusion); Symantec,
4/11/08 (summary judgment decisions reviewed
without deference; noninfringement, laches, co-
inventorship, IC, invalidity); Poweroasis, 4/11/08
(anticipation, after no entitlement to earlier filing
date); MEC, 4/1/08 (noninfringement;
indefiniteness); Ortho-McNeil, 3/31/08
(infringement, IC, obviousness, and enablement);
Aristocrat Techs., 3/28/08 (district court correctly
held claims indefinite); Computer Docking Station,
3/21/08 (noninfringement); Atlanta Attachment,
2/21/08 (on sale bar); Miken Composites, 2/6/08
(*noninfringement); Sitrick, 2/1/08 (enablement);
Trimed, 1/29/08 (noninfringement); American
Seating, 1/29/08 (public use bar); Innogenetics,
1/17/08 (inequitable conduct); Baldwin Graphic
Systems, 1/15/08 (noninfringement); SRI Intl,
1/8/08 (anticipation - printed publication); Stumbo,
11/28/07 (noninfringement); Elbex Video,
11/28/07 (noninfringement); U.S. Philips, 11/2/07
(noninfringement, literal and DOE); Immunocept,
10/15/07 (attorney malpractice); Schwarz Pharma,
10/12/07 (noninfringement); Allvoice Computing,
10/12/07 (invalidity indefiniteness, best mode);
Monsanto, 10/4/07 (noninfringement); Cias,
9/27/07 (noninfringement); Warner-Lambert,
9/21/07 (noninfringement); BMC Resources,
9/20/07 (noninfringement) [overruled by Akamai
Techs., 8/31/12 (en banc)]; Arminak, 9/12/07
(noninfringement of design patent); L.B. Plastics,
9/12/07 (noninfringement); Automotive Techs.,
9/6/07 (enablement); Mitutoyo, 9/5/07
(infringement); Egyptian Goddess, 8/29/07
538
(noninfringement - design patent); Ormco, 8/24/07
(noninfringement, invalidity anticipation,
nonenablement); SafeTCare Mfg., 8/3/07
(noninfringement); Boston Scientific Scimed,
8/8/07 (priority of invention; interference);
Astrazeneca, 7/23/07 (double patenting,
inequitable conduct); Hutchins, 7/3/07
(noninfringement); Young, 6/27/07 (inequitable
conduct); Bender, 6/21/07 (disciplinary action by
PTO against attorney); Motionless Keyboard,
5/29/07 (noninfringement, invalidity, public use
bar); Wechsler, 5/18/07 (piercing corporate veil,
alter ego theory); Intamin, 4/18/07
(noninfringement); Liebel-Flarsheim, 3/22/07
(enablement, anticipation); Cross Medical Prods.,
3/20/07 (regional circuit law); Aquatex, 2/27/07
(noninfringement, DOE); Sevenson, 2/21/07
(government contract immunity); Cargill, 2/14/07
(on-sale bar); Israel Bio-Engineering Project,
1/29/07 (standing to sue); Ortho-McNeil, 1/19/07
(noninfringement); E-Pass Technologies, 1/12/07
(noninfringement); Plumtree Software, 12/18/06
(invalidity, on-sale bar); Planet Bingo, 12/13/06
(noninfringement; grant or denial of SJ reviewed
under law of regional circuit); Depuy Spine,
11/20/06 (noninfringement); Optivus Tech.,
11/16/06 (noninfringement, invalidity); O2 Micro,
11/15/06 (noninfringement); Go Medical Indus.,
10/27/06 (invalidity); Figueroa, 10/11/06 (appeal
from Court of Federal Claims); Medrad, 10/16/06
(invalidity); Sram, 10/2/06; Ormco, 8/30/06
(invalidity; no invalidity; obviousness); Monsanto,
8/16/06 (infringement; validity (WD and
enablement)); Cook Biotech, 8/18/06
(infringement; inventorship); Flex-Rest, 7/13/06
(noninfringement); LG Electronics, 7/7/06
(noninfringement; implied license defense);
Honeywell, 6/22/06 (noninfringement); *Gemmy
539
Indus., 6/22/06 (on sale bar); Panduit, 6/12/06
(interpretation of settlement agreement (7th Cir.),
infringement); *Applied Medical Resources,
5/15/06 (noninfringement - means-plus-function
claim); Parental Guide of Texas, 4/21/06 (contract
interpretation (5th Cir.)); Bruckelmyer, 4/20/06
(obviousness); Amini Innovation, 3/3/06
(noninfringement of design patent, copyright (9th
Cir.)); M. Eagles Tool Warehouse, 2/27/06
(inequitable conduct); Lawman Armor, 2/22/06
(noninfringement of design patent); Ferring,
2/15/06 (noninfringement, inequitable conduct);
Digital Control, 2/8/06 (inequitable conduct
materiality); Lacavera, 2/6/06 (PTO registration);
Stern, 1/17/06 (inventorship); Perricone, 12/20/05
(grant and denial; noninfringement, inherent
anticipation, double patenting); IPXL Holdings,
11/21/05 (noninfringement, anticipation);
Invitrogen, 11/18/05 (infringement, WD,
enablement); *Microstrategy, 11/17/05 (grant or
denial of SJ reviewed under law of regional circuit
under 4th Cir. law, grant or denial of SJ reviewed
de novo, without deference; noninfringement);
Invitrogen, 10/5/05 (infringement, WD,
enablement); Cross Medical Prods., 9/30/05 (grant
and denial; validity, infringement); Enzo-Biochem,
9/30/05 (on-sale bar); Pandrol, 9/19/05 (validity
WD); Nystrom, 9/14/05 (noninfringment,
anticipation); Biagro, 9/13/05 (noninfringement
literal and DOE); Broadcast Innovation, 8/19/05
(grant or denial of SJ reviewed under law of
regional circuit under 10th Cir. law, grant or
denial of SJ reviewed de novo, without deference;
anticipation, priority date); Aquatex, 8/19/05
(noninfringement literal and DOE); Research
Plastics, 8/18/05 (noninfringement); Terlep,
8/16/05 (noninfringement); Warner-Lambert,
8/11/05 (infringement, enablement); *Freedman
540
Seating, 8/11/05 (infringement DOE,
obviousness); Marley Mouldings, 8/8/05
(indefiniteness); Collegenet, 8/2/05 ((grant or
denial of SJ reviewed under law of regional circuit
under 9th Cir. law, grant or denial of SJ reviewed
de novo, without deference); General Motors,
7/28/05; North American Container, 7/14/05;
Upsher-Smith, 6/17/05; Boss Control, 6/8/05; Air
Turbine Tech., 6/7/05; Syntex, 5/18/05; PC
Connector Solutions (infringement), 5/6/05;
Playtex, 3/7/05; Chimie, 4/11/05; Howmedica,
3/28/05; Business Objects, 1/6/05; Iron Grip
Barbell, 12/14/04 (invalidity); Caterpillar,
10/28/04; Toro, 9/13/04; Innova/pure water,
8/11/04; AFG Indus., 7/13/04; Pellegrini, 7/8/04;
Searfoss, 7/6/04; Scanner Techs., 4/23/04;
Monsanto, 4/9/04; Dynacore Holdings, 3/31/04; Q-
Pharma, 3/8/04; U. Rochester, 2/13/04); See also
Beriont, 8/6/13 (nonprecedential 1st Cir. grant
or denial reviewed de novo)
- Continuance, motion for additional

discovery - FRCP 56(f) [moved to FRCP
56(d) in 2010 amendments] regional
circuit law applied - abuse of discretion
(Baron Services, 5/7/13 (district court
abused discretion in denying additional
discovery to patentee-nonmovant before
granting SJ of noninfringement prematurely;
see also J. Reyna, dissenting (11th Cir.));
Accent Packaging, 2/4/13 (no abuse of
discretion in denying additional discovery to
the patentee before granting SJ of
noninfringement - district courts have wide
discretion in managing discovery matters
(5th Cir.)); Serdarevic, 7/16/08 (2nd Cir.
places significant burden on the movant;
speculation about what further discovery
541
might uncover is not enough); MetLife,
6/2/08 (8th Cir.); Computer Docking Station,
3/21/08 (7th Cir.); Digeo, 11/1/07 (9th Cir.;
no abuse of discretion when request was
based on unsubstantiated speculation;
need the clearest showing that the denial
will actually and substantially prejudice
movant, e.g., reasonable probability that the
outcome would have been different had
discovery been allowed); Network
Commerce, 9/8/05; Hoffer, 4/22/05; Q-
Pharma, 3/8/04); See also Webzero, 8/3/10
- General rule of discovery under the

FRCP, the parties must be afforded
adequate time for general discovery
before being required to respond to a
motion for SJ (MetLife, 6/2/08 (the
prevailing rule in all circuits))
- Must seek additional discovery

diligently (MetLife, 6/2/08 (the strict
showing of necessity and diligence
otherwise required for a Rule 56(f)
request for additional discovery did
not apply where there had been no
adequate initial opportunity for
discovery); Digeo, 11/1/07)
- Experts opinion at SJ the sufficiency of

an experts opinion at SJ regional circuit
law applied (Intellectual Science, 12/15/09
(6th Cir.))
- Cross-motions for SJ reviewed under the

clearly erroneous standard when the parties
stipulate that the district court make fact
542
findings with respect to disputed fact issues
(CSIRO, 9/19/08)
- Denial of SJ motion the CAFC gives

considerable deference to the district court
abuse of discretion (Revolution Eyewear,
4/29/09 (disputed claim was supported by an
adequate WD))
- Denial of SJ is not properly

reviewable on appeal from a final
judgment entered after trial
(Advanced Fiber, 4/3/12 (denial of SJ
of validity not appealable where
requirements for pendent appellate
jurisdiction were not met); Comaper,
3/1/10 (infringers challenge to the
district courts denial of SJ was
improper, citing CAFC and 3rd Cir.
law)); See also Final Judgment Rule
- Sua sponte SJ granted by the district court,

e.g., grant of SJ to the nonmoving party
(FRCP 56(f)) (Osram Sylvania, 12/13/12
(noting that district court invalidating a
patent claim sua sponte requires notice to
the non-movant, citing 9th Cir. law); Hor,
11/14/12 (district court erred in sua sponte
granting SJ based on the affirmative defense
of equitable estoppel in light of the
defendants failure to assert the defense (5th
Cir.)); Grober, 7/30/12 (district court must
perform complete infringement analysis);
Koninklijke Philips, 1/5/10 (reversing and
remanding, applying 9th Cir. law regarding
sua sponte SJs, where the plaintiff did not
have a full and fair opportunity to present
arguments in a Section 146 action)); See
543
also Mikkelsen, 8/16/13 (nonprecedential
vacating and remanding the district courts
sua sponte grant of SJ of no invalidity and
grant of injunction, where the nonmovant
did not have adequate notice or opportunity
to oppose (including discovery), stating that
the patentees motion for SJ of infringement
does not implicitly include a motion on the
issue of invalidity citing Intl Vis. and
FRCP 56(f) (granting SJ to the nonmoving
party requires notice and a reasonable time
to respond)); Stored Value Solutions,
12/10/12 (nonprecedential the district
court properly granting SJ sua sponte based
on lack of written description, under the new
Rule 56(f), after giving the parties the
required notice); Sunbeam Products,
did not err by granting SJ of
noninfringement sua sponte, where party
was given notice of the dispositive issue and
an opportunity to introduce evidence,
applying 7th Cir. law))
- De novo review of SJ noninfringement

requires two steps: claim construction,
reviewed without deference, and
infringement, also reviewed without
deference to determine whether there was no
genuine issue of material fact Ormco
(Schindler, 1/15/10; Abbott Labs, 5/18/09;
Computer Docking Station, 3/21/08); See
also Ottah, 4/8/13 (nonprecedential)
- Motions and cross motions for SJ of

validity/invalidity district court cannot rely
on its assessment of one partys motion for
SJ of invalidity when evaluating the other
544
partys motion for SJ of no invalidity (Vita-
Mix, 9/16/09 (district court improperly
denied motion for SJ of invalidity based on
no supporting expert testimony, followed by
granting motion for SJ of no invalidity));
See also Mikkelsen, 8/16/13
(nonprecedential characterizing the above
rule as black letter law and applying the
reasoning from Vita-Mix as a basis for
rejecting the district courts sua sponte grant
of SJ of no invalidity while granting SJ of
infringement and denying SJ of invalidity)
- Issues not unique to patent law, apply law of

the regional circuit (Stanford U., 9/30/09
(ownership of patent (9th Cir.) [affirmed by
the U.S. Supreme Court, on 6/6/11, in
Stanford U. v. Roche]; Air Turbine Tech.,
6/7/05 (state law issues)); See also
REVIEW Choice of Law
- Summary determinations by the ITC See

above International Trade Commission
(ITC)
Motion for JMOL
- Motion for JMOL - law of the regional circuit applied

denial and grant de novo review, without deference;
reapply the district courts JMOL standard anew See
below and DISTRICT COURT PRACTICE AND
PROCEDURE - Motion for JMOL for standard(s)
(Integrated Tech., 11/4/13 (noninfringement under DOE
because of PHE (9th Cir.)); Synthes USA, 10/29/13
(adequate WD (9th Cir.)); Broadcom, 10/7/13
(infringement (trial), noninfringement, obviousness (9th
545
Cir.)); St. Jude Medical, 9/11/13 (obviousness); Taurus
IP, 8/9/13 (breach of warranty in settlement agreement
(7th Cir.)); Rembrandt Vision, 8/7/13 (noninfringement
(11th Cir.) affirming alternative grant of JMOL for
failure to prove infringement with admissible evidence);
Novozymes, 7/22/13 (lack of written description (7th
Cir.)); Alexsam, 5/20/13 (noninfringement); Versata
Software, 5/1/13 (noninfringement, damages (5th Cir.
especially deferential standard of review applied to
jury verdict)); Saffran, 4/4/13 (noninfringement (5th
Cir.)); Power Integrations, 3/26/13 (obviousness,
damages (3rd Cir.)); Frolow, 3/15/13 (noninfringement
at the close of the patentees case (3rd Cir.)); Synqor,
3/13/13 (anticipation, obviousness, entitlement to earlier
filing date (5th Cir.)); Function Media, 2/13/13 (validity
(5th Cir.)); Presidio Components, 12/19/12
(noninfringement, lost profits damages (9th Cir.)); Pregis,
12/6/12 (infringement, obviousness (4th Cir.));
Arcelormittal France, 11/30/12 (anticipation,
obviousness); ePlus, 11/21/12 (noninfringement,
indefiniteness (4th Cir.)); Transocean, 11/15/12 (reversing
grant of JMOL of obviousness, no enablement,
noninfringement, and no damages (5th Cir.)); Energy
Transportation Group, 10/12/12 (lack of WD,
anticipation, noninfringement under DOE, no willfulness
(3rd Cir.)); K-Tec, 9/6/12 (anticipation, obviousness, no
willful infringement, damages (10th Cir.)); Mirror
Worlds, 9/4/12 (noninfringement (5th Cir.));
LaserDynamics, 8/30/12 (noninfringement, damages (5th
Cir.)); Woods, 8/28/12 (noninfringement, obviousness
(11th Cir.)); ActiveVideo Networks, 8/24/12
(noninfringement; pre-suit damages (marking); grant of
pre-verdict JMOL of no anticipation and no obviousness,
and thus insufficient evidence to go to the jury; pre-suit
JMOL regarding contract and covenant not to sue (4th
Cir.)); Meyer, 8/15/12 (no willfulness (7th Cir.)); Kinetic
Concepts, 8/13/12 (obviousness (5th Cir.)); Whitserve,
8/7/12 (noninfringement, anticipation, damages (2nd
546
Cir.)); Leader Technologies, 5/8/12 (anticipation based
on public use and on sale bars (3rd Cir.)); Marine
Polymer, 3/15/12 (en banc) (anticipation, damages (1st
Cir.)); Clearvalue, 2/17/12 (anticipation, trade secret
misappropriation (5th Cir.)); Bard, 2/10/12 (inventorship,
anticipation, obviousness, lack of WD, willfulness (9th
Cir.)) [vacated in part after remanded on 6/14/12];
Mettler-Toledo, 2/8/12 (infringement, obviousness (5th
Cir.)); Krippelz, 1/27/12 (anticipation (7th Cir.)); Streck,
1/10/12 (enablement (8th Cir.)); Powell, 11/14/11
(noninfringement, willful infringement, damages (11th
Cir.)); Bettcher Indus., 10/3/11 (anticipation inherency
(6th Cir.)); Atlantic Research, 10/6/11 (state law claims -
trade secret misappropriation (1st Cir.)); Cordis, 9/28/11
(noninfringement (CAFC)); Cordance, 9/23/11
(infringement, no invalidity (3rd Cir.)); Star Scientific,
8/26/11 (infringement, validity); August Tech., 8/22/11
(infringement, damages, obviousness); Retractable
Techs., 7/8/11 (noninfringement, anticipation,
obviousness (5th Cir.)); American Calcar, 6/27/11
(anticipation (9th Cir.)); Spectralytics, 6/13/11
(obviousness, damages (8th Cir.)); Hynix, 5/13/11 (WD
(9th Cir.)); Siemens, 2/24/11 (noninfringement (3rd Cir.));
Centocor, 2/23/11 (WD (5th Cir.)); Uniloc, 1/4/11
(noninfringement, no willfulness, anticipation,
obviousness (1st Cir.)); Shum, 12/22/10 (co-inventorship,
state law claims (9th Cir.)); Lazare Kaplan, 12/22/10
(infringement (2nd Cir.)); Akamai Techs., 12/20/10
(noninfringement (joint infringement)) [vacated and en
banc review granted, on 4/20/11]; Western Union,
12/7/10 (obviousness (5th Cir.)); Finjan, 11/4/10
(infringement, damages (3rd Cir.)); Spine Solutions,
9/9/10 (obviousness, no willfulness, no entitlement to lost
profits damages (6th Cir.)); Martin, 8/20/10 (obviousness
(after hung jury) (9th Cir.)); Golden Hour Data Systems,
8/9/10 (joint infringement); Enovsys, 8/3/10
(noninfringement (9th Cir.)); Becton Dickinson, 7/29/10
(noninfringement (3rd Cir.)); Lincoln National, 6/23/10
547
(noninfringement (8th Cir.)); Wordtech Systems, 6/16/10
(individual liability for infringement (9th Cir.)); Silicon
Graphics, 6/4/10 (anticipation (7th Cir.)); Haemonetics,
6/2/10 (indefiniteness, anticipation prior invention,
obviousness); Orion, 5/17/10 (anticipation (5th Cir.));
Verizon, 4/16/10 (infringement, anticipation, obviousness
(4th Cir.)); Anascape, 4/13/10 (invalidity based on no
entitlement to earlier filing date (5th Cir.)); Hearing
Components, 4/1/10 (noninfringement, obviousness);
Power-One, 3/30/10 (obviousness (5th Cir.)); Pressure
Products, 3/24/10 (anticipation, obviousness (5th Cir.));
Ariad, 3/22/10 (en banc) (lack of written description (1st
Cir.)); i4i, 3/10/10 (infringement, anticipation,
willfulness (5th Cir.)); Trading Techs., 2/25/10 (willful
infringement, priority date (7th Cir.)); SEB, 2/5/10 (DOE-
PHE (2nd Cir. post-verdict JMOL motion was rejected
under manifest injustice standard where no pre-verdict
motion was filed), inducing infringement); Therasense,
1/25/10 (anticipation or obviousness (9th Cir.));
Amgen, 9/15/09 (infringement, obviousness-type double
patenting (1st Cir.)); Lucent, 9/11/09 (infringement,
invalidity, damages (9th Cir.)); Fresenius, 9/10/09
(obviousness (9th Cir.)); Martek Biosciences, 9/3/09
(noninfringement, anticipation, lack of enablement
(CAFC and 3rd Cir.)); Callaway, 8/14/09 (obviousness
(3rd Cir.)); Exergen, 8/4/09 (noninfringement,
anticipation (1st Cir.)); Gemtron, 7/20/09
(noninfringement, obviousness (6th Cir.)); Ecolab, 6/9/09
(noninfringement, induced infringement, anticipation,
obviousness (8th Cir.)); Depuy Spine, 6/1/09 (lost profits
damages, willfulness (1st Cir.)); Revolution Eyewear,
4/29/09 (damages award (9th Cir.)); Cordis, 3/31/09
((non)infringement, anticipation, obviousness (CAFC
law)); Rothman, 2/13/09 (nonobviousness (3rd Cir.));
Baden Sports, 2/13/09 (Lanham Act - false advertising
(9th Cir.)); Kinetic Concepts, 2/2/09 (obviousness,
infringement (5th Cir.)); Boston Scientific Scimed,
1/15/09 (obviousness); Sundance, 12/24/08
548
(nonobviousness (6th Cir.)); Rentrop, 12/18/08
(noninfringement (2nd Cir.)); Minks, 10/17/08
(noninfringement (11th Cir.)); Asyst Techs., 10/10/08
(obviousness, affirming JMOL); Cohesive Techs.,
10/7/08 (noninfringement, improper directed verdict of
anticipation (1st Cir.)); Johns Hopkins, 10/2/08
(noninfringement (denial of motion for JMOL reversed),
obviousness (4th Cir.)); Praxair, 9/29/08 (anticipation);
Lucent Techs., 9/25/08 (noninfringement; lack of
standing (9th Cir.)); 800 Adept, 8/29/08
(noninfringement, tortious interference (11th Cir.)); Voda,
8/18/08 (noninfringement, anticipation (10th Cir.));
Proveris, 8/5/08 (pre-jury verdict; infringement, based
the accused infringers admission thereof; validity);
Muniauction, 7/14/08 (noninfringement, obviousness (3rd
Cir.)); Litecubes, 4/28/08 (patent and copyright
noninfringement based on the allegedly infringing acts
not occurring within the United States (CAFC and 8th
Cir.)); Honeywell Intl, 4/18/08 (noninfringement -
DOE/PHE (CAFC)); Finisar, 4/18/08 (noninfringement,
invalidity (*anticipation, obviousness), non-willfulness
(5th Cir.)); Agrizap, 3/28/08 (fraudulent misrepresentation
(3rd Cir.); reversal of denial of motion for JMOL as to
obviousness, citing KSR (S.C.)); American Seating,
1/29/08 (lost profits damages (6th Cir.)); Innogenetics,
1/17/08 (infringement, anticipation, no willful
infringement); Cordis, 1/7/08 (noninfringement); Z4
Technologies, 11/16/07 (infringement/validity (5th Cir.));
Paice, 10/18/07 (infringement, CAFC law); Acco Brands,
9/12/07 (noninfringement (5th Cir.)); Pharmastem, 7/9/07
(noninfringement, obviousness (3rd Cir.)); Wechsler,
5/18/07 (9th Cir.); DSU Medical, 12/13/06 (9th Cir.);
Depuy Spine, 11/20/06 (1st Cir.); Go Medical Indus.,
10/27/06 (11th Cir.); Dystar, 10/3/06 (4th Cir.); Serio-Us
Industries, 8/10/06 (4th Cir.); Syngenta Seeds, 7/28/06
(when patent-related CAFC cases have applied both
CAFC law and regional circuit law to denial of motion
JMOL; 8th Cir.); Primos, 6/14/06; Liquid Dynamics,
549
6/1/06; **Old Town Canoe, 5/9/06 (noninfringment, and
no invalidity or unenforceability; before jury verdict (9th
Cir.)); Applied Medical Resources, 1/24/06 (9th Cir.,
substantial evidence defined); NCube, 1/9/06;
*Microstrategy (standard applied), 11/17/05; Sorensen,
10/31/05; Collegenet, 8/2/05; NTP, 8/2/05; Princeton
Biochemicals, 6/9/05 (substantial evidence defined);
MercExchange, 3/16/05; Lisle, 2/11/05; Fuji Photo,
1/14/05; Monsanto, 9/7/04; Novartis, 7/8/04 (standard
defined); *TI Group, 6/30/04 (standard defined);
Honeywell Intl, 6/2/04 (en banc)); Norian, 4/6/04;
Summit Technology, 3/26/04 (JMOL of noninfringement
granted); Utah Products, 12/4/03; BJ Services, 8/6/03)
- Denial or grant of motion for JMOL FRCP

50(a)(1) (close of evidence) or 50(b) (after jury
verdict) (motion for JMOL denied (and jurys
verdict affirmed) unless a reasonable jury would
not have a legally sufficient evidentiary basis to
find for the [winning] party, or motion for JMOL
granted only when there is no legally sufficient
evidentiary basis for a reasonable jury to find for
[the non-movant] i.e., when the jurys verdict is
not supported by substantial evidence); law of the
regional circuit applied; denial and grant de novo
review, without deference (Arcelormittal France,
11/30/12 (CAFC); ePlus, 11/21/12 (4th Cir.);
Transocean, 11/15/12 (several examples of
standard applied (5th Cir.)); K-Tec, 9/6/12 (10th
Cir.); Mirror Worlds, 9/4/12 (5th Cir.); Woods,
8/28/12 (11th Cir.); Whitserve, 8/7/12 (2nd Cir.);
Kinetic Concepts, 8/13/12 (5th Cir.); Leader
Technologies, 5/8/12 (3rd Cir.); Marine Polymer,
3/15/12 (en banc) (1st Cir.); Powell, 11/14/11 (11th
Cir.); Atlantic Research, 10/6/11 (1st Cir.); Cordis,
9/28/11 (CAFC describing substantial evidence
standard); Cordance, 9/23/11 (3rd Cir.); Star
Scientific, 8/26/11 (4th Cir.); August Tech., 8/22/11
550
(8th Cir.); American Calcar, 6/27/11 (9th Cir.);
Hynix, 5/13/11 (9th Cir.); Centocor, 2/23/11 (5th
Cir.); Uniloc, 1/4/11 (1st Cir.); Western Union,
12/7/10 (5th Cir.); Spine Solutions, 9/9/10 (6th
Cir.); Enovsys, 8/3/10 (9th Cir.); Becton Dickinson,
7/29/10 (3rd Cir.); Wordtech Systems, 6/16/10 (9th
Cir.); Orion, 5/17/10 (5th Cir.); Verizon, 4/16/10
(4th Cir.); Power-One, 3/30/10 (5th Cir.); Ariad,
3/22/10 (en banc) (1st Cir.); i4i, 3/10/10 (5th Cir.);
Trading Techs., 2/25/10 (7th Cir.); SEB, 2/5/10 (2nd
Cir.); Therasense, 1/25/10 (9th Cir.); Amgen,
9/15/09 (1st Cir.); Fresenius, 9/10/09 (9th Cir.);
Martek Biosciences, 9/3/09 (3rd Cir.); Callaway,
8/14/09 (3rd. Cir.); Exergen, 8/4/09 (1st Cir.);
Gemtron, 7/20/09 (6th Cir.); Ecolab, 6/9/09 (8th
Cir.); Depuy Spine, 6/1/09 (1st Cir. ); Cordis,
3/31/09 (CAFC); Baden Sports, 2/13/09 (9th Cir.);
Kinetic Concepts, 2/2/09 (5th Cir.); Sundance,
12/24/08 (6th Cir.); Rentrop, 12/18/08 (2nd Cir.);
Minks, 10/17/08 (11th Cir.); Cohesive Techs.,
10/7/08 (1st Cir.); Johns Hopkins, 10/2/08 (4th
Cir.); Lucent Techs., 9/25/08 (9th Cir.); 800 Adept,
8/29/08 (11th Cir.); Voda, 8/18/08 (10th Cir.);
Proveris, 8/5/08 (1st Cir.); Muniauction, 7/14/08
(3rd Cir.); Litecubes, 4/28/08 (CAFC and 8th Cir.);
Finisar, 4/18/08 (5th Cir.); Agrizap, 3/28/08 (3rd
Cir.); American Seating, 1/29/08 (6th Cir.); Z4
Technologies, 11/16/07 (5th Cir.); Paice, 10/18/07;
Acco Brands, 9/12/07 (5th Cir.); Pharmastem,
7/9/07 (3rd Cir.); Wechsler, 5/18/07 (9th Cir.); Pods,
4/27/07 (50(a)(1), copyright infringement (joint
ownership)); Depuy Spine, 11/20/06 (1st Cir.); Go
Medical Indus., 10/27/06 (11th Cir.); Dystar,
10/3/06 (4th Cir.); Cook Biotech, 8/18/06 (7th Cir.);
Serio-Us Industries, 8/10/06 (4th Cir.); Syngenta
Seeds, 7/28/06 (Lanham Act regional circuit law
applied; when patent-related CAFC cases have
applied both CAFC law and regional circuit law to
551
denial of motion JMOL; 8th Cir.); Primos, 6/14/06
(denial; after jury verdict); Liquid Dynamics,
6/1/06 (denial, 50(b)); Old Town Canoe, 5/9/06;
Applied Medical Resources, 1/24/06;
Microstrategy, 11/17/05; Sorensen, 10/31/05;
Union Carbide, 10/3/05; Cytologix, 9/21/05 (1st
Cir.); Harris, 8/5/05; Seachange Intl, 6/29/05;
Princeton Biochemicals, 6/9/05; Group One,
5/16/05 (grant, 50(b)); Lisle, 2/11/05; Fuji Photo,
1/14/05; Eolas, 3/2/05 (50(a)); Junker, 2/8/05;
Poly-America, 9/14/04 (50(a)(1); invalidity;
standard defined); Monsanto, 9/7/04; Koito Mfg.,
8/23/04 (9th Cir.); Novartis, 7/8/04 (grant, 50(b));
TI Group, 6/30/04; Honeywell Intl, 6/2/04 (en
banc); Norian, 4/6/04; Chiron, 3/30/04; Summit
Technology, 3/26/04; Ericsson, 12/9/03)
- Although courts have adopted numerous

formulations for the standard of review
regarding a JMOL, the test is essentially
whether, without reweighing the evidence or
considering the credibility of the witnesses,
there can be but one conclusion as to the
verdict that reasonable jurors could have
reached (Kinetic Concepts, 8/13/12 (5th
Cir., using similar language); Uniloc, 1/4/11
(1st Cir., using similar language); Ecolab,
6/9/09 (8th Cir,, using similar language);
Lucent Techs., 9/25/08 (9th Cir., using
similar language); Finisar, 4/18/08 (5th Cir.,
using similar language); Serio-Us Industries,
8/10/06 (4th Cir.))
- Motion for JMOL is a procedural issue not unique

to patent law, thus the law of the regional circuit is
applied (Synthes USA, 10/29/13 (9th Cir.);
Centocor, 2/23/11 (5th Cir.); i4i, 3/10/10 (5th Cir.);
Lucent, 9/11/09 (9th Cir.); Ecolab, 6/9/09 (8th Cir.);
552
Rentrop, 12/18/08; Cohesive Techs., 10/7/08; Z4
Technologies, 11/16/07 (5th Cir.); Acco Brands,
9/12/07; Syngenta Seeds, 7/28/06 (when patent-
related CAFC cases have applied both CAFC
law and regional circuit law to denial of motion
JMOL; 8th Cir.); Applied Medical Resources,
1/24/06; Princeton Biochemicals, 6/9/05; Imonex,
5/23/05)
- **When party fails to file a motion for JMOL

(Rule 50) or request for new trial (Rule 59)
- No pre-verdict JMOL motion the CAFC is

unable to review the sufficiency of the
evidence underlying the jurys verdict
(Cordance, 9/23/11 (noting the patentees
not filing a pre-verdict JMOL motion as
consistent with the district court omitting
claims 2 and 9 from its order granting JMOL
of no invalidity); Wordtech Systems,
6/16/10 (waiver of grounds not previously
argued in a pre-verdict motion under Rule
50(a), where no plain error in the jurys
verdict (9th Cir.)); Fujifilm, 5/27/10 (3rd
Cir.); i4i, 3/10/10 (the CAFC was unable to
decide whether the jurys damages award of
$200 million was excessive, because the
infringer failed to file a pre-verdict JMOL
motion on damages)); Comaper, 3/1/10
(waiver where no pre-verdict JMOL motion
was filed); SEB, 2/5/10 (rejecting post-
verdict JMOL motion (relating to DOE-
PHE) under manifest injustice standard
(2nd Cir.)); See also DISTRICT COURT
PRACTICE AND PROCEDURE
- No JMOL motion after the jury verdict -

without a motion for JMOL or a new trial
553
after a jury verdict, the CAFC will vacate
and remand a jury verdict only if it finds a
prejudicial legal error in the conduct of
the trial; prejudical legal error exists when
it appears to the court that the error is
inconsistent with substantial justice (Hynix,
5/13/11 (challenging judgment only on the
ground that the judge committed an error of
law in his legal conclusion of obviousness,
where the right to contest the sufficiency of
the evidence or the weight of the evidence
(i.e., the factual underpinnings of the
obviousness determination) was waived by
not moving for a post-verdict JMOL or
appealing the district courts denial of
motion for new trial on obviousness);
Fujifilm, 5/27/10 (3rd Cir.); Serio-Us
Industries, 8/10/06 (4th Cir.)); See also
Lexion Medical, 8/28/08 (nonprecedential
jury verdict of infringement nullified and
vacated/remanded where the CAFC
declined to affirm the verdict because of
an incorrect claim construction, despite no
motion for JMOL of noninfringement, but
only a motion for JMOL of invalidity?)
Motion for reconsideration
- Motion for reconsideration regional circuit law applied

- abuse of discretion (Delaware Valley, 3/11/10 (11th
Cir.)); See also Air Turbine Tech., 4/24/09
Motion for new trial
554
- Motion for new trial FRCP 50(d) and 59(a); denied if
the jurys verdict is not against the clear weight of the
evidence (i.e., if a reasonable basis exists in the record to
support the verdict); law of the regional circuit applied to
grant or denial of motion abuse of discretion (Commil
USA, 6/25/13 (5th Cir. denial of motion for new trial
reviewed for abuse of discretion or a misapprehension of
the law; also, more exacting review is applied to orders
granting a new trial than those denying them); Synqor,
3/13/13 (5th Cir.); Function Media, 2/13/13 (affirming
denial of new trial based on alleged inconsistent jury
verdicts on infringement and validity, where record
supported the jurys noninfringement verdict (5th Cir.));
Presidio Components, 12/19/12 (9th Cir.); Arcelormittal
France, 11/30/12 granting a new trial on obviousness and
commercial success after modifying claim construction);
Transocean, 11/15/12 (reversing conditional grant of
motion for new trial (5th Cir. generally scrutinizes a
grant of a new trial more closely than a denial)); Energy
Transportation Group, 10/12/12 (3rd Cir.);
LaserDynamics, 8/30/12 (apparent pre-verdict waiver for
failure to object did not preclude the district court from
exercising its discretion to consider the issue post-trial in
motion for new trial (5th Cir.)); Whitserve, 8/7/12 (district
court abused discretion in denying new trial on damages
where the evidence did not support jurys award (2nd
Cir.)); Leader Technologies, 5/8/12 (the court does not
view the evidence in the light most favorable to the
verdict winner, but exercises its own judgment in
assessing the evidence (3rd Cir.)); Bettcher Indus.,
10/3/11 (6th Cir.); August Tech., 8/22/11 (8th Cir.);
Hynix, 5/13/11 (9th Cir. clear abuse of discretion a
standard that is virtually unassailable); Siemens,
2/24/11 (3rd Cir.); Uniloc, 1/4/11 (motion for new trial is
granted when upholding the verdict will result in a
miscarriage of justice; trial judges do not sit as thirteenth
jurors, empowered to reject any verdict with which they
disagree (1st Cir.)); Lazare Kaplan, 12/22/10 (2nd Cir.);
555
Finjan, 11/4/10 (3rd Cir.); Wordtech Systems, 6/16/10 (9th
Cir.); Fujifilm, 5/27/10 (3rd Cir.); Verizon, 4/16/10 (4th
Cir.); i4i, 3/10/10 (5th Cir. strict standard absolute
absence of evidence to support the jurys verdict;
standard was applied to the CAFCs review of the jurys
damages award ($200 million) where the infringer did
not file a pre-verdict JMOL motion); SEB, 2/5/10 (2nd
Cir.); Therasense, 1/25/10 (9th Cir.); Amgen, 9/15/09 (1st
Cir.); Lucent, 9/11/09 (9th Cir.); Gemtron, 7/20/09 (6th
Cir.); Depuy Spine, 6/1/09 (1st Cir.); Revolution
Eyewear, 4/29/09 (9th Cir.); Cordis, 3/31/09 (CAFC);
Baden Sports, 2/13/09 (9th Cir.); Kinetic Concepts, 2/2/09
(5th Cir.); Johns Hopkins, 10/2/08 (4th Cir.); Lucent
Techs., 9/25/08 (9th Cir.); 800 Adept, 8/29/08 (11th Cir.
vacating the trial courts judgment of invalidity based on
the jurys invalidity findings being tainted by expert
testimony incorrectly characterizing the prior art; denial
of motion for JMOL not appealed); Voda, 8/18/08 (10th
Cir.); Finisar, 4/18/08 (5th Cir.); Innogenetics, 1/17/08
(7th Cir.; obviousness, anticipation); Z4 Technologies,
11/16/07 (5th Cir. abuse of discretion or
misapprehension of the law by the district court); DSU
Medical, 12/13/06 (incl. patent damages; 9th); Aero
Products, 10/2/06 (7th Cir.); Dystar, 10/3/06 (4th Cir.);
Primos, 6/14/06 (8th Cir.); NCube, 1/9/06; Sorensen,
10/31/05; Cytologix, 9/21/05; Collegenet, 8/2/05;
Seachange Intl, 6/29/05; Northpoint, 6/28/05; Poly-
America, 9/14/04 (defined); Koito Mfg., 8/23/04; Power
Mosfet Techs., 8/17/04; Honeywell Intl, 6/2/04 (en
banc); Norian, 4/6/04; Chiron, 3/30/04 (after jury
verdict); Sulzer, 2/14/04; BJ Services, 8/6/03); See also
DISTRICT COURT PRACTICE AND PROCEDURE
- Motion for new trial denied based on evidentiary

rulings establish abuse of discretion and
substantial prejudice suffered (Bettcher Indus.,
10/3/11 (new trial denied based on alleged
improper closing argument, including where no
556
objection made (applying 6th Cir. law));
Innogenetics, 1/17/08 (7th Cir.; motion denied after
the district court excluded all evidence of
obviousness, when the movant failed to timely ask
the court to correct an error in pre-trial order);
Cordis, 1/7/08; Chiron, 3/30/04)
- Motion for new trial based on erroneous jury

instructions (Commil USA, 6/25/13;
LaserDynamics, 8/30/12 (rejected); Wordtech
Systems, 6/16/10 (reversing the denial of motion
for new trial where plain error in jury instructions);
Silicon Graphics, 6/4/10; i4i, 3/10/10; Therasense,
1/25/10; Z4 Technologies, 11/16/07 (burden of
proof on invalidity; obviousness))
- Motion for new trial denied based on the

failure to object to jury instructions
(Wordtech Systems, 6/16/10 (reversing
denial where plain error found in the
instructions); Norian, 4/6/04)
- Motion for new trial denied based on waiver from

the failure to object to the jurys inconsistent
verdict before the jury was dismissed (Depuy
Spine, 6/1/09 (applying the First Circuits iron-
clad rule barring untimely inconsistency
objections))
- Motion for new trial based on counsels arguments

(Commil USA, 6/25/13 (district court did not
abuse its discretion in granting a new trial because
of manifest injustice, where counsel attempted to
instill in the jury through irrelevant references to
ethnicity and religion an us vs. them mentality in
a case involving Jewish plaintiffs and inventors,
based on Fifth Circuit law that despite counsels
improper remarks, grant of a new trial requires that
557
manifest injustice would result, considering the
record as a whole, from letting the jury verdict
stand; also, where no objection raised, a new trial
is granted only where the interest of substantial
justice is at stake; also, the CAFC refused to
substitute its judgment for that of the district court
whose on-the-scene assessment of prejudicial
effect carries considerable weight (5th Cir.));
Function Media, 2/13/13 (no plain error shown in
denying new trial based on improper arguments,
where no objection made (5th Cir.)); Verizon,
4/16/10 (affirming denial of setting aside the jury
verdict based on improper closing arguments
consider totality of the circumstances and whether
a reasonable probability that improper
arguments effectively subverted the jurys role (4th
Cir.)); SEB, 2/5/10 (denied based on opposing
counsels closing argument))
- No reason to conduct new trial where issue is one

of law (Transocean, 11/15/12 (reversing the
district courts conditional grant of a motion for
new trial where there was no reason to conduct a
new trial because the ultimate issue of obviousness
is one of law))
- Waiver on appeal of request for new trial

(Caterpillar, 10/28/04)
Motion to amend findings
- Motion to amend findings FRCP 52(b) regional

circuit law applied abuse of discretion (Golden Blount,
2/15/06)
Motion for relief from judgment
558
- Motion for relief from judgment FRCP 59, 60 (Garber,
6/26/09 (7th Cir.); Amado, 2/26/08 (9th Cir.);
Immunocept, 10/15/07; Hutchins, 7/3/07 (1st Cir.);
Venture Industries, 8/7/06 (6th Cir.); Louisville Bedding,
7/25/06; U. West Virginia, 9/3/03)
- Denial of motion to alter or amend the judgment

FRCP 59 regional circuit law applied - abuse of
discretion (Immunocept, 10/15/07 (5th Cir.))
- Review of (grant or denial of) motion for relief

from judgment, new trial under FRCP 60(b)
regional circuit law applied - abuse of discretion
(Lazare Kaplan, 4/19/13 (2nd Cir. Rule 60(b)(5)
and (6) defining abuse of discretion); Garber,
6/26/09 (7th Cir. Rule 60(b)(4) motions reviewed
de novo)); Amado, 2/26/08 (9th Cir; Rule
60(b)(6)); Apotex, 11/16/07 (7th Cir.); Hutchins,
7/3/07 (1st Cir.); Venture Industries, 8/7/06 (6th
Cir.) (abuse of discretion and clear error defined);
Louisville Bedding, 7/25/06 (6th Cir.; Rule
60(b)(6)); See also Hildebrand, 5/7/09
- District courts ruling under Rule 60(b)

turning on substantive issue unique to patent
law CAFC law applied - Fiskars (Lazare
Kaplan, 4/19/13 (whether, on remand, the
district court may reopen a prior final
judgment as to patent validity, not appealed
by either party, based on a claim
construction modified by the CAFC, was an
issue of law for the CAFC))
Remand to district court
559
- Remand to district court 28 USC 2106 (MercExchange,
3/16/05; Lighting World, 9/3/04)
- Reassignment of case to a different district court

judge on remand regional circuit law applied
(Eolas Technologies, 7/31/06 (7th Cir.; specific
Circuit Court Rule 36 - making reassignment the
default rule); Juicy Whip, 9/3/04 (9th Cir.); Intl
Rectifier (2), 3/18/04)
Sanctions
- Sanctions
- Rule 11 regional circuit law applied; highly

deferential to the district court abuse of
discretion - Cybor (Raylon, 12/7/12 (abuse of
discretion in denying sanctions against the patentee
where the district court applied an erroneous view
of the law, i.e., improperly applied a subjective,
rather than objective, standard of reasonableness
under the circumstances; defining abuse of
discretion (5th Cir.)); Woods, 8/28/12 (11th Cir.);
Whitserve, 8/7/12 (affirming the denial of
sanctions and fees for vexatious litigation based on
the defendants filing a DJ counterclaim against
the plaintiff personally); Eon-Net, 7/29/11 (9th
Cir.); Resqnet.com, 2/5/10 (abuse of discretion in
awarding Rule 11 sanctions (2nd Cir.)); ICU
Medical, 3/13/09 (no abuse of discretion in
awarding Rule 11 sanctions (9th Cir.); also stating
that the Supreme Court has advised all appellate
courts to apply an abuse-of-discretion standard in
reviewing all aspects of a district courts Rule 11
determination defining the S.C. abuse of
discretion standard); Digeo, 11/1/07 (9th Cir.;
contrasting Rule 11 sanctions from attorney fees
560
under 285); Intamin, 4/18/07 (9th Cir.); Power
Mosfet Techs., 8/17/04; Q-Pharma, 3/8/04;
Phonometrics, 11/21/03); See also Colida, 10/6/09
(nonprecedential no abuse of discretion in the
district courts imposition of an anti-filing
injunction against pro se plaintiff); Orenshteyn,
7/24/09 (nonprecedential district court did not
meet the high [abuse of discretion] standard in
awarding Rule 11 sanctions (applying 11th Cir.
law)); Pellegrini, 6/5/08 (nonprecedential
because imposing sanctions is peculiarly within the
province of the trial court, the party appealing
sanctions bears a heavy burden of demonstrating
that the trial judge was clearly not justified in
entering the order (applying 1st Cir. law))
- Determining what sanction to impose

district courts discretion Judin (Raylon,
12/7/12)
- Sanctions under 28 USC 1927 law of regional

circuit applied abuse of discretion (Advanced
Magnetic Closures, 6/11/10 (2nd Cir.); Propat Intl,
1/4/07; Nystrom, 9/14/05); See also Orenshteyn,
7/24/09 (nonprecedential abuse of discretion in
awarding sanctions under Section 1927 (11th Cir.))
- Discovery abuses, FRCP 37 regional circuit law

applied - abuse of discretion (Cheese Systems,
8/6/13 (grant of motion to strike testimony as a
discovery sanction (7th Cir.)); Alexsam, 5/20/13
(5th Cir. listing factors considered for issuing
both severe and less severe sanctions under Rule
37, and affirming the district courts judgment of
infringement as a sanction against the defendant
(based on an additional five factors under 5th Cir.
law) for failure to obey discovery orders and
provide requested discovery in its interrogatory
561
responses); Synqor, 3/13/13 (5th Cir. identifying
four factors no abuse of discretion imposing
sanctions for not disclosing certain pre-verdict
sales, where the sanctions awarded bore a
reasonable relationship to the harm that occurred,
and served as a deterrent against similar discovery
violations by future litigants citing BMW of N.
Am. (S.C.)); ePlus, 11/21/12 (4th Cir.); Rates
Technology, 7/26/12 (no abuse of discretion in
awarding monetary sanctions (attorney fees)
against a partys attorney personally (9th Cir.));
Mettler-Toledo, 2/8/12 (no abuse of discretion in
denying sanctions motion, where documents were
only somewhat relevant and no harm was done to
the movant (5th Cir.)); Clearvalue, 3/24/09 (5th
Cir.); Monsanto, 9/7/04)
- District courts exercise of inherent power to

award sanctions abuse of discretion - Amsted
(Taurus IP, 8/9/13 (review de novo whether the
district court provided sufficient notice of possible
sanctions and opportunity to be heard (since both
are issues of law) (7th Cir.)); Depuy Spine, 6/1/09;
Clearvalue, 3/24/09 (5th Cir.); Takeda, 12/8/08
(award of expert witness fees, in addition to
attorney fees under Section 285))
Standing
- Standing to sue jurisdictional issue apply CAFC law -

Q of law, reviewed de novo, without deference (MHL
Tek, 8/10/11; Wiav Solutions, 12/22/10; Abraxis
Bioscience, 11/9/10; Spine Solutions, 9/9/10; Stauffer,
8/31/10; Enovsys, 8/3/10 (divorced co-inventors
company had standing to sue without joining his ex-wife,
who was ruled not a co-owner pursuant to a state court
divorce decree); Mann Foundation, 5/14/10; SiRF
562
Technology, 4/12/10; Sky Technologies, 8/20/09
(standing of patent owner who received title by operation
of state foreclosure law); Lucent Techs., 9/25/08
(standing of patent co-owner); Mars, 6/2/08 (standing of
licensee); Akazawa, 3/31/08; Morrow, 9/19/07;
Mitutoyo, 9/5/07; Aspex Eyewear, 1/10/06; Evident,
2/22/05)
- Underlying factual determinations upon which a

conclusion of standing is based reviewed for
clear error (district court) or substantial evidence
(ITC) (Abraxis Bioscience, 11/9/10; Enovsys,
8/3/10; SiRF Technology, 4/12/10 (ITC))
Statute of limitations
- Statute of limitations whether run de novo (Gillig,

4/20/10)
- Tolling the statute of limitations by equitable

estoppel, or equitable tolling abuse of discretion;
equitable tolling is reviewed de novo when
underlying facts are undisputed (Landmark
Screens, 4/23/12 (9th Cir.))
Stipulations
- Parties pretrial stipulation interpretation thereof,

much like contract interpretation, is a Q of law, reviewed
de novo Fuji Photo (Scanner Techs., 6/19/08)
Transfer, reassignment to a different district court

judge on remand 28 USC 2106; recusal of judge
563
- Request for transfer to a different district court judge
regional circuit law abuse of discretion (Lazare Kaplan,
4/19/13 (2nd Cir. applies three factors); Garber, 6/26/09
(7th Cir.); Cohesive Techs., 10/7/08 (1st Cir. three-part
inquiry; no reassignment); Research Corp. Techs., 8/1/08
(9th Cir. considers three factors; remanded with
instructions to assign the case to a different judge)); See
also McZeal, 6/18/09 (nonprecedential recusal of judge
reviewed for abuse of discretion (5th Cir.)); In re
Volkswagen, 9/26/08 (nonprecedential applying 6th Cir.
law)
Waivers
- Waiver of (affirmative) defense (FRCP 8(c)) for failing

to assert in (original) pleadings, under Section 282 -
abuse of discretion (Ford, 6/15/05); See also Stored
Value Solutions, 12/10/12 (nonprecedential consider
the possible prejudicial effect of raising affirmative
defenses after the pleadings none where the lack of
written description issue did not arise until after reexam,
more than a year after filing of the complaint (3rd Cir.))
- Waiver of issue on appeal Q of law, based on

underlying facts clear error review (Caterpillar,
10/28/04)
Writs of mandamus
- Writs of mandamus CAFCs jurisdiction over writs of

mandamus in patent cases is exclusive, including when
the writ substantively does not implicate patent law
(Princo (Order), 3/1/07)
- Request for mandamus relief is determined under

Federal Circuit law, except to the extent that the
564
underlying substantive issues may be governed by
regional circuit law (In re EMC, 5/4/12 (Order)
(applying CAFC law to determine the availability
of mandamus, and to whether a motion to sever
should be granted as part of a motion to sever and
transfer); In re Shared Memory Graphics, 9/22/11
(Order) (applying 9th Cir. law to motion to
disqualify counsel, which is decided under
California law); In re Vistaprint, 12/15/10 (Order);
In re Nintendo, 12/17/09 (Order) (applying 5th Cir.
law where the petition did not involve substantive
issues of patent law); In re TS Tech (Order),
12/29/08 (applying the laws of the regional circuit
(5th Cir.) where the request for mandamus relief to
order the E.D. of Texas to transfer the case to the
S.D. of Ohio did not involve substantive issues of
patent law); Princo (Order), 3/1/07 (interpretation
of 28 USC 1659, CAFC law)); See also In re
Broadcom, 4/23/13 (Order) (nonprecedential
regional circuit law (5th Cir.) applied where there
were no substantive issues of patent law); In re U.
of South Florida, 1/12/12 (Order) (nonprecedential
- applying 3rd Cir. law to motion to disqualify
counsel)
- Clear abuse of discretion standard for

grant or denial of transfer of venue (In re
Link_A_Media Devices, 12/2/11 (Order)
(clear and indisputable right to writ to
correct improper transfer order (3rd Cir.)); In
re Vistaprint, 12/15/10 (Order) (5th Cir.); In
re Nintendo, 12/17/09 (Order) (clear abuse
of discretion where no meaningful ties
between the case and the E.D. of Texas,
applying 5th Cir. law); In re Genentech
(Order), 5/22/09 (following In re TS Tech
(Order)); In re Volkswagen of America
(Order), 5/22/09; In re TS Tech (Order),
565
12/29/08 (petitioner for writ of mandamus
met higher burden of demonstrating that the
district courts denial of motion to transfer
venue was a clear abuse of discretion such
that refusing transfer produced a patently
erroneous result applying 5th Cir. law and
Volkswagen (5th Cir. 2008) (en banc))); See
also In re Eli Lilly, 10/18/13 (Order)
(nonprecedential denying writ because the
district courts transfer order did not produce
a patently erroneous result, where the
transfer was properly based on judicial
efficiency); In re Telular, 4/3/09 (Order)
(nonprecedential denying petition where
standard was not met, and distinguishing
facts from TS Tech and Volkswagen)
II. BIOTECH/PHARMA CASES
A. Biotech Cases
(Sanofi-Aventis v. Pfizer, 11/5/13 (isolated cDNA encoding the

human interleukin-13 receptor binding chain (IL-13bc)); Bayer
Cropscience, 9/3/13 (genetically modified, herbicide resistant plants);
Aria Diagnostics v. Sequenom, 8/9/13 (diagnostic test for detecting
fetal genetic defects, e.g., Downs Syndrome); Novozymes v. DuPont
Nutrition Biosciences, 7/22/13 (recombinant enzyme technology
alpha-amylases for, e.g., ethanol production; Termamyl); Organic
Seed Growers v. Monsanto, 6/10/13 (genetically modified seeds);
Bowman v. Monsanto, 5/13/13 (S.C.) (genetically modified seeds);
Sanofi-Aventis v. Genentech, 5/10/13 (enhancers for making
recombinant drugs; Rituxan); Biogen Idec, 4/16/13 (chronic
lymphocytic leukemia; anti-CD20 antibody; Rituxan, Arzerra); In
re Droge, 9/21/12 (methods and compositions for sequence-specific
recombination of DNA in a eukaryotic cell using modified versions of
wild-type bacteriophage integrase); Assoc. for Molec. Pathology v.
PTO, Myriad, 8/16/12 (isolated human genes, BRCA1 and BRCA2,
and mutations in the genes associated with a predisposition to breast
566
and ovarian cancers); Sanofi-Aventis v. Genentech, 3/22/12
(nonprecedential) (enhancer elements for gene regulation derived
from human cytomegalovirus (HCMV)); Pioneer Hi-Bred, 2/28/12
(transgenic corn plants); Adair v. Carter, 2/7/12 (humanized
antibodies); Monsanto v. Bowman, 9/21/11 (genetically modified
soybeans resistant to glyphosphate-based herbicides; Roundup
Ready soybeans); Genetics Institute v. Novartis, 8/23/11
(recombinant truncated Factor VIII protein; hemophilia); Billups-
Rothenberg, 4/29/11 (genetic test for Type I hereditary
hemochromatosis); Centocor v. Abbott Labs, 2/23/11 (humanized
antibodies to human tumor necrosis factor alpha (TNF-alpha);
arthritis; Humira); Goeddel v. Sugano, 9/7/10 (recombinant human
fibroblast interferon); Intervet v. Merial, 8/4/10 (DNA constructs
encoding porcine circovirus type II); Enzo Biochem v. Applera,
3/26/10 (detection of target nucleic acids using non-radioactive
probes); Ariad v. Eli Lilly, 3/22/10 (en banc) (gene regulation by
reducing NF-B transcription factor activity; ameliorating the harmful
symptoms of diseases that trigger NF-B activation; Evista, Xigris);
Ajinomoto v. ITC, 3/8/10 (methods for making L-lysine using
genetically engineered bacteria); In re Chapman, 2/24/10 (divalent
antibody fragments); In re Hoffmann-La Roche, 12/2/09 (36-amino
acid peptide; HIV inhibitor; Fuzeon); Asymmetrx v. Biocare
Medical, 9/18/09 (p63 antibodies); Amgen v. Hoffmann-La Roche,
9/15/09 (recombinant human erythropoietin (EPO) and processes for
manufacturing; anemia; Epogen and Mircera (pegylated EPO));
Martek Biosciences v. Nutrinova, 9/3/09 (microorganisms
(microalgae) for producing docosahexaenoic acid (DHA, an essential
omega-3 fatty acid for human development)); U. of Pittsburgh v.
Hedrick, 7/23/09 ((genetically modified) adipose (fat)-derived stem
cells that differentiate into, e.g., fat, bone, cartilage, muscle and nerve
cells/tissue); Agilent Technologies v. Affymetrix, 6/4/09 (microarray
hybridization for performing multiple genetic analyses on a small
fluid sample); Amgen v. Ariad, 6/1/09 (nonprecedential - gene
regulation by reducing NF-B transcription factor activity see also
Ariad v. Eli Lilly, 4/3/09); Autogenomics v. Oxford Gene
Technology, 5/18/09 (microarrays); Amgen v. ITC, 4/30/09
(recombinant human erythropoietin (EPO) and derivatives thereof;
anemia; Epogen and Mircera) [the CAFC vacated and withdrew
567
its prior opinion, issued 3/19/08]; Ariad v. Eli Lilly, 4/3/09 (gene
regulation by reducing NF-B transcription factor activity;
ameliorating the harmful symptoms of diseases that trigger NF-B
activation; Evista, Xigris) [vacated on 8/21/09, and reinstated in
part in Ariad, 3/22/10 (en banc)]; In re Kubin, 4/3/09 (DNA
molecules encoding the receptor protein Natural Killer Cell Activation
Inducing Ligand (NAIL)); Digene v. Third Wave Techs., 4/1/09
(nonprecedential diagnosis of human papillomavirus (HPV) type
52 using DNA probes); In re Gleave, 3/26/09 (antisense inhibitors of
human IGFBP-2 and human IGFBP-5); In re Alonso, 10/30/08
(monoclonal antibodies from human-human hybridoma; treating
neurofibrosarcoma); In re Tzipori, 10/15/08 (nonprecedential
monoclonal antibodies which bind to subunit of Shiga-like toxin II;
prevention or treatment of hemolytic uremic syndrome); Carnegie
Mellon U. v. Hoffmann-La Roche, 9/8/08 (recombinant DNA
production of DNA polymerase I; Taq DNA polymerase for PCR);
Regents of U. Cal. v. Dakocytomation Cal., 2/28/08 (staining methods
for detecting chromosomal abnormalities, by disabling the
hybridization capacity of repetitive sequences; nucleic acids as
DNA and RNA, vs. peptide nucleic acids (PNAs)); Monsanto v.
David, 2/5/08 (chimeric genes for genetically modified crops
(soybeans) resistant to glyphosate herbicide; Roundup-Ready);
Monsanto v. Bayer Bioscience, 1/25/08 (truncated Bt toxin protein-
producing chimeric genes for making insect-resistant plants);
Innogenetics v. Abbott Labs, 1/17/08 (assay kits using nucleic acid
probes for detecting and classifying hepatitis C virus (HCV)
genotypes based on sequences in the 5 prime untranslated region (5
UTR) of the HCV genome); Adang v. Umbeck, 10/25/07
(nonprecedential; interference; plants containing insecticidal
resistance genes); Monsanto v. Syngenta Seeds, 10/4/07 (genetically
modified crops (corn) resistant to glyphosate herbicide; Roundup-
Ready); In re Sullivan, 8/29/07 (antivenom composition containing
Fab antibody fragments, for treating snakebite victims); Frazer v.
Schlegel, 8/20/07 (interference; HPV virion-like particles expressed
from recombinant vaccinia virus for producing vaccines against
HPV); Integra Life Sciences v. Merck KGaA, 7/27/07 (anti-
angiogenesis; RGD peptides) [On remand from the U.S. Supreme
Court]; Benitec Australia v. Nucleonics, 7/20/07 (gene silencing;
568
RNA interference); Monsanto v. McFarling, 5/24/07 (genetically
modified crops (soybeans) resistant to glyphosate herbicide;
Roundup-Ready); Syngenta Seeds v. Monsanto, 5/3/07
(nonprecedential; genetically engineered plants that produce
insecticidal Bt protein; plants having codons rich in G and C
nucleotides (G+C)); Israel Bio-Engineering Project v. Amgen, 1/29/07
(tumor necrosis factor inhibitory protein; rheumatoid arthritis;
Enbrel); Cook Biotech v. Acell, 8/18/06 (medical technology; tissue
compositions, aka extracellular matrices, for tissue reconstruction;
ACell Vet); Monsanto v. Scruggs, 8/16/06 (genetically engineered,
herbicide-resistant and insect-resistant, cotton and soybean seeds, by
inserting into plant DNA a synthetic gene containing CaMV 35S
promoter; Round-up Ready); Amgen v. Hoechst Marion Roussel,
8/3/06 (EPO naturally occurring hormone that stimulates the
production of red blood cells in the bone marrow by erythropoiesis;
recombinant human erythropoietin (EPO) and recombinant DNA
technology for producing EPO; Epogen; contains an excellent
summary of recombinant DNA technology); Regents of U. California
v. University of Iowa Research Foundation, 7/17/06 (interference;
immunostimulatory nucleic acid molecules); Falkner v. Inglis, 5/26/06
(interference; vaccine containing mutant poxvirus vector having
deleted or inactivated essential viral gene); Brown v. Barbacid, 2/2/06
(interference; assay for identifying compounds that inhibit farnesyl
transferase, an enzyme involved in control of cell growth); Invitrogen
v. Clontech Labs., 11/18/05 (reverse transcriptase lacking RNase H
activity - for cloning DNA); Medimmune v. Genentech, 10/18/05
(cell cultures for making antibodies Cabilly patents); Invitrogen v.
Biocrest Mfg., 10/5/05 (improving competence of E. coli cells, i.e.,
ability to take up and replicate exogenous DNA); Novo Nordisk v.
Bio-Technology General, 10/5/05 (production of hGH via
recombinant techniques); Enzo Biochem v. Gen-Probe, 9/30/05
(nucleic acid probes for detecting gonorrhea); In re Fisher, 9/7/05
(ESTs); Capon v. Eshhar, 8/12/05 (interference; chimeric DNA
molecules for enhancing immune response); Enzo Biochem v. Gen-
Probe, 7/13/05 (nucleic acid probes for detecting gonorrhea);
Princeton Biochemicals v. Beckman Coulter, 6/9/05 (capillary
electrophoresis); Medimmune v. Centocor, 6/1/05 (recombinant DNA
for making chimeric immunoglobulins, Synagis); Clontech Labs. v.
569
Invitrogen, 5/5/05 (reverse transcriptase lacking RNase H activity
for cloning DNA); Israel Bio-Engineering Project, 3/15/05 (tumor
necrosis factor inhibitory protein); In re Crish, 12/21/04 (DNA
molecules having promoter activity for the human involucrin gene);
Lab Corp. of America v. Chiron, 9/30/04 (nucleic acid testing for
detecting Hepatitis C virus); Monsanto v. Ralph, 9/7/04 (Roundup-
Ready plant seeds); In re Wallach, 8/11/04 (proteins, DNA
molecules encoding a human TNF binding protein); Goldenberg v.
Cytogen, 6/23/04 (detection of tumors by targeting intracellular
marker substances); In re Ngai, 5/13/04 (method for normalizing and
amplifying RNA); Monsanto v. McFarling, 4/9/04 (Roundup-Ready
plant seeds); Monsanto v. Bayer Bioscience, 3/30/04 (chimeric genes,
plants and plant cells producing insecticidal protein; transformation by
Agrobacterium); Chiron v. Genentech, 3/30/04 (HER2 monoclonal
antibodies; chimeric and humanized antibodies); Gen-Probe v. Vysis,
3/5/04 (nucleic acid diagnostic assays for HIV or Hepatitis C); Noelle
v. Lederman, 1/20/04 (interference; CD40CR antibody for treating
hyperactive immune system); Velander v. Garner, 11/5/03
(interference; transgenic animals that produce fibrinogen in milk);
Genzyme v. Transkaryotic Therapies, 10/9/03 (Fabry disease,
deficiency of -galactosidase-A; recombinant methods for producing
human -galactosidase A, and cells genetically engineered to express
and secrete the enzyme); Elan v. Mayo Foundation, 10/2/03
(Alzheimers disease; transgenic rodents containing Swedish
mutation producing high incidence of early-onset Alzheimers
disease); Rhone-Poulenc Agro v. DeKalb Genetics, 9/29/03
(herbicide-resistant corn plants); Eli Lilly v. Bd. Regents U. Wash.,
7/3/03 (interference; regulation of blood clotting; cDNA coding for
human protein C); Integra Life Sciences v. Merck KGaA, 6/6/03 (anti-
angiogenesis; RGD peptides))
[SEE INFRINGEMENT, ANTICIPATION, OBVIOUSNESS,

UTILITY, ENABLEMENT AND WRITTEN DESCRIPTION
SECTIONS]
B. Pharma/Hatch-Waxman Cases
570
(Sunovion v. Teva, 9/26/13 (dextrorotatory or (S)-enantiomer
eszopiclone; sleep medication; Lunesta); Pronova Biopharma v.
Teva, 9/12/13 (nonprecedential concentrated fish oil;
hypertriglyceridemia; Lovaza); Leo Pharm. v. Rea, 8/12/13 (topical
composition of vitamin D analog and corticosteroid; treating psoriasis;
Taclonex ointment); NYU v. Mylan, 8/7/13 (nonprecedential -
tetracyclines; treating anti-inflammatory disorders; Oracea); Teva v.
Sandoz, 7/26/13 (copolymer-1; treating multiple sclerosis; Copaxone);
Wyeth v. Abbott Labs, 6/26/13 (rapamycin; treating or preventing
restenosis); Novo Nordisk v. Caraco, 6/18/13 (combination therapy
using repaglinide and metformin; Type II diabetes); Dey v. Sunovion,
5/20/13 (formoterol; chronic obstructive pulmonary disease (COPD);
Brovana); Aventis v. Amino Chemicals, 5/20/13 (fexofenadine;
antihistamine; Allegra); Allergan v. Sandoz, 5/1/13 (brimonidine and
timolol; combination eye-drop product for treating glaucoma;
Combigan); Bayer v. Watson, 4/16/13 (oral contraceptive; YAZ);
Cephalon v. Watson, 2/14/13 (fentanyl buccal tablets; opioid
analgesic for treating cancer pain; Fentora); Allergan v. Barr Labs,
1/28/13 (nonprecedential bimatoprost; treating ocular hypertension
or glaucoma; Lumigan); Astrazeneca v. Aurobindo, 12/14/12
(calcium salt of rosuvastatin; controlling cholesterol and treating
atherosclerosis; Crestor); Hoffmann-La Roche v. Apotex, 10/11/12
(nonprecedential ibandronate; monthly treatment of osteoporosis in
post-menopausal women; Boniva); Pozen v. Par, 9/28/12 (single
tablet of sumatriptan and naproxen; treating migraines; Treximet );
Santarus v. Par, 9/4/12 (omeprazole; stomach acid-related diseases
and disorders; Zegerid); Eli Lilly v. Teva, 8/24/12 (pemetrexed;
antifolate; Alimta); Alcon Research v. Apotex, 8/8/12 (olopatadine;
anti-allergy eye drops; Patanol); Momenta v. Amphastar, 8/3/12
(enoxaparin; preventing blood clots; Lovenox); Novo Nordisk v.
Caraco, 7/30/12 (Order); Sciele Pharma v. Lupin, 7/2/12 (extended
release tablet of metformin HCL; diabetes; Fortamet) ; In re
Montgomery, 5/8/12 (renin-angiotensin system (RAS) inhibitors;
hypertension); Otsuka v. Sandoz, 5/7/12 (aripiprazole; antipsychotic
schizophrenia; Abilify); Caraco v. Novo Nordisk, 4/17/12 (S.C.);
Dey Pharma v. Sunovion, 4/16/12 (Xopenex); Bayer Schering v.
Lupin, 4/16/12 (Yasmin oral contraceptive); In re Cyclobenzaprine,
4/16/12 (modified release of cyclobenzaprine HCl; skeletal muscle
571
relaxant; Amrix); Aventis Pharma v. Hospira, 4/9/12 (docetaxel;
chemotherapy cancer drug; Taxotere); Astrazeneca v. Apotex, 2/9/12
(rosuvastatin calcium; cholesterol-lowering; CRESTOR); Teva v.
Astrazeneca, 12/1/11 (stabilized statin (rosuvastatin calcium);
dyslipidemia; Crestor); Sanofi-Aventis v. Apotex, 10/18/11
(clopidogrel bisulfate tablets; blood thinner; Plavix); Classen
Immunotherapies v. Biogen IDEC, 8/31/11 (immunization methods
based on comparing immunization schedules); Unigene Labs v.
Apotex, 8/25/11 (salmon calcitonin; osteoporosis; Fortical and
Miacalcin); Eli Lilly v. Actavis Elizabeth, 7/29/11 (nonprecedential
atomoxetine; ADHD; Strattera); Duramed v. Paddock Labs,
7/21/11 (conjugated estrogens for hormone replacement therapy;
Cenestin); Reckitt Benckiser v. Watson Labs, 7/7/11
(nonprecedential - guaifenesin; expectorant for relieving congestion;
Mucinex); Tyco Healthcare v. Mutual Pharmaceutical, 6/22/11
(temazepam; insomnia; Restoril); Boston Scientific v. J&J, 6/7/11
(rapamycin and analogs in drug-eluting stents; restenosis; Cypher
stent); Allergan v. Athena Cosmetics, 5/24/11 (prostaglandin
compound, PGF; treating inadequate eyelash growth; Latisse);
Allergan v. Exela Pharmsci (In re Brimonidine Patent Litigation),
5/19/11 (brimonidine tartrate; eyedrop formulation for reducing
elevated intraocular pressure (IOP) associated with glaucoma;
Alphagan P); In re Kao, 5/13/11 (controlled-release tablets
containing opioid narcotic oxymorphone; chronic pain; Opana ER);
In re Violation of Rule 28(d), 3/29/11 (oxaliplatin; colorectal cancer;
Eloxatin); Sanofi-Aventis v. Sun, 12/22/10 (nonprecedential
oxaliplatin; colorectal cancer; Eloxatin); Prometheus Labs v. Mayo,
12/17/10 (methods for calibrating the proper dosage of thiopurine
drugs; treatment of autoimmune diseases) [reversed by the U.S.
Supreme Court, on 3/20/12]; Cancer Research v. Barr Labs, 11/9/10
(temozolomide; brain cancer; Temodar); Abraxis Bioscience v.
Navinta, 11/9/10 (ropivacaine HCl monohydrate; anesthetic for
surgery; Naropin); Astrazeneca v. Apotex, 11/1/10 (budesonide
inhalation suspension; anti-inflammatory corticosteroid; Pulmicort
Respules); Teva v. Eisai, 10/6/10 (donepezil; Alzheimers disease;
Aricept); Daiichi Sankyo v. Matrix Labs, 9/9/10 (olmesartan
medoxomil, angiotensin receptor blocker for high blood pressure;
Benicar, Benicar HCT, Azor); Eli Lilly v. Teva, 9/1/10 (raloxifene
572
HCl; postmenopausal osteoporosis; Evista); Adams v. Perrigo,
8/5/10 (extended release guaifenesin; expectorant; Mucinex); King v.
Eon Labs, 8/2/10 (metaxalone; muscle relaxant; Skelaxin); Sun v. Eli
Lilly, 7/28/10 (gemcitabine; cancer; Gemzar); Purdue Pharma v. Par,
6/3/10 (nonprecedential - tramadol; opioid analgesic; Ultram ER);
Ortho-McNeil v. Lupin, 5/10/10 (levofloxacin; antimicrobial agent;
Levaquin); Photocure v. Kappos, 5/10/10 (MAL hydrochloride;
photochemotherapy or photodynamic therapy to treat actinic
keratoses; Metvixia); Vanderbilt U. v. ICOS, 4/7/10 (tadalafil (PDE5
inhibitor); erectile dysfunction; Cialis); Boehringer Ingelheim v. Barr
Labs, 1/25/10 (pramipexole; Parkinsons disease; Mirapex ); Wyeth
v. Kappos, 1/7/10 (Alzheimers disease); Janssen v. Teva, 9/25/09
(galanthamine; Alzheimers disease); Astrazeneca v. Teva, 9/25/09
(quetiapine; atypical antipsychotic; SEROQUEL); Prometheus
Labs v. Mayo, 9/16/09 (methods for calibrating the proper dosage of
thiopurine drugs; treatment of autoimmune diseases); Sanofi-Aventis
v. Sandoz, 9/10/09 (nonprecedential optically pure oxaliplatin;
colorectal cancer; Eloxatin); Ortho-McNeil v. Teva, 8/26/09
(nonprecedential tramadol and acetaminophen tablet; pain reliever;
Ultracet); Bayer Schering v. Barr Labs, 8/5/09 (drospirenone; daily
oral contraceptive; Yasmin); Ortho-McNeil v. Mylan Labs, 6/10/09
(levofloxacin; antibiotic; Levaquin); Abbott Labs v. Sandoz, 5/18/09
(crystalline cefdinir (anhydrate); antimicrobial; Omnicef); Altana
Pharma v. Teva, 5/14/09 (pantoprazole; proton pump inhibitor (PPI),
antiulcer; Protonix); Procter & Gamble v. Teva, 5/13/09 (risedronate;
osteoporosis; Actonel); Eli Lilly v. Teva, 2/24/09 (raloxifene
hydrochloride; postmenopausal osteoporosis; Evista); Sanofi-
Synthelabo v. Apotex, 12/12/08 (clopidogrel bisulfate; platelet
aggregation (blood clot) inhibiting agent for treating or preventing
blood-thrombotic events such as heart attacks and strokes; Plavix);
Takeda v. Mylan Labs, 12/8/08 (pioglitazone; insulin sensitizer for
controlling blood sugar in Type 2 diabetics; ACTOS); Abbott Labs
v. Sandoz, 10/21/08 (clarithromycin; antibiotic; BiaxinXL); In re
Ciprofloxacin, 10/15/08 (ciprofloxacin HCl; antibiotic for treating
bacterial illness (e.g., anthrax); Cipro); Impax Labs v. Aventis
Pharms., 10/3/08 (riluzole; amyotrophic lateral sclerosis (ALS or Lou
Gehrigs disease; RILUTEK); Janssen Pharmaceutica v. Apotex,
9/4/08 (risperidone; anti-psychotic, schizophrenia; Risperdal oral
573
solution); Merck v. Apotex, 8/21/08 (nonprecedential; glaucoma;
Trusopt and Cosopt); In re Omeprazole Patent Litigation
Astrazeneca v. Apotex, 8/20/08 (omeprazole; treating acid-related
gastrointestinal disorders, e.g., gastric and duodenal ulcers, by
inhibiting the production of gastric acid; Prilosec); Prasco v. Medicis
Pharm., 8/15/08 (benzoyl peroxide cleansing product; TRIAZ); Eisai
v. Dr. Reddys Labs, 7/21/08 (rabeprazole; proton pump inhibitor for
suppressing gastric acid production in the stomach, for treatment of
duodenal ulcers and heartburn; Aciphex); Merck v. Apotex, 7/16/08
(nonprecedential; alendronate sodium; osteoporosis; FOSAMAX);
Roche Palo Alto v. Apotex, 7/9/08 (NSAID formulation containing
ketorolac tromethamine; treatment of eye inflammation; ACULAR
and ACULARLS); In re Omeprazole Patent Litigation Astrazeneca
v. Mylan Labs, 6/10/08 (nonprecedential; omeprazole; treating gastric
and duodenal ulcers by inhibiting the production of gastric acid;
Prilosec); Aventis Pharma v. Amphastar Pharms., 5/14/08
(compositions comprising low molecular weight heparins; for
preventing thromboses (blood clotting) while minimizing the
possibility of hemorrhaging, especially during high-risk surgery;
Lovenox (U.S.) and Clexane (EP)); Caraco v. Forest Labs, 4/1/08
(substantially pure forms of escitalopram oxalate; depression and
generalized anxiety disorder, selective serotonin reuptake inhibitor;
Lexapro); Ortho-McNeil v. Mylan Labs, 3/31/08 (topiramate;
anticonvulsant, for treating epilepsy; TOPOMAX); Pfizer v. Teva,
3/7/08 (celecoxib; non-steroidal anti-inflammatory drug (NSAID),
COX-2 enzyme inhibitor; pain and inflammation, osteoarthritis and
rheumatoid arthritis; Celebrex); Apotex v. Merck, 11/16/07
(enalapril; high blood pressure; Vasotec); HIF Bio v. Yung Shin
Pharma Pharmaceuticals, 11/13/07 (anti-angiogenesis, tumor
compound); Pharmaceutical Resources v. Roxane Labs, 10/26/07
(nonprecedential; stable flocculated suspensions of megestrol acetate;
anorexia; Megace); Schwarz Pharma v. Paddock Labs, 10/12/07
(moexipril hydrochloride and magnesium oxide (stabilizer), ACE
inhibitor; hypertension; Univasc); Abbott Labs v. Torpharm,
10/11/07 (divalproex sodium; anti-seizure medication; Depakote);
Somerset v. Dudas, 10/4/07 (selegiline, transdermal patch; depression;
EMSAM); Warner-Lambert v. Purepac, 9/21/07 (gabapentin;
cerebral disorders, epilepsy; Neurontin); Daiichi Sankyo v. Apotex,
574
9/12/07 (ofloxacin, antibiotic; bacterial ear infections); Aventis
Pharma v. Lupin, 9/11/07 (ramipril, ACE inhibitor; high blood
pressure; Altace); Forest Labs v. Ivax, 9/5/07 (escitalopram oxalate
(enantiomer); antidepressant, selective serotonin reuptake inhibitor;
Lexapro); Astrazeneca v. KV Pharmaceutical, 7/23/07 (metoprolol
succinate; angina, hypertension and congestive heart failure; Toprol-
XL); Takeda v. Alphapharm, 6/28/07 (pioglitazone; insulin sensitizer
for controlling blood sugar in Type 2 diabetics; ACTOS); In re
Omeprazole, 4/23/07 (omeprazole; proton pump inhibitor of gastric
acid secretions; Prilosec Teva v. Novartis, 3/30/07 (famciclovir;
genital herpes; Famvir); Merck v. Hi-Tech Pharmacal, 3/29/07
(carbonic anhydrase inhibitors, dorzolamide; glaucoma; Trusopt);
Pfizer v. Apotex, 3/22/07 (amlodipine besylate; hypertension and
chronic stable and vasospastic angina; Norvasc); Ortho-McNeil v.
Caraco, 1/19/07 (compositions containing certain weight ratios of
tramadol and acetaminophen; pain relievers, i.e., analgesics); Abbott
Labs v. Andrx, 1/5/07 (extended release clarithromycin; antibiotic;
Biaxin XL); Eli Lilly v. Zenith Goldline, 12/26/06 (olanzapine; use
to treat schizophrenia; Zyprexa); Sanofi-Synthelabo v. Apotex,
12/8/06 (clopidogrel bisulfate; platelet aggregation (blood clot)
inhibiting agent; Plavix); Impax Labs v. Aventis, 11/20/06 (riluzole
tablets for the treatment of patients with amyotrophic lateral sclerosis
(ALS, aka Lou Gehrigs disease); Rilutek); Abraxis Bioscience v.
Mayne Pharma, 11/15/06 (injectible oil-in-water emulsion containing
propofol; inducing and maintaining general anesthesia and sedation in
patients; Diprivan for humans and Rapinovet for veterinary use);
Abbott Labs v. Baxter, 11/9/06 (sevoflurane, fast-acting inhalation
anesthetic; sevoflurane and water formulation for preventing
degradation of sevoflurane by Lewis acids); Alza v. Mylan Labs,
9/6/06 (extended release formulation of oxybutynin; anti-incontinence
drug; Ditropan XL); Pfizer v. Ranbaxy, 8/2/06 (atorvastatin calcium;
R-trans enantiomer; reduces low-density lipoprotein (LDL)
cholesterol levels; Lipitor); Abbott Labs v. Andrx, 6/22/06
(antibiotic; extended release formulation of clarithromycin; Biaxin
XL); Breckenridge v. Metabolite Labs, 4/7/06 (method for
controlling hyperhomocysteinemia, an emerging risk factor for heart
and vascular disease, using vitamin B12 and folic acid formulation);
Kao v. Unilever, 3/21/06 (cosmetic skin-care product for removing
575
blackheads from facial skin using copolymer); Smithkline Beecham v.
Apotex, 2/24/06 (antidepressant; paroxetine hydrochloride (PHC),
Paxil); Ferring v. Barr Labs, 2/15/06 (prevention of diuretic
symptoms associated with diabetes; oral 1-deamino-8-D-arginine
vasopressin for absorption through gastrointestinal tract); Medichem
v. Rolabo, 2/3/06 (process for making loratadine; Claritin); Perdue
Pharma v. Endo, 2/1/06 (controlled release oxycodone; OxyContin);
Stern v. Trustees of Columbia University, 1/17/06 (use of
prostaglandins to treat glaucoma); Perricone v. Medicis, 12/20/05
(treating/preventing sunburns through topical application of ascorbic
acid (vitamin C); skin depigmenter; Lustra); Pfizer (and Warner-
Lambert) v. Teva, 11/22/05 (hypertension, angiotensin converting
enzyme (ACE) inhibitors, e.g., quinapril; Accupril; 450 patent; see
Hatch-Waxman issues below); Tap v. Owl, 8/18/05 (prostate
cancer, leuprolide, Lupron Depot); Warner-Lambert v. Teva, 8/11/05
(hypertension, angiotensin converting enzyme (ACE) inhibitors, e.g.,
quinapril; Accupril; 450 patent); Pharmacia v. Par, 8/10/05
(glaucoma, Xalatan); Rasmusson v. Smithkline Beecham, 6/27/05
(interference, prostate cancer, finasteride); Upsher-Smith Labs. v.
Pamlab, 6/17/05 (vitamin supplement compositions containing B12
and folic acid); Purdue Pharma v. Endo, 6/7/05 (controlled release
oxycodone, OxyContin) [withdrawn]; Syntex v. Apotex, 5/18/05
(ophthalmic formulations, Acular); Smithkline Beecham v. Apotex,
4/8/05 (antidepressant; paroxetine hydrochloride (PHC) hemihydrate,
Paxil); Merck v. Teva, 1/28/05 (bone disease, osteoporosis; once-
weekly dose of alendronate monosodium trihydrate, Fosamax); Teva
v. Pfizer, 1/21/05 (depression, anxiety disorders; sertraline
hydrochloride, Zoloft; see Hatch-Waxman issues below); Stephens
v. Tech Intl, 12/29/04 (treatment of urine samples using chemical
oxidizing agent; see below); Alza v. Mylan, 12/10/04 (transdermal
fentanyl patch, Duragesic); Astrazeneca v. Mutual, 9/30/04
(hypertension; felodipine tablets, Plendil); Xechem Intl v. UT
Anderson Cancer Center, 8/31/04 (paclitaxel formulation); Glaxo v.
Apotex, 7/27/04 (antibiotic; cefuroxime, Ceftin; see Hatch-Waxman
issues below); Eli Lilly v. Aradigm, 7/20/04 (modified insulin,
lispro, Humalog; aerosolized administration of lispro); Novartis v.
Abbott, 7/8/04 (cyclosporin formulation, immunosuppressant);
Metabolite Labs v. LabCorp of America, 6/8/04 (method for detecting
576
vitamin B12 and folic acid deficiency by correlating homocysteine
levels with deficiency); Knoll v. Teva, 5/19/04 (hydrocodone
bitartrate/ibuprofen tablet for pain relief, Vicoprofen); Housey v.
Astrazeneca, 5/7/04 (methods of screening for protein inhibitors and
activators); Elan v. Andrx, 5/5/04 (treatment of pain and
inflammation; once-daily naproxen formulation, Naprelan); Novartis
v. Eon Labs, 4/2/04 (cyclosporin formulation, immunosuppressant);
Arnold Partnership, 3/24/04 (hydrocodone bitartrate/ibuprofen tablet
for pain relief, Vicoprofen); Bristol-Myers Squibb v. Pharmachemie,
3/17/04 (cancer drug containing platinum coordination compounds);
Q-Pharma v. Jergens, 3/8/04 (therapeutic treatment of damaged skin
using coenzymeQ10; Curel); Pfizer v. Dr. Reddys Labs., 2/27/04
(hypertension; amlodipine besylate, Norvasc); U. Rochester v. G.D.
Searle, 2/13/04 (non-steroidal anti-inflammatory drugs (NSAIDS),
COX-2 inhibitors, Celebrex); Glaxo Wellcome v. Impax Labs.,
1/29/04 (antidepressants, smoke cessation; sustained release tablets
containing buproprion hydrochloride, WellbutrinSR, Zyban);
Smithkline Beecham v. Excel, 1/29/04 (antidepressants, smoke
cessation; sustained release tablets containing buproprion
hydrochloride, WellbutrinSR, Zyban); Ranbaxy v. Apotex,
11/26/03 (antibiotic; cefuroxime axetil); Geneva v. GlaxoSmithkline,
11/21/03 (antibiotic; potassium clavulanate, Augmentin); Merck v.
Teva, 10/30/03 (osteoporosis; alendronate salt, Fosamax); Apotex v.
Thompson, 10/27/03 (antidepressant; paroxetine hydrochloride,
Paxil; see Hatch-Waxman issues below); Chen v. Bouchard,
10/22/03 (interference; fluorotaxols for cancer); Glaxo Wellcome v.
Andrx, 9/22/03 (antidepressants, smoke cessation; sustained release
tablets containing buproprion hydrochloride, WellbutrinSR,
Zyban); U. Colorado Foundation v. American Cyanamid, 9/3/03
(prenatal multivitamin/mineral supplement; Materna); Bayer v.
Housey, 8/22/03 (method for screening for protein inhibitors and
activators); Forest Labs v. Abbott Labs, 8/7/03 (lung surfactant
composition for treating respiratory distress syndrome in premature
babies; Survanta and Infasurf); Schering v. Geneva, 8/1/03
(antihistamine loratadine, Claritin); Torpharm v. Ranbaxy, 7/23/03
(antihistamine for treating stomach ulcers; process for making
ranitidine); Abbott Labs v. Syntron Bioresearch, 7/10/03 (chemical
analysis using ligand-antiligand binding pair); Abbott Labs v. Baxter,
577
7/3/03 (Lewis acid inhibitors for preventing degradation of
sevoflurane anesthetic); Bd. Education of FSU v. American
Bioscience, 6/23/03 (chemotherapy; taxotere))
[SEE CLAIM CONSTRUCTION, INFRINGEMENT - DOCTRINE OF

EQUIVALENTS, ANTICIPATION, OBVIOUSNESS,
BIOTECH/PHARMA - PATENT TERM EXTENSION, DOUBLE
PATENTING, ENABLEMENT AND WRITTEN DESCRIPTION
SECTIONS]
C. Hatch-Waxman Issues
(Astrazeneca v. Aurobindo, 12/14/12 (affirming the district courts

holding that a U.S. agent and subsidiary (Apotex U.S.) of a foreign
generic company (Apotex Canada) was properly named as a
defendant in the action and was bound by the district courts
infringement judgment under Section 271(e)(2), despite the ANDA
allegedly being submitted to the FDA by Apotex Canada, where
Apotex U.S. signed and filed the ANDA and would benefit by selling
and distributing the drug in the U.S.; also ruling that the interests of
Apotex Canada, which was not a party to the suit, were represented by
Apotex U.S.; see also J. Plager, concurring highlighting that Apotex
U.S. expected to financially benefit from the approval of the ANDA
by distributing and selling the drug in the U.S.); Astrazeneca v.
Apotex, 2/9/12 (affirming dismissal of claim for infringement under
Section 271(e)(2) of method of use patents where the defendants
ANDAs sought approval only for unpatented uses, based on Section
viii statement following the Warner-Lambert rule that a patented
method of using a drug can only be infringed under Section 271(e)(2)
by filing an ANDA that seeks approval to market the drug for that
use); Sanofi-Aventis v. Apotex, 10/18/11 (defendants were jointly and
severally liable for damages under terms of settlement agreement,
despite the requirements for awarding damages under Section
271(e)(4)(C)); Allergan v. Exela Pharmsci, 5/19/11 (ANDA holder
did not infringe the claimed pH limitation, based on the rule that the
ANDAs description of the drug controls the infringement inquiry
since the ANDA holder is bound by the representations in its ANDA,
578
citing Abbott Labs and Bayer AG); Novo Nordisk v. Caraco, 4/14/10
(interpreting the term patent information in 21 USC
355(j)(5)(C)(ii)(I) (which enables a generic challenger in a Paragraph
IV suit to assert a counterclaim challenging the accuracy of the
patent information submitted to the FDA by the NDA holder) as
limited to the patent number and expiration date of a listed patent, and
thus excluding patent use code information relating to a listed method
of use patent; see also J. Clevenger, concurring - remedying the
situation in the case lies with the FDA and Congress: Laying blame
on Novo is wrong; see also J. Dyk, dissenting arguing that patent
information includes information that describes the scope of the
patent and that relates the patent to the drug or method of use, and
thus includes the use code narrative for a listed method of use patent:
In my view, all Orange Book information is patent information . . .
. the majoritys crabbed view of the statute sanctions an unjustified
manipulation of the Orange Book. [en banc review was denied on
7/29/10; Judges Gajarsa and Dyk dissented from denial of the
petition, opining that the majoritys construction of the
counterclaim provision renders Section viii carve-out statements
a virtual nullity and leaves generic drug manufacturers without
a remedy to challenge inaccurate Orange Book listings with
respect to method of use patents] [reversed and remanded by the
U.S. Supreme Court on 4/17/12 in Caraco v. Novo Nordisk;
vacated and the appeal reinstated by the CAFC on 5/23/12]); Eli
Lilly v. Teva, 2/24/09 (no abuse of discretion by the district court in
extending the statutory thirty-month stay where the generic company
changed its formulation only eight months before trial; see also J.
Prost, dissenting); Takeda v. Mylan Labs, 12/8/08 (attorney fees
awarded under Section 271(e)(4) for Section 285 exceptional case
based on a baseless Paragraph IV certification letter and litigation
misconduct); In re Ciprofloxacin, 10/15/08 (reverse payments
settlements are legal under the antitrust laws as long as any anti-
competitive effects are within the exclusionary zone of the patent);
Janssen Pharmaceutica v. Apotex, 9/4/08 (Caraco distinguished, and
no DJ jurisdiction for challenging unasserted Orange Book patents by
a subsequent ANDA filer who stipulated to the validity of the asserted
compound patent); Caraco v. Forest Labs, 4/1/08 (DJ jurisdiction for a
subsequent ANDA filer seeking to cause a court-judgment trigger of
579
the first ANDA filers 180-day exclusivity period, despite the patent
holders grant of a covenant not to sue on unasserted Orange Book
patent); Ortho-McNeil v. Mylan, 3/31/08 (district court correctly reset
the effective date of approval of generic companys ANDA under
271(e)(4)(A)); Abbott Labs v. Torpharm, 10/11/07 (district court has
jurisidiction to conduct contempt proceeding to enforce injunction in
Hatch-Waxman case); Teva v. Novartis, 3/30/07 (DJ action, when
patentee doesnt sue within 45 days); Merck v. Hi-Tech Pharmacal,
3/29/07 (Orange Book, certification process); Sanofi-Synthelabo v.
Apotex, 12/8/06 (at-risk launch by generic, triggering 180-day
exclusivity period; PI granted); Impax Labs v. Aventis, 11/20/06;
Abbott Labs v. Andrx, 6/22/06; Pfizer v. Teva, 11/22/05; Teva v.
Pfizer, 1/21/05 (DJ jurisdiction); Glaxo v. Apotex, 7/27/04; Apotex v.
Thompson, 10/27/03)
Generally
- Goal of the Hatch-Waxman Act is to strike a balance

between two competing policy interests: 1) inducing
pioneering R&D of new drugs, and 2) enabling
competitors to bring low-cost, generic copies of those
drugs to market Andrx Pharms. (Dey Pharma v.
Sunovion, 4/16/12 (discussing Hatch-Waxman Act,
including 180-day exclusivity provisions before and after
2003 amendments); Eli Lilly v. Teva, 2/24/09 (contains
good summary of ANDA challenge process); In re
Ciprofloxacin, 10/15/08 (recognizing that although the
Hatch-Waxman Act creates certain burdens for generic
manufacturers, it also provides significant benefits
including allowing the generic to piggyback on the safety
and efficacy studies conducted by the patent holder, and
allowing the generic to challenge patent validity simply
by filing a Paragraph IV ANDA; as explained in
Schering-Plough (11th Cir.), the Hatch-Waxman Act
redistributes the relative risks between the patent holder
and generic, allowing the generic to challenge the
validity of the patent without incurring the costs of
580
market entry or the risks of infringement damages);
Janssen Pharmaceutica v. Apotex, 9/4/08 (contains an
excellent overview of the Hatch-Waxman Act; pre-MMA
(2003)); Caraco v. Forest Labs, 4/1/08 (contains an
excellent overview of the Hatch-Waxman Act; pre-MMA
(2003); DJ action by subsequent ANDA filer was
consistent with the basic goal of the Hatch-Waxman Act,
which includes encouraging the early resolution of patent
disputes when subsequent Paragraph IV ANDA filers are
blocked by the first ANDA filers 180-day exclusivity
period))
Orange Book patent listings and patent use codes
- Hatch-Waxman Act does not require the FDA to review

patents of NDA applicants substantively before listing
them in the Orange Book, in order to determine whether
the patents actually claim the subject drugs or applicable
methods of using those drugs; FDAs regulation codifies
that the FDAs duties with respect to Orange Book
listings are purely ministerial; the district court ultimately
determines, during litigation, whether the NDA holders
listing was proper, e.g., the court has the authority to
modify the statutory 30-month stay (Bayer Schering v.
Lupin, 4/16/12; Astrazeneca v. Apotex, 11/1/10 (the
FDA is not the arbiter of patent infringement issues);
Novo Nordisk v. Caraco, 4/14/10 (interpreting the
counterclaim provision to not include the right to request
correction of a patent use code relating to a listed method
of use patent) [on 6/27/11, the U.S. Supreme Court
granted certiorari to decide whether the counterclaim
provision of the Hatch-Waxman Act also allows for
correction of patent information misstating the scope
of a method of use patent; on 4/17/12, the Supreme
Court in Caraco v. Novo Nordisk reversed and
remanded the case to the CAFC for further
proceedings; on 5/23/12, the CAFC vacated the prior
581
panel decision of 4/14/10 and reinstated the appeal; on
7/30/12, the CAFC, on motion to affirm injunction of
the district court, modified the district courts
previous mandatory injunction, requiring Novo to
reinstate its prior narrow use code, and ordered Novo
by the CAFCs own mandatory injunction instead to
correct its use code in light of the CAFCs guidance
which was based on the Supreme Courts opinion; see
also J. Dyk, dissenting would have affirmed the
district courts previous injunction ordering Novo to
reinstate its prior use code, to avoid any possible
abuse by Novo in correcting the use code on its own
No statute or regulation says that a use code cannot
be corrected by a court under the counterclaim
provision and referring to the district courts broad
discretionary power over the scope of the order
requiring Novo to correct its use code by analogizing
to a district courts correction of inventorship under
Section 256]; Apotex v. Thompson, 10/27/03) [Under
the 2003 amendments to the Hatch-Waxman Act, a
defendant generic company can bring a counterclaim
seeking an order requiring the NDA holder to correct
or delete patent information from the Orange Book
on the ground that the patent does not claim either: 1)
the drug for which the application was approved, or
2) an approved method of using the drug 21 USC
355(j)(5)(C)(ii)(I)]
- Correction of patent use codes for listed method of

use patent(s) (Novo Nordisk v. Caraco, 7/30/12
(Order) (ordering Novo Nordisk by mandatory
injunction to correct its use code, in view of the
CAFCs guidance which was based on the
Supreme Courts reversal and opinion); Caraco v.
Novo Nordisk, 4/17/12 (S.C.) (reversing the CAFC
and interpreting the counterclaim provision so that
a generic company may bring a counterclaim to
have the FDA correct patent information in the
582
Orange Book, including uses codes inaccurately or
overbroadly describing method of use patents; see
also J. Sotomayor, concurring the counterclaim
provision permits the generic company to do what
the statutory scheme contemplates file an ANDA
with a section viii statement but only after
expensive and time-consuming litigation; also
opining that greater clarity from FDA is needed
concerning what is required in use codes); Novo
Nordisk v. Caraco, 4/14/10 (not correctable via
counterclaim provision) [reversed and remanded
by the U.S. Supreme Court on 4/17/12 in Caraco
v. Novo Nordisk; vacated and the appeal
reinstated by the CAFC on 5/23/12])
- Section viii statement by the ANDA filer for

approval only of unpatented uses of the approved
drug (with a proposed carve-out label)) (Caraco v.
Novo Nordisk, 4/17/12 (S.C.) (discussing that the
generics section viii statement and proposed
carve-out label cannot overlap with the brands
patent use code); Bayer Schering v. Lupin,
4/16/12; Astrazeneca v. Apotex, 2/9/12 (viable
claim for infringement under Section 271(e)(2) of
method of use patent requires the ANDA to seek
approval for the patented use citing Warner-
Lambert); Abraxis Bioscience v. Navinta, 11/9/10;
Novo Nordisk v. Caraco, 4/14/10 (addressing the
relationship between a Section viii statement and a
patent use code for a listed method of use patent)
[reversed and remanded by the U.S. Supreme
Court on 4/17/12 in Caraco v. Novo Nordisk;
vacated and the appeal reinstated by the CAFC
on 5/23/12])
- Patented method of use must be an FDA-approved

use for infringement under Section 271(e)(2)
Warner-Lambert, Allergan; approved uses are only
583
those shown to be safe and effective on the NDA
label (Bayer Schering v. Lupin, 4/16/12 (affirming
dismissal after resolving dispute whether patented
use was on-label (FDA-approved) or off-label in
favor of generic defendants; ANDA label also did
not induce infringement of the claimed method of
use where the label could not instruct the claimed
method of use absent the labels recognition of the
methods safety and efficacy; see also J. Newman,
dissenting the courts judgment was improper
under Twombly (S.C.) and Iqbal (S.C.) because the
appeal was from a dismissal and judgment on the
pleadings there was factual evidence, including
expert declarations that the claimed uses were on-
label (despite being in the Clinical Pharmacology
section, rather than the Indications and Usage
section, of the label), and taking the factual
allegations as true, Bayer was entitled to an
infringement trial to resolve questions of fact))
- FDAs regulation is proper requiring that patents

submitted as part of an NDA supplement be listed in the
Orange Book (Apotex v. Thompson, 10/27/03)
Paragraph IV certification
- Filing of a paragraph IV certification is itself an act of

infringement if the purpose of the ANDA submission is
to obtain the FDAs approval to engage in the
commercial manufacture, use, or sale of a patented drug
before expiration of the drug patent 35 USC
271(e)(2)(A), Bayer, Glaxo (Sunovion v. Teva, 9/26/13
(rejecting the generics noninfringement argument based
on a guarantee to the district court that the generic
manufactured drug would be outside the claimed range of
less than 0.25% levorotatory isomer despite seeking
FDA approval for a product that was within the claimed
584
range, stating rule that: What a generic applicant asks
for and receives approval to market, if within the scope
of a valid claim, is an infringement. -- while rejecting
any so-called certification pledging not to infringe
citing Abbott Labs and distinguishing Bayer and Glaxo);
Astrazeneca v. Aurobindo, 12/14/12; Pozen v. Par,
9/28/12; Bayer Schering v. Lupin, 4/16/12; Astrazeneca
v. Apotex, 2/9/12 (claim for infringement under Section
271(e)(2) based on ANDA filings with a Section viii
statement carving out patented uses was not viable and
properly dismissed); Abraxis Bioscience v. Navinta,
11/9/10; Janssen v. Teva, 9/25/09 (n.4); Astrazeneca v.
Teva, 9/25/09 (Paragraph IV certifications are, by
statute, an act of technical patent infringement designed
to permit litigation of patent issues for products subject to
regulatory approval); Caraco v. Forest Labs, 4/1/08;
Abbott Labs v. Torpharm, 10/11/07)
- Artificial infringement is still infringement

while the Supreme Court has characterized
infringement as defined in the Hatch-Waxman Act
as highly artificial (Eli Lilly (S.C.)), by statutory
command it is infringement nonetheless; nothing
in the Act suggests that suits brought under the Act
are to be treated any differently than infringement
suits under 271(a) (Pozen v. Par, 9/28/12;
Sanofi-Aventis v. Apotex, 10/18/11; Allergan v.
Exela Pharmsci, 5/19/11 (ANDAs description of
the drug controls the infringement inquiry since
the ANDA holder is bound by the representations
in its ANDA); Abbott Labs v. Torpharm,
10/11/07)
- ANDA applicant must make additional (paragraph IV)

certifications with respect to patent information listed in
the Orange Book after the ANDA is filed (Apotex v.
Thompson, 10/27/03)
585
Thirty-month stay
- Upon expiration of the 30-month stay, an ANDA is

automatically approved unless the district court, before
expiration, grants a PI or finds infringement (Ortho-
McNeil v. Mylan, 3/31/08 (legislative history of
271(e)(4)(A) supported the district courts resetting the
effective approval date of generic companys ANDA,
despite infringement being found after expiration of the
30-month stay; provisions of 21 USC 355 do not limit
the district courts authority under section 271)); See also
Sanofi-Aventis v. Sandoz, 9/10/09 (nonprecedential
vacating the district courts SJ of noninfringement which
was based on an erroneous claim construction, after
generic defendants had launched oxaliplatin products at
risk once the FDA granted final approval of ANDAs
despite the CAFCs stay of the district courts judgment)
- Extending or shortening the statutory stay where

either party to the action failed to reasonably cooperate
in expediting the action 21 USC 355(j)(5)(B)(iii) (Eli
Lilly v. Teva, 2/24/09 (no abuse of discretion in
extending the stay based on the district courts discovery
findings, including that the generic company changed its
formulation only eight months before trial; see also J.
Prost, dissenting the statutory standard for extending
the stay was not applied, stating that appropriate findings
by the district court are especially important where, as
here, Congress set forth a clear statutory timeframe and
provided one narrow exception to the general rule and
that to affirm is to effectively eliminate the statutorily
required finding))
- [T]here is no requirement that a patent owner take

advantage of the statutory carrot of a thirty-month stay,
and certainly no statutory stick for choosing not to.
(Pfizer v. Teva, 11/22/05)
586
180-day generic marketing exclusivity period
- First Paragraph IV ANDA filer is entitled to the 180-day

exclusivity period whether or not it establishes that the
NDA holders Orange Book-listed patents are invalid or
not infringed by the drug described in its ANDA; all that
is required is that the first filer submit a substantially
complete ANDA that contains a Paragraph IV
certification 21 USC 355(j)(5)(B)(iv)(II)(bb) (Janssen
Pharmaceutica v. Apotex, 9/4/08; Caraco v. Forest Labs,
4/1/08 (addressing the two methods for triggering the
first Paragraph IV ANDA filers 180-day exclusivity
period (applying the pre-MMA (2003) rules): 1) the
commercial marketing trigger, and 2) the court judgment
trigger, and how only the court judgment trigger can be
used by a subsequent Paragraph IV ANDA filer to start
the first filers exclusivity period, only after which the
subsequent filers ANDA can be approved also the
reason for the district courts jurisdiction over the
subsequent ANDA filers DJ action, despite the NDA
holders unilateral covenant not to sue))
- Court judgment trigger by subsequent Paragraph

IV ANDA filer a subsequent filer can trigger the
first ANDA filers exclusivity period only by
obtaining a final court judgment with respect to all
of the Orange Book patents for which the first filer
made an earlier Paragraph IV certification;
otherwise the subsequent filer is forced to wait
until 181 days after the first filer begins marketing
its generic drug (Janssen Pharmaceutica v. Apotex,
9/4/08 (pre-MMA (2003) case, relating to a
subsequent ANDA filers unsuccessful attempt to
trigger the first filers exclusivity period before the
compound patent expired and thus before FDA
approval of the first filers ANDA by stipulating to
the validity of the compound patent); Caraco v.
Forest Labs, 4/1/08 (applying pre-MMA (2003)
587
rules, the reason that the district court had
jurisdiction over a subsequent Paragraph IV
ANDA filers DJ action, despite a unilateral
covenant not to sue by the NDA holder)); See also
Merck v. Apotex, 8/21/08 (nonprecedential
affirming the dismissal of generic companys
attempt (under MMA) to trigger forfeiture of 180-
day exclusivity period of the first Paragraph IV
filer via a court judgment on the generics DJ
counterclaims of noninfringement and invalidity,
for not presenting a justiciable case or controversy
where the CAFCs action, if taken, would be too
late to provide the relief requested (and thus, the
dispute did not admit of specific relief through a
decree of a conclusive character as opposed to an
advisory opinion, under Medimmune (S.C.)));
Merck v. Apotex, 7/16/08 (nonprecedential
Apotexs noninfringement and invalidity
counterclaims rendered moot in part after the
CAFCs pronouncement that although a judgment
for Apotex could have triggered Tevas 180-day
exclusivity period, nothing in the statute provides
that such a judgment can eliminate Tevas
exclusivity period)
Stipulations by subsequent ANDA filers
- Stipulation to be bound by the district courts final

judgment order, and the record of, related ongoing
litigation with the first ANDA filer precludes arguments
on appeal unsupported by the district court record
(Ortho-McNeil v. Cobalt, 3/31/08 (nonprecedential))
- Stipulation to the validity of the asserted compound

patent by a subsequent ANDA filer as reason for
dismissal of DJ action for lack of jurisdiction for
588
challenge to unasserted Orange Book patents (Janssen
Pharmaceutica v. Apotex, 9/4/08)
- DJ action brought by ANDA filer when not sued within

45 days - Medicare Amendments (2003), codified in part
as 35 USC 271(e)(5) (the courts of the United States
shall, to the extent consistent with the Constitution, have
subject matter jurisdiction in any [DJ action] that such
patent is invalid or not infringed.) and 21 USC
355(j)(5)(C) (civil action to obtain patent certainty)
the federal courts have subject matter jurisdiction over
DJ actions brought by Paragraph IV ANDA filers to the
extent that they present an Article III case or controversy
Teva v. Novartis; consider the totality of the
circumstances [see discussion below]; district court also
has discretion to decline jurisdiction even if there is an
actual controversy [Teva v. Pfizer, 1/21/05, and the
CAFCs reasonable apprehension of suit prong of
the two-part test for determining whether a district
court has DJ jurisidiction in a patent case, were
overruled by the U.S. Supreme Courts decision in
Medimmune v. Genentech, decided 1/09/07 - see Teva
v. Novartis, 3/30/07 (By following Medimmune, we
recognize that we are not relying on our two-part
reasonable-apprehension-of-suit test . . . This court
respects the principle of stare decisis and follows its
own precedential decisions unless decisions are
overruled by the court en banc, or by other
controlling authority such as an intervening . . .
Supreme Court decision . . . Because the Supreme
Court in Medimmune cautioned that our declaratory
judgment reasonable apprehension-of-suit test
contradicts and conflicts with its precedent, these
Federal Circuit tests have been overruled by an
intervening Supreme Court decision (citing Sandisk v.
589
STMicroelectronics, 3/26/07) (internal quotations
omitted) . . . Therefore, we follow Medimmunes
teaching to look at all the circumstances under
Maryland Casualty [S.C.] to determine whether Teva
has a justiciable Article III controversy; see also
APPELLATE/DISTRICT COURT JURISDICTION
Declaratory judgment jurisdiction]; Dey Pharma
v. Sunovion, 4/16/12 (district court had DJ jurisdiction
over suit by second ANDA filer (despite covenant not to
sue) for triggering the first ANDA filers 180-day
exclusivity period once the second filer received a final
judgment of noninfringement or invalidity on the Orange
Book patent in the DJ action and the other listed Orange
Book patents , applying Caraco and Janssen; the
patentee then had the heavy burden of persuading the
court that the case was moot based on its argument that
the first filer would launch its generic product before the
second filer obtained court judgments on all of the
Orange Book patents citing Cardinal Chemical (S.C.)
and other cases); Teva v. Eisai, 10/6/10 (reversing the
district courts dismissal, where there was DJ jurisdiction
over nonasserted Orange Book patents despite claim
disclaimers and covenant not to sue, where the
subsequent ANDA filer was injured by the continued
listing of the patents in the Orange Book and the first
filers exclusivity period; the case was more like Caraco
than Janssen; the district court also abused its discretion
in declining DJ jurisdiction based in part on its ruling that
there was no DJ jurisdiction) [On 6/13/11, the U.S.
Supreme Court granted certiorari, citing United
States v. Munsingwear (S.C.), and vacated the CAFCs
judgment and remanded with instructions to dismiss
the case as moot; the question presented was: When
a case becomes moot by the happenstance of a third
partys independent action after the court of appeals
issues a judgment but while a petition for rehearing is
still pending, should the court of appeals vacate the
judgment upon the request of the aggrieved party?;
590
On 7/21/11, the CAFC issued an order recalling its
mandate, reinstating the appeal, vacating its 10/6/10
judgment, andremanding the appeal to the district
court with instructions to dismiss the complaint as
moot]; Janssen Pharmaceutica v. Apotex, 9/4/08 (no DJ
jurisdiction for challenging unasserted Orange Book
patents, and thereby trigger the first filers 180-day
exclusivity period by a court judgment prior to expiration
of the compound patent and FDA approval, where the
subsequent ANDA filer stipulated to the validity of the
asserted compound patent, distinguishing Caraco
Apotexs inability to promptly launch its generic
risperidone product [immediately upon expiration of the
compound patent] because of Tevas 180-day exclusivity
period is not a cognizable Article III controversy, but a
result envisioned by the Hatch-Waxman Act); Caraco v.
Forest Labs, 4/1/08 (district court had jurisdiction over a
subsequent Paragraph IV ANDA filers DJ action under
all of the circumstances test of Medimmune (S.C.),
despite the NDA holders unilateral covenant not to sue
the ANDA filer for infringement, because in the context
of the Hatch-Waxman framework, the covenant not to
sue did not eliminate the Article III controversy between
the parties, as the NDA holder still was able to keep the
ANDA filer off the market until patent expiration; see
also J. Friedman, dissenting); Teva v. Novartis, 3/30/07
(DJ action brought when generic not sued within 45 days;
35 USC 271(e)(5) and 21 USC 355(j)(5)(C) (civil
action to obtain patent certainty)); Teva v. Pfizer,
1/21/05 [Tevas petition for rehearing en banc was
denied, on 4/4/05, J. Gajarsa and J. Dyk dissented,
arguing that to the extent consistent with the
Constitution in 271(e)(5) should be applied broadly
and that Article III requires only a concrete injury
caused by the DJ defendant, and the reasonable
apprehension of suit requirement is inappropriate;
Supreme Court review was also denied; Overruled by
the U.S. Supreme Courts decision in Medimmune v.
591
Genentech, decided 1/09/07 - see Teva v. Novartis,
3/30/07, discussed above]; See also Merck v. Apotex,
7/16/08 (nonprecedential Apotexs noninfringement
and invalidity counterclaims rendered moot by events
during the pendency of the appeal; also citing Caraco
rule that a justiciable Article III controversy may
continue to exist in a Hatch-Waxman case even after the
patentee drug company grants a covenant not to sue);
Apotex v. Pfizer, 4/11/05 (nonprecedential - Apotexs
appeal was mooted by Pfizers covenant not to sue
Apotex for infringement (executed by Pfizer only days
before oral argument) a covenant not to sue moots an
action for declaratory judgment; CAFC thus vacated and
remanded with instructions to dismiss [Apotex
petitioned the U.S. Supreme Court for certiorari,
asking the Court whether DJ jurisdiction can exist
based on an NDA holders listing patents in the
Orange Book and, more specifically, the prospect of
massive patent liability that deters generic
manufacturers from entering the marketplace; On
5/15/06, the Supreme Court asked the Solicitor
General for the federal governments views on
whether listing a patent in the Orange Book creates a
justiciable controversy, and therefore a basis for DJ
jurisdiction; but before the SG filed its brief, the
Court on 10/9/06, denied review; Pfizer also had filed
a motion, just prior to the Courts denial of review,
arguing that the case was moot because Teva (which
bought Impax) had begun selling a generic version of
Zoloft, thereby triggering the 180 day exclusivity
period, which, according to Pfizer, was a reason for
Apotexs filing the DJ action.]); See also
APPELLATE/DISTRICT COURT JURISDICTION
- Actual controversy established by generic based

on combination of: 1) 21 USC 355(j)(5)(C)
(civil action to obtain patent certainty); 2) 35
592
USC 271(e)(5) (wherein Congress specifically
granted federal courts subject matter jurisdiction
to the extent consistent with the Constitution);
and 3) the purpose of the Hatch-Waxman Act (Dey
Pharma v. Sunovion, 4/16/12; Janssen
Pharmaceutica v. Apotex, 9/4/08; Caraco v. Forest
Labs, 4/1/08; Teva v. Novartis, 3/30/07)
- Federal courts have subject matter

jurisdiction over DJ actions brought by
Paragraph IV ANDA filers to the extent that
they present an Article III case or
controversy Teva v. Novartis (Dey Pharma
v. Sunovion, 4/16/12; Teva v. Eisai, 10/6/10
granted certiorari, citing United States v.
Munsingwear (S.C.), and vacated the
CAFCs judgment and remanded with
instructions to dismiss the case as moot];
Janssen Pharmaceutica v. Apotex, 9/4/08
(no DJ jurisdiction where the subsequent
ANDA filer stipulated to the validity of the
asserted compound patent); Caraco v. Forest
Labs, 4/1/08 (the court has jurisdiction over
a subsequent Paragraph IV ANDA filers DJ
action relating to Orange Book patent not
sued on, since the ANDA filer could not sell
its generic drug until approved, and the drug
could not be approved without the ANDA
filer triggering the first ANDA filers 180-
day exclusivity period))
- Possible delay in the future of a first

Paragraph IV ANDA filer in
launching it generic product does not
give rise to DJ jurisdiction - Caraco
(Dey Pharma v. Sunovion, 4/16/12
(distinguishing rule from governing
593
mootness doctrine); Janssen
Pharmaceutica v. Apotex, 9/4/08
(holding that the subsequent ANDA
filers alleged harm of indefinite delay
was too speculative to create an
actual controversy for issuance of a
DJ, where the first filer was unable to
launch its generic product until
expiration of the compound patent
and FDA approval; the dispute must
be definite and concrete and real
and substantial Medimmune (S.C.),
and the dispute must be based on a
real and immediate injury- Prasco))
- Claim preclusion when bring suit on less than all

Orange Book-listed patents? (Teva v. Novartis,
3/30/07)
- Filing of ANDA with a Paragraph IV certification,

which is an act of infringement under 35 USC
271(e)(2), creates a justiciable DJ controversy both
for the patentee and the ANDA filer (Caraco v.
Forest Labs, 4/1/08; Teva v. Novartis, 3/30/07)
- Listing patent(s) in the Orange Book does not put

the DJ plaintiff in reasonable apprehension of suit
(Teva v. Pfizer, 1/21/05 [overruled by
Medimmune v. Genentech (S.C.) see Teva v.
Novartis, 3/30/07 listing of patents in the
Orange Book does provide a court with
jurisdiction over Paragraph IVANDA filers DJ
action relating to listed patents not sued on
discussed in Caraco v. Forest Labs, 4/1/08]; see
also Apotex v. Pfizer, 4/11/05 (nonprecedential),
above)
594
- Listing of patents in the Orange Book is a
circumstance to be considered in
determining whether a justiciable
controversy exists under the totality of the
circumstances (Teva v. Eisai, 10/6/10 [On
6/13/11, the U.S. Supreme Court granted
certiorari, citing United States v.
Munsingwear (S.C.), and vacated the
CAFCs judgment and remanded with
instructions to dismiss the case as moot];
Caraco v. Forest Labs, 4/1/08 (listing of two
patents in the Orange Book effectively
denied a subsequent Paragraph IV ANDA
filer an economic opportunity to enter the
marketplace and compete, unless the ANDA
filer obtained a judgment that both patents
were invalid or not infringed by the generic
drug in the ANDA - satisfied the causation
requirement of Article III standing); Teva v.
Novartis, 3/30/07)
- DJ action challenging non-Orange Book listed

patent (Impax Labs v. Aventis, 11/20/06)
- Standing, ripeness, and mootness requirements for

determining whether an action presents a
justiciable Article III controversy (Dey Pharma v.
Sunovion, 4/16/12 (applying mootness doctrine to
question of whether a controversy existed at a later
stage of DJ action by a second ANDA filer); Teva
v. Eisai, 10/6/10 [On 6/13/11, the U.S. Supreme
Court granted certiorari, citing United States v.
Munsingwear (S.C.), and vacated the CAFCs
judgment and remanded with instructions to
dismiss the case as moot]; Caraco v. Forest Labs,
4/1/08 (contains an excellent analysis of the
standing (and the elements of standing, i.e., injury
in fact, causation, and redressability), ripeness, and
595
mootness requirements, and how these
requirements were satisfied in a DJ action for
noninfringement brought by a subsequent
Paragraph IV ANDA filer, despite the NDA
holders unilateral covenant not to sue))
Reverse payment settlements
[the U.S. Supreme Court granted review in FTC v. Watson

Pharmaceuticals (11th Cir.) to decide whether reverse
payment settlement agreements are lawful unless the
underlying patent litigation was a sham or the patent was
obtained by fraud, as the Eleventh Circuit held, or whether
they are presumptively anticompetitve and unlawful, as the
Third Circuit held; On 6/17/13, the Supreme Court held in
a 5-3 decision in FTC v. Actavis, Inc. that ANDA reverse
payment settlement agreements, while not presumptively
illegal, may violate antitrust laws and are subject to a rule
of reason analysis (to be determined by the district court)
to determine whether they constitute an antitrust violation;
the Court overruled the 11th Circuits decision that the
agreements are presumptively lawful unless the underlying
patent litigation was a sham or the patent was obtained by
fraud; the dissenting judges agreed with the 11th Circuits
(and CAFCs) approach that because a patent carves out an
exception to the applicability of antitrust laws, settlements
within the scope of the patent should be immune from
attack under antitrust law]
- Essence of the antitrust inquiry is whether the agreements

restrict competition beyond the exclusionary zone of the
patent (In re Ciprofloxacin, 10/15/08 (ruling that the
outcome is the same whether analyzed under antitrust
law (by applying a rule of reason approach to evaluate
the anti-competitive effects) or patent law (by analyzing
the patents right to exclude)))
596
- Exclusionary zone of the patent no antitrust
violation - reverse (or exclusion) payment
settlement agreements are not an unreasonable
restraint of trade under Section 1 of the Sherman
Act when any anti-competitive effects caused by
the agreements are within the exclusionary zone of
the patent (In re Ciprofloxacin, 10/15/08 (agreeing
with the district courts rule of reason analysis
under 2nd Circuit law, as well as considering the
legal standards applied by the 6th and 11th Circuits
and government agencies (e.g., FTC, Solicitor
General) in addressing agreements involving
reverse or exclusion payments in the context of the
Hatch-Waxman Act))); See also
ANTITRUST/PATENT
MISUSE
- Validity of the patent need not be considered in

the absence of evidence of fraud before the PTO or
sham litigation, the court need not consider the
validity of the patent in the antitrust analysis of a
reverse payment settlement agreement (In re
Ciprofloxacin, 10/15/08 (agreeing with the district
court and the 2nd and 11th Circuits))
- Hatch-Waxman was not intended to thwart settlements

(In re Ciprofloxacin, 10/15/08 (district court also
correctly concluded that there is no legal basis for
restricting the right of a patentee to choose its preferred
means of enforcement))
- 2003 amendments to the Hatch-Waxman Act if a

reverse payment settlement agreement is found (by the
FTC or DOJ, after filing for review) to violate the
antitrust laws, the first ANDA filer loses its right to the
180-day exclusivity period (In re Ciprofloxacin, 10/15/08
(n.3))
597
Injunctions
Preliminary injunction
- Irreparable harm
- Generic competition alone does not establish

irreparable harm because if potential lost sales
showed irreparable harm, a finding of irreparable
harm would be required in all cases Abbott Labs
(Altana Pharma v. Teva, 5/14/09 (no abuse of
discretion in denying PI where the district court
found no irreparable harm from entry of generics
to the market, including finding that the patentee
likely had a business plan in place to deal with the
launch of generic competition); Abbott Labs v.
Andrx, 6/22/06)
- Irreversible price erosion because of a

complex pricing scheme directly affected by
the presence of a generic product in the
market (Astrazeneca v. Apotex, 11/1/10
(calculating economic loss under prior
settlement agreement caused by premature
launch of generic drug product was
impossible); Sanofi-Synthelabo v. Apotex,
12/8/06)
- Harm to reputation and goodwill from premature

launch of generic drug product (Astrazeneca v.
Apotex, 11/1/10)
- Effect of the patentees launch of an authorized

generic on irreparable harm (Altana Pharma v.
Teva, 5/14/09 (n.5: the patentee launched an
authorized generic after the district courts denial
of its motion for PI))
598
- Public interest
- Significant public interest in encouraging

investment in drug development and protecting the
exclusionary rights conveyed in valid
pharmaceutical patents; the patent system provides
an incentive to the innovative drug companies to
continue costly development efforts; the average
cost of developing a blockbuster drug is $800
million (Sanofi-Synthelabo v. Apotex, 12/8/06)
Permanent injunction
- Contempt proceedings to enforce injunction
- District court has subject matter jurisdiction to

enforce an injunction via a contempt proceeding in
a Hatch-Waxman case; Hatch-Waxman Act is
silent regarding a district courts authority to
conduct a contempt proceeding, and thus it is
assumed that Congress must have intended for
courts to maintain their inherent authority to
enforce injunctions under the well-established
principles of equity (Abbott Labs, 10/11/07)
- Well-settled principles of equity govern

injunctions in patent disputes just as in
disputes in other areas of law eBay (S.C.);
thus, the power of a district court to enforce
its injunction through contempt proceedings
is no different (Abbott Labs, 10/11/07)
- Effective date of an ANDA under 271(e)(4)(A)

section 271(e)(4)(A) provides a remedy for infringement
after patent expiration where the patentees period of
market exclusivity is extended (In re Omeprazole,
8/20/08 (district court had the authority and jurisdiction
599
after patent expiration to order a change in the effective
date of an ANDA until expiration of the patentees
pediatric exclusivity period)
- Injunctive relief under 271(e)(4)(B) extends only to the

approved drug, and not to the remainder of the
products covered by a patent (Forest Labs, 9/5/07
(district courts injunction was overly broad))
- Supplier also enjoined - injunction also extends to

supplier of drug product, since 271(e)(2) supports an
action for induced infringement; supplier, manufacturer
of generic drug, once approved by FDA,would contribute
to the infringement by the ANDA holder Allergan
(Forest Labs, 9/5/07, see also dissent, J. Schall
injunction should not apply to the supplier, who is not the
ANDA holder, infringer under 271(e)(2) and is exempt
from infringement under 271(e)(1), pursuant to Merck
v. Integra (S.C.) (FDA R&D exemption))
- Mandatory injunction to order the NDA holder to correct

patent information in the Orange Book (Novo Nordisk
v. Caraco, 7/30/12 (Order) (ordering by mandatory
injunction correction of use code by Novo in view of the
CAFCs guidance which was based on the Supreme
Courts reversal and opinion); Novo Nordisk v. Caraco,
4/14/10 (reversing and vacating an injunction ordering
the NDA holder to correct the patent use code narrative
for a listed method of use patent, after ruling that the
generic challenger did not have a statutory basis for
asserting a counterclaim requesting injunctive relief; see
also J. Dyk, dissenting) [reversed and remanded by the
U.S. Supreme Court on 4/17/12 in Caraco v. Novo
Nordisk; vacated and the appeal reinstated by the
CAFC on 5/23/12])
600
Damages
- Damages under Section 271(e)(4)(C) (Sanofi-Aventis,

10/18/11 (proper interpretation of settlement agreement
determined that 1) the patentees actual damages meant
the full amount of damages which included prejudgment
interest, and 2) the defendants were jointly and severally
liable for the damages, despite Section 271(e)(4)(C)); see
also J. Newman, dissenting))
Willful infringement
- Mere filing of an ANDA or certification cannot

constitute an act of willful infringement compensable by
attorney fees under the Hatch-Waxman Act; 271(e)(2)
is designated to create an artificial act of infringement for
purposes of establishing jurisdiction in the federal courts,
and gives rise only to the remedies in 271(e)(4), which
includes attorney fees under 285; the types of conduct
that constitute an exceptional case under 285 for
awarding attorney fees under 271(e)(4) were limited in
Yamanouchi (Fed. Cir. 2000) to a baseless and wholly
unjustified paragraph IV certification in an ANDA
combined with litigation misconduct (Aventis Pharma,
9/11/07 (issue mooted by invalidity holding); Glaxo v.
Apotex, 7/27/04)
Attorney fees and expert witness fees
- Award of attorney fees under Section 285 - when a patent

has been infringed by the filing of an ANDA (with a
Paragraph IV certification), Section 271(e)(4) provides
for the grant of attorney fees under Section 285, which in
turn allows the court to award reasonable attorney fees to
the prevailing party in exceptional cases (Takeda v.
Mylan Labs, 12/8/08 (awarding attorney fees based on
601
baseless Paragraph IV certification letter and litigation
misconduct); See also Hatch-Waxman Issues - Willful
infringement; OBVIOUSNESS Pharma;
DAMAGES Attorney fees 35 USC 285 Two-
step inquiry for determining attorney fees award; and
LITIGATION MISCONDUCT
- Generally the ANDA infringer is required under

Sections 271(e) and 285 to display care and
regard for the strict standards of the Hatch-
Waxman Act when challenging patent validity . . .
The Hatch-Waxman Act thus imposes a duty of
care on an ANDA certifier Yamanouchi
(Takeda v. Mylan Labs, 12/8/08)
- Baseless certification letters (Takeda v. Mylan

Labs, 12/8/08)
- Abandonment of arguments at trial (Takeda

v. Mylan Labs, 12/8/08 (suggesting a
problem only when the arguments are
unsupportable))
- Failure to provide reason for selecting lead

compound (Takeda v. Mylan Labs, 12/8/08)
- Invalidity arguments inconsistent with trial

arguments (Takeda v. Mylan Labs, 12/8/08
(district court noted the stark contrast
between the certification letter and trial
arguments relating to selection of the lead
compound))
- Scientific errors (Takeda v. Mylan Labs,

12/8/08 (in light of scientific errors,
certification letter showed bad faith and no
reasonable basis to claim patent invalid))
602
- Litigation misconduct (Takeda v. Mylan Labs,
12/8/08)
- Adding or changing arguments at trial from

arguments in the certification letter (Takeda
v. Mylan Labs, 12/8/08 (the CAFC never
expressed that adding or changing
arguments was improper, but advised that it
seems reasonable to expect assertions of
invalidity based on prior art to remain
relatively consistent as the prior art should
be known when the certification of
invalidity is made))
- Chilling effect argument rejected

ANDA filers are not limited at trial to
the theories raised in their notice letter
(Takeda v. Mylan Labs, 12/8/08
(attorney fee award based on baseless
ANDA filing and bad faith litigation
will not have a chilling effect on
non-frivolous ANDA filings: Well-
supported filings challenging the
validity and infringement of patents
owned by an NDA holder should not
raise the specter of an unjustified
holding of an exceptional case))
- Evolving arguments from certification

letter through trial (Takeda v. Mylan
Labs, 12/8/08 (noting the dramatic
evolution of obviousness
arguments))
- Frivolous claims, misleading arguments

(Takeda v. Mylan Labs, 12/8/08 (inequitable
conduct claim found to be frivolous))
603
- Award of expert witness fees under the district courts
inherent power (Takeda v. Mylan Labs, 12/8/08 (expert
witness fees also awarded; see also J. Bryson,
concurring)); See also LITIGATION MISCONDUCT
D. Patent Term Extension 35 USC 156
(Genetics Institute, 8/23/11 (patent term extension applies to the

patent as a whole, and not on a claim-by-claim basis); Wyeth, 5/3/10
(patent term extension for animal drug patent under Section 156(g));
Ortho-McNeil, 5/10/10 (patented enantiomer (levofloxacin) was a
different drug product than its prior-approved racemate (ofloxacin),
and thus was entitled to its own term extension under Section 156);
Photocure, 5/10/10 (affirming patent term extension by interpreting
active ingredient in Section 156 to mean the ingredient in the drug
product as administered, and not the active moiety as argued by the
PTO based on Pfizer); Boehringer Ingelheim, 1/25/10 (distinguishing
the limited rights of a patentee during a patent term extension vs. the
original patent term); Somerset, 10/4/07 (interim extension); Merck,
3/29/07; Pfizer, 8/2/06; Cardiac Pacemakers, 8/31/04; Arnold,
3/24/04; Pfizer, 2/27/04; Merck, 10/30/03)
Product in 35 USC 156(a) and (f) includes any salt

form; active ingredient defined
- Product in 35 USC 156(a), as defined in 35

USC 156(f), includes the salt form; contemplated
in statute that active moiety is administered as the
acid salt (Merck, 10/30/03)
- Active ingredient in 35 USC 156(f) means the

active moiety of the drug, including any salt or
ester of the active ingredient; the active
ingredient and thus the terms drug product
and product in 156(f) are not limited to the
FDA approved salt form (Pfizer, 2/27/04)
604
- Active ingredient is the ingredient in the
drug product as administered Glaxo
(Photocure, 5/10/10 (Pfizer did not change
the above ruling in Glaxo, and did not hold
that a term extension is not available when
an existing FDA-approved product (ALA
hydrochloride) is substantively changed in a
way that produces a new and separately
patentable product (MAL hydrochloride)
having improved properties and requiring
full FDA approval))
Combination drug product
- Combination drug product at least one

component (or active ingredient) must not have
been previously marketed; 156(f) defines
product and drug product on a component-by-
component basis, not as a whole, i.e., as being a
single entity or in combination with another active
ingredient (Arnold, 3/24/04)
- Synergistic combination drug patents

qualify for patent term extension? (Arnold,
3/24/04)
Extension for one patent only; first commercial

marketing requirement - 35 USC 156(a)(5)(A)
- First commercial marketing requirement 35

USC 156(a)(5)(A) (Arnold, 3/24/04)
- Drug product different drug products

when separately patentable, and when are
new products each subject to full regulatory
605
review (Ortho-McNeil, 5/10/10; Photocure,
5/10/10)
- One term extension per product and patent,

but need not be first approved product
within patent claims - 156(a)(5)(A) recites
the first permitted commercial marketing or
use of the product . . . . (vs. 156(a)(5)(B)
limited for DNA technology) (Cardiac
Pacemakers, 8/31/04 (medical device))
- Extension does not apply to unrelated uses of an

FDA-approved product - Pfizer (Ortho-McNeil,
5/10/10 (rejecting argument that a patent term
extension applies only to sale and use of the
patented product))
- Extension allowed for one patent only (parent,

continuation, or CIP) (Merck, 3/29/07)
Interim extension 35 USC 156(e)(2)
- Interim extension cannot be obtained if application

for patent term extension on the merits under
156(d)(1) has been denied before expiration of the
patent term (Somerset, 10/4/07)
Invalidity of patent term extension 35 USC 282, 4
- Patent for which term extended must cover FDA

approved product (Pfizer, 8/2/06)
- Duty of candor, inequitable conduct
- In applying for a patent term extension, the

patentee has a duty of candor and good faith
606
towards the PTO and must disclose any
material information adverse to a
determination of entitlement to the extension
sought 37 CFR 1.765(a) (Pfizer,
8/2/06)
- Statements made during prosecution of a

foreign counterpart and unrelated patent are
irrelevant to claim scope, and thus not
material, no inequitable conduct and term
extension not invalid (Pfizer, 8/2/06)
Terminally disclaimed patents
- Patent term extension may be applied to a patent

subject to a terminal disclaimer filed to overcome
an obviousness-type double patenting rejection
(Merck, 3/29/07)
- Provisions relating to patent term extension

and terminal disclaimer fulfill unrelated
purposes (Merck, 3/29/07)
III. CLAIM CONSTRUCTION
A. Phillips v. AWH Corp. (en banc)
When addressing the issue of claim construction, the Federal Circuit

cites in almost every case its July 2005 decision in Phillips v. AWH Corp.,
415 F.3d 1303 (Fed. Cir. 2005) (en banc). In Phillips, the full court
reaffirmed the basic principles of claim construction outlined in Markman v.
Westview Instruments, Inc., 52 F.3d 967, 979-81 (Fed. Cir. 1995) (en banc),
affd, 517 U.S. 370 (1996); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
1576 (Fed. Cir. 1996); and Inova/Pure Water, Inc. v. Safari Water Filtration
Systems, Inc., 381 F.3d 1111 (Fed. Cir. 2004), stating:
607
What we said in those cases bears restating, for the basic
principles of claim construction outlined there are still
applicable, and we reaffirm them today. We have also
previously considered the use of dictionaries in claim
construction. What we have said in that regard requires
clarification.
The Federal Circuit held that claims are to be construed based

on the language of the claims, the written description and the
prosecution history. Extrinsic evidence may also be considered, but
such evidence, the court held, is less reliable than the specification
and prosecution history, and thus it must be considered in the context
of the intrinsic evidence.
Regarding the use of dictionary definitions to construe claim

terms, the court stated that in some cases (e.g., Texas Digital Systems,
Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002)), the Federal
Circuit has given greater emphasis to dictionary definitions of claim
terms and has assigned a less prominent role to the specification and
the prosecution history. While the court in these cases noted that
the specification must be consulted in every case, it suggested a
methodology for claim interpretation in which the specification should
be consulted only after a determination is made, whether based on a
dictionary, treatise, or other source, as to the ordinary meaning or
meanings of the claim term in dispute. This approach, the Phillips
court concluded, improperly restricted the role of the specification in
claim construction. Specifically, assigning such a limited role to the
specification by requiring that any definition of claim language in the
specification be express, the court concluded, is inconsistent with its
rulings that the specification is the single best guide to the meaning
of a disputed term and that the specification acts as a dictionary
when it expressly defines terms used in the claims or when it defines
terms by implication. Vitronics, Irdeto Access, Novartis, Bell Atlantic
Network Servs. Thus rejecting the Texas Digital approach to claim
interpretation, the court held that [t]he risk of systematic overbreadth
is greatly reduced if the court instead focuses at the outset on how the
patentee used the claim term in the claims, specification, and
608
prosecution history, rather than starting with a broad definition and
whittling it down.
The Phillips court also recognized the fine line between

construing claim terms based on the specification and improperly
importing limitations into the claims from the specification, stating,
however, that the line between construing terms and importing
limitations can be discerned with reasonable certainty and
predictability if the courts focus remains on understanding how a
person of ordinary skill in the art would understand the claim terms.
The court explained:
For instance, although the specification often describes very

specific embodiments of the invention, we have repeatedly
warned against confining the claims to those embodiments. In
particular, we have expressly rejected the contention that if a
patent describes only a single embodiment, the claims of the
patent must be construed as being limited to that embodiment.
That is not just because section 112 of the Patent Act requires
that the claims themselves set forth the limits of the patent
grant, but also because persons of ordinary skill in the art rarely
would confine their definitions of terms to the exact
representations depicted in the embodiments. (citations omitted)
The correct claim interpretation, the court concluded, will be

apparent from the manner or context in which terms are used in the
specification and claims, stating that
[t]o avoid importing limitations from the specification into the

claims, it is important to keep in mind that the purposes of the
specification are to teach and enable those of skill in the art to
make and use the invention and to provide a best mode for
doing so. One of the best ways to teach a person of ordinary
skill in the art how to make and use the invention is to provide
an example of how to practice the invention in a particular case.
Much of the time, upon reading the specification in that
context, it will become clear whether the patentee is setting out
specific examples of the invention to accomplish those goals, or
609
whether the patentee instead intends for the claims and the
embodiments in the specification to be strictly coextensive.
The manner in which the patentee uses a term within the
specification and claims usually will make the distinction
apparent. (citations omitted)
Acknowledging that the answer will not be clear in every case

(i.e., that [i]n the end, there will still remain some cases in which it
will be hard to determine whether a person of skill in the art would
understand the embodiments to define the outer limits of the claim
term or merely to be exemplary in nature), the answer, the court
restated, can be found in the context of the particular patent, stating
that
[w]hile that task may present difficulties in some cases, we

nonetheless believe that attempting to resolve that problem in
the context of the particular patent is likely to capture the scope
of the actual invention more accurately than either strictly
limiting the scope of the claims to the embodiments disclosed
in the specification or divorcing the claim language from the
specification.
The Phillips court reaffirmed the following principles of claim

construction:
Claims and Claim Terms
It is a bedrock principle of patent law that the claims define

the invention to which the patentee is entitled the right to
exclude.
Quite apart from the written description and the prosecution

history, the claims themselves provide substantial guidance as
to the meaning of particular claim terms.
Claim terms must be given their ordinary and customary

meaning, which is how a POS in the art understands the claim
610
term at the time of the invention (i.e., the application filing
date) after reading the entire patent. This approach provides an
objective baseline from which to begin claim construction.
In some cases, the ordinary meaning of claim language as

understood by a POS in the art may be readily apparent even to
lay judges, and claim construction in such cases involves little
more than the application of the widely accepted meaning of
commonly understood words. In such circumstances, general
purpose dictionaries may be helpful.
In many cases, determining the ordinary and customary

meaning of the claim requires examination of terms that have a
particular meaning in the field of art. Because the meaning of a
claim term as understood by a POS in the art is often not
immediately apparent, the court looks to the publicly available
sources that show what a POS in the art would have understood
disputed claim language to mean. Those sources include the
words of the claims themselves, the remainder of the
specification, the prosecution history, and extrinsic evidence
concerning relevant scientific principles, the meaning of
technical terms, and the state of the art.
The POS in the art reads a claim term in the context of the
entire patent, including the specification and the prosecution
history (which is less useful than the specification, since the
prosecution history represents an ongoing negotiation
between the applicant and the patent examiner).
The court must also consider the context in which the term is
used in the asserted claim, which can be highly instructive.
Other claims of the patent, both asserted and unasserted, can
also be valuable sources for construing a claim term. Because
claim terms are normally used consistently throughout the
patent, the usage of the term in one claim can often illuminate
the meaning of the same term in other claims. Also, differences
among claims can also be a useful guide in understanding the
meaning of particular claim terms, e.g., a dependent claim that
611
adds a limitation gives rise to a presumption that the limitation
is not in the independent claim (also known as the doctrine of
claim differentiation).
Specification
Claims must be read in view of the specification, which is the

primary basis for construing claims. The specification is
always highly relevant to the claim construction analysis.
Usually, it is dispositive; it is the single best guide to the
meaning of a disputed term. Vitronics. Claim construction
must be consistent with the specification. It is appropriate for
the court to rely heavily on the written description when
construing claims. In light of the statutory directive that the
inventor provide a full and exact description of the claimed
invention under 35 USC 112, first paragraph, the
specification necessarily informs the proper construction of the
claims.
The specification may contain a special definition for a claim

term (i.e., the lexicographer rule) or a disclaimer/disavowal of
claim scope (e.g., under SciMed).
The specification acts as a dictionary when it defines claim

terms either expressly or by implication.
Limitations cannot be imported into the claim from the

specification. Claims are not limited to specific embodiments,
including a single embodiment. Claims are not limited to
achieving all objectives of the invention. The court must
determine whether the embodiments define the outer limits of a
claim term or whether they are merely exemplary.
Prosecution History
612
Like the specification, the prosecution history provides
evidence of how the PTO and the inventor understand the
patent. Yet because the prosecution history represents an
ongoing negotiation between the PTO and the applicant,
rather than the final product of the negotiation, it often lacks the
clarity of the specification and thus is less useful for claim
construction purposes.
Prosecution history disclaimer excludes any interpretation of a

claim disclaimed during prosecution.
Extrinsic Evidence
Extrinsic evidence is also useful for construing claims,

including dictionaries (especially technical dictionaries),
treatises, and inventor and expert testimony. Extrinsic
evidence, however, is less reliable than the specification and
prosecution history, for several reasons. The court must use its
discretion when considering extrinsic evidence to determine the
meaning of a claim term to the POS in the art. Extrinsic
evidence must be considered in the context of the intrinsic
evidence (e.g., a dictionary definition cannot contradict a
definition found in the patent Vitronics: The main problem
with dictionaries is that they focus the inquiry on the abstract
meaning of words rather than on the meaning of claim terms
within the context of the patent.).
Expert testimony must be consistent with the intrinsic evidence.

Conclusory, unsupported assertions by experts as to the
definition of a claim term are not useful.
Other Issues
Appropriate weight must be attached to the various sources
The various sources for construing claims need not be analyzed

in any particular sequence (e.g., while reading the specification,
613
one can consult a dictionary for definitions of terms), as long as
the sources are not used to contradict claim meaning that is
unambiguous in light of the intrinsic evidence. What matters is
for the court to attach the appropriate weight to these various
sources. In Vitronics, the court attempted to explain why, in
general, certain types of evidence are much more valuable than
others.
Deference to District Courts claim construction
The Federal Circuit declined to address the issue of whether it

is appropriate for the court to accord any deference to any
aspect of the trial courts claim construction rulings, and if so,
on what aspects, in what circumstances, and to what extent?
The court decided not to address this issue, and thus left
undisturbed the courts prior en banc decision in Cybor.
Validity and claim construction
Validity analysis of claims is not a regular component of claim

construction.
Regarding the maxim that claims are construed, if possible, to

sustain their validity, the maxim is limited to cases where, after
applying all available tools of claim construction, the court
concludes that the claim is still ambiguous. The court also
considers that the PTO would not have issued an invalid claim.
Means-plus-function claims
Means-plus-function claims 35 USC 112, 6 the absence of

means language creates a rebuttable presumption that 112,
6 does not apply claim term cannot be structural for 112, 6
to apply.
614
B. Post-Phillips claim construction cases
Since the Federal Circuits en banc decision in Phillips, as of October

7, 2013, there have been about 293 precedential opinions substantively
addressing claim construction (293 post-Phillips), out of which only about
43 opinions have not cited Phillips.
In the above opinions, panels have split 54 times (including one

dubitante opinion) (and all but 2 of which cited Phillips). In 3 of those
opinions, Phillips was cited only by the dissenting judge. In Marine
Polymer, 3/15/12 (en banc), the court was split 5-5 (see below). In Saffran,
4/4/13, Judge Moore concurred, but dissented with respect to one of two
claim terms on appeal, while Judge OMalley also concurred, but dissented
with respect to the other of the two claim terms. Excluded from the above
number are 24 split decisions in which the dissenting opinion related to other
than claim construction. Additionally, in nonprecedential opinions
addressing claim construction, in 2008-2013, panels split another 10 times
(Kruse Tech., 10/8/13 (Linn, Newman, Wallach (dissenting)); Cooper
Notification, 8/30/13 (Lourie, Newman, Taranto (dissenting)); Ceats,
4/26/13 (Rader, Prost, Schall (dissenting)); Harris, 1/17/13 (Clevenger,
Lourie, Wallach (dissenting the majority improperly narrowed the claim
language (when no disclaimer present), limiting an otherwise broadly
drafted claim)); Creative Internet Advertising, 4/22/11 (Bryson, Newman,
Clevenger (dissenting)); St. Clair, 1/10/11 (Dyk, Mayer, Moore
(dissenting)); Vehicle IP, 1/6/09 (Prost, Bryson, Mayer (dissenting));
Medegen, 11/20/08 (Dyk, Rader, D.J. Walker (dissenting)); Uniloc USA,
8/7/08 (Moore, Linn, Michel (dissenting)); Outside the Box Innovations,
1/15/08 (Archer, Bryson, Dyk (dissenting))). The precedential cases are
listed below (the first named judge authored the opinion).
(Broadcom, 10/7/13 (Rader, Lourie, Wallach); TecSec, 10/2/13 (Linn,

Moore, Reyna (dissenting for other reasons)); Meadwestvaco, 9/26/13
(Prost, O Malley, Taranto); Sunovion, 9/26/13 (Lourie, Schall,
Reyna); Bayer Cropscience, 9/3/13 (Taranto, Prost, Bryson);
SkinMedica, 8/23/13 (Prost, Clevenger, Rader (dissenting)); Leo
Pharm., 8/12/13 (Rader, OMalley, Reyna) [Phillips not cited BPAI
broadest reasonable interpretation]; Aria Diagnostics, 8/9/13
(Rader, Dyk, Reyna); Taurus IP, 8/9/13 (Schall, Prost, Reyna); Apple,
615
8/7/13 (Moore, Linn, Reyna (dissenting for other reasons)) [Phillips
not cited]; 3M Innovative, 8/6/13 (Reyna, Plager (concurring),
OMalley (dissenting one of four claim terms)); Cheese Systems,
8/6/13 (Rader, Reyna, Davis, S.J.); Plantronics, 7/31/13 (Wallach,
Rader, O Malley); Teva, 7/26/13 (Moore, Rader, Benson, D.J.);
Commil USA, 6/25/13 (Prost, Newman (dissenting in part for other
reasons), OMalley (dissenting in part for other reasons)); Regents of
U. Minn., 6/3/13 (Dyk, Rader, Wallach); Douglas Dynamics, 5/21/13
(Rader, Newman, Mayer (dissenting)); Aventis, 5/20/13 (Reyna,
Newman, Bryson (dissenting)); Biogen Idec, 4/16/13 (Reyna, Dyk,
Plager (dissenting)); Saffran, 4/4/13 (Lourie, Moore (concurring, but
dissenting-in part), OMalley (concurring, but dissenting-in-part));
Power Integrations, 3/26/13 (Reyna, Lourie, OMalley); Synqor,
3/13/13 (Rader, Lourie, Daniel, D.J.); Aristocrat Techs., 3/13/13
(OMalley, Bryson, Linn); Radio Systems, 3/6/13 (Moore, Reyna,
Newman (dissenting for other reasons)) [Phillips not cited]; Function
Media, 2/13/13 (Reyna, Rader, Newman); Accent Packaging, 2/4/13
(Prost, Rader, Reyna); Deere, 12/4/12 (Rader, Newman, Plager);
Arcelormittal France, 11/30/12 (Dyk, Clevenger, Wallach
(dissenting)); Edwards Lifesciences, 11/13/12 (Newman, Rader, Prost
(concurring for other reasons)); Flo Healthcare Solutions, 10/23/12
(Plager (additional views also), Wallach, Newman (additional views
also)) [Phillips not cited means-plus-function claims];
Technology Patents, 10/17/12 (Bryson, Prost, Reyna) [Phillips not
cited, nor any other claim construction cases]; Energy
Transportation Group, 10/12/12 (Rader, Plager, Linn); Apple,
10/11/12 (Prost, Moore, Reyna) [Phillips not cited]; Sandisk, 10/9/12
(Prost, Wallach, Reyna (dissenting)); In re Abbott Diabetes Care,
9/28/12 (Prost, Lourie, Wallach); Pozen, 9/28/12 (Wallach, Newman,
Clevenger (dissenting on other grounds)); Outside the Box
Innovations, 9/21/12 (per curiam Prost, OMalley, Newman
(dissenting)) [Phillips not cited]; Medtronic, 9/18/12 (Linn, Lourie,
Prost); Woods, 8/28/12 (Linn, Dyk, Reyna); ActiveVideo Networks,
8/24/12 (Moore, Bryson, Dyk); Meyer, 8/15/12 (OMalley, Moore,
Dyk (concurring)); In re Rambus, 8/15/12 (Linn, Rader, Dyk); Kinetic
Concepts, 8/13/12 (OMalley, Bryson, Dyk (concurring)); Highmark,
8/7/12 (Dyk, Newman, Mayer (dissenting for other reasons));
Interdigital, 8/1/12 (Bryson, Mayer, Newman (dissenting)); 01
616
Communique Lab, 7/31/12 (Fogel, D.J., Rader, Wallach); Grober,
7/30/12 (Rader, Prost, Moore); Bancorp Services, 7/26/12 (Lourie,
Prost, Wallach); CLS Bank, 7/9/12 (Linn, OMalley, Prost (dissenting
on other grounds)) [vacated and en banc review granted on
10/9/12]; General Electric, 7/6/12 (Newman, Rader, Linn); Toshiba,
6/11/12 (Moore, Schall, Dyk (dissenting arguing for a narrow
construction based on the specification and PH, which was
different from that of the majority, the parties, and the district
court)); In re Baxter, 5/17/12 (Lourie, Moore, Newman (dissenting on
other grounds)); Chicago Board, 5/7/12 (Wallach, Rader, D.J. Fogel);
Aventis Pharma, 4/9/12 (Prost, Linn, Dyk); Advanced Fiber, 4/3/12
(Lourie, Prost, Dyk (dissenting)); Marine Polymer, 3/15/12 (en banc
(5-5 decision Lourie, Rader, Newman, Bryson, Prost (Dyk, Gajarsa,
Reyna, Wallach, Linn dissenting)) [Upon reconsideration en
banc, we affirm the judgment of the district court by an equally
divided court.; also, according to Judge Dyk for the dissent: I
agree with Judge Lourie that the effect of the equally divided
affirmance is that the district courts claim construction is
binding on the parties as if the district courts decision had never
been reviewed and that The claim construction is, of course, not
precedential.]; Aspex Eyewear, 3/14/12 (Bryson, Rader, Reyna);
Digital-Vending, 3/7/12 (Rader, Linn, Moore (dissenting-in-part));
MySpace, 3/2/12 (Plager, Newman, Mayer (dissenting for other
reasons)); Mettler-Toledo, 2/8/12 (Moore, Bryson, Reyna); Thorner,
2/1/12 (Moore, Rader, D.J. Aiken); HTC, 1/30/12 (OMalley, Bryson,
Linn); Krippelz, 1/27/12 (Prost, Newman, OMalley); Falana, 1/23/12
(Linn, Prost, Reyna); Dealertrack, 1/20/12 (Linn, Dyk, Plager
(dissenting on other grounds)); Celsis In Vitro, 1/9/12 (Rader, Prost,
Gajarsa (dissenting on other grounds)) [affirming grant of PI];
Powell, 11/14/11 (Prost, Linn, Dyk (dissenting on other grounds));
Typhoon Touch, 11/4/11 (Newman, Rader, Prost); Absolute Software,
10/11/11 (OMalley, Rader, Prost); Atlantic Research, 10/6/11 (Prost,
Mayer, OMalley); IGT, 10/6/11 (Moore, Newman, Lourie); Cordis,
9/28/11 (Gajarsa, Bryson, Mayer) [Phillips not cited reviewing the
meaning of the district courts claim construction rather than the
construction itself]; Marine Polymer, 9/26/11 (Dyk, Gajarsa, Lourie
(dissenting on other grounds)) [Phillips not cited] [vacated and en
banc review granted, on 1/20/12; see above Marine Polymer,
617
3/15/12 (en banc)]; Cordance, 9/23/11 (Linn, Lourie, Dyk) [Phillips
not cited]; Markem-Imaje, 9/9/11 (per curiam Clevenger, Linn,
Newman (dissenting)); Harari, 9/1/11 (Moore, Prost, OMalley)
[BPAI Phillips not cited]; AIA Engg, 8/31/11 (Lourie, Rader,
Bryson); In re Aoyama, 8/29/11 (Linn, Gajarsa, Newman (dissenting))
[Phillips not cited means-plus-function claims held indefinite];
August Tech., 8/22/11 (Moore, Dyk, OMalley); CBT Flint Partners,
8/10/11 (Lourie, Bryson, Linn); In re NTP I, 8/1/11 (Moore, Gajarsa,
Clevenger); In re NTP II, 8/1/11 (Gajarsa, Clevenger, Moore) [BPAI -
Phillips not cited]; Eon-Net, 7/29/11 (Lourie, Mayer, OMalley);
Retractable Techs., 7/8/11 (Lourie, Plager (concurring), Rader
(dissenting)) [petition for rehearing en banc was denied on
10/31/11; J. Moore, joined by C.J. Rader, dissented from the
denial of the petition, and J. OMalley dissented separately; on
6/29/12, the U.S. Supreme Court issued a CVSG Order asking the
Solicitor General whether the Court should grant certiorari the
questions presented are: 1) Whether a court may depart from the
plain and ordinary meaning of a term in a patent claim based on
language in the patent specification, where the patentee has
neither expressly disavowed the plain meaning of the claim term
nor expressly defined the term in a way that differs from its plain
meaning; 2) Whether claim construction, including underlying
factual issues that are integral to claim construction, is a purely
legal question subject to de novo review on appeal]; American
Calcar, 6/27/11 (Lourie, Bryson, Gajarsa); Inventio, 6/15/11 (Lourie,
Prost, Moore) [means-plus-function claims]; Advanced Software
Design, 6/2/11 (Bryson, Dyk, Prost); Hynix, 5/13/11 (Linn, Lourie,
Bryson, Gajarsa , with whom Newman joined (dissenting on other
grounds)); Wellman, 4/29/11 (Rader, Lourie, D.J. Whyte)
[indefiniteness case]; Lexion Medical, 4/22/11 (Rader, Dyk, Prost);
American Piledriving, 3/21/11 (Linn, Bryson, Gajarsa) [multiple
district courts construing the same terms differently]; Innovention
Toys, 3/21/11 (Lourie, Rader, D.J. Whyte) [Phillips not cited];
Hologic, 2/24/11 (Lourie, Newman, Friedman (dubitante)); In re Katz
Patent Litigation, 2/18/11 (Bryson, Newman, Lourie) [Phillips not
cited; means-plus-function claims]; *Arlington Indus., 1/20/11
(Rader, Moore, Lourie (dissenting)); Lazare Kaplan, 12/22/10 (Linn,
Lourie, Friedman); Spansion, 12/21/10 (Linn, Lourie, Friedman)
618
[Phillips not cited]; Akamai Techs., 12/20/10 (Linn, Rader, Prost)
[Phillips not cited] [vacated and en banc review granted, on
4/20/11]; Erbe, 12/9/10 (Prost, Rader, Newman (dissenting for other
reasons)); Finjan, 11/4/10 (Linn, Newman, Gajarsa); Astrazeneca,
11/1/10 (Linn, Rader, Bryson (dissenting)); Solvay, 10/13/10 (Schall,
Dyk, Mayer); Laryngeal Mask, 9/21/10 (Moore, Rader, Lourie);
Fujitsu, 9/20/10 (Moore, Lourie, Friedman); American Medical
Systems, 9/13/10 (Bryson, Prost, Dyk (dissenting)); Spine Solutions,
9/9/10 (Moore, Dyk, Friedman); Funai, 9/1/10 (Newman, Lourie,
Linn); General Protecht Group, 8/27/10 (Dyk, Prost, Newman
(dissenting)); Pass & Seymour, 8/27/10 (Prost, Dyk, Newman
(dissenting in part)); Baran, 8/12/10 (Bryson, Gajarsa, Prost) [Phillips
not cited]; Ring Plus, 8/6/10 (Moore, Lourie, Gajarsa); Adams, 8/5/10
(Moore, Linn, Friedman); Intervet, 8/4/10 (Prost, Bryson, Dyk
(dissenting)); Becton Dickinson, 7/29/10 (Mayer, Linn, Gajarsa
(dissenting)) [Phillips cited only by the dissent]; Telcordia Techs.,
7/6/10 (Rader, Lourie, Prost (dissenting on other grounds)); Silicon
Graphics, 6/4/10 (Rader, Lourie, Prost); Haemonetics, 6/2/10 (Lourie,
Gajarsa, Moore); Vizio, 5/26/10 (Dyk, Mayer, Clevenger
(dissenting)); Honeywell, 5/25/10 (Moore, Prost, Mayer (dissenting))
[Phillips not cited]; Rolls-Royce, 5/5/10 (Rader, Michel, Schall);
Bradford, 4/29/10 (Lourie, Clevenger, Rader); In re Suitco Surface,
4/14/10 (Rader, Prost, Moore) [Phillips not cited; PTOs broadest
reasonable interpretation consistent with the specification rule
applied); SiRF Technology, 4/12/10 (Dyk, Michel, Clevenger)
[Phillips not cited]; Bid for Position, 4/7/10 (Bryson, Newman,
Moore) [Phillips not cited, while only one claim construction case
was cited]; Power-One, 3/30/10 (D.J. Kendall, Michel, Gajarsa);
Enzo Biochem, 3/26/10 (Linn, Michel, Plager); Pressure Products,
3/24/10 (5-judge panel - Rader, Lourie, Gajarsa, Moore, Newman
(dissenting)); i4i, 3/10/10 (Prost, Schall, Moore); Comaper, 3/1/10
(Dyk, Rader, Gajarsa); Trading Techs., 2/25/10 (Rader, Lourie
(concurring in the result), D.J. Clark (concurring commenting on the
de novo standard of review for claim construction)); SEB, 2/5/10
(Rader, Bryson, Linn); Therasense, 1/25/10 (Dyk, Friedman, Linn
(dissenting on other grounds)) [vacated on 4/26/10, and reinstated
by Therasense, 5/25/11 (en banc)]; Schindler, 1/15/10 (Linn,
Friedman, Dyk (dissenting in part)); Ultimax Cement, 12/3/09
619
(Lourie, Dyk, Prost); Kara Technology, 9/24/09 (Moore, Schall,
Plager); Edwards Lifesciences, 9/22/09 (Lourie, Rader, Moore); Vita-
Mix, 9/16/09 (Prost, Gajarsa, Bryson (dissenting on other grounds))
[Phillips not cited]; Martek Biosciences, 9/3/09 (5 judge panel
Gajarsa, Newman, Moore; Lourie and Rader, dissenting in part);
Callaway, 8/14/09 (Dyk, Linn, Prost); Wavetronix, 7/29/09 (Patel,
D.J., Newman, Schall); Blackboard, 7/27/09 (Bryson, Moore, Cudahy,
C.J.); U. of Pittsburgh, 7/23/09 (Mayer, Rader, Bryson); Gemtron,
7/20/09 (Linn, Michel, Schall); Ecolab, 6/9/09 (Gajarsa, Rader, Dyk);
Agilent Techs., 6/4/09 (Rader, Mayer, Posner, D.J.); Paragon
Solutions, 5/22/09 (Linn, Bryson, Moore); Epistar, 5/22/09 (Rader,
Archer, Dyk); Linear Tech., 5/21/09 (Schall, Mayer, Lourie) [Phillips
not cited]; Erbe Elektromedizin, 5/19/09 (Dyk, Michel, Rader);
Abbott Labs, 5/18/09 (Rader, Plager, Bryson) [construing product-
by-process claims; also, in one section of the opinion, the en banc
court, sua sponte, adopted its ruling in Atlantic Thermoplastics
(1992) that the process terms limit product-by-process claims in
determining infringement]; Every Penny Counts, 4/30/09 (Cudahy,
C.J., Michel, Bryson); Princo, 4/20/09 (Dyk, Gajarsa, Bryson
(dissenting on other grounds)) [ruling that claim 6 could have been
construed broadly as to make a license to the patent reasonably
necessary in a patent pooling arrangement, based on the fact
that claim construction law was unsettled in the late 1990s, i.e.,
prior to Phillips (en banc), and therefore that [a]gainst this
background, legitimate questions could have existed as to the
scope of the Lagadec patent] [vacated on 10/13/09, and reinstated
in part in Princo, 8/30/10 (en banc)]; Felix, 4/10/09 (Linn, Rader,
Friedman); Cordis, 3/31/09 (Dyk, Mayer, Huff, D.J.); ICU Medical,
3/13/09 (Moore, Michel, Prost); Ball Aerosol, 2/9/09 (Lourie,
Clevenger, Linn); Kinetic Concepts, 2/2/09 (Prost, Bryson, Dyk
(dissenting)); Boston Scientific Scimed, 1/15/09 (Lourie, Rader,
Prost); Welker Bearing, 12/15/08 (Rader, Schall, Prost); Ilor, 12/11/08
(Linn, Mayer, Moore) [affirming district courts construction in
support of denying PI; Phillips not cited]; Netcraft, 12/9/08 (Prost,
Bryson, Linn); Abbott Labs, 10/21/08 (Newman, Archer, Gajarsa
(dissenting on other grounds)); Net Moneyin, 10/20/08 (Linn,
Clevenger, Moore) [means-plus-function claims; Phillips not cited];
Minks, 10/17/08 (Gajarsa, Newman, Plager) [means-plus-function
620
claims; Phillips not cited]; Kyocera Wireless, 10/14/08 (Rader,
Bryson, Linn); Cohesive Techs., 10/7/08 (Linn, Prost, Mayer
(dissenting on other grounds)); Praxair, 9/29/08 (Dyk, Bryson, Lourie
(dissenting in part, on other grounds)); Broadcom, 9/24/08 (Linn,
Friedman, Prost); Broadcom, 9/19/08 [ITC; Phillips not cited];
CSIRO, 9/19/08 (Bryson, Rader, Lourie (concurrence)) [means-plus-
function claims; Phillips not cited]; Howmedica, 9/2/08 (Dyk,
Hochberg, D.J., Prost (dissent)); 800 Adept, 8/29/08 (Plager, Gajarsa,
Dyk); In re Omeprazole, 8/20/08 (Bryson, Lourie, Gajarsa); DSW,
8/19/08 (Mayer, Schall, Linn); Voda, 8/18/08 (Gajarsa, Mayer,
Bryson); U. Texas, 7/24/08 (Prost, Dyk, Hochberg, D.J.); Tip
Systems, 6/18/08 (Prost, Michel, Pogue (CIT)); Helmsderfer, 6/4/08
(Moore, Mayer, Friedman); Cat Tech., 5/28/08 (Mayer, Schall,
Young, D.J.); Mangosoft, 5/14/08 (Linn, Michel, Prost); Lucent
Techs., 5/8/08 (Prost, Linn, Lourie (dissent)); Decisioning.com,
5/7/08 (per curiam Mayer, Schall, Linn (dissent)); Solomon Techs.,
5/7/08 (Bryson, Lourie, Rader) [Phillips not cited]; PSN Illinois,
5/6/08 (Michel, Linn, Prost); Finisar, 4/18/08 (Rader, Michel, Moore);
Zenith Electronics, 4/16/08 (Schall, Newman, Lourie); Symantec,
4/11/08 (Dyk, Gajarsa, Linn); O2 Micro, 4/3/08 (Prost, Lourie,
Clevenger); MEC, 4/1/08 (Gajarsa, Newman, Dyk); Ortho-McNeil,
3/31/08 (Rader, Michel, Linn); Computer Docking Station, 3/21/08
(Rader, Michel, Plager); Regents of U. Cal., 2/28/08 (Lourie, Mayer,
Prost (dissenting in part, on other grounds); Chamberlain Group,
2/19/08 (Rader, Clevenger, Dyk); Miken Composites, 2/6/08 (Linn,
Newman, Schall); Sitrick, 2/1/08 (Moore, Michel, Rader) [Phillips
not cited]; Tivo, 1/31/08 (Bryson, Plager, Keeley, D.J.) [Phillips not
cited, despite an extensive claim contruction analysis, relying
heavily on the specification and/or expert testimony]; Oatey,
1/30/08 (Newman, Schall, Linn); Trimed, 1/29/08 (Moore, Linn, Dyk)
[Phillips not cited, determining whether the relevant claim
language contained a means-plus-function limitation]; Halliburton,
1/25/08 (Michel, Bryson, Fogel, D.J.); Innogenetics, 1/17/08 (Moore,
Bryson, Clevenger); Baldwin Graphic Systems, 1/15/08 (Rader,
Michel, Moore); Cordis, 1/7/08 (Bryson, Friedman, Keeley, D.J.);
Sinorgchem, 12/21/07 (Dyk, Yeakel, D.J., Newman (dissent));
Stumbo, 11/28/07 (Moore, Schall, Bryson); Elbex Video, 11/28/07
(Moore, Dyk, Cote, D.J. (dissent)); Z4 Technologies, 11/16/07 (Linn,
621
Lourie, Bucklo, D.J.); U.S. Philips, 11/2/07 (Linn, Newman, Lourie)
[Phillips not cited, but claims reciting numeric ranges construed
based on the claim language and specification]; Osram GMBH,
10/31/07 (Newman, Rader, Dyk (dissent)); In re Translogic
Technology, 10/12/07 (Rader, Mayer, Prost); Allvoice Computing,
10/12/07 (Rader, Newman, Gajarsa); In re Buszard, 9/27/07 (dissent,
J. Prost); Cias, 9/27/07 (Newman, Schall, Moore); Verizon, 9/26/07
(Dyk, Michel (dissenting in part), Gajarsa (dissenting in part));
Warner-Lambert, 9/21/07 (Lourie, Linn, Moore); L.B. Plastics,
9/12/07 (Dyk, Newman, Rader); Gillespie, 9/6/07 (Newman, Schall,
Bryson); Mitutoyo, 9/5/07 (Mayer, Rader, Moore); Ormco, 8/24/07
(Lourie, Dyk, OMalley, D.J. (dissent)); In re Trans Texas Holdings,
8/22/07 (Dyk, Michel, Mayer); SafeTCare Mfg., 8/3/07 (Gajarsa,
Michel, Robinson, D.J.); Honeywell, 7/3/07 (Bryson, Gajarsa, Plager
(dissent)); Saunders Group, 6/27/07 (Bryson, Michel, Dyk); Young,
6/27/07 (Lourie, Prost, Moore), indefiniteness; Honeywell, 5/25/07
(Rader, Gajarsa, Dyk); Pods, 4/27/07 (Dyk, Lourie, OMalley, D.J.);
Intamin, 4/18/07 (Rader, Plager, Prost); Acumed, 4/12/07 (Gajarsa,
Linn, Moore (dissent)); Bass Pro Trademarks, 4/6/07 (Newman,
Clevenger, Dyk); Central Admixture Pharmacy Services, 4/3/07
(Gajarsa, Schall, Prost); Mymail, 2/20/07 (Bryson, Newman, Schall);
Andersen, 1/26/07 (Bryson, Prost, Saris, D.J.); MBO Labs, 1/24/07
(Gajarsa, Bryson, Clevenger); Ortho-McNeil, 1/19/07 (McKinney,
D.J., Schall, Gajarsa); E-Pass Technologies, 1/12/07 (Linn, Michel,
Prost); Abbott Labs, 1/5/07 (Prost, Michel, Ellis, D.J.); Ventana
Medical Systems, 12/29/06 (Prost, Dyk, Lourie (dissent)); Planet
Bingo, 12/13/06 (Rader, Newman, Mayer); DSU Medical, 12/13/06
(Rader, Schall, Linn); Depuy Spine, 11/20/06 (Linn, Newman, Prost);
Optivus Tech., 11/16/06 (Linn, Bryson, Archer); Abraxis Bioscience,
11/15/06 (Lourie, Plager, Rader); Aero Products, 10/2/06 (Schall,
Rader, Dyk); Kim, 9/20/06 (Dyk, Archer, Schall (dissent)); MIT,
9/13/06 (Dyk, Friedman, Michel (dissent)); Ormco, 8/30/06 (Dyk,
Schall, Gajarsa); Cook Biotech, 8/18/06 (Prost, Newman, Lourie);
Conoco, 8/17/06 (Gajarsa, Bryson, Archer); Serio-Us Industries,
8/10/06 (Rader, Lourie, Linn); Amgen, 8/3/06 (Schall, Clevenger,
Michel (dissent)); Pfizer, 8/2/06 (Michel, Schall, Dyk); Flex-Rest,
7/13/06 (Linn, Bryson, Prost); LG Electronics, 7/7/06 (Mayer, Michel,
Newman); Agfa, 6/26/06 (Rader, Lourie, Newman (dissent)); Abbott
622
Labs, 6/22/06 (Prost, Gajarsa, Newman (dissent, for other reasons);
Honeywell, 6/22/06 (Lourie, Mayer, Dyk); Primos, 6/14/06 (Lourie,
Newman, Prost); Panduit, 6/12/06 (Linn, Michel, Gajarsa); Inpro II
Licensing, 5/11/06 (Newman, Dyk, Prost (additional views by J.
Newman on other than claim construction); Old Town Canoe, 5/9/06
(Linn, Schall, Mayer (dissenting for other reasons); Lava Trading,
4/19/06 (Rader, Linn, Mayer (dissent, unfortunate consequence of
Phillips that claim construction is purely a matter of law subject to de
novo review)); Semitool, 4/6/06 (Prost, Linn, Dyk); On Demand
Machine, 3/31/06 (Newman, Mayer, Bryson); Wilson Sporting
Goods, 3/23/06 (Rader, Lourie, Bryson); Atofina, 3/23/06 (Lourie,
Rader, Dyk (dissenting in part)); Schoenhaus, 3/15/06 (Michel,
Gajarsa, Linn); Smithkline Beecham, 2/24/06 (Dyk, Schall, Newman
(dissent)); Curtiss-Wright Flow Control, 2/15/06 (Rader, Friedman,
Dyk); Perdue Pharma, 2/1/06 (Plager, Gajarsa, Linn); Varco, 2/1/06
(Rader, Clevenger, Dyk); In re Johnston, 1/30/06 (Newman, Michel,
Bryson) [Phillips cited as the standard for claim construction by
PTO/BPAI? Compare broadest reasonable interpretation rule];
NCube, 1/9/06 (Rader, Friedman, Dyk (dissent)) [Phillips not cited
by the majority, but the dissent cited Phillips for the proposition
that the specification is the single best guide for construing claims,
and that the construction that most naturally aligns with the
specification is the correct one]; Norian, 12/6/05 (Bryson,
Newman, Rader) [Phillips not cited, but CAFC agreed with the
district courts narrow construction based on the claim language,
which was consistent with the specification and PH; deference
given to the district court?]; Pfizer, 11/22/05 (Prost, Newman,
Rader); Invitrogen, 11/18/05 (Gajarsa, Michel, Rader); Microstrategy,
11/17/05 (Rader, Newman, Archer); Dorel Juvenile Group, 11/7/05
(Clevenger, Gajarsa, Newman (dissent)); Sorensen, 10/31/05 (Rader,
Michel, Linn); Callicrate, 10/31/05 (Rader, Newman, Prost);
Lizardtech, 10/4/05 (Bryson, Lourie, Schall); JVW Enterprises,
10/3/05 (Prost, Michel, Schall); Cross Medical Prods., 9/30/05 (Linn,
Schall, Gajarsa); Cytologix, 9/21/05 (Dyk, Mayer, Gajarsa); Free
Motion Fitness, 9/16/05 (Dyk, Rader, Prost (dissent)); Nystrom,
9/14/05 (Linn, Mayer, Gajarsa) [issued from a panel rehearing that
addressed the effect of Phillips (en banc) on the CAFCs earlier
(pre-Phillips) panel decision; 6/28/04 opinion, reported at 374 F.3d
623
1105 (Fed. Cir. 2004), in which the claims were construed using
the Texas Digital approach, was withdrawn]; Biagro, 9/13/05
(Plager, Gajarsa, Dyk); Network Commerce, 9/8/05 (Dyk, Mayer,
Friedman); Aquatex, 8/19/05 (Mayer, Gajarsa, Dyk); Research
Plastics, 8/18/05 (Gajarsa, Newman, Bryson); Tap Pharmaceutical,
8/18/05 (Bryson, Newman, Gajarsa); Terlep, 8/16/05 (Linn, Bryson,
Gajarsa); Pause Technology, 8/16/05 (Linn, Newman, Lourie);
Collegenet, 8/2/05 (Rader, Lourie, Schall); NTP, 8/2/05 (Linn,
Michel, Schall); Sandisk, 7/8/05 (Gajarsa, Rader, Dyk) [issued four
days before Phillips, and applied the Phillips rules])
C. Common claim terms (in alphabetic order)
- a or an (Accent Packaging, 2/4/13; Sandisk, 10/9/12;

01 Communique Lab, 7/31/12; Harari, 9/1/11; Silicon
Graphics, 6/4/10; Ricoh, 12/23/08; Cat Tech., 5/28/08;
Tivo, 1/31/08; Baldwin Graphic Systems, 1/15/08; LG
Electronics, 7/7/06; Lava Trading, 4/19/06; Norian,
12/6/05; Free Motion Fitness, 9/16/05; Collegenet,
8/2/05; NTP, 8/2/05; Scanner Techs., 4/23/04)
- Ordinarily means one or more, in open-ended

claim (Accent Packaging, 2/4/13; Sandisk, 10/9/12
(citing Baldwin Graphic Systems for rule that the
use of said and the to refer back to an earlier
claim term does not limit that term to the singular);
01 Communique Lab, 7/31/12; Silicon Graphics,
6/4/10; Tivo, 1/31/08; Baldwin Graphic Systems,
1/15/08; LG Electronics, 7/7/06; Lava Trading,
4/19/06; Collegenet, 8/2/05); See also Creative
Internet Advertising, 4/22/11 (nonprecedential
see also J. Clevenger, dissenting); Digene, 4/1/09
(nonprecedential construing an as meaning one
and only one when following the phrase
consisting of (even though the phrase for the
entire claim was comprising), based on the
canon that a or an following the closed
624
transitional phrase consisting of is generally read
as meaning one, citing Norian)
- One or more (in claim containing open-ended

phrase comprising), unless there is a clear
intent in the intrinsic evidence to limit a or an
to one only (Accent Packaging, 2/4/13 (a meant
one or more); Sandisk, 10/9/12 (district court erred
in limiting claims (reciting terms using the
indefinite article a referred back to in the claim
by said and the) where the intrinsic evidence
did not demonstrate an intention to exclude
multiple user data portions or overhead portions
from the claim scope); 01 Communique Lab,
7/31/1201 (no departure from general rule based
on the claims, specification or PH disclaimer);
Harari, 9/1/11 (a meant one only, based on the
claim language and specification); Cat Tech.,
5/28/08 (patentees argument that the phrase a
spacing meant that there need be only one
spacing between plates that was narrower than a
whole catalyst particle was little more than
semantic antics, as the critical issue concerned
the meaning of the term spacing and not whether
the article a meant one); Tivo, 1/31/08 (term
limited to singular meaning, where the claims and
written description made clear that the singular
meaning was required; term comprising used,
but not in the pertinent claim limitation); Baldwin
Graphic Systems, 1/15/08 (no clear intent to depart
from the general rule); Norian, 12/6/05; Free
Motion Fitness, 9/16/05; Scanner Techs., 4/23/04
(district court erred where there was no clear intent
evinced in either the claims or specification to
limit the article an to a single illumination
source); See also Hyperphrase Techs., 12/26/07
(nonprecedential - citing Scanner Techs., 4/23/04)
625
- a or an as meaning one or more is
best described as a rule, rather than merely
as a presumption or even a convention; the
exception to this rule is very limited, and
arises only where the language of the claims
themselves, the specification, or the PH
necessitate a departure from the rule (01
Communique Lab, 7/31/12 (exception to
rule not applicable based on the claims,
specification or PH); Baldwin Graphic
Systems, 1/15/08)
- a cup = singular (contrary to rule of

one or more) (Norian, 12/6/05;
- Question whether a or an is treated as

singular or plural depends heavily on the
context of its use; the general rule does not
apply when the context clearly evidences
that the usage is limited to the singular
(Harari, 9/1/11 (a meant one only, based
on the context of its use);Tivo, 1/31/08 (the
pertinent claim language (assembling . . .
into an MPEG stream) in context clearly
indicated that two separate components were
assembled into a single stream; other claim
language also considered))
- Subsequent use of definite articles the or

said in a claim to refer back to the same
claim term does not change the general
plural rule, but simply reinvokes that non-
singular meaning (Sandisk, 10/9/12; 01
Communique Lab, 7/31/12; Baldwin
Graphic Systems, 1/15/08)
626
- about (In re Cyclobenzaprine, 4/16/12 (n.2: expert
testimony needed for pharmaceutical formulation claim);
Lexion Medical, 4/22/11 (construing term within 2C
to include minor fluctuations based on the use of about
in the specification); Cohesive Techs., 10/7/08; Young,
6/27/07 (distinguishing Amgen v. Chugai); Central
Admixture Pharmacy Services, 4/3/07; Ortho-McNeil,
1/19/07; Harris, 5/25/05; Merck, 1/28/05); See also
Accentra, 1/4/13 (nonprecedential claims held not
indefinite despite multiple methods for measuring the
claimed staplers travel distance which produced minor
differences, due to the claim reciting the word about);
Lingamfelter, 8/9/12 (nonprecedential BPIA - giving
term about broadest reasonable interpretation,
including where the specification did not provide
meaning for the term); See also approximately
- Term about does not have a universal meaning

in patent claims, but rather the meaning depends
upon the technological facts of the particular case
Pall Corp.; consider how the term was used in
the intrinsic evidence - specification, prosecution
history, and other claims; extrinsic evidence of its
meaning and usage in the art may be helpful in
determining the criticality of the parameter
(Cohesive Techs., 10/7/08; Ortho-McNeil,
1/19/07)
- Numeric ranges focus on the criticality of

the numeric limitation to the invention; in
other words, look to the specification for the
purpose or function that about ____ serves
in the claimed invention, and not the
purpose of the invention itself; functional
approach is necessary and appropriate,
because the deliberate imprecision
inherent in the word about makes it
impossible to capture the essence of the
627
claimed invention in strict numeric terms
(Cohesive Techs., 10/7/08 (asking what
function the about 30 micron low-end
limit on particle size played in the operation
of the claimed invention))
- Criticality of claimed ratios, as

described in the specification, gave
modifier about a narrow meaning -
Conopco (Ortho-McNeil, 1/19/07)
- Disclaimer during PH? (Cohesive Techs., 10/7/08

(no disclaimer of about by referring to term
during PH without the qualifier about))
- Terms like approximately serve only to expand

the scope of literal infringement, not to enable
application of DOE U.S. Philips (Adams, 8/5/10)
- DOE infringement? (Cohesive Techs.,

10/7/08 (patentee by using the term about
had in the context of the case and claim
already captured within the literal scope of
the claim what would otherwise be
equivalents))
- adapted to (Aspex Eyewear, 3/14/12 (construing term

according to its narrow definition as meaning designed
or configured to accomplish the specified objective,
rather than its broader definition of suitable for citing
district court cases construing the term))
- adjoining (Intl Rectifier (2), 3/18/04)
- and (Tip Systems, 6/18/08 (use of and meant that the

recited actuating switch was connected to both (i.e., was
between) the recited phone line and circuit board); Ortho-
McNeil, 3/31/08 (and in a drug compound claim, based
628
on the context, meant or and thus conjoined mutually
exclusive possibilities))
- approximately (U.S. Philips, 11/2/07; Young, 6/27/07

(approximately and near))
- Terms like approximately serve only to expand

the scope of literal infringement, not to enable
application of DOE (U.S. Supreme Court in
Warner-Jenkinson did not even mention the
qualifier in allowing consideration of DOE in
claim phrase from approximately 6.0 to 9.0)
(Adams, 8/5/10; U.S. Philips, 11/2/07)
- at least one phrase means that there could be only

one or more than one Rhine (Sandisk, 10/9/12; Z4
Technologies, 11/16/07; Biagro, 9/13/05 (at least one
construed narrowly, based on the specification and PH, to
mean an aggregate amount of acids or salts))
- one or more a very common (and clear)

manner of expressing the idea (Tivo, 1/31/08)
- color (Unitherm Food Systems, 7/12/04)
- comprising open-ended (Arcelormittal France,

11/30/12 (hot-rolled steel sheet that was subsequently
cold-rolled to final thickness was included in claim scope
of hot-rolled steel sheet, despite optional cold-rolling
being deleted during prosecution see also n.1); Magsil,
8/14/12 (distinguishing from open-ended language at
least in affirming lack of enablement due to undue
breadth also distinguishing Gillette); Pass & Seymour,
8/27/10 (accused device still needed the disputed
limitation to infringe, despite open-ended transition); In
re Suitco Surface, 4/14/10 (use of comprising does not
change the rule that the PTOs broadest reasonable
interpretation must be consistent with the specification);
629
Therasense, 1/25/10; Abbott Labs, 10/21/08; Predicate
Logic, 10/9/08; U. Texas, 7/24/08; Finisar, 4/18/08 (rule
not addressed substantively); Cordis, 1/7/08 (claimed
invention covered multiple tubular members and thus
was operable because of comprising); Immunocept,
10/15/07; Cias, 9/27/07 (comprised of has same
meaning as comprising); Dippin Dots, 2/9/07; Free
Motion Fitness, 9/16/05; Collegenet, 8/2/05; Gillette,
4/29/05; In re Crish, 12/21/04; Power Mosfet Techs.,
8/17/04; Scanner Techs., 4/23/04; Medichem, 12/23/03);
See also Lee, 11/21/13 (nonprecedential); In re Sutton,
11/20/12 (nonprecedential rejecting argument that
claims not reciting a plasticizer did not include one,
where the claims contained the transitional term
comprising); Lingamfelter, 8/9/12 (nonprecedential
the BPAI did not err in finding that the broadest
reasonable interpretation of a twelve can limitation
read on a thirteen can container); In re SP Controls,
12/21/11 (nonprecedential basis for affirming the
BPAIs broadest reasonable construction of claims in
reexamination); Boesen, 12/15/11 (nonprecedential
basis for affirming SJ of anticipation where as long as the
prior art system can and did perform the claimed input
method, it was of no consequence that it could also
perform other input methods); Mitsubishi Chemical,
8/2/11 (nonprecedential comprising did not include
compounds that would defeat the pharmaceutical
character of the overall composition and which would
move the composition outside the scope of the claimed
invention); Sanders, 4/20/11 (nonprecedential); Applera,
3/25/10 (nonprecedential); Ortho-McNeil, 8/26/09
(nonprecedential claimed two-drug combination tablet
read on prior art example also disclosing two other drugs)
- In the patent claim context, the term comprising

is well understood to mean including but not
limited to (In re Skvorecz, 9/3/09 (BPAI
incorrectly construed the term comprising in
630
finding anticipation, ruling that the term simply
means that the device may contain elements in
addition to those explicitly mentioned in the
claim); Exergen, 8/4/09 (claims anticipated in
part based on use of comprising); Cias, 9/27/07);
See also Lee, 11/21/13 (nonprecedential
rejecting limited construction because of term
comprising -- infringement was not avoided by
adding another feature that contributed to the
turrets stability if the weight differential was
sufficient to keep the turret stationary, as recited in
the claim citing Cias and other cases)
- comprising raises a presumption that the

list of elements is nonexclusive
(Arcelormittal France, 11/30/12); however,
comprising is not a weasel word with
which to abrogate claim limitations (Apple,
10/11/12 (rejecting construction based on
comprising that would have impermissibly
wiped out an express limitation); Trading
Techs., 2/25/10 (rejecting the patentees
argument that the disputed claim also
covered a second embodiment based on the
term comprising where including the
embodiment in the claim scope would have
negate[d] the claim requirement for the
first embodiment); Dippin Dots, 2/9/07);
See also Lingamfelter, 8/9/12
(nonprecedential One may not add an
element to a comprising claim if the addition
wipes out an express claim limitation.);
Applera, 3/25/10 (nonprecedential
comprising is not a weasel word); Outside
the Box Innovations, 1/15/08
(nonprecedential; compare majority
(interpreting the term between narrowly
based on the specification) and dissent, J.
631
Dyk (comprising broadens the scope of
between); also, the inclusion of an
additional element (reinforcing member)
changed the structure of the accused product
such that it could not infringe the term
flexible)
- comprising does not change the

elements that are stated in the claim
Power Mosfet Techs. (Outside the
Box Innovations, 9/21/12 (plywood in
fabric panel was not an additional
element, but a material change in the
fabric panel that changed the structure
of the accused product such that it
could not infringe))
- comprising is a term of art that indicates

that only what follows is essential
Genentech (Arcelormittal France, 11/30/12;
Martin, 8/20/10 (any alleged improvement
in Jepson claim should have been explicitly
recited in the body of the claim)); See also
In re SP Controls, 12/21/11 (nonprecedential
Comprising is a term of art used in
claim language which means that the named
elements are essential, but other elements
may be added and still form a construct
within the scope of the claim Genentech)
- comprised of - although does not itself

exclude the presence of additional elements
or steps, does not permit the recovery of
claim scope limited, disclaimed during
prosecution (Cias, 9/27/07)
- comprising includes unclaimed elements,

so infringement is not avoided by adding an
632
unclaimed element, even if an undesirable
prior art feature distinguished to overcome
rejection (Free Motion Fitness, 9/16/05; See
also Outside the Box Innovations, 1/15/08
(nonprecedential))
- comprising also embraces comprises

and which comprises Hunter (CCPA)
(Cias, 9/27/07)
- comprised of, when used as a

transition phrase, is, like
comprising, that the ensuing
elements or steps are not limiting
(Cias, 9/27/07)
- Other words have been given the

same meaning as comprising:
including, having, containing, and
wherein (Cias, 9/27/07)
- Method, process claim comprising allows for

additional unclaimed steps; the infringing process
could practice other steps in addition to the ones
recited, but each of the steps must be practiced as
recited in the claim for a process to infringe
(Exergen, 8/4/09; Ricoh, 12/23/08 (no evidence
that process of accused device was infringing);
Predicate Logic, 10/9/08 (two additional indexes
generated by the accused process were extraneous
and did not affect the infringement analysis in
open-ended comprising claim); U. Texas,
7/24/08 (issue of insignificant infringement not
addressed n.6); Dippin Dots, 2/9/07; Medichem,
12/23/03)
- Presumption raised by the term

comprising does not reach into each of the
633
steps to render every word and phrase
therein open-ended, especially where the
patentee has narrowly defined the claim
term it seeks to have broadened (U. Texas,
7/24/08 (comprising could not be used to
broaden the scope of a claim phrase that was
limited during prosecution to obtain a patent
allowance); Dippin Dots, 2/9/07)
- consisting of close-ended; signifies restriction and

exclusion of unrecited steps or components
(Immunocept, 10/15/07; Cias, 9/27/07; Conoco, 8/17/06;
Norian, 12/6/05; Gillette, 4/29/05; Abbott, 7/3/03); See
also Kim, 12/9/11 (nonprecedential distinguishing
consisting of from consisting essentially of)
- Competitor could design around a claim by adding

any step or element not recited in the claim
(Immunocept, 10/15/07)
- consisting of does not exclude additional

components or steps unrelated to the invention
(Cias, 9/27/07; Conoco, 8/17/06; Norian, 4/6/04
(see also J. Schall, dissenting addressing the
notice function of claims, and that the patentee
should bear the consequences of claim mistakes));
See also In re Taylor, 10/6/11 (nonprecedential)
- Restriction is not absolute impurities ordinarily

associated with recited components are not
excluded from the scope of claim (Conoco,
8/17/06); See also In re Taylor, 10/6/11
(nonprecedential)
- Special meaning for consisting of when patentee

is own lexicographer? (Conoco, 8/17/06)
634
- consisting essentially of indicates that the claimed
invention necessarily includes the listed ingredients, but
also that the claim is open to unlisted ingredients that do
not materially affect the basic and novel properties of the
invention (Meadwestvaco, 9/26/13 (n.5: noting the merits
of using consisting essentially of for nonobviousness);
Martek Biosciences, 9/3/09; Ecolab, 6/9/09 (construed as
non-limiting and covering the accused product that
contained additional anti-microbial agents); Kim,
9/20/06; Power Mosfet Techs., 8/17/04; W.E. Hall,
6/7/04; AK Steel, 9/23/03); See also Kim, 12/9/11
(nonprecedential); In re Pelz, 5/7/10 (nonprecedential);
Depuy Mitek, 10/30/08 (nonprecedential)
- No infringement where the accused product

contains additional, unclaimed ingredients that
materially affect the basic and novel properties of
the invention (Martek Biosciences, 9/3/09 (citing
rule and Kim); Ecolab, 6/9/09; Kim, 9/20/06); See
also Depuy Mitek, 10/30/08 (nonprecedential
accused product was noninfringing because of
unclaimed silicone coating added that materially
improved the handleability and pliability of the
otherwise infringing suture, even though the
specification contemplated adding, but also
criticized, the coating to the claimed suture)
- Patentee can alter the typical meaning of

consisting essentially of by making clear
in its specification [and PH] what it regarded
as constituting a material change in the basic
and novel characteristics of the invention
PPG Indus., Water Techs. (Ecolab, 6/9/09
(specification, including the examples, did
not limit the scope of the term))
- containing open-ended (general dictionary and

MPEP) (Tap Pharmaceutical, 8/18/05 (containing
635
interpreted narrowly based on the specification and
expert testimony); Mars, 7/29/04);
- corresponding to (Respironics, 12/16/08

(nonprecedential construed based on the terms plain
and ordinary meaning))
- coupled generically indicates a connection (General

Electric, 7/6/12 (term coupled with did not require the
coupled elements to be separate citing NTP))
- effective amount (Iovate Health Sciences, 11/19/09

(assuming that claim to a method for enhancing muscle
performance or recovery from fatigue by administering
certain nutritional supplement compositions required an
effective amount limitation in ruling that a published
advertisement taught and enabled the claimed method);
Ortho-McNeil, 3/31/08 (anticonvulsively effective
amount was enabled); Geneva, 11/21/03; Abbott,
7/3/03)
- therapeutically effective amount (Roche Palo

Alto, 7/9/08 (construing term stabilizing amount
followed by a concentration range as merely a
statement of intended result and not a claim
limitation); Amgen, 8/3/06; see also C.J. Michel,
dissenting, and order denying petitions for panel
rehearing and rehearing en banc)
- first and second used as labels to distinguish

similar elements from one another; generally does not
suggest location; not always a numerical limit on claim
(Oatey, 1/30/08 (defined distinct, but not necessarily
physically separate, openings); Free Motion Fitness,
9/16/05; Gillette, 4/29/05; 3M, 12/2/03)
- functional limitations (Leggett & Platt, 8/21/08

(effective to means able to); Geneva, 11/21/03)
636
- generally (Cheese Systems, 8/6/13; Edwards
Lifesciences, 11/13/12 (implicitly rejecting narrow
construction of term generally parallel as a geometric
term with no flexibility of meaning or application))
- including (Lucent Techs., 5/8/08; Toro, 9/13/04); See

also In re Pelz, 5/7/10 (nonprecedential)
- includes means comprising, namely, that the

listed elements are essential but other elements
may be added Amgen, Cias (Lucent Techs.,
5/8/08 (interpreting phrase to require that each of
the recited steps be performed); Sandisk, 7/8/05);
See also RFID Tracker, 8/18/09 (nonprecedential
term includes did not avoid prosecution
disclaimer, while quoting rule from Sandisk that
[n]either includes, nor comprising, forecloses
additional elements that need not satisfy the stated
claim limitations); Aspex Eyewear, 8/1/08
(nonprecedential including is generally an
open-ended term that does not preclude additional
elements, but including does not require
additional, unspecified elements, i.e., the term
suggesting that other elements are present)
- inclusive words e.g., may, such as (In re Johnston,

1/30/06 (optional elements (e.g., may) do not narrow
claim because can always be omitted); Resqnet.com,
10/16/03); can (Alloc, 9/10/03)
- mixture open-ended (Mars, 7/29/04)
- normally, conventionally, traditionally, standard

are implicitly time-dependent (PC Connector Solutions,
5/6/05)
637
- operatively general descriptive term, means
effectively; reflects functional relationship between
claimed components (Cross Medical Prods., 9/30/05
(operatively joined); Innova/pure water, 8/11/04
(operatively connected))
- or designates that a series describes alternatives

(SkinMedica, 8/23/13 (use of or in specification as
support for disclaimer))
- or a fragment thereof (Amgen, 8/3/06)
- pharmaceutical composition each of the constituent

parts of the composition must be pharmaceutically
acceptable, although only the composition as a whole
needs to be medicinal in nature (Mitsubishi Chemical,
8/2/11 (nonprecedential))
- pharmaceutically acceptable polymer (Abbott Labs,

10/21/08)
- plurality at least two (Cheese Systems, 8/6/13;

Apple, 10/11/12 (rejecting the district courts
construction of each of a plurality of modules as
meaning each of only at least two of the modules, where
the term each did not modify plurality but instead
was recited within a wherein clause distinguishing
ResQNet); Verizon, 9/26/07 (used in the specification);
Bilstad, 10/7/04; Resqnet.com, 10/16/03)
- Limitation requiring a plurality may be satisfied

by a single object (Verizon, 9/26/07)
- prevent (Globetrotter Software, 3/23/04)
- removably attached mean capable of separation?

(Dorel Juvenile Group, 11/7/05)
638
- said (the) refers to an earlier use of the term in the
claim (Sandisk, 10/9/12; Therasense, 1/25/10 (referring
to only single working and counter electrodes);
Wavetronix, 7/29/09 (term said PDFE meant single
where every embodiment in the specification taught a
single PDFE); Predicate Logic, 10/9/08 (said
instantiated indexes referred to the indexes that were
instantiated during the instantiating step); Baldwin
Graphic Systems, 1/15/08 (noting that claim terms using
said are anaphoric phrases, referring to the initial
antecedent phrase); Intamin, 4/18/07); See also Creative
Internet Advertising, 4/22/11 (nonprecedential district
courts incorrect construction would have rendered the
term said a nullity; see also J. Clevenger, dissenting);
Tuna Processors, 4/23/09 (nonprecedential equating the
use of the with said); Respironics, 12/16/08
(nonprecedential in a method claim, a step that recites
said or the, referring to an earlier object, does not
always have to be performed after the step that first
introduces the object); See also the
- substantially; essentially (Sunovion, 9/26/13

(essentially free enantiomer drug); Aventis, 5/20/13
(construing using a flexible approach to mean largely
but not wholly where was not amenable to a numerical
boundary in term substantially pure regioisomer as
relating to an intermediate compound not ingested by
anyone citing Ecolab); Presidio Components, 12/19/12
(substantially monolithic capacitor claimed because no
ceramic capacitor can be 100% monolithic); Yorkey II,
4/7/10 (equating terms substantially uncorrelated and
uncorrelated); Enzo Biochem, 3/26/10; Leggett &
Platt, 8/21/08 (district court construed substantially
cure to mean cured to a great extent or almost
completely cured); Aventis Pharma, 9/11/07; Wilson
Sporting Goods, 3/23/06; Medrad, 3/16/05; Playtex,
3/7/05; Deering, 10/17/03); See also In re Eaton,
11/22/13 (nonprecedential essentially free of
639
antioxidants was defined functionally in the patent as
not having reduced effectiveness because of the
presence of antioxidants); Kruse Tech., 10/8/13
(nonprecedential substantially; see also J. Wallach,
dissenting); Kingpak Tech, 12/12/12 (nonprecedential
substantial evidence supported the BPAIs finding that
the prior art reference taught the claimed substantially
aligned limitation)
- Language of approximation vs. language of

magnitude Deering (Enzo Biochem, 3/26/10
(term substantially referring to magnitude was
definite))
- substantially free (Aventis Pharma, 9/11/07 (the

claimed composition of 5(S) ramipril was held,
indirectly, to be ipso facto substantially free
enough of other isomers); Kemin Foods, 9/25/06)
- essentially free (Sunovion, 9/26/13 (no

plain or ordinary meaning to term
essentially free because terms of
approximation are capable of multiple
meanings))
- substantially pure (Aventis, 5/20/13 (holding

that the modifier substantially pure in term
substantially pure regioisomer, when construed
in light of a POS in the art and in view of the
claimed improvements over the prior art, only
applied to regioisomeric impurities, and not all
impurities; see also J. Bryson, dissenting))
- substantially uniform (Medrad, 3/16/05)
- words of approximation generally,

substantially, essentially need not be
construed with mathematical precision (Sunovion,
640
9/26/13 (terms of approximation are capable of
multiple meanings); North American Container,
7/14/05; Playtex, 3/7/05; Liquid Dynamics,
1/23/04 (substantial); Anchor, 8/13/03)
- substantial implies approximate, not

perfect (Aventis, 5/20/13 (citing rule);
- the is a word of limitation (vs. a) (American Calcar,

6/27/11 (district court mistakenly read the word the in
the phrase the option to mean only that option, where
the term instead simply referred back to the prior phrase
an option); NTP, 8/2/05); See also Kruse Tech.,
10/8/13 (nonprecedential construing scope of the);
Tuna Processors, 4/23/09 (nonprecedential ruling that
the use of the in a method claim was the same as
said; also stating that the introduction of a new element
is accomplished through the use of an indefinite article
(a), not through the use of a definite article (the))
- to vs. at (Chef America, 2/20/04)
- to a human in need thereof (Bayer Schering, 4/16/12

(term patient in need thereof meant a patient with a
perceived need for all three effects of a drug claimed
together as a method of use; thus, to practice the claimed
method, a physician must determine that all three effects
are needed, vs. the patent does not claim a method of
achieving a contraceptive effect in a patient in need of
contraception in which the drug used to achieve the
contraceptive effect has two generally beneficial
additional effects); Jansen, 9/8/03)
- whereby clause limiting if part of the invention itself

(Hoffer, 4/22/05)
641
D. Claim Construction Principles
Claim construction - generally
- Claim construction is exclusively within the province of

the court Markman (S.C.) (Uship, 5/8/13; Saffran,
4/4/13) -- which is the reason why the CAFC reviews
issues of claim construction without deference Cybor
(en banc) (BASF Agro, 3/20/13 (nonprecedential)); See
also STANDARDS OF REVIEW AND CHOICE OF
LAW . . . Claim construction
- Claim construction is a matter of resolution of disputed

meanings and technical scope, to clarify and when
necessary to explain what the patentee covered by the
claims, for use in the determination of infringement
(Funai, 9/1/10; Abbott Labs, 10/21/08; O2 Micro, 4/3/08)
- The purpose of claim construction is to determine

the meaning and scope of the patent claims
asserted to be infringed; an actual dispute between
the parties regarding the proper scope of claims, a
Q of law, must be resolved by the court, and not
the jury Markman (en banc) (Every Penny
Counts, 4/30/09 (nothing improper about
interpreting the term sale price within the
patentees proposed construction of the disputed
claim term excess cash, stating that the courts
obligation is to ensure that questions of the scope
of the patent claims are not left to the jury (O2
Micro) and that the court must assign a fixed,
unambiguous, legally operative meaning to the
claim Liquid Dynamics); O2 Micro, 4/3/08
(district court failed to construe the scope of the
disputed term only if because believed the term
had a well-understood meaning capable of being
understood by the jury; as a result, the parties
arguments regarding the meaning and legal
642
significance of the limitation were improperly
submitted to the jury))
- Claim terms, as construed by the court, must

ensure that the jury fully understands the
courts claim construction rulings and what
the patentee covered by the claims Sulzer
Textil (Power-One, 3/30/10 (district courts
construction of term regulator using words
of degree adequately defined the claim
scope))
- A sound claim construction need not always purge

every shred of ambiguity; the resolution of some
line-drawing problems is properly left to the trier
of fact (Power-One, 3/30/10 (rejecting argument
that the district courts construction of term, which
included words of degree (e.g., near), did not
adequately define the claim scope for the jury);
Acumed, 4/12/07)
- Construing a claim there are two limiting factors: what

was invented, and what exactly was claimed (MySpace,
3/2/12 (the CAFC explained: To determine the former
what was invented we look at the entire patent, with
particular attention to the specification (the written
description of the invention and the several claims made).
To determine the latter what exactly was claimed the
focus is on the precise words of the particular claim or
claims at issue; the written description and preferred
embodiments are aids in understanding those words. In
the case before us, proper claim construction requires that
we understand what the invention encompasses as well as
how the claims are stated.))
- Claim scope determination is a Q of law that can be

complex in that it may involve many claim construction
doctrines, and complicated rules (Arlington Indus.,
643
1/20/11 (J. Lourie, dissenting the problem in claim
interpretation is the CAFCs focus on its muddy,
conflicting, and overly formulaic rules citing KSR and
Bilski); Immunocept, 10/15/07 (holding that claim scope
determination was a substantial question of patent law,
and thus the basis for section 1338 jurisdiction))
- All rules of construction must be understood in

terms of the factual situations that produced them,
and applied in fidelity to their origins Modine
(Erbe, 12/9/10)
- No canon of claim construction is absolute in its

application Renishaw (Erbe, 12/9/10 (ruling that
surplusage existed in dependent claim where the
recited limitation was a limitation also of its
independent claim); Decisioning.com, 5/7/08
(stating that surplusage may exist in come claims))
- There is no magic formula or catechism for

conducting claim construction Phillips
(Decisioning.com, 5/7/08)
- In clarifying the meaning of claim terms, courts can use

words not in the claim, as long as the resulting
interpretation accords with the claim language (Abbott
Labs, 10/21/08 (claim construction usually requires use
of words other than the words that are being defined);
Pause Technology, 8/16/05)
- Use of comparative and functional language to

construe and explain a claim term is not improper
a description of what a component does may add
clarity and understanding to the meaning and
scope of the claim the criterion is whether the
explanation aids the court and the jury in
understanding the term as it is used in the claimed
invention (Funai, 9/1/10 (no error in describing the
644
claimed insulating material as a poor electrical
conductor, where evidence that a POS in the art
would understand this description))
- Terms the courts use to enunciate the proper

construction of the claim are not themselves
limitations that require interpretation (E-Pass
Claims define the invention
- Bedrock principle in patent law that claims define the

invention to which the patentee is entitled the right to
exclude Phillips, Innova/Pure Water (Aventis, 5/20/13;
*Retractable Techs., 7/8/11 (C.J. Rader, dissenting
term body was not limited to a one-piece structure,
based on the doctrine of claim differentiation and the
absence of any special definition or disclaimer in the
specification); *Arlington Indus., 1/20/11 (ordinary and
customary meaning of term spring metal adaptor
imposed limitation that the adaptor must be made of
spring metal; see also J. Lourie, dissenting term also
required a split limitation based on the specification);
Spine Solutions, 9/9/10 (term operative engagement
was straightforward and related to permitting movement,
but did not require pivotability); Kara Technology,
9/24/09; Netcraft, 12/9/08 (claim phrase added during
prosecution but not recited in the specification construed
narrowly based on the context of the specification);
Howmedica, 9/2/08 (in a close case, the plain language
of the disputed claim to a knee prosthesis required only
one condyler element to have the claimed feature; see
also J. Prost, dissenting stating that the phrase at least
one condylar element showed that the patentee intended
to place requirements on the knee prosthesiss condylar
element or elements); Oatey, 1/30/08; Warner-Lambert,
9/21/07; Gillespie, 9/6/07; Ormco, 8/24/07; Ventana
645
Medical Systems, 12/29/06; Planet Bingo, 12/13/06;
DSU Medical, 12/13/06; Varco, 2/1/06; Microstrategy,
11/17/05; Callicrate, 10/31/05; Nystrom, 9/14/05; NTP,
8/2/05; Innova/pure water, 8/11/04; Glaxo, 7/27/04); See
also Medegen, 11/20/08 (nonprecedential term plug
was construed broadly according to its ordinary meaning,
where the elastomeric limitation given to the term by the
district court was not in the claim itself, there was no
contention that the ordinary meaning of the term did not
include a rigid plug, or that the term had a special
meaning in the medical field that required elastomericity,
or that there was a clear disclaimer of non-elastomeric
plugs in the specification)
- Words of the claims themselves define the scope

of the patented invention Phillips, Vitronics
(Regents of U. Minn., 6/3/13 (claim language
required the separateness of two disks, reciting that
first and second occluding disks were affixed
together to form a central conjoint disk);
Aventis, 5/20/13; Parallel Networks, 1/16/13
(construing claim scope according to the terms
ordinary meaning based on dictionary definitions);
Technology Patents, 10/17/12 (claim language
itself made clear that it was the receiving users
country, rather than the phone carrier, that was
important to the invention); Sandisk, 10/9/12
(claim language (recording a relative time of
programming) supported broader scope including
both of two method embodiments; see also J.
Reyna, dissenting); General Electric, 7/6/12 (a
possibly broader disclosure accompanied by an
explicit narrow claim shows the inventors
selection of the narrow claim scope, citing Section
112, second paragraph); Chicago Board, 5/7/12
(relying on plain language of claim to construe
term matching and that term was a distinct
process from allocating); Thorner, 2/1/12;
646
Falana, 1/23/12; Atlantic Research, 10/6/11 (plain
words of the claims cannot be ignored); Arlington
Indus., 1/20/11; Laryngeal Mask, 9/21/10 (ruling
improper to add a tube joint limitation to the
claims where none appeared, citing Kara Tech.,
and limitations deleted during prosecution could
not be read back into the claim to avoid
infringement); Rolls-Royce, 5/5/10; Kara
Technology, 9/24/09 (metes and bounds of the
patentees invention); Linear Tech., 5/21/09 (claim
did not recite directly monitoring current);
Abbott Labs, 5/18/09; Computer Docking Station,
3/21/08 (term portable computer construed
narrowly based on disclaimers in the specification
and PH)); See also Ottah, 4/8/13 (nonprecedential
claim was clear on its face, reciting commonly
understood words with widely accepted
meanings); Ernie Ball, 1/24/13 (nonprecedential
noting black letter law that the claims define the
exclusive rights conferred by a patent, and the
validity and infringement of those rights must be
evaluated on a claim by claim basis, where the
parties on appeal improperly generically structured
their arguments in the briefs as if they applied to
the patent as a whole, rather than, as required, to
one or more of its discrete claims citing
Amazon.com and SRI Intl); Zapmedia, 4/25/12
(nonprecedential looking to the claim language
by itself along with the context of the claim as a
whole, which interpretation was supported by a
preferred embodiment in the specification)
- Claims, not the WD or specification

embodiments, define the scope of patent
protection; the patentee is entitled to the full
scope of his claims, and the CAFC will not
limit them to the preferred embodiment or
import a limitation from the specification
647
into the claims Phillips (Toshiba, 6/11/12
(citing Thorner rule); Thorner, 2/1/12 (The
patentee is free to choose a broad term and
expect to obtain the full scope of its plain
and ordinary meaning unless the patentee
explicitly redefines the term or disavows its
full scope); Falana, 1/23/12 (rejecting
construction that would read preferred
temperature independence feature of the
claimed chemical compounds into the claim
citing Teleflex); Arlington Indus., 1/20/11
(n.2 stating that dissenting Judge Louries
opinion that the specification is the heart of
the patent and that you should get what
you disclose devalues the importance of
claim language in delimiting the scope of
legal protection; also citing Markman the
WD itself does not delimit the right to
exclude. That is the function and purpose of
claims); Laryngeal Mask, 9/21/10
(rejecting arguments to limit claims to
features deleted during prosecution and that
the disputed term backplate should be
construed to include the deleted feature);
King, 8/2/10 (affirming anticipation and
rejecting the patentees attempt to link claim
feature to specific conditions disclosed only
in the specification citing Kara
Technology); Trading Techs., 2/25/10; Kara
Technology, 9/24/09 (district court
improperly read key feature into the
claims)); See also Move, 3/22/11
(nonprecedential plain language of claim
was not limiting); Catch Curve, 1/22/10
(nonprecedential claims directed to less
than the full invention were still limited to
the invention described in the specification,
ruling that merely omitting a step in a
648
described process does not perforce expand
the scope of the claim to encompass the use
of devices that are nothing like those
described in the specification as integral to
the invention Abbott Labs)
- Absent other limiting circumstances, a

patentee is entitled to the full breadth
of claim scope, supported by the
words of the claims and written
description TI Group Auto. Sys. (3M
Innovative, 8/6/13 (plain and ordinary
meaning of term continuous contact
supported a broad claim scope - citing
rule))
- Claim reciting separate elements requires

separate structures? Gaus (the clear
implication) (General Electric, 7/6/12 (not
narrowly construing claim terms to require a
specific structural requirement or distinct
circuits citing Linear Tech.); Retractable
Techs., 7/8/11 (claims, specification and PH
indicated that terms retainer member and
needle holder (which were different
syringe components) need not be two
separate pieces citing Linear Tech.);
Becton Dickinson, 7/29/10 (claim reciting as
separate elements spring means and
hinged arm thus required them to be
separate structures, which was also
supported by the specification and there
being nothing in the claims suggesting that
they could be the same structure; see also J.
Gajarsa, dissenting separate claim
elements can read on the same structure in
the accused product))
649
- Claims themselves provide substantial guidance as
to the meaning of particular claim terms Phillips,
Vitronics (American Piledriving, 3/21/11
(considering qualifying languge (connected to)
in construing term); Lazare Kaplan, 12/22/10
(rejecting the district courts too narrow
construction, where the claims did not expressly
preclude manual imaging); Telcordia Techs.,
7/6/10; Trading Techs., 2/25/10; Schindler,
1/15/10 (district court overlooked several
important aspects of the claim language in
incorrectly interpreting the meaning of personal
action); Agilent Techs., 6/4/09 (district court
erred where the claim defined the term closed
chamber as an enclosure explicitly defined by two
surfaces); Abbott Labs, 5/18/09; Tip Systems,
6/18/08 (where the claim expressly state[d] the
requirement of a handle and thus contained a
precise definition of the disputed term handset;
also considering the most natural reading of the
claim language in construing claim phrases
extend out through and extending outward
from a wall as meaning project out from the
wall, as also supported by the specification);
Lucent Techs., 5/8/08 (claim language clearly
required performance of each of the method
steps)); See also Vehicle IP, 1/6/09
(nonprecedential district courts and majoritys
construction of term notification coordinate was
required by the plain language of the claims; see
also J. Mayer, dissenting)
- Claims mean precisely what they say (Warner-

Lambert, 9/21/07; Central Admixture Pharmacy
Services, 4/3/07)
- Claim language itself, as supported by the

specification (and/or PH), rendering the
650
district courts construction correct (Regents
of U. Minn., 6/3/13 (claim language, as
supported by the specification and PH,
required separateness of the recited first and
second occluding disks that were affixed
together to form a central conjoint disk);
Parallel Networks, 1/16/13 (construing
claim terms using dictionary definitions, and
where the specification, including the
summary of the invention, described the
same as the present invention);
Technology Patents, 10/17/12 (claim
language made clear that the pager and the
receiving user were distinct from each
other); Absolute Software, 10/11/11;
American Calcar, 6/27/11; Bid for Position,
4/7/10 (patentees infringement argument
was barred by the claim language when read
in view of the PH); Edwards Lifesciences,
9/22/09 (claimed graft devices were
correctly limited to being intraluminal based
on the claim language itself reciting inside
of a vessel; also, claimed graft devices
were properly limited to having wires
because each claim recited an attachment
(e.g., anchored) that required wires); Ball
Aerosol, 2/9/09 (claims broadly recited that
protrusions used to seat the candle
holder on the cover); Tip Systems, 6/18/08
(disputed term handset required a
handle in the claim); Miken Composites,
2/6/08 (term insert construed according to
its ordinary meaning as something inserted
or intended for insertion); Sitrick, 2/1/08)
- Plain reading of claim limitation supported

broad interpretation - nowhere did the claim
suggest a narrow interpretation (Deere,
651
12/4/12 (claim language itself counseled
against the district courts incorrect narrow
interpretation of term into engagement
with to require direct contact); Kara
Technology, 9/24/09 (plain language of the
claims did not require the key limitation
which the district court improperly imported
from the specification); Linear Tech.,
5/21/09 (no need to limit claim term where
the claim language clearly described the
term); Innogenetics, 1/17/08 (term as was
merely syntactical)); See also Lucky Litter,
10/6/10 (nonprecedential plain language of
claim, in the context of the specification (no
disclaimer) and PH (reissue claim removed
the disputed limitation), supported broad
construction)
- Claim terms ordinary meaning was, most

importantly, most consistent with the claim
language itself (Miken Composites, 2/6/08 (term
insert); Leapfrog Enterprises, 5/9/07)
- Claims themselves provide particular

meaning to claim terms Phillips (Power
Integrations, 3/26/13; Lucent Techs., 5/8/08;
Honeywell, 5/25/07 (claims defined term
adequately without additional limitations
from the specification))
- Claims establish and limit the patentees right to

exclude, by describing the outer boundaries of the
invention Warner-Jenkinson (S.C.) (Ariad,
3/22/10 (en banc); Cias, 9/27/07)
- Boundaries of patented inventions are set

forth in the claims, construed in light of the
description in the specification, as well as
652
the prior art and prosecution history -
Phillips (Eon-Net, 7/29/11; Intamin,
4/18/07; Flex-Rest, 7/13/06; LG Electronics,
7/7/06; Panduit, 6/12/06; Inpro II Licensing,
5/11/06)
- Clear implication of the claim

language, as supported by the
specification (Gaus, 4/1/04)
- Claims define the protection to which the

patentee is entitled thus, embodiments
described in the specification and not
claimed are surrendered/dedicated to the
public (Arlington Indus., 1/20/11 (n.2);
Schoenhaus, 3/15/06)
- Claim language governs claim meaning

examine the plain language of the claim
(Power Integrations, 3/26/13; Parallel
Networks, 1/16/13 (courts reading of the
claim comported with the key terms
ordinary meaning based on their dictionary
definitions); Accent Packaging, 2/4/13
(reversing the district courts construction in
part based on the claim language itself);
Bancorp Services, 7/26/12 (construing
system claims as requiring one or more
computers, where the plain language of the
claims required particular computing
devices, e.g., a generator, a calculator
and digital storage); Toshiba, 6/11/12;
HTC, 1/30/12 (construing claims based on
their plain language, including the position
of modifiers (e.g., including, that),
stating that the district court did not
examine adequately the claims themselves
since the plain language of the claims
653
indicates that the network, not the mobile
station, performs the enumerated
functions); Atlantic Research, 10/6/11
(plain words of the claims cannot be
ignored); Fujitsu, 9/20/10 (rejecting
argument that the district court improperly
modified claim construction where the claim
language expressly required the disputed
limitation for infringement); Pass &
Seymour, 8/27/10 (claims not infringed
where the plain language of the claims
required both contacts to have the recited
limitation, and required a unitary member,
which denotes a single continuous
structure); Ring Plus, 8/6/10 (rejecting the
patentees proposed construction which
conflicted with the required order of claimed
steps); Paragon Solutions, 5/22/09
(instantaneous display was not a possible
meaning of real-time display in light of
the claim language which necessarily
required the passage of time); Ilor, 12/11/08
(claim words based on (rather than based
in part) suggested automatic display of
toolbar; thus rejecting argument that
language was merely a necessary, as
opposed to a sufficient, condition for display
of the toolbar); Warner-Lambert, 9/21/07;
Planet Bingo, 12/13/06); See also In re
Motorola Mobility, 11/12/13
(nonprecedential the plain meaning of
term host required that the host host
something); In re Rehrig Pacific, 1/30/12
(nonprecedential explicit claim language
required that a top frame be a structure
placed on top of a layer of objects, thus
reversing the BPAIs construction that it
merely be capable of being used on top);
654
Joovy, 8/5/11 (nonprecedential rejecting
the patentees construction of term rear
wheels which was contradicted by the
words of the claim itself)
- Correct construction gives full

meaning, effect to every word of the
claim, and the entire claim term
(Aristocrat Techs., 3/13/13; Absolute
Software, 10/11/11; Becton
Dickinson, 7/29/10); plain language
of the claim supported the district
courts construction (Netcraft, 12/9/08
(claims recited that the term
communications link be provided
through equipment of the third
party while the specification
consistently used the term
equipment in reference to
equipment that enables internet
access); Warner-Lambert, 9/21/07);
See also Fifth Generation Computer,
1/26/11 (nonprecedential claims
were construed to give effect to all of
their terms))
- Interpretation of claims rests upon

their language, and does not import
language, i.e., the preferred
embodiment, into the claim (Foremost
in Packaging Systems, 5/2/07)
- Paramount importance to claim

construction is the language of the
claims themselves (E-Pass
655
- Notice function of claims SRI Intl
(Specifications teach, claims claim)
(Arlington Indus., 1/20/11 (n.2 citing
Ariad rule below, and the name of the
game is the claim Judge Giles Rich);
Ariad, 3/22/10 (en banc) (Claims define
and circumscribe, the written description
discloses and teaches); Paragon Solutions,
5/22/09 (reason why improper to construe a
non-functional term in an apparatus claim in
a way that makes direct infringement turn on
use of the apparatus, citing Halliburton);
Halliburton, 1/25/08 (indefiniteness); Bicon,
3/20/06; Golight, 1/20/04; PSC Computer
Prods., 1/20/04); See also Fifth Generation
Computer, 1/26/11 (nonprecedential)
- Purpose of claim is to define the

precise scope of the claimed
invention, provide notice to the PTO
and public after the patent issues
Johnson & Johnston (en banc)
(Haemonetics, 6/2/10; Ariad, 3/22/10
(en banc); Bicon, 3/20/06); See also
Fifth Generation Computer, 1/26/11
(nonprecedential applying rule from
Bicon to construe term root bus
controller based on the express claim
language)
- Patentee is responsible for drafting and prosecuting

the claims
- Claim language, and not attorney argument,

which governs (Pass & Seymour, 8/27/10
(patentee could have written its claim to
read at least one instead of both if it
wanted the claim to read on devices where
656
only one contact met the claim limitations;
also construing claim according to its plain
meaning despite possible claim drafting
error rendering the claim not perfectly
logical; see also J. Newman, dissenting);
Miken Composites, 2/6/08); See also
Courts may not redraft claims
- Functional limitations in claims

(Halliburton, 1/25/08 (demanding that patent
examiners require applicants to resolve
ambiguities in claims during prosecution,
rather than waiting until litigation; the patent
drafter also could have provided more
specifics, examples to show the scope of the
invention to avoid indefiniteness problems));
See also INDEFINITENESS Notice
function of claims
- Means-plus-function claiming (limited to

corresponding structure in the specification
and equivalents, for literal infringement) vs.
structurally claiming elements of the
invention (not typically limited to the
disclosed embodiments, for literal
infringement) (Saffran, 4/4/13 (J. OMalley,
concurring in part: While, had Saffran
chosen not to use a means-plus-function
limitation, I might hesitate to limit the scope
of the release means term, the outcome I
reach today flows from his drafting
choice.); Mettler-Toledo, 2/8/12
(Although generic A/D converters were
known in the art, the patentee chose to use
means-plus-function language which limits
it to the disclosed embodiments and
equivalents); Welker Bearing, 12/15/08
657
(suggesting alternative structural claim
language to means-plus-function claiming))
Claim construction begins with the claims
- Claim construction begins with (and remains focused on)

the language of the claims Vitronics, Phillips (Aria
Diagnostics, 8/9/13 (rejecting the district courts narrow
construction in PI appeal, where the term paternally
inherited nucleic acid of fetal origin did not incorporate
any inherent meaning about the timing or method of its
detection); 3M Innovative, 8/6/13; Power Integrations,
3/26/13; Function Media, 2/13/13 (claim clearly stated
that the processing was done to the electronic
advertisement and not the inputted information, and thus
the ad was created before the processing began); Meyer,
8/15/12; Aventis Pharma, 4/9/12; Marine Polymer,
3/15/12 (en banc); August Tech., 8/22/11 (term wafer
did not include a plurality of wafers where the claim
itself distinguished between a single wafer and multiple
wafers); In re NTP I, 8/1/11; American Piledriving,
3/21/11; Lazare Kaplan, 12/22/10; Akamai Techs.,
12/20/10 [vacated and en banc review granted, on
4/20/11]; Erbe, 12/9/10; Becton Dickinson, 7/29/10
(construing separate claim elements as requiring separate
structures, and stating that claim construction begins
and ends in all cases with the actual words of the claim
Renishaw); Bradford, 4/29/10 (coupled to construed
broadly); i4i, 3/10/10; Ultimax Cement, 12/3/09;
Edwards Lifesciences, 9/22/09; Boston Scientific
Scimed, 1/15/09 (turning to the specification after the
claims provided no insight into the meaning of the term
non-thrombogenic); 800 Adept, 8/29/08; U. Texas,
7/24/08 (claim language by itself provided little guidance
as to the meaning of disputed terms); Cat Tech., 5/28/08
(the appropriate starting point for claim construction is
always with the language of the asserted claim itself -
658
Comark); Lucent Techs., 5/8/08 (claims did not define
the disputed term terminal device so the court looked
to the specification); Stumbo, 11/28/07; Z4
Technologies, 11/16/07; Ormco, 8/24/07 (See D.J.
OMalley, dissenting majority did not begin with the
language of the claims); Pods, 4/27/07; Acumed, 4/12/07;
Amgen, 8/3/06; Abbott Labs, 6/22/06; Old Town Canoe,
5/9/06; Semitool, 4/6/06; Schoenhaus, 3/15/06; Perdue
Pharma, 2/1/06; Norian, 12/6/05; Invitrogen, 11/18/05;
Nystrom, 9/14/05; Biagro, 9/13/05; Network Commerce,
9/8/05; Pause Technology, 8/16/05; Sandisk, 7/8/05;
Gemstar, 9/16/04; TI Group, 6/30/04); See also Cooper
Notification, 8/30/13 (nonprecedential affirming the
district courts construction of system claim based on the
claim language and differences from the language of
method claim; also relying for scope on reexamination
examiners comments regarding the claims, and the
district courts dismissal of the method claims with
prejudice, as well as the patentees promise that it would
never again assert those claims against the defendants;
see also J. Taranto, dissenting limitations given to
system claim did not need to be so restrictive to differ
from the scope of the method claim); Fifth Generation
Computer, 1/26/11 (nonprecedential construing claims
to give effect to all terms); See also Context of the
claims
- Construing claims, a court must begin by looking

to the words of the claims themselves to define the
scope of the patented invention Phillips,
Vitronics (Aventis Pharma, 4/9/12 (not limiting
term perfusion to having an eight-hour stability
limitation where the plain language of the claim
indicated that the term had its ordinary meaning
subject only to other specifically enumerated
limitations); Marine Polymer, 3/15/12 (en banc);
i4i, 3/10/10 (claims plain language did not require
storage is separate files); Edwards Lifesciences,
659
9/22/09; 800 Adept, 8/29/08 (the plain language
of the claims made clear that the assigning step
must occur before a phone call is placed, including
the term potential to describe the callers and the
use of the future tense (will receive calls));
Stumbo, 11/28/07)
- Begin with the usage of claim term in the

claims (Panduit, 6/12/06; Semitool, 4/6/06;
Schoenhaus, 3/15/06)
- Examine the plain meaning of claim

language (3M Innovative, 8/6/13; Fuji Photo
Film, 10/7/04); See also Scantibodies Lab,
5/6/10 (nonprecedential construing claims
narrowly according to the plain language
not detecting); See also MEMS Tech.
Berhad, 6/3/11 (nonprecedential relying on
plain meaning of term electrically coupled
as supported by expert testimony)
- CAFC presumes that the terms in the claim

mean what they say Tate Access Floors
(Power Integrations, 3/26/13)
- Intrinsic evidence examined seriatim Vitronics;

start with the claims; focus is on the claims
(Gillette, 4/29/05; Chimie, 4/11/05; Alza,
12/10/04; Liquid Dynamics, 1/23/04) [Under
Phillips, start with the claims, but the sources
for construing claims otherwise need not be
analyzed in a particular sequence]
- Start with the claims, as they relate to the invention

set forth in the written description, drawings and
PH; the claims ultimately define the invention
(Acumed, 4/12/07; Semitool, 4/6/06; Schoenhaus,
660
3/15/06; Perdue Pharma, 2/1/06; Invitrogen,
11/18/05); See also Context of the claims
- Claim language first examined, which was

narrow and was consistent with the
specification and PH (Norian, 12/6/05)
Claim terms are given their ordinary and customary

meaning
- Claim terms are generally given their ordinary and

customary meaning, as understood by a POS in the art at
the time of the invention, i.e., as of the effective filing
date of the application, and after reviewing the entire
patent, i.e., the intrinsic evidence (including the claims,
specification and PH) provides an objective baseline
from which to begin claim construction - Phillips
(Meadwestvaco, 9/26/13 (affirming the district courts
construction that term quenching means rapidly
cooled in any cooling medium, not just a liquid; also
affirming the district court giving term transparency its
plain meaning based on a dictionary definition, where the
term was not defined in the specification); Sunovion,
9/26/13 (no plain or ordinary meaning to term
essentially free because terms of approximation are
capable of multiple meanings); SkinMedica, 8/23/13;
Taurus IP, 8/9/13 (terms (user) ordinary meaning
cannot be construed in a vacuum where the invention
was described from the viewpoint of a database manager,
and not that of a web surfer); 3M Innovative, 8/6/13
(term ribbon has a customary meaning that is not
subject to specific size requirements, stating that [i]t is
axiomatic that the CAFC will not narrow a claim term
beyond its plain and ordinary meaning unless there is
support for the limitation in the words of the claim, the
specification, or the prosecution history); Douglas
Dynamics, 5/21/13 (reversing the district courts
661
construction and construing term connected to based
on the plain language of the claim and the specification
and figures to include indirectly connected; see also J.
Mayer, dissenting would affirm claim construction and
noninfringement because the term required direct
connection); Aventis, 5/20/13 (reversing the district
courts limiting construction where heavy presumption
that claim terms are to be given their ordinary and
customary meaning, and holding that the modifier
substantially pure in term substantially pure
regioisomer (which was not defined in the claims,
specification or PH), when construed in light of a POS in
the art and in view of the claimed improvements over the
prior art (via expert testimony), only applied to
regioisomeric impurities, and not all impurities; see also
J. Bryson, dissenting); Biogen Idec, 4/16/13; Synqor,
3/13/13; Function Media, 2/13/13; Deere, 12/4/12 (term
engagement consistent with its plain meaning, and in
view of the specification, included indirect contact, and
thus the district court erroneously construed the term
into engagement with to require direct contact between
upper and lower deck walls of rotary mower); Energy
Transportation Group, 10/12/12; Sandisk, 10/9/12;
Medtronic, 9/18/12; Woods, 8/28/12; Meyer, 8/15/12;
Interdigital, 8/1/12; Grober, 7/30/12 (the customary
meaning encompasses the understanding of an artisan of
ordinary skill in the context of the inventive art);
Aventis Pharma, 4/9/12; Marine Polymer, 3/15/12 (en
banc (5-5)) (district court properly looked to the intrinsic
evidence in construing term biocompatible which did
not have a plain and ordinary meaning; see also dissent);
MySpace, 3/2/12; Mettler-Toledo, 2/8/12 (limiting
means-plus-function claims to the preferred and only
embodiment of corresponding structure in the patent);
Thorner, 2/1/12 (words of a claim are read in the context
of the specification and prosecution history - Phillips);
HTC, 1/30/12; IGT, 10/6/11; August Tech., 8/22/11
(term wafer was not also a plurality of wafers); Eon-
662
Net, 7/29/11; Lexion Medical, 4/22/11; American
Piledriving, 3/21/11; Lazare Kaplan, 12/22/10; Erbe,
12/9/10; Astrazeneca, 11/1/10; Laryngeal Mask, 9/21/10;
Fujitsu, 9/20/10; Intervet, 8/4/10 (rejecting the district
courts narrow interpretation of claims to DNA
molecules and ORFs 1-13, based on how a POS in the
art would read the claims more broadly in view of the
representative species and examples in the specification;
see also J. Dyk, dissenting the patentee was a
lexicographer in defining ORFs 1-13); Sun, 7/28/10
(rejecting the patentees arguments for no double
patenting based on the Phillips claim construction
principles); Silicon Graphics, 6/4/10; Haemonetics,
6/2/10; Power-One, 3/30/10; Trading Techs., 2/25/10;
SEB, 2/5/10; Schindler, 1/15/10; Kara Technology,
9/24/09; Callaway, 8/14/09; Wavetronix, 7/29/09;
Agilent Techs., 6/4/09; Epistar, 5/22/09; Felix, 4/10/09
(term mounted based on the claims and specification
meant securely affixed or fastened to); ICU Medical,
3/13/09 (no intrinsic or extrinsic evidence offered to
support the patentees argument that the ordinary
meaning of the term spike included a non-pointed
structure such as a tube or a straw); Kinetic Concepts,
2/2/09 (rejecting broader dictionary definition of term
wound); Sundance, 12/24/08 (n.3, obviousness case);
Netcraft, 12/9/08 (claim phrase added during prosecution
but not recited in the specification construed narrowly
based on the context of the specification in its entirety,
while the PH was unclear); Kyocera Wireless, 10/14/08
(POS in the art reads claim terms in the context of the
intrinsic record); Cohesive Techs., 10/7/08; Voda,
8/18/08; Helmsderfer, 6/4/08 (the ordinary and
customary meaning of the term partially hidden from
view excluded totally hidden from view, based on
dictionary definitions of the word partially); Cat
Tech., 5/28/08 (the term spacing was given its widely
accepted meaning as a commonly understood word,
because the term is used in common parlance and its
663
meaning is not difficult to ascertain); PSN Illinois,
5/6/08 (We determine the ordinary and customary
meaning of [expressly] undefined claim terms as
understood by a [POS] in the art at the time of the
invention, using the methodology in Phillips); Finisar,
4/18/08; Symantec, 4/11/08 (technical dictionary used to
define the ordinary meaning of terms computer and
computer system where the specification did not limit
the terms to single computers, either by expressly
defining or adopting a special definition of the terms, and
otherwise disclosed single computers only as preferred
embodiments of the terms); O2 Micro, 4/3/08 (the
ordinary meaning of the term only if did not resolve
the parties dispute, as claim construction required the
court to determine what claim scope was appropriate in
the context of the patents, citing similar cases, including
Nystrom (construing term board based on the intrinsic
evidence)); MEC, 4/1/08; Computer Docking Station,
3/21/08; Chamberlain Group, 2/19/08; Innogenetics,
1/17/08; Stumbo, 11/28/07; In re Translogic Technology,
10/12/07; L.B. Plastics, 9/12/07; Gillespie, 9/6/07;
Saunders Group, 6/27/07; Leapfrog Enterprises, 5/9/07
(selection or choice); Ortho-McNeil, 1/19/07; Abbott
Labs, 1/5/07; Ventana Medical Systems, 12/29/06;
Abraxis Bioscience, 11/15/06; Aero Products, 10/2/06;
Cook Biotech, 8/18/06; Conoco, 8/17/06; Amgen, 8/3/06;
Pfizer, 8/2/06; LG Electronics, 7/7/06; Primos, 6/14/06;
Old Town Canoe, 5/9/06; On Demand Machine, 3/31/06;
Atofina, 3/23/06; Varco, 2/1/06; NCube, 1/9/06 (dissent);
Pfizer, 11/22/05; Microstrategy, 11/17/05; Sorensen,
10/31/05; Callicrate, 10/31/05; Nystrom, 9/14/05; Biagro,
9/13/05; Network Commerce, 9/8/05; Aquatex, 8/19/05;
Research Plastics, 8/18/05; Collegenet, 8/2/05; NTP,
8/2/05; Sandisk, 7/8/05; Innova/pure water, 8/11/04); See
also Allergan, 1/28/13 (nonprecedential plain meaning
in light of the entire patent, including the claims and
specification, was given to term -N(R4)2 which plainly
encompassed nonidentical R4 substituents); Vehicle IP,
664
1/6/09 (nonprecedential construing claim term
(notification coordinate) narrowly based on the plain
claim language and PH [r]egardless of whether the
district court correctly identified the terms ordinary
meaning; see also J. Mayer, dissenting, giving the term
its quite broad plain ordinary meaning); Aspex
Eyewear, 8/1/08 (nonprecedential stating the rule of
PSN Illinois, 5/6/08, that the court determines the
ordinary and customary meaning of undefined claim
terms as understood by a person of ordinary skill in the
art at the time of the invention, using the methodology in
Phillips)
- The words of a claim are generally given their

ordinary and customary meaning as understood by
a POS in the art when read in the context of the
specification and PH Phillips (SkinMedica,
8/23/13; Taurus IP, 8/9/13; Aventis, 5/20/13;
Uship, 5/8/13; Biogen Idec, 4/16/13 (terms
ordinary meaning must be considered in the
context of the intrinsic evidence, including the
claims, specification, and PH); Sandisk, 10/9/12;
Medtronic, 9/18/12; Toshiba, 6/11/12 (construing
claim broadly enough to read on both single-sided
and double-sided discs; see also J. Dyk,
dissenting); Woods, 8/28/12; Aventis Pharma,
4/9/12; MySpace, 3/2/12; Mettler-Toledo, 2/8/12;
Thorner, 2/1/12); See also Astrazeneca, 10/30/13
(nonprecedential same as Capital Machine);
Capital Machine, 4/15/13 (nonprecedential
stating rule along with the Thorner exceptions as
standard for claim construction on appeal); Walker
Digital, 5/24/12 (nonprecedential construing
claims according to their plain and ordinary
meaning in the context of the specification and PH
(by distinguishing prior art reference) without
reading in limitations, where the specification and
665
claims used the term initiate in slightly different
ways); See also Context of the patent
- Absent lexicography or disclaimer in the

specification or PH, the plain meaning of the
claim language controls Thorner
(Microsoft, 10/3/13 (rejecting plain
meaning argument for term resource state
information because term state was too
general and thus required reviewing the
specification for its meaning, which as a
whole defined the term as referring to the
version of the resource; no mention by the
court of lexicography or disclaimer); Aria
Diagnostics, 8/9/13 (rejecting the district
courts narrow construction based on the
specification, examples and PH, which
certainly [was] not clear lexicography or
disavowal or narrowing in other ways); 3M
Innovative, 8/6/13 (given that a POS in the
art was informed by the claim disclosures, it
was unnecessary to limit the plain language
of term preferential activation zone based
on unclear statements in the specification
and PH citing Thorner); Teva, 7/26/13;
Aventis, 5/20/13 (stating that an
intentional disclaimer is required; also,
stating claim construction rule later in the
case (more generally) that claim terms
should not be given a restrictive
construction unless there is clear evidence to
support it in the intrinsic evidence, or a
broader meaning is specifically disclaimed
during prosecution citing Saunders
Group); Uship, 5/8/13; Medtronic, 9/18/12
(district court improperly appended the
limitation for the treatment of congestive
heart failure onto the ends of the disputed
666
claim terms, which added limitation would
only have been proper if the patentee
specifically defined the terms to include that
limitation, or disavowed their otherwise
broad scope); Woods, 8/28/12 (rejecting the
accused infringers construction to read in
physical and functional limitations from the
specification, ruling that claim terms are
properly construed to include limitations not
otherwise inherent in the term only when
there is lexicography or disavowal in the
specification or PH Thorner; affirming the
district courts construction of terms as
consistent with their plain meaning, while
rejecting that of the accused infringer which
required the court to adopt limitations not
defined in, or required by, the specification);
Interdigital, 8/1/12 (construing term code
according to its plain meaning, where
neither the specification nor the PH
contained a restrictive definition of the term
or a disavowal; see also J. Newman,
dissenting only spreading codes were
supported by the specification, as also
evidenced by inventor and expert
testimony); Toshiba, 6/11/12 (citing
Thorner); Aventis Pharma, 4/9/12 (only the
two exceptions above apply to giving claim
terms their plain and ordinary meaning
citing Thorner: This court recently
reiterated the stringent standard for
narrowing a claim term beyond its plain and
ordinary meaning in Thorner . . .); Thorner,
2/1/12 (ruling that only the two exceptions
above apply to the general rule that claim
terms are generally given their ordinary and
customary meaning as understood by a POS
in the art when read in the context of the
667
specification and PH -- citing Home
Diagnostics rule)); See also Astrazeneca,
10/30/13 (nonprecedential same as Capital
Machine, and stating that the standard for
disavowal of claim scope is exacting, and
that a disclaimer (not specifying PH) must
be clear and unmistakable - Thorner);
Capital Machine, 4/15/13 (nonprecedential
same as Thorner - lexicography and
disclaimer exceptions under Thorner
coupled with the Phillips ordinary and
customary meaning rule above for
construing claims on appeal - see above);
Ernie Ball, 1/24/13 (nonprecedential
construing term sinusoidal according to its
plain and ordinary meaning where there was
no lexicography in the specification, and a
prior art reference cited in the patent
mentioning the term also did not define it)
- Look to the words of the claim itself in

construing a claim term if the claim term
has a plain and ordinary meaning, the
courts inquiry ends Vitronics; however, if
the claim term does not have an ordinary
meaning, and its meaning is not clear from a
plain reading of the claim, the court then
turns to the remaining intrinsic evidence,
including the written description, to aid in
construing the term Telemac Cellular
(Microsoft, 10/3/13 (rejecting plain
meaning argument where term state in
claim term resource state information was
too general and required resorting to the
specification for its meaning); Power
Integrations, 3/26/13 (claims did not inform
a plain and ordinary meaning of the term
frequency variation signal (as supported
668
by expert testimony), and thus the CAFC
turned to the specification to construe term))
- The ordinary and customary meaning of undefined

claim terms as understood by a POS in the art at
the time of the invention is determined using the
methodology in Phillips (U. of Pittsburgh, 7/23/09)
the court looks to those sources available to the
public that show what a person of skill in the art
would have understood disputed claim language to
mean. Those sources include the words of the
claims themselves, the remainder of the
specification, the prosecution history, and the
extrinsic evidence concerning relevant scientific
principles, the meaning of technical terms, and the
state of the art Phillips; see below (Gemtron,
7/20/09; Paragon Solutions, 5/22/09; Felix,
4/10/09; Cohesive Techs., 10/7/08; PSN Illinois,
5/6/08)
Ordinary and customary meaning is determined in

view of the specification
- Because claim terms are generally given their

ordinary and customary meaning, which is the
meaning that the term would have to a POS in the
art in question, claims therefore must be read in
view of the specification of which they are a part -
Phillips (SkinMedica, 8/23/13; Accent Packaging,
2/4/13; Thorner, 2/1/12; Spine Solutions, 9/9/10;
Trading Techs., 2/25/10; Schindler, 1/15/10;
Netcraft, 12/9/08; Kyocera Wireless, 10/14/08;
Decisioning.com, 5/7/08 (features of the invention
further indicated to the skilled artisan that the term
remote interface did not include a consumer-
owned personal computer); Symantec, 4/11/08
(embodiments in specification not limiting of
669
terms computer and computer system);
Innogenetics, 1/17/08; Stumbo, 11/28/07; In re
Translogic Technology, 10/12/07 (looking to the
words of the claim coupled with the
specification))
- Claim term given its ordinary meaning,

which was consistent with the specification
and, most importantly, the claim language
itself (Apple, 8/7/13 (claim terms
(mathematically fitting an ellipse) plain
meaning was supported by the specification
and PH); Schindler, 1/15/10; Kyocera
Wireless, 10/14/08; Miken Composites,
2/6/08 (term insert given its ordinary
meaning as something inserted or intended
for insertion); L.B. Plastics, 9/12/07;
Gillespie, 9/6/07; Leapfrog Enterprises,
5/9/07)
- When no ordinary and customary meaning

for claim term, construe the term only as
broadly as provided by the patent itself
(Marine Polymer, 3/15/12 (en banc) (district
court properly relied on the intrinsic
evidence after being faced with widely
varying proposed definitions from the
parties of the term biocompatible and not
finding that the term had a plain and
ordinary meaning); Immunomedics,
6/23/04)
- Claim terms are entitled to a heavy presumption

that they carry their ordinary and customary
meaning to those skilled in the art in light of the
claim terms usage in the specification
Superguide, Omega Engg (SkinMedica, 8/23/13
(J. Rader, dissenting heavy presumption in
670
favor of the ordinary meaning of claim language);
Plantronics, 7/31/13 (reason why a PH disclaimer
must be clear and unmistakable); Aventis, 5/20/13;
Epistar, 5/22/09 (why PH disclaimer must be
express); Elbex Video, 11/28/07 (presumption
rebutted by PH disclaimer))
- Heavy presumption of ordinary and

customary meaning to a POS in the art is
considered in the context of the intrinsic
evidence consults intrinsic evidence first,
and dictionaries for common understanding
(Unitherm Food Systems, 7/12/04; W.E.
Hall, 6/7/04; Housey, 5/7/04; Superguide,
2/12/04)
Ordinary and customary meaning is determined at

the time of the invention
- Claim term cannot have different meanings at

different times; meaning must be interpreted as of
the effective filing date objective test = what a
POS in the art would have understood the term to
mean (Voda, 8/18/08; PC Connector Solutions,
5/6/05); See also Sanofi-Aventis, 3/22/12
(nonprecedential regardless of the meaning of
term plasmid in other contexts and at other
times, the terms meaning in the patent was as of
the effective filing date in 1984)
Claim term as a commonly understood word
- Claim term that not only bears one of its ordinary

meanings, but is a straightforward name for an
everyday object (Cat Tech., 5/28/08 (spacing);
E-Pass Technologies, 1/12/07 (card); Network
671
Commerce, 9/8/05 (term download component
had no commonly understood meaning reflected in
dictionaries or other sources)); See also Medegen,
11/20/08 (nonprecedential term plug); See also
Extrinsic evidence Dictionaries
- Claim term as a commonly understood word

- in some cases, the ordinary meaning of
claim language as understood by a POS in
the art may be readily apparent even to lay
judges, and claim construction in such cases
involves little more than the application of
the widely accepted meaning of commonly
understood words - Phillips (Retractable
Techs., 7/8/11 (C.J. Rader, dissenting term
body was not limited to a one-piece body,
based on rule); Cat Tech., 5/28/08 (using
dictionaries to define the term spacing);
O2 Micro, 4/3/08 (adding that in many
cases, the meaning of a claim term (only
if) as understood by a POS in the art is not
readily apparent); MEC, 4/1/08 (not a case
where the ordinary meaning would have
been readily apparent even to lay judges);
Honeywell, 5/25/07 (claimed signals were
improperly limited to numerical or
instantaneous values); Acumed, 4/12/07
(curved)); See also Ottah, 4/8/13
(nonprecedential district court properly
determined that the claim consists of
commonly understood words, such as a
book holder, for removable attachment,
a clasp, and an arm, and thus it was
appropriate for the court to apply these
terms widely accepted meanings citing
Phillips); Joy, 11/8/12 (nonprecedential
construing term indentations according to
commonly accepted meaning that does not
672
include a hole, based on general purpose
dictionary definitions, as excluding holes for
purposes of DOE); Boss Indus., 5/28/09
(nonprecedential although the term
adjacent is a commonly understood word,
the court still looks to the intrinsic evidence
for the proper construction, as the ordinary
meaning of a claim term is its meaning to
the ordinary artisan after reading the entire
patent Phillips)
- Claim term having functional attributes, i.e. a

structural component possessing certain
understood characteristics, e.g., filter, brake,
clamp, screwdriver, lock (Miken Composites,
2/6/08 (term insert given ordinary meaning as
something inserted or intended for insertion))
- Claim term having common meaning need not be

supported by a dictionary definition (Laryngeal
Mask, 9/21/10 (adopting the plain meaning of term
backplate although no dictionary or treatise
definition was introduced, stating (in n.3): We
will not adopt a categorical rule that absence of a
dictionary definition means that the applicant must
be held to have acted as his own lexicographer and
is therefore constrained to the preferred
embodiment))
Claim term having particular meaning in the art
- Claim term otherwise defined by what was known

in the art at the time of the invention (MIT,
9/13/06)
- Construing claim term by the terms particular

meaning in a field of art - Phillips (Cheese
673
Systems, 8/6/13 (term horizontal in the cheese
vat art permitted some degree of incline); Intervet,
8/4/10 (rejecting argument that term specific to
had a specialized definition, where the term was
instead used in a colloquial or non-technical
sense); Cat Tech., 5/28/08 (the record contained no
persuasive evidence that the term spacing had a
specially defined meaning in the patents field of
art, and thus the terms ordinary and customary
meaning involve[d] little more than the
application of the widely accepted meaning of
commonly understood words - Phillips); Network
Commerce, 9/8/05 (term download component
had no particular meaning in the art, and thus was
construed narrowly based on the specification))
- Technical claim terms have the meaning

understood by persons knowledgeable in the field
of the invention and the prior art; technical term
cannot be removed from its context described in
the specification, but limitations discussed in the
specification may not be read into the claims (3M
Innovative, 8/6/13 (citing Phillips rule from
Intervet below); Interdigital, 8/1/12 (J. Newman,
dissenting disagreeing with the majoritys broad
construction of the term code as not limited to a
spreading code, opining that a technical term is
construed in accordance with its description and
enablement in the patent; it cannot be construed
more broadly in a claim, than its description in the
specification); MySpace, 3/2/12 (term database
was not limited to a relational database based on
the specification, stating that the written
description is the best source for understanding
the technical meaning of a claim term); Intervet,
8/4/10 (Idiosyncratic language, highly technical
terms, or terms coined by the inventor are best
understood by reference to the specification
674
(Phillips) and the PH, if in evidence); Symantec,
4/11/08 (ordinary meaning of terms computer
and computer system determined based on
technical dictionary where the specifications
disclosure of a single computer was not limiting);
Tivo, 1/31/08 (context of software term object in
the specification considered, along with expert
testimony); Norian, 4/6/04); See also In re
Transaction Holdings, 4/23/12 (nonprecedential
plain language of claim term as term of art)
- When dealing with technical claim terms, a

court should look to the words of the claims
themselves, the remainder of the
specification, the PH, and extrinsic evidence
concerning relevant scientific principles, the
meaning of technical terms, and the state of
the art Phillips (Amgen, 8/3/06
(therapeutically effective amount))
Claim term used in the specification and/or

prosecution history in a manner inconsistent with its
ordinary and customary meaning
- Claim term used in the specification and/or PH in a

manner inconsistent with its ordinary meaning in
a manner either more or less expansive than its
general usage in the relevant community (Aventis,
5/20/13 (stating claim construction rule generally
that claim terms should not be given a restrictive
construction unless there is clear evidence to
support it in the intrinsic evidence, or a broader
meaning is specifically disclaimed during
prosecution citing Saunders Group); Aventis
Pharma, 4/9/12 (term perfusion was given its
ordinary meaning (thus not including an eight-hour
stability limitation) where there was no disclaimer
675
or lexicography, as required by Thorner); Thorner,
2/1/12 (term attached (to mean attached only to
the exterior and not interior) did not meet either of
the only two exceptions to the general rule that
claim terms are generally given their ordinary and
customary meaning: 1) patentee as lexicographer,
and 2) disavowal in the specification or PH, and
ruling that both exceptions require a clear and
explicit statement by the patentee); Tip Systems,
6/18/08 (finding no support in the specification for
defining the disputed term handset contrary to its
express definition in the claim requiring a
handle); Cat Tech., 5/28/08 (always necessary
under Vitronics to review the specification to
determine whether claim terms are used in a
manner inconsistent with their ordinary meaning;
nothing in the specification described or suggested
the patentees strained construction); Zenith
Electronics, 4/16/08 (nothing in the patents
claims, written description or PH suggested a
narrowing of the disputed terms (operating
power) ordinary meaning to avoid SJ of
anticipation based on a prior public use);
Symantec, 4/11/08 (terms computer and
computer system were not limited by the
specification, which did not expressly define or
adopt a special definition of the terms; ordinary
meaning of terms thus provided by technical
dictionary); Chamberlain Group, 2/19/08
(specification restricted the meaning of claim term
(binary code) to a narrower meaning than its
broader ordinary and customary meaning found in
a technical dictionary and relied on by the district
court; the district courts construction of term was
internally inconsistent and contradictory to the
patent); Saunders Group, 6/27/07; Conoco,
8/17/06; Sorensen, 10/31/05; Biagro, 9/13/05 (at
least one had narrower interpretation than its
676
ordinary and customary meaning); Collegenet,
8/2/05); See also Smartmetric, 4/11/12
(nonprecedential affirming plain and ordinary
meaning of phrase insertion of said data card into
said data card reader as not including passing the
card near the reader and thus inserting the card into
the readers electromagnetic field, stating that a
terms plain and ordinary meaning is subject to
only two exceptions, disavowal and lexicography -
Thorner); Scantibodies Lab, 5/6/10
(nonprecedential construing the term not
detecting narrowly, stating that the inventors
could have chosen a term with broader meaning
or have assigned the term a unique definition
different than its ordinary meaning by clearly
expressing that intent in the written description);
See also Lexicographer rule; Disclaimer in the
specification; and Disclaimer during
prosecution
- Attorney argument during the PH must

specify what intended to alter the ordinary
meaning of claim language (Biagro,
9/13/05)
- Broadening of the ordinary meaning of a

term must be supported by the intrinsic
evidence the patentee must provide
explicit or implicit notice in the written
description and/or PH that the inventor
intended the disputed term to cover more
than the ordinary and customary meaning
revealed by the context of the intrinsic
record - Nystrom (Bayer Cropscience, 9/3/13
(where the patentees proposed broad
functional construction would require
stripping the disputed phrase of the
scientifically accepted descriptive meaning
677
of the term monooxygenase, the CAFC
stating that adopting the patentees position
we think, would require that the 401
patent, or its history, make reasonably clear
that the patentee was not using the term in
its established descriptive sense citing (as
see, e.g.,) Abbott Labs but the patent and
its PH did not clearly indicate that the patent
used the disputed language without its
accepted scientific descriptive meaning);
Power Integrations, 3/26/13 (rejecting
argument for broad construction of term
frequency variation signal based on a
dictionary definition, stating that [u]nless
the inventor intended a term to cover more
than the ordinary and customary meaning
revealed by the context of the intrinsic
record, it is improper to read the term to
encompass a broader definition simply
because it may be found in a dictionary,
treatise, or other extrinsic source. citing
Nystrom (emphasis in the original));
Telcordia Techs., 7/6/10 (statements during
the PH cannot enlarge the content of the
specification); Rolls-Royce, 5/5/10 (PH does
not alter claim construction based on the
specification rule applied twice); Kinetic
Concepts, 2/2/09 (construing the term
wound narrowly based on the context of
the specification, citing Nystrom); Netcraft,
12/9/08 (CAFC suggesting that the patentee
could have revealed a broader construction
based on the PH when the specification
clearly supported a narrow claim scope?);
Miken Composites, 2/6/08 (patentee
provided no evidence to suggest that the
term insert in the context of the patent had
a particular meaning differing from the
678
ordinary and customary meaning in the field
of art, citing Nystrom and Phillips);
Honeywell, 6/22/06; Old Town Canoe,
5/9/06; Nystrom, 9/14/05 (term board
construed as a board cut from logs, thus
excluding the accused synthetic board)); See
also Southern Mills, 5/14/10
(nonprecedential rejecting an
unelaborated reference in the specification
to broaden the meaning of the term 3-end
knit)
- Patentee did not confirm broader

scope of claims during prosecution
broad and vague statement in the
PH cannot contradict a clear
statement in the specification
describing the invention more
narrowly - where no other
embodiment disclosed or suggested,
and when the written description
clearly identifies what invention is
(i.e., the invention is . . .),
statement(s) in the PH that broader
claim scope intended is entitled to
little weight (Akamai Techs.,
12/20/10 (even if the patentee had
broadened the claim scope during the
PH, it was not enough to overcome
the clear description of the invention
in the specification citing
Honeywell, Biogen) [vacated and en
banc review granted, on 4/20/11];
Telcordia Techs., 7/6/10 (statements
during the PH cannot enlarge the
content of the specification); Rolls-
Royce, 5/5/10; Edwards Lifesciences,
9/22/09 (agreeing with the defendant
679
that the PH did not affect the narrow
claim interpretation of the term
graft based on the specification);
Netcraft, 12/9/08 (ruling that the PH
was unclear for supporting the
patentees proposed broad
construction, while the specification
clearly supported the district courts
narrow construction); Honeywell,
6/22/06 (term fuel injection system
component limited by the
specification to a fuel filter)); See also
Lydall, 9/8/09 (nonprecedential
(despite the patentees efforts during
prosecution of the reissue patent to
enlarge the claims beyond what the
specification disclosed) limiting the
term fibrous batt of fibers to single
embodiment of the invention having
three layers, based on Biogen
(Representations during prosecution
cannot enlarge the content of the
specification) and Phillips (the
specification (the best source for
understanding a technical term) is to
be supplemented, as needed by the
PH), ruling that when the
prosecution history appears in conflict
with the specification, any ambiguity
must be resolved in favor of the
specification); Purechoice, 6/1/09
(nonprecedential rejecting the
patentees argument based on a single
statement during prosecution that the
term air quality included
temperature and other meteorological
attributes of the air, stating: We are .
. . unconvinced that the scant
680
appearance of meteorological
attributes in the hundreds of pages of
specification and prosecution history
would inform a person of ordinary
skill that air quality extends beyond
contaminants and pollutants, when
weighed against references to the
latter attributes found throughout the
specification and prosecution
history)
- Effect of prior art references see Prior art

is intrinsic evidence
- [Pre-Phillips (en banc) rule, the Texas

Digital rule, i.e., construing term based on
dictionary definition before consulting the
specification, was rejected by Phillips
but the Home Diagnostics (2004) rule
below (the second part of the rejected rule
Nos. 1 and 2) is still applied post-
Phillips] Presumption of ordinary and
customary meaning (i.e., based on dictionary
definition, or other source) is overcome by
showing: 1) a clear disavowal of claim
scope in the specification, PH, or both, or 2)
a contrary definition in the specification or
PH, i.e., lexicography (Toshiba, 6/11/12
(claim terms are given their plain meaning
in view of the specification, if no disclaimer
or lexicography Thorner; see also J. Dyk,
dissenting arriving at a narrower claim
construction than the majority (and also
different from the parties) based on the
specification and PH); Aventis Pharma,
4/9/12 (only the above two exceptions to
giving terms their plain and ordinary
meaning citing Thorner: This court
681
recently reiterated the stringent standard for
narrowing a claim term beyond its plain and
ordinary meaning in Thorner . . .); Thorner,
2/1/12 (only the above two exceptions to the
general rule that claim terms are generally
given their ordinary and customary meaning
as understood by a POS in the art when read
in the context of the specification and PH --
citing Home Diagnostics rule); August
Tech., 8/22/11 (applying Home Diagnostics
rule); Martek Biosciences, 9/3/09 (applying
rule from Home Diagnostics (2004):
Absent a clear disclaimer or contrary
definition in the specification or the
prosecution history, the patentee is entitled
to the full scope of its claim language);
Prima Tek II, 6/22/05; Boss Control, 6/8/05;
Gemstar, 9/16/04; Home Diagnostics,
8/31/04 (absent the above, the patentee is
entitled to the full scope of its claim
language); Novartis, 7/8/04 (or show claim
lacks clarity, in view of the specification);
Nystrom, 6/28/04 [withdrawn by later
post-Phillips decision]; Housey, 5/7/04);
See also MEMS Tech. Berhad, 6/3/11
(nonprecedential accused infringer failed
to rebut the heavy presumption in favor of
the ordinary meaning of the term
electrically coupled as supported by
expert testimony); Move, 3/22/11
(nonprecedential nothing in the
specification limited the meaning of term
database citing Home Diagnostics);
Sanofi-Aventis, 9/10/09 (nonprecedential
applying the Home Diagnostics rule as the
requirement for limiting the plain language
of a claim term)
682
- Claim terms used in the specification
or PH inconsistent with their
ordinary meaning and usage, but
cannot read limitations into claims
(Chamberlain Group, 2/19/08
(applying the Renishaw rule, and thus
not improperly reading limitations
into the claim); Liquid Dynamics,
1/23/04; Resqnet.com, 10/16/03;
Genzyme, 10/9/03)
- Claim term can be assigned a

narrower scope only if there is
some indication in the patent or
the PH that the term was meant
to have a more restrictive
meaning as used in the patent
or a broad meaning was
disclaimed during prosecution
Phillips, Honeywell, SciMed
(Saunders Group, 6/27/07
(pneumatic cylinder not
limited by the specification or
PH))
- Plain and ordinary meaning

applied unless clear intent to
deviate, clear disavowal of
claim scope (SkinMedica,
8/23/13; Aventis Pharma,
4/9/12 (no disclaimer where
nothing in the specification
indicated that a minimum
stability of eight hours is an
essential feature of the claimed
perfusion or an advantage of
the perfusion over the prior art
citing Liebel-Flarsheim,
683
which distinguished cases
where the court narrowly
construed an otherwise broad
claim term); Thorner, 2/1/12
(any disclaimer must be clear
and unmistakable (citing no
cases in support); also citing
Home Diagnostics); Linear
Tech., 5/21/09 (citing Home
Diagnostics); Bilstad, 10/7/04;
Fuji Photo Film, 10/7/04;
Home Diagnostics, 8/31/04;
Mars, 7/29/04; Novartis, 7/8/04
(or unclear claim term);
Nystrom, 6/28/04 [withdrawn
by later post-Phillips
decision]; Superguide, 2/12/04)
- Situations in which a claim term does

not receive its ordinary and customary
meaning 6 listed lexicographer;
distinguish invention from a prior art
reference; disclaimer; highlight
feature as important; or ambiguous
term requiring resort to intrinsic
evidence (W.E. Hall, 6/7/04)
- CAFC will adopt an alternative

meaning to a terms ordinary
meaning when the patentee
acted as his own lexicographer
and clearly set forth a definition
of the disputed claim term in
either the specification or
prosecution history or if the
intrinsic evidence shows that
the patentee distinguished that
term from prior art on the basis
684
of a particular embodiment,
expressly disclaimed subject
matter, or described a particular
embodiment as important to the
invention CSS Fitness
(2002) (Edwards Lifesciences,
9/22/09); See also
Lexicographer rule
Claim construction sources
- To ascertain the scope and meaning of the asserted

claims, the CAFC looks to the words of the claims
themselves, the specification, the PH, and lastly (if
necessary), any relevant extrinsic evidence Phillips
(TecSec, 10/2/13; Trading Techs., 8/30/13 (comparing
and contrasting claim construction and the written
description requirement, which despite their similarities
are separate issues that serve distinct purposes where
claim construction focuses on defining a claim term in
view of the specification to ascertain the claim
boundaries, while the written description inquiry
considers the bounds of the specification itself);
Plantronics, 7/31/13 (reversing the district courts narrow
construction of broadly claimed headset ear piece
limiting terms to a particular structure being elongated
and longer than it is wide by importing a limitation,
preferred embodiment from the specification into the
claim citing Kara Tech.); Power Integrations, 3/26/13;
Aristocrat Techs., 3/13/13; Meyer, 8/15/12; 01
Communique Lab, 7/31/12; In re Baxter, 5/17/12;
Chicago Board, 5/7/12); See also Speedtrack, 4/16/13
(nonprecedential CAFC not considering the patentees
references to extrinsic evidence when the intrinsic
evidence provided sufficient guidance for construing the
disputed term citing Chicago Board)
685
- Court looks to those sources available to the public that
show what a POS in the art would have understood
disputed claim language, term(s) to mean: the intrinsic
evidence the claim language itself, the specification,
and the PH, if in evidence - Phillips (Sunovion, 9/26/13
(courts first look to, and primarily rely on, the intrinsic
evidence, . . . which is usually dispositive citing
Phillips, Vitronics); Aristocrat Techs., 3/13/13; Powell,
11/14/11; Absolute Software, 10/11/11; Atlantic
Research, 10/6/11; Cordis, 9/28/11; Eon-Net, 7/29/11;
Retractable Techs., 7/8/11; American Piledriving,
3/21/11; Lazare Kaplan, 12/22/10 (broad construction
including automated or manual feedback was supported
by the claims, specification, and PH); Erbe, 12/9/10;
Power-One, 3/30/10; i4i, 3/10/10; Schindler, 1/15/10;
Netcraft, 12/9/08 (the district court must consider the PH,
if in evidence, along with the specification in construing
disputed claim terms); Cohesive Techs., 10/7/08; U.
Texas, 7/24/08 (specification and PH relied on heavily);
Cat Tech., 5/28/08 (the intrinsic evidence required the
district courts construction of a spacing); Lucent
Techs., 5/8/08; Finisar, 4/18/08; MEC, 4/1/08 (referring
to the indisputable public records consisting of the
claims, the specification and the prosecution history
Phillips); Computer Docking Station, 3/21/08 (term
portable computer construed narrowly based on
disclaimers in the specification and PH); Chamberlain
Group, 2/19/08 (intrinsic evidence is a more reliable
guide to the meaning of a claim term than are extrinsic
sources); Oatey, 1/30/08; Innogenetics, 1/17/08; Cias,
9/27/07; Young, 6/27/07 (indefiniteness); Warner-
Lambert, 9/21/07 (district courts construction of claim
terms was correct based on the intrinsic evidence); MBO
Labs, 1/24/07; Depuy Spine, 11/20/06; Aero Products,
10/2/06; Flex-Rest, 7/13/06); AS WELL AS any relevant
extrinsic evidence, including evidence concerning
relevant scientific principles, the meaning of technical
terms, and the state of the art, e.g., expert and inventor
686
testimony, dictionaries, learned treatises (Power
Integrations, 3/26/13 (district courts are authorized to
rely on extrinsic evidence [w]here the intrinsic record is
ambiguous, and when necessary); Aristocrat Techs.,
3/13/13 (although extrinsic evidence was unnecessary to
construe claim, the CAFC noting that its construction
was consistent with dictionary definitions submitted by
the parties); In re Baxter, 5/17/12; Chicago Board,
5/7/12; Powell, 11/14/11; Absolute Software, 10/11/11;
Atlantic Research, 10/6/11; Eon-Net, 7/29/11;
Retractable Techs., 7/8/11; American Piledriving,
3/21/11; Lazare Kaplan, 12/22/10; Schindler, 1/15/10
(focusing on the claim language, the specification, and
the PH, where the parties did not rely on any extrinsic
evidence); Wavetronix, 7/29/09 (relying on expert
testimony and dictionary definitions (both general
reference and technical dictionaries) for construing term
probability density function estimation); Paragon
Solutions, 5/22/09 (intrinsic evidence supported
construction of separate structures for term data
acquisition unit); Felix, 4/10/09 (proposed broad
definition of mounted from dictionary was improper);
Netcraft, 12/9/08 (n.3: defendants interest in patents in
suit was insufficient to overcome narrow construction
based on the intrinsic evidence); Cohesive Techs.,
10/7/08 (sources include extrinsic evidence concerning
relevant scientific principles, the meaning of technical
terms, and the state of the art Phillips); Voda, 8/18/08
(extrinsic evidence concerning relevant scientific
principles, the meaning of technical terms, and the state
of the art, citing Phillips); Tip Systems, 6/18/08; MEC,
4/1/08 (extrinsic evidence also supported the meaning of
term pipeline stage, consistent with the terms ordinary
meaning in the computer arts, based on treatise); L.B.
Plastics, 9/12/07; Ortho-McNeil, 1/19/07; Abbott Labs,
1/5/07; Conoco, 8/17/06; Primos, 6/14/06); See also
MEMS Tech. Berhad, 6/3/11 (nonprecedential relying
on expert testimony of term electrically coupled being
687
quite broad and the accused infringer failing to rebut
the heavy presumption of the terms ordinary meaning
as understood by a POS in the art); See also Extrinsic
evidence
- Sources include extrinsic evidence concerning

relevant scientific principles, the meaning of
technical terms, and the state of the art Phillips
(Wavetronix, 7/29/09; Felix, 4/10/09; Cohesive
Techs., 10/7/08)
- [W]hile helpful, extrinsic sources like dictionaries

and expert testimony cannot overcome more
persuasive intrinsic evidence Phillips (Kara
Technology, 9/24/09; Netcraft, 12/9/08 (extrinsic
evidence is less significant than the intrinsic
record Phillips); Finisar, 4/18/08); See also
Extrinsic evidence
Appropriate weight must be attached to the sources
- Court must attach appropriate weight to these

sources (Voda, 8/18/08 (intrinsic sources are the
most relevant); Finisar, 4/18/08 (claims,
specification and PH (the intrinsic evidence) are
the primary resources); MEC, 4/1/08 (the sources
should be accorded relative weights depending on
the circumstances of the case, with intrinsic
sources being the most relevant); the sequence of
steps in consulting the sources is not important -
Phillips (Old Town Canoe, 5/9/06; Atofina,
3/23/06; Nystrom, 9/14/05; Research Plastics,
8/18/05; Tap Pharmaceutical, 8/18/05; Terlep,
8/16/05; NTP, 8/2/05)
- Different weights are placed on the sources (under

Phillips); the most relevant source is the
688
specification, followed by the PH, and then the
extrinsic evidence, which is less significant than
the intrinsic record in determining the legally
operative meaning of claim language - Phillips
(HTC, 1/30/12 (claims and specification carried
greater weight than the attorneys statement in the
PH); Kara Technology, 9/24/09; Ortho-McNeil,
3/31/08 (extrinsic evidence (dictionary) is less
significant than the intrinsic record in defining the
term and); MBO Labs, 1/24/07); See also
Extrinsic evidence
- When construing claims, the intrinsic

evidence and particularly the claim language
are the primary resources (Kara Technology,
9/24/09 (discounting testimony of dueling
experts regarding claim construction))
Claim construction sources - generally
Claim language
- The words of patent claims have the meaning and

scope with which they are used in the specification
and PH (Bancorp Services, 7/26/12 (computer-
readable medium claims construed based on the
specification); Absolute Software, 10/11/11;
Retractable Techs., 7/8/11 (limiting the meaning
and scope of the term body to a one-piece
structure based on the specification, including the
summarys description of the invention and the
patents distinguishing prior art syringes composed
of multiple pieces; see also C.J. Rader, dissenting
the ordinary meaning of the term body does not
require a one-piece structure); Kyocera Wireless,
10/14/08 (emphasis on context); MEC, 4/1/08
(after the claims, turn to the specification,
informed, as needed, by the prosecution history
689
Phillips; PH consulted to resolve the ambiguity
of the specification in which the ordinary
meaning of term pipeline stage was not
discernable); Chamberlain Group, 2/19/08
(specification restricted the meaning of claim term
(binary code)); Ormco, 8/24/07; MBO Labs,
1/24/07 (specification and PH clearly indicated
the focus, or essential feature, of the invention))
- Claims are construed to implement the

invention described in the specification and
PH, within the confines of the prior art (Bass
Pro Trademarks, 4/6/07 (claims construed as
limited to claim feature in the preamble
stressed during PH)
- Claims construed based on the usage of term

within the patent (when not a term of art)
whether limitation inherent in the
specification; consider the clear purpose
of the term in the specification (Osram
GMBH, 10/31/07 (ITC erred by using art-
specific method for measuring claim term,
mean grain diameter; purpose of invention
considered); Honeywell, 5/25/07)
- Patent claims are construed as they would be

understood by persons experienced in the
field of the invention, on review of the
patentees description of the invention in the
specification and the PH - Phillips (Kyocera
Wireless, 10/14/08; Osram GMBH,
10/31/07; Cias, 9/27/07)
Intrinsic evidence - generally
690
- Focus is on the intrinsic evidence (claims,
specification (including figures), and PH) the
meaning of a claim term must be consistent with
the specification - Phillips (Sunovion, 9/26/13;
SkinMedica, 8/23/13; Retractable Techs., 7/8/11;
Paragon Solutions, 5/22/09 (several examples of
using the specification to construe terms); Kyocera
Wireless, 10/14/08 (meaning of term different);
Lucent Techs., 5/8/08; Chamberlain Group,
2/19/08 (intrinsic evidence is more reliable than
extrinsic evidence); Ormco, 8/24/07; Primos,
6/14/06)
- Focus is on how the patentee used the claim

term in the claims, specification, and PH,
rather than starting with a broad definition
and whittling it down (Every Penny Counts,
4/30/09; Panduit, 6/12/06; Dorel Juvenile
Group, 11/7/05 (J. Newman, dissenting))
- Express claim language, as supported

by the specification (including
figures), as the basis for construction
(Motionless Keyboard, 5/29/07); See
also Imagecube, 6/20/11
(nonprecedential district court
correctly construed the term
components to exclude
metallurgical phases of a single alloy
where both the claims and the
specification made clear that the
claimed homogenizing step must
result in the formation of an alloy
between components A and B)
- Intrinsic evidence (i.e., the claims, the written

description, and the PH) is a more reliable guide to
the meaning of a claim term than are extrinsic
691
sources like technical dictionaries, treatises, and
expert testimony Phillips (SkinMedica, 8/23/13;
Kara Technology, 9/24/09 (discounting testimony
of dueling experts, since the intrinsic evidence
and particularly the claim language are the primary
resources for construing claims); Netcraft,
12/9/08 (n.3: defendants interest in patents in suit
was insufficient to overcome narrow construction
based on the specification); Ortho-McNeil, 3/31/08
(although not needed, extrinsic evidence
(dictionary definition) supported the correct
meaning of the term and); Chamberlain Group,
2/19/08 (term given a narrower meaning than
technical dictionary definition based on the
specification)); See also Extrinsic evidence
Prosecution history
- Meaning of the claim language is informed, as

needed, by the prosecution history Pass &
Seymour (3M Innovative, 8/6/13)
- Prosecution history can often inform the meaning

of the claim language by demonstrating how the
inventor (and the PTO) understood the invention -
Phillips (Sunovion, 9/26/13 (affirming the district
courts construction of term essentially free
based on repeated and consistent statements in the
PH by the patentee regarding the terms meaning
as supported by a patent example (including in an
inventors declaration), where the specification did
not define the term, stating that the PH may be
critical in interpreting disputed claim terms
because contains the complete record of the PTO
proceedings, including any express representations
made by the applicant regarding claim scope
citing Vitronics, and that the definition of a claim
692
term can be affected through repeated and
definitive remarks in the PH citing Computer
Docking Station; also appropriate to rely on the
record in interference proceedings in construing
claim terms); Aventis, 5/20/13; Advanced Fiber,
4/3/12 (district court correctly relied on the
patentees definition of claim term set forth during
the PH); AIA Engg, 8/31/11; Hynix, 5/13/11;
Arlington Indus., 1/20/11 (claim amendment made
in PH of continuation patent omitting limiting
language supported broad construction for the
diputed claim and term); Bradford, 4/29/10;
Trading Techs., 2/25/10; Schindler, 1/15/10
(modifying the scope of the district courts PH
disclaimer); Ultimax Cement, 12/3/09; Edwards
Lifesciences, 9/22/09; Abbott Labs, 5/18/09;
Boston Scientific Scimed, 1/15/09 (rejecting based
on the PH the accused infringers construction of
the term non-thrombogenic as requiring a
comparison to a bare metal stent); 800 Adept,
8/29/08 (distinguishing a prosecution disclaimer
from the Phillips rule, which as applied to the
patentees repeated characterizations of the
invention in the PH supported the claim
construction already discerned from the claim
language and specification); Cat Tech., 5/28/08
(PH provided clear support for construing the
phrase a spacing to mean all spacing between
adjacent plates); MEC, 4/1/08 (amendments during
PH made clear the inventors intent regarding
terms meaning, where the specification did not;
interpretation also supported by statements made
during the PH of parent application); Cordis,
1/7/08 (no disclaimer or PHE where statements
during the PH merely explained, in more explicit
terms, what the claims already covered) AND
whether the inventor limited the invention in the
course of prosecution, making the claim scope
693
narrower than it would otherwise be Phillips,
Vitronics (Plantronics, 7/31/13 (no PH disclaimer
limiting terms to being elongated based on the
patentees election of species in restriction
requirement); Biogen Idec, 4/16/13 (PH disclaimer
from scope of term anti-CD20 antibody; see also
J. Plager, dissenting); Advanced Fiber, 4/3/12;
Erbe, 12/9/10; Solvay, 10/13/10 (construing term
keep in the reactor narrowly based on
distinguishing prior art in the PH, despite possible
broader description in the specification); Trading
Techs., 2/25/10; Abbott Labs, 5/18/09; U. Texas,
7/24/08 (provides perfect application of this rule);
Regents of U. Cal., 2/28/08; Ormco, 8/24/07; Aero
Products, 10/2/06); See also Icon Health & Fitness,
10/24/12 (nonprecedential citing the examiners
understanding in the reasons for allowance of why
the claims were novel over the prior art, as support
for the CAFCs construction); St. Clair, 1/10/11
(nonprecedential construing term computer
apparatus narrowly as referring to computer
architecture, based on the inventors describing the
problem to be solved (a long felt need) as one of
computer architecture incompatibility - only by
construing the term in this way could the court
remain faithful to the invention actually described
in the [PH]; see also J. Moore, dissenting); Lucky
Litter, 10/6/10 (nonprecedential construing
reissue claim broadly based on its plain language
after the patentee removed the improperly added
cat exit limitation during reissue prosecution); See
also Disclaimer during prosecution
- Construing terms added by amendment -

while at times the PH lacks the clarity of
other intrinsic sources, the PH may be given
substantial weight in construing a term
where that term was added by amendment
694
Jansen (Comaper, 3/1/10 (construing the
term slot in drive bay slot added by
amendment to overcome prior art in
accordance with the meaning of slot in the
prior art reference); U. Texas, 7/24/08
(adding disputed term (syllabic element)
to independent claim and canceling
dependent claims to overcome anticipation
rejection, coupled with an explanation of the
disputed term, supported narrow
construction; also, another claim limitation
(each) added in an examiners amendment
for purpose of allowance to overcome an
indefiniteness problem distinguished the
claim over a prior art reference)); See also
Cartner, 6/17/09 (nonprecedential giving
substantial weight to the PH to construe the
term constantly operative based on
highly explanatory statements and
amendments made in the PH in adding the
term to overcome prior art)
- PH statements cannot be used to add an

entirely new limitation to the claim
Serrano, Markman (Regents of U. Minn.,
6/3/13)
Dominance of the specification in claim construction
- Claims must be read in view of the specification,

of which they are a part Phillips, Markman
(SkinMedica, 8/23/13; Function Media, 2/13/13;
Accent Packaging, 2/4/13; Sandisk, 10/9/12
(reading the claims in light of the specification, the
district court erred in excluding one of two
disclosed method embodiments from the claim
scope; see also J. Reyna, dissenting); Meyer,
695
8/15/12; Highmark, 8/7/12 (claim construction was
not objectively unreasonable to support
exceptional case finding); Advanced Fiber, 4/3/12
(A patent is a fully integrated written instrument .
. . and the specification necessarily informs the
proper construction of the claims Phillips);
MySpace, 3/2/12 (CAFC ruling that proper claim
construction requires that we understand what the
invention encompasses as well as how the claims
are stated); HTC, 1/30/12 (reversing construction,
stating that the district court should have referred
to the specification to understand the claims);
CBT Flint Partners, 8/10/11 (claim not indefinite
where error was correctable based on the
specification); Eon-Net, 7/29/11; *Retractable
Techs., 7/8/11 (rejecting ordinary meaning of term
body in independent claim as not limited to a
one-piece body, despite dependent claim reciting a
one piece body, where the specification limited
body to a one-piece body, including defining
the invention as having a one piece hollow
body in the summary of the invention,
distinguishing prior art syringes composed of
multiple pieces, and expressly stating and showing
in the figures that each syringe embodiment
contained a one-piece body; see also C.J. Rader,
dissenting); American Calcar, 6/27/11; Wellman,
4/29/11 (claims not indefinite as term was
construed based on the specification, including the
figures); Hologic, 2/24/11 (term asymmetry
meant with respect to a longitudinal axis, based on
what the specification made clear and what the
inventors contemplated as their invention);
*Arlington Indus., 1/20/11 (highlighting the claims
vs. the specification for determining the proper
scope of the invention; see also J. Lourie,
dissenting specification consistently described
term as requiring a split limitation); Lazare
696
Kaplan, 12/22/10; Spine Solutions, 9/9/10; Ring
Plus, 8/6/10 (supported the correct construction
based on the claim language); Bradford, 4/29/10;
Pressure Products, 3/24/10; Trading Techs.,
2/25/10; Schindler, 1/15/10; Ultimax Cement,
12/3/09; Edwards Lifesciences, 9/22/09; U. of
Pittsburgh, 7/23/09; Paragon Solutions, 5/22/09
(term data acquisition unit read in light of the
specification, including the figures, was not limited
to a single structure; term real-time data also
construed based on the specification as including
the passage of time, and thus not meaning
instantaneous); Erbe Elektromedizin, 5/19/09
(claims reference to optical means in the
working channel meant movable, not fixed,
optics, in view of the figures showing fixed optics
as distinct from the working channels); Abbott
Labs, 5/18/09 (claim to a crystalline compound
was limited to Crystal A, where the exclusive
focus in the specification and during the PH was
on Crystal A); Ball Aerosol, 2/9/09 (figures
supported broad meaning of phrase to seat);
Boston Scientific Scimed, 1/15/09 (discerning
what term non-thrombogenic both meant and
didnt mean); Praxair, 9/29/08; Voda, 8/18/08
(distinguishing specification disclaimers from
improperly importing limitations from the
specification into the claims); Mangosoft, 5/14/08
(construction of technical term local supported
by the summary of the invention);
Decisioning.com, 5/7/08 ([d]ivorced from the
specification, the term remote interface would
have a broader meaning than understood based on
the specification); Lucent Techs., 5/8/08 (Abstract,
summary of the invention, and detailed description
examined in determining that the specification did
not support the district courts narrow construction
of the term terminal device); Symantec, 4/11/08
697
(specification not limiting of terms computer and
computer system); Oatey, 1/30/08; Innogenetics,
1/17/08; Stumbo, 11/28/07 (specification
inherently required (by using the word must)
slit-like shape for a claimed opening); In re
Translogic Technology, 10/12/07; Warner-
Lambert, 9/21/07 (summary of the invention
supported constuction); Gillespie, 9/6/07; Ormco,
8/24/07 (claim limitation was a primary objective
of the present invention, relying on both the
specification and PH in limiting claim scope)); See
also Context of the patent; See also Catch
Curve, 1/22/10 (nonprecedential limiting terms
fax message and fax communication to the fax
format existing at the time of the invention, as
described in the specification, and thus excluding
transmitting faxes by other later used formats);
Luma, 4/10/08 (nonprecedential On balance
the specification supported the district courts
narrow claim construction)
- Specification is interpreted in light of the

knowledge of a POS in the art (Aventis,
5/20/13 (in construing term substantially
pure, a POS in the art would recognize that
the purity of an intermediate compound in a
reaction is not equivalent to the purity of the
end product))
- Specification is always highly relevant to the claim

construction analysis; usually, it is dispositive, the
single best guide to the meaning of a disputed
claim term Phillips, Vitronics (Trading Techs.,
8/30/13 (comparing and contrasting claim
construction and the written description
requirement, and the reliance on the specification
for both); SkinMedica, 8/23/13; Regents of U.
Minn., 6/3/13 (specification supported the
698
separateness requirement of the claimed first and
second disks, where never taught an embodiment
constructed as a single piece); Aventis, 5/20/13
(specification is the best source for construing a
claim term and determining the inventors intent
regarding use rejecting the district courts one
construction throughout the patent for construing
term substantially pure used in different contexts
in the specification, but in only one context in the
claims); Power Integrations, 3/26/13; Accent
Packaging, 2/4/13 (reversing the district courts
narrow construction that excluded the preferred
and only embodiment, despite claim language
supporting the district courts construction);
Arcelormittal France, 11/30/12 (rejecting extrinsic
evidence of a terms (hot-rolled steel sheet)
ordinary meaning in the industry as referring to
steel sheet that has not been cold-rolled, where the
specification made clear that the term did not
preclude a cold-rolling step); In re Abbott Diabetes
Care, 9/28/12 (rejecting the BPAIs unreasonable
broadest reasonable claim construction in an ex
parte reexam); Meyer, 8/15/12; MySpace, 3/2/12
(the written description is the best source for
understanding the technical meaning of a claim
term); Atlantic Research, 10/6/11 (construing
added reissue patent claims as covering only
subject matter disclosed in the specification by
importing a limitation would eviscerate the plain
meaning of the claim language and ignore
substantive differences between claims);
Markem-Imaje, 9/9/11 (J. Newman, dissenting
arguing that the specification shows what the
inventor actually invented, and rejecting the
majoritys construction not including within the
claim a feature described consistently in the
specification as part of the invention: Where the
specification clearly and consistently sets the scope
699
of a disputed claim, that scope governs the
construction of the claim); AIA Engg, 8/31/11
(applying lexicographer rule); Eon-Net, 7/29/11
(the specifications use of a claim term usually is
dispositive); Wellman, 4/29/11 (construing claim
term in indefiniteness case); American Piledriving,
3/21/11 (construing term narrowly based on the
invention as a whole described in the
specification); Lazare Kaplan, 12/22/10
(specification supported broader claim
construction (including both automated and
manual feedback derived from optical images of a
gemstone) than the district courts construction
limited to automated feedback); Laryngeal Mask,
9/21/10; Spine Solutions, 9/9/10; General Protecht
Group, 8/27/10; Ring Plus, 8/6/10; Telcordia
Techs., 7/6/10; Silicon Graphics, 6/4/10; Pressure
Products, 3/24/10; Trading Techs., 2/25/10;
Schindler, 1/15/10; U. of Pittsburgh, 7/23/09;
Agilent Techs., 6/4/09; Epistar, 5/22/09; Erbe
Elektromedizin, 5/19/09 (rejecting the patentees
contention that fixed optics constituted a working
channel in an endoscope, which was inconsistent
with the figures in the specification showing a
fixed optics installation not labeled as a working
channel, stating that the CAFC generally does not
construe claim language to be inconsistent with the
clear language of the specification, as usually, it is
dispositive); Abbott Labs, 5/18/09; Kinetic
Concepts, 2/2/09 (construing the term wound
narrowly, stating that to include fistulae and pus
pockets in the prior art references would expand
the scope of the claims far beyond anything
described in the specification; see also J. Dyk,
dissenting the majoritys narrow construction of
the term to mean a skin wound improperly
imported limitations from the examples and the
specification into the claims); Kyocera Wireless,
700
10/14/08 (meaning of term different based on
the context provided by the specification and
claims); Praxair, 9/29/08 (construing claim in
accordance with the fundamental object of the
invention described in the specification (which was
to prevent the uncontrolled discharge of hazardous
gases)); Symantec, 4/11/08 (ordinary meaning of
terms computer and computer system
determined based on technical dictionary where
the specifications disclosure of a single computer
was not limiting) Computer Docking Station,
3/21/08 (disclaimers); Chamberlain Group,
2/19/08 (specification restricted the meaning of
claim term (binary code) from its customary and
ordinary meaning); Innogenetics, 1/17/08;
Sinorgchem, 12/21/07 (lexicography rule applied);
Stumbo, 11/28/07; In re Translogic Technology,
10/12/07; Mitutoyo, 9/5/07; SafeTCare Mfg.,
8/3/07; Honeywell, 7/3/07; MBO Labs, 1/24/07;
Abbott Labs, 1/5/07; Ventana Medical Systems,
12/29/06 (dissent); Abraxis Bioscience, 11/15/06;
Aero Products, 10/2/06; Kim, 9/20/06; Pfizer,
8/2/06; Abbott Labs, 6/22/06; Honeywell, 6/22/06;
Semitool, 4/6/06; Curtiss-Wright Flow Control,
2/15/06; NCube, 1/9/06 (dissent); Terlep, 8/16/05;
Boss Control, 6/8/05); See also Context of the
patent
- Abstract used to construe claim (Boston

Scientific Scimed, 1/15/09; Ilor, 12/11/08
(abstract supported noninfringed
construction); Netcraft, 12/9/08 (narrow
construction supported by the abstract, even
though originally written for narrower
claims); Praxair, 9/29/08 (also described the
overall object of the invention); 800 Adept,
8/29/08 (As summarized in the abstract, the
patents made clear that the assigning step
701
was completed before phone call was made;
confirmed construction based on the claim
language); Lucent Techs., 5/8/08 (Abstract
did not support the district courts narrow
construction of term terminal device; see
also dissent, J. Lourie); Cross Medical
Prods., 9/30/05); See also Jang, 8/22/12
(nonprecedential term signal point
limited based on the Abstract and Summary
of the Invention requiring two dimensions);
St. Clair, 1/10/11 (nonprecedential use of
the words still and image throughout the
patents in suit, including the title, the
Abstract, and the Summary of the Invention,
limited the claims to a single image or
picture, and thus excluded movies); Seiko
Epson, 5/20/10 (nonprecedential abstract
relied on to construe term cooling air to
mean fresh air)
- Background of the invention relied on to

construe claim term (MySpace, 3/2/12 (term
database encompassed any of the various
kinds of databases known in the art); In re
NTP I, 8/1/11 (background provided
definition and insight into the understanding
of the POS in the art at the time of invention
as to the meaning of term electronic mail))
- Summary of the invention is not wholly

dispositive in limiting the ordinary meaning
of claim terms; such language must be read
in the context of the entire specification and
PH (Advanced Software Design, 6/2/11
(portions of summary of invention were
interpreted as directed to embodiments of
the invention, rather than the invention as a
whole); Netcraft, 12/9/08 (summary of the
702
invention narrowly described the present
invention as requiring providing customers
with internet access); MBO Labs, 1/24/07
(summary of the invention described the
present invention narrowly, which was
consistent with the entire specification and
PH)); See also Jang, 8/22/12
(nonprecedential term signal point
limited based on the Abstract and Summary
of the Invention requiring two dimensions);
MEMS Tech. Berhad, 6/3/11
(nonprecedential distinguishing C.R. Bard
and rejecting narrow construction for term
volume based on the above rule, even
though the abstract and summary of the
invention described the term narrowly,
where the general language in the abstract
and summary sections d[id] not represent the
full scope of the embodiments in the
specification); Medegen, 11/20/08
(nonprecedential term plug given its
broad ordinary meaning where the summary
of the invention described the plug entirely
in general terms)
- In accord with an aspect of the

invention what does this mean?
(Mangosoft, 5/14/08 (not opining
whether aspect means only one
embodiment of the invention, instead
holding that the claims covered only
this aspect citing Verizon n.8);
Lucent Techs., 5/8/08 (term means
not necessarily required in all
embodiments of the invention)); See
also Warsaw Orthopedic, 1/26/11
(nonprecedential specification
described various aspects of the
703
invention in sufficiently general terms
to embrace devices that embody the
concept of the invention but were not
identical to the single preferred
embodiment described in detail);
Uniloc USA, 8/7/08 (nonprecedential
split decision different
interpretations of for example as
meaning non-limiting, or limited to
the same type as the listed examples)
- Summary of the invention supporting

the terms construction (Parallel
Networks, 1/16/13 (courts
construction was confirmed by the
summary of the invention, describing
the same as the present invention);
MySpace, 3/2/12 (supported broad
construction of term database);
Eon-Net, 7/29/11 (narrow
construction where defined the
invention narrowly); Retractable
Techs., 7/8/11 (narrowly construing
the term body as being one piece
based on the summarys description
of the invention as having a one
piece hollow body; see also C.J.
Rader, dissenting); American Calcar,
6/27/11 (supporting narrow
construction); Hologic, 2/24/11
(supported narrow construction of
term asymmetry as meaning with
respect to a longitudinal axis); Lazare
Kaplan, 12/22/10 (supported broad
construction); Akamai Techs.,
12/20/10 (supported narrow
construction) [vacated and en banc
review granted, on 4/20/11];
704
Netcraft, 12/9/08 (narrow
construction); Mangosoft, 5/14/08;
Warner-Lambert, 9/21/07); See also
Warsaw Orthopedic, 1/26/11
(nonprecedential describing various
aspects of the invention supported
claim terms ordinary, broad
meaning); Marctec, 8/4/10
(nonprecedential supporting narrow
construction); Seiko Epson, 5/20/10
(nonprecedential supporting the
CAFCs construction of the term
cooling air to mean fresh air);
Nazomi, 2/21/08 (nonprecedential
construing claim term based on the
Summary of the Invention and
Background of the Invention sections)
- Summary of the invention vs. description of

preferred embodiments (Lucent Techs.,
5/8/08 (summary of the invention and
preferred embodiment did not support the
district courts narrow construction of term
terminal device; see also J. Lourie,
dissenting); PSN Illinois, 5/6/08 (when read
in the context of the claim language and
specification, the district court erred in
construing the term ready for mounting
too narrowly based on the description of a
preferred embodiment rather than the
broader description of the summary of the
invention)); See also Medegen, 11/20/08
(nonprecedential ruling that the summary
of the invention described the disputed term
plug broadly, and the elastomeric plugs
described consistently throughout the
detailed description were merely examples,
705
or preferred embodiments of the claimed
plug)
- Claims need not cover all

embodiments (in the summary of the
invention), where some embodiments
may be within the scope of other (e.g.,
broader) allowed but unasserted
claims, or cancelled claims, which
provide probative evidence that an
embodiment is not within the scope of
an asserted claim (PSN Illinois,
5/6/08); See also Construction which
excludes (preferred) embodiment(s) . .
. is rarely, if ever, correct
- Claims are read in view of the full

specification and the specification as a
whole (Eon-Net, 7/29/11 (narrow
construction); American Piledriving, 3/21/11
(limiting construction of term based on the
specifications description of the invention
as a whole - a statement in the specification
that describes the invention as a whole can
support a limiting construction of a claim
term); SEB, 2/5/10 (construing completely
free limitation in light of the entire
specification, including the preferred
embodiment, which repeatedly highlighted
the inventiveness of eliminating thermal
bridges); Praxair, 9/29/08 (claims construed
based on the overall object of the invention);
Pfizer, 11/22/05)
- Claims and specification should be

read in a manner that renders the
patent internally consistent Pfizer
(Arcelormittal France, 11/30/12
706
(district courts construction of term
hot-rolled steel sheet as excluding
cold-rolling was directly contradicted
by the specification describing the
inventions purpose as including the
production of cold-rolled steel
sheet))
- Claim term with no previous, customary

meaning to a POS in the art look to the
specification (Honeywell, 5/25/07; Mymail,
2/20/07; Network Commerce, 9/8/05 (term
download component had no particular
meaning in the art, and thus was construed
narrowly based on the specification); On-
Line Technologies, 10/13/04; Irdeto Access,
9/14/04; Novartis, 7/8/04); See also
Context of the patent
- Claim term having no previous

meaning to a POS in the art
meaning must be found in the
specification, and interpreted only as
broad as the specification (Irdeto
Access, 9/14/04)
- Coined term, without meaning apart

from the patent look to the
specification for meaning (Intervet,
8/4/10; Mymail, 2/20/07)
- Disclosed embodiments to interpret claim

meaning use of embodiments (including
preferred embodiments) in the specification
to interpret the meaning of claims (Regents
of U. Minn., 6/3/13; MySpace, 3/2/12
(interpreting term database broadly based
on preferred embodiments, and affirming
707
invalidity based on anticipation and/or
obviousness, ruling that the written
description and preferred embodiments are
aids in understanding the words of a claim,
and that proper claim construction requires
that the court understand what the
invention encompasses as well as how the
claims are stated); Praxair, 9/29/08; Lucent
Techs., 5/8/08; Mitutoyo, 9/5/07
(specification expressly supported the
district courts broad construction); North
American Container, 7/14/05); See also
Roche Diagnostics, 1/25/12
(nonprecedential remanding to determine
whether examples that were only in a related
patent were relevant to construction of the
same term in both patents); Stone Strong,
10/17/11 (nonprecedential preferred
embodiment (size of alignment features)
along with object of the invention
(alignment) relied on to construe term
alignment device); Purechoice, 6/1/09
(nonprecedential term air quality meant,
based on the preferred embodiments, the
amount of contaminants and pollutants in
air, and not temperature, humidity or other
meteorological attributes of the air); Uniloc
USA, 8/7/08 (nonprecedential C.J. Michel,
dissenting acknowledging that claims may
be broader than the preferred embodiments,
but stating that the patentees choice of
preferred embodiments can shed light on the
intended scope of the claims - Astrazeneca)
- Preferred embodiment also must be

viewed in the context of the rest of the
specification (Lucent Techs., 5/8/08
(preferred embodiment did not
708
support narrow construction of term
when viewed in the context of the rest
of the detailed description))
- Explanation of scientific theory in the

specification (AK Steel, 9/23/03)
- Specification not relied on in the abstract

description must be relevant to the claimed
invention (Mymail, 2/20/07; LG Electronics,
7/7/06)
- Divisional applications portions of

the specification relating to claims of
a separate divisional application
should not be limiting LG
Electronics (Verizon, 9/26/07, C.J.
Michel, dissenting)
- Specification is the primary reference for testing

the scope of claim language, how an invention
would be understood by persons experienced in the
field - Phillips (Arlington Indus., 1/20/11
(supported construction of term spring metal
adaptor as an adaptor made of spring metal; see
also J. Lourie, dissenting); Every Penny Counts,
4/30/09 (specification strongly supported the
district courts construction of the disputed term
excess cash in the context of the claim); Kyocera
Wireless, 10/14/08 (meaning of the term
different); Osram GMBH, 10/31/07 (method for
measuring claim term, mean grain diameter);
Ormco, 8/24/07; On Demand Machine, 3/31/06;
Smithkline Beecham, 2/24/06 (dissent); Dorel
Juvenile Group, 11/7/05); See also Context of the
patent
709
- Claim construction that stays true to the
claim language and most naturally aligns
with the patents description of the invention
will be, in the end, the correct construction
Phillips, Renishaw (Power Integrations,
3/26/13; General Electric, 7/6/12 (affirming
construction of term predetermined value
as meaning a value of current or a proxy for
current, also citing Linear Tech.); Lexion
Medical, 4/22/11 (claim term (within 2C
of the predetermined temperature) properly
construed by reading limitations together, as
also supported by the specification); Every
Penny Counts, 4/30/09 (specification
revealed what the disputed term (excess
cash) meant in the context of the claim);
Praxair, 9/29/08 (claim term (flow
restrictor) limited based on the
specification to the overall object of the
invention, to prevent a hazardous release of
gas, citing Ormco, Alloc); Chamberlain
Group, 2/19/08 (claim term (binary code)
restricted to a narrower meaning by the
specification); Ormco, 8/24/07; Honeywell,
7/3/07; Flex-Rest, 7/13/06; Old Town
Canoe, 5/9/06; On Demand Machine,
3/31/06; NCube, 1/9/06 (dissent)); See also
- Claim terms are construed in accordance

with their usage in the specification, and as
elaborated in the PH - Phillips (Edwards
Lifesciences, 11/13/12 (agreeing that the
district courts construction of cylindrical
comported with the specification, which had
rejected a narrower construction importing
geometric limitations into the term from the
figures))
710
- Dominance of the specification in
understanding the scope and defining the
limits of the terms used in the claims
(Parallel Networks, 1/16/13 (rejecting the
patentees argument (relying on seemingly
broad term associated with) claiming that
a limitation that featured so critically in the
patent was not, in fact, a part of the
invention); Arlington Indus., 1/20/11 (J.
Lourie, dissenting construing term spring
metal adaptor to require a split limitation,
because the specification is the heart of the
patent and you should get what you
disclose; also opining that the problem in
claim interpretation is the CAFCs focus on
its muddy, conflicting, and overly
formulaic rules, . . . when the real task of
claim interpretation is to read the
specification and determine what the
inventors meant when they used the
language they did . . . The bottom line of
claim construction should be that the claims
should not mean more than what the
specification indicates, in one way or
another, the inventors invented citing
KSR and Bilski);); Blackboard, 7/27/09
(close examination of the specification
made clear that a single login limitation
was not present in the asserted patent
claims); Old Town Canoe, 5/9/06 (claimed
completion of coalescence understood based
on the specification to mean nothing other
than reaching an optimum stage); On
Demand Machine, 3/31/06 (term sales
information required based on the
specification and PH the inclusion of
promotional information))
711
- Specification must describe and
enable the invention, and thus, the
claims cannot be of broader scope
than the invention set forth in the
specification (ICU Medical, 3/13/09;
On Demand Machine, 3/31/06)
- Scope and outer boundary of claims is set by

the patentees description of the invention
(CLS Bank, 7/9/12 (district courts
construing method claims to require
computer-implementation was consistent
with the specification) [vacated and en
banc review granted on 10/9/12]; Markem-
Imaje, 9/9/11 (J. Newman, dissenting:
Where a limitation is placed in a claim by
the specification, the claim must be
construed to include the limitation);
Arlington Indus., 1/20/11 (J. Lourie,
dissenting you should get what you
disclose); Old Town Canoe, 5/9/06; On
Demand Machine, 3/31/06); See also Catch
Curve, 1/22/10 (nonprecedential claims
not directed to the full invention were still
limited to the invention described in the
specification)
- Specification necessarily informs the

proper construction of claims and thus it is
appropriate for a court to rely heavily on
the written description for guidance as to the
meaning of the claims - Phillips
(SkinMedica, 8/23/13; ICU Medical,
download component construed narrowly
based on the specification))
712
- Tests/assays in the specification for
measuring claim feature (Invitrogen,
11/18/05)
Specification containing claim term definitions
- Specification as a dictionary for claim terms,

when it defines claim terms expressly or by
implication Phillips, Vitronics
(Meadwestvaco, 9/26/13 (no special
definition of term transparency in the
specification, which instead described an
embodiment of a dip tube); SkinMedica,
8/23/13; Power Integrations, 3/26/13 (term
frequency variation signal construed
according to an implicit limitation in the
specification); Arcelormittal France,
11/30/12 (despite not defining the term
very high mechanical resistance, the
specification implied that 1500 MPa level
was necessary for high mechanical
resistance, and thus very high resistance
must be at least 1500 MPa; see also J.
Wallach, dissenting); In re Abbott Diabetes
Care, 9/28/12 (applying rule as the basis for
an implicit disclaimer of criticized prior art
embodiments of glucose monitoring devices
citing Iredeto Access); Meyer, 8/15/12;
Advanced Fiber, 4/3/12 (construing non-
claim term (perforated) within the district
courts construction of a disputed claim
term, relying on Edwards Lifesciences);
Thorner, 2/1/12 (rejecting an implied
redefinition of claim term (attached),
stating that an implied redefinition must
be so clear that it equates to an explicit
one); Arlington Indus., 1/20/11 (rejecting
713
implicit split limitation in term spring
metal adaptor citing Irdeto Access and
SciMed; see also J. Lourie, dissenting);
Akamai Techs., 12/20/10 (the written
description can provide guidance as to the
meaning of the claims, thereby dictating the
manner in which the claims are to be
construed, even if the guidance is not
provided in explicit definitional format
SciMed) [vacated and en banc review
granted, on 4/20/11]; Trading Techs.,
2/25/10 (specification expressly defined the
term static in a limiting way); SEB, 2/5/10
(claim limitation completely used
interchangeably with practically in the
specification); Edwards Lifesciences,
9/22/09 (defining malleable limitation
read into the claim (i.e., was not recited as a
claim term) as not resilient to any substantial
extent, which definition overrided any
ordinary meaning of malleable that might
allow for substantial resilience); Martek
Biosciences, 9/3/09 (explicit definition of
term animal which included a human
controlled the claim construction; see also J.
Lourie and J. Rader, dissenting);
Wavetronix, 7/29/09 (specification was not
helpful where its references to term PDFE
were not entirely consistent and it did not
expressly define the term); Linear Tech.,
5/21/09 (defining term expressly); Sd-
Chemie, 1/30/09 (term compatible
polymeric materials, expressly defined as
having consistent softening points, was an
important difference from prior art patent
disclosing the same classes of polymeric
materials); PSN Illinois, 5/6/08 (using the
methodology in Phillips to determine the
714
ordinary and customary meaning of
[explicitly] undefined claim terms);
Symantec, 4/11/08 (specification did not
expressly define or adopt a special definition
for terms computer or computer
system); Sinorgchem, 12/21/07
(lexicography rule applied); Honeywell,
7/3/07 (implicit; rule applied to the
patentees lexicography); Schoenhaus,
3/15/06; Boss Control, 6/8/05; Chimie,
4/11/05; ASM America, 3/16/05; Irdeto
Access, 9/14/04; Novartis, 7/8/04 (by
implication); Vanderlande Indus., 5/3/04);
See also Southern Mills, 5/14/10
(nonprecedential specification was
distinctly definitional as opposed to
describing a preferred embodiment of the
term 3-end knit); Amazin Raisins Intl,
10/31/08 (nonprecedential specification
defined term dried fruit narrowly by
implication to have specific range of
moisture content, including in the first
paragraph before describing preferred
embodiments or examples); See also
Lexicographer rule
- Claim term definition(s) provided in

the specification (Trading Techs.,
2/25/10; Martek Biosciences, 9/3/09;
Linear Tech., 5/21/09; Pfizer,
11/22/05)
- Limitation read into the claim

defined in the specification
(Trading Techs., 2/25/10;
Edwards Lifesciences, 9/22/09
(district court correctly
construed claimed wires based
715
on the specification as being
malleable, followed by defining
malleable based on definition in
the specification))
- Construing claim term based on term

i.e., in the specification
(SkinMedica, 8/23/13 (giving i.e. its
plain meaning in beads (i.e, two-
dimensions) (accompanied by the
consistent use of i.e. throughout the
specification, and considering the
context of the patent as a whole) as
excluding beads from the claimed
three-dimensional culturing citing
the Edwards rule, and distinguishing
Toshiba (i.e. at issue with respect to
PH disclaimer), Dealertrack, and
Pfizer); Dealertrack, 1/20/12 (i.e.
was not used definitionally, in the
context of the patent, with respect to
the term routing which was used as
a generic term the most natural
reading of i.e. was as exemplary,
based on the patent as a whole and to
maintain internal consistency in the
patent Pfizer); Edwards
Lifesciences, 9/22/09 (specifications
use of i.e. signals an intent to define
the word to which it refers
(malleable)); Pfizer, 11/22/05)
- Definition of claim term in the

specification ordinarily controls
(Advanced Fiber, 4/3/12; Martek
Biosciences, 9/3/09 (no disclaimer of
the scope of the term animal to
exclude humans); Honeywell, 7/3/07;
716
Boss Control, 6/8/05; ASM America,
3/16/05)
- Included is a non-limiting word

(Kinetic Concepts, 2/2/09 (J. Dyk,
dissenting, supported broader
meaning for term wound, citing
Amgen); Amgen, 8/3/06)
- Location within the specification in

which the definition appears is
irrelevant Boss Control (Edwards
Lifesciences, 9/22/09 (definition of
malleable after signal i.e. was not
limited to the preferred embodiment
being discussed))
- Qualifying terms in the specification -

e.g., normally (Kumar, 12/11/03)
Prosecution history is less useful than the specification
- Claim language and the specification generally

carry greater weight than the prosecution history
(Aventis Pharma, 4/9/12 (citing HTC); HTC,
1/30/12)
- PH represents an ongoing negotiation between

the PTO and the applicant, rather than the final
product, and often lacks the clarity of the
specification and thus is less useful for claim
construction purposes - Phillips (3M Innovative,
8/6/13 (rejecting the district courts narrowing
construction of term continuous contact based on
PH disclaimer from a claim amendment where the
disclaimer was inconsistent with the specification
which supported a broader construction citing
717
Netcraft); Aventis, 5/20/13 (stating that despite
rule the PH still provides evidence of how the
inventor intended a term to be construed citing
Lemelson); Grober, 7/30/12 (PH often produces
ambiguities created by ongoing negotiations
between the inventor and the PTO and thus the
reason that a prosecution disclaimer only applies to
unambiguous disavowals); HTC, 1/30/12
(attorneys single statement in the PH was
unpersuasive when weighed against the plain
language of the claims and specification); AIA
Engg, 8/31/11; Telcordia Techs., 7/6/10; Trading
Techs., 2/25/10; Abbott Labs, 5/18/09; Netcraft,
12/9/08 (PH was unclear, while the specification
clearly supported narrow construction); Elbex
Video, 11/28/07 (basis for no PH disclaimer); LG
Electronics, 7/7/06; Aquatex, 8/19/05; Nazomi,
4/11/05; Immunomedics, 6/23/04; Liquid
Dynamics, 1/23/04 (acquiescence); Kumar,
12/11/03)
- PH teaching alternative embodiments

(thus supporting broader construction) vs.
optional additional functions (thus
supporting narrower construction) of the
claimed invention (Netcraft, 12/9/08 (PH in
full context was unclear as to whether PH
argument referred to optional functions
provided in addition to internet access, or to
alternatives to providing internet access))
- PH not persuasive when claim language

provided a clear definition of the disputed
claim term, as supported by the specification
(Warner-Lambert, 9/21/07)
718
Prior art is intrinsic evidence
- Prior art (cited on the patent or in the PH) is

intrinsic evidence - relevant for determining claim
term meaning to a POS in the art - Vitronics
(SkinMedica, 8/23/13 (CAFC treating reference
cited on the face of the patent and cited during
prosecution as extrinsic evidence at best, which the
CAFC did not consider on appeal because of
waiver and the reference was not in evidence
because it was not in the record on appeal and
played no part in the proceedings below); 3M
Innovative, 8/6/13 (the district court erred in
construing the term ribbon to have a specified
width based on a prior art patent cited on the face
of the patent in suit, the CAFC stating that (in the
absence of vagueness in a claim term) the CAFCs
claim construction standards do not support
exploring tangential prior art references to
understand the meaning of the claims (citing
Thorner), but adding (in n.11) that there may be a
case in which a cited reference, when examined in
tandem with the intrinsic record, bears on the
meaning of a disputed claim term); Arcelormittal
France, 11/30/12 (relying on a prior art article co-
authored by a co-inventor (identified as extrinsic
evidence) to construe term very high mechanical
resistance, stating that by defining high
mechanical resistance as greater than 1500 MPa,
the prior art suggested that very high mechanical
resistance would be understood to be at least that
high; see also J. Wallach, dissenting); Powell,
11/14/11 (prior art patents cited and discussed in
the background section of patent showed that the
alleged means-plus-function term (dust collection
structure) was used in the art, and rejecting
argument that the patentee was precluded from
relying on the patents because it failed to bring
719
them to the district courts attention); Laryngeal
Mask, 9/21/10 (relying in part on the use of the
disputed term backplate in the inventors prior
art patents to determine the terms common
meaning); U. Texas, 7/24/08; Acumed, 4/12/07;
LG Electronics, 7/7/06; Nazomi, 4/11/05; V-
Formation, 3/22/05; Immunomedics, 6/23/04;
Liquid Dynamics, 1/23/04; Kumar, 12/11/03); See
also Sanofi-Aventis, 3/22/12 (nonprecedential
district court correctly relied on prior art patent
cited by the examiner during prosecution as
intrinsic evidence for interpreting term plasmid)
- When an inventors understanding of a

claim term is expressed in the prior art, it
can be evidence of how those skilled in the
art would have understood that term at the
time of the invention - Markman
(Arcelormittal France, 11/30/12 (relying on
prior art reference as extrinsic evidence, and
distinguishing the above rule from testimony
regarding an inventors subjective
understanding of patent terminology, which
is irrelevant to claim construction, citing
Howmedica))
- Prior art can show usage of a claim

term at the time of invention, and can
thus also guide an inquiry into
dictionary meanings (Home
Diagnostics, 8/31/04)
- Prior arts usage of claim term was

consistent with claim construction
(Laryngeal Mask, 9/21/10; Cordis,
1/7/08 (partys proposed claim
construction conflicted with its own
explanation of the prior art in appeal
720
brief); LG Electronics, 7/7/06
(industry standard); North American
Container, 7/14/05)
- Cited prior arts effect on giving claim term

its ordinary meaning rare that references
submitted in an IDS, but not cited by the
examiner, are probative of an intent to
depart from the plain technical meaning of
terms used in the specification and claims
(Osram GMBH, 10/31/07)
- Prior art patent merits less weight than the

evidence of the patentees own words; prior
art patent cited by the patent in suit was not
created by the patentee in attempting to
explain and obtain the patent Phillips
(Acumed, 4/12/07)
- Prior art distinguished the specification

distinguishing prior art based on a feature of
the invention (U. Texas, 7/24/08 (if the
disputed term (syllabic elements) included
all words, then the prior art reference, which
taught words, would teach the portion of the
claim that was amended to distinguish the
prior art, which construction would be
nonsensical); Ormco, 8/24/07; Curtiss-
Wright Flow Control, 2/15/06 (term
adjustable construed narrowly as requiring
adjustability during operation of the claimed
system, after distinguishing prior art
adjustment while system not in use);
Lizardtech, 10/4/05)
- Specification describing deficiencies

of the prior art and how the invention
overcomes those deficiencies (Ormco,
721
8/24/07 (claim limitation was
primary basis for distinguishing the
invention from prior art) critical
aspect of invention (Curtiss-Wright
Flow Control, 2/15/06); See also
Emergis Techs., 1/31/08
(nonprecedential term directly
construed narrowly as precluding the
use of any third party service provider
where the specifications criticism of
prior art service providers did not
distinguish between different types of
providers); See also Disclaimer in
the specification Disclaimer may be
implicit?
Context of the claims and patent must be considered
- Context of the claim and context of the entire patent,

occasionally including the PH, must be considered from
the perspective of a POS in the art when construing claim
terms - Phillips (Douglas Dynamics, 5/21/13; Biogen
Idec, 4/16/13; Deere, 12/4/12; Energy Transportation
Group, 10/12/12; Grober, 7/30/12 (claim languages
customary meaning encompasses the understanding of
an artisan of ordinary skill in the context of the inventive
art); Marine Polymer, 3/15/12 (en banc) (district court
properly turned to the specification after concluding that
the term biocompatible was not limited based on the
context of the claims); Dealertrack, 1/20/12; Erbe,
12/9/10; Astrazeneca, 11/1/10; Sun, 7/28/10 (applying
rule in rejecting the patentees arguments for no double
patenting); Silicon Graphics, 6/4/10; In re Suitco Surface,
4/14/10 (applying rule to the PTOs broadest reasonable
interpretation (although not citing Phillips)); Ultimax
Cement, 12/3/09 (context of both the claim term and
entire specification supported the correct interpretation of
722
the term anhydride); Callaway, 8/14/09 (hardness of
the cover layer of the claimed golf ball, when read in
context (including the claims reciting a golf ball with a
cover layer and the specification, including examples
directed to golf balls, pointing to the hardness of the
assembled ball) was measured while the cover layer was
on the ball, rather than off the ball); ICU Medical,
3/13/09 (tenet above derived from the fact that claims do
not stand alone but rather are part of a fully integrated
written instrument, consisting principally of a
specification that concludes with the claims Phillips);
Netcraft, 12/9/08 (narrow construction based on the
context of the specification, including the abstract and
reference to the present invention in the summary of
the invention); Kyocera Wireless, 10/14/08 (context of
the specification and claims provided the correct meaning
of term different); PSN Illinois, 5/6/08 ([w]hen read
in context of the claim language and the specification,
the district court construed the disputed term ready for
mounting too narrowly based on the description of a
preferred embodiment rather than the broader description
in the summary of the invention); Finisar, 4/18/08
(context of the claims and specification evidenced that
the term information database required search and
retrieval features); Ortho-McNeil, 3/31/08 (context of the
claims and patent considered in determining that and
meant or); Innogenetics, 1/17/08; Honeywell, 5/25/07;
Intamin, 4/18/07; Ortho-McNeil, 1/19/07; Cook Biotech,
8/18/06; Conoco, 8/17/06; Amgen, 8/3/06; Old Town
Canoe, 5/9/06; Lava Trading, 4/19/06; On Demand
Machine, 3/31/06; Varco, 2/1/06; Pfizer, 11/22/05;
Microstrategy, 11/17/05; Sorensen, 10/31/05; Callicrate,
10/31/05; Nystrom, 9/14/05; Biagro, 9/13/05; Aquatex,
8/19/05; Research Plastics, 8/18/05; Tap Pharmaceutical,
8/18/05; Pause Technology, 8/16/05; Collegenet, 8/2/05;
Gillette, 4/29/05; V-Formation, 3/15/05; Playtex, 3/7/05;
Lisle, 2/11/05; On-Line Technologies, 10/13/04;
Metabolite Labs, 6/8/04; Norian, 4/6/04); See also
723
Taltech, 5/22/08 (nonprecedential the context of the
claims and specification, including the drawings,
compelled the conclusion that the term abuts carried its
ordinary meaning of touching); Helena Labs, 4/16/08
(nonprecedential the context of the claims and written
description consistently described the disputed term
stabilizing supports as a separate structure from, and
thus excluding, the dispensing tip)
- POS in the art is deemed to have read the claim

term in the context of the entire patent, including
the other claims, the specification and the PH
(Biogen Idec, 4/16/13; Laryngeal Mask, 9/21/10;
Fujitsu, 9/20/10; Honeywell, 5/25/07 (based on the
full context of the claims and intrinsic evidence,
a POS in the art would have perceived undue
limitations in the district courts claim
construction); Ortho-McNeil, 1/19/07); See also
Allergan, 1/28/13 (nonprecedential plain
meaning in light of the entire patent, including
other claims, was given to term -N(R4)2 which
plainly encompassed nonidentical R4 substituents)
- Context of the PH providing the meaning

and common understanding of claim term,
as defined functionally, considering the clear
purpose of the invention (Cordis, 1/7/08
(term smooth surface meant smooth
enough and not rough as to be capable of
intraluminal delivery))
- When general language in the specification

trumps, contradicts specific language?
(Silicon Graphics, 6/4/10 (issued addressed
twice))
724
Context of the claims (both asserted and unasserted)
- Claims themselves provide substantial guidance as

to the meaning of claim terms Phillips, Vitronics
(3M Innovative, 8/6/13 (claim provided a
contextual description for the meaning of term
preferential activation zone, which included no
express restrictions to limit term meaning the
patentee offered an ascertainable definition in the
body of the claim); IGT, 10/6/11 (meaning of term
one as not limited to only one was clear from
the surrounding words, cautioning that claim
language must be construed in the context of the
claim in which it appears. Extracting a single word
from a claim divorced from the surrounding
limitations can lead construction astray);
American Piledriving, 3/21/11 (considering other
claim language in construing term); Schindler,
1/15/10 (district court overlooked important
aspects of the claim language); Gemtron, 7/20/09
(adopting the district courts construction based on
the full expression recited in the claim for the
disputed term, which called for the term to be
relatively resilient only during assembly);
Kyocera Wireless, 10/14/08 (context of the claims
provided the meaning of term different); Voda,
8/18/08 (the context of the disputed phrase along
a line referred to the position of a catheter during
use, rather than its shape (argued to mean straight)
in the rest state); Tip Systems, 6/18/08 (express
definitions of the disputed term handset in the
claim); Finisar, 4/18/08 (relied heavily on the
language of the claims, in context for construing
terms; the district court gave unjustifiably broad
interpretation to term information database,
where [i]n isolation the term suggests very broad
coverage, but in the context of the rest of the
claim, as supported by the specification, the term
725
had a narrower meaning); MEC, 4/1/08; Ortho-
McNeil, 3/31/08 (proposed construction of term
and would have rendered dependent claims
meaningless); Tivo, 1/31/08 (claim language used
to interpret term an); Honeywell, 5/25/07;
Intamin, 4/18/07; Ortho-McNeil, 1/19/07; Abbott
Labs, 1/5/07; DSU Medical, 12/13/06; Aero
Products, 10/2/06; Panduit, 6/12/06; Semitool,
4/6/06; Pfizer, 11/22/05); See also Kruse Tech.,
10/8/13 (nonprecedential); Stored Value Solutions,
12/10/12 (nonprecedential term purchase
transaction was properly construed as having a
broader meaning than the ordinary meaning of
purchase, where the term was used in every claim,
some of which had a different meaning than
purchase, and thus the construction had to be broad
enough to encompass every claim); Lexion
Medical, 8/28/08 (nonprecedential disputed
claim term predetermined temperature did not
mean a range where the term range was used
elsewhere in the claim but not with disputed term);
Black & Decker, 1/7/08 (nonprecedential -
surrounding claim language examined to
construe claim term Phillips)
- Beginning with the claims, the context in

which a term is used in an asserted claim
can be highly instructive Phillips
(Aventis, 5/20/13 (correct construction was
based on term substantially pure
modifying term regioisomer); Digital-
Vending, 3/7/12 (claims reciting
registration server did not inherently
require that the server be free of managed
content, where many of the other asserted
claims expressly required that the server be
free of managed content); Schindler, 1/15/10
(carrying a transmitter was a type of
726
personal action expressly required in the
claims); MEC, 4/1/08 (modified uses of
term pipeline stage had temporal rather
than positional meaning, because construing
the term as a positional term was
inconsistent with the temporal context in
which the term was used)); See also Zircon,
10/5/11 (nonprecedential rejecting the
patentees claim differentiation argument
based on the context in which the disputed
term ratio was used in the claims to mean
division only)
- Overall context of claim examined

whether limits broad claim language
(Energy Transportation Group,
10/12/12 (nothing in the claims
indicated that the plain and ordinary
meaning of the term programmed
should be limited to external or fixed
programming); Intamin, 4/18/07)
- Context of claim term with other

terms used to determine meaning
(Synqor, 3/13/13 (context of the
disputed terms within the claim
verified the district courts
construction); Pozen, 9/28/12
(construing term concomitantly
administering based on the claim
language as a whole and in the
context of other claim terms unit
dose or unit dosage form as
meaning administering two recited
drugs simultaneously); General
Electric, 7/6/12 (ITC erred in reading
the disputed claim clause in isolation
from its context with other claim
727
language); Aspex Eyewear, 3/14/12
(claim language, taken in context,
made clear that the free end of
eyeglass arm was distinguished from
other arm portion); Lexion Medical,
4/22/11 (CAFC prefers a claim
interpretation that harmonizes the
various elements of the claim to
define a workable invention);
American Piledriving, 3/21/11
(considering another term connected
to in construing meaning and scope
of term); Arlington Indus., 1/20/11
(construing word spring in term
spring metal adaptor based on terms
elsewhere in the same claim);
Bradford, 4/29/10 (broad construction
of coupled to was supported by
other claim terms); Enzo Biochem,
3/26/10 (claim language alone
strongly suggested that term non-
radioactive moiety must be capable
of recited property); Comaper, 3/1/10
(rejecting construction of the term
second opening which confused the
term with a configuration limitation in
the claims); Schindler, 1/15/10
(context of the term information
transmitter made it separate and
apart from an elevator user);
Ultimax Cement, 12/3/09 (context of
the disputed term anhydride being
next to calcium sulfate in the claim
showed that the term modified
calcium sulfate); Callaway, 8/14/09
(hardness of the cover layer of the
claimed golf ball with a cover
layer was measured while the cover
728
layer was on the ball, instead of off
the ball); Gemtron, 7/20/09; Kyocera
Wireless, 10/14/08 (stating that the
CAFC does not interpret claim terms
in a vacuum, devoid of the context of
the claim as a whole); Tip Systems,
6/18/08 (disputed phrase was given its
only reasonable interpretation so as to
be read consistently with another
construed term); Mangosoft, 5/14/08
(local as relates to computer
systems); Ortho-McNeil, 1/19/07
(criticality of claimed ratio where
the inventors intended a range when
they claimed one and something more
precise when they did not); Xerox,
6/8/06 (linear)); See also Kruse
Tech., 10/8/13 (nonprecedential
relying on claim context for ordinary
meaning); Zapmedia, 4/25/12
(nonprecedential construing claims
based on the claim terms as a whole)
- Language and context of the claims

supporting narrow construction
(Kyocera Wireless, 10/14/08 (term
different); DSU Medical, 12/13/06);
See also Webzero, 8/3/10
(nonprecedential claim language
suggested the narrow interpretation
given to other claims which expressly
recited the limitation)
- Look to the words of the claims themselves,

both asserted and nonasserted, to define the
scope of the patented invention Phillips,
Vitronics (Regents of U. Minn., 6/3/13 (n.3:
dependent claims supported separateness
729
requirement of recited first and second
disks); Power Integrations, 3/26/13 (In
construing a claim term, we look to the
words of the claim itself. Vitronics);
Dealertrack, 1/20/12 (term selectively
forwarding construed as not limited to
preferred embodiment having multiple
options, where each of the options was
claimed separately in other claims also
reciting the term); Trading Techs., 2/25/10;
SEB, 2/5/10 (rejecting reading of
completely free limitation of claim 1 that
would not allow for the vertical rod of claim
8); Schindler, 1/15/10; Paragon Solutions,
5/22/09; Ortho-McNeil, 3/31/08 (dependent
claims are not to be rendered meaningless);
Honeywell, 5/25/07; Pods, 4/27/07;
Acumed, 4/12/07; E-Pass Technologies,
1/12/07; Abbott Labs, 6/22/06; Semitool,
4/6/06); See also Creative Integrated Sys.,
6/3/13 (nonprecedential); Boss Indus.,
5/28/09 (nonprecedential unasserted
claims supported the district courts
construction of the term base section)
- Claim language comparison to

determine the proper construction of
term (Schindler, 1/15/10; Paragon
Solutions, 5/22/09; U. Texas, 7/24/08
(claim distinguished between two
uses of the same term); In re
Translogic Technology, 10/12/07
(interpreting coupled to receive by
distinguishing term from coupled to
in the same claim; examining
coupled to in the context of claim
phrase)); See also Alcohol Monitoring
730
rejecting the patentees construction
of term in independent claim that
conflicted with language in dependent
claims)
- Language of the claims and

claim differentiation implied
that claim 1 was broader than
dependent claims (Intamin,
4/18/07; Abbott Labs, 1/5/07
- Other claims, including unasserted

claims, are valuable sources of
claim meaning Phillips, Vitronics
(Regents of U. Minn., 6/3/13 (n.3);
Trading Techs., 2/25/10; Schindler,
1/15/10 (term personal action in
independent claim included using a
key, as recited in dependent claim);
Paragon Solutions, 5/22/09 (relying
on other claims in construing term
data acquisition unit as having
multiple structures); U. Texas,
7/24/08 (language in other claim did
not define the disputed claim term);
Ortho-McNeil, 3/31/08 (dependent
claims would have been rendered
meaningless by construction);
Honeywell, 5/25/07); See also
Creative Integrated Sys., 6/3/13
(nonprecedential claim was not
limited to an embodiment where an
unasserted independent claim
concisely and unambiguously was
limited to the embodiment would
otherwise render superfluous the
exacting language the patentee chose
for the unasserted claim); Allergan,
731
1/28/13 (nonprecedential dependent
claims defined the scope of term
N(R4)2 as encompassing nonidentical
R4 groups)
Claim terms should not be ignored, or rendered

superfluous or redundant
- Construction should give meaning, effect to all

terms of a claim, i.e., a claim limitation should not
be ignored, rendered superfluous - Bicon (3M
Innovative, 8/6/13; Aristocrat Techs., 3/13/13
(rejecting the patentees construction of one claim
term that would render another claim term
superfluous); Deere, 12/4/12 (giving terms
engagement and secured distinct meanings, as
to not be superfluous to the other citing Bicon);
Aspex Eyewear, 3/14/12 (CAFC agreeing that the
district courts construction read the term free
out of claim limitation); Digital-Vending, 3/7/12
(construing term registration server in claims to
inherently contain a free of managed content
limitation would have rendered superfluous the
same limitation expressly recited in other asserted
claims; see also J. Moore, dissenting express
language being superfluous was proper where the
patentee disclaimed scope from registration
server in the specification); Absolute Software,
10/11/11; August Tech., 8/22/11; Erbe, 12/9/10
(applying exception to doctrine of claim
differentiation); Intervet, 8/4/10 (rejecting narrow
construction of the term specific to that would
have rendered a limitation redundant); Becton
Dickinson, 7/29/10; Haemonetics, 6/2/10; Agilent
Techs., 6/4/09 (term closed chamber meant
something different than chamber; otherwise, the
word closed becomes superfluous); Cohesive
732
Techs., 10/7/08 (term about read out of claim by
the district courts construction); Cat Tech.,
5/28/08 (the patentees strained construction of the
phrase a spacing rendered important and express
claim limitations functionally meaningless if not
construed to cover all the gaps between the plates,
citing Bicon, Ortho-McNeil, 1/19/07); Mangosoft,
5/14/08 (the patentees proposed construction
ascribed no meaning to the term local not
already implicit in the rest of the claim);
Decisioning.com, 5/7/08 (exception to the rule
applied - construing term remote interface as
limited to being publicly-accessible despite
rendering the term public kiosk in a dependent
claim surplusage); Stumbo, 11/28/07 (vertical
referred to the shape rather than redundantly to the
orientation of an opening, so as to give each claim
term a distinct meaning); Z4 Technologies,
11/16/07 (narrow construction of claim term was
not determinative of noninfringement, when other
relevant language supporting infringement was
ignored); Allvoice Computing, 10/12/07 (applying
the doctrine of claim differentiation); Warner-
Lambert, 9/21/07; Leapfrog Enterprises, 5/9/07;
Ortho-McNeil, 1/19/07 (construing the ratios in
one claim in a way that would not render the ratios
of another claim meaningless); Bicon, 3/20/06;
Curtis-Wright Flow Control, 2/15/06; Callicrate,
10/31/05; Cross Medical Prods., 9/30/05
(superfluous or other claim terms redundant);
Pause Technology, 8/16/05; Datamize, 8/5/05;
NTP, 8/2/05; Merck, 1/28/05; Power Mosfet
Techs., 8/17/04); See also Fifth Generation
Computer, 1/26/11 (nonprecedential plain
language of claims defined their scope, applying
Bicon rule); Randall May, 5/11/10
(nonprecedential); Boss Indus., 5/28/09
(nonprecedential the patentees proposed
733
construction would have rendered the term
adjacent meaningless in light of the unasserted
claims); General Atomics, 5/12/08
(nonprecedential in which the plain language of
the claims supported the district courts
construction, and gave full meaning to every word
of the entire claim term Bicon)
- While not an absolute rule, all claim terms

are presumed to have meaning in a claim
(NTP, 8/2/05; Innova/pure water, 8/11/04;
See also Cartner, 6/17/09 (nonprecedential
rejecting the district courts claim
construction in favor of a construction based
on the specification and PH); Outside the
Box Innovations, 1/15/08 (nonprecedential -
reinforcing member would make term
flexible meaningless))
- Dependent claims would have been rendered

superfluous or unnecessary by incorrect
construction (Mangosoft, 5/14/08 (defect
[w]as particularly severe because the
patentee added the disputed term from a
cancelled dependent claim during
prosecution); Warner-Lambert, 9/21/07)
- Surplusage may exist in some claims

Pickholtz (Digital-Vending, 3/7/12
(See J. Moore, dissenting agreeing
that claim language in some of the
claims would be superfluous under
the correct construction of term, the
scope of which was disavowed); Erbe,
12/9/10; Decisioning.com, 5/7/08
(construing the term remote
interface as limited to being
publicly-accessible despite rendering
734
the term public kiosk in a
dependent claim surplusage))
- Entire claim must be viewed in context, and not a

single element in isolation; cannot ignore claim
terms each claim term must be given respect due
(Synqor, 3/13/13 (rejected construction of disputed
term isolation would have read other terms out
of the claim); In re NTP II, 8/1/11 (rejecting the
patentees proposed construction in light of rule);
Gemtron, 7/20/09 (disputed claim term recited
more than relatively resilient); Flex-Rest,
7/13/06; Callicrate, 10/31/05; Pause Technology,
8/16/05)
- Basic patent law doctrine that every

limitation of a claim is deemed material to
defining the scope of the patented invention
Warner-Jenkinson (S.C.) (Abbott Labs,
5/18/09 (en banc) (applying the Warner-
Jenkinson (S.C.) rule to claim construction
generally, and specifically to the rule that
process terms limit product-by-process
claims (even when optional language, such
as obtainable by is recited); otherwise, the
explicit process limitations that the applicant
chose to define its invention would be
rendered meaningless, redundant); Flex-
Rest, 7/13/06)
- Claim term cannot be defined by its ordinary and

customary meaning absent the context of the entire
patent, including the specification and PH
Phillips, Nystrom v. TREX (SkinMedica, 8/23/13;
3M Innovative, 8/6/13 (context of the patent
735
provided the extent of microtexturing on skin layer
in term continuous microtextured skin layer);
Aventis, 5/20/13; Parallel Networks, 1/16/13
(district courts limiting construction of website
claims properly accounted for the meaning of the
seemingly broad term associated with in the
context of the patent); Deere, 12/4/12 (claim read
in the context of the specification allowed for the
upper deck wall to come into engagement with
the lower deck wall through indirect contact);
MySpace, 3/2/12; Thorner, 2/1/12; Marctec, 1/3/12
(basis in part for concluding that the patentees
proposed plain meaning claim construction was
frivolous and objectively baseless, and subject to
attorney fees award citing Netcraft); August
Tech., 8/22/11; Erbe, 12/9/10; Astrazeneca,
11/1/10; Pass & Seymour, 8/27/10 (construing
claims based on their plain meaning in the context
of the specification and PH; see also J. Newman,
concurring stating that claim construction
requires conformity with the description of the
invention in the specification, citing Phillips);
Adams, 8/5/10 (rejecting arguments that
termequivalent meant FDA bioequivalence and
bioavailable meant absorption as commonly
understood, based on the context of the terms in
the specification and PH); Ultimax Cement,
12/3/09 (context of the entire specification
supported the correct interpretation of the term
anhydride); Gemtron, 7/20/09 (relying on both
the claim language and the context provided in the
specification to construe the disputed relatively
resilient edge portion of the claimed refrigerator
shelf frame in the context of the shelfs assembly);
ICU Medical, 3/13/09; Kinetic Concepts, 2/2/09
(ruling that to construe the term wound
(according to its dictionary definition) to include
fistulae and pus pockets disclosed in the prior art
736
would expand the scope of the claims far beyond
anything described in the specification - citing
Nystrom v. TREX; see also J. Dyk, dissenting use
of the medical dictionary definition of wound is
proper where the patent used the term inclusively);
Netcraft, 12/9/08 (narrow construction based on
the context of the specification; also, harmless
error by the district court in basing narrow
construction only on the specification, without
considering the PH); Kyocera Wireless, 10/14/08
(context of the specification relied on heavily for
defining term different); Decisioning.com,
5/7/08 (term remote interface in the context of
the patent did not encompass consumer-owned
personal computers); Finisar, 4/18/08; *Computer
Docking Station, 3/21/08 (term portable
computer construed narrowly as meaning a
microcomputer (although the claims did not recite
the term microcomputer) and thus excluding
laptop computers, based on statements in the
specification distinguishing the invention from
laptops, as well as clear disavowals of laptops in
the PH); Miken Composites, 2/6/08 (term
insert); Innogenetics, 1/17/08 (in context, term
as was merely syntactical, and broad statements
in the specification regarding the claimed method
(detection may be by . . . or any other method
comprised in the state of the art) supported broad
interpretation); Cordis, 1/7/08 (context of the PH
relied on in defining term functionally, considering
the clear purpose of the invention); Stumbo,
11/28/07; Verizon, 9/26/07 (see C.J. Michel and J.
Gajarsa, dissenting separately); Warner-Lambert,
9/21/07 (adjuvant; district courts construction
was based on context, although CAFC did not
expressly say context); Honeywell, 5/25/07;
Intamin, 4/18/07; Cook Biotech, 8/18/06 (claimed
urinary bladder tissue construed narrowly);
737
Conoco, 8/17/06; Amgen, 8/3/06; Old Town
Canoe, 5/9/06 (claimed completion of coalescence
understood based on the specification to mean
nothing other than reaching an optimum stage); On
Demand Machine, 3/31/06 (term sales
information required based on the specification
and PH the inclusion of promotional information);
Curtiss-Wright Flow Control, 2/15/06 (term
adjustable construed narrowly as requiring
adjustability during operation of the claimed
system); In re Johnston, 1/30/06; Nystrom, 9/14/05
(term board construed narrowly as meaning cut
from logs); Biagro, 9/13/05; Tap Pharmaceutical,
8/18/05 (phrase particles containing a water-
soluble drug required both the drug and a drug-
retaining substance, based on all of the 31
examples and a statement in the patent that the
drug-retaining substance must be used)); See
also Jang, 8/22/12 (nonprecedential limiting term
signal point to two dimensions, and rejecting the
patentees interpretation of phrase in the patent as
supporting a broad meaning, when the phrase was
properly understood in the context of the patent);
Reckitt Benckiser, 7/7/11 (nonprecedential claim
term portion limited to two-portion drug
product); Marctec, 8/4/10 (nonprecedential term
bonded required bonded by the application of
heat, based on the context of the invention in the
specification); Amgen, 6/1/09 (nonprecedential
holding that although the ordinary meaning of the
term reducing NF-B activity in cells admits
alternative views, it was unequivocal from the
specification and PH that the term limited the
claims to methods wherein the action that reduces
NF-B activity is taken inside the cell, and thus the
claim excluded the allegedly infringing drug which
acted outside the cell); Contech, 2/13/09
(nonprecedential term outer surrounding wall
738
construed as requiring a substantially vertical
surface, citing Nystrom); Uniloc USA, 8/7/08
(nonprecedential C.J. Michel, dissenting
context of the specification, including preferred
embodiments, made clear that term licensee
unique ID required at least some personal
information)
- Claim terms are not construed in a vacuum

divorced from the specification (Markem-
Imaje, 9/9/11 (J. Newman, dissenting);
Retractable Techs., 7/8/11; Adams, 8/5/10
(rejecting alleged commonly understood
meaning of bioavailable to mean
absorption, in favor of the context of the
specification to mean released and available
for absorption))
- Importation of limitations into the claims

from the specification is not permitted when
examining the specification for proper
context (Douglas Dynamics, 5/21/13;
Aventis, 5/20/13 (lexicography or an
intentional disclaimer is required to limit a
claim terms ordinary and customary
meaning); Deere, 12/4/12; Energy
Transportation Group, 10/12/12; MySpace,
3/2/12; Thorner, 2/1/12; Retractable Techs.,
7/8/11; Trading Techs., 2/25/10; Kara
Technology, 9/24/09 (the patentees clear,
broader claims read in the context of the
specification did not require the key
feature, even though the specification
repeatedly discussed the key feature, and
the key feature was addressed in the only
detailed embodiments of the patent, since
the patentee did not act as his own
lexicographer or disavow claim scope);
739
Kinetic Concepts, 2/2/09 (J. Dyk, dissenting
importation is improper where there is no
indication that the specific examples in the
specification are intended to be strictly
coextensive with the claim); Kyocera
Wireless, 10/14/08 (recognizing the fine
line before limiting the meaning of term
different); Innogenetics, 1/17/08 (term
as); Baldwin Graphic Systems, 1/15/08
(method claims); Stumbo, 11/28/07); See
also Uniloc USA, 8/7/08 (nonprecedential
split decision)
- Specification is the best source for the

context - Phillips (SkinMedica, 8/23/13;
Aventis, 5/20/13; MySpace, 3/2/12 (the
written description is the best source for
understanding the technical meaning of a
claim term); Abbott Labs, 5/18/09 (the
specification provides necessary context for
understanding the claims); Every Penny
Counts, 4/30/09; Kyocera Wireless,
10/14/08 (limiting the meaning of the term
different); Baldwin Graphic Systems,
1/15/08 (method claims); Stumbo, 11/28/07;
Honeywell, 7/3/07; Honeywell, 5/25/07; V-
Formation, 3/15/05; Lisle, 2/11/05; On-Line
Technologies, 10/13/04; Fuji Photo Film,
10/7/04; Bilstad, 10/7/04)
- Claim term with no customary

meaning in the art - when term has no
customary meaning in the art, the
specification usually supplies the best
context for deciphering claim
meaning Irdeto Access (Honeywell,
5/25/07)
740
- [C]ontext of the entire specification
considered to determine what defines
a particular term (Microsoft, 10/3/13
(ALJ correctly understood term
state in claim term resource state
information in the context of the
whole patent as requiring information
about the version of the resource);
Dealertrack, 1/20/12 (examples only
vs. the overall invention); Ultimax
Cement, 12/3/09; Kyocera Wireless,
10/14/08 (comparing the background
section with the rest of the
specification for the meaning of term
different; also, preferred
embodiment in figure did not require
a broader meaning); Decisioning.com,
5/7/08 (kiosk embodiments were
the invention itself for otherwise
broader term remote interface); Z4
Technologies, 11/16/07 (claims and
the specification both made clear that
two terms (users and computers)
were distinct and used to describe
different things; construction equating
the terms thus would conflict with
both the plain language of the claims
and the specification NeoMagic);
Abraxis Bioscience, 11/15/06
(embodiments not merely examples))
- Specification not limiting claim

term when within the context of
the background art, rather than
a description of the patented
invention (Verizon, 9/26/07,
see also J. Gajarsa, dissenting
the particular location of the
741
description in the specification
does not matter since the
specification is a fully
integrated written instrument
Phillips; description was in the
patentees own words)
- Usage of term to interpret

meaning (Baran, 8/12/10 (usage
of the term detachable in the
specification effectively
conceded that a preferred
adhesively bonded embodiment
was not a detachable
component within the meaning
of the patent))
- Context of the patent making clear

that claim term is used broadly in the
specification (Honeywell, 7/3/07;
Sorensen, 10/31/05 (term different
meant any difference))
- Term interpreted and confirmed only

with a full understanding of what the
inventors actually invented and
intended to envelop with the claim
Renishaw, Phillips (Power
Integrations, 3/26/13 (by limiting the
expansive term signals in the
specification, the intrinsic record
clearly indicated with regard to the
meaning of the disputed claim term
frequency variation signal the
patentees precise conception and
formulation, which must control
the courts construction); Research
Plastics, 8/18/05); See also
742
Realsource, 6/23/08 (nonprecedential
the context of the written
description and PH, as well as
admissions made by the patentees
counsel during oral argument, made
clear that the patentee did not regard
its invention (under Section 112) to
encompass systems like defendants)
- Specification consistently, and

without exception describing the
invention as having feature look at
the overall context of the
specification (Eon-Net, 7/29/11;
American Calcar, 6/27/11 (narrow
construction given to term
messages where both the summary
of the invention and detailed
description emphasized the similarity
of a car-mail message to a typical
email message, and thus it was
essential that a car-mail message
have an address unique to a particular
vehicle citing Honeywell); ICU
Medical, 3/13/09 (specification
repeatedly and uniformly described
the spike of a claimed valve as a
pointed instrument for the purpose of
piercing a seal inside the valve);
Kyocera Wireless, 10/14/08 (limiting
the meaning of term different where
the specification consistently taught
as the relevant difference between two
claimed wireless communications was
their method of communication);
Decisioning.com, 5/7/08 (citing
Honeywell in limiting term remote
interface to kiosks and thus
743
excluding consumer-owned
computers); Ormco, 8/24/07 (term
context not used); Honeywell,
6/22/06 (term fuel injection system
component limited by the
specification to a fuel filter); Old
Town Canoe, 5/9/06 (claimed
completion of coalescence understood
based on the specification to mean
nothing other than reaching an
optimum stage); Curtiss-Wright Flow
Control, 2/15/06 (term adjustable
construed narrowly as requiring
adjustability during operation of the
claimed system)); See also St. Clair,
1/10/11 (nonprecedential construing
term computer apparatus narrowly
as referring to computer architecture
based on the terms consistent use in
the specification, citing Nystrom; see
also J. Moore, dissenting); Aerotel,
12/20/10 (nonprecedential quoted
description in the specification
described the invention as a whole);
Marctec, 8/4/10 (nonprecedential
patents discussion of bonding, in the
context of the invention, was
uniformly directed to heat bonding);
Southern Mills, 5/14/10
(nonprecedential the specification
repeatedly made clear, contained clear
statements limiting the meaning of the
term 3-end knit)
- Absence of broader support

also is relevant nowhere did
the specification suggest or
even allow for a broader claim
744
interpretation (Retractable
Techs., 7/8/11 (narrowly
construing term body to
having a one-piece structure
where the specification [did]
not disclose a body that
consists of multiple pieces or
indicate that the body is
anything other than a one-piece
body); Decisioning.com,
5/7/08 (nowhere did the
specification suggest a broader
construction for term remote
interface); Stumbo, 11/28/07
(recited opening required slit-
like shape, where nothing in the
specification suggested that the
patentee contemplated that any
other embodiment would work
with the invention); Ormco,
8/24/07)
- Specification often supplies the

critical context to construe
claim language; repeatedly
the specification explaining the
disputed term (Parallel
Networks, 1/16/13 (rejecting
the patentees argument
claiming that a limitation that
featured so critically in the
patent was not, in fact, a part of
the invention); Technology
Patents, 10/17/12 (specification
clearly contemplated and made
clear that term receiving user
was a person, by repeatedly
describing the term as being
745
either male or female and as
possessing things and using the
term interchangeably with
subscriber, and thus rejecting
the patentees construction that
the term meant the combination
of a person and phone handset);
Adams, 8/5/10 (providing
context for construing terms
equivalent and
bioavailable); Felix, 4/10/09
(specification, like the claims,
repeatedly use[d] mounted
to mean securely affixed or
fastened together); Ormco,
8/24/07 (specification provided
clear indication of narrow
claim scope); Ortho-McNeil,
1/19/07 (specification
supported the criticality of
claimed ratio; intrinsic evidence
pointed to the desirability, and
thus criticality of the claimed
ratio, thus necessitating a
narrow interpretation for the
modifier about); Planet
Bingo, 12/13/06)
- Claims, not limited on their

face, construed as limited based
on the specification and PH; the
specification and PH make
clear that the claimed
invention does not encompass
broader subject matter, or
requires limited scope; the
specification uses language of
requirement, not preference; the
746
specification repeatedly
states that feature is essential,
or critical element, of the
claimed invention (Technology
Patents, 10/17/12 (accused
systems did not satisfy the
predetermined order term of
the claims because the patent
implied that being able to
choose countries with the
claimed paging system was an
important feature of the
claimed invention; also
applying the above to other
disputed terms); Andersen,
1/26/07; compare to
Halliburton, 1/25/08 (in the
context of indefiniteness,
language of preference was
used; an advantage of the
claimed invention described as
preferably without and
without need for the asserted
claim limitation did not require
the limitations absence from
the claim)); See also Southern
Mills, 5/14/10 (nonprecedential
clear narrowing statements in
the specification, which were
distinctly definitional as
opposed to describing a
preferred embodiment of the
term 3-end knit)
- Specification explicitly stating

requirement of claim term (Mymail,
2/20/07)
747
- Specification requiring a
limitation to claim vs. stating
only that the alleged limitation
is not needed (Halliburton,
1/25/08 (in the context of
indefiniteness; the specification
described an advantage of the
invention without need for
the asserted claim limitation,
meant that the limitation was
not required: Absence of need
for a component does not
necessarily mean that that
component is absent, or present
only in low amounts))
- Specification inherently stating

requirement of claim term (Stumbo,
11/28/07 (slit-like shape required for
claimed opening, based on using
the word must))
Ambiguous or relative claim terms
- Where claim terms are ambiguous or disputed, turn to the

specification (Power-One, 3/30/10 (terms adapted to
and near used in the district courts construction of the
claim term regulator were not facially vague or
subjective, where the specification, including the figures,
provided guidance as to their meaning and scope); Ilor,
12/11/08; DSW, 8/19/08 (district court improperly
imported limitations into the claims where the claim
language was not ambiguous); Abbott Labs, 6/22/06);
See also Energizer Holdings, 4/21/08 (nonprecedential
J. Newman, dissenting, citing cases); See also
INDEFINITENESS
748
- When claim term not clear on its face, look to the
specification and PH, and consider the context of
the invention (Hologic, 2/24/11 (claim term
asymmetry construed based on the specification
as meaning asymmetric with respect to a
longitudinal axis, because asymmetry is a relative
concept that can only exist in relation to some
reference); Power-One, 3/30/10 (a skilled artisan
would understand the meaning of the terms near
and adapted to used in the district courts
construction of the claim term regulator because
the environment and functionality requirements of
the claimed power system dictated the preciseness
of the terms, thus ruling that the claim language,
when taken in context of the entire patent, provides
a sufficiently reasonable meaning to one skilled in
the art of distributed power systems); Ilor,
12/11/08 (assumed ambiguity eliminated when the
claim language was viewed in light of the
specification, including the abstract, and the PH);
Halliburton, 1/25/08 (claim term fragile gel
construed functionally was ambiguous, and thus
indefinite based on the specification); Alza,
12/10/04; Globetrotter Software, 3/23/04)
- Claim term having two different possible

meanings (containing) (Tap
Pharmaceutical, 8/18/05)
- Claim term (upstream manager) must be

amorphous (CAFC held it wasnt) to read
a limitation into the claim from the
specification (NCube, 1/9/06)
- When claim term ambiguous, or a relative term, not

improper to limit term (e.g., dust-free) to the only
disclosure on the subject in the patent; reconcile an
ambiguous term with the inventors disclosure (3M
749
Innovative, 8/6/13 (limiting (ambiguous) term
continuous microtextured skin layer (i.e., at issue was
whether continuous modified microtextured or skin
layer or both?) to the description in the patent (without
recognizing the above rule); see also J. Plager,
concurring for ambiguous claim terms, may well
deserve application of a principle analogous to the
contract doctrine of contra proferentem . . . When a term
is ambiguous, a crystal ball matter, the ambiguity should
be construed against the draftsman. (Or better yet, the
claim should simply be invalidated as indefinite, though
our court has not seen fit to go there as yet.); see also J.
OMalley, dissenting continuous modified skin
layer and not microtextured); LG Electronics, 7/7/06;
Tap Pharmaceutical, 8/18/05; NTP, 8/2/05; Chimie,
4/11/05)
- Standard for relative claim term disclosed in the

specification (Power-One, 3/30/10 (term near
definite based on a figure); LG Electronics, 7/7/06)
Antecedent basis
- Antecedent basis in a claim can be present by implication

(Energizer Holdings, 1/25/06 (See INDEFINITENESS);
Cross Medical Prods., 9/30/05)
- Ignoring antecedent basis is improper (Haemonetics,

6/2/10 (improperly ignoring the antededent basis for term
the centrifugal unit))
Apparatus claims not limited by use or process of making
- Apparatus claims cover what a device is, not what a

device does; thus, improper to inject a use limitation into
a claim written in structural terms Hewlett-Packard
750
(Toshiba, 6/11/12 (rejecting the accused infringers
purpose limitation for why no infringement); Typhoon
Touch, 11/4/11 (affirming the district courts
construction that an apparatus claim required that the
accused device actually perform, or was configured or
programmed to perform, each of the functions recited in
the claim for infringement, where the construction also
conformed with the inventors description of what they
invented); Crown Packaging, 4/1/11 (district court erred
by requiring a negative process limitation in a product
claim for purposes of satisfying the WD requirement);
Silicon Graphics, 6/4/10 (use was not required for
infringement); Vizio, 5/26/10 (J. Clevenger, dissenting);
Paragon Solutions, 5/22/09 (under the district courts
construction of reading a contextual requirement into the
phrase displaying real-time data in a sports watch, the
same apparatus might infringe when used in one activity,
but not infringe when used in another, thus rendering it
nearly impossible to determine infringement in
advance)); See also INFRINGEMENT Apparatus vs.
method claims; INDEFINITENESS Notice function
of claims, functional language, claims covering both
apparatus and method
- Apparatus claim is not limited to the process of making

the apparatus (Research Corp., 12/8/10 (accused infringer
improperly mixed method and apparatus claims in
arguing that an apparatus claim was limited to the
method of making the apparatus described in the
specification); Baldwin Graphic Systems, 1/15/08
(device claim not limited to process or sequence of
steps)); See also ICHL, 12/22/11 (nonprecedential
district courts construction did not require components
of the claimed heat sink assembly to be joined in a
specific manner, but rather addressed the structural
relationship between the claimed elements and excluded
from the claim scope a specific type of structure
extruded or integrally bonded heat sinks citing
751
Vanguard Prods.); See also Product-based claim limited
to process by which the product is made?
Beauregard claims
- Beauregard claim claim to computer storage medium

defined by method steps treated as method claims
(Digital-Vending, 3/7/12 (n.1: stating that such
functionally-defined claims should be treated as method
claims to avoid exalt[ing] form over substance
CyberSource))
BPAI (PTAB)/PTO claims are given their broadest reasonable

interpretation
- BPAI must use a different standard for construing claims

than a district court during initial examination (and
reexamination, reissue and interference), claims are given
their broadest reasonable interpretation consistent with
the specification, and claim language should be read in
light of the specification as it would be interpreted by one
of ordinary skill in the art Phillips, In re American
Academy of Sciences, In re Bond (Leo Pharm., 8/12/13
(inter partes reexamination reversing (and vacating) the
BPAIs construction because it erred by narrowing the
definition of storage stable to something far short of
its broadest reasonable meaning where the terms plain
meaning was broader than the disclosure in an example
of using a specific stability test as adopted by the BPAI;
the CAFC vacated the BPAIs construction because it
was unnecessary to adopt the alternative construction to
resolve the appeal of obviousness, thus leaving that
question to a later forum where the issue is
determinative.); C.W. Zumbiel, 12/27/12
(reexamination); Flo Healthcare Solutions, 10/23/12
(reexamination); In re Abbott Diabetes Care, 9/28/12
752
(reexamination rejecting the BPAIs construction of
term electrochemical sensor as unreasonable and
inconsistent with the language of the claims and an
implicit disclaimer in the specification based on criticism
of prior art glucose monitoring devices containing
external wires and cables); In re Rambus, 8/15/12 (claims
of an expired patent during reexamination construed (as
in district court) pursuant to Phillips); In re Montgomery,
5/8/12; Harari, 9/1/11 (interference); In re NTP I, 8/1/11
(reexamination rejecting the BPAIs overly broad
construction of the term electronic mail which was
inconsistent with the specification, stating that the
BPAIs construction cannot be divorced from the
specification and the record evidence In re Suitco
Surface); In re NTP II, 8/1/11 (BPAIs construction of
term destination processor was reasonable where it
applied the above standard); Rolls-Royce, 5/5/10
(interference); *In re Suitco Surface, 4/14/10 (rejecting
the BPAIs unreasonably broad construction during
reexamination (which was based on the transitional term
comprising in the claim) of the term finishing
material, which was not consistent with the plain
language of the claim and specification, as would be
construed by one of ordinary skill); Yorkey I, 4/7/10
(determining whether there was an interference-in-fact);
Koninklijke Philips, 1/5/10 (qualifying rule when applied
in interferences according to CAFC precedent where
claims copied from a patent are challenged on WD
grounds); In re Skvorecz, 9/3/09 (practice may also be
useful in reissue examination); Larson Mfg., 3/18/09
(withheld prior art was irrelevant and cumulative, and
thus not material, to the reexam panel, based on the claim
language and limitations); In re Swanson, 9/4/08
(distinguishing district court from PTO proceedings
(reexam) for validity determination); In re Translogic
Technology, 10/12/07 (obviousness); In re Buszard,
9/27/07 (no anticipation; see also J. Prost, dissenting); In
re Trans Texas Holdings, 8/22/07 (BPAI applied broad
753
construction during reexam after the district courts
narrower construction); In re Icon Health and Fitness,
8/1/07; Sram, 10/2/06; In re Johnston, 1/30/06 (citing
Phillips (en banc)); American Academy of Sciences,
5/13/04; See also In re Motorola Mobility, 11/12/13
(nonprecedential inter partes reexam); In re Giuffrida,
7/18/13 (nonprecedential the BPAI erred in relying on a
dictionary for the meaning of claim term portable
rather than the specification, as required, and thus the
prior art reference did not anticipate, either expressly or
inherently, the narrower, specification-based
interpretation); In re Avid Identification Systems, 1/8/13
(nonprecedential affirming the BPAIs construction as
the broadest reasonable construction, where there was no
explicit, consistent definition, but rather varied uses, of
the phrase in the patent; also responding to the dissent,
that the appellant waived construction of means-plus-
function phrase under Section 112, paragraph 6, for not
requesting such construction before the BPAI; see also J.
Clevenger dissenting the PTOs broadest reasonable
interpretation for means-plus-function claim language is
that statutorily mandated by Section 112, paragraph 6); In
re Ditto, 12/7/12 (nonprecedential affirming
anticipation, after rejecting the patentees narrow
construction of term purebred where was not defined in
the specification); In re Sutton, 11/20/12
(nonprecedential); In re Chaganti, 3/9/12
(nonprecedential affirming the BPAIs reasonable
construction of term, while rejecting the patentees
argument that its lexicography was clear in the
specification); In re Pond, 1/18/12 (nonprecedential
reasonable construction of term unitary, one-piece
construction of the claimed dental device, based on an
embodiment in the application for making the device
citing Phillips rule that the specification is always highly
relevant, the single best guide to the meaning of a term);
In re SP Controls, 12/21/11 (nonprecedential
reexamination - claims construed based on the claim
754
language, and not the preferred embodiments in the
absence of a disclaimer); In re Scroggie, 9/16/11
(nonprecedential BPAI did not err in using dictionary
definition for the ordinary meaning of the term personal
computer where the applicant did not define the term in
the specification); In re Kryzpow, 12/20/10
(nonprecedential affirming obviousness based on
broadest reasonable interpretation of claims, and
proposing amendments to recite the argued inventive
feature); In re Schwemberger, 10/13/10 (nonprecedential
term was properly given broadest reasonable
interpretation where there was no clear definition of the
term in the specification); In re Vaidyanathan, 5/19/10
(nonprecedential the BPAIs construction was not
reasonable, as did not conform with the invention
described in the specification); In re Pelz, 5/7/10
(nonprecedential affirming anticipation finding); In re
Shoner, 8/10/09 (nonprecedential claims were held
obvious where there was nothing in the specification that
would explicitly limit the meaning of sealed and
pressurized air chamber to a structure separate from the
rest of the tire cavity, and thus the CAFC had to adopt the
PTOs broad interpretation of sealed and pressurized to
include any structure that seals and pressurizes the air
chamber); In re Guess, 6/9/09 (nonprecedential); In re
Wheeler, 12/19/08 (nonprecedential rejecting the
BPAIs overly broad interpretation, ruling that the
interpretation must be consistent with the specification,
and that the claim language should be read in light of the
specification as it would be interpreted by one of
ordinary skill in the art, citing Phillips)
- CAFC determines whether the BPAIs

construction of the term was reasonable In re
Morris (vs. Q of law, de novo review) (C.W.
Zumbiel, 12/27/12 (the BPAIs construction of
term free ends was legally correct, ruling that
although the PTO gives claims the broadest
755
reasonable interpretation consistent with the
written description, claim construction by the PTO
is a Q of law reviewed de novo, just as the CAFC
reviews claim construction by the district court
citing In re Baker Hughes); Flo Healthcare
Solutions, 10/23/12 (see additional views of J.
Plager comparing inconsistent standards of
review the CAFC applies on appeal of the PTABs
claim constructions - the deferential
reasonableness standard of In re Morris vs. the
non-deferential question of law, de novo review
standard of In re Baker Hughes vs. a blended
standard combining the above standards, as
applied in In re Abbott Diabetes Care and
suggesting the need for en banc review to decide
on an agreed review standard; see also additional
views of J. Newman referring to the distortion
(where the same issue can be finally adjudicated to
different appellate outcomes, depending on the
tribunal from which it came, i.e., the PTO or a
district court) that appears to be related to a
misunderstanding of the role of broadest
reasonable interpretation in patent examination,
which is an examination tool (and not a rule of
law) used by the applicant and examiner to
determine and define the invention to be claimed;
the broadest reasonable interpretation applies to
the initial consideration of patentability, not the
final decision, and whether the PTO used it in
examining the application is irrelevant, since claim
construction as a question of law must be decided
on de novo review, objectively and correctly -- and
thus is decided on appeal from any forum for
correctness; and therefore concluding that the
above rule that the CAFC reviews the PTOs
interpretation of disputed claim language to
determine whether it is reasonable in light of the
specification is incorrect, stating: It is incorrect
756
to convert a search and examination expedient into
a requirement of appellate deference.); In re
Abbott Diabetes Care, 9/28/12 (vacating the
BPAIs rejections of claims in an ex parte
reexamination where the rejections were based on
an unreasonable claim construction that did not
include a disclaimer in the specification from the
scope of term electrochemical sensor of external
wires and cables criticized in prior art glucose
monitoring devices); In re NTP I, 8/1/11); See also
In re Chaganti, 3/9/12 (nonprecedential); In re
Pond, 1/18/12 (nonprecedential); In re Scroggie,
9/16/11 (nonprecedential construction of term
personal computer based on dictionary definition
was reasonable, where the term was not defined in
the specification)
- Claims should always be read in light of the

specification and teachings in the underlying
patent Schriber-Schroth (S.C.) (In re Suitco
Surface, 4/14/10)
- Context of the claim language and specification

must be considered in arriving at the broadest
reasonable interpretation (In re Abbott Diabetes
Care, 9/28/12 (rejecting unreasonable construction
by the BPAI, which did not consider the claim
language itself and an implicit disclaimer in the
specification); In re Suitco Surface, 4/14/10 (term
finishing material meant the final treatment or
coating of a surface)); See also In re Pond, 1/18/12
(nonprecedential reasonable construction of term
unitary, one-piece construction based on method
for making the claimed device in the application)
- Dictionary definitions must give way to the

meaning imparted by the specification (In re
Johnston, 1/30/06 (citing Phillips (en banc)))
757
- Dictionary definition supported the broadest
reasonable interpretation (In re Trans Texas
Holdings, 8/22/07); See also In re Scroggie,
9/16/11 (nonprecedential BPAI did not err by
omitting nonlimiting portion of dictionary
definition from construction of term personal
computer - citing In re Trans Texas Holdings)
- When multiple dictionary definitions (broad

and narrow), appropriate to select the one
that supports the broadest reasonable
interpretation (In re Trans Texas Holdings,
8/22/07)
- Patent Offices claim construction claims are given

their broadest reasonable interpretation unless there is
an express definition or express disclaimer of a broader
meaning in the specification or PH because, unlike in
an infringement suit, an applicant has an opportunity and
responsibility to remove ambiguity from a claim term by
amendment (Flo Healthcare Solutions, 10/23/12 (see
additional views of J. Plager and J. Newman); In re
Abbott Diabetes Care, 9/28/12 (express disclaimer was
not required, and implicit disclaimer sufficed, where
there was no plain language in the claims that otherwise
would include the excluded embodiment); In re
Skvorecz, 9/3/09 (citing In re Buszard for the applicants
ability to readily amend, to clarify, claims during
prosecution); In re Buszard, 9/27/07 (no anticipation; see
also J. Prost, dissenting CAFC precedent requires that
review of the BPAIs interpretation be limited to
determining whether reasonable; it is the applicants
burden to precisely define the invention, not the PTOs);
In re Icon Health and Fitness, 8/1/07; In re Crish,
12/21/04; In re Bigio, 8/24/04); See also In re Taylor,
6/14/12 (nonprecedential preamble not limiting during
prosecution where relied on to distinguish prior art,
758
unlike in an infringement case); In re Vaidyanathan,
5/19/10 (nonprecedential citing the purpose of
sharpening the claims in order to avoid ambiguity or
uncertainty in the issued patent); In re Shoner, 8/10/09
(nonprecedential adopting the PTOs broad
interpretation of the term sealed and pressurized air
chamber which was consistent with the specification,
citing In re Bigio for the above rule)
- Purpose of giving claims their broadest reasonable

interpretation during examination is to facilitate
exploring the metes and bounds to which the
applicant may be entitled, and thus to aid in
sharpening and clarifying the claims during the
application stage, when claims are readily changed
In re Buszard, In re Cortright, MPEP 2111 (Flo
Healthcare Solutions, 10/23/12 (see additional
views of J. Plager and J. Newman); In re Skvorecz,
9/3/09)
- As applicants may amend claims to narrow

their scope, a broad construction during
prosecution creates no unfairness to the
applicant or patentee (In re Icon Health and
Fitness, 8/1/07)
- CAFC reviews the specification for a definition of

claim terms, but otherwise applies a broad
interpretation; this methodology produces claims
with only justifiable breadth Yamamoto (In re
Icon Health and Fitness, 8/1/07 (claims given
broad construction in affirming obviousness))
- Broadest reasonable interpretation must be legally correct

the protocol of giving claims their broadest reasonable
interpretation during examination does not include giving
claims a legally incorrect interpretation (In re Suitco
Surface, 4/14/10; In re Skvorecz, 9/3/09 (BPAI
759
incorrectly construed the transitional term comprising
as rendering a claim anticipated by a device that
contained less (rather than more) than what was
claimed))
- Broadest reasonable interpretation protocol is

solely an examination expedient, not a rule of
claim construction (Flo Healthcare Solutions,
10/23/12 (see additional views of J. Newman); In
re Skvorecz, 9/3/09 (BPAI incorrectly applied the
expedient to interpretation of the term
comprising))
Broadening of claims (to cover competitors product)
(Synthes USA, 10/29/13 (affirming lack of WD where no

support for added broadened term openings; see also J.
Taranto, dissenting); Laryngeal Mask, 9/21/10 (deleting
limitations from claim during prosecution allegedly to cover a
competitors product was not improper); Edwards Lifesciences,
9/22/09; In re Fallaux, 5/6/09 (not improper); Saunders Group,
6/27/07; Liebel-Flarsheim, 3/22/07; Liebel-Flarsheim, 2/11/04)
- Broadening of claim supported by positions taken in a

petition to make special (Saunders Group, 6/27/07)
- Broadening claim amendments dont broaden the claim

when remarks support a narrow interpretation - Alloc
(Edwards Lifesciences, 9/22/09 (removing the modifier
intraluminal from graft did not affect the breadth of
the claim where the accompanying remarks stated that
the claim defines an intraluminal graft; same result when
replacing claims requiring malleable wires with claims
requiring only wires, but then conducting prosecution
as if the specification required the wires to be malleable))
760
- Reliance by the examiner for broadening (Edwards
Lifesciences, 9/22/09 (inventors declarations submitted
to provoke an interference did not affect narrow claim
scope where no evidence they were relied on by the
examiner))
- Refiling application (as a continuation) to broaden claims

applicant has the right to refile an application and
attempt to broaden the claims (Trading Techs., 8/30/13
(great example involving software patents, raising written
description and PH disclaimer/PHE issues); Hakim,
2/23/07)
- Continuations in which the claims are arguably

broader than the claims in parent applications or
patents present difficult questions of both claim
construction and validity compare cases where
the applicant expressly and unambiguously states
his intention to claim broadly (becomes question
of validity, i.e., whether the specification supports
the full breadth of the new claims) vs. cases where
the applicant has not been explicit about the scope
of the new claims (which pose interdependent
problems of both claim construction and validity,
where courts are required to draw and weigh
sometimes conflicting inferences from different
sources of guidance as to the proper claim
construction) (Saunders Group, 6/27/07); See also
Novo Nordisk, 7/30/08 (nonprecedential citing
the Saunders Group rule as the basis for affirming
the district courts denial of a PI where the non-
movant raised substantial questions regarding
claim construction and validity in accordance with
Saunders Group)
Chemical/Pharma/Biotech claims
761
Acids/salts
- Claim to an acid inherently covers the acids salt form

if a POS in the art deems the acid and salt to be
interchangeable Merck v. Teva (Pfizer, 8/2/06 (n. 6);
Kao, 3/21/06; Stephens, 12/29/04; Merck, 10/30/03)
- Claim to an acid can include the salt of the acid,

but a claimed acid is not infringed by the salt
Merck (Kao, 3/21/06)
Markush groups
- See Markush claims
Isomers, stereoisomers
- Substantially free of other isomers (Aventis Pharma,

9/11/07 (the claimed composition of 5(S) ramipril was
held, indirectly, to be ipso facto substantially free
enough of other isomers))
Genus claims
- Genus claim supported by a sufficient number of species

(Intervet, 8/4/10 (deposited strains and their sequences
described in the specification were representative species
of the larger claimed DNA molecule genus))
Claim construction is reviewed independently of infringement -

but always takes place in the context of the accused product
(Typhoon Touch, 11/4/11; Linear Tech., 5/21/09 (citing rule

from Cohesive Techs.); Every Penny Counts, 4/30/09 (district
court properly invited the parties views of what they thought
762
the disputed term excess cash meant in the context of a series
of hypothetical transactions, some of which involved the
accused products); Cohesive Techs., 10/7/08 (not appropriate
for the district court to construe a claim solely to exclude the
accused device); Jang, 7/15/08 (making the context rule very
clear); Cias, 9/27/07 (accused product considered by district
court in light of PH disclaimer); Gillespie, 9/6/07; SafeTCare
Mfg., 8/3/07; In re Icon Health and Fitness, 8/1/07; Hakim,
2/23/07; E-Pass Technologies, 1/12/07; Aero Products, 10/2/06;
MIT, 9/13/06; Lava Trading, 4/19/06; Wilson Sporting Goods,
3/23/06; Dorel Juvenile Group, 11/7/05)
- Claims are properly construed without the objective of

capturing or excluding the accused device NeoMagic
(Vita-Mix, 9/16/09)
- Claims are not read in light of the accused device

(Cohesive Techs., 10/7/08; Aero Products, 10/2/06;
Wilson Sporting Goods, 3/23/06; Power Mosfet Techs.,
8/17/04)
- Although claims may not be construed with

reference to the accused device, claim construction
always takes place in the context of the specific
accused device or product (Jang, 7/15/08 (referring
to the problems with construing claims in the
absence of context, where a stipulated judgment
provided no factual context with respect to how the
disputed claim construction rulings related to the
accused products); U.S. Philips, 11/2/07; Gillespie,
9/6/07; E-Pass Technologies, 1/12/07; Aero
Products, 10/2/06; MIT, 9/13/06; Serio-Us
Industries, 8/10/06; Lava Trading, 4/19/06), in part
because the CAFC reviews claim construction only
as necessary to determine the infringement issue
(Jang, 7/15/08 (addressing Article III
requirements); Serio-Us Industries, 8/10/06;
763
- Any definition of a claim term ultimately
must relate to the infringement question it is
intended to answer Wilson Sporting Goods
(U.S. Philips, 11/2/07 (infringement
question left for remand based on clarified
claim construction); E-Pass Technologies,
1/12/07)
- District court can consider the accused

product, in order to focus claim construction
on the disputed terms only (Typhoon Touch,
11/4/11; Cohesive Techs., 10/7/08; Aero
Products, 10/2/06; MIT, 9/13/06; Exigent
Tech., 3/22/06)
- Although appropriate for a court to

consider the accused device when
determining what aspect of the claim
should be construed, it is not
appropriate for the court to construe a
claim solely to exclude the accused
device Exigent Tech. (Every Penny
Counts, 4/30/09; Cohesive Techs.,
10/7/08 (district court failed to
construe disputed term as required by
Phillips))
- Knowledge of the accused product or

process provides meaningful context for
claim construction (Every Penny Counts,
4/30/09)
- Infringement or invalidity analysis provides

the context for claim construction Wilson
Sporting Goods (Every Penny Counts,
4/30/09 (citing Wilson Sporting Goods); In
re Icon Health and Fitness, 8/1/07 (BPAI,
764
although not providing a specific
construction of the claims, did so to the
extent required))
- Need for comparison of accused products to

the asserted claims without knowledge of
the accused products, the CAFC cannot
assess the accuracy of the infringement
judgment under review and lacks a proper
context for an accurate claim construction;
without the context of the accused products
or processes, the appeal is akin to an
advisory opinion on patent scope (Jang,
7/15/08 (distinguishing Lava Trading, in
which the factual context could be
sufficiently inferred from the record); MIT,
9/13/06; Lava Trading, 4/19/06 (appeals
allowed anyway))
- Stipulated judgment (of

noninfringement) did not identify
which of the many claim construction
issues was dispositive (Jang, 7/15/08;
MIT, 9/13/06)
Claim term meaning is the same for all claims, related patents
- Claim term meaning must be the same for all claims;

claims must be read consistently (Energy Transportation
Group, 10/12/12 (term programmable meant the same
with regard to two components); Digital-Vending, 3/7/12
(applying exception where the term registration server
was expressly limited by additional language in other
claims); Markem-Imaje, 9/9/11 (applying new rule rather
than adopting the accused infringers argument based on
the above rule); August Tech., 8/22/11 (claims were
written the same way in parent patent); American
765
Piledriving, 3/21/11 (construing the term integral as
having the same meaning in different claims); In re Katz
Patent Litigation, 2/18/11 (CAFC ordinarily interprets
claims consistently across patents having the same
specification NTP); Intl Rectifier, 2/11/08 (claim term
annular treated the same in three patents, only two of
which the jury found infringed); Pods, 4/27/07; Wilson
Sporting Goods, 3/23/06; Schoenhaus, 3/15/06;
Callicrate, 10/31/05; NTP, 8/2/05; cf., North American
Container, 7/14/05; Research Plastics, 8/18/05; Nazomi,
4/11/05; Franks Casing, 11/30/04; Innova/pure water,
(nonprecedential citing NTP for rule that when
construing claims in patents that derive from the same
parent application and share common terms, the CAFC
must interpret the claims consistently across all asserted
patents; construing term flitch consistently across all
related patents as meaning tapered flitch, where there was
a clear and unmistakable PH disclaimer of untapered
flitches in both child and parent patents in suit citing
NTP); Joovy, 8/5/11 (nonprecedential rejecting
argument that same term in independent and dependent
claim was not construed consistently); Boss Indus.,
5/28/09 (nonprecedential term base section was
correctly interpreted consistently across three related
patents based on the entirety of the patents intrinsic
evidence, thus rejecting the patentees argument that the
term should be interpreted differently in the parent in
each CIP patent based on description added to the later
patents not in the other patents, citing NTP); See also
Disclaimer during prosecution Prosecution of related
(vs. unrelated) applications
- Claim terms are normally used consistently

throughout the patent because claim terms are
normally used consistently throughout a patent, the
usage of a term in one claim can often illuminate
the meaning of the same term in other claims -
766
Phillips (August Tech., 8/22/11; American
Piledriving, 3/21/11 (nothing suggested that term
eccentric weight portion had different meaning
in different claims); Enzo Biochem, 3/26/10 (term
non-radioactive moiety had the same meaning in
all claims); Paragon Solutions, 5/22/09 (meaning
of term unit in data acquisition unit provided
its meaning in display unit); Felix, 4/10/09 (term
mounted was used consistently in the claims to
mean securely affixed or fastened to); In re
Omeprazole, 8/20/08 (rejecting construction of
term (alkaline salt) in independent claim which
would contradict dependent claims recitation of
ammonium salt, which was not encompassed by
the rejected construction); Chamberlain Group,
2/19/08 (because the term code presumptively
had the same meaning throughout the patent, the
terms binary code and trinary code had
parallel yet different meanings from each other);
Z4 Technologies, 11/16/07 (claim term meaning
the same for all asserted claims); Gillespie, 9/6/07
(terms inner and outer)), unless clear that
claim terms have different meanings at different
portions of claims (Yingbin-Nature, 7/31/08 (term
clearance having two related meanings in the
claims was supported by an adequate written
description in the original application for both
meanings); MEC, 4/1/08 (indefiniteness case; term
condition code had different meanings at
different portions of the same claim depending on
the context provided by other language
surrounding the different uses of the term); Pods,
4/27/07; Wilson Sporting Goods, 3/23/06)
- Antecedent basis is not dispositive the

patentees mere use of a term with an
antecedent basis does not require that both
uses of the term have the same meaning
767
(MEC, 4/1/08 (distinguishing Process
Control; another term took its antecedent
basis in view of PH amendments and use of
modifier the)); See also Harris, 1/17/13
(nonprecedential general rule applied
especially since the later instance of data set
referred to the data and therefore begs for
some antecedent basis)
- Claims containing the same claim terms

having different meanings when they recite
additional limitations (Digital-Vending,
3/7/12 (different meaning for term
registration server when some asserted
claims expressly limited the term with
additional language); MEC, 4/1/08 (consider
the context of the different uses of the same
term within the claim a word or phrase
used consistently throughout a claim should
be interpreted consistently Epcon Gas
(interpreting different uses of the term
substantially)); Callicrate, 10/31/05)
- Departure from the general rule that the

same limitation appearing in different parts
of the same claim is typically given the same
construction because of (disclaimer)
arguments during prosecution (North
American Container, 7/14/05)
- Ordinarily skilled artisan would not construe

similar claim terminology so differently
from one usage to another in the
specification (Baldwin Graphic Systems,
1/15/08 (rejecting the district courts widely
varying interpretations of claim term
(fabric) and related claim terms))
768
- Presumption that the same terms appearing in
different portions of the claims should be given the
same meaning unless clear from the specification
and PH that the terms have different meanings at
different portions of the claims (Aventis, 5/20/13
(giving term substantially pure in process claim
a different meaning for intermediate compound
than for the end product, where each was used in
distinct contexts and the term was claimed only in
the context of the intermediate citing Epcon Gas;
see also J. Bryson, dissenting the intrinsic
evidence did not distinguish between the way the
term was used in connection with the intermediate
vs. the end product); Haemonetics, 6/2/10
(different meanings for term in different claims);
Paragon Solutions, 5/22/09 (nothing in the intrinsic
evidence suggested that the term unit had a
different meaning in data acquisition unit and
display unit - citing PODS); *Pods, 4/27/07;
Wilson Sporting Goods, 3/23/06); BUT except that
the definition of a claim term cannot be correct
when renders the claim nonsensical (Aventis,
5/20/13 (citing MEC); MEC, 4/1/08 (where
interpreting the same term at different portions of
the claim in the same way would have rendered the
claim nonsensical); Schoenhaus, 3/15/06); See also
Harris, 1/17/13 (nonprecedential same data set
language recited in two places in method claim
referred to the same data set, relying on the rule
that when identical language is found in multiple
steps within the same claim, it is reasonable to
assume that all references relate to the same
subject matter citing Process Control)
- Presumed, unless otherwise compelled, that

the same claim term in the same patent or
related patents carries the same construed
meaning Omega Engg (In re Rambus,
769
8/15/12 (accepting the BPAIs claim
differentiation argument with respect to the
meaning of term memory device in related
patents as distinguished from single chip
devices); In re Katz Patent Litigation,
2/18/11; Z4 Technologies, 11/16/07); See
also Capital Machine, 4/15/13
(nonprecedential citing rule from NTP
see above)
Construction which excludes (preferred) embodiment(s), or the

inventors device, from the scope of the claims is rarely, if ever,
correct
(Broadcom, 10/7/13 (rejecting narrow construction of term

corresponding to as meaning equal to, which would have
excluded a disclosed embodiment); Rambus, 9/24/13 (rejecting
construction that would have excluded the preferred
embodiment would require highly persuasive evidentiary
support Adams Respiratory); Douglas Dynamics, 5/21/13
(reversing the district courts construction that excluded a
preferred embodiment; see also J. Mayer, dissenting); Synqor,
3/13/13 (defendants expert admitted that the rejected
construction would have excluded the preferred embodiment,
contrary to rule); Accent Packaging, 2/4/13 (reversing the
district courts construction that excluded the preferred and only
embodiment); Arcelormittal France, 11/30/12 (construing term
hot-rolled steel sheet to include cold-rolled embodiment in
the specification, while acknowledging rule that patent
protection does not extend to subject matter disclosed but not
claimed); Sandisk, 10/9/12 (district court improperly excluded
embodiment (one of two described methods) from claim
construction; see also J. Reyna, dissenting); Outside the Box
Innovations, 9/21/12 (see J. Newman, dissenting the courts
construction improperly excluded a preferred embodiment
shown in a figure which was the infringing product, stating: It
is highly unusual to construe routine patent claims so as to
770
exclude the embodiments in the drawings, when there is no
prosecution disclaimer. The purpose of patent drawings is to
focus the subject matter on which a patent is sought.);
Interdigital, 8/1/12; Advanced Fiber, 4/3/12 (district courts
construction of term perforated improperly excluded
disclosed embodiment, albeit disclosed in a single brief
sentence; see also J. Dyk, dissenting claim as properly
construed excluded the embodiment, where the patentee during
the PH provided a specific definition of the term from a
technology reference to overcome prior art); MySpace, 3/2/12
(applying general rule, citing Helmsderfer); August Tech.,
8/22/11; Advanced Software Design, 6/2/11 (rejecting
construction that did not read on preferred embodiment); In re
Katz Patent Litigation, 2/18/11 (construing term based on
embodiment rule); Astrazeneca, 11/1/10 (district courts
construction of term budesonide composition as excluding
prior art liposomes did not exclude liposome embodiments in
the patent); Funai, 9/1/10 (rejected claim construction would
have excluded preferred embodiment); Baran, 8/12/10 (asserted
claims did not cover preferred embodiment); Adams, 8/5/10
(rejecting claim construction that would exclude all preferred
embodiments); SEB, 2/5/10 (rejecting construction of
completely free limitation that would not read on the only
embodiment in the specification); Kyocera Wireless, 10/14/08
(preferred embodiment in figure was not excluded where
described only one of the two communication methods required
by the claims); Helmsderfer, 6/4/08 (disclosed embodiments
showing a surface totally hidden from view were properly
excluded from the scope of the term partially hidden from
view partially does not mean totally); Lucent Techs., 5/8/08
(preferred, and only, embodiment in the specification excluded
from claim written to clearly exclude the embodiment);
Solomon Techs., 5/7/08 (embodiment in figure was improperly
excluded from claim scope, in view of a dependent claim
directed to the excluded embodiment; another preferred
embodiment was understood to relate to another part of the
invention, and thus was not improperly excluded); PSN Illinois,
5/6/08 (stating that Oatey is not a panacea, requiring all claims
771
to cover all embodiments) Oatey, 1/30/08 (district courts
construction improperly excluded an entire embodiment, shown
in figure); Sinorgchem, 12/21/07 (lexicographer rule applied;
preferred embodiment in example excluded from scope of
claim); Osram GMBH, 10/31/07 (claim interpretation
improperly excluded the inventors device); Verizon, 9/26/07;
Honeywell, 7/3/07 (lexicographer rule applied); MBO Labs,
1/24/07; Primos, 6/14/06; Lava Trading, 4/19/06; Pfizer,
11/22/05; Cytologix, 9/21/05; North American Container,
7/14/05; Sandisk, 7/8/05; Chimie, 4/11/05; Nellcor, 4/8/05;
Medrad, 3/16/05; On-Line Technologies, 10/13/04; Glaxo,
7/27/04); See also MEMS Tech. Berhad, 6/3/11
(nonprecedential the rejected narrow construction of term
volume improperly excluded broader embodiments)
- Rule has particular force where the claims as construed

do not encompass any disclosed embodiments Johns
Hopkins (Sinorgchem, 12/21/07)
- Claim terms normally are not interpreted in a way that

excludes disclosed examples (Arcelormittal France,
11/30/12 (construing term hot-rolled steel sheet to
include subsequently cold-rolled embodiment - citing
Verizon); Oatey, 1/30/08; Verizon, 9/26/07; But see
Sinorgchem, 12/21/07 (example excluded from claim
scope, see also dissent, J. Newman entire specification,
including the examples, must be considered for correct
claim scope))
- District courts claim construction was erroneous

because it would have excluded embodiments
disclosed in the specification (3M Innovative,
8/6/13 (district courts construction would have
excluded an alternative embodiment); Accent
Packaging, 2/4/13 (district courts construction
excluded the preferred and only embodiment);
Arcelormittal France, 11/30/12; Interdigital, 8/1/12
(reason that ALJs construction of term code as
772
limited to spreading code was incorrect);
Advanced Fiber, 4/3/12 (rejecting the district
courts construction of perforated in view of
intrinsic evidence providing for a screening
medium formed by means other than piercing or
puncturing, and it did not matter that the
embodiment was disclosed in a brief single
sentence, stating that the fact that an embodiment
is disclosed in a single sentence is not a license to
ignore that disclosure; see also J. Dyk,
dissenting); Thorner, 2/1/12 (district courts
construction of term attached to mean attached
to the exterior only and not interior of a flexible
pad would have excluded the only embodiment in
the specification of a flexible pad where
attachment was to the interior); In re Katz Patent
Litigation, 2/18/11; Oatey, 1/30/08 (excluded
embodiment in figure); Lava Trading, 4/19/06);
See also Contech, 2/13/09 (nonprecedential
reason for rejecting the patentees argument for
broad construction)
- Claims may be construed to exclude (preferred)

embodiments (Bayer Cropscience, 9/3/13; Arcelormittal
France, 11/30/12; Advanced Fiber, 4/3/12 (J. Dyk,
dissenting Not every embodiment disclosed in the
specification necessarily falls within the scope of the
claims citing claim differentiation cases); August
Tech., 8/22/11; Astrazeneca, 11/1/10; Baran, 8/12/10
(asserted claims were construed not to cover a preferred
embodiment, where the specification clearly
distinguished between the preferred (adhesively
bonded) embodiment and the releasable embodiments
covered by the claims, the preferred embodiment was
covered by other claims, and even though the Summary
of the Invention described the invention as having the
releasable feature); Rolls-Royce, 5/5/10; Tip Systems,
6/18/08 (alternative embodiment was properly excluded
773
from the claim scope where would have contradicted the
claim language, as supported by the specification, the
court stating that [o]ur precedent is replete with
examples of subject matter that is included in the
specification, but is not claimed); Helmsderfer, 6/4/08
(the disclosed embodiments were within the scope of
the invention but were properly excluded from the
scope of the asserted claims as written); Oatey, 1/30/08
(embodiment was improperly excluded); Sinorgchem,
12/21/07 (lexicographer rule applied)), e.g., when
narrowing amendments made to overcome prior art
(North American Container, 7/14/05); See also Kruse
Tech., 10/8/13 (nonprecedential see also J. Wallach,
dissenting)
- At least where claims can be reasonably

interpreted to include a specific embodiment, it is
incorrect to construe the claims to exclude that
embodiment, absent probative evidence to the
contrary (SEB, 2/5/10; Oatey, 1/30/08)
- Probative evidence to the contrary -

claims need not cover all embodiments in
the specification, since some embodiments
may be within the scope of other (e.g.,
broader) allowed but unasserted claims, or
cancelled claims, which provide probative
evidence that an embodiment is not within
the scope of an asserted claim (August
Tech., 8/22/11; PSN Illinois, 5/6/08
(qualifying Oatey)); See also Boss Indus.,
5/28/09 (nonprecedential ruling that the
patentees argument, that the disputed terms
construction excluded certain disclosed
embodiments, was contradicted by the
unasserted claims, citing the above cases);
General Atomics, 5/12/08 (nonprecedential
stating that a claim need not cover all
774
embodiments in the specification, citing
PSN Illinois, 5/6/08, where [p]rosecution
strategies may evolve so that some
embodiments are covered in a patent and
others are not; in this case, the embodiment
construed as not covered by the claims was
covered by a claim in a related patent
resulting from the same parent application)
- CAFC has cautioned against interpreting a

claim term in a way that excludes disclosed
embodiments, when that term has multiple
ordinary meanings consistent with the
intrinsic record - Verizon (Helmsderfer,
6/4/08 (the disputed term partially had
only one ordinary meaning, based on
dictionary definitions, as excluding totally,
citing Verizon, 9/26/07, wherein the
disputed claim term had multiple ordinary
meanings and the court adopted the ordinary
meaning that included the disclosed
examples in the specification))
- Claims concluded to be unambiguous have been

construed to exclude (all) disclosed embodiments
(Bayer Cropscience, 9/3/13 (claim reciting term
(monooxygenase) known by the patentee to be
false was construed to exclude the disclosed
embodiment citing Lucent); Tip Systems,
6/18/08 (the claims need not be construed to
encompass all disclosed embodiments when the
claim language is clearly limited to one or more
embodiments, citing PSN Illinois); Lucent Techs.,
5/8/08 (claim language clearly supported the
district courts construction even though excluded
the only disclosed embodiment)); See also General
Atomics, 5/12/08 (nonprecedential disclosed
embodiment was excluded from the claim scope in
775
light of the plain language of the claim, which
[was] both clear and unambiguous)
- Claims can be interpreted to exclude embodiments

of the patented invention where those
embodiments are clearly disclaimed in the
specification or PH SciMed, North American
Container (Advanced Fiber, 4/3/12 (J. Dyk,
dissenting disclosed embodiment was excluded
from the claim scope by clear definition of the
invention during prosecution); SEB, 2/5/10 (no
disclaimer when the PH was read in context,
including that the correct construction accounted
for the only embodiment in the specification);
Oatey, 1/30/08 (no disclaimers present))
- Where multiple embodiments are disclosed,

claims can be interpreted to exclude
embodiments where those embodiments are
inconsistent with unambiguous language in
the specification or PH Telemac, N.
American Container (Sinorgchem, 12/21/07
(lexicographer rule applied to incorporate
numerical limit into claim term despite
example describing higher amount))
- Different claims directed to covering different disclosed

embodiments it is often the case that different claims
are directed to and cover different disclosed
embodiments (Advanced Fiber, 4/3/12 (see also J. Dyk,
dissenting); Fujitsu, 9/20/10 (non-asserted claims
covered embodiments not including the required claim
limitation); Helmsderfer, 6/4/08 (the term partially
hidden from view surface excluded embodiments
showing the surface totally hidden from view, which
embodiments were maybe covered by unasserted claims
not reciting the limitation))
776
- Embodiments excluded from claims, as construed,
does not mean that the embodiments are excluded
from the scope of the invention, but rather that
they are excluded from the scope of the particular
claims in dispute, as written (Helmsderfer, 6/4/08
(stating: The patentee chooses the language and
accordingly the scope of his claims))
- Inventors product that the patent was designed to cover

would be excluded by claim interpretation claim
interpretation that would exclude the inventors device is
rarely the correct interpretation (Osram GMBH,
10/31/07, see also J. Dyk, dissenting the majority
mistakenly equates OSRAMs products with the
preferred embodiment of the patent; claim interpretation
is not to be based on a commercial embodiment))
Construction with a scienter requirement
- Construction with a scienter requirement (i.e., requires

persons to have knowledge of certain facts when
practicing the invention) (Datamize, 8/5/05; Koito Mfg.,
8/23/04)
Construing claims to save their validity
- Validity analysis is not part of claim construction under

Phillips, the maxim is applied only when the claim is still
ambiguous after applying all available tools of claim
construction (Bayer Cropscience, 9/3/13 (qualifying rule
that validity analysis is not part of claim construction,
stating that Phillips leaves room for reliance on this
bolstering consideration where, as here, the record on
invalidity [lack of written description] is sufficiently
developed to establish grave validity doubts under the
courts standards the significant invalidity troubles
777
that accompany Bayers construction substantiate our
rejection of it); Broadcom, 9/24/08 (where claim
language is clear, it must be accorded full breadth even
if the result is an invalid claim); DSW, 8/19/08 (district
court improperly intermingled its validity and
construction analyses where claim language was not
ambiguous); Lucent Techs., 5/8/08; Saunders Group,
6/27/07; MBO Labs, 1/24/07; Pfizer, 11/22/05; Cross
Medical Prods., 9/30/05; Housey, 5/7/04; Chef America,
2/20/04; Liebel-Flarsheim, 2/11/04; AK Steel, 9/23/03);
See also Courts may not redraft claims
- Claim must be ambiguous, i.e., subject to more

than one interpretation (Lucent Techs., 5/8/08;
Saunders Group, 6/27/07; Housey, 5/7/04; Liebel-
Flarsheim, 2/11/04 (broadly construed claims later
held invalid as non-enabled in Liebel-Flarsheim,
3/22/07)
- Circumstances (i.e., claim language, absence

of disclaimer in the specification and PH,
and patentees representations in a petition
to make special) dictated that claims were
not ambiguous, and thus were given a broad,
perhaps non-enabled, interpretation
(Saunders Group, 6/27/07); See also
Medegen, 11/20/08 (nonprecedential D.J.
Walker, dissenting suggesting that claim
term plug not limited to being elastomeric
was non-enabled and lacked adequate WD)
- District courts validity analysis (based on

lack of enablement) could not be a basis for
adopting a narrow claim construction
Liebel-Flarsheim (Saunders Group, 6/27/07)
- When a tie between narrow and broad

interpretation, narrow trumps broader (3M
778
Innovative, 8/6/13 (J. Plager, concurring
proposing to apply rule to ambiguous claim
terms citing Athletic Alternatives);
Halliburton, 1/25/08 (indefiniteness; where
adopting a broad construction would have
undermined the notice function of claims))
needs to have been contradictory and
irreconcilable affirmative representation of
the contested limitation (Housey, 5/7/04)
- Construction may require difficult factual

determination(s) a court is not allowed to
surrender scope the patentee had a right to claim
(Playtex, 3/7/05)
- Validity construction should be used as a

last resort, not a first principle (MBO Labs,
1/24/07)
- No principle of law authorizes reading into a claim

an element which is not present for the purpose of
making out a case of novelty DuPont (Soverain
Software, 1/22/13)
Courts may not redraft claims, nonsensical construction
- Courts may not redraft claims e.g., whether to cure a

drafting error made by the patentee, or make them
operable or sustain their validity, or otherwise; courts
must construe claims based on the words actually used,
and on other intrinsic evidence (Bayer Cropscience,
9/3/13 (CAFC was unable to construe claims in way to
protect the preferred embodiment (in dependent claim),
due to the patentees bad choices in claim drafting
citing Chef America); Taurus IP, 8/9/13 (rejecting the
patentees proposed construction that would have
effectively rewritten the claim language user-defined to
779
system-defined citing K-2 Corp.); Alcon Research,
8/8/12 (Courts do no rewrite the claims to narrow them
for the patentee to cover only the valid portion. and
thus rejecting the patentees argument that dependent
claims did not cover inoperable drug concentrations
within the claimed ranges); AIA Engg, 8/31/11
(lexicography applied, particularly where it avoided an
inoperable claim construction); Rembrandt, 4/18/11
(court was unable to correct apparent error in claim as to
render claim not indefinite); American Piledriving,
3/21/11 (assessing different constructions of the same
terms by different district courts, stating that district
courts may not redefine claim recitations or read
limitations into the claims to obviate factual questions of
infringement and validity); Haemonetics, 6/2/10; Ultimax
Cement, 12/3/09 (the CAFC did not rewrite the claim or
correct an error in construing correctly the disputed term
anhydride based on the context of the patent); Ecolab,
6/9/09 (distinguishing Chef America where the definition
of the disputed term (sanitize) was ambiguous in that it
did not indicate whether the chicken could be eaten
before or only after cooking); Helmsderfer, 6/4/08 (the
claimed partially hidden from view surface properly
excluded all embodiments showing the surface totally
hidden from view; partially does not include totally);
Lucent Techs., 5/8/08; Ortho-McNeil, 3/31/08;
Honeywell, 7/3/07 (dissent); Sram, 10/2/06; Pfizer,
8/2/06; Nazomi, 4/11/05; Merck, 1/28/05 (dissent); Chef
America, 2/20/04); See also Smartmetric, 4/11/12
(nonprecedential construing insertion into to also
mean passed near would erroneously rewrite the
claims); Zircon, 10/5/11 (nonprecedential where it
appeared that dependent claim was meant to be an
independent claim from which the dependent claims at
issue would flow, the CAFC stated: The fact that the
claims do not appear in the patent as, perhaps, they were
originally intended is not a problem this court has the
authority to remedy citing Chef America); Amazin
780
Raisins Intl, 10/31/08 (nonprecedential claim
unambiguously recited substantially remove flavor,
and not merely to mask, cover, or conceal flavor);
Energizer Holdings, 4/21/08 (nonprecedential J. Schall
that the CAFCs earlier construction would lead to an
illogical result did not matter, stating that the inventor
easily could have avoided this problem by drafting the
claim differently, citing Chef America; J. Linn
concurring)
- Construe claim as the court finds it; courts cannot

broaden or narrow claims; the patent must be
interpreted as written, not as the patentees wish
they had written it Chef America (Haemonetics,
6/2/10; Helmsderfer, 6/4/08; Lucent Techs., 5/8/08
(to do so would unduly interfere with the function
of claims in putting competitors on notice of the
scope of the claimed invention Hoganas);
Ortho-McNeil, 3/31/08; Nazomi, 4/11/05;
Metabolite Labs (dissent), 6/8/04; Chef America,
2/20/04; Arlington, 9/25/03)
- Ambiguous vs. unambiguous claim

language (Ecolab, 6/9/09 (distinguishing
Chef America in which the disputed claim
language was unambiguous))
- Exception to rule when there is an obvious

administrative or typographical error not
subject to reasonable debate Hoffer
(Rembrandt, 4/18/11 (exception was not
applicable); Lucent Techs., 5/8/08); See also
CORRECTION OF PATENTS
- Claims concluded to be unambiguous have

been construed to exclude all disclosed
embodiments (Lucent Techs., 5/8/08 (claim
language clearly supported the district
781
courts construction even though excluded
the preferred, and only, disclosed
embodiment))
- If the only reasonable interpretation is

nonsensical, then the claim is invalid
(Haemonetics, 6/2/10; Lucent Techs., 5/8/08
(may construe a claim to sustain its validity
when amenable to more than one reasonable
construction); Ortho-McNeil, 3/31/08
(giving the term and its most common
dictionary meaning would have produced
nonsensical result, distinguishing Chef
America); Chef America, 2/20/04); See also
Energizer Holdings, 4/21/08
(nonprecedential J. Schall invalid for
lack of written description, vs. J. Linn,
concurring in the conclusion of invalidity,
but based on indefiniteness)
- Avoid nonsensical results where

possible in construing claim language
(AIA Engg, 8/31/11 (rejecting
construction requiring inconsistent
results))
- Patentee is responsible for drafting and prosecuting

claims and patent
- Patentee is responsible for drafting and

prosecuting the patent; claim construction
result could have been prevented through
clearer drafting, had the patentee intended
something different; the language of the
claims, and not attorney argument, which
governs too late during litigation to argue
what the real invention is (Bayer
Cropscience, 9/3/13 (referring to patentee
782
drafting duties making it appropriate to
demand clarity for the meaning of the
disputed term proposed by the patentee
which was contrary to the accepted scientific
descriptive meaning: Bayer chose the
language based on an unverified belief that
it accurately described its enzyme, learned
that the belief was false while its application
was pending, had seven years before its
patent issued to alter the language, but never
did.); Haemonetics, 6/2/10; Helmsderfer,
6/4/08 (the term partially hidden from
view does not include totally hidden from
view, or mean at least partially or generally
hidden from view); Miken Composites,
2/6/08 (term insert construed according to
its ordinary and customary meaning in the
field of art)); See also Scantibodies Lab,
5/6/10 (nonprecedential construing term
not detecting as recited, stating that the
patentee chose to draft the claims narrowly,
and could have been broader or defined the
term in the specification by other than its
ordinary meaning)
- Patentee should be held to what is claimed -

it is not the province of the courts to salvage
poorly or incorrectly drafted patent
claims; fair notice to the public, and to
competitors, of what is claimed depends on
holding patentees to what they claim, not to
what they might have claimed; it is the
responsibility of those who seek the benefits
of the patent system to draft claims that are
clear and understandable; when courts fail to
enforce that responsibility in a meaningful
way they inevitably contribute an additional
element of indeterminacy to the system;
783
sometimes being kind to a party results in
being unkind to the larger interests of the
society (Haemonetics, 6/2/10; Honeywell,
7/3/07, J. Plager, dissenting, where the
patentee used the claim term heading
when really meant bearing)); See also
Brown, 5/7/10 (nonprecedential no
exception for pro se claim drafting thus
rejecting argument that deference on patent
validity should be given because the
examiner suggested the indefinite claim
language, and ruling that a patent claim is
treated no differently because the patentee
chose to file the application pro se and
accepted the suggestions of the patent
examiner citing Kim); Energizer Holdings,
4/21/08 (nonprecedential J. Schall and J.
Linn, vs. J. Newman: Undoubtedly the
claims could have been more perfectly
drawn, but when read in the context of the
specification there is no doubt as to what is
described and claimed and stating further
that [t]he complexities of patent claim
writing are notorious. There are few, if any,
legal documents more difficult to craft, more
fraught with pitfalls than patent applications;
and patent claims are so universally
challenging to the non-specialist, that this
court has converted the judicial need to
understand them into an unruly cottage
industry called claim construction.; J.
Newman also cited cases supporting the rule
that ambiguous claims must be interpreted
based on the specification, and adding that:
Precedent is extensive, and powerful, that
any uncertainty flowing from the drafting of
the claim seeks resolution by recourse to the
784
specification, as understood by persons of
ordinary skill in the field of the invention.)
- Nonsensical claim construction claim

construction rendering claims nonsensical is not
correct - Schoenhaus (AIA Engg, 8/31/11; Becton
Dickinson, 7/29/10 (rejecting the dissenting
judges (J. Gajarsa) construction - that two claim
elements were the same structure in the accused
products - as nonsensical))
- Recapture rule (when construing reissue patent)

cannot be applied to rewrite claims; recapture rule
is a separate issue from claim construction (MBO
Labs, 1/24/07)
- Recapture rule may factor into claim

construction where the available techniques
of construction yield two possible
interpretations of a reissue claim - where
only one construction includes previously
surrendered matter, it would be correct to
resolve the ambiguity by selecting the
interpretation not barred by the recapture
rule (MBO Labs, 1/24/07)
Deference to district courts construction?
- District courts claim construction receives no deference

on appeal (Trading Techs., 2/25/10 (J. Rader
emphasizing the Cybor (en banc) rule that requires a
review of the district courts claim construction without
the slightest iota of deference; D.J. Clark, concurring,
commented separately on the de novo standard of
review); Callicrate, 10/31/05); See also STANDARDS
OF REVIEW . . . Substantive/procedural issues Claim
construction
785
- Claim construction given weight, but no deference;
trial judge must construe claims well enough for
the CAFC to review (Advanced Fiber, 4/3/12
(although no formal deference, the CAFC gives
careful consideration to the district courts
decision); Marine Polymer, 3/15/12 (en banc)
(claim construction reviewed without formal
deference on appeal, although we give respect to
the judgments of the district courts); Dow Jones,
5/28/10 (the CAFC takes into account the views of
the trial judge, and common sense dictates that
the trial judges view will carry weight
Nazomi); Trading Techs., 2/25/10 (the CAFC,
after reconstruing this term based on its own
understanding of the claims, specification,
prosecution history, and record, agrees with the
district courts claim construction of the word
static); Nazomi, 4/11/05; Merck, 1/28/05
(dissent)); See also Cooper Notification, 8/30/13
(nonprecedential the CAFC stating that we
recognize and benefit from the expertise and
vantage point of the trial court judge citing
Marine Polymer)
- Precedent establishes that no deference is owed to

the district courts claim construction or to any
underlying factual findings predicate to construing
the meaning and scope of the claims (Trading
Techs., 2/25/10; Tivo, 1/31/08 (n.2 - when
competing presentations of extrinsic evidence, Q
of law is indistinguishable in any significant
respect from a conventional finding of fact, to
which we typically accord deference using the
more deferential clear error standard); Gillespie,
9/6/07)
786
- Deference to ITC Commissions expertise and findings
warrant appropriate deference (Sinorgchem, 12/21/07, J.
Newman, dissenting)
Dependent claims
- To establish whether a claim is dependent upon another,

the claim is examined to determine whether it refers to an
earlier claim and further limits that claim 35 USC
112, 4 (Alcon Research, 8/8/12; Monsanto, 10/4/07
(dependent claim was limited by independent claim,
because clearly referenced the independent process
claim, and not simply a product of the claimed process));
See also Zircon, 10/5/11 (nonprecedential any reading
of the dependent claims other than the CAFCs would
have rendered them invalid under Section 112, 4)
- Claims status as dependent or independent

depends on the substance of the claim in light of
the language of Section 112, 4, and not the form
alone (Monsanto, 10/4/07)
- PH supported interpretation of claim as a

dependent claim (Monsanto, 10/4/07)
- Dependent claim incorporates by reference all

limitations of the claim to which it refers, and thus
a dependent claim cannot be broader than the
claim from which it depends 35 USC 112, 4
(Alcon Research, 8/8/12 (concentration ranges
recited in dependent claims must necessarily
meet the independent claims limitation of being
therapeutically effective for treating allergic eye
disease by stabilizing conjunctival mast cells, and
thus rejecting the patentees argument that the
inoperative portion of the recited ranges was not
covered by the claims, stating: This is not how
patent law works.); Pioneer Hi-Bred, 2/28/12
787
(applying rule, and also distinguishing dependent
from related claims); Hutchins, 7/3/07); See also
Kruse Tech., 10/8/13 (nonprecedential J.
Wallach, dissenting); MEMS Tech. Berhad, 6/3/11
(nonprecedential applying rule as basis for no
anticipation or obviousness of dependent claims)
- Dependent claim adding one claim

limitation to a parent claim is still a claim to
the invention of the parent claim (Nartron,
3/5/09 (co-inventorship))
Different terms in the claims (and the specification) are assumed

to have different meanings
- When construing terms in the body of a claim, the

general assumption or presumption is that different terms
have different meanings Applied Medical Resources
(Deere, 12/4/12 (terms secured to and into
engagement with had distinct meanings, in order to give
effect to all terms of the claim citing Bicon); Chicago
Board, 5/7/12 (applying rule to hold that different terms
used in the specification had different meanings, and that
different claim terms had different meanings based on the
claims and specification); Aspex Eyewear, 3/14/12 (term
adapted to in one claim had a narrower meaning than
capable of in another claim); Markem-Imaje, 9/9/11
(construing term drive broadly as not limited to
meaning rotate, since the term did not need to be
narrowly construed merely because a broader
construction would make it similar to the word control
also used in the claim); Baran, 8/12/10 (presumption
overcome where terms releasablyand detachable
used interchangeably); Becton Dickinson, 7/29/10 (basis
for treating separate claim elements spring means and
hinged arm as separate structures; see also J. Gajarsa,
dissenting different terms having different meanings
788
does not mean that they are separate structures); Bid for
Position, 4/7/10 (claim terms bid and value of the bid
were consistently used interchangeably in the
specification, such that they could not be read to have
separate meanings); Comaper, 3/1/10; SEB, 2/5/10
(claim limitation completely was used interchangeably
with practically in the specification); U. Texas, 7/24/08
(claim distinguished two modifications of the same
term); Helmsderfer, 6/4/08 (partially vs. generally
and at least); Symantec, 4/11/08 (distinguishing rule
for terms in the preamble, stating that the use of different
language in the preamble than in the body of the claims
does not suggest that the preamble imposes a limitation));
See also Speedtrack, 4/16/13 (nonprecedential
difference in meaning and scope was presumed between
claim terms category description and category
description identifier, which was also supported by the
specification and PH); Joy, 11/8/12 (nonprecedential
term indentations construed as excluding holes, where
other claim terms (e.g.,bore and opening) were used
to connote holes)
- Assumption carries less weight when comparing a

term in the claim to a term in the specification,
especially where the specification only describes
one embodiment (SEB, 2/5/10 (claim limitation
completely meant the same thing as practically
in the specification, citing Symantec))
- Inference that two different terms used in a patent

have different meanings Ethicon Endo-Surgery;
this inference is not conclusive Bancorp Servs.
(Arcelormittal France, 11/30/12 (J. Wallach
dissenting citing Bid for Position for proposition
that terms very high, high, and substantial
were laudatory terms used interchangeably in the
patent without any limited purposes citing
cases); Chicago Board, 5/7/12 (rejecting argument
789
that different terms used in the specification had
similar meanings citing Bid for Position); Bid for
Position, 4/7/10 (claim step would have been
rendered non-sensical or meaningless if claim
terms bid and value of the bid had different
meanings); Comaper, 3/1/10 (intrinsic evidence
supported the district courts construction that
disputed terms had different meanings))
- Different terms or phrases in separate claims may

be construed to cover the same subject matter
where the written description and PH indicate that
such a reading is proper Nystrom (Hologic,
2/24/11 (construing different language in multiple
independent claims as having the same meaning));
See also St. Clair, 1/10/11 (nonprecedential
claim limitations in different related patents using
different language were construed the same where
the specification described only a single invention
and did not differentiate between the scope of
claims using very different language; see also J.
Moore, dissenting the patentee was entitled to
have the court independently construe certain
terms having different language); See also
Doctrine of claim differentiation
Disclaimer in the specification
Disclaimer must be clear
- Disclaimer in the specification rebutting the

presumption of ordinary and customary meaning
Phillips, SciMed (SkinMedica, 8/23/13 (inventors clearly
redefined the scope of culturing . . . cells in three-
dimensions by disclaiming the use of beads, which
would otherwise be included in the ordinary meaning of
the phrase (as was known at the time of filing); see also
J. Rader, dissenting to overcome the heavy
790
presumption in favor of the ordinary meaning of claim
language, the patentee must clearly set forth and
clearly redefine a claim term away from its ordinary
meaning (Bell Atlantic), and the disavowal must be
unmistakable and unambiguous citing Dealertrack
(PH disclaimer case)); Aventis Pharma, 4/9/12; Digital-
Vending, 3/7/12 (no clear disclaimer of scope of term
registration server in method claims where the
specification treated the term differently with respect to
methods vs. claimed computer architecture, and a
disclaimer would have rendered limitations described in
other claims superfluous; see also J. Moore, dissenting
the case presented one of the rare instances of a clear
and unmistakable disavowal of claim scope in the
specification, where repeated statements were made,
including describing the limitation as a requirement of
the invention, and disagreeing with the majority that the
disputed term was distinguished in the description of the
method vs. architecture claims; also opining that claim
differentiation does not control when claim scope is
disavowed (citing Toro), and the patentee should not be
allowed to recapture scope disavowed in the specification
and game the system through creative claim drafting);
Thorner, 2/1/12 (disclaimer must be clear and
unmistakable (citing no cases); also summarizing the
facts and holding in SciMed, and ruling that lexicography
and disavowal require a clear and explicit statement by
the patentee); Spine Solutions, 9/9/10 (no clear
disclaimer based on disparaging the prior art); Epistar,
5/22/09 (no clear disclaimer from disparaging the prior
art with respect to another part of the device); Voda,
8/18/08 (no clear disavowal of claim scope where the
specification described in some places that the contact
portion of a catheter be straight, while in other places did
not require a straight portion); Computer Docking
Station, 3/21/08 (term portable computer construed
narrowly as excluding laptop computers, based on the
specification and PH); Paice, 10/18/07 (DOE only;
791
construed SciMed narrowly); SafeTCare Mfg., 8/3/07;
Ventana Medical Systems, 12/29/06; Conoco, 8/17/06;
Pfizer, 8/2/06; LG Electronics, 7/7/06; Honeywell,
6/22/06; Inpro II Licensing, 5/11/06; On Demand
Machine, 3/31/06; Atofina, 3/23/06; Collegenet, 8/2/05;
Seachange Intl, 6/29/05; Boss Control, 6/8/05; Gillette,
4/29/05; Nazomi, 4/11/05; Alza, 12/10/04; Bilstad,
10/7/04; Home Diagnostics, 8/31/04; Mars, 7/29/04;
Novartis, 7/8/04; Superguide, 2/12/04; Liebel-Flarsheim,
2/11/04; Microsoft, 2/3/04; Golight, 1/20/04; PSC
Computer Prods., 1/20/04; Resqnet.com, 10/16/03; Alloc,
9/10/03; Resonate, 8/5/03; Sunrace Roots, 7/17/03); See
also Medegen, 11/20/08 (nonprecedential ruling no
clear disclaimer of non-elastomeric plugs in the
specification from the ordinary meaning of the claim
term plug)
- Abstract may contain a disavowal (Computer

Docking Station, 3/21/08 (Abstract cited);
Innova/pure water, 8/11/04)
- Background of the Invention section supporting

disavowal (SkinMedica, 8/23/13 (disavowal of
beads by distinguishing two-dimensional culturing
using beads from the claimed three-dimensional
culturing); Computer Docking Station, 3/21/08
(background section contrasted microcomputers,
the subject of the invention, from laptop
computers)); See also Sunbeam Products, 12/15/10
(nonprecedential highlighting problem inherent
in bearings that rock and pivot)
- Figures of the invention supporting disavowal

(Computer Docking Station, 3/21/08)
- Clear disavowal, clear intent to limit claim scope,

redefinition of claim term in the specification is
required vs. whether the specification supports a
792
broader interpretation (SkinMedica, 8/23/13 (term
three-dimensional culturing was implicitly and
clearly redefined to exclude culturing using beads;
see also J. Rader, dissenting disavowal must be
unmistakable and unambiguous citing
Dealertrack (PH disclaimer case) the standard is
exacting citing Thorner, and thus concluding
that the four references in the patent to beads relied
on by the majority for finding a disclaimer were
ambiguous and did not unmistakably disclaim the
use of beads from the terms ordinary meaning,
and did not meet the exacting standard imposed
by this courts precedent )); Saffran, 4/4/13 (J.
OMalley, dissenting majority incorrectly
construed term device as limited to sheet, where
there was no clear intent in the patent to limit the
term); Medtronic, 9/18/12 (district courts reliance
on statement in the specification to find a
disclaimer was a far cry from the clear disavowal
needed to limit the patent claims); In re Rambus,
8/15/12; Chicago Board, 5/7/12 (clear disavowal
based on repeated derogatory statements);
Aventis Pharma, 4/9/12 (district court correctly
construed term perfusion not to include an eight-
hour stability limitation); Digital-Vending, 3/7/12
(careful distinctions in specification descriptions
avoid[ed] any hint that the inventors clearly
disavowed claim scope from term registration
server in the method claims, as compared to the
computer architecture claims citing Epistar);
Thorner, 2/1/12 (disclaimer must be clear and
unmistakable (citing no cases); also rejecting an
implied redefinition of claim term attached to
mean attached to the exterior and not interior,
ruling that an implied redefinition must be so
clear that it equates to an explicit one); Falana,
1/23/12 (no disclaimer, citing Teleflex Absent
such clear statements of scope, the CAFC must
793
follow the claim language, rather than the written
description); Spine Solutions, 9/9/10 (no express
disclaimer by disparaging prior art); Vizio, 5/26/10
(no broad disclaimer of any and all use of the
MPEG PMT, but rather disclaimer only of systems
that require the use of MPEG PMT); i4i, 3/10/10
(no clear intent in the specification to limit the
claim scope to storage in files, where the more
generic term storage space was used); Martek
Biosciences, 9/3/09 (no disclaimer of humans from
express definition of term animal that included
humans, citing Home Diagnostics (2004): Absent
a clear disavowal or contrary definition in the
specification or prosecution history, the patentee is
entitled to the full scope of its claim language); U.
of Pittsburgh, 7/23/09 (that the specification
described similar prior art cells differently than the
inventive cells did not arise to an intent to deviate
from the plain meaning of the term adipose-
derived); Paragon Solutions, 5/22/09 (description
in the specification of at any given moment was
no more or less clear than the claim term real-
time display, and thus was unhelpful for
ascertaining its meaning); Epistar, 5/22/09 (no
clear disavowal from claim term by disparaging
the prior art with respect to a different part of the
device); Abbott Labs, 5/18/09 (Crystal B
compounds were intentionally excluded from the
scope of the claimed crystalline compound,
where the disclosure of Crystal B in the foreign
priority application was not retained in the U.S.
application); Revolution Eyewear, 4/29/09 (clear
disclaimer required for surrender of subject matter
in reissue claim); Voda, 8/18/08 (disclaimer must
be clear Conoco); Decisioning.com, 5/7/08
(split decision); SafeTCare Mfg., 8/3/07; Ventana
Medical Systems, 12/29/06 (split decision);
Conoco, 8/17/06; Pfizer, 8/2/06; Varco, 2/1/06;
794
Boss Control, 6/8/05; Gillette, 4/29/05;
SmithKline, 4/8/05; Home Diagnostics, 8/31/04;
Innova/pure water, 8/11/04; Superguide, 2/12/04;
Liebel-Flarsheim, 2/11/04; Genzyme (dissent),
10/9/03; ACTV, 10/8/03); See also Astrazeneca,
10/30/13 (nonprecedential concluding no
disclaimer based on the specification of non-heat
sterilized micronized powder compositions
based on Thorner rule that [t]o constitute
disclaimer, there must be a clear and unmistakable
disclaimer); In re Rembrandt, 9/13/12
(nonprecedential clear intent in the specification
to limit term signal point to two dimensions
citing i4i); Lucky Litter, 10/6/10 (nonprecedential
ruling there was no disclaimer based on a
statement describing an object of the invention,
and even though the specification distinguished the
invention over a prior art reference in terms of the
improperly added cat exit limitation); Sanofi-
Aventis, 9/10/09 (nonprecedential applying the
standard for prosecution disclaimer (i.e., clear
and unmistakable disclaimer required) to
specification disclaimer, ruling that the use of only
HPLC in the examples to obtain optically pure
oxaliplatin did not clearly and unmistakably
disclaim any process, and thus did not justify
reading a process limitation into a composition
claim)
- Patentee may demonstrate intent to deviate

from the ordinary and customary meaning of
a claim term by including in the
specification expressions of manifest
exclusion or restriction, representing a clear
disavowal of claim scope Teleflex (In re
Abbott Diabetes Care, 9/28/12; In re
Rambus, 8/15/12 (agreeing with the BPAI
that the specification did not restrict the
795
invention to single chip memory devices, in
which only preferred embodiments and
goals of the invention better met by single
chip devices were described, and did not
require such devices); Aventis Pharma,
4/9/12; Digital-Vending, 3/7/12; Thorner,
2/1/12; Retractable Techs., 7/8/11 (no
disavowal based on criticizing and
distinguishing prior art devices; see also C.J.
Rader, dissenting, with respect to the
majoritys limiting construction of term
body as requiring a one-piece structure,
where the specification did not satisfy the
above standard, and the terms ordinary
meaning was supported by the doctrine of
claim differentiation); Arlington Indus.,
1/20/11 (no disavowal); Spine Solutions,
9/9/10 (no clear disavowal, citing Epistar);
Telcordia Techs., 7/6/10; i4i, 3/10/10;
Martek Biosciences, 9/3/09 (patentees
explicit lexicography with respect to the
term animal which included humans
controlled); Epistar, 5/22/09 (the patentees
discussion in the specification of the
shortcomings of certain techniques was not a
disavowal of the use of those techniques in a
manner consistent with the claimed
invention)); See also Astrazeneca, 10/30/13
(nonprecedential applying above rule to
disclaimer, and that a disclaimer must be
clear and unmistakable citing Thorner)
- Where the specification makes clear that the

invention does not include a particular
feature, that feature is deemed to be outside
the reach of the claims, even though the
claim language, read without reference to
the specification, might be considered broad
796
enough to encompass the feature in question
Honeywell, SciMed (SkinMedica, 8/23/13;
Medtronic, 9/18/12; Woods, 8/28/12 (district
court properly gave claim terms their plain
meaning, where no disclaimer); Chicago
Board, 5/7/12 (disavowal based on repeated
derogatory statements)); See also
Astrazeneca, 10/30/13 (nonprecedential
not limiting claim to heat sterilized
micronized powder composition despite
sharp criticism in the specification of other
types of sterilization, applying the rule that
mere criticism of a particular embodiment
encompassed in the plain meaning of a
claim term is not sufficient to rise to the
level of clear disavowal citing Thorner;
concluding that the specification was
confusing as to whether it limited only the
disclosed process to heat sterilization, or
instead both the disclosed process and
product, and the confusion thus left
available an interpretation that the products,
as opposed to the processes, were not
limited to any particular form of
sterilization)
- Description of a preferred embodiment, in

the absence of a clear intention to limit
claim scope, is an insufficient basis on
which to narrow claims Liebel-Flarsheim
(Toshiba, 6/11/12 (citing Thorner rule it is
not enough that the only embodiments, or
all of the embodiments, contain a particular
limitation); Aventis Pharma, 4/9/12 (not
limiting term perfusion to having at least
eight-hour stability based on description and
disclosed examples, ruling that general
descriptions of the characteristics of
797
embodiments do not suffice to limit the
claims and that it is not enough that the
only embodiments, or all of the
embodiments, contain a particular
limitation to limit a claim term beyond its
ordinary meaning Thorner, Liebel-
Flarsheim); Thorner, 2/1/12 (the CAFC does
not read limitations from the specification
into the claims, and it is not enough that the
only embodiments, or all of the
embodiments, contain a particular
limitation); Falana, 1/23/12 (no disclaimer,
citing Teleflex and distinguishing Alloc);
Arlington Indus., 1/20/11 (see also J. Lourie,
dissenting); i4i, 3/10/10; Martek
Biosciences, 9/3/09 (disclosure of preferred
non-human animals did not constitute a clear
and manifest disavowal of human animals
from the patentees express definition of
animal which included humans);
Decisioning.com, 5/7/08 (limiting broad
term based on the specification being the
invention itself and not just a preferred
embodiment)); See also Astrazeneca,
10/30/13 (nonprecedential not limiting
term micronized powder composition to
the preferred embodiment heat sterilized
micronized powder composition -- applying
rule that it is not enough for a disclaimer
that the only embodiments, or all the
embodiments, contain a particular limitation
citing Thorner); Microthin.com, 5/20/10
(nonprecedential concluding no disclaimer
with respect to term non-slip, comparing
SciMed and Liebel-Flarsheim); Uniloc USA,
8/7/08 (nonprecedential citing Liebel-
Flarsheim; split decision preferred
798
embodiment only vs. narrow interpretation
based on the context of the specification)
- Principle that absent a clear

disclaimer of particular subject
matter, the fact that the inventor may
have anticipated that the invention
would be used in a particular way
does not mean that the scope of the
invention is limited to that context
Liebel-Flarsheim (Martek
Biosciences, 9/3/09 (claims not
limited to certain types of animals that
the inventor anticipated would prove
useful in the invention, where the
patent did not clearly disclaim
coverage of humans and the term
animal was expressly defined as
including humans))
- Disavowal by express disclaimer (Pfizer,

8/2/06 (specific statement in the
specification that the invention
contemplates only . . . . was an express
disclaimer of claim scope))
- Express disavowal of claim scope,

alternatives (e.g., relays are . . . valves)
vs. specification describing broader scope
(SafeTCare Mfg., 8/3/07; Honeywell,
6/22/06; Varco, 2/1/06; Kinik, 3/25/04)
Disclaimer may be implicit
- Implicit disclaimer where so clear that it

equates to an explicit one Thorner
(SkinMedica, 8/23/13 (affirming implicit
799
disclaimer of culturing with beads although
the inventors never explicitly redefined the
claimed three-dimensional cultures to
exclude the use of beads, where the patentee
clearly distinguished bead cultures from the
claimed three-dimensional cultures also
stating that the decision comported with the
CAFCs implicit disclaimer cases, citing
SafeTCare and noting that there was a
clearer implicit disclaimer than in Bell
Atlantic))
- Disavowal need not be an explicit statement

rigid formalism is not required
(SkinMedica, 8/23/13; On Demand
Machine, 3/31/06; Astrazeneca, 9/30/04)
- Disavowal of claim scope in the

specification when demean certain
subject matter (SkinMedica, 8/23/13
(disavowal of beads by distinguishing
two-dimensional culturing using
beads from the claimed three-
dimensional culturing, by using
disjunctive terms or and as
opposed to); In re Abbott Diabetes
Care, 9/28/12; Chicago Board, 5/7/12
(disavowal from the claimed
automated exchange of traditional
floor-based trading systems, based on
a listing in the specification of their
many deficiencies); Thorner, 2/1/12;
Retractable Techs., 7/8/11 (no
disclaimer, citing Spine Solutions);
American Piledriving, 3/21/11 (any
alleged disclaimer was of more
specific subject matter than contained
in the accused product); Spine
800
Solutions, 9/9/10 (no clear
disclaimer); Edwards Lifesciences,
9/22/09 (criticizing and thus
disclaiming resilient, self-expanding
wires of prior art); Epistar, 5/22/09
(no clear disavowal from the scope of
the claim based on a single, passing
reference to the allegedly disclaimed
material as being unsatisfactory);
SafeTCare Mfg., 8/3/07; Honeywell,
6/22/06 (repeated derogatory
statements = disavowal of subject
matter the term electrically
conductive fibers excluded carbon
fibers))
- Specification distinguishing
prior art, or disparaging,
criticizing prior art narrowing
construction (SkinMedica,
8/23/13; Saffran, 4/4/13
(distinguishing prior art stents
with open mesh holes and no
sheet further showed that term
device meant sheet and
excluded stents having open
mesh holes); In re Abbott
Diabetes Care, 9/28/12 (also
relying on the fact that the only
mention in the patents of the
disclaimed embodiment was a
single statement addressing the
primary deficiency of the prior
art); Chicago Board, 5/7/12
(repeated derogatory
statements the specification
went well beyond expressing
the patenteees preference for a
801
fully automated exchange over
a manual or a partially
automated one, and its repeated
derogatory statements about the
latter reasonably may be
viewed as a disavowal of the
subject matter from the scope
of the claims citing
Honeywell); Thorner, 2/1/12
([m]ere criticism of an
embodiment within the plain
meaning of a claim term is not
enough for a clear disavowal -
Epistar); Retractable Techs.,
7/8/11 (no disclaimer);
American Medical Systems,
9/13/10 (preamble not limiting
in part because no disclaimer
under SciMed in distinguishing
prior art); Spine Solutions,
9/9/10 (rejecting proposed
narrow construction based on
disparaging the prior art, where
did not rise to the level of an
express disclaimer); Edwards
Lifesciences, 9/22/09 (requiring
wires of claim to be malleable,
by disclaiming the use of
resilient, or self-expanding,
wires by disparaging them in
the background art section);
Paragon Solutions, 5/22/09
(criticism of the prior art in the
specification was not limiting
when taken in context); Epistar,
5/22/09 (no clear disavowal
when the specification
disparaged prior art material
802
used in a part of the device
separate and distinct from the
disputed claim term); Paice,
10/18/07 (DOE only;
interpreting SciMed); Ormco,
8/24/07; SafeTCare Mfg.,
8/3/07; Saunders Group,
6/27/07 (distinguishing Alloc);
Inpro II Licensing, 5/11/06);
See also BASF Agro, 3/20/13
confirmed disclaimer of prior
art barrier treatment of termites
from the scope of the claims);
Sunbeam Products, 12/15/10
(nonprecedential disclaimer
of bearings that rock and pivot
by criticizing the prior art);
Lucky Litter, 10/6/10
(nonprecedential no
disclaimer); Fitness Quest,
disclaiming pushing
movements from the term
back extension based on the
clear criticism of prior art
pushing movements); Uniloc
USA, 8/7/08 (nonprecedential
clear and unmistakable
disavowal of hardware
information alone from term
licensee unique ID); See also
Prior art is intrinsic evidence
- Where the general

summary or description
of the invention
describes a feature of the
803
invention and criticizes
other products that lack
that same feature, this
operates as a clear
disavowal of these other
products Astrazeneca
(Edwards Lifesciences,
9/22/09 (disclaimer
where described
malleable feature of
wires, while criticizing
prior art resilient, self-
expanding wires)); See
also Accentra, 1/4/13
(nonprecedential
limiting scope of stapler
claim to having
automatic opening
feature, while excluding
prior art manual opening
feature)
- Context of the criticism

of prior art considered
(Regents of U. Minn.,
6/3/13 (n.9: no
disclaimer where the
patent expressed concern
with the prior art
structure for a different
reason than claimed);
Paragon Solutions,
5/22/09 (taken in context,
the specifications
criticisms of the prior art
did not limit the term
real-time display for a
sports watch to
804
instantaneous display,
where the criticisms were
targeted at systems that
intentionally delayed
review of the data, i.e.,
stored the data for review
only after the physical
activity was complete))
- Disparaging comments
alone do not necessarily
show a manifest or
express disavowal of the
criticized subject matter
(In re Abbott Diabetes
Care, 9/28/12; Thorner,
2/1/12; Epistar, 5/22/09)
- Statements about the

difficulties and failures
in the prior art, without
more, do not disclaim
claim scope Spine
Solutions (In re Abbott
Diabetes Care, 9/28/12
(implicit disclaimer);
Thorner, 2/1/12;
Retractable Techs.,
7/8/11 (absent from
statements discussing
particular problems with
the prior art was a
manifest exclusion of all
cutting from the scope
of the claims))
- Embodiment described as essential

or critical or important or
805
necessary feature (Saffran, 4/4/13
(describing the devices (sheet) ability
to restrain tissue macromolecules near
the site of injury as a cardinal and
exceedingly important feature of
the invention); Aventis Pharma,
4/9/12 (no disclaimer where nothing
in the specification indicates that a
minimum stability of eight hours is an
essential feature of the claimed
perfusion or an advantage of the
perfusion over the prior art citing
Liebel-Flarsheim (summarized as
distinguishing cases where the court
narrowly construed an otherwise
broad claim term )); Tivo, 1/31/08
(must and necessary; term
disclaimer not used by CAFC);
SafeTCare Mfg., 8/3/07 (patentee
made clear the importance of a
narrow claim scope in distinguishing
prior art); Saunders Group, 6/27/07;
Mymail, 2/20/07 (necessary
feature); Andersen, 1/26/07; Inpro II
Licensing, 5/11/06 (very important
feature of the invention); Atofina,
3/23/06 (term chromium catalyst
excluded metal oxides and non-inert
additives, when the specification
described that it was necessary to
have a catalyst containing solely
chromium); Curtiss-Wright, 2/15/06
(critical aspect of the invention);
Liebel-Flarsheim, 2/11/04)
- Express disavowal is unnecessary

when the scope of the invention is
clearly stated in the specification, and
806
is described as the advantage and
distinction of the invention
(SkinMedica, 8/23/13 (disavowal
based on clear and unmistakable
and unambiguous statement that
bead cultures were not the claimed
three-dimensional cultures); Aventis
Pharma, 4/9/12 (no disclaimer where
nothing in the specification indicates
that a minimum stability of eight
hours is an essential feature of the
claimed perfusion or an advantage of
the perfusion over the prior art
citing Liebel-Flarsheim (summarized
as distinguishing cases where the
court narrowly construed an otherwise
broad claim term )); Ormco, 8/24/07;
Inpro II Licensing, 5/11/06 (term
host interface limited to parallel bus
interface, when the specification
emphasized the importance of the
parallel connection in solving the
problems of the prior art serial
connection); On Demand Machine,
3/31/06); See also Accentra, 1/4/13
(nonprecedential not disavowal
case, where stapler claim was limited
to having automatic opening feature
described as critical to the present
invention)
- General statements (that the invention

improves on prior art) do not
surrender claim scope (Epistar,
5/22/09 (citing Ventana); Ventana
Medical Systems, 12/29/06)
807
- Mere absence of an embodiment,
structure in the specification is not
enough for disclaimer (Interdigital,
8/1/12 (the inventors failure to
include a reference to an alternative
embodiment in the specification did
not justify excluding that embodiment
from the scope of the claims; see also
J. Newman, dissenting the majority
used an unsound approach to claim
construction and [t]he patentee is in
control of the specification that
describes the invention); Liebel-
Flarsheim, 2/11/04)
- Reading the specification (and PH) as

a whole narrow claim scope?
(Marine Polymer, 3/15/12 (en banc
(5-5)) (limiting construction of term
biocompatible (not having a plain
and ordinary meaning) based on
description in an example of the
invention (not treated as a disclaimer
issue); see also dissent statement
regarding the invention was made
in the context of a specific example);
Falana, 1/23/12 (no disclaimer from
scope of chemical compound claim so
as to read in preferred temperature
independence feature (distinguishing
Alloc), and the PH was silent);
Retractable Techs., 7/8/11 (narrowly
construing term body as limited to
having a one-piece structure, based on
the summary of the inventions
description of the invention as
having a one-piece structure and the
patent distinguishing prior art
808
syringes composed of multiple pieces
(not treated as a disclaimer issue); see
also C.J. Rader, dissenting);
American Piledriving, 3/21/11;
American Medical Systems, 9/13/10
(preamble not limiting to requiring
specific wavelength range, reading the
specification as a whole); Epistar,
5/22/09 (no disavowal of claim
scope); Netcraft, 12/9/08 (narrow
claim scope based on the
specification; not a disclaimer
case); Praxair, 9/29/08 (not a
disclaimer case, but narrow claim
scope given to term (flow restrictor)
where the overall object of the
invention, when the specification was
read as a whole, was to prevent a
hazardous release of gas, citing
Ormco, Alloc); Verizon, 9/26/07;
Ormco, 8/24/07 (narrow scope all
that the specification describes);
Varco, 2/1/06; NCube (Seachange
Intl), 1/9/06 (dissent); Seachange
Intl, 6/29/05; ASM America,
3/16/05; C.R. Bard, 10/29/04;
Astrazeneca, 9/30/04; Microsoft,
2/3/04; Alloc, 9/10/03); See also St.
Clair, 1/10/11 (nonprecedential
ambiguous references in the
specification relating to movie
formats could not overcome the
explicit limitation to still picture
formats elsewhere in the
specification; see also J. Moore,
dissenting specification lacked
clearly narrowing language, as in
SciMed); Sunbeam Products, 12/15/10
809
(nonprecedential - disclaimer
supported by describing the principal
feature of the invention as a whole);
Fitness Quest, 5/12/09
(nonprecedential disclaimer based
on reading the specification as a
whole); See also Accentra, 1/4/13
(nonprecedential limiting claim
scope based on rule that when a patent
describes the features of the present
invention as a whole, this description
limits the scope of the invention)
- Inescapable conclusion of
disclaimer (Falana, 1/23/12
(distinguishing Alloc); Paice,
10/18/07 (DOE only;
interpreting Sci-Med); Ventana
Medical Systems, 12/29/06
(dissent); Microsoft, 2/3/04)
- Ordinary meaning of claim

term disclaimed by narrow
description of the invention in
the specification and PH
(Seachange Intl, 6/29/05; C.R.
Bard, 10/29/04)
- Specification and PH
globally required narrow
meaning for claim term
having or including a
pleated surface (C.R. Bard,
10/29/04)
- Statements in the specification

describing the invention as a
whole (limiting) (Regents of U.
810
Minn., 6/3/13 (not a disclaimer
case, but limiting the claims to
require two separate disks
where two disks attached
together was described as the
present invention citing
Tivo and Verizon for rule that:
When a patent thus describes
the features of the present
invention as a whole, this
description limits the scope of
the invention. ); Parallel
Networks, 1/16/13
(construction based on theclaim
language was confirmed by the
specifications description of
the present invention);
Marine Polymer, 3/15/12 (en
banc (5-5)) (affirming district
courts construction limiting
term biocompatible to having
no reactivity, based on the
patent describing the
invention as a whole; not a
disclaimer case; see also
dissent); Falana, 1/23/12 (no
disclaimer, where the asserted
narrowing feature was
described as a modifiable
characteristic of the claimed
compounds, and the PH was
silent); Absolute Software,
10/11/11 (present invention
references were not limiting,
based on other non-limiting
statements in the specification);
American Piledriving, 3/21/11
(not a disclaimer case);
811
construction, but not a
disclaimer case); Praxair,
9/29/08 (term flow restrictor
limited to the overall object,
purpose of the invention);
Voda, 8/18/08 (reference to
catheter of the present
invention was not limiting
where the specification also
provided broad support for term
along a line); Computer
Docking Station, 3/21/08
(microcomputer of the present
invention construed as
excluding laptop computers);
Tivo, 1/31/08 (specification
clearly referred to the
separation aspect of the
invention, rather than merely
one embodiment of a broader
invention; term disclaimer not
used by the CAFC); Verizon,
9/26/07 (patent described the
features of the present
invention as a whole, thus
limiting the scope of the
claimed invention); Ormco,
8/24/07) VS. statements
describing only preferred
embodiments (not limiting)
(Varco, 2/1/06); See also
Sunbeam Products, 12/15/10
(nonprecedential describing
invention as a whole); See also
Accentra, 1/4/13
(nonprecedential limiting
stapler claim to having
812
automatic opening feature,
which the specification
described as central to the
present invention as compared
to the prior art)
- Specification repeatedly or
consistently describing the claimed
invention narrowly
- Specification repeatedly
reinforcing particular usage of
claim term (SkinMedica,
8/23/13 (affirming the district
courts exclusion of using
beads from the plain and
ordinary meaning of culturing
. . . cells in three-dimensions
based on repeated and
definitive statements in the
written description, where the
patentees plainly and repeatedly
distinguished culturing with
beads from culturing in three-
dimensions citing Computer
Docking Station; also citing
Thorner for the redefinition of
a terms ordinary meaning
based on the specification
treating the term and the
excluded term as alternatives,
when so clear that it equates to
an explicit one see below,
and adding that the implicit
redefinition here satisfies even
that hurdle); Saffran, 4/4/13
(specification supported narrow
meaning of term device
813
based on PH disclaimer, where
the patent consistently
described the disclosed
device as a sheet); Digital-
Vending, 3/7/12 (J. Moore,
dissenting clear disavowal
based on repeated statements
regarding the disputed term,
where the majority interpreted
the specification incorrectly
with respect to differences
between method claims and
computer architecture claims);
Thorner, 2/1/12 (rejecting
implicit disclaimer argument,
ruling that an implied
redefinition must be so clear
that it equates to an explicit one
. . . Simply referring to two
terms as alternatives or
disclosing embodiments that all
use the term the same way is
not sufficient to redefine a
claim term (citing no cases));
Eon-Net, 7/29/11 (not a
disclaimer case); Netcraft,
12/9/08 (not a disclaimer
case); Praxair, 9/29/08 (not a
disclaimer case); Computer
Docking Station, 3/21/08 (term
portable computer excluded
laptop computers when the
describe[d] the invention as a
microcomputer, which was
distinguished from a laptop);
SafeTCare Mfg., 8/3/07
(pushing force); Ventana
814
(dissent); Inpro II Licensing,
5/11/06; On Demand Machine,
3/31/06; Nystrom, 9/14/05
(board meant a board cut
from logs))
- Specification consistently, and

without exception describing
the invention as having feature
look at the overall context
of the specification (Eon-Net,
7/29/11 (not a disclaimer
case); Mangosoft, 5/14/08 (not
a disclaimer case, but
construing term local as
requiring direct attachment to
computers because was
consistently described as
such in the specification);
Symantec, 4/11/08
(distinguishing Ormco, where
the specification did not
consistently refer to the terms
computer and computer
system as involving a single
computer); Ormco, 8/24/07
(narrow claim scope is all that
the specification describes);
Honeywell, 6/22/06; Old Town
Canoe, 5/9/06; Curtiss-Wright
Flow Control, 2/15/06); See
also Lydall, 9/8/09
(nonprecedential claim scope
was limited where single
embodiment was consistently
described as the present
815
invention and the invention
itself)
- Specification repeatedly and

consistently (and
exclusively) describing the
invention narrowly
(SkinMedica, 8/23/13; In re
Abbott Diabetes Care, 9/28/12
(basis in part for finding an
implicit disclaimer); Eon-Net,
7/29/11 (patent repeatedly and
consistently defined the
invention as a system that
processes information derived
from hard copy documents);
Arlington Indus., 1/20/11 (J.
Lourie, dissenting); Telcordia
Techs., 7/6/10; Netcraft,
12/9/08; Computer Docking
Station, 3/21/08; SafeTCare
Mfg., 8/3/07 (patentee
repeatedly emphasized
narrow claim scope); Ventana
(dissent); On Demand Machine,
3/31/06; Aquatex, 8/19/05
(term fiberfill batting
material, defined in the
specification as being any
commercial fiberfill, construed
to encompass only synthetic
fibers, as all examples of
commercial fiberfill comprised
entirely synthetic materials);
Seachange Intl, 6/29/05;
Gillette, 4/29/05 (dissent);
Microsoft, 2/3/04; Alloc,
816
9/10/03); See also Lydall,
- Claim term construed

narrowly (away from its
ordinary meaning) when
the specification
consistently uses the
term in a certain way,
and nowhere does the
specification describe the
term more broadly
(SkinMedica, 8/23/13; In
re Abbott Diabetes Care,
9/28/12 (finding an
implicit disclaimer where
the patents repeatedly,
consistently, and
exclusively depicted an
electrochemical sensor
without external cables
and wires while
simultaneously
disparaging sensors with
external cables and wires
- citing Iredeto Access);
Thorner, 2/1/12
(rejecting implicit
disclaimer argument);
Retractable Techs.,
7/8/11 (construing term
body narrowly as
having a one-piece
structure (not treated as a
disclaimer issue));
Arlington Indus., 1/20/11
(citing Irdeto Access; see
also J. Lourie,
817
dissenting); Irdeto
Access, 9/14/04); See
also Amazin Raisins
Intl, 10/31/08
(nonprecedential dried
fruit defined as having
specific numerical range
for moisture content)
- When a patentee
consistently describes
a term (e.g., board)
narrowly in the written
description (and PH), an
explicit disclaimer of
broader claim scope is
unnecessary (Honeywell,
6/22/06 (narrow claim
scope despite restriction
requirement); Old Town
Canoe, 5/9/06; Nystrom,
9/14/05 (board)); See
also St. Clair, 1/10/11
(nonprecedential
narrow construction
based on consistent use
of term in the
specification citing
Nystrom)
Disclaimer precludes DOE infringement
- Disavowal precludes DOE infringement (Trading

Techs., 2/25/10; Edwards Lifesciences, 9/22/09;
Abbott Labs, 5/18/09 (Crystal B disclaimed by
excluding its disclosure from the specification);
Decisioning.com, 5/7/08 (consumer-owned
818
personal computers excluded from the construed
scope of the term remote interface could not be
equivalents); Paice, 10/18/07 (no disavowal;
construed SciMed narrowly); SafeTCare Mfg.,
8/3/07; Honeywell, 6/22/06; Franks Casing,
11/30/04; Astrazeneca, 9/30/04; Novartis, 7/8/04);
Compare Uniloc USA, 8/7/08 (nonprecedential
split decision in which the entire panel stated or
suggested that DOE infringement was a triable
issue even if the disputed term licensee unique
ID was construed narrowly to require personally
identifiable information, which was indisputably
not used in the accused device); See also Sunbeam
Products, 12/15/10 (nonprecedential no DOE
infringement, especially where the accused product
is not later-developed technology that is
insubstantially different from the claimed
invention, but instead embodies disavowed prior
art); See also Prosecution History Estoppel
Argument-based estoppel
Divisional applications
- Divisional applications portions of the

specification relating to claims of a separate
divisional application should not be limiting LG
Electronics (Verizon, 9/26/07, C.J. Michel,
dissenting)
Offensive use of disclaimer (to avoid prior art)
- Offensive use of disclaimer by the patentee to

avoid prior art (Deere, 12/4/12 (rejecting argument
that claims excluded consumer lawn mowers, to
avoid prior art, where the specification did not
indicate that the patentee intended to exclude such
819
mowers); In re Abbott Diabetes Care, 9/28/12
(CAFC finding implicit disclaimer of external
wires and cables from the scope of term
electrochemical sensor based on claim language
and criticism in the specification of prior art
devices containing external wires and cables);
Medtronic, 9/18/12 (vacating the district courts
determination of no invalidity predicated on its
improper construction limiting the claims to the
treatment of congestive heart failure, where there
was no clear disclaimer); Pfizer, 8/2/06; Alza,
12/10/04; American Academy of Sciences,
5/13/04)
- Patentee successfully arguing for a narrow

claim interpretation based on the
specification to overcome (anticipatory)
prior art (In re Abbott Diabetes Care,
9/28/12; Alza, 12/10/04; American
Academy of Sciences, 5/13/04)
- Specification described prior art, and

that the invention did not include the
prior art (Alza, 12/10/04)
- Specific statement in the specification that

the invention contemplates only . . . . was
an express disclaimer of claim scope (Pfizer,
8/2/06)
Prosecution history cannot enlarge the specification
- Prosecution historys effect on disclaimer

statements in the PH cannot enlarge the content of
the specification - Biogen (Telcordia Techs.,
7/6/10); See also Claim term used in the
specification and/or prosecution history in a
820
manner inconsistent with its ordinary and
customary meaning
Patentee pays the cost for a disclaimer
- Patentee pays the cost for disavowal the patentee

has a clear opportunity to negotiate broader claims,
and thus between the patentee and the public, the
patentee must pay the cost for failing to seek
protection for particular subject matter (Fuji Photo
Film, 10/7/04)
Narrow to broad claims is not a disclaimer
- Progression from narrow claims to broad claims is

not a disavowal (Decisioning.com, 5/7/08; Home
Diagnostics, 8/31/04)
Disclaimer during prosecution
General rule disclaimer based on amendments, statements

distinguishing prior art during prosecution
- Doctrine of prosecution disclaimer fundamental precept

in claim construction jurisprudence an applicant cannot
recapture claim scope surrendered or disclaimed during
prosecution Phillips, Omega Engg (Trading Techs.,
8/30/13 (comparing PH disclaimer to PHE); Schindler,
1/15/10 (disagreeing with the district court as to the
extent of the PH disclaimer; see also J. Dyk, dissenting in
part); Edwards Lifesciences, 9/22/09 (patentee was
unable to reclaim resilient wires which were disclaimed
during prosecution and in the specification); Epistar,
5/22/09 (must show that the patentee expressly
relinquished claim scope); 800 Adept, 8/29/08 (the
doctrine is typically invoked to limit the meaning of a
821
claim term that would otherwise be read broadly but
consulting the PH here as support for the construction
already discerned from the claim language and
specification); Mangosoft, 5/14/08 (rejecting the
patentees construction where would read the local
limitation out of the claim or ignore the subject matter
incorporated into the claim from a cancelled dependent
claim citing Omega Engg); Computer Docking
Station, 3/21/08 (protects the publics reliance on
definitive statements made during prosecution); Elbex
Video, 11/28/07 (no disclaimer); Cias, 9/27/07; Verizon,
9/26/07; Gillespie, 9/6/07 (construction was negated
rather than disclaimed); Hutchins, 7/3/07; Hakim,
2/23/07); See also Digene, 4/1/09 (nonprecedential
disclaimer as to the meaning of term HPV 52 DNA
based on using the word only); Vehicle IP, 1/6/09
(nonprecedential citing 800 Adept and ruling that
[r]egardless of whether the district court correctly
identified the terms ordinary meaning, a clear
disclaimer in the PH supported the construction already
determined based on the plain language of the claims)
- Distinguishing prior art an applicant can make a

binding disavowal of claim scope in the course of
prosecuting a patent, through amendments and/or
arguments made to distinguish prior art references
(SkinMedica, 8/23/13 (specification disclaimer
accompanied by distinguishing the prior art during
prosecution to overcome rejection not a PH
disclaimer case); Biogen Idec, 4/16/13; Apple,
10/11/12 (reversing grant of PI in part because PH
argument to overcome prior art reference strongly
suggest[ed] a narrow claim construction); 01
Communique Lab, 7/31/12; Marine Polymer,
3/15/12 (en banc (6-4)) (disclaiming arguments
during reexamination do not give rise to
intervening rights absent amended or new
claims); August Tech., 8/22/11 (no clear
822
disavowal); In re Katz Patent Litigation, 2/18/11
(disclaimer during reexamination of passwords
from scope of term personal identification data);
Spansion, 12/21/10 (no disclaimer); Erbe, 12/9/10
(disclaimer of entire range of unclaimed velocities
corresponding to term low flow rate based on
arguments distinguishing prior art reference);
Spine Solutions, 9/9/10 (clear disclaimer by
arguing over prior art of designs containing more
than a single anchor); Bid for Position, 4/7/10
(disclaimer of accused product by amendment to
avoid the cited prior art); Ecolab, 6/9/09 ([S]ince,
by distinguishing the claimed invention over the
prior art, an applicant is indicating what the claims
do not cover, he is by implication surrendering
such protection - Ekchian); Netcraft, 12/9/08 (PH
argument read in context distinguishing prior art
reference was unclear as to whether disclaimer
(term not mentioned)); Cohesive Techs., 10/7/08
(limited disclaimer based on distinguishing the
prior art not encompassing the claimed
copolymer); 800 Adept, 8/29/08 (no disclaimer,
but arguments distinguishing the prior art instead
supported the claim construction already discerned
from the claim language and specification); Voda,
8/18/08 (no disclaimer based on amendments and
arguments made to overcome anticipation
rejection); Lucent Techs., 5/8/08 (no clear
disavowal as to the disputed term terminal
device based on statements clearly distinguishing
the claimed method from a prior art method; clear
disavowal with respect to another term, which was
not avoided by the applicants oblique reference to
flow charts in the specification); Computer
Docking Station, 3/21/08 (disclaimer by
distinguishing prior art); Cordis, 1/7/08 (no
disclaimer or PHE where statements during the PH
merely explained, in more explicit terms, what the
823
claims already covered)); See also Sanofi-Aventis,
3/22/12 (nonprecedential disclaimer of broad
scope of term isolated DNA enhancer during
prosecution of earlier related application); RFID
Tracker, 8/18/09 (nonprecedential disclaimer of
a transmitter after distinguishing the prior art that
contained a transmitter from the claimed
interrogator/reader that was simply a receiver
and a field generator in its simplest form)
- Comprising does not permit recovery of

disclaimed claim scope (Arcelormittal
France, 11/30/12 (n.1: no PH disclaimer of
cold-rolling, where claim was amended to
remove explicit reference to optional cold-
rolling while substituting comprising
language that made clear that optional
additional steps were still contemplated, in
response to a claim rejection based on
ambiguity as to whether the coating was
optional); U. Texas, 7/24/08 (not a
disclaimercase); Cias, 9/27/07); See also
BASF Agro, 3/20/13 (nonprecedential
applying rule, and concluding that the
patentee may not attempt to recapture
disclaimed subject matter by isolating and
selecting individual components of the
accused method, which as a whole reaches
the very result that the patentee expressly
disclaimed); RFID Tracker, 8/18/09
(nonprecedential term including did not
avoid disclaimer)
- Disclaimer in an inventors or experts Rule

132 declaration to avoid prior art (Cohesive
Techs., 10/7/08 (limited disclaimer based on
expert declaration); Alza, 12/10/04); See
also BASF Agro, 3/20/13 (nonprecedential
824
experts statements contrasting the claimed
method from the prior art barrier treatment
of termites disclaimed barrier treatment
from the claim scope)
- Disclaimed references - what one of

ordinary skill would believe to have been
disclosed by the disclaimed references
(Arlington, 9/25/03)
- PH can often inform the meaning of claim language by

demonstrating how the inventor (and the PTO)
understood the invention - Phillips (Sunovion, 9/26/13
(not a disclaimer case; defining term essentially free
(which does not have a plain or ordinary meaning) as
having a specific purity level based on the patentees
repeated and consistent statements during the PH
regarding the invention); Biogen Idec, 4/16/13 (PH
disclaimer); Saffran, 4/4/13 (PH disclaimer the
patentees unqualified assertion that the device used is a
sheet extended beyond illuminating how the inventor
understood the invention (Phillips) to provide an
affirmative definition for the disputed term device);
HTC, 1/30/12 (no clear disclaimer); Erbe, 12/9/10;
Trading Techs., 2/25/10; Blackboard, 7/27/09
(applicants claim amendments did not clearly provide
for a single login limitation to avoid anticipating prior
art); 800 Adept, 8/29/08 (distinguishing rule from
prosecution disclaimer); Cat Tech., 5/28/08 (provided
clear support for construing the phrase a spacing to
mean all spacing between adjacent plates); Pods, 4/27/07;
MBO Labs, 1/24/07; Nystrom, 9/14/05), AND whether
the inventor limited the invention in the course of
prosecution, making the claim scope narrower than it
would otherwise be Phillips (Plantronics, 7/31/13 (no
PH disclaimer); Biogen Idec, 4/16/13 (PH disclaimer of
scope from term anti-CD20 antibody based on
statements made to overcome enablement rejection); AIA
825
Engg, 8/31/11 (PH was not helpful in construing term
where there was no disclaimer); Erbe, 12/9/10 (limiting
term low flow rate based on PH statements); Trading
Techs., 2/25/10 (clear from the PH that the examiner
allowed the claims based on a narrow understanding of
the term static); Schindler, 1/15/10 (the CAFCs
reading of the PH supported the construction based on
the claims and WD); Abbott Labs, 5/18/09 (disclaimer
from not retaining subject matter from the foreign
priority application); Voda, 8/18/08 (interpreting the
second part of the rule as a disclaimer of claim scope);
U. Texas, 7/24/08 (not a disclaimer case, but
construing a narrow claim scope by limiting the claims to
the disputed term (syllabic element)); Lucent Techs.,
5/8/08 (J. Lourie, dissenting); Regents of U. Cal., 2/28/08
(clear intent to limit the claims to narrower claim
scope); Cordis, 1/7/08 (no disclaimer where statements
during the PH merely explained, in more explicit terms,
what the claims already covered); Ormco, 8/24/07; Aero
Products, 10/2/06)
- Applicants statements during prosecution are used

to construe claim term(s) - Phillips (Sunovion,
9/26/13 (meaning of term essentially free based
on the patentee repeatedly and consistently
characterizing the purity level of the invention;
not a PH disclaimer case citing Verizon,
Microsoft); Uship, 5/8/13 (cases broadly state that
the applicants statements to the PTO
characterizing its invention may give rise to a
prosecution disclaimer need not be made to
distinguish prior art); Typhoon Touch, 11/4/11;
American Piledriving, 3/21/11; Erbe, 12/9/10
(term low flow rate construed to exclude range
of unclaimed velocities, in view of PH statements
distinguishing range of flow rates disclosed in
prior art reference, citing PODS); Schindler,
1/15/10 (modifying the scope of the PH
826
disclaimer); 800 Adept, 8/29/08 (PH limiting
without prosecution disclaimer); Lucent Techs.,
5/8/08; Regents of U. Cal., 2/28/08; Monsanto,
10/4/07 (statements used to confirm interpretation
of claim as a dependent claim); Cias, 9/27/07;
Gillespie, 9/6/07 (outer surface); Pods, 4/27/07;
North American Container, 7/14/05)
- Disclaimer supported interpretation based on

the claims and specification (Schindler,
1/15/10 (extent of disclaimer during the PH
supported the construction discerned from
the claim language and WD); Gillespie,
9/6/07; Ormco, 8/24/07; Research Plastics,
8/18/05; Alza, 12/10/04); See also BASF
Agro, 3/20/13 (nonprecedential)
- Patentee held to what he declares during

prosecution (Uship, 5/8/13; HTC, 1/30/12
(no disclaimer based on attorneys
statement, since the PH carried less weight
than the claims and specification); Typhoon
Touch, 11/4/11 (the patentee is bound by
representations made and actions taken in
order to obtain the patent - Phillips); Cias,
9/27/07 (absence of claim rejection or
amendments does not negate disclaimer);
Gillespie, 9/6/07 (meaning of outer
surface))
- Purpose of consulting the PH in construing a

claim is to exclude any interpretation
disclaimed during prosecution Phillips
(Typhoon Touch, 11/4/11)
- Remarks in an IDS can be the basis for

limiting claim scope Ekchian (Uship,
5/8/13)
827
- Response to restriction requirement may be
used to interpret claim terms or as a source
of disclaimer (Plantronics, 7/31/13 (no PH
disclaimer limiting terms to being
elongated structures based on the
patentees election of species in response to
restriction requirement - distinguishing LG
and Acco Brands); Uship, 5/8/13)
- Consistently and clearly use claim term during

prosecution either more or less expansively than
used in the relevant art; disavowal of claim scope
must be clear and unambiguous (Sorensen,
10/31/05)
- Patentee used PH to limit claim term from ordinary

and customary meaning (North American
Container, 7/14/05 (preferred embodiments
disclaimed); W.E. Hall, 6/7/04; American
Academy of Sciences, 5/13/04)
- Disclaimer of embodiment in the

specification North American Container
(Uship, 5/8/13)
- Disclaimer by characterizing invention - explicitly

characterizing an aspect of the invention in a specific
manner to overcome prior art Microsoft (01
Communique Lab, 7/31/12; Advanced Fiber, 4/3/12 (J.
Dyk, dissenting the patentee explicitly adopted a
definition of the disputed term perforated that excluded
a disclosed embodiment from the scope of the claims,
citing Computer Docking Station and MBO Labs); Erbe,
12/9/10; Voda, 8/18/08 (no disclaimer); Computer
Docking Station, 3/21/08 (disclaimer); Cordis, 1/7/08 (no
disclaimer or PHE where statements during the PH
merely explained, in more explicit terms, what the claims
828
already covered); Ormco, 8/24/07; Pods, 4/27/07; Bass
Pro Trademarks, 4/6/07; Hakim, 2/23/07; Andersen,
1/26/07; MBO Labs, 1/24/07; On Demand Machine,
3/31/06; Perdue Pharma, 2/1/06)
- Clear disclaimer of scope - inescapable

conclusion that claims do not cover prior art
(Andersen, 1/26/07; North American Container,
7/14/05)
- Clear implication of invention vs. prior art

(MBO Labs, 1/24/07)
- Prosecution arguments distinguishing the claimed

invention from the prior art, or criticizing the prior
art, are useful for determining whether the patentee
intended to surrender territory, since they indicate
in the inventors own words what the invention is
not (Ormco, 8/24/07; Bass Pro Trademarks, 4/6/07
(preamble); MBO Labs, 1/24/07); See also BASF
Agro, 3/20/13 (nonprecedential)
- No relationship argued between claimed feature

and alleged disclaimed subject matter for
disclaimer (Saunders Group, 6/27/07)
- Global statement(s) during PH distinguishing all pending

claims from the prior art = deliberate surrender of claim
scope for all claims (800 Adept, 8/29/08 (no reliance on
disclaimer in concluding that PH statements limited
scope of the invention); Ormco, 8/24/07), even if the
claims are addressed individually (Andersen, 1/26/07;
Seachange Intl, 6/29/05); See also Sanders, 4/20/11
(nonprecedential not reading limitation regarding the
present invention generally into the claims, because
must look at the entirety of the prosecution remarks for a
disclaimer); Webzero, 8/3/10 (nonprecedential narrow
construction also given to claim not expressly reciting the
829
limitation, in view of PH statements distinguishing prior
art); Ilight Technologies, 4/20/10 (nonprecedential the
applicants unequivocally disclaimed hollow or non-
essentially solid structure generally, rather than just
hollow tubes, by arguing that their invention requires a
solid rod, to overcome prior art; [the CAFC granted a
motion for rehearing on 6/4/10 to clarify that the
disclaimer applied to all claims, i.e., the invention as a
whole, thus including claim 25 not reciting the
disputed claim terms])
- Arguments made during prosecution regarding the

meaning of a claim term are relevant to the
interpretation of that term in every claim absent a
clear indication to the contrary (Erbe, 12/9/10
(citing PODS); Pods, 4/27/07)
Disclaimer must be clear and unambiguous, unmistakable
- Disclaimer, disavowal, surrender of claim scope or

meaning during prosecution (to which the patentee would
otherwise have an exclusive right based on the claim
language, and to overcome the heavy presumption of a
claim terms full ordinary and customary meaning -
Omega Engg), whether by amendment or argument
requires an unambiguous, unequivocal disavowal,
disclaimer; must be a clear and unambiguous,
unmistakable surrender of subject matter Omega
Engg, Cordis, Golight (TecSec, 10/2/13 (district court
erred in limiting term where no PH disclaimer); Aria
Diagnostics, 8/9/13 (no disclaimer where three instances
in PH were ambiguous as to include known in advance
limitation in term paternally inherited nucleic acid);
3M Innovative, 8/6/13 (rejecting the district courts
finding of PH disclaimer where the patentee was able to
provide a reasonable contrary reading of the PH based on
its remarks to the examiner as to why it removed term
830
substantially during prosecution); Plantronics, 7/31/13
(no PH disclaimer limiting terms to being elongated
structures based on the patentees election of species in
response to restriction requirement, where the exchange
between the PTO and the patentee was ambiguous);
Teva, 7/26/13 (no disclaimer where the connection
between the prosecution statement and the cited reference
was too attenuated and ambiguous to limit claim scope to
a specific type of molecular weight); Uship, 5/8/13
(response to restriction requirement regarding scope of
method claims was a clear and unmistakable disclaimer
of claim scope, which included embodiment in the
specification); Biogen Idec, 4/16/13 (affirming PH
disclaimer, despite the heavy presumption of the full
ordinary and customary meaning of term anti-CD20
antibody, based on statements made during prosecution
to overcome an enablement rejection citing Omega
Engg, Epistar; see also J. Plager, dissenting); Saffran,
4/4/13 (PH disclaimer the patentees unqualified
assertion that the device used is a sheet extended
beyond illuminating how the inventor understood the
invention (Phillips) to provide an affirmative definition
for the disputed term device; see also J. OMalley
dissenting - agreeing with the district courts construction
of device as something which comprises the limitations
set out in the body of the claim; no clear and
unambiguous disclaimer of non-sheet embodiments in
the PH); Deere, 12/4/12 (no PH disclaimer of consumer
lawn mowers from the claimed rotary cutter); 01
Communique Lab, 7/31/12 (vacating and remanding SJ
of noninfringement, where the district court erred in
construing the claim scope based on a disclaimer as
limiting the location facility (software) to being on one
computer, rather than distributed among one or more
computers); Grober, 7/30/12 (vacating and remanding the
district courts construction, because no disclaimer of
scope where ambiguous statements did not describe or
fairly limit characteristics of term payload platform);
831
Toshiba, 6/11/12 (no disclaimer, based on the examiners
reasons for allowance interpreting the applicants
statement); Aventis Pharma, 4/9/12 (patentees remarks
during prosecution regarding the lower stability of prior
art perfusions did not clearly and unmistakably show an
intention to limit the claim to perfusions stable for at
least eight hours); Advanced Fiber, 4/3/12 (disclaimer of
width of the claimed slots and openings by clear
statements in the PH distinguishing a prior art reference
based on slot size); Marine Polymer, 3/15/12 (en banc (5-
5)) (see dissent: the patentee clearly and unambiguously
disclaimed the scope of its claim [during reexamination]
by effectively becoming its own lexicographer and
presenting a specific, limiting definition of the term
biocompatible); Digital-Vending, 3/7/12 (no
disclaimer of scope from term registration server based
on the inventors statements, where they were not clear
and unmistakable in the context of the PH as a whole);
Dealertrack, 1/20/12 (post-allowance examiners
amendment deleting references to the Internet in the
absence of reasons given by the examiner for the
amendment or statements by the applicant in support of
patentability was not a disclaimer, because a disclaimer
requires a waiver of claim scope that is both so clear as
to show reasonable clarity and deliberateness, and so
unmistakable as to be unambiguous evidence of
disclaimer citing Omega Engg); August Tech.,
8/22/11 (no clear disavowal); Retractable Techs., 7/8/11
(inventors PH statement, on its own, lacked the clarity
required to exclude from the claim scope an embodiment
in which two recited claim elements formed distinct
portions of a single structure (rather than being separate
structures)); American Calcar, 6/27/11 (broad disclaimer
by argument to overcome an anticipation rejection);
American Piledriving, 3/21/11; Lazare Kaplan, 12/22/10
(no disclaimer based on statements in interview
summary); Spansion, 12/21/10 (inventors statement
during the PH was not clear enough for a disclaimer, as
832
was at least as likely that they distinguished the invention
from the prior art based on another reason); Erbe, 12/9/10
(clear and unambiguous disclaimer of unclaimed range of
velocities corresponding to term low flow rate based
on PH arguments distinguishing prior art reference);
Vizio, 5/26/10 (no broad disclaimer of any and all use of
the MPEG PMT, but rather disclaimer only of systems
that require the use of MPEG PMT); i4i, 3/10/10 (no
disavowal in view of the context in which the statements
were made); Trading Techs., 2/25/10; Schindler, 1/15/10
(modifying the district courts construction as to the
extent of a PH disclaimer); Vita-Mix, 9/16/09 (district
courts finding on SJ that the patentee disclaimed all
stirring was inconsistent with the courts earlier
construction under which only certain stirring was
disclaimed); Martek Biosciences, 9/3/09 (no disclaimer
based on selected statements in the PH which were
undercut by additional statements must examine the PH
as a whole); U. of Pittsburgh, 7/23/09 (no clear
disclaimer based on the examiners interview summary
relating to the disputed term (adipose-derived), and the
court referring to the wide chasm between the weak
inference from the summary and a clear and
unmistakable disavowal as required to limit a claim
term); Ecolab, 6/9/09 (no disclaimer from isolated
statements based on the PH as a whole); Paragon
Solutions, 5/22/09 (no clear disavowal of recited data
acquisition unit being made up of physically separate
structures); Epistar, 5/22/09; Linear Tech., 5/21/09;
Abbott Labs, 5/18/09 (limiting claim to a crystalline
compound of Crystal A, and excluding Crystal B, based
on the inventors declarations and applicants arguments
that Crystal A was the inventive concept); Cordis,
3/31/09 (a claims plain language cannot be overcome by
unclear PH; no disclaimer where the examiners rejection
made no reference to the alleged excluded embodiment,
and thus the claim could have been allowed on other
grounds); Cohesive Techs., 10/7/08 (alleged disclaimer
833
through expert declaration disclaimed only the types of
polymeric materials described in the prior art reference,
and not all polymeric materials including copolymers,
from the scope of term rigid; also no disclaimer of term
about by referring to qualified term during PH without
about); 800 Adept, 8/29/08; Voda, 8/18/08; Lucent
Techs., 5/8/08 (no clear disavowal of any control by the
host processor; see also J. Lourie, dissenting); Solomon
Techs., 5/7/08 (clear prosecution disclaimer of shafts
connecting the motor and transmission despite the
patentee claiming the disputed term integral
combination in two ways); Computer Docking Station,
3/21/08 (disclaimers resulting in narrow interpretation for
term portable computer as excluding laptop
computers); Regents of U. Cal., 2/28/08 (clear intent to
limit the claims to narrow scope by adding unique
sequence limitation and argument; although not
expressly stated, the limitation was clearly added to
overcome an enablement rejection); Baldwin Graphic
Systems, 1/15/08; Cordis, 1/7/08 (Omega Engg
describes the relationship between prosecution disclaimer
and argument-based PHE same standard applied to
both doctrines); Elbex Video, 11/28/07 (no disclaimer;
but see D.J. Cote, dissenting referring to the patentees
strategic choice and an unmistakable surrender of claim
scope); Verizon, 9/26/07, see also C.J. Michel,
dissenting no disclaimer for reasons including that
numerous clear statements in the specification supported
a broad interpretation; Honeywell, 7/3/07; Saunders
Group, 6/27/07; Bass Pro Trademarks, 4/6/07 (limitation
in preamble stressed); Andersen, 1/26/07; MBO Labs,
1/24/07 (surrender by argument); Ventana Medical
Systems, 12/29/06; LG Electronics, 7/7/06; Atofina,
3/23/06; Perdue Pharma, 2/1/06; Sorensen, 10/31/05;
Free Motion Fitness, 9/16/05; Aquatex, 8/19/05;
Research Plastics, 8/18/05; Collegenet, 8/2/05; NTP,
8/2/05; North American Container, 7/14/05; Salazar,
7/8/05; Sandisk, 7/8/05; Seachange Intl, 6/29/05;
834
Chimie, 4/11/05; Sentry, 3/11/05; Gemstar, 9/16/04;
Innova/pure water, 8/11/04; Mars, 7/29/04; Novartis,
7/8/04; W.E. Hall, 6/7/04; Superguide, 2/12/04; Golight,
1/20/04; Liquid Dynamics, 1/23/04; ACTV, 10/8/03;
Acco, 10/7/03; Arlington, 9/25/03; Cordis, 8/12/03;
Sunrace Roots, 7/17/03); See also Capital Machine,
4/15/13 (nonprecedential patentee clearly and
unmistakably disclaimed untapered flitches from term a
flitch in overcoming anticipation rejections during the
PH of related patents); BASF Agro, 3/20/13
(nonprecedential disclaimer by clear disavowal in the
PH - disclaimer of prior art barrier treatment of termites,
including in expert declaration submitted to overcome
prior art rejections citing older disclaimer cases);
Zapmedia, 4/25/12 (nonprecedential PH disclaimer
based on clear disavowal Tip Systems); Sanofi-
Aventis, 3/22/12 (nonprecedential); Reckitt Benckiser,
7/7/11 (nonprecedential clear disclaimer of single
formulation tablet from term portion); Sanders, 4/20/11
(nonprecedential alleged disclaimer was not clear and
unambiguous where parent patent claims were different
and the applicants general limiting comment regarding
the present invention, when considered in light of the
entirety of the prosecution remarks, was not a
disclaimer); Ilight Technologies, 4/20/10
(nonprecedential the applicants unequivocally
disclaimed hollow or non-essentially solid structure
generally, rather than just hollow tubes, by arguing that
their invention requires a solid rod, to overcome
prior art; [the CAFC granted a motion for rehearing
on 6/4/10 to clarify that the disclaimer applied to all
claims, i.e., the invention as a whole, thus including
claim 25 not reciting the disputed claim terms]);
Sanofi-Aventis, 9/10/09 (nonprecedential applying the
standard for prosecution disclaimer (clear and
unmistakable) to specification disclaimer); RFID
Tracker, 8/18/09 (nonprecedential prosecution
disclaimer applies even if the disclaimer results in a
835
negative limitation, construing term interrogator/reader
to exclude a transmitter, citing N. Am. Container);
Purechoice, 6/1/09 (nonprecedential clear and
unmistakable disavowal of environmental data from the
scope of the term air quality insofar as it extended
beyond contaminants and particles in the air); Vehicle IP,
1/6/09 (nonprecedential clear disclaimer supported
noninfringed construction based on the plain language of
the claims, citing 800 Adept); LSI Industries, 5/22/08
(nonprecedential aggressive use of vague and
ambiguous statements in the PH were inappropriately
interpreted to disavow claim scope)
- Prosecution disclaimer promotes the public notice

function of the intrinsic evidence and protects the
publics reliance on definitive statements made
during prosecution (e.g., relied on by competitors
when launching a new product or designing around
a patented invention); doctrine does not apply
where the alleged disavowal is ambiguous for a
prosecution statement to prevail over the plain
language of the claim, the disavowal must be both
clear and unmistakable to one of ordinary skill in
the art (based on the entirety of the PH), such that
the public is entitled to rely on the definitive
statements (Biogen Idec, 4/16/13 (PH disclaimer
based on statements made to overcome enablement
rejection); Saffran, 4/4/13 (given such definitive
statements during prosecution, the interested
public was entitled to conclude that the device
recited in the claims was a continuous sheet); 01
Communique Lab, 7/31/12; U. of Pittsburgh,
7/23/09; Lucent Techs., 5/8/08 (no clear disavowal
of all scope from the disputed term terminal
device, vs. J. Lourie, dissenting, that the public
was entitled to rely on the applicants disavowing
statement); Computer Docking Station, 3/21/08
(clear disavowal); Elbex Video, 11/28/07 (no
836
disclaimer when an isolated statement, not
supported by the specification, and would result in
an inoperable system; citing cases addressing
whether disclaimer occurs when mistakes are made
during PH arguments)); See also Creative
Integrated Sys., 6/3/13 (nonprecedential a single
statement the district court relied on for disclaimer
was ambiguous citing Computer Docking
Station); Harris, 1/17/13 (nonprecedential there
was no basis for interpreting claim language by
other than its plain language in the way the district
court did based on statements made during
prosecution, where the PH was (admitted by the
district court to be) ambiguous citing Elbex
Video; see also J. Wallach, dissenting the
majoritys construction was too narrow)
- Claims should not be construed one way in

order to obtain their allowance and in a
different way against accused infringers (U.
Texas, 7/24/08 (not a disclaimer case);
Computer Docking Station, 3/21/08 (term
portable computer construed narrowly
based on disclaimers)); See also BASF
Agro, 3/20/13 (nonprecedential applying
rule to affirming SJ of noninfringement
where the patentee during the PH disclaimed
scope included in the accused product; see
also n.1: rule also applies to statements
made during reexam and post-grant review)
- Disavowing statement must be so clear as to

show reasonable clarity and deliberateness
Omega Engr (U. of Pittsburgh, 7/23/09)
- Sufficiently clear and deliberate

statement needed to meet the high
837
standard for finding a disclaimer of
claim scope (Honeywell, 7/3/07)
- Prosecution history, and the remainder of

the intrinsic evidence, must be read as a
whole for disclaimer (Uship, 5/8/13; Martek
Biosciences, 9/3/09 (selected statements in
the PH evidencing disclaimer were undercut
by additional statements); Ecolab, 6/9/09 (no
disclaimer from isolated statements where
the examiner corrected the patentee that the
claim recited the non-limiting transition
consists essentially of and the patentee did
not thereafter repeat the disclaiming
statements); Elbex Video, 11/28/07 (PH as a
whole evidenced no disclaimer; an isolated
statement was not a disclaimer, as the
isolated statement would have resulted in an
inoperable system))
- Totality of the prosecution history

informs the disavowal inquiry (Uship,
5/8/13; Biogen Idec, 4/16/13;
Computer Docking Station, 3/21/08
(sum of the patentees statements
during prosecution would lead a
competitor to believe that the patentee
had disavowed coverage of laptop
computers, citing Seachange Intl));
See also Sanders, 4/20/11
(nonprecedential no disclaimer
when considering the entirety of the
prosecution remarks); RFID Tracker,
8/18/09 (nonprecedential applicants
statements before the PTO, in total,
disclaimed an interrogator/reader
that includes a transmitter, citing
Computer Docking Station)
838
- Prosecution history, being an ongoing
negotiation between the PTO and the
applicant, lacks the clarity of the
specification and thus is less useful for claim
construction purposes Phillips (3M
Innovative, 8/6/13 (relying on rule for
rejecting the district courts finding of PH
disclaimer over the interpretation provided
by the specification); Grober, 7/30/12;
Digital-Vending, 3/7/12 (reason why PH
statements do not limit claim scope absent
a clear disavowal or contrary definition
citing August Tech. and Home Diagnostics);
Trading Techs., 2/25/10; Netcraft, 12/9/08
(PH was unclear, while the specification
clearly supported narrow construction);
Elbex Video, 11/28/07); See also
Prosecution history is less useful than the
specification
- Absence of an argument during prosecution does

not necessarily indicate a clear and deliberate
disavowal (Superguide, 2/12/04)
- Attorney argument during PH must specify what

intended to alter the ordinary meaning of claim
language (Biagro, 9/13/05)
- Ambiguous statement in the PH, i.e., amenable to

multiple reasonable interpretations, is not a clear
and unmistakable surrender Cordis (3M
Innovative, 8/6/13 (no PH disclaimer - citing
Grober); Biogen Idec, 4/16/13 (J. Plager,
dissenting); 01 Communique Lab, 7/31/12
(vacating and remanding SJ of noninfringement,
because the district court erred in finding a
disclaimer based on statements by the patentees
839
expert during reexamination, where the CAFC
interpreted the statements differently than the
district court); Schindler, 1/15/10 (an ambiguous
disavowal will not suffice Computer Docking
Station); Solomon Techs., 5/7/08 (sufficiently
clear basis for disclaimer not found based on
certain statements); Computer Docking Station,
3/21/08 (disclaimer); Honeywell, 7/3/07; LG
Electronics, 7/7/06; Sandisk, 7/8/05; Golight,
1/20/04); See also Lexion Medical, 8/28/08
(nonprecedential)
- Simply describing the prior art prosecution

disclaimer does not apply when the
applicant simply describes features of the
prior art and does not distinguish the
claimed invention based on those features
Eolas (Computer Docking Station, 3/21/08
(claims narrowly construed based on
disclaimer over the prior art))
Context of statements is important
- Context of the applicants statement(s) is important

(Saffran, 4/4/13 (J. OMalley, dissenting in
context, the scope of the patentees disclaimer over
the prior art reference was narrower than the
majority concluded, because it would make no
sense for the patentee to have disclaimed so
broadly); Grober, 7/30/12 (rejecting the district
courts construction which misread the context of
the reexamination process and improperly
emphasized a general statement out of context to
limit the disputed claim term); Digital-Vending,
3/7/12; i4i, 3/10/10 (statements considered
together did not support a disavowal); SEB, 2/5/10
(no disclaimer when the applicants reference to
840
no solid material read in context, stating that the
attempt to create a disclaimer simply stretches
this prosecution history too far); Ecolab, 6/9/09
(the patentee never again repeated the allegedly
disclaiming statements after the examiner clarified
that the patentee erred regarding the claim scope in
light of the transitional phrase consisting
essentially of); Netcraft, 12/9/08 (PH read in
context was unclear as to be useful to construe
claims); Voda, 8/18/08 (no disclaimer where
remarks accompanying amendments did not refer
to the shape of the contact portion of a catheter in
its rest state); Lucent Techs., 5/8/08 (allegedly
disclaiming statements must be read in the context
of the applicants overall argument distinguishing
the claimed method from the method disclosed in
the prior art); Computer Docking Station, 3/21/08
(comparing an express definition of claim term in
the specification to broad remarks during
prosecution; however, the specification lacked any
express definition of term portable computer to
make distinctions over a prior art reference in the
PH ambiguous); Cordis, 1/7/08 (no clear and
unequivocal disclaimer of accused product when
applicants statements during reexam were read in
context); Nellcor, 4/8/05); See also Creative
Integrated Sys., 6/3/13 (nonprecedential no
disclaimer where the context of the statements in
the PH relied on by the district court supported the
plain language construction of the claims, by
reflecting the fact that the claims covered multiple
embodiments; the single statement the district
court relied on described the figure 7 embodiment,
and disavowed nothing); Medegen, 11/20/08
(nonprecedential no disclaimer where statements
were made only with respect to dependent claims,
and preferred embodiments, and not to distinguish
the invention over the prior art or to limit the scope
841
of the claims that did not include the elastomeric
limitation for the diputed term plug); Uniloc
USA, 8/7/08 (nonprecedential n.5 no
disclaimer when single sentence read in context)
- Necessary feature (disclaimer) vs. property,

result of claimed invention (no disclaimer)
(Perdue Pharma, 2/1/06)
- Timing and context of statements during the PH

must be considered (Grober, 7/30/12 (district court
failed to place the invention in its proper context in
limiting term payload platform to a horizontal
surface based on a disclaimer); Lucent Techs.,
5/8/08; Computer Docking Station, 3/21/08;
Allvoice Computing, 10/12/07 (claim not
indefinite when PH viewed in proper context);
Wilson Sporting Goods, 3/23/06); See also LSI
Industries, 5/22/08 (nonprecedential general
descriptions of the invention were not disavowals);
See also Lexion Medical, 8/28/08 (nonprecedential
disclaimer did not apply to claims which were
allowed)
Rescinding prosecution disclaimer
- Rescinding prosecution disclaimer although a

disclaimer made during prosecution can be rescinded,
and thereby permitting recapture of the disclaimed scope,
the prosecution history must be sufficiently clear to
inform the examiner that the previous disclaimer, and the
prior art it was made to avoid, may need to be re-visited
(Hakim, 2/23/07)
- Attorney letter stating that claims were broadened

in continuation was not sufficient to retract
disclaimer in parent (Hakim, 2/23/07)
842
- Representations to, and failure to put the examiner
on notice of attempt to claim broader scope results
in narrow claim scope (Trading Techs., 8/30/13
(patentee made clear to the same examiner during
the prosecution of a later filed CIP that the static
price axis described and claimed in the CIP was
not limited to manual re-centering); Ilor, 12/11/08
(ruling that the patentees representation to the
examiner that the claim at issue was similar to the
other claims, which recited the same language as
the parent claims, and its contemporaneous failure
to put the examiner on notice that it was
attempting to capture previously surrendered
subject matter, rendered other representations
made during prosecution of the parent with respect
to a prior art reference applicable to the claim at
issue, citing Hakim))
Disclaimer during prosecution of related (vs. unrelated)

applications, patents
- Disclaimer made during prosecution of parent application

also applies to continuations Omega Engg (Trading
Techs., 8/30/13 (same rule for PHE); Cordis, 9/28/11
(n.5: ordinary curves were disclaimed from term
undulating in parent case); Spansion, 12/21/10 (no
disclaimer based on arguments made during PH of parent
patent where different claim limitations were recited);
MBO Labs, 4/12/10 (applying rule to the rule against
recapture for reissue patents); Cat Tech., 5/28/08
(patentees statement during the PH of the parent patent
restricting the scope of the term spacing was binding;
not a disclaimer case); MEC, 4/1/08 (not a disclaimer
case, but the inventors statements during the PH of
parent application supported courts interpretation of
term based on the intrinsic evidence); Verizon, 9/26/07;
843
Ormco, 8/24/07; Saunders Group, 6/27/07; Hakim,
(nonprecedential disclaimer of untapered flitches
during the PH of related patents); Zapmedia, 4/25/12
(nonprecedential PH disclaimer (clear disavowal)
based on statements distinguishing prior art during the
prosecution and reexamination of parent patent); Sanofi-
Aventis, 3/22/12 (nonprecedential disclaimer during
prosecution of ancestor application); RFID Tracker,
8/18/09 (nonprecedential disclaimer if the parent
application relates to the same subject matter as the claim
language at issue Ormco); Heuft Systemtechnik,
6/25/08 (nonprecedential disclaimer by argument in
parent application of angles less than 30 degrees applied
to continuation when no independent claim in the parent
at the time of the arguments (like the patented
continuation claims) contained a limitation relating to
exit angles); LSI Industries, 5/22/08 (nonprecedential);
See also Prosecution of related (vs. unrelated)
applications
- Related vs. unrelated applications, patents those

having a familial relationship with the patent-in-
suit vs. those not only the former can be used to
construe claims (Regents of U. Cal., 2/28/08 (PH
of parent application supported disclaimer of claim
scope); Immunomedics, 6/23/04; Resqnet.com,
(nonprecedential n.1: for patents that familial,
but not directly related, the question whether
disclaimer applies will depend on the facts of the
case concluding disclaimer applied equally to all
asserted claims based on familial relationship of
the patents in suit to each other)
- Related applications, patents
844
- PH of a related patent application may
inform construction of a claim term (Trading
Techs., 8/30/13; Aventis, 5/20/13 (rejecting
the district courts reliance on the PH of
related patent in construing term
substantially pure where statements made
in the related patent applied to the end
product, rather than the claimed
intermediate; see also J. Bryson, dissenting)
-- when the two applications are directed to
the same subject matter and a clear
disavowal or disclaimer is made, or the term
is defined, during prosecution of the related
application (Advanced Software Design,
6/2/11 (PH of related patent was of little use
in construing the disputed claim language,
where the pertinent claim language in the
patents was different); Spansion, 12/21/10
(no disclaimer where different types of
connectors were claimed in the patents);
Linear Tech., 5/21/09 (no clear disavowal
where the amendments and statements in the
parent patent were plainly different from the
limitations in the accused infringers
proposed construction, citing Resqnet.com);
Ilor, 12/11/08 (distinguishing prior art in
defining the invention); Tip Systems,
6/18/08 (rule not applicable where the
specifications of the two related applications
were distinct and there was no clear
disavowal or definition of the term made
during prosecution of the related
application); Resqnet.com, 10/16/03 (no
clear disavowal where the PH of the parent
patent did not address the same claim
limitations)); See also Capital Machine,
4/15/13 (nonprecedential); Sanders, 4/20/11
(nonprecedential no disclaimer where the
845
parent patent claims were different); RFID
Tracker, 8/18/09 (nonprecedential
disclaimer supported by statements made
during prosecution of the parent application
related to the same subject matter); Contech,
2/13/09 (nonprecedential using disclosure
of CIP to construe claim terms in parent
application))
- Arguments in prosecution of related

applications should not receive undue
weight, for the claims and issues and
inventions vary from case to case (Inpro II
Licensing, 5/11/06 (applicant described a
broad technologic basis for related
applications, and usage in each application
was consistent with the district courts
interpretation of claim term))
- PH of claim limitation applies to other

applications, but only if the same limitation
(or only immaterial differences Elkay);
exception for when the disclaimer is directed
to the scope of the invention as a whole, not
a particular claim - Ormco (Trading Techs.,
8/30/13 (rule applies unless otherwise
compelled Biogen; extensive disclosures
added to a CIP directly contradicted the
prosecution disclaimers of claim scope in
prior related applications); Regents of U.
Minn., 6/3/13 (disclaimer that was specific
to a limitation in a parent application did not
apply to a different (means-plus-function)
limitation in a later divisional patent, where
the patentees arguments did not restrict the
scope of the invention as a whole, e.g., by
arguing that the prior art structure was
ineffective for achieving the later claimed
846
limitation citing Digital-Vending; see also
n.8); Digital-Vending, 3/7/12 (disclaimer
through inventor arguments regarding claim
limitations in parent did not apply to
different claim limitations in divisional);
Cordis, 9/28/11; Spansion, 12/21/10 (no
disclaimer where not the same limitation);
Ilor, 12/11/08 (rejecting argument that claim
at issue described different aspects of the
invention than claims at issue during
prosecution of the parent application where
the patentee added the claim at issue during
prosecution and represented to the examiner
that it was similar to and allowable for at
least the same reasons as the other pending
claims which contained the same language
as the parent claims); Saunders Group,
6/27/07; Andersen, 1/26/07 (similar claims);
Ventana Medical Systems, 12/29/06; LG
Electronics, 7/7/06); See also Sanders,
4/20/11 (nonprecedential); Move, 3/22/11
(nonprecedential no disavowal where
statements made in parent prosecution
pertained to very different claims with
different limitations); Heuft Systemtechnik,
6/25/08 (nonprecedential disclaiming
statements made during the prosecution of
parent patent related to the same subject
matter at issue in the patent in suit)
- Proper inquiry is whether the scope of

the claim limitation is substantially
the same in the subsequent application
as it was in the earlier application
(Regents of U. Minn., 6/3/13
(disclaimer in earlier application did
not carry forward to the claims of
later divisional where the scope of the
847
divisional claims was different from
that of the earlier claims, stating that
disclaiming claim coverage in light
of certain prior art, the applicant does
not thereby act as a lexicographer,
redefining individual words. The
appropriate focus is on the scope of
the claim element, not the meaning of
particular words in isolation.))
- Parallel applications filed on the same day

(Andersen, 1/26/07)
- Embodiments in the parent application

excluded from a CIP application are not
excluded from the scope of the CIP claims
absent language in the specification or PH
indicating that abandonment was intended -
Cordis (Decisioning.com, 5/7/08)
- Unrelated applications, patents
- Same claim terms in different, unrelated

patents need not have the same meaning;
terms instead interpreted in light of the
particular patent-in-suit, as interpreted by a
POS in the art (Medrad, 3/16/05)
- Statements made during prosecution

of a later, unrelated patent cannot be
used to interpret claims (Pfizer,
8/2/06; Goldenberg, 6/23/04)
- Statements in another patent or its PH

are irrelevant to claim construction
absent a formal relationship or
incorporation during prosecution of
848
the patent at issue (Goldenberg,
6/23/04)
- Claims derived from the same parent application
- Claims must be interpreted consistently

across all asserted patents when they derive
from the same parent application and share
many common terms Microsoft (Verizon,
9/26/07 (several cases cited; divisional
applications; see also dissent, C.J. Michel);
Saunders Group, 6/27/07; Andersen,
1/26/07; Ventana Medical Systems,
12/29/06; LG Electronics, 7/7/06; Semitool,
4/6/06; NTP, 8/2/05; Microsoft, 2/3/04); See
also Capital Machine, 4/15/13
(nonprecedential interpreting the term
flitch the same for all asserted patents as
excluding untapered flitches, based on PH
disclaimers in related parent and child
patents)
- Statements in the PH of one patent are

relevant to the scope of a common
term or the invention in a second
patent issued from the same parent
application (even if the second patent
issued first) (Tip Systems, 6/18/08
(PH of later-issued related patent did
not inform the construction of the
disputed term handset where the
specifications of the later-issued
patent (which issued from a CIP) and
parent patent were distinct and there
was no disclaimer during the PH of
the later related patent); Verizon,
9/26/07; Ormco, 8/24/07; Datamize,
8/5/05; NTP, 8/2/05; Immunomedics,
849
6/23/04), but only if the same claim
term (Ventana Medical Systems,
12/29/06; LG Electronics, 7/7/06);
See also Capital Machine, 4/15/13
(nonprecedential) vs. Georgia-
Pacific rule need the examiners
reliance in PH of second patent
(Microsoft, 2/3/04)
- Claim language at issue need be

present in both the parent and
continuation applications for
the prosecution of the parent to
limit the scope of the
continuation claims (Ilor,
12/11/08 (claim at issue
conceded to the examiner as
being similar to claims in
parent); Ormco, 8/24/07
(dissent, D.J. OMalley);
Saunders Group, 6/27/07 (claim
language omitted from
continuation))
- Alleged disclaimer
distinguishing the prior
art focused on a
particular claim
limitation found only in
the parent application,
and was not directed to
the invention as a whole
- SciMed (Saunders
Group, 6/27/07)
- Prosecution of a claim term in a

parent application generally
does not limit different claim
850
language in a continuation
application (Trading Techs.,
8/30/13 (disclaimer in parent
case was not applicable to later
related CIP where different
claim language and disclosure
was included in later CIP);
Spansion, 12/21/10 (no
disclaimer where the claims in
the patents recited different
types of connectors); Ilor,
12/11/08 (limiting where
represented to the examiner to
be similar to the claims in the
parent); Saunders Group,
6/27/07; Ventana Medical
Systems, 12/29/06; Invitrogen,
11/18/05; But see Hakim,
2/23/07 (opening in
continuation construed same as
slit in parent); Advanced
Cardiovascular Systems v.
Medtronic, 5/26/06 (non-
precedential, prosecution
disclaimer in parent application
applied to construction of
similar terms in continuations))
- Purported disclaimers do
not apply when directed
to specific claim terms
that have been omitted or
materially altered in
subsequent applications,
rather than to the
invention itself (Trading
Techs., 8/30/13 (citing
851
Saunders rule); Saunders
Group, 6/27/07)
- Prosecution disclaimer
from statements in
familial patent relating
to the same subject
matter as the claim
language at issue
Wang (Ormco, 8/24/07,
see also D.J. OMalley,
dissenting common
language or a linguistic
hook among the
claims is necessary)
Disclaimer must be of the claimed subject matter
- Disclaimer must be of the claimed subject matter

(Schindler, 1/15/10 (n.2 and 3: rejecting the concurring
opinions assertion that an embodiment disclosed in the
specification was not relevant to the scope of disclaimer
of the claimed subject matter, where the embodiment was
unclaimed and abandoned); Ormco, 8/24/07;
Callicrate, 10/31/05; Sandisk, 7/8/05; Golight, 1/20/04);
See also Astrazeneca, 10/30/13 (nonprecedential based
on distinctions between the claims, the CAFC was unable
to conclude that comments directed to the then-pending
claims disavowed scope regarding the asserted claims);
Sanders, 4/20/11 (nonprecedential whether disclaimer
depends on the current claim language)
- Claim must relate to the subject matter disclaimed

for disclaimer to limit claim scope (Digital-
Vending, 3/7/12 (disclaimer related only to
architecture claims and not method claims, where
the specification described the method claims
852
differently from the architecture claims; see also J.
Moore, dissenting); Ormco, 8/24/07 (disclaimer
did not apply to all claims; also did not apply to
certain independent claim(s) while did apply to
their dependent claims relating to the disclaimed
subject matter); Golight, 1/20/04); See also
Astrazeneca, 10/30/13 (nonprecedential); Lexion
Medical, 8/28/08 (nonprecedential holding that
arguments made to distinguish prior art reference
were limited in scope to only those claims that
explicitly recited the allegedly disclaimed subject
matter, citing Golight)
- Disclaimer only applies to elements subject

to the claimed method, and no more; with
open claim language (e.g., including), a
device may be found to infringe a patent
even if the device includes elements
disclaimed during prosecution (Sandisk,
7/8/05); See also Lexion Medical, 8/28/08
(nonprecedential disclaimer was clearly
directed to only those claims explicitly
reciting the disclaimed features, as
evidenced by the qualifying phrase as
claimed by applicants)
Disclaimer must by done by the applicant, not the examiner
- Disclaimer must be done by the applicant, not the

examiner (3M Innovative, 8/6/13 (rejecting reading
limitation into claim term based on the examiners
statements during reexam, stating that the CAFC is
guided by legal principles dictating that we rest on the
statements made by the patentee over conflicting
statements of an examiner because it is the patentees
words that define the claim); Biogen Idec, 4/16/13 (n.6:
distinguishing rule; see also J. Plager, dissenting);
853
Toshiba, 6/11/12 (no disclaimer based on the examiners
reasons for allowance); Dealertrack, 1/20/12; Markem-
Imaje, 9/9/11 (examiners amendment made for clarity
was not intended or understood to limit the term drive
to mean rotate, which was not an issue of examination);
U. Texas, 7/24/08 (not a disclaimer case, where the
examiners amendment limited the claim to overcome
indefiniteness problem in view of cited prior art);
Sorensen, 10/31/05; Innova/pure water, 8/11/04); See
also Move, 3/22/11 (nonprecedential examiners
characterization was not a clear disavowal of scope,
where not made by the patentee nor did the patentee
acquiesce in the examiners characterization)
- Examiners amendment when no explanation

given in the PTO record for an amendment, a court
should presume that the PTO had a substantial
reason related to patentability for including a
limiting element added by amendment Warner-
Jenkinson (S.C.) applicant is free to disagree
with the examiner, or on appeal (Schoenhaus,
3/15/06)
- Examiners remarks/characterization of claims

acquiescence by silence? (Biogen Idec, 4/16/13
(affirming PH disclaimer where the patentee did
not challenge the examiners characterization of
antibodies by their specificity and affinity for a
specific epitope, but instead adopted that
characterization by limiting their claims to an
anti-CD20 antibody similar to a certain
antibody, Rituxan; stating that [i]f an applicant
chooses, she can challenge an examiners
characterization in order to avoid any chance for a
disclaimer citing TorPharm); Woods, 8/28/12
(amendment of claim to overcome prior art was
not an admission or acquiescence that the original
claim was anticipated); HTC, 1/30/12 (no
854
acquiescence, in view of the context of the
examiners statements, distinguishing Fuji Photo);
Wavetronix, 7/29/09 (n.7: unnecessary to address
issue); Blackboard, 7/27/09 (rejecting argument
that the examiners cryptic remarks regarding a
claim term in two interview summaries supported
the presence of a single login limitation); U. of
Pittsburgh, 7/23/09 (examiners interview
summary did not evidence a disavowal of the
scope of the disputed term (adipose-derived),
where the summary did not explicitly characterize
the invention at all, let alone in a specific manner
to overcome prior art and the claims were not
further amended); Abbott Labs, 5/18/09
(acquiescence to the PTOs view that process
elements were critical parts of product-by-process
claims); On Demand Machine, 3/31/06; 3M,
12/2/03; Acco, 10/7/03; Torpharm, 7/23/03); See
also Move, 3/22/11 (nonprecedential no
disavowal where there was no acquiescence in the
examiners characterization)
- Applicants silence or failure to correct the

examiners interpretation of a claim term
(although caution must be used with this
rule) supports an inference that the applicant
agrees with the examiners interpretation
(Fuji Photo Film, 10/7/04); See also St.
Clair, 1/10/11 (nonprecedential patentees
comments submitted could not change the
examiners reasons for allowance and claim
construction); Luma, 4/10/08
(nonprecedential the district court
correctly construed term narrowly where the
patentee had acquiesced in the examiners
understanding of the term by amending the
claims in the narrowing manner suggested
by the examiner)
855
- Examiners broad interpretation of a claim term is
relevant to disproving disclaimer (DSW, 8/19/08
(no express disclaimer of broad claim
interpretation, where claims allowed without
objection in the examiners reasons for allowance);
Ventana Medical Systems, 12/29/06 (restriction
requirement))
- Examiners reasons for allowance no obligation

to respond, and not necessarily limiting (Biogen
Idec, 4/16/13 (n.6: distinguishing case from the
acquiescence cases cited below (citing Salazar
and Acco), where the patentee not only let stand, or
did not challenge, the examiners narrow
characterization of the term anti-CD20 antibody,
but also adopted that characterization to overcome
an enablement rejection); Toshiba, 6/11/12;
Salazar, 7/8/05; Eolas, 3/2/05; Acco, 10/7/03); See
also St. Clair, 1/10/11 (nonprecedential)
- Applicants silence regarding the examiners

statements (e.g., reasons for allowance)
during prosecution, without more, cannot be
a disclaimer of claim scope the applicant
must take a position; however, the reasons
for allowance may help show that the
applicants own arguments during
prosecution constituted a disclaimer
(Saffran, 4/4/13 (disclaimer supported by
fact that the examiner shared the patentees
stated view during the PH of the claimed
invention as a continuous sheet); Salazar,
7/8/05)
- Examiners unilateral statements in the

reasons for allowance do not constitute a
disclaimer; an applicant cannot disavow by
856
silence, but the examiners statements are
relevant to how a POS in the art would
understand a claim term (Salazar, 7/8/05);
See also Icon Health & Fitness, 10/24/12
(nonprecedential not a disclaimer case, but
noting the examiners understanding in the
reasons for allowance for why the claims
were novel over the prior art, as support for
the courts construction); St. Clair, 1/10/11
(nonprecedential patentees comments
submitted in response to the examiners
reasons for allowance, disagreeing with the
examiners claim construction, could not
change the examiners reason for allowance
citing Biogen)
- Examiners statement representative

of how a POS in the art would
understand a term (3M Innovative,
8/6/13 (CAFC not deciding claim
construction based on isolated
statements by the examiner, i.e., one
of skill in the art - citing Biagro (the
examiners statement during reexam
was, at most, representative of how
one of skill in the art would
understand the term)))
- Examiner need not rely on argument for disclaimer

- an applicants argument may cause disavowal of
claim scope even if the examiner did not rely on
the argument in the reasons for allowance
(Greenliant Systems, 8/22/12 (the sole question is
whether the argument was made); American
Piledriving, 3/21/11 (disclaimer even though the
statement was unnecessary to overcome a prior art
reference and the examiner explicitly disagreed
with it); Computer Docking Station, 3/21/08 (the
857
examiners citation of another claim limitation in
the reasons for allowability did not erase the
applicants clear disavowal of laptops from the
term portable computer); Cias, 9/27/07;
Gillespie, 9/6/07 (examiner distinguished prior art
on different grounds); Seachange Intl, 6/29/05);
See also Altair Engineering, 3/9/11
(nonprecedential While the examiners
interpretation can be pertinent, the applicants own
interpretation has far more significance)
Disclaiming more than necessary (to overcome prior art)
- Disclaiming, surrendering more than necessary (to

overcome prior art) - Norian (Uship, 5/8/13 (patentee
was held to disclaimer of more scope from method
claims than needed to traverse restriction requirement);
Apple, 10/11/12 (noting that the patentee distinguished
prior art reference on multiple grounds); Greenliant
Systems, 8/22/12 (Nor does it matter here whether
TEOS actually imparted the cited structural differences
because Xicor argued that it did. citing N. American
Container); Schindler, 1/15/10 (contrary to the dissenting
opinion, prosecution statements the applicants actually
made and not merely could have made to distinguish the
prior art did not constitute a clear and unmistakable
disclaimer of the meaning of the term personal action
to the extent concluded by the district court; see also J.
Dyk, dissenting in part, citing Norian rule); Lucent
Techs., 5/8/08 (no DOE infringement); Computer
Docking Station, 3/21/08; Cias, 9/27/07; Atofina,
3/23/06); See also Marctec, 8/4/10 (nonprecedential
construing term bonded as requiring bonded by heat,
based on statements in the PH, even though the prior art
reference overcome did not disclose bonding at all)
858
- Absence of claim rejection and amendments does
not negate disclaiming arguments made in order to
distinguish a prior art reference (Cias, 9/27/07)
- Claim term expressly defined in the specification

not a clear and unambiguous disavowal of claim
scope to depart from the meaning of a term
provided in the specification when remarks made
during PH to distinguish prior art are broader than
necessary to distinguish the prior art (Computer
Docking Station, 3/21/08)
- Multiple grounds (for distinguishing a prior art

reference) do not immunize each of them from
being used individually to construe the claim
language (based on a disclaimer) (Biogen Idec,
4/16/13 (n.5: applying rule in affirming a PH
disclaimer in response to an enablement rejection,
rejecting the patentees argument that another
portion of the PH showed no disclaimer - citing
Computer Docking Station); Saffran, 4/4/13
(limiting term device to a sheet where argued as
a basis for distinguishing prior art reference, even
though also arguing an additional basis; see also J.
OMalley, dissenting); American Piledriving,
3/21/11; Computer Docking Station, 3/21/08 (a
disavowal, if clear and unambiguous, can lie in a
single distinction among many); Pods, 4/27/07;
Andersen, 1/26/07); See also Altair Engineering,
3/9/11 (nonprecedential fact that prior art
reference could also have been distinguished on
some other ground was irrelevant)
- Exception where a multitude of distinctions

serves to make any single distinction in a
group less clear and unmistakable as the
point of distinction over the prior art and as
a critical defining point for the invention as
859
a whole (Computer Docking Station,
3/21/08)
- Patentee surrendered more by amendment than

necessary to avoid the prior art; patentees held to
the scope that they ultimately claim, and claims are
not interpreted as if surrendered only what had to -
Norian (Uship, 5/8/13; Energy Transportation
Group, 10/12/12 (relating to DOE/PHE citing
Norian); Apple, 10/11/12 (PH reflected that the
patentee intended to distinguish prior art reference
on more than one ground); Lucent Techs., 5/8/08;
Computer Docking Station, 3/21/08; Norian,
12/6/05; See also Regents of U. Cal., 2/28/08
(relating to DOE/PHE, J. Prost, dissenting, citing
Norian, arguing surrender of the alleged equivalent
(PNA) where the patentee amended claim to recite
blocking nucleic acid (construed to mean only
DNA or RNA) rather than blocking generally))
Disclaimer precludes DOE infringement
- DOE infringement - disavowal during PH precludes DOE

infringement (Trading Techs., 8/30/13; American Calcar,
6/27/11 (broad scope of estoppel based on broad
disclaimer); Spine Solutions, 9/9/10 (no DOE
infringement by two anchors after clear disavowal of
other than a single anchor); Trading Techs., 2/25/10;
Cordis, 1/7/08 (because same standards applied to both;
no disclaimer found); Cias, 9/27/07 (rule not expressly
applied; Festo criteria not satisfied); Hutchins, 7/3/07);
See also Marctec, 8/4/10 (nonprecedential); See also
Prosecution History Estoppel Argument-based
estoppel
860
Disclaimer from mistakes made during prosecution
- Mistakes made during prosecution effect on disclaimer

(Elbex Video, 11/28/07 (citing cases addressing whether
disclaimer occurs when mistakes are made during PH
arguments))
- Inaccurate statements during PH do not override

claim language (C.R. Bard, 10/29/04)
Offensive use of prosecution disclaimer
- Offensive use of disclaimer doctrine (Regents of U.

Minn., 6/3/13 (rejecting the patentees argument to avoid
anticipation that in a parent application it disclaimed a
structure disclosed in the prior art reference found to be
an equivalent of the structure corresponding to the
claimed means-plus-function element in a later related
patent, where the claim language was not the same);
Alza, 12/10/04); See also Revolution Eyewear, 3/30/06
(nonprecedential - even if the ordinary meaning of the
claim language and specification cover the disclaimed
subject matter)
- Patentee successfully argued for a narrow claim

interpretation (based on the inventors statements
in a Rule 132 declaration) to overcome
anticipatory prior art (Alza, 12/10/04)
Disclaimer during reexamination
- Disclaimer during reexamination (Biosig Instruments,

4/26/13 (citing 01 Communique Lab as relating generally
to considering statements made during reexamination as
intrinsic evidence for purposes of claim construction);
01 Communique Lab, 7/31/12; Grober, 7/30/12; Marine
861
Polymer, 3/15/12 (en banc (6-4)) (infringer was not
entitled to intervening rights based on the patentee
disclaiming claim scope by argument during
reexamination, where the claims were not amended or
new under Section 307(b)); Krippelz, 1/27/12
(disclaimer by arguments based on expert declaration
regarding requirements for producing the recited beam
of light incorporated limitations into the claim);
American Piledriving, 3/21/11; Cordis, 1/7/08 (no
disclaimer of asserted scope); Cias, 9/27/07; On Demand
Machine, 3/31/06; Alza, 12/10/04; C.R. Bard, 10/29/04);
See also BASF Agro, 3/20/13 (nonprecedential n.1:
confirming rule that disclaimer can happen during
reexam and post-grant review); Zapmedia, 4/25/12
(nonprecedential); St. Clair, 1/10/11 (nonprecedential
see also J. Moore, dissenting patentees arguments
during reexamination were not a disavowal)
- PH disclaimer may limit the range of equivalent

structures that fall within the scope of a means-plus-
function limitation J&M (Regents of U. Minn., 6/3/13
(affirming anticipation where disclaimer in PH of parent
application did not apply to means-plus-function element
in later divisional patent because claim limitations were
not the same); See also Heuft Systemtechnik, 6/25/08
(nonprecedential stating that disclaimer applies with
equal force to means-plus-function claims, and thus
precluding the patentee from asserting that exit angles
less than 30 degrees were structurally equivalent to an
exit angle which, due to prosecution disclaimer, must be
30 degrees or more, citing Ballard)
- Means-plus-function claims no disavowal of

equivalents to corresponding structure (Cross
862
Applicants subjective intent is irrelevant
- Applicants subjective intent, e.g., why claim added,

amended, during prosecution is not relevant (Seachange
Intl, 6/29/05)
Disclaimer based on extrinsic evidence
- (Paice, 10/18/07 (CAFC did not address, although the

parties disputed whether extrinsic evidence may give rise
to a disavowal of subject matter))
Disclaimer - surrender of claims
- Disclaimer, surrender of claims, claim scope (Norian,

12/6/05; Kumar, 12/11/03); See also Zircon, 10/5/11
(nonprecedential patentee disclaimed broad scope of
term comparing in independent claim by amending the
claim during the PH to depend from more limited claim)
Doctrine of claim differentiation
Generally presumption that each claim has different scope
- Doctrine of claim differentiation creates a rebuttable

presumption that each claim has a different scope -
Phillips (Sandisk, 10/9/12 (presumption not rebutted);
Woods, 8/28/12 (construing term based on differences in
claims in related patents, stating that an otherwise clear
term will not be construed to include a limitation
already present in some claims but not others);
Interdigital, 8/1/12; Bancorp Services, 7/26/12
(presumption not rebutted by inherency argument
where only dependent method claims required that the
863
method be performed by a computer); Chicago Board,
5/7/12 (presumption applied); Aspex Eyewear, 3/14/12;
Retractable Techs., 7/8/11 (rejecting application of the
doctrine where the implication that the term body in
independent claim was not limited to a one-piece
structure (which feature was expressly recited in a
dependent claim) was not a strong one in view of a
limiting written description; see also C.J. Rader,
dissenting strong presumption was not overcome by the
specification); American Calcar, 6/27/11; American
Piledriving, 3/21/11; In re Katz Patent Litigation, 2/18/11
(rule does not mean that claims necessarily present
different questions of validity or infringement);
American Medical Systems, 9/13/10 (basis for the
preamble not being limiting); Bradford, 4/29/10; Enzo
Biochem, 3/26/10 (applying presumption rule as the basis
for holding claim term not interfering substantially in
independent claim not indefinite, stating that a POS in
the art would presume that a structure recited in a
dependent claim will perform a function required of that
structure in an independent claim); Blackboard, 7/27/09;
Finisar, 4/18/08 (supported the courts interpretation
based on claim context); Regents of U. Cal., 2/28/08
(presumption rebutted); Sinorgchem, 12/21/07; Allvoice
Computing, 10/12/07 (every claim need not contain
every feature in the specification); Saunders Group,
6/27/07; Honeywell, 5/25/07; Acumed, 4/12/07;
Andersen, 1/26/07; Kim, 9/20/06; *LG Electronics,
7/7/06; Agfa, 6/26/06; Inpro II Licensing, 5/11/06;
Curtiss-Wright Flow Control, 2/15/06; Free Motion
Fitness, 9/16/05; Seachange Intl, 6/29/05; Nazomi,
4/11/05; Versa, 12/14/04; Innova/pure water, 8/11/04;
Liebel-Flarsheim, 2/11/04; Nomos, 2/4/04; AK Steel,
9/23/03; Alloc, 9/10/03; Sunrace Roots, 7/17/03); See
also Kruse Tech., 10/8/13 (nonprecedential
presumption rebutted applying Regents of U. Cal.; see
also J. Wallach, dissenting)
864
- Differences among claims can also be a useful
guide in understanding the meaning of particular
claim terms Phillips (Atlantic Research, 10/6/11
(interpreting added reissue patent claims as
covering an embodiment not covered by the other
claims); American Piledriving, 3/21/11; Hologic,
2/24/11 (giving term asymmetry narrow scope
despite claim differences; see also J. Friedman,
dubitante the patentee explicitly including the
limiting language in the claim when wanted to do
so); Arlington Indus., 1/20/11 (importing a split
limitation into term spring metal adaptor
improperly discounted substantive differences
between independent claims; see also J. Lourie,
dissenting); SEB, 2/5/10 (rejecting construction of
completely free limitation that would exclude
feature added in a dependent claim); Kara
Technology, 9/24/09 (key feature was not a
limitation of the claims where the key limitation
was only recited in the independent claims not on
appeal, as well as in a dependent claim);
Blackboard, 7/27/09 (powerful evidence);
Praxair, 9/29/08 (structure of the claims, which
recited the uniformity feature of the term
capillary only in a dependent claim, confirmed
that uniformity was not intended to be a feature of
the invention as a whole); Voda, 8/18/08 (disputed
term along a line did not require the contact
portion of a catheter to be straight in its rest state,
where only other claims expressly required such
feature); Sinorgchem, 12/21/07; Allvoice
Computing, 10/12/07); See also Kruse Tech.,
10/8/13 (nonprecedential question was whether a
limitation added in a dependent claim indicated
that the independent claim could not exclude that
limitation, rather than (the normal use of the above
rule) indicating that the independent claim does
not already require that limitation; see also J.
865
Wallach, dissenting); Smartmetric, 4/11/12
(nonprecedential no claim differentiation
concern where the patentee erroneously conflated
two separate and distinct claim limitations even
though they had different meanings); Zircon,
10/5/11 (nonprecedential rejecting application of
rule when the asserted dependent claims were read
in the context of the other claims); In re Scroggie,
9/16/11 (nonprecedential applicants rejected
construction would have rendered some claims
duplicative); Fifth Generation Computer, 1/26/11
(nonprecedential applying rule from Kara Tech.
where only earlier co-owned patents expressly
claimed the alleged limitation)
- Difference in meaning and scope of claims is presumed

when different words and phrases are used in separate
claims; rule is not inflexible (Chicago Board, 5/7/12;
American Piledriving, 3/21/11 (construing term
integral in dependent claim more narrowly than
different terms in an independent claim describing the
same relationship, stating that where the claims describe
the same relationship using different terms, the
assumption is that the term in the dependent claim has a
narrower scope citing Harris and Section 112,
paragraph 4); Hologic, 2/24/11 (construing different
claim phrases the same, citing Nystrom rule); Edwards
Lifesciences, 9/22/09; Oatey, 1/30/08 (claims may cover
the same subject matter in different words; not necessary
to construe a term in dependent claims to construe
independent claim); Power Mosfet Techs., 8/17/04)
- Different terms in different claims are presumed to

have different meanings (American Piledriving,
3/21/11; Invitrogen, 11/18/05)
Presumption is not a hard and fast rule
866
- Doctrine is not an absolute, rigid, hard and fast
rule the presumption created by the doctrine of
claim differentiation is not a hard and fast rule and
will be overcome by a contrary construction
dictated by the written description or PH
Seachange Intl (TecSec, 10/2/13 (the patentees
definition of term during the PH as requiring
multiple levels of encryption was sufficient to
overcome a claim differentiation argument citing
Regents of U. Cal.); Biogen Idec, 4/16/13 (PH
disclaimer overcame the presumption of claim
differentiation (citing Regents of U. Cal.), while
the disclaimer was not necessarily inconsistent
with the dependent claims); Interdigital, 8/1/12
(construing term code as not limited to spreading
code, which was recited in dependent claim,
stating that the presumption can be overcome by
strong contrary evidence such as definitional
language in the patent or a clear disavowal of
claim scope; see also J. Newman, dissenting the
doctrine can not enlarge the meaning of claim
terms beyond their presentation and support in the
patent document); Chicago Board, 5/7/12
(presumption was not rebutted by the
specification); Marine Polymer, 3/15/12 (en banc
(5-5)) (presumption based on limitation in
dependent claims was overcome by narrow
description of the invention in the specification
read as a whole with respect to the term
biocompatible; see also dissent presumption
was not overcome where there was an alternate
claim construction based on the patent, stating that
the presumption can be overcome only when a
contrary construction is dictated i.e.,
compelled by the written description or PH));
Digital-Vending, 3/7/12 (See J. Moore, dissenting
claim differentiation does not override clear
867
statements of scope in the specification and the
prosecution history - Toro); Eon-Net, 7/29/11
(doctrine was trumped by the specification which
defined the invention narrowly); Retractable
Techs., 7/8/11 (presumption of ordinary meaning
of term body in independent claim based on
dependent claims recitation of a one piece body
was rebutted by the limiting description in the
specification of a one-piece body; see also C.J.
Rader, dissenting term body should be
construed according to its ordinary meaning as not
requiring one piece, based on the strong
presumption created by the claim language
wherein the one-piece limitation was the only
difference between the independent and dependent
claims, and the specification neither revealed a
special definition given by the inventor for the
term body nor contained an intentional
disclaimer or disavowal of claim scope); American
Calcar, 6/27/11 (independent claim narrowly
construed based on the specification); Hologic,
2/24/11 (construing different claim language the
same, based on the specification and PH citing
Nystrom); Arlington Indus., 1/20/11 (see J. Lourie,
dissenting claim differentiation should not
enlarge claims beyond what the specification tells
us the inventors contemplated as their invention);
Erbe, 12/9/10; Bradford, 4/29/10 (specification
also supported broad construction for term
coupled to); Trading Techs., 2/25/10; Edwards
Lifesciences, 9/22/09 (term graft in independent
claims limited to intraluminal devices having
wires, as demanded by the specification); *ICU
Medical, 3/13/09 (attorney fees awarded against
the patentee despite a claim differentiation
argument, where the disputed term spike in
independent claim was ruled to have the same
narrow meaning as recited in dependent claim);
868
Netcraft, 12/9/08 (n.1, citing Nystrom); Regents of
U. Cal., 2/28/08 (presumption overcome by PH,
where the proper construction of heterogeneous
mixture excluded repetitive sequences,
notwithstanding certain dependent claims not
excluding them); Andersen, 1/26/07; See also
Kruse Tech., 10/8/13 (nonprecedential); In re
Rembrandt, 9/13/12 (nonprecedential doctrine
did not support broad meaning of term signal
point as having other than two dimensions);
Marctec, 8/4/10 (nonprecedential rejecting claim
differentiation argument and construing term
bonded in independent claim as requiring
bonded by heat, based on the specification and PH,
despite bonded by heat being claimed in a
dependent claim); Lydall, 9/8/09 (nonprecedential
rejecting claim differentiation argument, citing
Nystrom rule); Orenshteyn, 7/24/09
(nonprecedential portions of the specification
relied on by the district court to limit claim 1 did
not define the disputed term (controller), and the
district court also erred in concluding that other
portions, which supported the broader construction
for claim 1, described an unclaimed invention);
Realsource, 6/23/08 (nonprecedential); LSI
Industries, 5/22/08 (nonprecedential); Black &
Decker, 1/7/08 (nonprecedential; the doctrine
cannot give a patent scope beyond the invention
disclosed; the presumption arising from the
dependent claims, even if the same, failed to
override the proper (narrow) construction for an
independent claim based on the claims,
specification and PH)
- Claim differentiation may be helpful in

some cases, but it is just one of many tools
used by courts in the analysis of claim terms
(Erbe, 12/9/10 (rejecting the patentees
869
claim differentiation and surplusage
arguments))
- Doctrine is not a hard and fast rule of

construction (TecSec, 10/2/13; Marine
Polymer, 3/15/12 (en banc); Regents of U.
Cal., 2/28/08), since claims written in
different words may ultimately cover
substantially the same subject matter
(Hologic, 2/24/11 (same meaning for
different claim phrases was supported by the
specification; see also J. Friedman,
dubitante); Edwards Lifesciences, 9/22/09;
Netcraft, 12/9/08; Oatey, 1/30/08) must
examine the intrinsic evidence for the
correct scope - Nystrom (Edwards
Lifesciences, 9/22/09; Netcraft, 12/9/08
(specification revealed that independent
claim had narrow scope, despite any
redundancy); Andersen, 1/26/07 (different
claims, patents); Inpro II Licensing, 5/11/06;
Curtiss-Wright Flow Control, 2/15/06
(guide, not rigid rule); Nystrom, 9/14/05;
Seachange Intl, 6/29/05; Innova/pure water,
8/11/04); See also Zircon, 10/5/11
(nonprecedential); Lydall, 9/8/09
(nonprecedential rejecting claim
differentiation argument, citing Nystrom
rule)
- Different terms in claims reflect a

difference in the meaning of those
claims, vs. the patentee using different
words to express similar concepts
(Chamberlain Group, 2/19/08 (patent
taught that binary code and trinary
code were different terms with
parallel but different meanings);
870
Oatey, 1/30/08; Andersen, 1/26/07;
- Different terms may be construed

identically (Power Mosfet Techs.,
8/17/04; See also Advanced
Cardiovascular Systems v. Medtronic,
5/26/06 (nonprecedential, similar
terms interpreted the same))
Independent claim construed based on dependent claims
- Independent claim construed based on the wording,

limitations of dependent claim(s) - Phillips (Douglas
Dynamics, 5/21/13 (independent claim encompassed
both mounted and unmounted states where dependent
claim was limited to unmounted state); Sandisk, 10/9/12;
(independent method claims did not require computer-
implementation where only dependent claims recited that
the method be performed by a computer); Toshiba,
6/11/12 (rejecting the dissents claim differentiation
argument, where the majority read the differences in the
claim language between the independent and dependent
claims differently from the dissent); Chicago Board,
5/7/12 (construing term matching and that term had a
different meaning from term allocating, based on the
language in dependent claims); Aspex Eyewear, 3/14/12
(term magnetic member had broader meaning than a
magnet in dependent claim); Absolute Software,
10/11/11; Marine Polymer, 9/26/11 (original dependent
claims showed that the scope of term biocompatible
included some biological reactivity) [vacated]; In re
Tanaka, 4/15/11 (relying on the Phillips rule for adding a
dependent claim to hedge against invalidity of the
original independent claims in a reissue proceeding);
Vizio, 5/26/10 (rejecting doctrine where the dependent
871
claim recited an additional limitation beyond the
limitations of the independent claim); Bradford, 4/29/10
(independent claim term coupled to construed broadly
to include indirect attachment generally, where particular
form of indirect attachment was recited in dependent
claim); Enzo Biochem, 3/26/10 (linkage group not
interfering substantially in independent claim was
definite based on a structure for the linkage group recited
in a dependent claim, presumably performing the
function recited in the independent claim); Blackboard,
7/27/09 (disputed phrase in independent claim was
construed not to require a single login limitation where
a dependent claim of another independent claim in the
patent containing the identical phrase expressly added the
limitation); Ball Aerosol, 2/9/09 (phrase to seat
construed broadly based on language of dependent
claim); Netcraft, 12/9/08 (rejecting claim differentiation
argument); Chamberlain Group, 2/19/08 (doctrine not
expressly mentioned); Halliburton, 1/25/08
(indefiniteness); Tivo, 1/31/08 (dependent claims
underscore[d] a requirement of the independent
claim); Baldwin Graphic Systems, 1/15/08 (district court
improperly imported limitations from dependent into
independent claims); Saunders Group, 6/27/07; Intamin,
4/18/07; Abbott Labs, 1/5/07; Depuy Spine, 11/20/06;
LG Electronics, 7/7/06; Varco, 2/1/06); See also Kruse
Tech., 10/8/13 (nonprecedential see also J. Wallach,
dissenting); PPC, 4/28/11 (nonprecedential rejecting
argument that limitation in dependent claim was also part
of independent claim); LSI Industries, 5/22/08
(nonprecedential); Nazomi, 2/21/08 (nonprecedential
rejecting claim differentiation arguments)
- Independent claim cannot be interpreted in a way

inconsistent with a dependent claim (Pass &
Seymour, 8/27/10 (rejecting doctrine where
dependent claim had an additional limitation);
Bradford, 4/29/10; Enzo Biochem, 3/26/10
872
(rejecting argument based on claim differentiation
where the independent claim was only capable
of what was required in the dependent claim);
Blackboard, 7/27/09; 800 Adept, 8/29/08 (rejecting
rule where the dependent claims were unasserted,
citing Intamin); Regents of U. Cal., 2/28/08
(presumption rebutted based on the PH, and
narrow interpretion of independent claim was
inconsistent with dependent claim); Sinorgchem,
12/21/07 (no inconsistency when scope of
independent and dependent claims was not
identical); Intamin, 4/18/07; LG Electronics,
7/7/06; Medrad, 3/16/05)
- Improper dependent claim when

dependent claim erases a limitation of a
properly construed independent claim
(Intamin, 4/18/07)
- While true that dependent claims can aid in

interpreting the scope of (independent)
claims from which they depend, they are
only an aid to interpretation and are not
conclusive N. American Vaccine (Edwards
Lifesciences, 9/22/09 (specification and the
parties agreement in the district court made
clear that the claimed graft devices required
wires, stating that claim differentiation is a
rule of thumb that does not trump the clear
import of the specification Netcraft); ICU
Medical, 3/13/09 (dependent claim was
added years after the filing date and issuance
of related patents, as well as after the
allegedly infringing product was
introduced); Netcraft, 12/9/08 (n.1: stating
that even if we agreed with [the patentee]
that the district courts claim construction
led to some redundancy, that alone would
873
not necessarily warrant a different result in
this case. While claim differentiation may be
helpful in some cases, it is just one of many
tools used by courts in the analysis of claim
terms citing Nystrom); Regents of U.
Cal., 2/28/08)
- Rebuttable presumption that an independent claim

is not construed to include a limitation added in a
dependent claim Phillips (Sandisk, 10/9/12
(presumption not rebutted where no intrinsic
evidence shown justifying narrow construction);
(presumption not rebutted); Aspex Eyewear,
3/14/12 (term magnetic member had a broader
meaning than further limitation to magnet in
dependent claim); Retractable Techs., 7/8/11
(presumption rebutted by the specification; see
also C.J. Rader, dissenting); American Piledriving,
3/21/11; American Medical Systems, 9/13/10
(presumption that functional language in
independent claims was not limited to specific
wavelength ranges recited in dependent claims);
Therasense, 1/25/10 (applying rule to the scope of
an independent claim in a prior art patent for
purposes of anticipation) [vacated on 4/26/10, and
reinstated by Therasense, 5/25/11 (en banc)];
Kara Technology, 9/24/09; Blackboard, 7/27/09
(construction not requiring single login
limitation in an independent claim was supported
by the specification containing language tracking
the dependent claim and was introduced by the
phrase may be required); Regents of U. Cal.,
2/28/08 (presumption rebutted); Halliburton,
1/25/08; Tivo, 1/31/08 (term presumption not
used; dependent claims referred to events
occurring after the required limitation of the
independent claim); Sinorgchem, 12/21/07;
874
Saunders Group, 6/27/07; Acumed, 4/12/07; Kim,
9/20/06; LG Electronics, 7/7/06; Agfa, 6/26/06)
tool works best where both independent and
dependent claim (Curtiss-Wright Flow Control,
2/15/06); See also Kruse Tech., 10/8/13
(nonprecedential); In re Rembrandt, 9/13/12
(nonprecedential narrow construction required
for dependent claims antecedent basis); Zircon,
10/5/11 (nonprecedential rejecting the patentees
claim differentiation argument where the
dependent claims when read in the context of the
other claims were incomprehensible on their face
and did not follow the Phillips rule);
Microthin.com, 5/20/10 (nonprecedential
applying rule and stating that the doctrine is at its
strongest when the term already appears in a
dependent claim Liebel-Flarsheim); Southern
Mills, 5/14/10 (nonprecedential independent
claim was not limited where dependent claim
added the limitation, which was the most
conspicuous difference between the two claims
even though the dependent claim also added other
language)
- Definitional language in dependent claim

that adds nothing of substance to the
limitation in question does not rebut
presumption (Saunders Group, 6/27/07)
- Presumption is especially strong when the

limitation in dispute is the only meaningful
difference between an independent and
dependent claim, and one party urges that
the limitation in the dependent claim should
be read into the independent claim (Sandisk,
10/9/12; Interdigital, 8/1/12 (ALJs
construction of term code in independent
claim as meaning spreading code
875
improperly rendered dependent claim
superfluous); Retractable Techs., 7/8/11
(C.J. Rader, dissenting limiting written
description found by the majority did not
overcome the strong presumption where the
only difference between the independent and
dependent claims was the one-piece
feature); Acumed, 4/12/07); See also
limitation added to dependent claim was the
most conspicuous difference between the
two claims); Orenshteyn, 7/24/09
(nonprecedential additional limitation was
all that claim 2 added to claim 1)
Independent claim construed based on another independent

claim
- Independent claims when doctrine applied to two

independent claims, two considerations: 1) when
additional, or different, language in another independent
claim is rendered superfluous, and 2) claim
differentiation cannot broaden a claim beyond the correct
scope (Hologic, 2/24/11 (narrow construction given to
term asymmetry despite claim differences); Arlington
Indus., 1/20/11 (importing split limitation would render
modifiers in other independent claims superfluous, which
weighed against doing so); Allvoice Computing,
10/12/07 (claims and specification consistently used
different terms to denote separate processes with
different end results); Curtiss-Wright Flow Control,
2/15/06); See also Creative Integrated Sys., 6/3/13
(nonprecedential district court erred by limiting
independent claim to an embodiment where would render
superfluous the exacting language the patentee chose for
an unasserted independent claim concisely and
unambiguously limited to the embodiment citing
876
Curtiss-Wright); In re Rembrandt, 9/13/12
(nonprecedential)
Redundant, superfluous claims are disfavored
- Interpretation of one claim that renders another claim

meaningless, superfluous, redundant, or invalid is
disfavored (Interdigital, 8/1/12; Retractable Techs.,
7/8/11 (C.J. Rader, dissenting reading term body in
independent claim to require a one-piece structure
would render the dependent claims completely
superfluous); Arlington Indus., 1/20/11 (importing
limitation would render modifiers in other independent
claims superfluous); Vizio, 5/26/10 (claims held not
superfluous where they imposed additional limitations
not encompassed within the independent claims);
Trading Techs., 2/25/10 (rejecting the patentees
argument where the dependent claim added an additional
limitation); Blackboard, 7/27/09 (including in an
independent claim the single login limitation expressly
added in a dependent claim of another independent claim
in the patent containing the identical disputed phrase
would have made the dependent claim redundant --
powerful evidence of claim construction); Netcraft,
12/9/08 (rejecting based on the specification the
patentees argument that a narrow construction of
independent claim to require providing internet access
would render dependent claims recitation of Internet
access provider redundant); Broadcom, 9/19/08 (the
most reasonable interpretation of the claims was one
that would not make a dependent claim redundant);
Decisioning.com, 5/7/08 (not a claim differentiation
case, but applying an exception in holding that
surplusage may exist in some claims, construing the term
remote interface as limited to being publicly-accessible
despite rendering the term public kiosk in a dependent
claim surplusage); Andersen, 1/26/07; Curtiss-Wright
877
Flow Control, 2/15/06; NCube, 1/9/06; Lizardtech,
10/4/05; Cytologix, 9/21/05); See also In re Sutton,
11/20/12 (nonprecedential reading claims to exclude a
plasticizer would have rendered superfluous another
claim which expressly excluded a plasticizer); MEMS
Tech. Berhad, 6/3/11 (nonprecedential the rejected
construction of term volume in independent claim to
include recess or hole in the substrate would render
dependent claims essentially redundant); Orenshteyn,
7/24/09 (nonprecedential construing claim 1 to exclude
a general purpose CPU would have made claim 2, which
lacked a general purpose CPU, superfluous claim 1
thus impliedly included such a CPU); Respironics,
12/16/08 (nonprecedential dependent claims reciting
magnitude and duration would be redundant if
shape in independent claims meant the same); LSI
Industries, 5/22/08 (nonprecedential); See also Context
of the claims - Claim terms should not be ignored, or
rendered superfluous or redundant
- Claims are not redundant if other differences

between the claims; overlapping claims are not
unusual (Eon-Net, 7/29/11 (claims in related
patents recited scanning a hard copy document);
Trading Techs., 2/25/10 (dependent claim added
an additional limitation); Andersen, 1/26/07); See
also In re Rembrandt, 9/13/12 (nonprecedential
not applying doctrine where the district courts
construction of term signal point did not render
claims redundant or superfluous); Reckitt
Benckiser, 7/7/11 (nonprecedential dependent
claim recited particular embodiment of bilayer
drug formulation); Lydall, 9/8/09 (nonprecedential
dependent claim could be differentiated from the
independent claim by other limitations)
- Construction rendering a claim term itself

redundant or meaningless, or invalid (Douglas
878
Dynamics, 5/21/13 (rejecting the district courts
construction of term based on redundancy, in view
of the actual claim language); Innovention Toys,
3/21/11 (term movable was not rendered
superfluous by the district courts construction,
since it distinguished the claims from the prior art
mounted modules); Curtiss-Wright Flow Control,
2/15/06)
- Reading an additional limitation from a

dependent claim into an independent claim
not only makes that additional limitation
superfluous, it might also render the
dependent claim invalid, for failing to add a
limitation to those recited in the independent
claim, as required by 35 USC 112, 4
(Pfizer, 8/2/06)
- Different terms cannot have the same meaning as

to make one term superfluous (Primos, 6/14/06)
- Dependent claim reciting additional

limitations was not rendered superfluous
(Decisioning.com, 5/7/08; Sram, 10/2/06)
- Subsequent patent application rendering

superfluous the patentees proposed claim
construction (Kao, 3/21/06)
- Term in one claim does not import the term into

other claims (Wilson Sporting Goods, 3/23/06)
Continuation application adding/omitting claim limitation

from parent application
- Continuation application omitting claim limitation, which

claims priority to a parent application containing claim
879
limitation (Arlington Indus., 1/20/11 (PH also did not
support importing split limitation); Welker Bearing,
12/15/08 (holding that a difference between claims in
different patents did not change the meaning of means-
plus-function limitations, where both terms shared the
same specification with the same structure corresponding
to the claimed function); Saunders Group, 6/27/07)
- Omitting a limitation from only some (vs. all) of

the claims in a continuation (where the parent
application recited the limitation in all of its
claims) was a strong indicator that claims not
reciting the limitation were not intended to require
it; outweighed portions of the specification in
which the invention was described narrowly
(Arlington Indus., 1/20/11; Saunders Group,
6/27/07 (interpretation also supported by a petition
to make special))
- Continuation patent adding a limitation (Medtronic,

9/18/12 (inclusion of express limitation in claim of
continuation (reissue) patent of parent (reissue) patent
suggested that the other claims that did not recite such a
limitation should not be so limited))
Extrinsic evidence
Generally
- Intrinsic evidence (i.e., the claims, the written

description, and the PH) is a more reliable guide to the
meaning of a claim term than are extrinsic sources like
technical dictionaries, treatises, and expert testimony
Phillips (SkinMedica, 8/23/13; Astrazeneca, 11/1/10;
Solvay, 10/13/10 (rejecting interpretation of term
isolating as meaning purifying based on expert
testimony alone); Netcraft, 12/9/08 (n.3: defendants
interest in the patents in suit wsa insufficient to overcome
880
narrow construction based on the specification);
Howmedica, 9/2/08 (attorney letter to client interpreting
examiner interview rejected as not part of the PH);
Finisar, 4/18/08; Ortho-McNeil, 3/31/08 (intrinsic record
was sufficient for the meaning of term and);
Chamberlain Group, 2/19/08 (broader dictionary
definition of a claim term adopted by the district court
was rejected in view of a narrower meaning of the term
based on the intrinsic evidence, i.e., the specification));
See also BASF Agro, 3/20/13 (nonprecedential when a
patents intrinsic evidence is complete and unambiguous,
a court need not resort to extrinsic evidence); Cartner,
6/17/09 (nonprecedential district court erred by relying
on dictionary definitions of the words in term constantly
operative over the intrinsic evidence); Nazomi, 2/21/08
(nonprecedential technical treatises and prior art patents
not helpful given clear meaning of the disputed claim
term in the specification and PH)
- Extrinsic evidence is less significant than the

intrinsic record in determining the legally
operative meaning of claim language Phillips
(Aristocrat Techs., 3/13/13; Solvay, 10/13/10
(rejecting expert testimony); Netcraft, 12/9/08; Tip
Systems, 6/18/08 (where the clear intrinsic
evidence outweighed extrinsic evidence of
industry practice (including brochures,
instructions, and practice manuals relating to the
accused products) for the meaning of the disputed
term handset); MEC, 4/1/08)
- Extrinsic evidence - to determine the ordinary and

customary meaning of a claim term (HTC, 1/30/12
(extrinsic evidence (e.g., dictionaries, expert opinion) not
relied on by the parties); Astrazeneca, 11/1/10 (relying on
expert testimony to define claim term); Paragon
Solutions, 5/22/09 (dictionaries and treatises can be
useful to help the court better understand the underlying
881
technology and the way in which one of skill in the art
might use the claim terms Phillips); Howmedica,
9/2/08 (extrinsic evidence can help educate the district
court regarding the field of the invention, and help
determine what a POS in the art would understand claim
terms to mean, citing Phillips); Helmsderfer, 6/4/08;
MEC, 4/1/08 (treatise supported terms ordinary meaning
in the computer arts); Chamberlain Group, 2/19/08
(CAFC rejected the district courts use of a technical
dictionary for determining the ordinary and customary
meaning of a claim term (binary code), when the
specification restricted the terms meaning to a narrower
meaning); Ortho-McNeil, 1/19/07 (expert testimony);
Conoco, 8/17/06; Varco, 2/1/06; Pfizer, 11/22/05; Pause
Technology, 8/16/05; ASM America, 3/16/05; Merck,
10/30/03; ACTV, 10/8/03); See also MEMS Tech.
Berhad, 6/3/11 (nonprecedential expert testimony
properly relied on for plain and ordinary meaning of term
electrically coupled)
- Court may look to extrinsic evidence so long as the

extrinsic evidence does not contradict the meaning
otherwise apparent from, unambiguous based on,
the intrinsic record Phillips, Intel (Arcelormittal
France, 11/30/12 (extrinsic evidence of terms
(hot-rolled steel sheet) ordinary meaning in the
industry as referring to a steel sheet that has not
been cold-rolled contradicted its meaning based on
the specification, which made clear that the term
did not preclude a cold-rolling step); Advanced
Fiber, 4/3/12; Callaway, 8/14/09 (accepted practice
within the art, when not at variance with the
intrinsic evidence, is relevant to claim
construction); Helmsderfer, 6/4/08); See also
BASF Agro, 3/20/13 (nonprecedential)
- Extrinsic evidence (e.g., dictionaries, treatises, expert

testimony) is useful, provided that the court attaches the
882
appropriate weight to these sources and views them in the
context of the intrinsic evidence Phillips; extrinsic
evidence must be tied to the claims, written description
and PH (SkinMedica, 8/23/13 (rejecting reference cited
on the face of the patent as extrinsic evidence, which the
patentee waived by citing it for the first time on appeal);
Amkor Technology, 8/22/12 (expert testimony properly
relied on); Advanced Fiber, 4/3/12; Netcraft, 12/9/08;
Helmsderfer, 6/4/08; Finisar, 4/18/08 (extrinsic sources
like dictionaries and expert testimony cannot overcome
more persuasive intrinsic evidence); Chamberlain
Group, 2/19/08 (district courts use of a technical
dictionarys definition of the ordinary and customary
meaning of a claim term (binary code) was rejected as
internally inconsistent and contradictory to a narrower
meaning of the term in the patent); Osram GMBH,
10/31/07 (CAFC rejected ITCs reliance on technical
treatises to determine method for measuring claim term,
see also J. Dyk, dissenting technical treatises were
strong sources of extrinisic evidence because they
provide objective, contemporaneous, unbiased, and
publicly available descriptions of how the claim term is
measured by those skilled in the art - Phillips); Inpro II
Licensing, 5/11/06; Pfizer, 11/22/05; Cross Medical
Prods., 9/30/05; Free Motion Fitness, 9/16/05; Nystrom,
9/14/05; Biagro, 9/13/05 (expert testimony); Aquatex,
8/19/05; Tap Pharmaceutical, 8/18/05; Terlep, 8/16/05);
See also BASF Agro, 3/20/13 (nonprecedential); Sanofi-
Aventis, 3/22/12 (nonprecedential extrinsic evidence,
including expert testimony, did not outweigh the intrinsic
evidence with respect to the meaning of term plasmid)
- When the intrinsic evidence is silent as to the

plain meaning of a claim term when the intrinsic
evidence is silent as to the plain meaning of a term,
it is entirely appropriate for the district court to
look to dictionaries or other extrinsic sources for
context, to aid in arriving at the plain meaning of a
883
claim term (Helmsderfer, 6/4/08 (the district court
was correct that there was no clear meaning of the
term partially hidden from view apparent from
the intrinsic record)); See also BASF Agro,
3/20/13 (nonprecedential where the intrinsic
record leaves ambiguities and unresolved
questions, a court may consider extrinsic evidence,
including expert testimony); Cartner, 6/17/09
(nonprecedential rejecting the district courts
reliance on a dictionary over the intrinsic evidence
and its findings that the specification was not
instructive and the PH was not explanatory of
the meaning of the term constantly operative)
Dictionaries
- Courts may rely on dictionary definitions

when construing claim terms, so long as the
dictionary definition does not contradict any
definition found in or ascertained by a
reading of the patent documents Phillips,
Vitronics (3M Innovative, 8/6/13; Aristocrat
Techs., 3/13/13; Meyer, 8/15/12; Advanced
Fiber, 4/3/12 (district court erred by relying
solely on dictionary definitions in construing
a non-claim term (perforated) which was
within the courts construction of a disputed
claim term, where the claims and written
description did not provide support for the
courts pierced or punctured limitation,
and the district court disregarded a disclosed
embodiment that was not made by piercing
or puncturing; see also J. Dyk, dissenting);
Lazare Kaplan, 12/22/10 (dictionary
definitions of words in the term rigid
frame read to the jury were entirely
consistent with the plain language of the
884
limitation and the specification); Baran,
8/12/10 (dictionary definitions properly
cited by the district court for the plain
meaning of the term detachable which was
consistent with the specification); Pressure
Products, 3/24/10; Ultimax Cement, 12/3/09
(district court erroneously relied on a single
dictionary definition to the exclusion of
other dictionary definitions and, most
importantly, the context in which the term
(anhydride) was used within the claim and
the specification); Edwards Lifesciences,
9/22/09; Wavetronix, 7/29/09 (specification
aligned well with the standard mathematics
definition of term probability density
function); Kinetic Concepts, 2/2/09
(rejecting medical dictionary definition of
term wound which was broader than its
meaning shown by the context of the patent;
see also dissent, J. Dyk dictionary
definition should have been considered in
construing the term); Boston Scientific
Scimed, 1/15/09 (district courts
construction of the term non-
thrombogenic accorded with the
specification, the PH, and the dictionary
definition of a related term)); See also
Cartner, 6/17/09 (nonprecedential
rejecting the district courts construction of
the term constantly operative based on
dictionary definitions and which was
contrary to the specification and highly
explanatory amendments and arguments
made during prosecution to overcome prior
art); Boss Indus., 5/28/09 (nonprecedential
construction of adjacent based on the
intrinsic evidence was consistent with its
dictionary definition)
885
- Context of the claim and specification
to determine which of multiple
dictionary definitions is the correct
one - Phillips (Ultimax Cement,
12/3/09 (district court failed to
consider the context when relying on
a single dictionary definition to
construe the disputed term
(anhydride))); See also Zircon,
10/5/11 (nonprecedential CAFC
found alternate definition of term
ratio in the same dictionary offered
by the patentee to be the more
pertinent definition to apply in the
context of the patent)
- Misquoting dictionary definitions,

e.g., by omitting words (Felix,
4/10/09 (quotations from dictionary
were distorted and highly
misleading and bordered on a
misrepresentation to the court))
- Claim term construed, its ordinary meaning

determined by applying the widely accepted
meaning of commonly understood words
(e.g., consulting dictionaries, other sources,
or otherwise) Phillips (Meadwestvaco,
9/26/13 (affirming the district courts
construction of term transparency it based
on dictionary definition of transparent);
Regents of U. Minn., 6/3/13 (relying on
dictionary definitions of terms (affixed
and joined and connected and
conjoined as meaning that the objects
were previously separate) as support for the
terms ordinary meaning (which was
886
consistent with the claims, specification and
PH) that first and second disks affixed
together to form a conjoint disk in the
claimed device were separate and discrete
structures); Aristocrat Techs., 3/13/13;
Meyer, 8/15/12 (district court and the CAFC
considered definitions of term providing);
Hynix, 5/13/11 (CAFC was bound by its
construction of the commonly understood
electrical term bus from a prior case);
Baran, 8/12/10 (plain meaning from
dictionary definitions supported the district
courts construction); Comaper, 3/1/10
(construing the term case based on its
general dictionary definition); Wavetronix,
7/29/09 (probability density function as a
well known mathematics term); Praxair,
9/29/08 (district court properly consulted
dictionary definition of the term
capillary); Cat Tech., 5/28/08 (dictionaries
consulted for widely accepted meaning of
the term spacing); Mangosoft, 5/14/08
(definition of term local as relates to
computer systems was provided by technical
dictionary, which was consistent with the
intrinsic evidence); Symantec, 4/11/08
(consulting technical dictionary for ordinary
meaning of terms computer and
computer system where the specification
did not expressly define or adopt a special
definition of the terms); Chamberlain Group,
2/19/08 (CAFC rejected the district courts
use of a technical dictionary, when the
specification restricted a claim terms
meaning to a narrower meaning); Miken
Composites, 2/6/08 (CAFC cited dictionary
definition for the ordinary meaning of the
term insert as meaning something
887
inserted or intended for insertion); Stumbo,
11/28/07 (common sense meaning of
vertical from dictionary applied); Verizon,
9/26/07; L.B. Plastics, 9/12/07; Pods,
4/27/07; MIT, 9/13/06; Ormco, 8/30/06;
Agfa, 6/26/06 (stack); Callicrate,
download component had no commonly
understood meaning reflected in dictionaries
or other sources)); See also Joy, 11/8/12
(nonprecedential construing term
indentations based on dictionary definition
as excluding holes); MEMS Tech. Berhad,
6/3/11 (nonprecedential relying on
dictionary definition to construe terms
chamber and coupled before assessing
anticipation); Aspex Eyewear, 8/1/08
(nonprecedential consulting dictionary
definitions of terms therein and frame in
reversing the district courts narrow
construction of the terms)
- Dictionary definition of the term at

the time of the invention, i.e., as of
the effective filing date of the patent
application, must be consulted
Phillips (Helmsderfer, 6/4/08 (n.3
the CAFC consulted an additional
edition of (Websters) dictionary
published before the effective filing
date of the application for defining the
ordinary and customary meaning of
the term partially as excluding
totally)))
- Where the meaning of a claim term is

readily apparent, claim construction
involves little more than the
888
application of a widely accepted
meaning of commonly understood
words and, in such cases, general
purpose dictionaries may be helpful
Phillips (Miken Composites, 2/6/08
(insert); Ormco, 8/30/06
(geometry)); See also MEMS Tech.
Berhad, 6/3/11 (nonprecedential
construing term chamber)
- Dictionaries are often useful to assist in

understanding the commonly understood
meaning of words (Aristocrat Techs.,
3/13/13 (district court properly used the
provided dictionary definitions to inform its
understanding of the ordinary and customary
meaning of the word award); Erbe
Elektromedizin, 5/19/09 (consulting
dictionary definitions of working and
work to construe term working
channel); Praxair, 9/29/08 (capillary);
Helmsderfer, 6/4/08 (dictionaries used to
define the term partially which was not
shown or defined in the specification);
Decisioning.com, 5/7/08 (consulting
dictionary definitions of the term kiosk in
the specification which suggested that the
claimed term remote interface meant
installed in a publicly-accessible location);
Symantec, 4/11/08 (concluding based on a
technical dictionary that the ordinary
meaning of the terms computer and
computer system to a POS in the art in
1990 was not limited to a single computer as
disclosed in the specification, stating that
dictionaries are among the many tools that
can assist the court in determining the
meaning of particular terminology to those
889
of skill in the art at the time of the
invention Phillips); Miken Composites,
2/6/08 (CAFC cited dictionary definition of
the term insert); Verizon, 9/26/07; L.B.
Plastics, 9/12/07 (weld and fuse (used in
the specification to describe claim term
weld)); In re Trans Texas Holdings,
8/22/07 (BPAI, applying broadest
reasonable interpretation; multiple, broader
and narrower, definitions considered); MIT,
9/13/06; Ormco, 8/30/06), but reliance on
dictionaries must accord with the intrinsic
evidence must scrutinize the intrinsic
evidence to determine the most appropriate
dictionary definition (Praxair, 9/29/08;
Ortho-McNeil, 3/31/08 (court not required
to interpret claim term (and) according to
its most common usage in the dictionary,
where the patent supported the alternative
definition of and as meaning or); Old
Town Canoe, 5/9/06; Free Motion Fitness,
9/16/05)
- Dictionary definitions have the value

of being an unbiased source
accessible to the public in advance of
litigation Phillips (Praxair, 9/29/08)
- Dictionaries are among the many

tools that can assist the court in
determining the meaning of particular
terminology to those of skill in the
art at the time of the invention
Phillips (Paragon Solutions, 5/22/09
(useful (along with treatises) insofar
as they help the court to better
understand the underlying technology
and the way in which one of skill in
890
the art might use the claim terms
Phillips); Erbe Elektromedizin,
5/19/09; Symantec, 4/11/08)
- Problem with using dictionaries

(Power Integrations, 3/26/13 (when
start with broad dictionary definition,
and fail to fully appreciate how the
specification implicitly limits that
definition, causes the construction of
the claim to be unduly expansive -
Phillips)) focuses the inquiry on the
abstract meaning of words rather than
on the meaning of claim limitations
within the context of the patent
Phillips (Ultimax Cement, 12/3/09
(district courts construction of the
disputed term anhydride based on a
single dictionary definition failed to
consider the context of the claim and
specification); Mangosoft, 5/14/08;
Ortho-McNeil, 3/31/08 (context of the
patent supported usage of term and
to connote alternatives, rather than the
more common usage of an additive
meaning); Innogenetics, 1/17/08
(accused infringers reliance on a
single dictionary definition without
explanation, when term (as) had
multiple meanings, commited the
error of construction warned against
in Phillips; in context, the term as
was merely syntactical))
- Dictionary definition cannot

contradict the intrinsic evidence
Vitronics (Wavetronix, 7/29/09;
Praxair, 9/29/08; Helmsderfer, 6/4/08
891
(intrinsic evidence lacked any support
for the meaning of the term
partially); Mangosoft, 5/14/08;
Unitherm Food Systems, 7/12/04)
- Dictionary definitions must give way

to the meaning imparted by the
specification (Power Integrations,
3/26/13; In re Johnston, 1/30/06
(PTO/BPAI))
- Dictionary used to begin

understanding of the ordinary
meaning of claim term proper under
Phillips to use a dictionary so long as
the definition does not contradict the
definition found in or ascertained by
reading the patent documents, i.e., the
overall context of the intrinsic
evidence (Aristocrat Techs., 3/13/13;
Ultimax Cement, 12/3/09 (rejecting
the district courts reliance on a single
dictionary definition where the
context of the claim and specification
was not considered); Boston
Scientific Scimed, 1/15/09; Praxair,
9/29/08; Helmsderfer, 6/4/08 (no
contradiction where the intrinsic
evidence did not define the term
partially); Mangosoft, 5/14/08
(ultimate construction given to term
local as relates to computer systems
was properly grounded in the intrinsic
evidence and not based upon the
dictionary definition of local in the
abstract); Old Town Canoe, 5/9/06;
On Demand Machine, 3/31/06; Pfizer,
892
11/22/05; Cross Medical Prods.,
9/30/05)
- Patentee is not entitled to a

construction divorced from the
context of the written
description and PH, i.e., that a
dictionary contains a broader
definition does not matter
Nystrom v. Trex (Power
Integrations, 3/26/13 (rejecting
the accused infringers broad
construction of term frequency
variation signal based on
dictionary definition citing
Nystrom); Felix, 4/10/09
(improper to use dictionary to
argue that term mount meant
broadly to position where
was clear from the claims and
specification that the term
meant affixed or fastened to);
Old Town Canoe, 5/9/06;
Nystrom, 9/14/05 (improper to
read a claim term to
encompass a broader definition
simply because it may be found
in a dictionary, treatise, or other
extrinsic source))
- Dictionaries may be consulted at any point

in the claim construction analysis
(Mangosoft, 5/14/08; Acumed, 4/12/07, see
also J. Moore, dissenting)
- Dictionary consulted for the meaning

of term used during the PH to
describe a claim term (Cat Tech.,
893
5/28/08 (term channel used during
the PH to describe the claim term
spacing))
- Dictionary definitions to determine the

ordinary and customary meaning of terms at
the time of the invention (Wavetronix,
7/29/09 (probability density function);
Helmsderfer, 6/4/08 (dictionaries used to
define the term partially); Symantec,
4/11/08 (consulting technical dictionary for
ordinary meaning of terms computer and
computer system where the specification
did not expressly define or adopt a special
definition of the terms); Chamberlain Group,
2/19/08 (CAFC rejected the ordinary and
customary meaning of a claim term (binary
code) from a technical dictionary in view
of a narrower meaning of the term in the
specification); Miken Composites, 2/6/08;
Verizon, 9/26/07; L.B. Plastics, 9/12/07;
MIT, 9/13/06; Ormco, 8/30/06; Xerox,
6/8/06 (linear); Prima Tek II, 6/22/05;
*Gemstar, 9/16/04 (common usage and
technical dictionaries))
- [Pre-Phillips (en banc) rule]

Dictionary definition only the starting
point must consider the context of
invention, as understood by a POS in
the art at the time of invention, from
the specification and PH objective
test (Ultimax Cement, 12/3/09
(district court failed to consider the
context in which the disputed term
was used within the claim and
specification, citing Phillips);
Nazomi, 4/11/05; Nellcor, 4/8/05;
894
Medrad, 3/16/05; V-Formation,
3/15/05; Playtex, 3/7/05; Bilstad,
10/7/04; Home Diagnostics, 8/31/04;
Searfoss, 7/6/04; Housey, 5/7/04; Intl
Rectifier (2), 3/18/04; Kumar,
12/11/03; Ferguson, 12/4/03; E-Pass,
8/20/03; Abbott, 7/10/03)
- Dictionary definition confirmed the

construction of term according to its
ordinary meaning (Miken
Composites, 2/6/08; Pods, 4/27/07)
- Dictionary definitions are used when

the specification does not define a
term explicitly or implicitly
(Comaper, 3/1/10 (construing the term
case based on its general dictionary
definition, where the specification did
not assign or suggest a particular
definition to the term); Helmsderfer,
6/4/08 (the specification or PH did not
define the term partially);
Symantec, 4/11/08; MIT, 9/13/06)
- Specification did not define the

claim term; the CAFC thus
looked to its ordinary meaning
to a POS in the art, based on a
technical dictionary (Symantec,
4/11/08 (terms computer and
computer system); Verizon,
9/26/07 (computer server))
- Dictionaries for meaning of common

words, vs. technical terms, consult the
specification and PH for meaning
(Kinik, 3/25/04)
895
- Dictionaries to determine the ordinary
meaning and context if more than
one dictionary definition is consistent
with the use of words in the intrinsic
record, claim terms may be construed
to encompass all consistent meanings
(Bilstad, 10/7/04; TI Group, 6/30/04)
- When two competing

dictionary definitions, look to
the intrinsic evidence to
determine which of the two
applies Novartis (Ultimax
Cement, 12/3/09; Novartis,
4/2/04)
- General dictionary vs. technical dictionary
- General usage dictionaries are only

useful when a POS in the art would
understand a claim term to have the
same meaning in the art as the term
has in common, lay usage; general
usage dictionaries are irrelevant when
artisans would attach a special
meaning to claim terms, e.g., via a
technical dictionary Phillips
(Wavetronix, 7/29/09 (term
probability density function defined
the same in general purpose and
technical dictionaries); Irdeto Access,
9/14/04; Vanderlande Indus., 5/3/04)
- General and technical

dictionaries confirmed the
district courts construction,
896
also based on the specification
(L.B. Plastics, 9/12/07)
- Scientific and technical

dictionaries are useful for
construing claims - Phillips
(Paragon Solutions, 5/22/09
(technical dictionarys
definition of real-time was
too vague to be helpful, and the
district court failed to consider
definitions of the term in other
technical dictionaries); Felix,
4/10/09 (CAFC used technical
dictionaries for the normal
function of the term gasket);
Kinetic Concepts, 2/2/09
(rejecting broader definition of
term wound in medical
dictionary; see also dissent, J.
Dyk medical dictionary
definition was appropriate, and
was used in FDA proceeding);
Boston Scientific Scimed,
1/15/09 (district courts reliance
on definition from medical
dictionary was proper); CSIRO,
9/19/08 (technical dictionary
provided the most reasonable
understanding of claim term
(block of data)); Mangosoft,
5/14/08 (technical dictionarys
definition of term local as
relates to computer systems
was properly used by the
district court); Symantec,
4/11/08 (technical dictionary
used to define terms
897
computer and computer
system); Tivo, 1/31/08
(object relating to computer
software; combination of
technical dictionary definition
and expert testimony properly
relied on); Verizon, 9/26/07
(computer server); L.B.
Plastics, 9/12/07 (technical);
Cook Biotech, 8/18/06 (medical
dictionary); Atofina, 3/23/06);
See also Privacash, 8/11/11
(nonprecedential construing
term bearer instrument in
way consistent with its meaning
in a financial dictionary)
Expert testimony
- Expert testimony is proper, when consulted

to provide background on the technology at
issue, to explain how the invention works, to
ensure that the courts understanding of the
technical aspects of the patent is consistent
with that of a POS in the art, or to establish
that a particular patent term or the prior art
has a particular meaning in the pertinent
field - Phillips (SkinMedica, 8/23/13;
Amkor Technology, 8/22/12 (district court
properly relied on expert testimony for
construing claims covering complex
technology); Aventis Pharma, 4/9/12
(district courts consideration of expert
testimony was proper for determining the
ordinary meaning of claim term to one
skilled in the art); AIA Engg, 8/31/11
(relying on expert testimony to construe
898
terms solid solution and ceramic
composite as synonyms in original and
reissue patents); Astrazeneca, 11/1/10
(district court properly relied on
(uncontested) expert testimony to
understand how the claimed invention
worked and construed the disputed term
budesonide composition in a manner
consistent with that understanding); General
Protecht Group, 8/27/10 (useful to establish
that term has a particular meaning in the
art); Callaway, 8/14/09 (relying on expert
testimony showing that the hardness
limitation of the claimed golf ball had a
particular meaning in the industry); Conoco,
8/17/06; Serio-Us Industries, 8/10/06); See
also BASF Agro, 3/20/13 (nonprecedential
the CAFC has been careful to distinguish
between expert testimony on the state of the
art, vs. expert testimony regarding the
proper construction of a disputed claim
term, which plays a more limited role in the
courts analysis, especially where the
intrinsic record is self-evident); MEMS
Tech. Berhad, 6/3/11 (nonprecedential
relying on expert testimony for plain and
ordinary meaning of term electrically
coupled and meaning in the electrical art of
term package)
- Extrinsic evidence (e.g., expert testimony)

cannot alter, be at odds with the construction
mandated by the intrinsic evidence
Phillips (SkinMedica, 8/23/13; Arcelormittal
France, 11/30/12 (rejecting the ordinary
meaning of term hot-rolled steel sheet
which was based on extrinsic evidence
where the specification was not consistent
899
with the terms ordinary meaning in the
industry based on expert testimony and a
leading treatise); Cordis, 9/28/11 (no
infringement and expert testimony rejected
where based on incorrect claim
construction); In re NTP II, 8/1/11 (BPAI
properly rejected expert declaration
regarding how a POS in the art would
understand term, where was not premised on
a proper claim construction analysis);
Solvay, 10/13/10 (rejecting experts
interpretation alone of claim term
isolating as meaning purifying); Rolls-
Royce, 5/5/10; Kara Technology, 9/24/09;
Callaway, 8/14/09 (considering evidence of
accepted practice within the art through
expert testimony); Wavetronix, 7/29/09 (the
CAFCs understanding of term PDF
estimation based on expert testimony
comported with the specification);
Innogenetics, 1/17/08 (experts claim
interpretation was supported by the intrinsic
evidence, including broad statements in the
specification relevant to the claimed method,
and disputed term (as)); Serio-Us
Industries, 8/10/06; Pause Technology,
8/16/05; Playtex, 3/7/05; On-Line
Technologies, 10/13/04; Lighting World,
9/3/04; Novartis, 7/8/04); See also BASF
Agro, 3/20/13 (nonprecedential rejecting
expert testimony that attempted to narrow
the scope of the patentees disclaimer, where
the testimony regarding the prior art barrier
treatment of termites was contrary to the
patents description of the prior art)
- Expert testimony discounted that is

clearly at odds with the construction
900
mandated by the claims themselves,
the written description, and the PH,
i.e., the written record of the patent
Phillips, Vitronics (SkinMedica,
8/23/13 (see also J. Rader, dissenting
expert testimony regarding three
dimensional culturing on beads was
consistent with the intrinsic record);
Rolls-Royce, 5/5/10 (rejecting
extrinsic testing evidence and expert
support); Kara Technology, 9/24/09
(testimony of the defendants expert
could not overcome the plain
language of the claims, which did not
recite the key feature read into the
claims by the expert); Serio-Us
Industries, 8/10/06; Network
Commerce, 9/8/05; Pause
- Conclusory, unsupported
assertions by experts as to the
definition of a claim term are
not useful to a court - Phillips
(SkinMedica, 8/23/13 (rejecting
experts direct testimony
(responding to leading
questions) as conclusory and
incomplete, as it lacked any
substantive explanation tied to
the intrinsic evidence, i.e., he
never fully explained why and
how he arrived at his opinion
(n.14); see also J. Rader,
dissenting probative expert
testimony, and waiver because
counsel never objected to form
of the questions); Aristocrat
901
Techs., 3/13/13 (affirming the
district courts rejection of the
patentees experts declaration
on SJ as conclusory and
unsupported where the expert
failed to explain why a POS in
the art would have understood
the disputed term to have the
proposed meaning); General
Protecht Group, 8/27/10; Iovate
Health Sciences, 11/19/09
(patentee relied on conclusory
expert testimony in an attempt
to increase the specificity of
language used in the method
claim preamble); Network
Commerce, 9/8/05)
- Expert testimony is less reliable

than the intrinsic evidence
because it is generated at the
time of and for the purpose of
litigation, and thus can suffer
from bias not present in
intrinsic evidence Phillips
(SkinMedica, 8/23/13)
- Discretion of trial judge the decision as to

the need for and use of experts is within the
sound discretion of the district court (and
BPAI) (Amkor Technology, 8/22/12 (may
be used when given the appropriate weight
by the trial court); Aventis Pharma, 4/9/12;
In re NTP II, 8/1/11 (BPAI); Osram GMBH,
10/31/07 (expert testimony supported claim
terms ordinary meaning); Conoco, 8/17/06
(broad discretion in determining the
902
credibility of experts); Serio-Us Industries,
8/10/06; Inpro II Licensing, 5/11/06)
- District court should not allow experts

to testify regarding claim
construction, because confuses the
jury (Cordis, 3/31/09 (district court
properly excluded use of the PH
before the jury); Kinetic Concepts,
2/2/09 (J. Dyk, dissenting, citing
Cytologix); Cytologix, 9/21/05)
- Expert testimony can always be heard

(Immunomedics, 6/23/04)
- Expert testimony considered experts

interpretation of the intrinsic evidence was
considered, both in the context of the
specification and from the perspective of a
POS in the art (Biosig Instruments, 4/26/13
(expert testimony underscored the intrinsic
evidence); Amkor Technology, 8/22/12;
CLS Bank, 7/9/12 (expert testimony
considered regarding the POS in the arts
understanding from reading the claims and
specification that the claims required
computer-implementation) [vacated and en
banc review granted on 10/9/12]; Aventis
Pharma, 4/9/12; Dealertrack, 1/20/12 (expert
testimony regarding the Internet); AIA
Engg, 8/31/11 (experts agreed that rejected
construction produced physically impossible
result); In re NTP I, 8/1/11; Astrazeneca,
11/1/10; Kinetic Concepts, 2/2/09 (district
courts failure to construe the disputed term
wound for the jury was harmless error);
PSN Illinois, 5/6/08; Sitrick, 2/1/08; Tivo,
1/31/08 (competing expert presentations
903
relied on to determine termss ordinary
meaning); Innogenetics, 1/17/08 (expert
testified to POS in the arts understanding of
the disputed term in the context of the
entire patent and its prosecution history)
Ortho-McNeil, 1/19/07; Tap
Pharmaceutical, 8/18/05; But see
Sinorgchem, 12/21/07 (expert testimony
rejected when no evidence that terms in the
claims and specification had an accepted
meaning in the field of chemistry))
- Expert testimony as evidence of the

ordinary meaning of a claim term;
expert testimony as to what a POS in
the art would understand the term to
mean (Power Integrations, 3/26/13
(considering expert testimony that
term frequency variation signal did
not have plain and ordinary meaning
or was not a term of art); Amkor
Technology, 8/22/12; Aventis
Pharma, 4/9/12 (district court properly
relied on expert testimony from both
sides experts to determine a terms
ordinary meaning); In re NTP I,
8/1/11; Chamberlain Group, 2/19/08
(n.2: patentee failed to identify expert
reports or testimony in support of its
claim meaning theory); Tivo, 1/31/08;
Innogenetics, 1/17/08; Osram GMBH,
10/31/07 (multiple experts; method
used to measure claim term, mean
grain diameter); Verizon, 9/26/07
(CAFC said expert testimony would
have been useful))
904
- Expert testimony to explain claim
meaning (Amkor Technology,
8/22/12; AIA Engg, 8/31/11;
Astrazeneca, 11/1/10; Yorkey I,
4/7/10 (battle of the experts regarding
claim construction by the BPAI for
determining whether there was an
interference-in-fact); Callaway,
8/14/09 (considering testimony from
technical experts regarding the
industry practice for measuring
hardness of golf balls); Howmedica,
9/2/08 (expert testimony entitled to
little weight); Tivo, 1/31/08 (several
uses of expert testimony for claim
terms were appropriate);
Innogenetics, 1/17/08; Cordis, 1/7/08
(declaration during reexam considered
in defining claim term (smooth) as
understood by a POS in the art);
Ortho-McNeil, 1/19/07; Medrad,
3/16/05; ASM America, 3/16/05;
Merck, 10/30/03)
- Expert testimony unrebutted by

opponent, either by own expert or
challenging experts credibility
(Innogenetics, 1/17/08)
- Rebuttal expert testimony

rejected in the absence of any
objective support for the
testimony (Tivo, 1/31/08)
- Expert testimony not disputed that

claim term did not have any special
meaning in the art (Sinorgchem,
905
12/21/07 (expert testimony rejected
for this reason); Stumbo, 11/28/07)
- Expert testimony, admission by

partys counsel considered (Varco,
2/1/06)
- Experts change in position (Osram

GMBH, 10/31/07)
- Expert testimony rejected when experts

fail to identify evidence that those skilled in
the art would recognize claim term, or any
term used in the specification, to have an
accepted meaning in the field of art; under
such circumstances, testimony as to how one
skilled in the art would interpret the
language in the specification is entitled to
little or no weight (General Protecht Group,
8/27/10 (rejecting expert testimony for this
reason, citing Symantec and Sinorgchem; see
also J. Newman, dissenting ITCs findings
of infringement were supported by
substantial evidence); Symantec, 4/11/08
(rejecting expert testimony interpreting
claim language based only on the experts
own reading of the specification, where the
testimony did not identify an accepted
meaning in the field of computers: To the
extent that the testimony merely gives the
experts opinion as to claim construction, we
attribute it no weight and is unhelpful
(citing Sinorgchem twice in the case));
Sinorgchem, 12/21/07 (controlled
amount), but see J. Newman, dissenting
expert testimony must be considered, since
relevant to how persons skilled in the
chemistry field would understand the claim
906
term as applied in the field); See also
rejecting unhelpful expert testimony which
was only how the expert would interpret the
disputed term, and was not based on its
accepted meaning in the field of art, citing
Symantec)
- Patent practitioners statements

regarding the meaning of claim terms
are entitled to no weight (Raylon,
12/7/12 (J. Reyna, concurring
rejecting argument from the (losing)
patentee that it relied for its claim
construction position on pre-suit
advice in a declaration received from
an expert patent practitioner - citing
Symantec and Sinorgchem))
- Expert testimony for claim construction by

the BPAI (In re Rambus, 8/15/12 (rejecting
expert testimony that was conflicting and
unpersuasive); Yorkey I, 4/7/10 (the BPAI
properly found one experts testimony more
credible than the others regarding claim
meaning))
Admissions by accused infringer
- Admissions of accused infringer regarding

interpretation of claim term (Arlington
Indus., 1/20/11 (relying in part on the
accused infringers admissions of meaning
of term spring metal adaptor))
907
Inventor testimony
- Inventor testimony is of little value (CBT

Flint Partners, 8/10/11 (district court erred in
its heavy reliance on one portion of inventor
testimony in determining that it could not
correct claim); Cordis, 3/31/09; Howmedica,
9/2/08 (stating that inventor testimony
cannot be relied on to change the meaning
of the claims Markman); O2 Micro,
4/3/08 (an inventors self-serving statements
are rarely relevant to the proper construction
of a claim term); Akamai, 9/15/03; E-Pass,
8/20/03); See also Scantibodies Lab, 5/6/10
(nonprecedential rejecting self-serving
inventor testimony for a broader
construction of the term not detecting
based on marketing materials; also rejecting
other inventor argument which was
contradicted by the inventors own
publication)
- Construction consistent with the

inventors interpretation (Medrad,
3/16/05)
- Inventor testimony may be pertinent

as expert testimony, e.g., for
understanding the established
meaning of particular terms in the
relevant art Phillips (Howmedica,
9/2/08, n.5)
- Inventors subjective intent,

understanding of patent terminology
is not relevant to a claims objective
meaning and scope (Arcelormittal
France, 11/30/12 (distinguishing from
908
when an inventors understanding of a
claim term is expressed in the prior
art, which can evince how POSs in
the art would have understood the
term at the time of the invention);
Cordis, 3/31/09 (district court
properly excluded inventors
deposition testimony regarding his
views of infringement by the accused
stent); Howmedica, 9/2/08 (stating
that [t]he subjective intent of the
inventor when he used a particular
term is of little or no probative weight
in determining the scope of a claim
Markman); Seachange Intl, 6/29/05;
Akamai, 9/15/03)
- Inventor testimony against the

inventors interest limiting the
scope of the patent is irrelevant
and unworkable - would require
a case by case determination as
to whether the inventor is
testifying against his interest
(i.e., might testify to a broad
scope to support infringement,
and to a narrow scope to avoid
invalidity) (Howmedica,
9/2/08)
- Inventor may understand the

invention without
understanding the claims,
which are drafted by an
attorney (Howmedica, 9/2/08)
Other court decisions
909
- Same claim terms previously construed in
different unrelated patents (Kyocera
Wireless, 10/14/08 (rejecting argument that
term different should be construed to
mean any difference, based on a prior CAFC
decision construing the term in another
patent, and thus in another context)); See
also MEMS Tech. Berhad, 6/3/11
(nonprecedential proper for ALJ to rely on
two district court opinions construing the
term electrically coupled according to its
plain and ordinary meaning, only after the
ALJ had considered the intrinsic evidence
and adhered to the rule that extrinsic
evidence may not be used to contradict the
claim language)
- Prior CAFC decision held that claim

term should be defined functionally
(Cordis, 1/7/08 (considering the clear
purpose of the term smooth;
supported by declaration during
reexam))
- Other district court decisions on claim

construction of the same claim terms of
same patent (Arlington Indus., 1/20/11
(recognizing broad construction of prior
district court decision of term spring metal
adaptor as a basis for construction citing
Finisar); Finisar, 4/18/08 (not characterized
as extrinsic evidence; consulting and
adopting the claim construction of the same
terms by the N. D. of California, stating that
[i]n the interest of uniformity and
correctness, this court consults the claim
analysis of different district courts on the
identical terms in the context of the same
910
patent)); See also
REVIEW Claim construction (CC)
Issue preclusion applied to CC and Law of
the case doctrine
Reexamination examiner
- Construction of claims by an examiner

during reexamination carries significant
weight (Cooper Notification, 8/30/13
(nonprecedential the examiners
statements during reexam distinguishing
method and system claims supported the
district courts construction, stating that the
examiners reasons for differentiating
between claims, while not dispositive, can
be helpful in determining the meaning of
claim terms, and that reexaminations can
provide the district court with the expert
view of the PTO (when a claim survives the
reexam proceeding) citing Gould); St.
Clair, 1/10/11 (nonprecedential Because
an examiner in reexamination can be
considered one of ordinary skill in the art,
his construction of the asserted claims
carries significant weight)
Industry standards, publications
- Article co-authored by designer of the

accused product supported definition of
claim term (Cordis, 1/7/08 (smooth))
- Industry standard definitions used to

construe claims (Advanced Fiber, 4/3/12 (J.
911
Dyk, dissenting n.4); Vizio, 5/26/10 (POS
in the art would understand the disputed
claim term channel map information to
refer to the MPEG-2 standard, which
requires four data fields LG Electronics);
Callaway, 8/14/09 (testimony from technical
witnesses that the industry standard for
testing the hardness of cover layers on a
golf ball was used while the layers were on
the ball, rather than off the ball, supported
an on-the-ball hardness measurement);
Tip Systems, 6/18/08 (extrinsic evidence of
industry practice was outweighed by the
clear intrinsic evidence of the meaning of
the disputed term handset); LG
Electronics, 7/7/06 (intrinsic evidence, as
described in the specification); Seachange
Intl, 6/29/05; ACTV, 10/8/03; E-Pass,
8/20/03)
- Accepted practice in the art, when not

at variance with the intrinsic
evidence, is relevant to how a POS in
the art would understand a claim term
Phillips (expert testimony is helpful
to show that a term has a particular
meaning in the pertinent field)
(Callaway, 8/14/09; Symantec,
4/11/08 (rejecting expert testimony
that did not identify for the disputed
term an accepted meaning in the
field of computers))
Regulations
- Regulations used to construe claims

(Aristocrat Techs., 3/13/13 (n.1: rejecting
912
Pennsylvania gambling regulation as
industry-specific usage of term wager
because not part of district court record);
Dorel Juvenile Group, 11/7/05 (J. Newman,
dissenting); Mars, 7/29/04)
Foreign prosecution
- Foreign prosecution admissions, inconsistent

statements made regarding claim scope (Regents of U.
Minn., 6/3/13 (n.5: while not relying on inconsistent
statements made during EP counterpart to support claim
construction, the position taken supported the conclusion
that, as a matter of common sense, the claimed device as
described by the applicant (two disks affixed together to
form a conjoint disk) could not also be a device like the
accused device (a one-piece, tubular structure)); Gillette,
4/29/05); See also Astrazeneca, 6/10/08 (nonprecedential
statements made during prosecution of EP counterpart
supported noninfringement where the accused product
(talc) was argued to be outside the scope of the claimed
ARC)
- Foreign legal and procedural requirements vary,

and thus certain representations are inappropriate
for consideration in claim construction analysis of
the corresponding U.S. patent (AIA Engg, 8/31/11
(evidence regarding statements in EP priority
application were equivocal at best as to the
meaning of solid solution); Abbott Labs, 5/18/09
(distinguishing the rule based on Pfizer that
statements made during prosecution of a foreign
counterpart to a U.S. application have a narrow
application to U.S. claim construction where the
district court consulted only the contents of the
foreign priority application, which was also part of
the PH of the patent itself); Pfizer, 8/2/06
913
(statements made during prosecution of foreign
counterparts were held irrelevant to claim
construction because they were made in response
to patentability requirements unique to Danish and
European patent law); TI Group, 6/30/04)
- Incorrect statements during foreign prosecution -

effect on claim construction? (Tap Pharmaceutical,
8/18/05 (where the applicant was incorrect during
the corresponding EP prosecution, and receded
from a narrow interpretation of the claims, had no
effect on claim construction in the U.S.
application))
Functional language
- Functional language can be a claim limitation MEC

(Cordis, 3/31/09 (jury could properly find that such
that clause was a limitation barring a finding of
anticipation)); See also Textron Innovations, 9/7/12
(nonprecedential functional language may be used to
add structural limitations to an apparatus claim)
- Incorporation by reference - references incorporated by

reference are highly relevant to a POS in the art for
ascertaining the breadth of a claim term (Biogen Idec,
4/16/13 (rejecting proposed broad construction for term
anti-CD20 antibody based on definition which was
specific to a patent incorporated by reference into the
patent in suit, and the term was also subject to PH
disclaimer; see also J. Plager, dissenting); Dealertrack,
1/20/12 (divisional patent incorporated by reference
Internet embodiment added to parent application after
filing, where the embodiment was added prior to filing of
914
the divisional citing Zenon Envtl. (incorporated subject
matter acts as if it were explicitly contained therein));
Arlington Indus., 1/20/11 (construction supported by
description in incorporated related patent); Aquatex,
8/19/05 (where the patentee incorporated by reference the
teachings of three U.S. patents to define the scope of the
term fiberfill, all of which supported a narrow claim
construction, describing synthetic fibers only)); See also
Fifth Generation Computer, 1/26/11 (nonprecedential
improper to look to incorporated references to construe
term where claim language was clear rejecting
argument that every concept of the prior inventions was
necessarily imported into every claim of the later patent);
See also PRIORITY DATES 35 USC 119, 120
Incorporation by reference; ANTICIPATION
Incorporation by reference in prior art reference
- Detailed particularity necessary - incorporation

by reference provides a method for integrating
material from various documents into a host
document by citing such material in a manner that
makes clear that the material is effectively part of
the host document as if it were explicitly contained
therein -- to incorporate material by reference, the
host document must identify with detailed
particularity what specific material it incorporates
and clearly indicate where the material is found in
the various documents (SkinMedica, 8/23/13 (no
detailed particularity in referring to relevant
portion of technical treatise incorporated by
reference, and finding that the non-specific
reference to the treatise did not trump a clear
disclaimer in the specification citing Advanced
Display Systems); Cook Biotech, 8/18/06); See
also Fifth Generation Computer, 1/26/11
(nonprecedential references may still be
incorporated by reference despite the patents
criticism of them) Adang, 10/25/07
915
(nonprecedential - failure to incorporate
application by reference, for purposes of showing
written description support)
- Means-plus-function claims prior art structures

incorporated by reference cannot be corresponding
structure (Pressure Products, 3/24/10 (see also J.
Newman, dissenting))
Inoperable embodiments in claims
- Claim construction that renders the claimed invention

inoperable should be viewed with extreme skepticism
(AIA Engg, 8/31/11; Astrazeneca, 11/1/10 (n.1);
Broadcom, 9/24/08 (accused infringers construction
rejected where the patent would not perform its stated
function)) refers to a construction that would render all
embodiments of the claimed invention inoperable, and
not a construction that might cover some inoperable
embodiments EMI Group (inoperability generally) (800
Adept, 8/29/08; Cordis, 1/7/08 (distinguishing Franks
Casing, relating to means-plus-function claim))
- Asserted vs. unasserted claims (800 Adept, 8/29/08

(stating that even if unasserted dependent claims
were rendered inoperative by a proper construction
of the independent claims based on the intrinsic
evidence, preserving the validity of unasserted
claims is an insufficient reason to ignore the
meaning of the claims actually asserted in the
case, citing Intamin))
- Comprising vs. consisting of effect on

operability of claimed invention (Cordis, 1/7/08)
- Dependent claims reciting concentration ranges

within which some concentrations are inoperable
916
(Alcon Research, 8/8/12 (rejecting the patentees
claim construction argument that inoperable
concentrations up to 0.001% w/v were not covered
by a dependent claim reciting a concentration
range of 0.0001-5% w/v, which claim depended
from an independent claim reciting administering a
therapeutically effective amount of the drug,
stating: This in not how patent law works. When
you claim a concentration range of 0.0001-5% w/v
(as claim 2), you cant simply disavow the invalid
portion and keep the valid portion of the claim. If
everything up to 0.001% w/v is admittedly not
enabled, then the entire claim is invalid.))
Jepson claims
- Extent of the claimed improvement is defined only by

the body of the claim (Martin, 8/20/10 (rejecting
argument that the prior art had to disclose an
improvement over and above the improvement recited in
the body of the claim, where the body of the claim failed
to explicitly recite the alleged reliable breakingfeature
against some commercial production standard)); See also
Preamble limiting or not?
Lexicographer rule
Generally giving claim term a special definition
- Lexicographer rule redefining a claim term away from

its ordinary and customary meaning - Phillips
(SkinMedica, 8/23/13; Aventis Pharma, 4/9/12;
Advanced Fiber, 4/3/12; Thorner, 2/1/12; Typhoon
Touch, 11/4/11 (rejecting argument that special meaning
was given to term keyboardless where the district
courts construction conformed to the description of what
the inventors actually invented, in light of criticism in the
917
specification of mechanical keyboards); IGT, 10/6/11
(rejecting the accused infringers argument that the term
predetermined event did not include random events,
where the terms plain and ordinary meaning includes
random events as long as chosen in advance, and the
patentee did not redefine the term based on examples
disclosing non-random events); AIA Engg, 8/31/11
(applying rule for construing term solid solution away
from ordinary meaning, based on implicit disclosure of
special meaning for term); Astrazeneca, 11/1/10 (term
budesonide composition was implicity defined in the
specification as limited to a specific mechanism of
action; see also J. Bryson, dissenting); Laryngeal Mask,
9/21/10; Intervet, 8/4/10 (see J. Dyk, dissenting the
patentee defined the term ORFs 1-13 narrowly);
Silicon Graphics, 6/4/10; Trading Techs., 2/25/10
(agreeing with the district courts construction of the
term static based on the inventors lexicography
combined with other limiting language in the
specification and PH); Edwards Lifesciences, 9/22/09
(term graft meant intraluminal graft where the two
terms were used interchangeably, stating that [t]he
interchangeable use of the two terms is akin to a
definition equating the two; also defining limitation
(malleable) read into the claim see also
Specification containing claim term definitions);
Martek Biosciences, 9/3/09; U. of Pittsburgh, 7/23/09;
Ecolab, 6/9/09; Helmsderfer, 6/4/08; Sinorgchem,
12/21/07 (numerical limit in the specification limited
claim term); L.B. Plastics, 9/12/07 (n. 2); Honeywell,
7/3/07 (compare to dissent); Abbott Labs, 1/5/07;
Abraxis Bioscience, 11/15/06; Kim, 9/20/06 (dissent);
Cook Biotech, 8/18/06; LG Electronics, 7/7/06;
Schoenhaus, 3/15/06; Boss Control, 6/8/05; PC
Connector Solutions, 5/6/05; Merck, 1/28/05; Glaxo,
7/27/04); See also Specification containing claim term
definitions
918
- Patentee is free to act as a lexicographer, and set
forth a special definition of a claim term in the
specification or PH, either expressly or implicitly,
which differs from the ordinary and customary
meaning the term would otherwise possess (and
thus, in effect, disclaim the terms conventional
use) in such a case, the inventors lexicography
governs - Phillips (SkinMedica, 8/23/13; Aventis
Pharma, 4/9/12 (no special definition for the term
perfusion in the specification or PH); Advanced
Fiber, 4/3/12 (district court correctly relied on a
clear definition of a claim term set forth by the
patentee in the PH -citing CCS Fitness); Marine
Polymer, 3/15/12 (en banc (5-5)) (see dissent
disclaimer by lexicography); Thorner, 2/1/12
(rejecting argument that term attached was
implicitly redefined to mean attached to the
exterior and not interior, ruling that lexicography
and disavowal both require a clear and explicit
statement by the patentee); AIA Engg, 8/31/11
(applying implicit meaning of term solid
solution based on the specification; also ruling
that special meaning governs particularly when it
also serves to avoid an inoperable claim
construction); Astrazeneca, 11/1/10 (claim term
budesonide composition was implicitly limited
by the specification to how the formulation
worked, and thus excluded prior art liposomes);
Laryngeal Mask, 9/21/10 (no lexicography where
the alleged definition related to a preferred
embodiment only); Martek Biosciences, 9/3/09
(patentees explicit definition of animal which
included a human controlled; see also J. Lourie
and J. Rader, dissenting exception to the rule
where the definition of the term was totally
negated by the remainder of the text of the patent
showing that animal cannot include humans);
Ecolab, 6/9/09 (the patentees explicit definition of
919
the term sanitize was ambiguous); Abbott Labs,
5/18/09 (sometimes the specification offers
practically incontrovertible directions about claim
meaning); Helmsderfer, 6/4/08; Sinorgchem,
12/21/07 (claim term limited to numerical limit
defined in the specification for the term when
using a particular solvent in the claimed method);
Honeywell, 7/3/07 (specification and PH);
Acumed, 4/12/07; Andersen, 1/26/07; Abbott
Labs, 1/5/07; Kim, 9/20/06 (dissent); Cook
Biotech, 8/18/06; Schoenhaus, 3/15/06); See also
In re Scroggie, 9/16/11 (nonprecedential
ordinary and customary meaning of term personal
computer based on a dictionary definition was
correct where the applicant did not clearly define
the term in the specification); Microthin.com,
5/20/10 (nonprecedential the Technical Field of
the patent describing the term non-slip surface
not being sticky did not limit the term, as applying
the rule requires a special definition of the term
that is clearly stated in the specification or PH -
Vitronics); Medegen, 11/20/08 (nonprecedential
claim term plug given its ordinary meaning
where no special definition provided for the term
in the specification)
- Applicants lexicography can limit claim

scope, even when unintended (Ecolab,
6/9/09 (ambiguous definition of term
sanitize did not exclude cooking chicken
after being sanitized with the invention);
- Patentee is bound by an express definition

(Sinorgchem, 12/21/07 (drafter clearly,
deliberately, and precisely defined claim
term))
920
- Extrinsic evidence as to terms
conventional meaning is irrelevant
when the patentee explicitly defines
term (Martek Biosciences, 9/3/09)
- Interchangeable use of terms is akin to

definition equating the terms (Thorner,
2/1/12 (qualifying the rule from Bell Atlantic
that use of two terms as alternatives could
amount to an implicit redefinition of the
terms, stating that the implied
redefinition must be so clear that it equates
to an explicit one and that [s]imply
referring to two terms as alternatives . . . is
not sufficient to redefine a claim term
where the term embedded was narrower
than the term attached); Edwards
Lifesciences, 9/22/09)
- Lexicographer rule applied (AIA Engg, 8/31/11;

Astrazeneca, 11/1/10; Trading Techs., 2/25/10;
Edwards Lifesciences, 9/22/09; Martek
Biosciences, 9/3/09; Ecolab, 6/9/09; Sinorgchem,
12/21/07 (lexicography supported by other
description in the specification); Honeywell,
7/3/07; Cook Biotech, 8/18/06; Boss Control,
6/8/05; 3M, 12/2/03)
Lexicography must be clear
- Intent to redefine claim term must be clearly expressed,

vs. the specification or PH supports a broader
construction; the term otherwise has its ordinary and
customary meaning (Saffran, 4/4/13 (J. OMalley,
dissenting written description did not clearly redefine
term device as a sheet); Medtronic, 9/18/12; Woods,
8/28/12; Aventis Pharma, 4/9/12 (a patentee must
921
clearly set forth a definition of the disputed claim term
other than its plain and ordinary meaning CCS
Fitness); Thorner, 2/1/12 (It is not enough for a patentee
to simply disclose a single embodiment or use a word in
the same manner in all embodiments and thus rejecting
argument that the term attached meant attached to the
exterior and not interior, despite the fact that the
specification only used the term to mean exterior
attachment, and never interior attachment); Typhoon
Touch, 11/4/11 (clear from the specification that the
inventor intended the term keyboardless to have its
ordinary and customary meaning, and that the examiner
so perceived the claims); Arlington Indus., 1/20/11 (term
spring metal adaptor given its ordinary and customary
meaning of an adaptor made of spring metal, where the
specification and PH supported construction; see also J.
Lourie, dissenting); Laryngeal Mask, 9/21/10 (no clear
intent in defining the disputed term backplate in a
preferred embodiment only, and where the summary of
the invention described the invention broadly, citing
Helmsderfer); U. of Pittsburgh, 7/23/09; Helmsderfer,
6/4/08 (intent to redefine the term partially hidden
from its ordinary meaning as including totally hidden
was not clearly expressed for the lexicographer rule to
apply); Sinorgchem, 12/21/07; Honeywell, 7/3/07, see
also J. Plager, dissenting; Kim, 9/20/06 (dissent); Boss
Control, 6/8/05; PC Connector Solutions, 5/6/05; Merck,
1/28/05; Irdeto Access, 9/14/04 (PH also); Mars,
7/29/04); See also In re Chaganti, 3/9/12
(nonprecedential affirming the BPAIs construction of
term intangible property as not excluding stocks and
bonds, where the patentees alleged lexicography was not
clearly expressed in the specification, either by clearly
defining the term or by revealing through the
embodiments a clear intent to exclude stocks and bonds
from the scope of the claims); In re Scroggie, 9/16/11
(nonprecedential must define claim terms with
922
reasonable clarity, deliberateness, and precision In re
Paulsen)
- Consistent use, redefinition of claim term

throughout the PH (Honeywell, 7/3/07)
- Construing term within lexicographers definition

- Intent not clear if subject to another interpretation

(Merck, 1/28/05)
- Patentees clear intent to rely on the four corners

of the patent to define claim term, e.g., the
patentee unequivocally directed the examiner, and
the public, to the specification as the complete
source of meaning for the disputed terms (Irdeto
Access, 9/14/04)
- Words, punctuation indicating lexicography
- Quotation marks used to set off claim term

is often a strong indication that what follows
is a definition (Sinorgchem, 12/21/07)
- Word is may signify that the patentee is

serving as its own lexicographer
(Sinorgchem, 12/21/07); compare to the
wording of other definitions of claim terms
in the specification does the use of the
word is as unambiguously signify that the
description provided is definitional?
(Abbott Labs, 1/5/07 (claim term not limited
by word is))
- Word defined in specification did not

imply a lexicographic definition for claim
term (Acumed, 4/12/07)
923
- Use of e.g. in definition was express
redefinition of claim term (Sinorgchem,
12/21/07, see also J. Newman, dissenting
e.g. means for example and thus no
express redefinition when other text and
examples showed higher amounts))
Lexicography need not be explicit
- Lexicography need not be an explicit statement

formalism is not required (AIA Engg, 8/31/11;
Astrazeneca, 11/1/10; Astrazeneca, 9/30/04; Irdeto
Access, 9/14/04)
- Explicit narrowing statements (statements of

explicit disavowal or words of manifest exclusion)
in the specification are not required for a narrow
claim interpretation (Irdeto Access, 9/14/04)
- Definition by implication - claim terms may also be

defined by implication, e.g., when a claim term is clearly
defined in the specification consistent with only a single
meaning (Aventis Pharma, 4/9/12; Thorner, 2/1/12
(rejecting implied redefinition of term attached to
mean attached to the exterior only and not interior,
stating that an implied redefinition must be so clear
that it equates to an explicit one and that lexicography
and disavowal require a clear and explicit statement by
the patentee); Arlington Indus., 1/20/11 (rejecting
implicit split limitation in term spring metal adaptor
citing Irdeto Access and SciMed; see also J. Lourie,
dissenting); Astrazeneca, 11/1/10; Honeywell, 7/3/07;
Irdeto Access, 9/14/04)
- Claim term may be defined in a particular manner

for purposes of a patent even without an explicit
924
statement of redefinition Bell Atlantic (Saffran,
4/4/13 (J. OMalley, concurring in part - n.4: rule
not applicable to limit term device to a sheet,
where the specification disclosed other non-sheet
embodiments); Thorner, 2/1/12 (rejecting
implied redefinition of term and qualifying the
Bell Atlantic rule, stating that [s]imply referring
to two terms as alternatives or disclosing
embodiments that all use the term the same way is
not sufficient to redefine a claim term); AIA
Engg, 8/31/11; Astrazeneca, 11/1/10; Honeywell,
7/3/07 (clear link; compare to dissent))
- Specification referring to the redefinition as

an important feature of the invention
(Honeywell, 7/3/07)
- Clear expression of intent to redefine a claim term

need not be in haec verba but may be inferred
from clear limiting descriptions of the invention in
the specification or PH (Aventis Pharma, 4/9/12)
- Lexicographer rule vs. preferred embodiments (AIA

Engg, 8/31/11; Laryngeal Mask, 9/21/10 (alleged
redefinition defined preferred embodiment only);
Helmsderfer, 6/4/08 (preferred embodiments showing a
surface totally hidden from view did not support the
patentees lexicography to redefine the term partially
hidden as including totally hidden); Sinorgchem,
12/21/07, see also J. Newman, dissenting claim term
did not have an unambiguous meaning that dictated the
exclusion of disclosed embodiments); LG Electronics,
7/7/06; Intl Rectifier (2), 3/18/04; Golight, 1/20/04; E-
Pass, 8/20/03); See also In re Scroggie, 9/16/11
(nonprecedential the BPAIs broad construction of term
personal computer according to a dictionary definition
was proper where the term was not clearly defined in the
925
specification, but was rather disclosed only as part of an
embodiment)
- Inherent tension between lexicography and

preferred embodiments (LG Electronics, 7/7/06)
- Industry standards defined in the specification

relevant for determining the meaning of the claim
term to a POS in the art (LG Electronics, 7/7/06)
- When the specification explains and defines a term

used in the claims, without ambiguity or
incompleteness, there is no need to search further
for the meaning of the term (Sinorgchem, 12/21/07
(example teaching higher amount was excluded
from claim scope))
- Vague examples in the specification do not

change an express definition of a claim term
(Sinorgchem, 12/21/07 (clarity of various
examples compared; see also J. Newman,
dissenting the entire specification,
including the examples, must be consulted
for determining the correct claim scope))
Markush claims
(Abbott Labs, 1/5/07; Gillette, 4/29/05; Abbott, 7/3/03)
- Markush groups apply only to claims - a Markush group

is a form for drafting a claim term that is approved by the
PTO to serve a particular purpose when used in a claim,
that is, to limit the claim to a list of specified alternatives;
by contrast, the term Markush group does not have any
meaning within the context of the written description of a
patent, and thus does not limit its construction to the
926
compounds in the written description (Abbott Labs,
1/5/07)
Method claims steps not limited in order, unless implicit
(Silicon Graphics, 6/4/10; Baldwin Graphic Systems, 1/15/08

(no basis in the claims or specification for the district courts
limitation on the order of steps); Combined Systems, 11/20/03);
See also Aerotel, 12/20/10 (nonprecedential); In re Gleizer,
12/15/09 (nonprecedential); Tuna Processors, 4/23/09
(nonprecedential)
- Claim must require a specific order - although a method

claim necessarily recites the steps of the method in a
particular order, as a general rule the claim is not limited
to performance of the steps in the order recited, unless
the claim explicitly or implicitly requires a specific order
Interactive Gift Express (Baldwin Graphic Systems,
1/15/08 (district court improperly imported limitations
from dependent into independent claims)); See also
Rambus, 6/28/13 (nonprecedential BPAIs anticipation
finding was clearly erroneous where a plain reading of
the claim evinced a specific order, since it would make
no sense for the second step to be performed first citing
Baldwin Graphic Systems; see also J. Wallach, dissenting
the claim steps could be performed simultaneously, and
thus the anticipation finding was supported by substantial
evidence); Aerotel, 12/20/10 (nonprecedential rejecting
argument that two actions recited in later step constituted
two separate steps, one of which could occur before a
prior step, as unsupported by the claim language,
specification, or PH; also ruling that while not explicit in
the claim language, sequential steps also were compelled
by the natural sequences of steps in a telephone call); In
re Gleizer, 12/15/09 (nonprecedential agreeing with the
BPAI that the appellant failed to show how a sequence of
steps described in one embodiment required a narrow
927
construction for the claim the specification or PH must
expressly disclaim the broader definition); Tuna
Processors, 4/23/09 (nonprecedential method claim
explicitly required a sequential ordering of steps, where
the smoke from a previous limitation was referenced
using a past participle, indicating that the previous
limitation must have occurred prior to the present
limitation); Respironics, 12/16/08 (nonprecedential in a
method claim, a step that recites said or the, referring
to an earlier object, does not always have to be performed
after the step that first introduces the object); Taltech,
5/22/08 (nonprecedential the logic and grammar of
the claim made the requirement of an order clear, stating
that a claim will be found to require an ordering of steps
when the claim language, as a matter of logic or
grammar, requires that the steps be performed in the
order written, or the specification directly or implicitly
requires such a narrow construction Altiris )
- Specification or the PH may also require a

narrower, order-specific construction of a method
claim must be unequivocal (Baldwin Graphic
Systems, 1/15/08); See also Fraser, 7/8/09
(nonprecedential district court correctly found
that the PH required a specific order of steps,
where the claims were allowed only after
distinguishing the prior art); Tuna Processors,
4/23/09 (nonprecedential the specification
confirmed the sequential ordering of steps in the
method claim)
Methods for measuring claim terms
(Leo Pharm., 8/12/13 (rejecting the BPAIs narrow construction

of term storage stable based on a specific stability test in an
example, which was far short of the terms broadest
reasonable meaning (but leaving question for a later forum
928
where the issue is determinative)); Marine Polymer, 9/26/11
(multiple test methods disclosed in the specification for
measuring term biocompatible in terms of biological
reactivity of a substance) [vacated]; Callaway, 8/14/09
(industry standard used for measuring the hardness of the cover
layer of the claimed golf ball was used while the cover layer
was on the ball, rather than off the ball); Cordis, 1/7/08 (best
method for measuring, determining infringement of claim term
(thickness of stent wall) was Q of fact for the jury, rather than Q
of law for the court, and was supported by expert testimony);
Invitrogen, 11/18/05; Howmedica, 3/28/05); See also ADC
Telecom., 6/16/08 (nonprecedential because the claim
language did not require a particular form of testing, the parties
dispute over the proper testing method for infringement was not
a claim construction question, reviewed de novo, but rather a Q
of fact properly submitted to the jury); See also
INDEFINITENESS Methods, tests for measuring claim
feature
- When more than one method for measuring a claim term,

and the patent does not explicitly discuss the methods,
persons experienced in the field are reasonably deemed
to select the method that better measures the parameters
relevant to the invention Howmedica (Osram GMBH,
10/31/07 (purposes of the invention in the specification
were dispositive, see also J. Dyk, dissenting -
distinguishing Howmedica, and opining that a
commercial sales definition, rather than an R&D
definition, of the disputed term was more appropriate
because the specification made clear that a commercial
invention is being described))
Means-plus-function claims 35 USC 112, 6
(TecSec, 10/2/13 (terms system memory means and digital

memory means were not means-plus-function terms); Regents
of U. Minn., 6/3/13 (parties agreed that claim language not
929
drafted in standard means-plus-function language was a means-
plus-function element); Saffran, 4/4/13 (rejecting the district
courts construction of the corresponding structure (chemical
bonds and linkages) for release means as too broad, where
only hydrolyzable bonds were specifically described); see also
J. Moore, dissenting would affirm the district courts broader
construction because chemical bonds disclosed as
corresponding structure); Power Integrations, 3/26/13; ePlus,
11/21/12 (computer-implemented system claims held indefinite
for not disclosing corresponding structure); Flo Healthcare
Solutions, 10/23/12 (affirming the PTABs holding of no
patentability, but correcting its claim construction analysis by
concluding that the PTAB incorrectly construed claims reciting
term height adjustment mechanism as means-plus-function
claims; see also additional views of J. Plager and J. Newman
regarding the correct standard of review of PTAB claim
constructions); Chicago Board, 5/7/12 (district court erred in
identifying the corresponding structure for term system
memory means); Mettler-Toledo, 2/8/12 (claims were limited
to the preferred and only embodiment of the corresponding
structure in the specification , where the disclosure of generic
structure was not clearly linked to the claimed function); HTC,
1/30/12; Dealertrack, 1/20/12 (computer-implemented means-
plus-function claim covered equivalents of any of multiple
disclosed corresponding structures, algorithms); Powell,
11/14/11 (presumption not rebutted for structural element
where means not recited); In re Aoyama, 8/29/11 (claims
indefinite where insufficient algorithm structure disclosed in the
specification; see also J. Newman, dissenting); Inventio,
6/15/11 (reversing the district courts claim construction that
terms modernizing device and computing unit were means
limitations); Rembrandt, 4/18/11 (genuine dispute of material
fact regarding indefiniteness of computer-based claims); In re
Katz Patent Litigation, 2/18/11 (indefiniteness of computer-
based claims); Baran, 8/12/10 (release means for retaining . . .
construed as requiring both functions, which were not in the
accused structure); Becton Dickinson, 7/29/10 (J. Gajarsa,
dissenting, arguing that the majority avoided the critical issue
930
of determining whether the spring means limitation was a
means-plus-function limitation, prior to deciding infringement);
Pressure Products, 3/24/10 (5-judge panel split on the definition
of a means limitation; see J. Newman, dissenting); Blackboard,
7/27/09 (computer-related claims were not supported by
sufficient structure, relying on Net Moneyin, Aristocrat Techs.,
and Medical Instr.); Welker Bearing, 12/15/08; Net Moneyin,
10/20/08; Minks, 10/17/08; Lucent Techs., 9/25/08; CSIRO,
9/19/08 (consulting technical dictionary for most reasonable
understanding of term block of data in means-plus-function
limitation); Solomon Techs., 5/7/08 (corresponding structure
and accused structure were not equivalent in view of the
patentees reliance during prosecution on the advantage of a
central component of the corresponding structure over a
component in the accused structure to overcome prior art);
Aristocrat Techs., 3/28/08; Trimed, 1/29/08; Halliburton,
1/25/08 (n.7); Elbex Video, 11/28/07; Allvoice Computing,
10/12/07 (indefiniteness); Biomedino, 6/18/07; Depuy Spine,
11/20/06; MIT, 9/13/06; LG Electronics, 7/7/06; Applied
Medical Resources, 5/15/06; Callicrate, 10/31/05; JVW
Enterprises, 10/3/05; Cross Medical Prods., 9/30/05; Cytologix,
9/21/05; Harris, 8/5/05; Home Depot, 6/16/05; Playtex, 3/7/05;
Versa, 12/14/04; Franks Casing, 11/30/04; Gemstar, 9/16/04;
Cardiac Pacemakers, 8/31/04; Linear Technology, 6/17/04;
Nomos, 2/4/04; Toro, 1/20/04; Golight, 1/20/04; Utah Products,
12/4/03; Medical Instr., 9/22/03; Intellectual Property Devel.,
7/21/03)
Generally claimed function and corresponding structure

in the specification
- 35 USC 112, sixth paragraph - An element in a claim

for a combination may be expressed as a means or step
for performing a specified function without the recital of
structure, material, or acts in support thereof, and such
claim shall be construed to cover the corresponding
931
structure, material, or acts described in the specification
and equivalents thereof.
- Claim scope of a means-plus-function claim is limited to

the corresponding structure disclosed in the specification
and equivalents thereof 35 USC 112, 6; when
construing a means-plus-function claim, the function and
corresponding structure are determined in steps first,
determine the claimed function, followed by identifying
the corresponding structure in the specification that
performs that function (Chicago Board, 5/7/12; Noah
Systems, 4/9/12 (claims indefinite); HTC, 1/30/12;
Baran, 8/12/10; Blackboard, 7/27/09; Minks, 10/17/08;
Halliburton, 1/25/08 (n.7); Elbex Video, 11/28/07;
Allvoice Computing, 10/12/07; Biomedino, 6/18/07;
Applied Medical Resources, 5/15/06), i.e., cannot read a
working embodiment into the claim (JVW Enterprises,
10/3/05; Versa, 12/14/04); See also Bennett Marine,
9/19/13 (nonprecedential district court erred by not
fully identifying the function and corresponding structure
required by means-plus-function limitation); Aerotel,
7/26/11 (nonprecedential construing claimed function
and corresponding structure); Stamps.com, 6/15/11
(nonprecedential construing claimed function before
determining whether sufficient description of
corresponding structure in the specification); PPC,
4/28/11 (nonprecedential); Restaurant Technologies,
1/6/10 (nonprecedential); In re Guess, 6/9/09
(nonprecedential); Applied Medical Resources, 2/24/09
(nonprecedential)
Claimed function
- Function of the means clause defined only

by the limitations of the claim language (In
re Aoyama, 8/29/11; Net Moneyin, 10/20/08
(claims indefinite where undisputed that no
932
corresponding structure was disclosed based
on the district courts construction of the
claimed function); JVW Enterprises,
10/3/05; Gemstar, 9/16/04; Golight,
1/20/04); See also Bennett Marine, 9/19/13
(nonprecedential the district court failed to
define the function with all its limitations);
Applied Medical Resources, 2/24/09
(nonprecedential In other words, a court
cannot require the structure in the accused
device to perform functions that are not
present in the claim)
- Improper to import unclaimed functions into

a means-plus-function claim limitation
(Baran, 8/12/10 (release means for
retaining . . . construed as requiring both
functions); Welker Bearing, 12/15/08; LG
Electronics, 7/7/06; JVW Enterprises,
10/3/05) this can happen in two ways: 1)
can occur during claim construction by
defining a claimed function to require more
than is actually claimed, and 2) can occur
during the infringement analysis if the court
improperly determines the way in which the
disclosed structure performs the previously
defined function, i.e., the court includes the
way in which the disclosed structure
performs other, extraneous functions
(Applied Medical Resources, 5/15/06, see
also J. Dyk, dissenting disclosed and
accused devices perform the identical
function in a substantially different way;
analysis of the way a function is
performed necessarily requires descriptive
language not contained in the claim itself);
See also Applied Medical Resources,
2/24/09 (nonprecedential distinguishing
933
the claimed function from the different
way in which the accused and
corresponding structures perform the
identical function, stating that aspects of the
claimed invention beyond those stated in the
means-plus-function limitation are not
necessarily irrelevant to the way in which
the disclosed structure works, as such a rule
would conflate the way and function
prongs of the function-way-result test)
Corresponding structure
- Patentee must set forth in the specification

an adequate disclosure showing what is
meant by the claimed means-plus-function
language In re Donaldson (en banc)
(ePlus, 11/21/12)
- Well-established that the specification must

be read as a whole to determine the structure
capable of performing the claimed function
Budde (Chicago Board, 5/7/12)
- Claim terms cover the corresponding

structure in the specification and
equivalents only avoids pure functional
claiming (Regents of U. Minn., 6/3/13; Ergo
Licensing, 3/26/12; Mettler-Toledo, 2/8/12;
HTC, 1/30/12; Dealertrack, 1/20/12; In re
Katz Patent Litigation, 2/18/11 (computer-
based claims); Baran, 8/12/10; Pressure
Products, 3/24/10 (corresponding structure
must be explicity described, and does not
include structures described in the cited
prior art references (although the prior art
structures may be equivalents of the
934
corresponding structure, under Section 112,
sixth paragraph); see also J. Newman,
dissenting, opining that the district court
properly construed the corresponding
structure(s) as being the structure expressly
disclosed along with its equivalents
described in the incorporated prior art
references); Blackboard, 7/27/09 (avoids
pure functional claiming); Welker Bearing,
12/15/08; Net Moneyin, 10/20/08; Minks,
10/17/08; Biomedino, 6/18/07; Applied
Medical Resources, 5/15/06; JVW
Enterprises, 10/3/05; Cross Medical Prods.,
9/30/05; Versa, 12/14/04; Nomos, 2/4/04;
Golight, 1/20/04 (dissent); Medical Instr.,
9/22/03); See also Icon Health & Fitness,
10/24/12 (nonprecedential claim reciting
means for connecting was not infringed
literally or under DOE, where the
corresponding structure required two
structures to perform the recited function,
equivalents of which were not present in the
accused products; see also below); Brown,
5/7/10 (nonprecedential); Restaurant
Technologies, 1/6/10 (nonprecedential
rejecting the patentees argument that any
trigger mechanism, such as a lever or button,
might perform the claimed function, because
the structure recited repeatedly and
consistently in the specification in relation to
the function is a squeezable trigger valve);
Applied Medical Resources, 2/24/09
(nonprecedential); Medegen, 11/20/08
(nonprecedential remanded for the district
court to determine the appropriate scope of
the corresponding structure)
935
- Corresponding structure must be
described in the specification if not,
the claim is invalid under 35 USC
112, 2, for indefiniteness In re
Donaldson (en banc) (adequate
disclosure must be provided showing
what is meant by means-plus-function
language) whether corresponding
structure is adequately set forth is
viewed from the perspective of one
skilled in the art (ePlus, 11/21/12;
Chicago Board, 5/7/12; Noah
Systems, 4/9/12; Ergo Licensing,
3/26/12; HTC, 1/30/12; Dealertrack,
1/20/12 (claims invalid as indefinite
where no corresponding structure,
algorithm was disclosed for function
added in dependent claim); Typhoon
Touch, 11/4/11; In re Aoyama,
8/29/11; Rembrandt, 4/18/11 (genuine
dispute of material fact, based on
expert testimony, as to whether
algorithm was adequately disclosed to
render claim definite); In re Katz
Patent Litigation, 2/18/11;
Blackboard, 7/27/09; Net Moneyin,
10/20/08; Lucent Techs., 9/25/08
(priority at issue, not indefiniteness);
Finisar, 4/18/08; Aristocrat Techs.,
3/28/08 (failure to disclose algorithm
as the required structure to support
computer-implemented means-plus
function claim term); Biomedino,
6/18/07; Home Depot, 6/16/05); See
also Lighting Ballast Control, 1/2/13
(nonprecedential no corresponding
structure disclosed for term voltage
source means) [en banc review was
936
granted on 3/15/13, and the opinion
was vacated and the appeal
reinstated]; Aerotel, 7/26/11
(nonprecedential reversing the
district courts invalidity ruling where
corresponding structure was disclosed
in the specification as a whole); See
also INDEFINITENESS Means-
plus-function claims - 112, 6
- Precision in claiming - 112,

2 (Blackboard, 7/27/09;
Medical Instr., 9/22/03)
- Corresponding structure in the

specification must be clearly linked or
associated by the specification or PH
to the claimed function Atmel; this
duty to link or associate structure to
function is the quid pro quo for the
convenience of using Section 112, 6
B. Braun Med.; the question is not
what structures a POS in the art would
know are capable of performing a
given function, but rather what
structures are specifically disclosed
and tied to that function in the
specification - Blackboard (Saffran,
4/4/13 (reversing the district courts
construction of the corresponding
structure for term release means as
chemical bonds and linkages and
limiting the structure to hydrolyzable
bonds, where the specification
repeatedly described the linkage
between treating materials and sheet
as a hydrolyzable bond, and
distinguished the invention over the
937
prior art based on the use of
hydrolyzable bonds; the patent did not
link any additional structures to the
release function, other than suitable
types of hydrolyzable bonds, with
sufficient specificity to satisfy Section
112, 6 not persuaded that the
patents scattered use of the generic
phrase chemical bonds conveyed
additional, specific corresponding
structures separate and apart from
hydrolyzable bonds; see also J.
Moore, dissenting the district court
correctly found the corresponding
structure to be chemical bonds and
linkages where the specification
directly associated the claimed
release means with a chemical
bond structure, which was
sufficiently specific to satisfy Section
112, 6: I simply cannot fathom
what more the patentee must do to
link or associate structure to function
so as to provide sufficient
specificity. By limiting the structure
to hydrolyzable bonds, my
colleagues punish the patentee for
providing a detailed description of his
preferred embodiment.; see also J.
OMalley, concurring - the majoritys
narrow construction flowed from the
claim drafting choice of using means-
plus-function limitation, which
requires a clearly linked structure to
perform the recited function);
Chicago Board, 5/7/12 (system
memory was the disclosed structure
clearly associated by the specification
938
and PH with the claim term system
memory means, and thus rejecting
the district courts construction of the
corresponding structure as including
additional process elements); Noah
3/26/12; Mettler-Toledo, 2/8/12
(single statement in the Abstract
regarding a generic converter was not
linked to the claimed function, and
thus did not support broader
construction); In re Aoyama, 8/29/11;
Minks, 10/17/08 (means-plus-function
limitations were limited to structures
set forth in a single figure (and their
equivalents) as the figure was the only
structure linked or associated with the
claimed functions); Biomedino,
6/18/07; JVW Enterprises, 10/3/05;
Cross Medical Prods., 9/30/05; Home
Depot, 6/16/05); See also Aerotel,
- Corresponding structure must be

explicitly described, and does not
include structures in the (cited) prior
art (references) (ePlus, 11/21/12
(rejecting argument that the
specification need only disclose those
aspects of the claimed invention that
do not exist in the prior art); Pressure
Products, 3/24/10 (see also J.
Newman, dissenting No blanket
rule prohibits reliance on prior art for
known information))
- Corresponding structure cannot

be provided by material
939
incorporated by reference into
the specification - Atmel
(Pressure Products, 3/24/10 (J.
Newman, distinguishing Atmel
rule); Home Depot, 6/16/05)
- Corresponding structure is only that

which is necessary to perform the
recited function, but does not cover
every means for performing the
recited function (Welker Bearing,
12/15/08; Nomos, 2/4/04); See also
Bennett Marine, 9/19/13
(nonprecedential citing rule in
support of holding that the
corresponding structure was the sole
specific circuit described and its
equivalents, rather than a generic
circuit disclosed including any circuit
capable of performing the recited
function citing Mettler-Toledo,
J&M); PPC, 4/28/11
(nonprecedential)
- Court may not import structural

limitations from the
specification that are
unnecessary to perform the
claimed function Wenger
(Welker Bearing, 12/15/08
(rejecting the patentees
argument that rotating feature
was unnecessary where the
identified the feature as part of
the only disclosed structure for
performing the claimed
function of moving said finger
940
. . .)); See also PPC, 4/28/11
(nonprecedential reversing
the ITCs construction which
imported an unnecessary
structural limitation into the
structure corresponding to the
diputed means term); Applied
Medical Resources, 2/24/09
(nonprecedential parts of an
invention that do not perform
the recited function are not
properly included in the
identified structure, citing Asyst
Techs.)
- Comprising cannot be read to

require structure from the
specification (Versa, 12/14/04)
- Whether corresponding
structure necessarily includes
feature? (Versa, 12/14/04;
Franks Casing, 11/30/04; TI
Group, 6/30/04); See also Icon
Health & Fitness, 10/24/12
patentees argument that the
corresponding structure was
something less than required to
perform the recited function,
where two structures in the
specification were required to
enable the claimed function
(and agreeing with the district
court that the corresponding
structure here must both
connect the stroke rail to the
frame and allow the first end to
941
undergo linear displacement . . .
it is the combination of the C-
shaped channel and pin, and the
crank arm, that performs the
recited function), stating that
to identify the proper structure,
the court looks for the structure
disclosed in the specification
that actually performs the
recited function Cardiac
Pacemakers); In re Guess,
6/9/09 (nonprecedential claim
failed to recite the feature to
avoid anticipation based on a
broader alternative
corresponding structure)
- Corresponding structure of computer-

implemented function must be more
than simply a general purpose
computer or microprocessor to
avoid purely functional claiming;
must disclose the algorithm for
performing the claimed function
WMS Gaming, Aristocrat Techs.
(ePlus, 11/21/12; Noah Systems,
4/9/12 (claims reciting multiple
functions held invalid where the
specification disclosed a
corresponding algorithm for some, but
not all, of the recited functions); Ergo
Licensing, 3/26/12; HTC, 1/30/12;
Dealertrack, 1/20/12 (corresponding
structure was limited to computer
programmed with the disclosed
algorithms, despite claim language,
including equivalents of any of
alternative disclosed algorithms
942
Creo Prods.); In re Aoyama, 8/29/11
(claims held indefinite where
flowchart in figure and corresponding
description were insufficient
structure; see also J. Newman,
dissenting); Rembrandt, 4/18/11
(genuine dispute of material fact,
based on expert testimony, as to
whether specification adequately
disclosed algorithm); In re Katz
Patent Litigation, 2/18/11 (rule
applies only when claiming specific
function performed by a special
purpose computer, and not when
claiming functions achieved by any
general purpose computer without
special programming); Blackboard,
7/27/09 (claims indefinite where the
specification did not describe how the
access control manager performed
the recited function); Net Moneyin,
10/20/08 (claims indefinite because
no algorithm disclosed for performing
function of claimed means, which was
a component of disclosed bank
computer); Finisar, 4/18/08 (must
disclose enough of an algorithm to
provide the necessary corresponding
structure); Aristocrat Techs., 3/28/08
(disclosure of algorithm as the
corresponding structure is required);
Harris, 8/5/05; Business Objects,
1/6/05; Medical Instr., 9/22/03); See
also Stamps.com, 6/15/11
(nonprecedential claims indefinite
where no disclosure of actual
algorithms necessary to perform the
claimed function, as construed ask
943
whether a skilled artisan would have
understood the specification to
encompass the necessary program and
could have implemented the program,
and not simply whether he could have
written the program); Brown, 5/7/10
(nonprecedential claims indefinite
where no algorithm disclosed for
portable processing means
element); Encyclopaedia Britannica,
12/4/09 (nonprecedential claims
indefinite); Aristocrat Techs., 2/22/08
(nonprecedential; relating to
indefiniteness; WMS Gaming does
not require that a particular algorithm
be identified if the selection of the
algorithm or group of algorithms
needed to perform the function in
question would be readily apparent to
a [POS] in the art.); See also
INDEFINITENESS Means-plus-
function claims - 112, 6
- Rule not applicable when

claiming functions achieved by
any general purpose computer
without special programming
(Noah Systems, 4/9/12 (claims
held indefinite where the
claimed functions required
special programming); Ergo
Licensing, 3/26/12 (narrow
exception in Katz was not
applicable where the claimed
function required a general
purpose computer with special
programming); In re Katz
Patent Litigation, 2/18/11
944
(claimed functions of
processing, receiving, and
storing were coextensive with
the disclosed general purpose
processor))
- Corresponding structure includes all

structures disclosed in the
specification that perform the claimed
function, especially when the written
description is broader than the
drawings (Callicrate, 10/31/05;
Playtex, 3/7/05; TI Group, 6/30/04);
See also Aerotel, 7/26/11
(nonprecedential well-established
that the specification must be read as
a whole to determine the structure
capable of performing the claimed
function Budde); Restaurant
Technologies, 1/6/10 (nonprecedential
rejecting the patentees argument
that two disclosed structures were
two ends of a spectrum of claimed
structures that perform the claimed
function, ruling that there is no
spectrum of undisclosed structures
covered by [a patent], but rather that
under Section 112, paragraph 6, the
patent covers only those structures
that are disclosed and their
equivalents Linear Tech.); In re
Guess, 6/9/09 (nonprecedential a
claim relying only on a single means-
plus-function limitation to distinguish
itself from prior art was invalid,
where an alternative corresponding
structure rendered the claim
anticipated for anticipation
945
purposes, a prior art reference that
discloses any of the structures
encompassed by the means-plus-
function clause anticipates that claim.
A disclosure of a species anticipates a
claim to a genus.); Medegen,
remanded for the district court to
determine the appropriate scope of the
corresponding structure (citing
Playtex))
- Corresponding structure limited

to only one embodiment that
performs the claimed function,
and equivalents (Mettler-
Toledo, 2/8/12 (limiting claim
to the only disclosed structure,
stating rule based on Nomos);
MIT, 9/13/06; Cross Medical
Prods., 9/30/05; Nomos,
2/4/04); See also Bennett
Marine, 9/19/13
(nonprecedential applying
rule to limit corresponding
structure to the sole specific
circuit described and its
equivalents, rather than a
generic circuit disclosed
including any circuit capable of
performing the recited function
citing Mettler-Toledo;
distinguishing Serrano, in
which alternatives disclosed,
and S3 and Intel holding that
teachings well known in the art
need not be disclosed for
definiteness, where failed to
946
show that other types of
specific control circuits were
well known in the art along
with the disclosed specific
circuit for performing the
recited function); Applied
Medical Resources, 2/24/09
(nonprecedential)
- Specification
unambiguously
describes: The present
invention is . . . . (Cross
Doctrine of claim differentiation does not override

Section 112, 6
- Doctrine of claim differentiation does not

override the effect of 112, 6 (Saffran,
4/4/13 (rejecting claim differentiation
argument where independent and dependent
claims concerned the same function, and
only one structure was disclosed in the
patent for performing the function, stating
that [i]n such circumstances, we have long
held that a patentee cannot rely on claim
differentiation to broaden a means-plus-
function limitation beyond those structures
specifically disclosed in the specification
citing Laitram and distinguishing Wenger);
Cross Medical Prods., 9/30/05; Versa,
12/14/04; Nomos, 2/4/04); See also Icon
Health & Fitness, 10/24/12 (nonprecedential
rejecting the patentees argument that
means clause in independent claim did not
947
include structure recited in dependent claims
citing Laitram)
Equivalents
- Equivalents substantiality of differences function,

way, and result (Regents of U. Minn., 6/3/13 (claimed
element (treated as a mean-plus-function element) was
anticipated by an equivalent of the corresponding
structure disclosed in a prior art reference, citing expert
testimony); Minks, 10/17/08; Applied Medical
Resources, 5/15/06; JVW Enterprises, 10/3/05; Franks
Casing, 11/30/04; Toro, 1/20/04); See also Applied
Medical Resources, 2/24/09 (nonprecedential); See also
INFRINGEMENT
- Disavowal of equivalents in patent documents?

- Greater weight is given for individual components

that play a central role in the identified
corresponding structure Toro (Solomon Techs.,
5/7/08 (no impermissible component-by-
component analysis was performed in determining
that the accused and corresponding structures were
not equivalent when the patentee during
prosecution had relied on the advantage of a disk
in the corresponding structure over a shaft in the
accused structure to overcome prior art))
- Insubstantial differences corresponding structure

and accused structure perform the claimed function
in substantially the same way (Baran, 8/12/10
(accused structure was substantially different from
the corresponding structure); Minks, 10/17/08;
Applied Medical Resources, 5/15/06; JVW
Enterprises, 10/3/05)
948
- Separate finding from DOE equivalents (Toro,
1/20/04)
- DOE applied to after-developed

technology (Franks Casing, 11/30/04;
Nomos, 2/4/04)
Means recited in the claim?
- Means recited in claim creates a rebuttable

presumption that 112, 6 applies - rebutted when the
claim, in addition to the functional language (and even in
addition to the word means), recites sufficient structure
to perform the claimed function in its entirety; vs.
means not recited creates rebuttable presumption that
112, 6 does not apply - Phillips rebut by showing
that the claim fails to recite sufficiently definite structure,
or else recites function without reciting sufficient
structure for performing that function (TecSec, 10/2/13
(terms system memory means and digital memory
means were not means-plus-function terms); Power
Integrations, 3/26/13; Flo Healthcare Solutions, 10/23/12
(presumption was not rebutted and thus reversing the
PTABs construction of term height adjustment
mechanism as being a means-plus function term, the
CAFC concluding that the term mechanism included
sufficient structure in adjustment (which was
understood as a device based on a dictionary definition));
Chicago Board, 5/7/12 (n.1: noting that term system
memory means was a means-plus function limitation,
because the claim language failed to sufficiently recite a
specific and definite structure of a system memory
means, but rather recited a function); Powell, 11/14/11
(term (dust collection structure) recited sufficiently
definite structure, based on the claim language, written
description, and the terms meaning to a POS in the art);
949
Inventio, 6/15/11 (accused infringer failed to rebut the
presumption that Section 112, paragraph 6, did not apply
to terms modernizing device and computing unit
where the terms in light of the specification to one skilled
in the art recited sufficiently definite structure) [On
9/16/11, the CAFC denied petition for rehearing en
banc; J. OMalley dissented, without opinion, from
the denial]; Rembrandt, 4/18/11 (genuine dispute of
material fact where expert testimony supported the
conclusion that the means limitations conveyed
sufficient structure to one of ordinary skill in the art to
overcome the presumption under Section 112, sixth
paragraph); Baran, 8/12/10 (release means construed as
a means-plus-function limitation, since release is a
functional term); Becton Dickinson, 7/29/10 (J. Gajarsa,
dissenting construing spring means as not a means-
plus-function limitation where the claims further recited
sufficient structure for performing the claimed function);
Welker Bearing, 12/15/08 (term mechanism is the
same as means); Net Moneyin, 10/20/08 (presumption
based on means not rebutted where claim term bank
computer was not linked to the means clause, which
was a subset or component of the computer); Tip
Systems, 6/18/08 (presumption where means not
recited was not rebutted where the claim elements recited
clear and definite structures); Trimed, 1/29/08 (claim
recited sufficient structure for performing the claimed
functions, despite also reciting the word means); Elbex
Video, 11/28/07; Biomedino, 6/18/07; Depuy Spine,
11/20/06; MIT, 9/13/06 (mechanism, circuitry; see
dissent); LG Electronics, 7/7/06; Callicrate, 10/31/05;
Cross Medical Prods., 9/30/05; Harris, 8/5/05; Gemstar,
9/16/04; Lighting World, 9/3/04; Linear Technology,
6/17/04); See also Lighting Ballast Control, 1/2/13
(nonprecedential construing term voltage source
means as means-plus-function term, reversing the
district courts ruling that Section 112, paragraph 6, did
not apply, where the district court relied on the patentees
950
arguments and expert and inventor testimony that the
term would be understood by the POS in the art to refer
to a class of structures that provide the type of voltage
needed to perform the recited function) [en banc review
was granted on 3/15/13, and the opinion was vacated
and the appeal reinstated; the parties were requested
to brief the following issues: 1) Should the court
overrule the Cybor case?, 2) Should the court afford
deference to any aspect of a district courts claim
construction?, and 3) If so, which aspects should be
afforded deference?]; Brown, 5/7/10 (nonprecedential
presumption that Section 112, sixth paragraph, applied to
term portable processing means was not overcome
even if the recited processing means was a general
purpose processor of the portable computer examples
disclosed in the specification, because a general purpose
processor without more would not be enough to perform
the claimed function) [See also Inventio, 6/15/11,
above, in which the CAFC rejected the appellants
reliance on dictum from our nonprecedential
decision in Brown to argue that a computer, when
claimed, is not sufficient structure to perform the
claimed functions as a matter of law . . . Brown did
not hold, as a matter of law, that a claimed
computer is not sufficiently definite structure to
avoid the application of Section 112, paragraph 6];
Aspex Eyewear, 8/1/08 (nonprecedential term
retaining mechanism construed as a means-plus-
function limitation where determined not to be a
sufficiently definite structure, citing MIT (colorant
selection mechanism)); LSI Industries, 5/22/08
(nonprecedential channel means recited sufficient
structure, as defined by Websters dictionary)
- Means not recited strong presumption that is

not readily overcome (Flo Healthcare Solutions,
10/23/12 (reversing the PTAB where presumption
was not overcome by mechanism in the disputed
951
term height adjustment mechanism where the
term adjustment was understood as meaning a
device (based on a dictionary definition) and thus
provided sufficient structure); Inventio, 6/15/11;
Depuy Spine, 11/20/06); See also Duratech,
9/12/08 (nonprecedential the term manipulator
recited sufficiently definite structure)
- Means-plus-function claiming applies only to

purely functional limitations that do not provide
the structure that performs the recited function
Phillips (Inventio, 6/15/11; Baran, 8/12/10
(release means was functional and thus means-
plus-function applied: The relevant inquiry is
whether the term at issue is purely functional);
Welker Bearing, 12/15/08 (limitation mechanism
for moving said finger did not provide sufficient
structure to avoid means-plus-function treatment);
Depuy Spine, 11/20/06); See also Duratech,
9/12/08 (nonprecedential citing Phillips rule and
construing term manipulator as denoting
structure, stating that the claim term need not
denote a specific structure, but rather it is
sufficient if the term is used in common parlance
or by POSs in the art to designate structure, even
if the term covers a broad class of structures, and
even if the term identifies the structures by their
function - Lighting World; adding that the fact that
a particular mechanism is defined in functional
terms is not sufficient to rebut the presumption, as
many devices take their names from the functions
they perform, such as filters, brakes, locks, and
clamps)
- Human being cannot constitute a means

(Voter Verified, 11/5/12 (affirming the
district courts rejection that a human voter
could be an equivalent structure of the
952
recited ballot scanning means based on the
well established rule); Trimed, 1/29/08
(No credible reading of the claim language
requires human input to perform the
functions of the pin holes . . . ); Home
Depot, 6/16/05)
- Means not required if defined according to

function only (MEC, 4/1/08 (indefiniteness
case); MIT, 9/13/06; Toro, 1/20/04)
- Sufficient structure recited?
- Whether claim language invokes Section

112, paragraph 6, depends on how those
skilled in the art would understand the
structural significance of the claim language,
assessed against the presumptions that flow
from a drafters choice to employ or not the
term means (TecSec, 10/2/13; Power
Integrations, 3/26/13; Flo Healthcare
Solutions, 10/23/12; Inventio, 6/15/11); See
also Lighting Ballast Control, 1/2/13
(nonprecedential expert testimony can be
used for determination citing cases and
examples; construing term voltage source
means as means-plus-function term where
presumption was not rebutted) [en banc
review was granted on 3/15/13, and the
opinion was vacated and the appeal
reinstated see above]
- Look to intrinsic and extrinsic evidence -

considering intrinsic and extrinsic evidence
is usually helpful in determining whether a
claim limitation is so devoid of structure that
the drafter constructively engaged in means-
953
plus-function claiming Inventio (Power
Integrations, 3/26/13)
- Intrinsic evidence the specification

may inform the skilled artisans
understanding of the structure
required by a claim limitation (Power
Integrations, 3/26/13 (determining
whether term circuit was means-
plus-function limitation))
- Sufficient structure exists when the claim

language specifies the exact structure that
performs the functions in question without
need to resort to other portions of the
specification or extrinsic evidence for an
adequate understanding of the structure, e.g.,
baffle means rebuts the presumption
because the term baffle itself imparts
structure (Power Integrations, 3/26/13;
Inventio, 6/15/11 (distinguishing TriMed
which involved the issue of whether
application of Section 112, sixth paragraph,
was avoided where the claim recited a
means term, vs. whether the challenger
has rebutted the presumption that a claim
limitation lacking the term means
provided sufficiently definite structure, in
which case the specification, PH and
extrinsic evidence may be considered; also
citing TI Group, which is inconsistent with
the above rule); Rembrandt, 4/18/11; Becton
Dickinson, 7/29/10 (J. Gajarsa, dissenting -
construing spring means as not being a
means-plus-function limitation because the
claims further recited sufficient structure);
Trimed, 1/29/08 (the presence of structure
(holes) along with the word means was
954
not a means-plus-function limitation, where
the claim made clear that the structure for
performing the recited functions was the
holes themselves, rather than a structure in
addition to the holes)); See also Duratech,
9/12/08 (nonprecedential the specification
used the term manipulator as connoting
structure)
- Means clause (including alleged means

clause) is interpreted in light of the claim
language itself, the written description
(which may include express definitions for
claim terms), PH, and any relevant extrinsic
evidence - Phillips claims are interpreted
from the perspective of one skilled in the art
in light of the written description supporting
them, which is true whether or not the claim
construction involves interpreting a means
clause -- thus, the presumption that a claim
lacking the term means recites sufficiently
definite structure can be rebutted if the
evidence intrinsic to the patent and any
relevant extrinsic evidence so warrants, and
in deciding whether the challenger has
rebutted the presumption, the focus remains
on whether the claim as properly construed
recites sufficiently definite structure for
performing the recited functions to avoid
Section 112, paragraph 6 Personalized
Media (Power Integrations, 3/26/13 (term
soft start circuit recited sufficiently
definite structure, looking to the clearly
described function for the circuit in the
claim, stating that viewed in the context of
the claimed invention, the function recited is
sufficiently clear, and definitely described,
to suggest to the ordinarily skilled artisan a
955
defined class of structures comparing to
Abacus); Flo Healthcare Solutions, 10/23/12
(noting that the intrinsic evidence did not
support invoking Section 112, paragraph 6,
where the specification used the disputed
term height adjustment mechanism to
designate a class of structures generally
understood to POSs in the art); Inventio,
6/15/11 (holding that it is proper to consult
the intrinsic record, including the written
description, when determining if a
challenger has rebutted the presumption that
a claim lacking the term means recites
sufficiently definite structure and thus
concluding that the presumption was not
rebutted after construing the alleged
means terms modernizing device and
computing unit in light of the specification
as having sufficiently definite structure to
avoid Section 112, paragraph 6 citing
Phillips and other cases, and distinguishing
TriMed))
- Consider contextual claim language

(Inventio, 6/15/11 (claims provided
structural context for terms modernizing
device and computing unit where the
claims recited interactions with other
components; also distinguishing dicta from
cases stating that the term device was a
generic structural term that typically did not
connote sufficiently definite structure, where
the claim recited modernizing device and
provided the context in which the device and
its components performed))
- Sufficiently definite structure recited in the

claim = whether the term has an understood
956
meaning in the art; the CAFC requires only
that the term be used in common parlance or
by ordinarily skilled artisans to designate
sufficiently definite structure, even if the
term covers a broad class of structures and
even if the term identifies the structures by
their function (TecSec, 10/2/13 (system
memory in term system memory means
for storing data was to those skilled in the
art a specific structure that stores data, e.g.,
random access memory (RAM) was
disclosed in the specification
distinguishing Chicago Board (in part as
non-binding dictum citing Zoltek) in which
the same term required a more specific
function than the general function of storing
data; also, term digital logic in term
digital logic means also designated
structure to skilled artisans, namely digital
circuits that perform Boolean algebra, and
the term was comprised of additional, albeit
generic, structural elements); Power
Integrations, 3/26/13 (construing term soft
start circuit as having sufficiently definite
structure citing MIT, Linear Tech. and
Abacus); Flo Healthcare Solutions, 10/23/12
(term adjustment in the disputed term
height adjustment mechanism was
understood based on a dictionary definition
to mean a device for adjusting; comparing
adjustment to detent in detent
mechanism); Rembrandt, 4/18/11 (expert
testimony supported that (fractional rate
encoding, and trellis encoding) means
terms were used in publications and self-
descriptive of defined algorithms (i.e.,
structure) known in the art to one of
ordinary skill); Welker Bearing, 12/15/08
957
(term mechanism alone connotes no more
structure than the term means; contrasting
term detent mechanism which had
generally understood meaning in the
mechanical arts); Depuy Spine, 11/20/06;
MIT, 9/13/06 (circuitry and mechanism
and device); Linear Technology, 6/17/04
(circuit)); See also Duratech, 9/12/08
(nonprecedential the term manipulator
had a meaning in the art); Aspex Eyewear,
8/1/08 (nonprecedential claim term need
not recite specific structure, but rather
sufficient if the term is commonly used to
designate structure)
- Dictionary consulted to determine if

the disputed term denotes structure
(Flo Healthcare Solutions, 10/23/12
(term adjustment in the disputed
term height adjustment mechanism
had a reasonably well-understood
meaning as a name for a structure,
based on a dictionary definition; also
relying on rule that many devices take
their names from the functions they
perform, to conclude that height
adjustment mechanism is just such a
term); Depuy Spine, 11/20/06; MIT,
9/13/06 (term colorant selection
mechanism was treated functionally
where not defined in the specification
and had no generally understood
structural meaning in the art);
Lighting World, 9/3/04
(connector)); See also Duratech,
9/12/08 (nonprecedential the term
manipulator denoted structure, as
supported by dictionary definitions)
958
- Dictionary definitions and
experts confirming that claim
term was understood by a POS
in the art to describe a kind of
structure (Depuy Spine,
11/20/06)
- Experts may be relevant for

determining whether a limitation is
regarded as a means-plus-function
limitation Lighting World (Trimed,
1/29/08; Depuy Spine, 11/20/06); See
also Duratech, 9/12/08
(nonprecedential the accused
infringers expert understood the term
manipulator as having structure)
Step for function claim
- Step for function presumption that 112, 6 applies

(Cardiac Pacemakers, 8/31/04); See also Respironics,
12/16/08 (nonprecedential method steps lacking the
words step for presumption that Section 112,
paragraph 6, did not apply to the method steps)
Infringement
- Infringement see INFRINGEMENT
Invalidity
- Invalidity see INVALIDITY - GENERALLY
959
Indefiniteness
- Indefiniteness see INDEFINITENESS
Preamble limiting or not?
(Uship, 5/8/13 (rejecting argument that preamble language

using an automated shipping machine raised a presumption
that every step of the claimed method must be performed by a
machine, because the plain meaning of the language did not
clarify whether the machine must be used in one, several, or all
of the steps); Saffran, 4/4/13 (rejecting the district courts
construction of term device that it served only as non-limiting
preamble language that did not require a sheet and merely
[gave] a descriptive name to the set of limitations in the body of
the claim that set forth the invention, where the term (also)
appeared in the body of the claims and the specification and PH
emphasized that the device was a sheet; see also J. OMalley
dissenting - agreeing with the district courts construction of
device as something which comprises the limitations set out
in the body of the claim); Dawson, 3/25/13 (J. Reyna,
dissenting preamble language treating an eye was not
limiting where the claim body set forth a complete and
operative invention); Aristocrat Techs., 3/13/13; C.W. Zumbiel,
12/27/12; Deere, 12/4/12 (preamble term rotary cutter deck
was limiting based on the specification and providing
antecedent basis); Apple, 10/11/12 (n. 5: no error in the district
courts determination that preamble stating intended use was
not limiting); Highmark, 8/7/12 (patentees claim construction
of preamble as non-limiting and infringement argument were
objectively unreasonable); Aspex Eyewear, 3/14/12 (preamble
language eyeglass device was not limiting, based on the
context provided by other claims, the language was not needed
to give meaning to the claims, which recited structurally
complete inventions without the preamble language, and there
was nothing in the PH suggesting that the preamble language
was necessary for patentability); August Tech., 8/22/11;
960
Advanced Software Design, 6/2/11 (steps recited in limiting
preamble of method and system claims described the claim
environment only, and thus direct infringer needed only
perform step and use structures recited in the claim body);
American Medical Systems, 9/13/10 (preamble language
photoselective vaporization of tissue held not limiting where
was merely a label to describe the invention as a whole, and the
body of the claim defined the complete invention; see also J.
Dyk, dissenting the CAFC has not succeeded in articulating
a clear and simple rule for determining whether a preamble is
limiting the case law has become rife with inconsistency,
both in result and in the articulation of the test a rule
recognizing that all preambles are limiting would make better
sense and would better serve the interests of all concerned I
think the time may have come for the en banc CAFC to
eliminate this vague and confusing rule); Haemonetics, 6/2/10
(preamble defined term); Vizio, 5/26/10 (preamble limiting);
Hearing Components, 4/1/10 (term readily installed in
preamble was limiting); Marrin, 3/22/10 (claims anticipated
where preamble language not permitting was held not
limiting; see also J. Newman, dissenting); Iovate Health
Sciences, 11/19/09 (assuming the preamble of the asserted
method claim was limiting in finding anticipation by a
magazine advertisement); Howmedica, 9/2/08 (preamble of a
Jepson claim is limiting); Tip Systems, 6/18/08 (term handle
was a structural limitation on the disputed claim term handset
in a Jepson claim preamble, as supported by repeated reference
to handle in the specification); Symantec, 4/11/08 (preamble
not limiting); Computer Docking Station, 3/21/08 (undisputed
that term in preamble was limiting); Halliburton, 1/25/08
(patentee conceded that preamble limiting); Bass Pro
Trademarks, 4/6/07; MBO Labs, 1/24/07; Sram, 10/2/06; Lava
Trading, 4/19/06; On Demand Machine, 3/31/06; Bicon,
3/20/06; Varco, 2/1/06; NTP, 8/2/05; Sandisk, 7/8/05;
Seachange Intl, 6/29/05; Poly-America, 9/14/04; Intirtool,
5/10/04; Glaxo (2), 1/29/04); See also Piggy Pushers, 11/8/13
(nonprecedential preamble term sock was limited to a sock,
where when the elements recited in the body of the claims were
961
combined as claimed, the result was a sock; also relying on the
specification, which distinguished a sock from a shoe); In re
Jasinski, 2/15/13 (nonprecedential reversing anticipation
where the preamble language was limiting and not merely a
statement of intended use, because it referred to the essence of
the invention and was recited again in the claim body citing
Vizio); Textron Innovations, 9/7/12 (nonprecedential
preamble not limiting where body of the claim defined the full
invention); MEMS Tech. Berhad, 6/3/11 (nonprecedential)
Generally
- Preamble term limiting or not is determined based on the

facts of each case in light of the claim as a whole and the
invention described in the patent Storage Tech. (Deere,
12/4/12; American Medical Systems, 9/13/10); See also
Piggy Pushers, 11/8/13 (nonprecedential preamble term
sock was limited to a sock, the ordinary meaning of
which based on the context of the patent did not include a
shoe, and the requirement that the combined elements
form a sock was a fundamental characteristic of the
claimed invention citing Poly-Am., Amer. Med. Sys.)
- Generally, the purpose of a claim preamble is to give

context for what is being described in the body of the
claim (August Tech., 8/22/11 (preamble may limit the
claim when the drafter uses it to define the subject matter
of the claim); Advanced Software Design, 6/2/11
(limiting preamble set forth the claim environment only,
where financial instrument was described in terms of the
steps required to create it); American Medical Systems,
9/13/10 (preamble not limiting); Symantec, 4/11/08
(preamble not limiting where the disputed language in
preamble was merely duplicative of limitations in the
claim body)); See also Textron Innovations, 9/7/12
(nonprecedential preamble not limiting)
962
- Claim preamble may limit the claim when the
claim drafter uses the preamble to define the
subject matter of the claim Allen Engg; August
Tech. (Aristocrat Techs., 3/13/13; C.W. Zumbiel,
12/27/12)
- Claim preamble limiting when the claim(s) depend

on it for antecedent basis, or when it is essential to
understand limitations or terms in the claim body
Catalina Mkt. (C.W. Zumbiel, 12/27/12); See also
In re Jasinski, 2/15/13 (nonprecedential preamble
language provided the criteria for same language
in comparing step in the claim body)
- Generally, the preamble does not limit the claims

(Aspex Eyewear, 3/14/12; American Medical
Systems, 9/13/10); See also Textron Innovations,
9/7/12 (nonprecedential); Alcohol Monitoring
Systems, 1/24/11 (nonprecedential stating same
rule)
- Assumed that the preamble language is duplicative

of the language found in the body of the claims or
merely provides context for the claims, absent any
indication to the contrary in the claims, the
specification, or the PH (American Medical
Systems, 9/13/10 (preamble was not limiting
where was duplicative of the body of the claim);
Hearing Components, 4/1/10 (term readily
installed not duplicative); Symantec, 4/11/08
(nothing in the intrinsic record suggested that the
disputed preamble language and language in the
claim body had different meanings)); See also
Clearwater Systems, 8/30/10 (nonprecedential
district court correctly construed the preamble as
limiting because it was necessary to provide
context to the claim)
963
- Preamble embracing totality of the claim
limitations (On Demand Machine, 3/31/06)
- Preamble stating framework of the invention;

whether fundamental to the invention described in
the specification (Deere, 12/4/12 Deere, 12/4/12;
On Demand Machine, 3/31/06)
- Review of the entire patent required to

determine what the inventors actually
invented, e.g., when the preamble recites
structure underscored in the specification as
important (Deere, 12/4/12 (preamble term
rotary cutter deck limiting citing Poly-
America); Poly-America, 9/14/04)
Preamble reciting essential structure or steps, vs. stating

merely the purpose or intended use of the invention
- Preamble recites essential structure or steps, or breathes

life, meaning and vitality into the claim vs. the body of
the claim recites a (structurally) complete invention and
the preamble is used only to state a purpose or intended
use for the invention Catalina Mktg. (Deere, 12/4/12
(recitation of rotary cutter deck in preamble was
necessary to understand the subject matter encompassed
by the claim); Aspex Eyewear, 3/14/12 (claims recited
structurally complete invention without the preamble
language); August Tech., 8/22/11; Advanced Software
Design, 6/2/11 (distinguishing a preamble that limits only
the claimed environment from a preamble that limits the
claimed method or system; also distinguishing Bicon);
American Medical Systems, 9/13/10 (preamble term
photoselective vaporization held not limiting, where
the body of the claim recited a complete invention, and
the preamble was merely duplicative, not an essential
component of the invention, and recited a descriptive
964
name for the invention; see also J. Dyk, dissenting);
Vizio, 5/26/10 (for decoding was limiting because it
was the essence or a fundamental characteristic of the
claimed invention which would have little meaning
without the intended objective of decoding); Marrin,
3/22/10 (preamble stating the intented use of a prior art
scratch-off device was not limiting; see also J. Newman,
dissenting the preamble was part of the claimed
invention, as described in the specification; also citing
several for use cases where the preamble was limiting);
Symantec, 4/11/08 (citing Catalina Mktg. and the several
guideposts the CAFC identified therein to aid in
determining whether a preamble should be limiting);
Halliburton, 1/25/08 (fragile gel); MBO Labs, 1/24/07;
Sram, 10/2/06; On Demand Machine, 3/31/06; Bicon,
3/20/06; Varco, 2/1/06; NTP, 8/2/05; Sandisk, 7/8/05;
Poly-America, 9/14/04; Innova/pure water, 8/11/04;
Intirtool, 5/10/04); See also In re Jasinski, 2/15/13
(nonprecedential preamble language was limiting
where recited the essence of the invention citing
Vizio); Textron Innovations, 9/7/12 (nonprecedential
preamble not limiting where stated intended use only);
MEMS Tech. Berhad, 6/3/11 (nonprecedential
preamble term package was limiting based on rule that
the preamble is limiting when it is essential to
understand limitations or terms in the claim body
Catalina Mktg., and the essence of the invention was
the containment of the components recited in the claim
body in a package); Alcohol Monitoring Systems,
1/24/11 (nonprecedential stating rule, preamble not
limiting)
- Apparatus claims generally patentability depends

on the claimed structure, not on the use or purpose
of that structure Catalina Mkt. (Marrin, 3/22/10
(claim anticipated where the intended use of the
claimed structure was not limiting))
965
- Preamble construed as merely duplicative of the
limitations in the body of the claim (and was not
clearly added to overcome a rejection) not
construed as a separate limitation (American
Medical Systems, 9/13/10 (citing Symantec);
Symantec, 4/11/08 (preamble not limiting where
disputed language in the preamble had the same
meaning as term prior to storage in the claim
body))
- Preamble not limiting where merely gives a

descriptive name to the set of limitations in the
body of the claim that completely set forth the
invention IMS Tech. (Deere, 12/4/12; American
Medical Systems, 9/13/10 (preamble term
photoselective vaporization not limiting where
merely provided a label for the complete invention
in the body of the claim)); See also Alcohol
Monitoring Systems, 1/24/11 (nonprecedential
preamble language monitoring the percentage of
blood alcohol was a descriptive name and did not
additionally limit the scope of the claims)
- Preamble analyzed to ascertain whether it states a

necessary and defining aspect of the invention, or
is simply an introduction to the general field of the
claim Kropa v. Robie (Hearing Components,
4/1/10; Marrin, 3/22/10 (J. Newman, dissenting);
Computer Docking Station, 3/21/08 (portability
was a necessary and defining aspect of the
invention); On Demand Machine, 3/31/06)
- Preamble limiting when, read in the context

of the entire claim, recites limitations of the
claim, or, if the preamble is necessary to
give life, meaning, and vitality to the claim
preamble thus should be construed as if in
the balance of the claim Pitney Bowes
966
(C.W. Zumbiel, 12/27/12; Deere, 12/4/12;
August Tech., 8/22/11; Halliburton, 1/25/08
(preambles recitation of fragile gel
limiting))
Preamble limiting when provides antecedent basis for claim

terms
- Preamble limiting when provides antecedent basis for

terms in the body of claim (C.W. Zumbiel, 12/27/12
(preamble limiting where containers as recited in the
claim body depended on a plurality of containers in the
preamble as an antecedent basis); Deere, 12/4/12;
Highmark, 8/7/12; American Medical Systems, 9/13/10
(rejecting argument for limiting the preamble);
Symantec, 4/11/08 (stating that absent clear reliance on
the preamble in the PH, or in situations where it is
necessary to provide antecedent basis for the body of the
claim, the preamble generally is not limiting Catalina
Mktg.); NTP, 8/2/05)
Reliance on the preamble during prosecution is limiting
- Clear reliance on preamble during the PH to distinguish

prior art limits the preamble, because such reliance
indicates use of the preamble to define, in part, the
claimed invention Catalina Mktg. (Aspex Eyewear,
3/14/12 (no reliance in PH); American Medical Systems,
9/13/10 (J. Dyk, dissenting preamble limiting where
was relied on during prosecution); Hearing Components,
4/1/10 (preamble relied on during the PH); Marrin,
3/22/10 (preamble not limiting where there was no
reliance on the preamble during the PH, and where the
patentee expressly stated that the alleged limiting
language was not a claim limitation); Symantec, 4/11/08
(preamble not limiting where the disputed language in
967
the preamble and the claim body was added concurrently
during the PH to overcome the same prior art, even
though claim body of the original claim arguably could
be construed to have already contained limitation);
Computer Docking Station, 3/21/08 (specification and
PH emphasized the portability feature of the invention);
Bass Pro Trademarks, 4/6/07) VS. simply reciting
benefits or features is not limiting (Intirtool, 5/10/04);
See also Textron Innovations, 9/7/12 (nonprecedential
rejecting argument that preamble limited based on the
PH, where the PH was silent as to why term was added,
and in the context of the entire patent, the term was
intended to describe the principal intended use of the
invention); In re Taylor, 6/14/12 (nonprecedential
preamble was not limiting during prosecution when
relied on to distinguish prior art, distinguishing Catalina
Mktg., which was an infringement case)
Preamble limiting
- Preamble limiting (Deere, 12/4/12; Advanced Software

Design, 6/2/11; Vizio, 5/26/10; Hearing Components,
4/1/10; Tip Systems, 6/18/08 (preamble of Jepson claim);
Computer Docking Station, 3/21/08; Halliburton,
1/25/08; Bass Pro Trademarks, 4/6/07; MBO Labs,
1/24/07; On Demand Machine, 3/31/06; Varco, 2/1/06;
W.E. Hall, 6/7/04); See also Piggy Pushers, 11/8/13
(nonprecedential); MEMS Tech. Berhad, 6/3/11
(nonprecedential)
- Preamble language (a) used to construe claim

scope (Lava Trading, 4/19/06)
Preamble of Jepson claim is limiting
968
- Preamble of a Jepson claim (impliedly admitted prior art)
is limiting (In re Glatt, 1/5/11; Howmedica, 9/2/08; Tip
Systems, 6/18/08); See also In re Guess, 6/9/09
(nonprecedential the claimed invention consists of the
preamble combined with the improvement; also, the
preamble is impliedly admitted to be prior art unless
shown to be the patentees own work)
Product-based claim limited to process by which the product is

made?
(Regents of U. Minn., 6/3/13 (rejecting argument that the

district court improperly imported process limitations into
product claim, where terms affixed and conjoint when read
in context described the product more by its structure than by
the process used to obtain it, and thus were product limitations,
not process limitations citing several cases, including Miken
Composites); Research Corp., 12/8/10 (pure apparatus claim
was not limited to the process of making the apparatus
described in the specification); Gemtron, 7/20/09 (construing
the relatively resilient characteristic of the claimed
refrigerator shelf frames edge portion used to assemble the
shelf as a structural attribute, and not a process limitation, of the
claimed frame); Miken Composites, 2/6/08 (rejecting
contention that the district court impermissibly imported a
process limitation in a product claim, the district court instead
adopted the ordinary meaning of the term insert as
something inserted or intended for insertion); Baldwin
Graphic Systems, 1/15/08 (noting important difference between
apparatus and method claims generally); Andersen, 1/26/07
(claim limited to process); AFG Indus., 7/13/04; 3M, 12/2/03;
Cordis, 8/12/03); See also Astrazeneca, 10/30/13
(nonprecedential citing rule from Baldwin Graphic); Sanofi-
Aventis, 9/10/09 (nonprecedential holding that the district
court erred in construing a composition claim to optically
pure oxaliplatin as limited to the HPLC process used in the
969
examples to make the claimed oxaliplatin, where there was no
disclaimer in the specification or PH of other processes)
- Product claims generally are not limited to the methods

of manufacture disclosed in the specification; the method
of manufacture, even when cited as advantageous, does
not of itself convert product claims into claims limited to
a particular process; a novel product that meets the
criteria of patentability is not limited to the process by
which it was made (Research Corp., 12/8/10 (pure
apparatus claim was not limited to an apparatus created
using a specific algorithm recited in a figure of the
patent); Baldwin Graphic Systems, 1/15/08; Andersen,
(nonprecedential applying rule); Sanofi-Aventis,
9/10/09 (nonprecedential basing decision that
composition claim was not limited to the disclosed
process on the lack of disclaimers in the specification or
PH)
- Courts must generally take care to avoid reading

process limitations into an apparatus claim,
because the process by which a product is made,
including the sequence of steps, is irrelevant to the
question of whether that product infringes a pure
apparatus claim (Research Corp., 12/8/10 (citing
Baldwin Graphic); Baldwin Graphic Systems,
1/15/08 (device claim not limited to process or
sequence of steps)); See also Astrazeneca,
10/30/13 (nonprecedential applying above rule
citing Baldwin Graphic); See also Apparatus
claims not limited by use or process of making
- Process limitations (how product made) can be read into

a product claim if the patentee chooses to describe the
product in such fashion (Andersen, 1/26/07; Smithkline
Beecham, 2/24/06 (relating to product-by-process claim;
the CAFC made clear was not holding that a claim to a
970
product is never limited by process limitations); Norian,
12/6/05; Nystrom, 9/14/05 (board construed as a board
cut from logs, thus excluding the accused synthetic
board))
- Process steps can be treated as part of a product

claim if the patentee has made clear, in the
specification and PH, that the process steps are an
essential part of the claimed invention (Andersen,
(nonprecedential no disclaimer during the PH
where the patentee made process limiting
arguments only with respect to the product-by-
process claims); Sanofi-Aventis, 9/10/09
(nonprecedential distinguishing Andersen, and
holding that a composition claim was not limited
to the HPLC process used in the examples to make
the composition, since the specification and PH
focus[ed] on the property of the composition
(optical purity) and not the process used to obtain
that property)
- Process limitations vs. structural components having

certain understood characteristics, e.g., filter, brake,
clamp, screwdriver, lock (Gemtron, 7/20/09; Miken
Composites, 2/6/08 (term insert))
- Past-tense verbs (such as intermixed, ground in

place, press-fitted, etched, and welded)
have been construed as structural, rather than
process, limitations In re Garnero (CCPA); when
a patentee chooses to use these words, they should
be given their ordinary meanings with respect to
the claimed products structure Miken
Composites (Regents of U. Minn., 6/3/13
(applying rules to claimed first and second disks
affixed together to form a central conjoint disk
as structural limitations); Gemtron, 7/20/09
971
(claims recitation that a glass panel be snap-
secure[d] in the frame of the claimed refrigerator
shelf described the structural relationship between
the glass panel and the frame, which was
possessed by the claimed shelf because of the
recited relatively resilient structural
characteristics of the individual components);
Miken Composites, 2/6/08 (term insert)))
- Words of limitation that can connote with equal

force a structural characteristic of the product OR a
process of manufacture are commonly and by
default interpreted in their structural sense 3M
(Regents of U. Minn., 6/3/13 (applying rule);
Gemtron, 7/20/09 (claim recitation that a glass
panel be snap-secure[d] in the frame of a
refrigerator shelf was interpreted as a structural
limitation))
Product-by-process claims
- Product-by-process vs. structural limitation

defining a structural component by its functional
as well as its physical characteristics is different
from defining a structure solely by the process by
which it is made (Gemtron, 7/20/09 (construction
requiring only that the frame of the claimed
refrigerator shelf deflect at the time that the glass
panel is being inserted into the frame during
assembly did not transform the relatively resilient
end edge portion of the frame limitation into a
product-by-process limitation)); See also
Astrazeneca, 10/30/13 (nonprecedential the
patentee during the PH distinguished sterile from
sterilized (product-by-process)); Sanofi-Aventis,
9/10/09 (nonprecedential composition claim was
not limited to the process used in the patent to
972
make the composition, stating that this is a
composition claim, not a product-by-process
claim); See also ANTICIPATION Product-by-
process claims; INFRINGEMENT Product-by-
process claims
Ranges
- Numeric ranges 1 does not mean 1.0, which is a

more precise number - Viskase (U.S. Philips, 11/2/07)
Reading limitations, embodiments (improperly) from the

specification into the claims vs. interpreting the claims based on
the specification
(Commil USA, 6/25/13 (rejecting argument to limit term

short-range communication protocol to only those specific
protocols listed in the patent, as improperly importing
limitations, under Phillips); Toshiba, 6/11/12 (claims were
improperly limited; see also J. Dyk, dissenting); Aventis
Pharma, 4/9/12 (refusing to read safety or efficacy limitations
into the claims where not required by the claims, specification
or PH); MySpace, 3/2/12; Falana, 1/23/12; Dealertrack,
1/20/12; IGT, 10/6/11 (specification used to construe disputed
term); Cordance, 9/23/11 (defining term feedback
information based on the specification, rather than importing
limitation); Markem-Imaje, 9/9/11 (reversing the district court
and construing the claims not to include a tension measurement
method described only in the specification; see also J. Newman,
dissenting district court properly construed the claims to
cover the actual invention described in the specification, citing
Retractable Techs.); *Retractable Techs., 7/8/11 (reversing the
district court and construing term body as limited to a one-
piece body, based on the specifications description of the
syringe body as being one piece and that the specification [did]
not disclose a body that consists of multiple pieces or indicate
973
that the body is anything other than a one-piece body; see also
C.J. Rader, dissenting construing term body according to its
ordinary meaning as not requiring one piece, based on
dependent claims recitation of one piece body) [petition for
rehearing en banc was denied on 10/31/11; J. Moore, joined
by C.J. Rader, dissented from the denial of the petition,
arguing that the disputed term should be given its plain and
ordinary meaning, in the absence of a disclaimer or
lexicography in the specification, and that the term should
not be limited to the actual invention disclosed in the
specification If the metes and bounds of what the
inventor claims extend beyond what he has invented or
disclosed in the specification, that is a problem of validity,
not claim construction. It is not for the court to tailor the
claim language to the invention disclosed; J. OMalley
dissented separately, and rather than disputing the
majoritys legal analysis under Phillips, argued that the
court should have affirmed the district courts broad
construction of the term body by giving deference to the
district courts construction, and that the full court should
reconsider the de novo standard of review of Cybor (en
banc)]; *Arlington Indus., 1/20/11 (district court improperly
imported a split limitation from the specification into the
claim term spring metal adaptor; see also J. Lourie,
dissenting from the decision on one of two patents in suit,
which consistently described the limitation as part of the
invention); Intervet, 8/4/10 (district court improperly limited
claims to isolated DNA molecules to the preferred DNA
sequences in the specification, rather than construing the claims
more broadly as a POS in the art would); Comaper, 3/1/10
(term case was not limited to the sole embodiment of an
enclosed case); Kara Technology, 9/24/09 (district court
improperly read key limitation into the claims); Linear Tech.,
5/21/09; Kinetic Concepts, 2/2/09 (split decision regarding
proper construction of term wound); Netcraft, 12/9/08
(invention as a whole, rather than alternative embodiments);
Praxair, 9/29/08; Broadcom, 9/24/08; CSIRO, 9/19/08;
Howmedica, 9/2/08; DSW, 8/19/08 (district court improperly
974
imported limitations from the specification and other claims
into unambiguous claim language); Voda, 8/18/08;
Helmsderfer, 6/4/08; Decisioning.com, 5/7/08 (broad term
remote interface excluded consumer-owned personal
computer based on the specification; see also J. Linn,
dissenting); Symantec, 4/11/08 (terms computer and
computer system not limited to preferred embodiment of a
single computer, where the specification did not expressly
define or adopt a special definition of the terms); *Computer
Docking Station, 3/21/08 (distinguishing specification
explanations resulting in a narrow claim interpretation from
improperly importing claim limitations from a few
specification statements or figures into the claims, . . .
particularly if [the] specification extracts describe only
embodiments of a broader claimed invention); Tivo, 1/31/08
(preferred embodiment not all embodiments of claimed
invention); Baldwin Graphic Systems, 1/15/08 (method claims);
Sinorgchem, 12/21/07 (lexicographer rule applied); Stumbo,
11/28/07; Verizon, 9/26/07; *Ormco, 8/24/07 (see also D.J.
OMalley, dissenting); In re Trans Texas Holdings, 8/22/07;
SafeTCare Mfg., 8/3/07; In re Omeprazole, 4/23/07 (examples);
Intamin, 4/18/07; Acumed, 4/12/07; Andersen, 1/26/07; MBO
Labs, 1/24/07; Ventana Medical Systems, 12/29/06; Sram,
10/2/06; Ormco, 8/30/06; Pfizer, 8/2/06; Wilson Sporting
Goods, 3/23/06; Perdue Pharma, 2/1/06; Varco, 2/1/06; Free
Motion Fitness, 9/16/05; Sandisk, 7/8/05; Prima Tek II,
6/22/05; Boss Control, 6/8/05; Gillette, 4/29/05; Unitherm,
7/12/04; American Academy of Sciences, 5/13/04; Housey,
5/7/04; Superguide, 2/12/04; Liebel-Flarsheim, 2/11/04;
Golight, 1/20/04; Liquid Dynamics, 1/23/04; Resqnet.com,
10/16/03; E-Pass, 8/20/03; Anchor, 8/13/03; Resonate, 8/5/03);
See also Clearwater Systems, 8/30/10 (nonprecedential
district court improperly imported an extraneous limitation into
the claim by requiring that the recited power source power
the entire apparatus, since there was no limiting language in the
claims, WD, or PH requiring such limitation); Southern Mills,
5/14/10 (nonprecedential clear statements in the specification
were distinctly definitional as opposed to describing preferred
975
embodiments of the term 3-end knit); Uniloc USA, 8/7/08
(nonprecedential term licensee unique ID construed as not
limited to personally identifiable information, which would
have required importing a preferred embodiment, vs. C.J.
Michel, dissenting construing the term as requiring personal
information based on the context of the specification)
Generally
- Interpreting claims based on the specification vs.

improperly importing limitations from the
specification into the claims - while the
specification should be used to interpret the
meaning of a claim, courts must not import
limitations from the specification into the claims
Phillips (SkinMedica, 8/23/13 (recognizing the
distinction while affirming the district courts
narrow construction based on disclaimer and/or
lexicography); Toshiba, 6/11/12 (We do not read
limitations from the specification into claims.);
IGT, 10/6/11 (not an instance of reading a
limitation into the claim, where the specification
was used to interpret the meaning of the disputed
term command as requiring reconfiguration,
based on all parts of the specification); Cordance,
9/23/11 (specification used to interpret the limited
meaning of term feedback information in light of
the disclosure that feedback information consists
of attributes and values); Hynix, 5/13/11 (fair
categorization of the meaning of the claims,
rather than an importation of a preferred
embodiment into the claims); *Arlington Indus.,
1/20/11 (highlighting the purpose of the claims vs.
the specification for determining the proper claim
scope; see also J. Lourie, dissenting); Intervet,
8/4/10; Abbott Labs, 5/18/09; DSW, 8/19/08;
Voda, 8/18/08; Symantec, 4/11/08 (district court
976
improperly imported a single computer
limitation into the terms computer and
computer system); Computer Docking Station,
3/21/08 (disclaimers resulted in narrow
construction for term portable computer as
excluding laptop computers); Baldwin Graphic
Systems, 1/15/08 (method claims not limited by
the specification); Stumbo, 11/28/07 (no
importation); Ormco, 8/24/07; In re Trans Texas
Holdings, 8/22/07); See also Creative Integrated
Sys., 6/3/13 (nonprecedential district court erred
by improperly reading limitations of a particular
embodiment into claim citing Intervet Am.);
Laserfacturing, 9/17/12 (nonprecedential the
district court did not import into the term sheet
the specifications limitations or preferred
embodiments, but rather gave meaning to the term
as it was used throughout the specification);
Textron Innovations, 9/7/12 (nonprecedential
improper to read a unitary structure limitation into
term (strap) based on the embodiments, unless
required by the claims, specification or PH, and
thus the claimed strap could literally read on a
combination of components in the accused product
that performed structurally the same as the strap
citing 2004 nonprecedential case with E.g.); In
re Scroggie, 9/16/11 (nonprecedential
applications disclosure of an embodiment that
envisaged using the internet and email did not
incorporate those limitations into the term
personal computer); MEMS Tech. Berhad,
6/3/11 (nonprecedential applying rule from DSW
that absent contravening evidence from the
specification or prosecution history, plain and
unambiguous claim language controls the
construction analysis); Medegen, 11/20/08
(nonprecedential district court improperly read
elastomeric limitation, which was a preferred
977
embodiment only, into the claim term plug);
Uniloc USA, 8/7/08 (nonprecedential split
decision, in which C.J. Michel, dissenting,
concluded that the disputed term was limited by
the context of the invention in the specification)
- Courts have consistently adhered to the

proposition that courts cannot alter what the
patentee has chosen to claim as his
invention, that limitations appearing in the
specification will not be read into claims,
and that interpreting what is meant by a
word in a claim is not to be confused with
adding an extraneous limitation appearing in
the specification, which is improper
Intervet Am. (DSW, 8/19/08 (district court
did not construe or clarify the meaning of
actual words in the claims, but rather
improperly imported limitations into
unambiguous claim language (horizontally
movably positionable stack divider))
- Distinction is manageable if the focus

remains on understanding how a POS in the
art would understand the claim term after
reading the entire patent Phillips (Intervet,
8/4/10 (district court failed to construe
claims to isolated DNA molecules more
broadly in view of the specification as a
POS in the art would have done); ICU
Medical, 3/13/09 (specification never
suggested that the claimed spike could be
anything other than pointed); Baldwin
Graphic Systems, 1/15/08)
- Capture scope of the actual invention - in

reviewing the intrinsic record to construe the
claims, the CAFC strives to capture the
978
scope of the actual invention, rather than
strictly limit the scope of claims to disclosed
embodiments or allow the claim language to
become divorced from what the
specification conveys is the invention
Phillips (Retractable Techs., 7/8/11
(construing term body as limited to a one-
piece body was required to tether the
claims to what the specifications indicate the
inventor actually invented; see also J.
Plager, concurring emphasizing the above
rule, and stating the purposes for which
[patents] exist, including the obligation to
make full disclosure of what is actually
invented, and to claim that and nothing
more; also highlighting Judge Louries
excellent dissent in Arlington Indus.,
where he opined that you should get what
you disclose; see also C.J. Rader,
dissenting) [petition for rehearing en banc
was denied on 10/31/11; J. Moore, joined
by C.J. Rader, dissented from the denial
of the petition, and J. OMalley dissented
separately])
Fine line between the two axioms
- Fine line between the two axioms reading a

claim in light of the specification, and not reading
a limitation (e.g., examples) into the claim from
the specification - Comark (AIA Engg, 8/31/11;
Retractable Techs., 7/8/11; Arlington Indus.,
1/20/11 (instrinsic evidence revealed no intent to
limit term spring metal adaptor by using it in a
manner that excluded unsplit adaptors; see also J.
Lourie, dissenting); Epistar, 5/22/09 (term
substrate was not limited to the single layer
979
shown in the drawings); Abbott Labs, 5/18/09;
Kyocera Wireless, 10/14/08; Decisioning.com,
5/7/08; MBO Labs, 1/24/07 (drawings); Pfizer,
8/2/06 (examples); Aquatex, 8/19/05; Astrazeneca,
9/30/04; Innova/pure water, 8/11/04 (nose of
wax); Liebel-Flarsheim, 2/11/04)
- CAFC recognizes that the distinction

between using the specification to interpret
the meaning of a claim and importing
limitations from the specification into the
claim can be a difficult one to apply in
practice (SkinMedica, 8/23/13) In the
end, there will still remain some cases in
which it will be hard to determine whether a
person of skill in the art would understand
the embodiments to define the outer limits
of the claim term or merely to be exemplary
in nature - Phillips (Voda, 8/18/08;
Decisioning.com, 5/7/08; Chamberlain
Group, 2/19/08 (limitations not imported);
SafeTCare Mfg., 8/3/07 (no danger of
importing limitations to term pushing
force, because the specification was used
merely to understand what the patentee had
claimed and disclaimed))
- Importing limitations into a claim from the

specification is fraught with danger
Phillips (Arlington Indus., 1/20/11; MBO
Labs, 1/24/07); See also Sanofi-Aventis,
9/10/09 (nonprecedential - district court
erred in construing the term optically pure
oxaliplatin narrowly based on the
specification and PH, stating that the CAFC
has repeatedly warned of the danger of
reading limitations from the specification
into the claim Phillips)
980
- Mindful of the precaution not to
incorporate into the claims limitations
only found in the specification
(Ormco, 8/24/07)
Clear disclosure is necessary for importing limitation
- Preferred embodiments are not to be read into the

claims, unless the specification makes clear that
the patentee intends for the claims and the
embodiments to be strictly coextensive - Phillips
(Plantronics, 7/31/13 (n.1); Flo Healthcare
Solutions, 10/23/12 (affirming the PTAB that
claims were unpatentable over a prior art reference
where an embodiment argued by the patentee to be
within the claims was not required by the patent to
limit the term height adjustment mechanism);
Marine Polymer, 3/15/12 (en banc (5-5)) (see
dissent description of the invention was made
in the context of a specific example); Dealertrack,
1/20/12 (list of examples was non-limiting based
on the context); Silicon Graphics, 6/4/10; Kinetic
Concepts, 2/2/09 (J. Dyk, dissenting);
Decisioning.com, 5/7/08 (specification made clear
that the term remote interface excluded
consumer-owned personal computers based on
describing the invention as a kiosk; see also J.
Linn, dissenting finding no disclaimer of claim
scope); Tivo, 1/31/08 (patent referred to the
invention as a whole, rather than merely one
embodiment of a broader invention); Acumed,
4/12/07 (neither the specification nor PH criticized
or distinguished embodiments having broader
scope than the preferred embodiment
(perpendicular), and statement in the
specification admitted that the preferred
981
embodiment may not always be ideal); MBO Labs,
1/24/07; Pfizer, 8/2/06; JVW Enterprises, 10/3/05);
See also In re SP Controls, 12/21/11
(nonprecedential rule is particularly so in a
reexamination where claims are given their
broadest reasonable construction citing In re
Bigio); Southern Mills, 5/14/10 (nonprecedential
clear statements in the specification limited term
3-end knit and did not describe preferred
embodiment); Respironics, 12/16/08
(nonprecedential preselection of pressure
magnitudes was not merely a preferred
embodiment); Medegen, 11/20/08
(nonprecedential elastomeric plugs described
consistently throughout the specification was a
preferred embodiment only of the claim term
plug); Uniloc USA, 8/7/08 (nonprecedential
split decision, including different interpretations of
for example in the specification); See also
- Specification must be read in light of its

purposes in order to determine whether the
patentee is setting out specific examples of
the invention to accomplish those goals, or
whether the patentee instead intends for the
claims and the embodiments in the
specification to be strictly coextensive;
[t]he manner in which the patentee uses a
term within the specification and claims
usually will make the distinction apparent
Phillips (Decisioning.com, 5/7/08)
- Limiting the claims based on the

specification, e.g., (preferred) embodiments,
is generally not permitted absent a clear
disclosure that the patentee intended the
claims to be limited Phillips, Teleflex
982
(Aria Diagnostics, 8/9/13 (rejecting the
district courts narrow construction of term
paternally inherited nucleic acid where the
specification, rather than limiting claim
scope, stated that the examples do not in
any way limit the scope of the invention
and one of the examples lacked the limiting
feature); Plantronics, 7/31/13 (n.1: no basis
for disclaimer); Deere, 12/4/12; Aventis
Pharma, 4/9/12 (claimed perfusion was
not limited to satisfying certain safety or
efficacy standards, where such limitations
were not required by the language of the
claims or specification); MySpace, 3/2/12
(construing term database broadly where
the written description was devoid of a clear
indication that the invention should be
limited to a relational database); Falana,
1/23/12 (rejecting argument that preferred
feature be read into chemical compound
claim); Dealertrack, 1/20/12; Retractable
Techs., 7/8/11 (C.J. Rader, dissenting
construing the term body according to its
ordinary meaning, where neither the claim
language nor the written description
evince[d] intent by the patentee to limit the
scope of body to one-piece bodies);
American Calcar, 6/27/11 (narrowly
construing term source based on the
description in the specification citing
Abbott Labs); Hologic, 2/24/11
(specification was consistent in limiting
term asymmetry about a longitudinal
axis); *Arlington Indus., 1/20/11 (not
importing split limitation into claim in
part because only one of four embodiments
described in the patent was expressly
described as having the limitation; vs. J.
983
Lourie, dissenting all four embodiments of
the claimed spring metal adaptor have the
limitation whos correct?); Akamai Techs.,
12/20/10 [vacated and en banc review
granted, on 4/20/11]; Linear Tech., 5/21/09;
Abbott Labs, 5/18/09; DSW, 8/19/08; Tivo,
1/31/08 (using terms must and
necessary to describe embodiment limited
scope of invention); Sinorgchem, 12/21/07
(lexicographer rule applied); Ormco,
8/24/07; Andersen, 1/26/07; MBO Labs,
1/24/07); See also Mikkelsen, 8/16/13
(nonprecedential); In re Rembrandt, 9/13/12
(nonprecedential limiting term signal
point to two dimensions citing i4i (cited
in disclaimer section); In re SP Controls,
12/21/11 (nonprecedential); Warsaw
Orthopedic, 1/26/11 (nonprecedential
patents did not assign a specific, narrow
meaning to the challenged terms, and thus
they were properly construed in light of their
ordinary meanings); Amazin Raisins Intl,
10/31/08 (nonprecedential narrow
moisture content for term dried fruit clear
from the specification); See also
- Absent contravening evidence from

the specification or PH (disclaimer,
special definition, or ambiguous claim
term), plain and unambiguous claim
language controls the construction
analysis Northern Telecom (Aventis
Pharma, 4/9/12 (disclaimer or
lexicography required citing
Thorner); Thorner, 2/1/12 (disclaimer
or lexicography required); Retractable
Techs., 7/8/11 (C.J. Rader,
984
dissenting); Arlington Indus., 1/20/11
(see also J. Lourie, dissenting); Linear
Tech., 5/21/09 (terms second circuit
and third circuit were defined
broadly to not require entirely
separate and distinct circuits); DSW,
8/19/08 (district court improperly
imported limitations into broad
method claims from apparatus claims
and the specification)); See also
Reckitt Benckiser, 7/7/11
DSW); MEMS Tech. Berhad, 6/3/11
DSW, construing term electrically
coupled broadly with the help of
expert testimony based on its plain
and unambiguous meaning)
- Boilerplate language (e.g., regarding

examples) restricting claim to the
examples would improperly import
limitations from the specification into
the claims especially true when the
specification states that [t]hese
examples are illustrative and are not
to be read as limiting the scope of the
invention as it is defined by the
appended claims. (Aventis Pharma,
4/9/12 (term perfusion given its
ordinary meaning in part because the
specification expressly instructed that
the disclosed examples are not to be
considered as limiting the invention);
Dealertrack, 1/20/12 (rote language
along with additional context of list of
examples (including for example
and need only provide) were non-
985
limiting of the scope of term
communications medium); Kinetic
Concepts, 2/2/09 (J. Dyk, dissenting);
Pfizer, 8/2/06); See also Mikkelsen,
8/16/13 (nonprecedential relying in
part on boilerplate language for not
limiting claims to an embodiment);
Aspex Eyewear, 8/1/08
(nonprecedential term frame not
limited to requiring rims, where the
specification never mentioned or
described rims, although rims were
illustrated in the figures, AND the
specification made clear that the
precise configuration of the
components of the glasses could be
modified and still be within the scope
of the claims)
- Improper importation of limitations

from the specification vs. clear
disclaimer district courts walk the
tightrope Phillips (Andersen,
1/26/07)
- Required vs. recommended - unless

required (as opposed to
recommended) by the specification,
limitations not in the claims should
not be imported from the specification
(Aventis Pharma, 4/9/12 (not reading
safety or efficacy limitations into the
claims where not required by the
claims, specification or PH); North
American Container, 7/14/05; Kinik,
3/25/04); See also Jang, 8/22/12
(nonprecedential improperly added
unattached limitation was not
986
required by the specification,
distinguishing ICU Medical)
- Disclosed embodiment constitutes the

invention itself instead of a preferred
embodiment when specification read as a
whole, the limitation is part of every
embodiment (Regents of U. Minn., 6/3/13
(affirming the district courts construction
limiting claims to require two separate disks
attached together, stating that a device
formed by attaching two disks together is
not just the preferred embodiment of the
invention; it is the only one described
citing Gen. Am. Transport); Interdigital,
8/1/12 (preferred embodiment and not the
invention as a whole); Eon-Net, 7/29/11;
American Piledriving, 3/21/11 (narrow
construction of term eccentric weight
portion where everything in the
specification was consistent with a limiting
description based on structure, rather than
function; the rule above is especially true
where other statements and illustrations in
the patent are consistent with the limiting
description); Akamai Techs., 12/20/10
(limitation was the only method described)
[vacated and en banc review granted, on
4/20/11]; Edwards Lifesciences, 9/22/09
(term graft limited to intraluminal graft);
Netcraft, 12/9/08 (narrow construction based
on the specifications repeated use of the
phrase the present invention as describing
the invention as a whole requiring that the
claimed third party provide internet access
to customers); Decisioning.com, 5/7/08
(term remote interface defined as a kiosk
and thus excluding consumer-owned
987
computers was the invention itself);
Ormco, 8/24/07; Andersen, 1/26/07
(invention as a whole Microsoft, Alloc);
Ventana Medical Systems, 12/29/06 (J.
Lourie, dissenting - essence of invention);
Varco, 2/1/06; Seachange Intl, 6/29/05;
Gillette, 4/29/05 (dissent); Chimie, 4/11/05;
Astrazeneca, 9/30/04; Gaus, 4/1/04; Liebel-
Flarsheim, 2/11/04; Microsoft, 2/3/04;
Alloc, 9/10/03); See also Creative Integrated
Sys., 6/3/13 (nonprecedential the district
court erred (applying the rule above from
C.R. Bard) where the statements relied on
described only the figure 7 embodiment, and
the specification and drawings described
over a dozen other improvements to
components of the circuitry and each was
described as the invention, stating that the
principle has no application where other
statements and illustrations make it clear
that the limitations do not describe the
invention as a whole citing American
Piledriving); In re Rembrandt, 9/13/12
(nonprecedential specification clearly
limited the invention to a particular form,
using two-dimensional signal points);
Lydall, 9/8/09 (nonprecedential term
fibrous batt of fibers was limited to the
preferred three-layered embodiment
described in the specification as the
invention itself); Purechoice, 6/1/09
(nonprecedential claimed invention was
narrower than the claim language (air
quality) might imply, making it proper to
limit the claims, citing Alloc); Boss Indus.,
5/28/09 (nonprecedential term base
section was not improperly limited to a
preferred embodiment, but was construed
988
according to the entirety of each patents
intrinsic evidence citing Phillips, Alloc
(specification read as a whole requires a
particular claim construction)); Medegen,
11/20/08 (nonprecedential majority held
that the elastomeric plug described
consistently throughout the specification
was a preferred embodiment only of the
claim term plug and was not central to
the invention itself, which is directed to
reducing retrograde flow; see also D.J.
Walker, dissenting - arguing that the
elastomericity feature of the plug was
essential to the invention in that the plug
without the feature was inoperable); See also
- Although cannot import limitations

from the specification into claims,
claim term may be given a narrow
definition consistent with the written
description and extrinsic evidence
(dictionaries) (Mangosoft, 5/14/08
(term local as relates to computer
systems); Aquatex, 8/19/05 (term
fiberfill limited to commercial
examples in the specification))
- Claims cannot enlarge what is

patented beyond what the inventor has
described as the invention Biogen;
thus, a narrower construction may be
reached, limited to the embodiment(s)
disclosed in the specification, when
the claims themselves, the
specification, or the PH clearly
indicate that the invention
encompasses no more than that
989
confined structure or method Liebel-
Flarsheim (Akamai Techs., 12/20/10
[vacated and en banc review
granted, on 4/20/11]; Abbott Labs,
5/18/09 (limiting claim to a
crystalline compound to Crystal A
only, where the specification
described only Crystal A, and not
Crystal B, which was known in the
art)); See also In re Rembrandt,
9/13/12 (nonprecedential citing
MySpace for rule that an inventor is
entitled to claim what he has invented,
but no more, which is determined by
examining the entire patent with
particular focus on the specification)
- Feature read into the claim from the

specification when the claimed
process is described throughout the
specification as having the feature
(Akamai Techs., 12/20/10) [vacated
and en banc review granted, on
4/20/11]; ALSO, PH making clear
that the claimed process has the
feature (Ormco, 8/24/07; Lizardtech,
10/4/05)
- Preferred embodiment or the

invention as a whole? (Falana,
1/23/12 (preferred embodiment only,
distinguishing Alloc); Eon-Net,
7/29/11 (narrow construction where
invention as whole); Akamai Techs.,
12/20/10 (specification as a whole
made clear a narrow invention)
granted, on 4/20/11]; Netcraft,
990
12/9/08 (invention as a whole, based
on the specification); Praxair, 9/29/08
(specific embodiments only of
uniform capillary where limiting
references to the invention were
contradicted by a number of express
statements clearly indicating that
uniformity was a feature only of
certain embodiments, and not all
embodiments of the invention);
Decisioning.com, 5/7/08; Tivo,
1/31/08; Fuji Photo Film, 10/7/04);
See also Creative Integrated Sys.,
6/3/13 (nonprecedential district
court erred in reading statements
describing a preferred embodiment as
the invention as a whole); Medegen,
description of elastomeric plugs as
embodiments only, rather than the
invention as a whole, supported broad
construction of the term plug
according to its ordinary meaning)
- Present invention includes

limitation (i.e., viewed as
critical) not a preferred
embodiment, but the invention
as a whole SciMed (Regents
of U. Minn., 6/3/13 (limiting
claims to require two separate
disks where two disks attached
together was described as the
present invention, and not a
preferred embodiment citing
Tivo and Verizon for rule that:
When a patent thus describes
the features of the present
991
invention as a whole, this
description limits the scope of
the invention.); Parallel
Networks, 1/16/13 (present
invention and being critical
feature of the invention defined
claim scope along with claim
language); Marine Polymer,
3/15/12 (en banc (5-5))
(affirming the district courts
limiting construction of term
biocompatible as having no
reactivity, based on the patents
description of the invention;
see also dissent majority
opinion left out explicit in this
Example language);
Retractable Techs., 7/8/11
(narrowly construing term
body where the invention
was described as a syringe
having a one piece body);
Akamai Techs., 12/20/10
granted, on 4/20/11]; Edwards
Lifesciences, 9/22/09
(intraluminal graft described
as the present invention);
construction based on the
repeated use of the present
invention as describing the
invention as a whole);
Decisioning.com, 5/7/08; Tivo,
1/31/08; NCube, 1/9/06
(dissent)); See also In re
Rembrandt, 9/13/12
(nonprecedential term signal
992
point was correctly limited to
two dimensions); Lucky Litter,
10/6/10 (nonprecedential the
present invention provides . . .
followed by the disputed
limitation did not disclaim
scope from term
predetermined event) Lydall,
9/8/09 (nonprecedential claim
scope was limited where single
embodiment was described as
the present invention); See
also Disclaimer in the
specification
- Invention references are not

limiting if contradicted
elsewhere in the specification
by express statements clearly
indicating that the alleged
limiting feature is a feature only
of certain embodiments and
not all embodiments of the
invention (Marine Polymer,
3/15/12 (en banc (5-5)) (see
dissent); Absolute Software,
10/11/11 (present invention
statement was not limiting);
Praxair, 9/29/08 (invention
references in the specification
to the term capillary being
uniform were contradicted by
other references to only
embodiments being
uniform)); See also Creative
Integrated Sys., 6/3/13
(nonprecedential statements
relating to the invention
993
related only to one of several
embodiments, each of which
the patent described as the
invention)
- Phrase the present invention

in the specification does not
automatically limit the meaning
of claim terms in all
circumstances, but rather such
language must be read in the
context of the entire
specification and prosecution
history Rambus (Absolute
Software, 10/11/11; Netcraft,
12/9/08 (language was limiting
in the context of the
specification))
- Repeated description of term in a limiting

way, thus narrow construction (Eon-Net,
7/29/11; American Calcar, 6/27/11 (narrow
construction given to term messages based
on similarities emphasized between car-mail
and email citing Hologic); Hologic,
2/24/11 (narrow construction for term
asymmetry where consistently described
as meaning about a longitudinal axis);
Akamai Techs., 12/20/10 [vacated and en
banc review granted, on 4/20/11];
Decisioning.com, 5/7/08; Computer
Docking Station, 3/21/08 (disclaimers by
distinguishing the invention from excluded
laptop computers); Andersen, 1/26/07;
Ventana Medical Systems, 12/29/06
(dissent, J. Lourie); MIT, 9/13/06); See also
In re Rembrandt, 9/13/12 (nonprecedential
term signal point was correctly limited to
994
two dimensions, where repeatedly described
in the patent as being limited and there was
no indication that the patentee contemplated
other than a specific improvement to the
two-dimensional system described in a
related prior art patent); Roche Diagnostics,
1/25/12 (nonprecedential consistent
teaching in the specification vs. non-limiting
description of preferred embodiment);
Zircon, 10/5/11 (nonprecedential narrowly
construing term ratio as limited to a value
obtained by division only and not also by
subtraction, based on repeated and
consistent description of ratio meaning
division only while other language was used
for describing subtraction); St. Clair,
1/10/11 (nonprecedential narrow
interpretation based on terms consistent use
in the specification citing Nystrom);
Lydall, 9/8/09 (nonprecedential)
Purposes/advantages/objectives/functions of the invention

limiting?
- Claims are not limited to overcoming problems in

the prior art (Resqnet.com, 10/16/03)
- Claims limited to purposes/advantages/functions of

the invention? (Synthes USA, 10/29/13 (J.
Taranto, dissenting rejecting construction of
structural term fiber system as limited by
function, based on general rule that an invention
claimed in purely structural terms generally resists
functional limitation citing Toro); In re Rambus,
8/15/12 (rejecting construction of term memory
device as not including a memory controller in
view of the speed and efficiency goals of the
995
invention described in the specification,
distinguishing Lisle); Toshiba, 6/11/12; i4i,
3/10/10 (advantages of separate storage were not
limiting); Kinetic Concepts, 2/2/09 (J. Dyk,
dissenting n.4: citing E-Pass); Praxair, 9/29/08
(term flow restrictor was limited to achieving the
overall or fundamental object, purpose of the
invention; vs. term capillary was not limited to
being uniform, which was only one purpose or
object of the invention); Howmedica, 9/2/08
(purposes of the invention did not limit the claim
scope where the invention had multiple purposes
and was not shown that a broad scope would not
achieve any of the described objectives);
Decisioning.com, 5/7/08 (reading the specification
in light of its purposes in limiting term remote
interface to kiosks; the features of kiosks also
showed the inventions purpose); Cordis, 1/7/08
(purpose of invention relied on); Osram GMBH,
10/31/07 (purpose of invention considered); Kim,
9/20/06; Howmedica, 3/28/05 (purpose of
invention considered); E-Pass, 8/20/03)
- Not every benefit flowing from an invention

is a claim limitation (Retractable Techs.,
7/8/11 (C.J. Rader, dissenting citing rule
from Phillips); i4i, 3/10/10 (described
advantages of separate storage did not
require separate storage, and permissive
language (e.g., could be edited can be
created and ability to work) did not
clearly disclaim systems lacking these
benefits))
- Functions of the invention may be

considered in determining the meaning of a
claim term (Microsoft, 10/3/13 (the
specification made clear the terms
996
(resource state information) meaning,
which was consistent with the inventions
function of synchronizing); Gemtron,
7/20/09 (function of the relatively resilient
end edge portion which temporarily deflects
and subsequently rebounds to snap secure
the glass panel into the frame of the claimed
refrigerator shelf required only that the
frame deflect when the glass panel was
inserted into the frame during assembly);
ICU Medical, 3/13/09 (because the term
spike did not suggest the degree to which
the spike must be pointed, adding the
functional language of for piercing the
seal was appropriate, citing Medrad); Kim,
9/20/06; Medrad, 3/16/05)
- Functions of claim term described

only in the specification did not
redefine, and thus limit, the term to
those functions Phillips (Verizon,
9/26/07 (computer server))
- Purpose of the invention relied on in

defining claim term (Arcelormittal France,
11/30/12 (inventions (hot-rolled steel
sheet) purpose based on the specification
included the production of cold-rolled steel
sheet); Technology Patents, 10/17/12
(rejecting the patentees construction of term
receiving user that ignored the very
purpose of the claimed invention (while
criticizing the prior art), which was to allow
users to be paged only in countries they
selected); Toshiba, 6/11/12 (district court
improperly read a purpose requirement
into the claim, where the terms represents
the number of recording planes or uniquely
997
identifies the recording plane were
structural limitations included in the accused
DVDs; see also J. Dyk, dissenting); Fujitsu,
9/20/10 (rejecting broad construction which
ignored power saving purpose of the
invention)); claim term defined functionally
(Gemtron, 7/20/09 (claim required only that
the refrigerator shelf frame be relatively
resilient when the glass panel was inserted
during assembly, based on the claim
language and the purpose of the limitation
consistently described in the specification);
Praxair, 9/29/08 (claims construed based on
the overall object of the invention, to
prevent a hazardous release of gas); Cordis,
1/7/08 (smooth surface meant smooth
enough to be capable of intraluminal
delivery)); See also Lexion Medical, 8/28/08
(nonprecedential incorrect construction of
term departed from the primary purpose of
the invention)
- Claims are not limited to (all) objectives of the

invention - Phillips (Dealertrack, 1/20/12 (security
of the Internet did not limit term communications
medium where security was addressed merely as
an object of the invention); Eon-Net, 7/29/11
(narrow definition of term in the summary of the
invention section furthered the objects of the
invention); Retractable Techs., 7/8/11 (C.J. Rader,
dissenting citing rule); Boston Scientific Scimed,
1/15/09 (alleged important objective of the
invention did not elucidate the meaning of term
long term); Praxair, 9/29/08 (term capillary
not limited to one object of being uniform); Kim,
9/20/06; Seachange Intl, 6/29/05; Liebel-
Flarsheim, 2/11/04); See also Lucky Litter, 10/6/10
998
(nonprecedential ITC improperly limited plain
language of the claim to an object of the invention)
- Objectives of the invention - broad rather

than narrow interpretation given, based in
part on the objects of invention (Lisle,
2/11/05); See also Aspex Eyewear, 8/1/08
(nonprecedential objective of the invention
supported broad interpretation of term
frame where the objective had nothing to
do with whether or not the frames included
rims)
- Claims interpreted based on objects of the

invention, and advantages of the invention
(Fujitsu, 9/20/10 (correct construction of
term synchronously considered power-
saving object of the invention); Praxair,
9/29/08 (claims construed based on the
fundamental or overall object of the
invention, to prevent a hazardous release of
gas); Mangosoft, 5/14/08 (one factor
considered); Ormco, 8/24/07 (claim
limitation was a primary objective of the
present invention, relying on both the
specification and PH in limiting claim
scope); Gaus, 4/1/04); See also Stone
Strong, 10/17/11 (nonprecedential
considering object of the invention
(alignment of blocks without manual
adjustment) in construing term alignment
device)
Unclaimed features are not limiting
- Unclaimed features, embodiments of the invention

cannot limit claims
999
- When the claim addresses only some of the
features disclosed in the specification, it is
improper to limit the claim to other,
unclaimed features Golight (Markem-
Imaje, 9/9/11 (reversing the district courts
determination that the claims required a
method of deriving a tension measurement
(even though some tension measurement
method may have been required to make the
claimed device operational), ruling [t]hat a
device will only operate if certain elements
are included is not grounds to incorporate
those elements into the construction of the
claims; also citing rule from Rambus that
the claims need not recite every component
necessary to enable operation of a working
device; see also J. Newman, dissenting
the claims should have been construed based
on the actual invention described in the
specification (citing Retractable Techs.),
which included methods for measuring
tension, stating: Where a limitation is
placed in a claim by the specification, the
claim must be construed to include the
limitation citing Honeywell and Network
Commerce); Paragon Solutions, 5/22/09
(rejecting argument that figure supporting a
broad construction of the term data
acquisition unit was an unclaimed
embodiment); Broadcom, 9/24/08; Ventana
Medical Systems, 12/29/06); See also Smith
& Nephew, 1/16/13 (nonprecedential
reversing JMOL of no direct infringement of
the claimed method by surgeons, because
the district court improperly limited the term
lodging of an anchor to the unclaimed
requirement of being able to withstand all
1000
forces of surgery, where the specification
taught that the later unclaimed surgeons
tug achieved that feature)
- Patentees are not required to include

within each of their claims all of the
advantages or features described as
significant or important in the written
description; an invention may possess
a number of advantages or purposes,
and there is no requirement that every
claim directed to that invention be
limited to encompass all of them E-
Pass (Retractable Techs., 7/8/11 (C.J.
Rader, dissenting citing rule from
Phillips and disagreeing with the
majority that the term body in
independent claim was limited to a
one-piece structure, which feature was
expressly claimed in dependent
claims, and where reducing the
number of parts required to make the
syringe was only one of numerous
objectives disclosed by the patent);
Revolution Eyewear, 4/29/09
(applying rule in the WD context);
Praxair, 9/29/08 (term capillary not
limited to being uniform, as the
specification did not suggest that each
embodiment must serve the
uniformity objective); Howmedica,
9/2/08; Ventana Medical Systems,
12/29/06)
- When the specification

describes two different
problems present in the prior
art, it is unnecessary for each
1001
and every claim in the patent to
address both problems
Resonate, Honeywell
(applying claim construction
rule to whether new claim in
reissue application was
supported by an adequate WD,
as both serve related functions
in determining whether a claim
is commensurate with the scope
of the specification; also citing
Cordis (CAFC 2006
(nonprecedential)) where the
court applied the rule in the
WD context)
- A single claim need not cover all

embodiments, i.e., a patentee may
draft different claims to cover
different embodiments (Helmsderfer,
6/4/08 (that certain claims did not
cover disclosed embodiments did not
mean that these embodiments were all
excluded from the scope of the
invention, but rather that they were
excluded from the scope of the
particular claims in dispute as written,
stating that [i]t is often the case that
different claims are directed to and
cover different disclosed
embodiments); Intamin, 4/18/07)
Preferred embodiments cannot be read into the claims
- Claims are not limited to (preferred) embodiments

in the specification - Phillips (Aria Diagnostics,
1002
8/9/13; Plantronics, 7/31/13 (district courts
narrow construction improperly limited terms of
broadly drafted claimed ear piece to preferred
elongated embodiment citing Kara Tech.);
Woods, 8/28/12 (This court will not read such a
limitation into the term merely because it is
disclosed in some embodiments); Toshiba,
6/11/12; Arlington Indus., 1/20/11 (see also J.
Lourie, dissenting); Comaper, 3/1/10 (term case
was not limited to the sole embodiment of an
enclosed case in the specification); Kara
Technology, 9/24/09; Praxair, 9/29/08 (statements
in the specification (regarding severe restriction of
gas flow) pertained to specific embodiments rather
than the invention as a whole, as evidenced by the
word typically used to describe the most
common embodiment; also, only specific
embodiments, and not the invention as a whole,
described the term capillary as being uniform,
and thus the specification was not limiting); DSW,
8/19/08; Symantec, 4/11/08 (district court
improperly limited terms computer and
computer system to preferred embodiment of a
single computer); Tivo, 1/31/08 (preferred
embodiment not all embodiments, and thus was
not limiting; embodiment also contradicted
limiting interpretation; example not limiting);
Verizon, 9/26/07 (examples not limiting);
Foremost in Packaging Systems, 5/2/07; Acumed,
4/12/07; MBO Labs, 1/24/07; Ventana Medical
Systems, 12/29/06; Sram, 10/2/06 (improper to
read extraneous limitation from the specification
into the claim when the words of the claim were
clear and covered no less than the recited method);
MIT, 9/13/06; Ormco, 8/30/06; Conoco, 8/17/06;
Pfizer, 11/22/05; Fuji Photo Film, 10/7/04;
Gemstar, 9/16/04); See also Norgren, 5/26/09
(nonprecedential reversing the ITCs
1003
noninfringement determination where a preferred
embodiment shown in the figures having a flange
with four projecting rims -- which was the full
extent to which the patent referred to the claimed
flange as having four projecting rims -- was
improperly imported into the claims); Medegen,
11/20/08 (nonprecedential elastomeric plug
described consistently in the specification was a
preferred embodiment only of the claim term
plug); Uniloc USA, 8/7/08 (nonprecedential
split decision; preferred embodiment only vs.
context of the specification limited claim term)
- When the specifications language does no

more than describe preferred embodiments,
the CAFC has repeatedly warned against
confining the claims to the disclosed
embodiments Phillips (Accent Packaging,
2/4/13 (rejecting the district courts
construction requiring four elongated
operator bodies based on the preferred
embodiment, where the claim language was
not limiting); Comaper, 3/1/10; Kara
Technology, 9/24/09; Epistar, 5/22/09 (term
substrate was correctly not limited to the
single, thick substrate described in the
specification); Cordis, 3/31/09 (PH
disclaimer was not supported by the fact that
the alleged disclaimed embodiment was not
described in any of the patent figures);
CSIRO, 9/19/08 (term block of data not
limited by specific embodiments in the
specification); PSN Illinois, 5/6/08 (use of
may indicated that the description on
which the district court relied improperly for
overly narrow construction of term ready
for mounting was of a preferred
embodiment only, where the summary of the
1004
invention supported the proper broader
construction); Tivo, 1/31/08 (embodiment in
a figure limited the scope of the invention
when not characterized as a preferred
embodiment, as other figures were);
Verizon, 9/26/07; In re Trans Texas
Holdings, 8/22/07; Intamin, 4/18/07;
Acumed, 4/12/07; Ventana Medical
Systems, 12/29/06; MIT, 9/13/06; Ormco,
8/30/06); See also Uniloc USA, 8/7/08
(nonprecedential)
- Although the specification often

describes very specific embodiments
of the invention, the CAFC has
repeatedly warned against confining
the claims to those embodiments
Phillips, Comark (Kara Technology,
9/24/09 (key embodiments were
improperly read into the claims);
Epistar, 5/22/09; Cohesive Techs.,
10/7/08 (term rigid not limited to
monomeric embodiments); CSIRO,
9/19/08; DSW, 8/19/08; In re Trans
Texas Holdings, 8/22/07; Intamin,
4/18/07 (intermediary not recited as
non-magnetic); Acumed, 4/12/07
(transverse in claim vs.
perpendicular in specification)); See
also Mikkelsen, 8/16/13
(nonprecedential the use of a
specific embodiment for illustrative
purposes does not impliedly exclude
other embodiments Virginia Panel)
- Disclosure of singular only does not

disclaim plural the disclosure of a
preferred or exemplary embodiment
1005
encompassing a singular element does
not, without more, disclaim a plural
embodiment (Epistar, 5/22/09 (term
substrate was properly construed to
include one or more layers of
supporting material, despite the
description in the patent of an
embodiment having only a single
layer))
- Description of preferred embodiment

to teach and enable those of skill in
the art to make and use the invention
and to provide a best mode for doing
so Phillips (Intervet, 8/4/10;
Acumed, 4/12/07)
- Preferred embodiment cannot be the

only product covered by the claims; if
it were, the claims themselves would
be unnecessary (PSN Illinois, 5/6/08
(preferred embodiment(s) can be the
only embodiment covered by a claim,
depending on the context of the patent
and the PH, for example, where
embodiments are covered by other
allowed but unasserted claims or
cancelled claims); Acumed, 4/12/07)
- Preferred embodiments not

limiting (e.g., ___ are
preferred instead suggests
broader class) (Pfizer,
11/22/05)
- Preferred vs. required feature of

the invention (Halliburton,
1/25/08 (in the context of
1006
indefiniteness, language of
preference was used; an
advantage of the claimed
invention described as
preferably without and
without need for the asserted
claim limitation did not require
the limitations absence from
the claim))
Ranges, numeric limits
- Numeric limits in the specification
- Claim term expressed in general

descriptive words - term will not
ordinarily be limited to a numerical
range appearing in the written
description or other claims; numerical
range as preferred embodiment and
not used in a context meant to limit
the claims; specification inherently
recognizing the range as not limiting,
e.g., may very widely and usually
falls (Conoco, 8/17/06); See also
Amazin Raisins Intl, 10/31/08
defined term dried fruit narrowly by
implication to have specific range of
moisture content, including in the first
paragraph before describing preferred
embodiments or examples; thus
distinguishing cases holding that
claims written in general, descriptive
words are not limited by a numerical
range in the specification, where the
specifications provided varying
1007
definitions and usage for the disputed
claim terms)
- Numerical limit imported into

claim when included within an
express definition set forth in
the specification (Sinorgchem,
12/21/07 (lexicographer rule
applied; Conoco distinguished;
see also J. Newman, dissenting
numerical limit was
improperly read into claim))
Claim terms usage and context
- Claim terms usage and context in the specification

is considered, but cannot import limitations from
the specification into the claims (Edwards
Lifesciences, 11/13/12 (interpreting term broadly
based on its usage in the specification, while
rejecting the narrower interpretation as improperly
importing limitations); Chamberlain Group,
2/19/08 (no importation of limitations despite
construing term (binary code) narrowly based on
its usage in the specification); Baldwin Graphic
Systems, 1/15/08; Honeywell, 5/25/07; MBO
Labs, 1/24/07; Ventana Medical Systems,
12/29/06; Flex-Rest, 7/13/06; Curtiss-Wright Flow
Control, 2/15/06 (term adjustable construed
narrowly as requiring adjustability during
operation of the claimed system); Callicrate,
10/31/05; Collegenet, 8/2/05); See also
Laserfacturing, 9/17/12 (nonprecedential the
district courts construction of the term sheet as
a broad thin piece of material with generally
uniform thickness was consistent with the terms
1008
use in the patent and its ordinary and customary
meaning)
- Discerning the meaning of a claim term

based on the specification, and the context
of the invention, vs. importing limitations
into the claims from the specification (ICU
Medical, 3/13/09; Decisioning.com, 5/7/08
(limiting term remote interface to kiosks;
see also J. Linn, dissenting no disclaimer
in the specification); Chamberlain Group,
2/19/08; Baldwin Graphic Systems, 1/15/08;
Honeywell, 5/25/07; Intamin, 4/18/07;
Andersen, 1/26/07 (product claims limited to
process); Ventana Medical Systems,
12/29/06 (dispensing; see also dissent, J.
Lourie, narrow construction); Flex-Rest,
7/13/06 (sidewalls); Curtiss-Wright Flow
Control, 2/15/06 (adjustable construed
narrowly))
- Ordinarily skilled artisan would not

construe similar claim terminology so
differently from one usage to another
in the specification (Baldwin Graphic
Systems, 1/15/08 (rejecting the
district courts widely varying
interpretations of claim term
(fabric) and related claim terms))
- Disclosed embodiments (including preferred

embodiments) in the specification supported
claim construction (North American
Container, 7/14/05)
- Claims cannot be limited to preferred

embodiments, but the patentees
choice of preferred embodiments can
1009
shed light on the intended claim scope
(Lucent Techs., 5/8/08; Mitutoyo,
9/5/07 (specification expressly
supported the district courts broad
construction); Ventana Medical
Systems, 12/29/06; Boss Control,
6/8/05)
- Implicit definition of claim term in the

specification vs. specific embodiments do
not in and of [themselves] mean that the
claims are limited to the disclosed
embodiments, even when all the disclosed
embodiments support a narrow construction
for the claim term (Arlington Indus., 1/20/11
(see also J. Lourie, dissenting); Ventana
Medical Systems, 12/29/06)
- Narrow disclosure in the specification

does not necessarily limit broader
claim language Phillips; determine
whether the overall context of the
patent specifically disavows broader
subject matter, under SciMed
(Intamin, 4/18/07)
- Specification that in all respects tells what

the claims mean, as buttressed by statements
in the PH to overcome prior art - limitations
not improperly incorporated, as the claims
required a narrow scope; to give the claims
broader meaning would ignore the totality
of the facts of the case and exalt slogans
over real meaning (Ormco, 8/24/07)
Drawings are not limiting
1010
- Drawings are not meant to limit claim scope
(Plantronics, 7/31/13 (rejecting argument for
narrow claim scope limiting the claimed stabilizing
members to being elongated structures where the
figures did not evidence their actual dimensions,
stating that drawings do not define the precise
proportions of the elements and may not be relied
on to show particular sizes if the specification is
completely silent on the issue citing Hockerson-
Halberstadt); Arlington Indus., 1/20/11; MBO
Labs, 1/24/07; Varco, 2/1/06)
- Patent coverage is not necessarily limited to

inventions that look like the ones in the
figures to hold otherwise would be to
import limitations into the claim from the
specification, which is fraught with danger -
Phillips; drawings are not meant to represent
the invention or to limit the scope of
coverage defined by the words used in the
claims themselves Gart (Arlington Indus.,
1/20/11 (citing MBO Labs; see also J.
Lourie, dissenting); MBO Labs, 1/24/07)
- Drawings to construe claims (Saffran, 4/4/13

(figures supported narrow meaning of term
device as a sheet, where sheet was disclosed in
all of the figures); Synqor, 3/13/13 (figures
supported construction); Parallel Networks,
1/16/13 (claim construction was supported by
figures, and which did not describe the accused
website systems); Technology Patents, 10/17/12
(figure confirmed that the term receiving user
meant a person rather than a device); Sandisk,
10/9/12 (drawings and specification supported
broader claim construction including both of two
disclosed method embodiments; see also J. Reyna,
dissenting); Outside the Box Innovations, 9/21/12
1011
(affirming the district courts narrow construction
of term between that was based on the figures
and written description; see also J. Newman,
dissenting the court improperly excluded the
preferred embodiment shown in a figure which
was the infringing product) ; Fujitsu, 9/20/10
(rejecting the district courts narrow construction
which was in direct contradiction to disclosure in
the patent figures); Erbe Elektromedizin, 5/19/09
(rejecting construction of term working channel
which was inconsistent with the labeling of
elements in the figures)); See also Altair
Engineering, 3/9/11 (nonprecedential figures
limiting where the patentee specifically referenced
them displaying the preferred embodiment when
explaining what was meant by the term closely-
spaced); St. Clair, 1/10/11 (nonprecedential
figures consistent with narrow interpretation)
- Drawing of single embodiment supporting a

narrow claim construction (Stumbo,
11/28/07); See also Altair Engineering,
Single embodiment in the specification does not necessarily

limit the claims
(Plantronics, 7/31/13 (n.1: no basis for disclaimer);

Saffran, 4/4/13 (construing term device as a sheet,
rather than confining the term to a single embodiment,
would accord with every embodiment and description in
the patent, as well as the PH); Deere, 12/4/12 (sole
embodiment of claimed rotary cutter as a device mounted
to a tractor was not limiting (as to avoid prior art) where
the patentee did not indicate that intended to exclude
consumer lawn mowers); Energy Transportation Group,
10/12/12 (not importing into the plain and ordinary
1012
meaning of programmable a single artificial
temporally-dictated limitation of an external
programming embodiment, including where the
specification clearly contemplated the terms broader
meaning); Woods, 8/28/12; Toshiba, 6/11/12;
Dealertrack, 1/20/12; Arlington Indus., 1/20/11; Enzo
Biochem, 3/26/10; Trading Techs., 2/25/10 (single
embodiment only described along with the inventors
lexicography limited the term static); Kara
Technology, 9/24/09; Martek Biosciences, 9/3/09; Abbott
Labs, 5/18/09; Cohesive Techs., 10/7/08 (that all
embodiments described only monomeric particles could
not limit otherwise broad claim term rigid);
Howmedica, 9/2/08; Symantec, 4/11/08 (terms
computer and computer system were not limited to a
single computer); Saunders Group, 6/27/07; Intamin,
4/18/07; Acumed, 4/12/07; MIT, 9/13/06; Conoco,
8/17/06; Agfa, 6/26/06; Honeywell, 6/22/06 ((term fuel
injection system component limited by the specification
to the only embodiment, a fuel filter)); NCube, 1/9/06
(dissent); Cross Medical Prods., 9/30/05; Gemstar,
9/16/04; Kinik, 3/25/04; Liebel-Flarsheim, 2/11/04;
Golight, 1/20/04)
- Claims are not limited to preferred embodiment(s),

even if only a single embodiment is disclosed in
the specification; the depiction of a single
embodiment in a patent, standing alone, does not
necessarily limit otherwise broad claim language
to that depicted scope Phillips (Aria Diagnostics,
8/9/13; Deere, 12/4/12; Energy Transportation
Group, 10/12/12; Woods, 8/28/12; Toshiba,
6/11/12; Dealertrack, 1/20/12 (construing term
communications medium not to exclude the
Internet, ruling that the disclosure of multiple
examples does not necessarily mean that such list
is exhaustive or that non-enumerated examples
should be excluded); Arlington Indus., 1/20/11;
1013
Enzo Biochem, 3/26/10 (noting that lack of
disclosure of direct detection was not dispositive
for limiting claims to indirect detection); Trading
Techs., 2/25/10; Kara Technology, 9/24/09;
Howmedica, 9/2/08 (claims not limited to two
condyles having the claimed features despite every
disclosure in the specification depicting this
embodiment); Intamin, 4/18/07; MIT, 9/13/06;
Conoco, 8/17/06); the reason for this is that, of
necessity, any depiction of a claim term will
necessarily show the term arranged in a particular
manner thus, without any indication beyond the
necessary depiction to suggest limiting the
invention to a single embodiment, broader claim
language cannot carry that unexpressed and
unintended (at the time of patent drafting)
limitation (Agfa, 6/26/06 (depicting a stack; see
also J. Newman, dissenting the claims and entire
descriptive text made clear that the invention is
directed to the preferred embodiment); See also
Jang, 8/22/12 (nonprecedential the district court
impermissibly imported an unattached limitation
into the claims based on the examples, which
although showed only connecting strut columns
with unattached connecting struts, the specification
did not require that the connecting struts be
unattached distinguishing ICU Medical);
Warsaw Orthopedic, 1/26/11 (nonprecedential
rejecting argument for narrow claim scope where
the specification, including the summary of the
invention, clearly indicated that the claims were
not limited to the single described embodiment);
Medegen, 11/20/08 (nonprecedential description
of only a single embodiment (elastomeric plug) of
the claim term plug was not limiting; also stating
that the single embodiment argument was
specifically rejected by Phillips)
1014
- Without more, a court will not limit
claims to a preferred embodiment (Tivo,
1/31/08 (example not limiting, when neither
the written description nor the claims state
or imply a limited claim scope); Cross
Medical Prods., 9/30/05 (unitary structure);
Free Motion Fitness, 9/16/05; Sandisk,
7/8/05; Gemstar, 9/16/04)
- Claims are not necessarily limited to a single

embodiment only in the specification, unless the
patentee has demonstrated a clear intention to
limit the claim scope; a single embodiment is not a
disavowal of other embodiments Liebel-
Flarsheim (Aria Diagnostics, 8/9/13; Deere,
12/4/12 (specification gave no indication that the
patentee intended to exclude consumer lawn
mowers from the claimed rotary cutter); Energy
Transportation Group, 10/12/12 (claims not limited
where the use of an external computer in the
specification reflected the size and complexity of
computers at the time of filing in 1986);
Dealertrack, 1/20/12 (no clear intention to limit
term selectively forwarding to preferred
embodiment having three possible selections);
Arlington Indus., 1/20/11 (no clear intent shown to
limit term spring metal adaptor to split
embodiments; see also J. Lourie, dissenting); Enzo
Biochem, 3/26/10 (not resolving issue where
limiting construction was supported by the claim
language and PH); Trading Techs., 2/25/10
(because of the clear intention requirement, the
CAFC examined other claims to detect any
contrary intentions); Linear Tech., 5/21/09; Abbott
Labs, 5/18/09 (clear intention to limit claim to a
crystalline compound to Crystal A, based on the
claims, specification and PH); Howmedica, 9/2/08
(no clear intention to limit claim scope);
1015
Decisioning.com, 5/7/08 (citing rule from Liebel-
Flarsheim, 2/11/04, where term remote interface
was otherwise limited by the specification); Tivo,
1/31/08 (example not limiting); Saunders Group,
6/27/07; Conoco, 8/17/06; Seachange Intl,
6/29/05; Gillette, 4/29/05; Fuji Photo Film,
10/7/04; Home Diagnostics, 8/31/04; Innova/pure
water, 8/11/04; Liebel-Flarsheim, 2/11/04); See
also Extreme Networks, 9/30/10 (nonprecedential
single embodiment defined the claim scope);
Lydall, 9/8/09 (nonprecedential terms fibrous
batt of fibers and tufts of fibers were limited to
the single embodiment consistently described in
the specification as the invention itself); See also
Clear disclosure is necessary for importing
limitation
- Clear intention or clear disclaimer

required to restrict claim scope using
words or expressions of manifest exclusion
or restriction Liebel-Flarsheim (Aria
Diagnostics, 8/9/13 (rather than limiting
claim scope, the specification stated that the
examples do not in any way limit the scope
of the invention.); Energy Transportation
Group, 10/12/12; Arlington Indus., 1/20/11;
i4i, 3/10/10 (embodiments generally);
Trading Techs., 2/25/10 (clear intention to
limit the term static to single manual re-
centering embodiment); Martek Biosciences,
9/3/09; Linear Tech., 5/21/09; Abbott Labs,
5/18/09; Saunders Group, 6/27/07; Conoco,
8/17/06; Honeywell, 6/22/06 (term fuel
injection system component limited by the
specification to the only embodiment, a fuel
filter); NCube, 1/9/06 (dissent); Prima Tek
II, 6/22/05; Gillette, 4/29/05; Playtex,
3/7/05; Gemstar, 9/16/04; American
1016
Academy of Sciences, 5/13/04; Liebel-
Flarsheim, 2/11/04); See also Disclaimer in
the specification
- Clear statement(s) in the specification

describing the (present) invention
narrowly limit claim scope to the
single embodiment (Trading Techs.,
2/25/10 (limiting the meaning of the
term static based on reference to
the present invention (rather than
a preferred embodiment or just an
embodiment) - citing Honeywell);
Honeywell, 6/22/06 (where clear
statement in the specification
describing the invention narrowly
(fuel filter), and where no other
embodiment was disclosed or
suggested, a broad claim term (fuel
injection system component) was
limited to single embodiment in the
specification - not a preferred
embodiment)); See also Lydall, 9/8/09
(nonprecedential terms fibrous batt
of fibers and tufts of fibers were
limited to single embodiment which
was consistently described as the
present invention citing
Honeywell)
- Essential part of the invention - the

patentees statement that the
limitation in question was the only
way to satisfy a claim requirement
would show an intention to narrow
claim scope (Saunders Group,
6/27/07)
1017
- Whether or not restrictive language in
the specification is sufficient to limit
claim scope depends on the context
(Dealertrack, 1/20/12 (context made
clear that list of specific examples
was not to be definitive of the scope
of term communications medium);
Saunders Group, 6/27/07 (claim scope
was not limited in context where
claim differentiation applied))
Textual reference in the claim is necessary
- Textual hook is needed in claim language for a

limitation to be imposed from the specification,
i.e., claim term susceptible to clarification by the
specification (Ormco, 8/24/07, D.J. OMalley,
dissenting; MBO Labs, 1/24/07; NTP, 8/2/05; see
also Black & Decker, 1/7/08 (nonprecedential))
- Claim must explicitly recite a term in need

of definition before a definition may enter
the claim from the written description, even
if the feature is an essential element of the
invention (MBO Labs, 1/24/07)
- Importing limitations only when interpreting

specific claim language (DSW, 8/19/08
(citing Intervet/DuPont rule contrasting
interpreting what is meant by a word in a
claim from adding an extraneous limitation
appearing in the specification, which is
improper); Curtiss-Wright, 2/15/06
(adjustable); Perdue Pharma, 2/1/06)
1018
Specification need not describe future embodiments
- Well established that an applicant is not required to

describe in the specification every conceivable and
possible future embodiment of his invention SRI
Intl (Energy Transportation Group, 10/12/12 (not
importing a temporally-dictated limitation of
external programming into the plain and ordinary
meaning of term programmable, including where
the specification clearly contemplated the broader
meaning); Innogenetics, 1/17/08 (claim scope was
not limited to described embodiments when the
specification contained broad statements about the
claimed method: detection may be by . . . or any
other method comprised in the state of the art))
IV. INFRINGEMENT
A. 35 USC 271(a) direct infringement
General rules of direct infringement
Generally
- (a) Except as otherwise provided in this title, whoever

without authority makes, uses, offers to sell, or sells any
patented invention, within the United States or imports
into the United States any patented invention during the
term of the patent therefor, infringes the patent. 35
USC 271(a)
- Patent infringement is a tort (Akamai Techs., 8/31/12 (en

banc); Wordtech Systems, 6/16/10)
- Direct infringement is a strict liability tort (Akamai

Techs., 8/31/12 (en banc))
1019
- Direct infringement requires no more than the
unauthorized use of a patented invention, i.e., a
direct infringers knowledge or intent is irrelevant
(Global-Tech v. SEB, 5/31/11 (S.C.) (n.2)); See
also Other Infringement Issues - Direct
infringement is a strict liability offense
- Liability for direct infringement under Section 271(a)

requires that a party commit all the acts necessary to
infringe the patent, either personally or vicariously; for a
method claim, the accused infringer must perform all the
steps of the claimed method, either personally or through
another acting under his direction or control (Aristocrat
Techs., 3/13/13 (affirming no direct infringement);
Move, 3/4/13 (citing Akamai Techs.); Akamai Techs.,
8/31/12 (en banc))
- Patent is infringed if a single claim is infringed (Grober,

7/30/12)
- Burden remains with the patentee to prove infringement,

not on the defendant to disprove it (Medtronic, 9/18/12
(exception for DJ action for noninfringement by licensee
against the patentee-licensor the accused infringer, and
not the patentee, has the burden of persuasion; citing case
law that the patentee filing a claim or counterclaim (in a
DJ action) for infringement bears the burden of proving
that infringement); Welker Bearing, 12/15/08)
- Invalid claims cannot give rise to liability for

infringement - Marrin (Lazare Kaplan, 4/19/13 (citing
Medtronic); Magsil, 8/14/12 (affirming the district
courts finding of noninfringement, based on affirming
invalidity for lack of enablement); Exergen, 8/4/09)
- Each act of patent infringement gives rise to a separate

cause of action, which dates from the moment of
infringement (DuPont, 5/14/08 (the timing of issuance of
1020
a certificate of correction was not relevant to PI relief,
citing Hazelquist); Hazelquist, 2/9/06)
- Evidence of copying is not relevant to whether claims are

infringed, either literally or by equivalents Allen Engg
(Depuy Spine, 6/1/09 (addressing willfulness))
Infringement determined in two steps
- Infringement determined in two steps: first, the claim

must be properly construed to determine its meaning and
scope, and second, (the jury) determining whether every
claim limitation, or its equivalent, is found in the accused
device or process Markman (S.C.) (TecSec, 10/2/13 (J.
Reyna, dissenting claim construction is a necessary part
of a noninfringement determination, and claim
construction and sufficiency of the evidence showing an
act of infringement (proof of infringement) are not
alternative grounds on which to find noninfringement,
but rather are part of a singular analysis citing Baron
Services; see also n.2 discussing the all elements rule);
Baron Services, 5/7/13 (n.13: emphasizing (in a lengthy
footnote) the importance and need for the district court
on remand to construe the relevant claim terms before
determining infringement on SJ); Presidio Components,
12/19/12 (expert testimony provided the jury with
substantial evidence that the accused capacitor had a
substantially monolithic body); ActiveVideo Networks,
8/24/12; Grober, 7/30/12 (district court failed to perform
both the first step for all asserted claims and the second
step in granting SJ of noninfringement sua sponte);
Absolute Software, 10/11/11; Cordis, 9/28/11; Star
Scientific, 8/26/11; Tessera, 5/23/11; Innovention Toys,
3/21/11; Uniloc, 1/4/11; Solvay, 10/13/10; Hearing
Components, 4/1/10; Schindler, 1/15/10 (vacating SJ of
noninfringement, modifying the district courts scope of
prosecution disclaimer); Intellectual Science, 12/15/09
1021
(affirming SJ of noninfringement where expert testimony
failed to show literal infringement of a means-plus-
function limitation); Wavetronix, 7/29/09; DSW, 8/19/08
(Infringement occurs when a properly construed claim
of an issued patent covers an accused device
Markman); Roche Palo Alto, 7/9/08; Stumbo, 11/28/07;
Elbex Video, 11/28/07; Monsanto, 10/4/07; Warner-
Lambert, 9/21/07; SafeTCare Mfg., 8/3/07; In re
Omeprazole, 4/23/07; Intamin, 4/18/07; Acumed,
4/12/07; MBO Labs, 1/24/07; Planet Bingo, 12/13/06;
Abraxis Bioscience, 11/15/06; Applied Medical
Resources, 5/15/06); See also Applied Medical
Resources, 8/27/13 (nonprecedential); Convolve, 7/1/13
(nonprecedential); See also Infringement cases in
Standards of Review
Claim construction vs. infringement
- Claim construction vs. infringement where the

process of claim construction ends and the literal
infringement analysis begins (Meadwestvaco,
9/26/13 (whether cooling air medium met term
quenching was issue of infringement, not claim
construction); Taurus IP, 8/9/13 (affirming SJ of
noninfringement and rejecting the patentees
argument that issue of whether the term user
included a web surfer was a fact issue for the jury,
rather than a legal issue for the district court);
Teva, 7/26/13 (concluding that whether the
percentages of amino acids in the accused drug
product met the claimed ratio was part of the
district courts infringement analysis, and thus an
issue of fact reviewed for clear error, rather than a
derivative claim construction, an issue of law
reviewed de novo); Versata Software, 5/1/13
(whether term computer instructions could
include source code was a pure factual issue,
where the accused infringer did not ask the district
1022
court to construe term to exclude source code; the
jury as fact-finder (to which high deference was
given) was thus allowed to choose the patentees
experts testimony and documentary evidence
supporting infringement); ePlus, 11/21/12
(rejecting noninfringement argument with respect
to term determining where the infringer was
essentially raising a claim construction argument
regarding the terms meaning in the guise of a
challenge to the sufficiency of the evidence of
infringement, stating that the infringer could and
should have sought the narrow construction);
Interdigital, 8/1/12 (remand necessary where the
ALJ used different definitions of the term
spreading code for purposes of claim
construction and infringement by the accused
system); Thorner, 2/1/12 (whether the disputed
term flexible pad, which the specification
disclosed only that it be a semi-rigid structure,
included the accused hard plastic products was an
infringement issue for remand, and not a claim
construction issue: The task of determining the
degree of flexibility, the degree of rigidity that
amounts to semi-rigid, is part of the infringement
analysis, not part of the claim construction);
Tessera, 5/23/11 (rejecting the patentees argument
that the district court switched to an incorrect
claim construction during the infringement
analysis, where the patentees disagreement
instead was over the issue of infringement, i.e., the
application of the district courts construction to
the accused products); Innovention Toys, 3/21/11
(accused infringer was incorrect that the district
court expanded its construction of the term
movable during the infringement analysis, since
the courts construction, not just its application to
the accused product, included movement during
game set up); Uniloc, 1/4/11 (reviewing jury
1023
verdict for substantial evidence, where claim
construction was not contested, but the application
of that construction to the accused device was
contested); Lazare Kaplan, 12/22/10 (parties
dispute concerned factual questions relating to the
test for infringement for the jury, and not the
proper claim construction of the disputed
(positional accuracy) limitation); Enovsys,
8/3/10 (see J. Newman, dissenting, arguing that the
majority confounded claim construction with
infringement, where the accused infringer
presented at trial defenses to infringement which
the majority held should have been argued instead
as a matter of claim construction; Judge Newman
argued that [a] district court ordinarily does not
resolve all infringement issues through a narrowly
targeted claim construction focused on the accused
device.); Cordis, 1/7/08 (best method for
measuring claim term (wall thickness of stent) was
Q of fact for the jury as part of the infringement
determination, rather than Q of law for the court;
jury was thus entitled to rely on expert testimony);
U.S. Philips, 11/2/07 (issue not decided, whether
something was part of claim construction or should
be left to the jury)); See also ADC Telecom.,
6/16/08 (nonprecedential proper testing method
for infringement was a Q of fact for the jury, and
not a claim construction issue, reviewed de novo)
- A sound claim construction need not always

purge every shred of ambiguity; the
resolution of some line-drawing problems is
properly left to the trier of fact (Acumed,
4/12/07)
1024
Infringement requires that each and every claim
element or step be performed
- Direct infringement requires a party to perform or use

each and every step or element of the claimed method or
product Warner-Jenkinson (S.C.) (Cheese Systems,
8/6/13; Aristocrat Techs., 3/13/13; Move, 3/4/13
(addressing joint infringement of method patent); Accent
Packaging, 2/4/13 (rejecting infringement argument that
would have rendered meaningless ninety degree arc
limitation); Presidio Components, 12/19/12; Mirror
Worlds, 9/4/12; Akamai Techs., 8/31/12 (en banc)
(addressing direct infringement (by divided or joint
infringement) needed for proving induced infringement:
The problem of divided infringement in induced
infringement cases typically arises only with respect to
method patents. When claims are directed to a product or
apparatus, direct infringement is always present, because
the entity that installs the final part and thereby
completes the claimed invention is a direct infringer.);
Meyer, 8/15/12; Powell, 11/14/11 (rejecting the accused
infringers argument, based on Becton Dickinson, that
separate claim elements required separate structures in
the accused product, where the claim language and
specification did not indicate that the terms required
separate structures citing cases); Becton Dickinson,
7/29/10 (accused products lacked all elements, where two
separate recited elements required separate structures; see
also J. Gajarsa, dissenting - the separate recited elements
read on the same structure in the accused products,
arguing that it is well established that a single structure
in an accused device may satisfy two different claim
limitations. . . In the absence of evidence requiring two
structures, the claim language must be interpreted
broadly to read upon an accused product containing the
two claim terms, regardless of whether those elements
are encompassed in one or two structures (emphasis in
the original)); Lincoln National, 6/23/10 (method claim
1025
not infringed); Exergen, 8/4/09; Revolution Eyewear,
4/29/09; Monsanto, 10/4/07; BMC Resources, 9/20/07
[overruled by Akamai Techs., 8/31/12 (en banc)]); See
also Convolve, 7/1/13 (nonprecedential); Travel Sentry,
11/5/12 (nonprecedential); See also Vacarious liability
- To establish infringement, every element and

limitation of the correctly construed claim must be
present in the accused device, literally or by an
equivalent - called the all elements rule
Warner-Jenkinson v. Hilton Davis (S.C.)
(Cephalon, 2/14/13; General Electric, 7/6/12;
Spansion, 12/21/10; Amgen, 9/15/09; DSW,
8/19/08; Warner-Lambert, 9/21/07; Hutchins,
7/3/07; Planet Bingo, 12/13/06; Inpro II Licensing,
5/11/06; See also Applied Medical Resources,
8/27/13 (nonprecedential claim to trocar
construed as requiring lateral movement side to
side was not infringed literally or by equivalents
by the accused trocar that rotated around a fixed
point); See also Infringement cases in
Standards of Review)
- Literal infringement requires that every

limitation set forth in a claim must be found
in an accused product, exactly - Southwall
(Transocean, 11/15/12)
- Inefficient infringement is still

infringement; need not be the optimal
design for infringement Biogen,
Laitram (Precision Links, 6/7/13
(nonprecedential even though strap
opening had to be distorted for
another strap to pass through it for
infringement was a reasonable
position))
1026
- Infringement requires specific instances of
direct infringement or a finding that every
accused device necessarily infringes Ball
Aerosol (Function Media, 2/13/13 (n.7:
evidence supported jury verdict of
noninfringement))
- Additional elements, or improvements, in

the accused product still are infringement if
the claim reads on the accused product
(Amgen, 9/15/09 (attachment of a PEG
molecule to EPO was the addition of an
element, which thus could not negate
infringement, as opposed to a fundamental
chemical transformation which might not
have been infringing); JVW Enterprises,
10/3/05; Lighting World, 9/3/04; Kinik,
3/25/04)
- Infringement requires that every element

and limitation in a correctly construed claim
is embodied in the accused system either
literally or, if embodied by an equivalent, in
compliance with the rules of equivalency as
set forth in Festo (S.C.) and Warner-
Jenkinson (S.C.) and implementing rulings
(Abbott Labs, 5/18/09 (en banc) (applying
the Warner-Jenkinson (S.C.) rule to claim
construction generally, and specifically to
the rule that process terms limit product-by-
process claims); Hutchins, 7/3/07
(addressing literal and equivalents
infringement together, concluding PH
disavowal, and thus also estoppel, based on
claim amendment))
- Separate claim elements can read on the

same structure in the accused product?
1027
(Powell, 11/14/11 (rejecting the accused
infringers argument for separateness based
on Becton Dickinson); Becton Dickinson,
7/29/10 (construing separate claim elements
as requiring separate structures; see also J.
Gajarsa, dissenting well established that a
single structure may satisfy two different
claim limitations)); See also ICHL, 12/22/11
(nonprecedential construing claim
elements (based on the plain language of the
claim (bonded to) and written description,
which disparaged prior art extruded heat
sinks) as requiring separate structures, and
thus excluding extruded or integrally bonded
heat sinks)
- District court must make sufficient fact findings

regarding the accused device (e.g., claim chart)
(Nazomi, 4/11/05)
- In every infringement analysis, the language of the

claims, as well as the nature of the accused
product, dictates whether an infringement has
occurred Fantasy Sports (Finjan, 11/4/10
(addressing infringement of a claim that recites
capability and not actual infringement)); See also
Capable of infringement
- Process or method claims infringement occurs when a

party performs all of the steps of the claimed process
(Cheese Systems, 8/6/13; Aristocrat Techs., 3/13/13;
ePlus, 11/21/12; Matthews Intl, 9/25/12 (no DJ
jurisdiction where no evidence of direct infringement by
the DJ plaintiff); Mirror Worlds, 9/4/12 (affirming JMOL
where the patentee failed to offer substantial evidence
that the accused infringer performed all of the steps in the
claimed methods; also, demonstration to the jury during
trial does not constitute evidence of infringement on
1028
which a claim of infringement can be based); Meyer,
8/15/12 (reversing SJ of direct infringement where the
patentee failed to point to specific instances of
infringement); R+L Carriers, 6/7/12 (infringement of
method patent requires that every step of the method be
performed in the claimed order); Finjan, 11/4/10
(comparing capable of system claims to method
claims); Lincoln National, 6/23/10 (rejecting argument
that contractual obligation of the alleged infringer to
perform each method step showed infringement); i4i,
3/10/10; Lucent, 9/11/09 (software method claim
infringed only when someone performs the method using
a computer running the necessary software); Cardiac
Pacemakers, 8/19/09; Linear Tech., 5/21/09; Monsanto,
10/4/07; BMC Resources, 9/20/07 [overruled by
Akamai Techs., 8/31/12 (en banc)]); See also Tuna
Processors, 4/23/09 (nonprecedential); See also
Apparatus vs. method claims; Joint infringement;
Vacarious liability
- Infringement finding can rest on as little as one

instance of the claimed method being performed
during the pertinent time period (ePlus, 11/21/12;
Mirror Worlds, 9/4/12; Lucent, 9/11/09)
Burden of proof
- Direct infringement the patentee must establish by a

preponderance of the evidence that one or more claims of
the patent read on the accused device or method literally
or under the DOE (Cheese Systems, 8/6/13; Meyer,
8/15/12 (rejecting the district courts direct infringement
analysis on what it assumed happened, rather than on
actual evidence of record); Creative Compounds,
6/24/11; Siemens, 2/24/11; Uniloc, 1/4/11; Spansion,
12/21/10 (affirming the ITCs finding of direct
infringement based on extremely complex and highly
1029
technical arguments and testing by the patentees
expert)); See also Other Infringement Issues Proof of
Infringement
- More likely than not for infringement (Adams,

8/5/10 (standard for showing infringement of
pharmaceutical claim))
- Patentee loses if fails to meet burden, regardless of

whether the accused infringer comes forward with
any evidence to the contrary (Creative
Compounds, 6/24/11)
- Exceptions to the burden resting with the patentee

to prove infringement (Creative Compounds,
6/24/11 (addressing exception for actions alleging
infringement of a process of making claim under
Section 271(g)))
Patentees commercial embodiment not used for

determining infringement
- Commercial embodiment is not used for determining

infringement - infringement, either literal or under DOE,
does not arise by comparing the accused product with a
commercial embodiment of the patentee (Merial, 5/31/12
(district court properly compared the newly accused
product in a contempt proceeding to the commercial
embodiment of the patent, where such an approach was
convenient or expeditious in the context of a summary
contempt proceeding, and stating that there is no blanket
prohibition against comparing the accused product to a
commercial embodiment in an infringement analysis -
Adams); Adams, 8/5/10 (comparing the accused drug
product to the commercial drug embodiment of the patent
was acceptable for showing infringement (i.e., more
likely than not) as long as the embodiment met all claim
1030
limitations - Glaxo); Medtronic Navigation, 4/26/10
(addressing issue of litigation misconduct since product-
to-product comparision is confusing to the jury); Kinetic
Concepts, 2/2/09 (comparison proper to rebut allegation
of copying); Stumbo, 11/28/07; Aquatex, 2/27/07); See
also Unitronics, 12/3/08 (nonprecedential accused
products did not meet all of the claim limitations, with
the court ruling that the words of the claims and all their
elements define the scope of the patented invention, not
embodiments shown in the specification)
- When a commercial product meets all of the claim

limitations, then a comparison to that product may
support a finding of infringement (Adams, 8/5/10
(the CAFC also acknowledging that the accused
product must meet all the claim limitations))
Separate patentability of the accused product does not

preclude infringement
- Separate patentability of the accused product does not

preclude a finding of infringement (General Electric,
7/6/12 (ruling that a separately patented invention may
indeed be within the scope of the claims of a dominating
patent; applying the rule to why patent met the domestic
industry requirement in the ITC); Siemens, 2/24/11
(affirming DOE infringement and rejecting argument that
C&C evidence standard should apply to proving
equivalence when the alleged equivalent is separately
patented); Johns Hopkins, 10/2/08 (n.1))
Make
- Manufacture all of claimed system to infringe

need to combine all claim elements (Centillion
Data Systems, 1/20/11 (accused infringer did not
1031
make the patented invention where made only
part of the claimed system))
Use
- Inquiry as to what constitutes a use of a patented

item is highly case-specific (Medical Solutions,
9/9/08 (no prima facie case of personal jurisdiction
made where there was no use of accused product
at trade show))
- Must practice all of the elements of any one

patent claim (Medical Solutions, 9/9/08)
- Ordinary meaning of use is to put into

action or service NTP (Technology
Patents, 10/17/12; Centillion Data Systems,
1/20/11; Medical Solutions, 9/9/08 (accused
device not put into service at trade show for
an infringing use where not used to heat
medical items))
- Direct infringement of system or

apparatus claims by use to use a
system for purposes of infringement,
a party must put the invention into
service, i.e., control the system as a
whole and obtain benefit from it -
NTP (use of a claimed system is
the place where control of the system
is exercised and beneficial use of the
system obtained) - the party must use
each and every element of the claimed
system to put the invention into
service - but the user need not have
physical control over each claim
element to use the claimed system
1032
(Technology Patents, 10/17/12
(remanding to determine whether
software providers infringed system
claims based on use citing NTP
and Centillion); Advanced Software
Design, 6/2/11 (applying Centillion
rule); Centillion Data Systems,
1/20/11 (claimed system was used
because but for the customers
actions, the entire system would never
have been put into service))
- Whether the mere demonstration or display

of an accused product, even in a commercial
setting, is an act of infringement? (Medical
Solutions, 9/9/08 (personal jurisdiction case,
citing cases holding not a use, including
n.4))
Offer to sell
- Bid to supply goods = offer for sale (Fieldturf Intl,

1/5/06)
- Offer to sell is governed by the norms of

traditional contractual analysis, i.e., make offer
that will be concluded by an acceptance (Superior
Indus., 11/27/12 (citing MEMC Elect. for rule);
Transocean, 11/15/12 (offer to sell was evidenced
by signed contract between parties and schematics
of the infringing device); Transocean, 8/18/10;
Benitec, 7/20/07; Fieldturf Intl, 1/5/06; MEMC
Electronic, 8/22/05)
- Offer to sell is a distinct act of infringement

separate from an actual sale; an offer to sell
differs from a sale in that an offer to sell
1033
need not be accepted to constitute an act of
infringement MEMC Electronic; also, the
damages from an unaccepted offer to sell
and an actual sale would likely be quite
different (August Tech., 8/22/11 (instructing
the district court to take into account the
effect, if any, Transocean has when crafting
an injunction); Transocean, 8/18/10)
- Communications describing the allegedly

infringing materials need price terms to be
an offer for sale MEMC Elect. (Superior
Indus., 11/27/12 (advertising did not
constitute an offer for sale in the absence of
price terms))
- Offer to sell provision prevents the accused

infringer from generating interest in a potential
infringing product to the commercial detriment of
the rightful patentee (Transocean, 8/18/10 (reason
for holding that an offer to sell made outside the
U.S. infringes if the sale occurs within the U.S.);
MEMC Electronic, 8/22/05)
- Offers to sell . . . any patented invention the

patented invention must be offered for sale
(Transocean, 11/15/12 (affirming jurys damages
award where the infringing offer to sell or sale was
shown by a signed contract and schematics of the
infringing device, despite modifications made later
before delivery of the device);Transocean, 8/18/10
(n.4: SJ of noninfringement vacated based on
dispute of facts whether the patented invention was
offered for sale, stating that the offer must be for a
potentially infringing article, and that what was
offered for sale matters, not what was ultimately
delivered to the U.S.))
1034
- Written offer for sale not infringing in absence of
intent to sell infringing product (Fieldturf Intl,
1/5/06)
Sale
- Contract can constitute a sale to trigger

infringement liability a sale is not limited to
the transfer of tangible property, but may also be
the agreement by which such transfer takes place
NTP (Transocean, 8/18/10 (rejecting argument that
the claimed apparatus must have been contructed
and ready for use to have been sold, where there
was a contract to sell a rig that included
schematics))
Territorial reach of 35 USC 271(a) Within the United

States
- Territorial reach of 271(a) is limited; 271(a) is

only actionable against direct infringement that
occurs within the U.S. NTP (Forrester, 5/16/13
(the use of a patented process outside the U.S. is
not an act of patent infringement -- cited as the
basis for ruling that state law business tort claims
concerning conduct occurring entirely in Taiwan
did not involve a substantial patent law question
for federal jurisdiction citing cases); Power
Integrations, 3/26/13 (rejecting foreseeability
argument for compensatory damages based on
worldwide sales); Meyer, 8/15/12; Merial, 5/31/12
(addressing how inducement can occur from a
foreign country); Tianrui Group, 10/11/11
(distinguishing statutory patent law, where the ITC
applied domestic trade secret law to conduct that
occurred in part in China); Finjan, 11/4/10
1035
(performing claimed method one time in Germany
was not an infringement); Spine Solutions, 9/9/10
(modifying injunction that improperly enjoined the
accused infringers extraterritorial activities with
respect to accused products already outside the
U.S.); Cardiac Pacemakers, 8/19/09 (en banc) (the
Supreme Court in AT&T (relating to Section 271(f)
infringement) sent a clear message that the
territorial limits of patents should not be lightly
breached); Abbott Labs, 10/11/07 (injunction not
violated when design around activities occurred
outside the U.S.); Voda, 2/1/07); See also
Marcinkowska, 8/20/09 (nonprecedential
infringement claims were properly dismissed
where not tied to any infringing activities in the
U.S., and allegations spread the term use too
thin)
- Purely extraterritorial conduct cannot

constitute direct infringement of a U.S.
patent (Merial, 5/31/12)
- Presumption against extraterritoriality

(Power Integrations, 3/26/13 (applying rule
to reject claim for foreign damages based on
a foreseeability theory); Tianrui Group,
10/11/11 (presumption did not prohibit the
ITC from applying domestic trade secret law
to conduct that occurred in part in China; see
also J. Moore, dissenting); Cardiac
Pacemakers, 8/19/09 (en banc) (further
supporting the courts holding that Section
271(f) does not apply to method claims))
- Limitation regarding the extraterritorial

scope of 271(a) is a factual element of the
liability claim that must be proven on the
merits, and not a prerequisite for a courts
1036
subject matter jurisdiction (Cordis, 3/31/09
(district court erred by dismissing
infringement claim without prejudice (based
on lack of jurisdiction), instead of with
prejudice, where the question of the accused
products nexus to the U.S. was an element
of the claim, rather than a jurisdictional
requirement, and thus a decision on the
merits was required and not a dismissal for
lack of subject matter jurisdiction, citing
Litecubes); Litecubes, 4/28/08 (affirming the
district courts denial of the defendants
motion to dismiss for lack of subject matter
jurisdiction based on patent and copyright
infringements occurring outside the U.S.);
See also Subject matter jurisdiction
- Limit on the extraterritorial reach of a

statute is a question of statutory
interpretation (what scope did Congress
intend for its exercise of prescriptive
jurisidiction), and not an independent
limitation on the courts authority, subject
matter jurisdiction (Litecubes, 4/28/08
(questions relating to the extraterritorial
reach of the Patent and Copyright Acts held
not to be jurisdictional))
- 271(a) infringement is not precluded even

though a component of a patented system is
located outside the U.S. a claimed system is used
under 271(a) in the place where the system as a
whole is put into service, i.e., the place where
control of the system is exercised and beneficial
use of the system is obtained (Centillion Data
Systems, 1/20/11; NTP, 8/2/05 [CAFC en banc
and Supreme Court review denied])
1037
- Claimed processes are not used within the United
States (and thus infringed) unless each of the steps
is performed within this country (Meyer, 8/15/12;
Finjan, 11/4/10; Gemtron, 7/20/09 (distinguishing
the claimed apparatus from a process claim);
Zoltek, 3/31/06; NTP, 8/2/05)
- Whether the sale or offer to sell a claimed

method infringes a method claim? (Ricoh,
12/23/08 (not answering question, as in
NTP); Or whether method claims are only
directly infringed by use? (vs. under 102(b)
method claim can be invalid by sale see
ANTICIPATION) (NTP, 8/2/05)
- Extraterritorial effects of U.S. patents (Transocean,

8/18/10; Litecubes, 4/28/08 (addressing
jurisdiction to prescribe recognized under
international law, which is a states authority to
subject foreign interests or activities to its laws,
e.g., to reach extraterritorial behavior with
statutes); Fuji Photo, 1/14/05)
- Patent right is limited by the metes and

bounds of the jurisdictional territory that
granted the right to exclude Dowagiac
(U.S.) (Voda, 2/1/07)
- Title 35 is confined to U.S. and its

Territories; extraterritorial expansion of U.S.
patent law contravenes the above rule;
infringement cannot be predicated on acts
wholly done in a foreign country (Voda,
2/1/07; AT&T, 7/13/05, dissent, J. Rader)
- Dismissal of complaint for lack of

standing when infringement not
1038
within the U.S. (Hydril, 1/25/07
(dissent))
- Personal jurisdiction requirement is

independent of the extraterritorial reach of a
federal statute the personal jurisdiction
requirement (which prevents federal courts
from exercising authority over defendants
without sufficient contacts with the United
States) is an important limitation on the
jurisdiction of federal courts over purely
extraterritorial activity that is independent of
the extraterritorial reach of a federal statute
or the courts subject matter jurisdiction
(Litecubes, 4/28/08 n.10 (personal
jurisdiction over the defendant was not
disputed))
- Within the United States (Gemtron, 7/20/09

(infringing acts were within the U.S., even though
the accused products practice of the relatively
resilient limitation of the claimed refrigerator
shelf occurred only during manufacturing in
Mexico); Transcore, 4/8/09; Litecubes, 4/28/08;
MEMC Electronic, 8/22/05 (sale or offer for sale
did not occur within the United States); Intl
Rectifier (1), 3/18/04)
- It is the infringing act making, using,

offering to sell, selling, or importing that
must be within (or into) the United States
(Gemtron, 7/20/09 (apparatus claim was
infringed within the U.S. even though the
relatively resilient limitation was practiced
only during manufacture of the accused
product in Mexico)
1039
- Offer to sell (Transocean, 8/18/10; SEB,
2/5/10 (the CAFC has yet to define the full
territorial scope of the offers to sell offense
in 271(a)))
- Offers to sell . . . within the United

States an offer to sell which occurs
outside the U.S. may infringe if the
sale occurs within the U.S. the
location of the contemplated sale
controls whether there is an offer to
sell within the U.S. (Transocean,
8/18/10 (holding that an offer to sell
made in Norway by a U.S. company
to a U.S. company to sell a product
within the U.S., for delivery and use
within the U.S., constitutes an offer to
sell within the U.S. under Section
271(a))
- Infringing sale can occur outside the U.S. if

delivery and performance of the patented
invention occur within the U.S. Litecubes
(Transocean, 8/18/10 (holding that a
contract between two U.S. companies made
outside the U.S. for the sale of the patented
invention with delivery and performance in
the U.S. constitutes a sale under Section
271(a) as a matter of law))
- Sale occurs within the United States

when the accused products are sold
and shipped directly to customers in
the U.S. f.o.b. or free on board
(which is a method of shipment
whereby goods are delivered at a
designated location, usually at
transportation depot, at which legal
1040
title and thus the risk of loss passes
from the seller to the buyer) MEMC
Elect. (SEB, 2/5/10 (jury instruction
was proper based on which the jury
found infringing sales where the
accused products were delivered f.o.b.
Hong Kong or China, citing
Litecubes, and the record also showed
that the accused infringer intended to
sell the products directly into the
United States); Litecubes, 4/28/08
(substantial evidence of a sale within
the United States to support the jurys
infringement verdict despite that the
accused products were shipped f.o.b.,
and thus title over the goods were
transferred while the goods were still
in Canada))
- Sale of an infringing article, unlike

making and using the article, has
both a physical and conceptual
dimension to it, i.e., can include
different points along the way, and is
not necessarily where legal title
passes N. American Philips, MEMC
Elect. (SEB, 2/5/10; Transcore, 4/8/09
(citing Litecubes); Litecubes, 4/28/08)
Use without authority . . . during the patent term
- All steps of method claim must be performed

during the patent term for infringement (Monsanto,
10/4/07)
- Dependent claim not infringed when steps of

independent claim from which claim
1041
depended occurred before patent issuance
(Monsanto, 10/4/07)
- Section 271(g) requires that the patent be

issued and in force at the time the process is
practiced and the product is made - Mycogen
Plant Science (Monsanto, 10/4/07)
- No infringement when patentee performed steps of

independent claim from which the dependent claim
in suit depended (Monsanto, 10/4/07)
B. 35 USC 271(b) active inducement of infringement
On May 31, 2011, the U.S. Supreme Court in Global-

Tech Appliances v. SEB S.A. held that induced infringement
requires knowledge that the induced acts constitute patent
infringement. The Court based its holding on its earlier holding
in Aro II that contributory infringement under Section 271(c)
also requires knowledge of patent infringement. The Court
rejected the CAFCs deliberate indifference standard (i.e.,
deliberate indifference to a known risk that a patent exists) as
not satisfying the knowledge required by Section 271(b). The
Court, nevertheless, affirmed the CAFCs judgment of induced
infringement because the evidence was sufficient to support a
finding of the defendants knowledge under the doctrine of
willful blindness (well-established in criminal law) -- which
requires that: 1) the defendant must subjectively believe that
there is a high probability that a fact exists, and 2) the defendant
must take deliberate actions to avoid learning of that fact.
Justice Kennedy dissented from the part of the judgment
adopting the doctrine of willful blindness as a substitute for
actual knowedge, instead favoring inferences drawn from
circumstantial facts to prove actual knowledge, which may
include facts of willful blindness.
1042
(Commil USA, 6/25/13 (vacating $63.7 million jury verdict
because of erroneous (and prejudicial) jury instruction in view
of Global-Tech (S.C.) regarding inducement (which included
the old should have known standard from DSU (en banc) for
satisfying the knowledge requirement), where the instruction
plainly recited a negligence standard, which taken literally
would have allowed the jury to find the defendant liable for
inducement based on mere negligence where knowledge is
required; also holding that a good faith belief of invalidity may
negate the requisite intent for induced infringement see below
- Intent required factual determination) [On 10/25/13, the
CAFC denied en banc review (6-5), in which Judge Reyna,
with whom Judges Rader, Newman, Lourie, and Wallach
joined, dissented from the denial of en banc review,
addressing the panel majoritys substantive, precedential
change in patent law by expressly holding that evidence
of an accused inducers good-faith belief of invalidity may
negate the requisite intent for induced infringement
which the majority based on the axiom that one cannot
infringe an invalid patent, and that there is no principled
distinction between a good-faith belief of invalidity and a
good-faith belief of non-infringement for the purpose of
whether a defendant possessed the specific intent to induce
patent infringement; J. Reyna, et al. argued that the panel
majority conflated the defenses of noninfringement and
invalidity, stating: Whether the accused infringer held a
good faith belief that it was inducing conduct that fell
outside the scope of the claims is directly relevant to [the]
intent inquiry. But whether the accused infringer held a
good faith belief of invalidity e.g., an erroneous belief
regarding obviousness is wholly unrelated to the accused
infringers conduct vis--vis the limitations of a
presumptively valid patent claim.; and summing up the
opinion that the panel majoritys new rule compromises the
axiom that issued patents are presumed valid; ALSO, Judge
Newman, with whom Judges Rader, Reyna, and Wallach
joined, wrote a separate dissenting opinion, stating that it is
not axiomatic that one cannot infringe an invalid patent,
1043
and that precedent is contrary, stating rule that although an
invalid claim cannot give rise to liability for infringement,
whether it is infringed is an entirely separate question
capable of determination without regard to its validity
citing Medtronic and Spectra-Physics; also commenting on
the panels restricted remand procedure on the issue of the
inducers subjective belief of invalidity, and that it is only
fair that the new jury at the new trial receive full evidence
of the invalidity premises; a second petition for en banc
review (filed by Cisco) was also denied, in a nonprecedential
order, in which Judge OMalley dissented without opinion];
Power Integrations, 3/26/13 (rejecting inducement theory to
support the jurys remitted damages award, based at least on the
absence of substantial evidence of direct infringement); Synqor,
3/13/13 (jury instructions regarding inducing and contributory
infringement were correct in requiring actual knowledge of the
patent); Aristocrat Techs., 3/13/13 (vacating and remanding SJ
of noninfringement for the district court to determine indirect
(induced) infringement under Akamai (en banc)); Move, 3/4/13
(vacating SJ of noninfringement and remanding for the district
court to determine whether indirect (induced) infringement of
website-based method claims based on the standard in Akamai
(en banc)); Superior Indus., 11/27/12 (affirming the dismissal
of complaint that failed to adequately plead induced
infringement under the Twombly/Iqbal (S.C.) pleading
standard); ePlus, 11/21/12 (jury verdict of induced infringement
was supported by circumstantial evidence); Voter Verified,
11/5/12 (n.5: indirect infringement based on rule in Akamai (en
banc) waived for not arguing on appeal); Mirror Worlds, 9/4/12
(affirming JMOL of noninfringement where the patentee failed
to present substantial evidence of direct infringement to support
the jury verdict of inducement; see also J. Prost, dissenting
the patentee introduced ample circumstantial evidence,
including brochures and manuals, to allow a reasonable jury to
determine that the required steps of the claimed method were
performed, i.e., that at least one customer more likely than
not infringed the claim); Akamai Techs., 8/31/12 (en banc)
(the CAFC (6-5, per curiam) held that direct infringement (of a
1044
method claim) need not be by a single entity to prove induced
infringement, thus overruling BMC Resources, in which the
court held that for a party to be liable for induced infringement,
some other single entity must be liable for direct infringement;
see also J. Linn, dissenting, joined by J. Dyk, J. Prost, and J.
OMalley the statute requires (liability for) direct
infringement of a method claim by a single entity to prove
induced infringement; see also J. Newman, dissenting
objecting to the majoritys inducement-only rule permitting
divided infringement of a method claim for direct infringement
to prove inducement, and arguing that neither faction decided
the divided infringement issues posed to the court for en banc
review); LaserDynamics, 8/30/12; Meyer, 8/15/12; Toshiba,
6/11/12 (substantial noninfringing use does not preclude
inducement); R+L Carriers, 6/7/12 (addressing pleading
requirements for induced infringement); Merial, 5/31/12
(affirming contempt of injunction by inducement based on
extraterritorial acts); Bettcher Indus., 10/3/11 (oral opinion of
counsel supported no indirect infringement); Advanced
Software Design, 6/2/11 (vacating SJ of noninfringement where
genuine issues of material fact as to whether the accused
infringer had the requisite specific intent (where knew of the
patent and instructed its bank customers on how to use the
allegedly infringing software) and whether direct infringement
was proven not citing Global-Tech v. SEB (S.C.) (decided two
days earlier)); *Global-Tech v. SEB, 5/31/11 (S.C.) (affirming
the CAFCs judgment in SEB, 2/5/10, and holding that induced
infringement requires knowledge that the induced acts
constitute patent infringement, which knowlege also may be
proven by the defendants willful blindness to patent
infringement; see also Justice Kennedy, dissenting the
doctrine of willful blindness is not a substitute for actual
knowledge); Arris Group, 5/19/11 (n.13: stating requirements,
including the specific intent element (the scope of which is
under review by the Supreme Court in Global-Tech v. SEB) in
the context of DJ jurisdiction by a supplier whose customer was
accused of direct infringement); Erbe, 12/9/10 (showing that an
accused product has no substantial non-infringing use is not
1045
required for induced infringement); Astrazeneca, 11/1/10
(inducement shown by proposed product label and specific
intent based on instructions to use the drug product in an
infringing manner); Fujitsu, 9/20/10; Wordtech Systems,
6/16/10 (officer liability); i4i, 3/10/10; *SEB, 2/5/10 [affirmed
by the U.S. Supreme Court on 5/31/11 in Global-Tech v.
SEB; however, the Court rejected the CAFCs deliberate
indifference standard for proving knowledge of patent
infringement, adopting instead the doctrine of willful
blindness, which according to the Court has an
appropriately limited scope as compared with recklessness
(when one merely knows of a substantial and unjustified
risk of wrongdoing) and negligence (when one should have
known of a similar risk but, in fact, did not), as reflected by
the deliberate indifference standard; the question
presented to the Court on appeal was: Whether the legal
standard for the state of mind element of a claim for
actively inducing infringement under Section 271(b) is
deliberate indifference of a known risk that an
infringement may occur or instead purposeful, culpable
expression and conduct to encourage an infringement];
Vita-Mix, 9/16/09; Lucent, 9/11/09; Exergen, 8/4/09; Ecolab,
6/9/09; Kinetic Concepts, 2/2/09; Ricoh, 12/23/08; Kyocera
Wireless, 10/14/08; Lucent Techs., 9/25/08; Broadcom,
9/24/08; Broadcom, 9/19/08; Symantec, 4/11/08; Acco Brands,
9/12/07; E-Pass Technologies, 1/12/07; DSU Medical, 12/13/06
(en banc in relevant part); Kim, 9/20/06; Golden Blount,
2/15/06; Cross Medical Prods., 9/30/05; MEMC Electronic,
8/22/05; Arthrocare, 5/10/05; MercExchange, 3/16/05; Fuji
Photo, 1/14/05; Insituform Techs., 10/4/04; Ferguson, 12/4/03)
Generally
- (b) Whoever actively induces infringement of a

patent shall be liable as an infringer. 35 USC
271(b)
1046
- Liability for induced or contributory infringement
requires knowledge that the induced acts constitute
patent infringement, which includes, in part, actual
knowledge of the existence of the patent that is
infringed Global-Tech (S.C.) (Commil USA,
6/25/13 (erroneous jury instruction where the jury
was not instructed that for liability for inducement
the defendant must have had knowledge that the
induced acts constitute patent infringement);
Synqor, 3/13/13); See also Smith & Nephew,
1/16/13 (nonprecedential reversing the district
courts grant of JMOL of no inducement where the
jury heard substantial evidence including
testimony by the accused infringers employees
showing knowledge of patent infringement; see
also J. Clevenger, dissenting jury verdict was not
supported by substantial evidence that the accused
infringer had the required knowledge of patent
infringement, under Global-Tech (S.C.); that is,
there was not substantial evidence that the accused
infringer subjectively believed they infringed, i.e.,
under the willful blindness standard)
- In order to prevail on an inducement claim, the

patentee must establish, first, that there has been
direct infringement, and second, that the alleged
infringer knowingly induced infringement and
possessed specific intent to encourage anothers
infringement MEMC Elec. Materials, DSU
Medical (ePlus, 11/21/12 (sufficient evidence of
the accused infringers intent and knowledge to
affirm jury verdict of inducement); Meyer,
8/15/12; Toshiba, 6/11/12 (the existence of a
substantial noninfringing use does not preclude a
finding of inducement - Erbe); R+L Carriers,
6/7/12 (pleading facts plausibly showing specific
intent (e.g., inferring intent from statements and
conduct in the context in which they occurred,
1047
including the context of the technology and the
invention) and knowledge of infringement; the
patentee need not prove its case at the pleading
stage); Merial, 5/31/12; *Global-Tech v. SEB,
5/31/11 (S.C.); Arris Group, 5/19/11 (n.13);
Astrazeneca, 11/1/10; Fujitsu, 9/20/10; Wordtech
Systems, 6/16/10; i4i, 3/10/10 (reasonable jury
could have concluded that the infringer had the
affirmative intent to cause direct infringement -
DSU); *SEB, 2/5/10 (inducement can be shown by
the accused infringers deliberate indifference to
the existence of the patent in suit citing Supreme
Court, D.C. Cir. and 7th Cir. decisions for the
proposition that specific intent in the civil
context is not so narrow as to allow an accused
wrongdoer to actively disregard a known risk that
an element of the offense exists) [On 5/31/11, the
U.S. Supreme Court, in Global-Tech v. SEB,
rejected the CAFCs deliberate indifference
standard, adopting instead the doctrine of
willful blindness; see above]; Vita-Mix, 9/16/09;
Lucent, 9/11/09; Exergen, 8/4/09; Kinetic
Concepts, 2/2/09; Ricoh, 12/23/08; Kyocera
Wireless, 10/14/08; Broadcom, 9/24/08; Symantec,
4/11/08; Acco Brands, 9/12/07); See also Smith &
Nephew, 1/16/13 (nonprecedential any alleged
error in jury instruction or questions presented to
the jury on inducement was harmless because the
district court out of caution instructed the jury on
both the Global-Tech (S.C.) standard (see above)
and DSU Medical standard (including known or
should have known) regarding the requirement
that the accused infringer have knowledge of the
patent infringement)
Direct infringement required
1048
(Aristocrat Techs., 3/13/13; Move, 3/4/13 (remanding for
the district court to determine whether indirect (induced)
infringement of website-based method claims under the
Akamai Techs. standard, which requires that the accused
infringer knew of the asserted patent and performed or
knowingly induced the performance of the steps of the
claimed methods, and that all of those steps were in fact
performed); ePlus, 11/21/12; Mirror Worlds, 9/4/12 (no
substantial evidence of direct infringement of method
claim to support jury verdict of inducement; see also J.
Prost, dissenting under the correct reading of the claim,
the patentee adduced sufficient (circumstantial) evidence
to allow a reasonable jury to conclude that customers
directly infringed); Akamai Techs., 8/31/12 (en banc)
(act of direct infringement of a method claim to show
inducement need not be performed by a single entity, but
may be performed collectively by the accused inducer
and the inducee(s) (Akamai), or collectively by multiple
inducees (McKesson)); LaserDynamics, 8/30/12; Meyer,
8/15/12; Toshiba, 6/11/12 (addressing proof a direct
infringement, including recommending infringement and
where the evidence shows that at least one person
directly infringed, and distinguishing cases in which the
accused product was only capable of infringement);
R+L Carriers, 6/7/12 (*pleading direct infringement need
only satisfy Form 18, while pleading induced and
contributory infringements must meet the plausible
claim requirement of Twombly (S.C.) and Iqbal (S.C.);
see also J. Newman, dissenting all claims must meet
the Supreme Court standard); Global-Tech v. SEB,
5/31/11 (S.C.); McKesson, 4/12/11 (no inducement based
on joint infringement where single party did not directly
infringe method claim) [vacated and en banc review
granted, on 5/26/11]; Centillion Data Systems, 1/20/11
(not deciding whether induced infringement where the
district court had not yet determined direct infringement
of claim element by the accused infringers customers);
Fujitsu, 9/20/10; i4i, 3/10/10; Vita-Mix, 9/16/09; Lucent,
1049
9/11/09; Exergen, 8/4/09; Erbe Elektromedizin, 5/19/09
(no direct infringement proven based on limited claim
construction); Ricoh, 12/23/08; Kyocera Wireless,
10/14/08; Lucent Techs., 9/25/08; Symantec, 4/11/08;
BMC Resources, 9/20/07 [overruled by Akamai Techs.,
8/31/12 (en banc)]; *Acco Brands, 9/12/07; E-Pass
Technologies, 1/12/07; DSU Medical, 12/13/06 (en
banc); Kim, 9/20/06; Liquid Dynamics, 6/1/06; Golden
Blount, 2/15/06; Cross Medical Prods., 9/30/05; Fuji
Photo, 1/14/05; Dynacore Holdings, 3/31/04); See also
Bennett Marine, 9/19/13 (nonprecedential reversing
inducement finding after reversing finding of direct
infringement); Convolve, 7/1/13 (nonprecedential);
Travel Sentry, 11/5/12 (nonprecedential vacating the
grant of SJ of noninfringement and remanding to
determine whether indirect infringement base on Akamai
(en banc), where the district court concluded no indirect
infringement based on the (now overruled) single entity
rule for showing direct infringement); O2 Micro,
11/18/11 (nonprecedential affirming inducement
finding where direct infringement proven by
circumstantial evidence; see also J. Prost, dissenting
patentee through the parties stipulations failed to prove
direct infringement)
- Direct infringement required
- Pleading direct infringement (R+L Carriers,

6/7/12 (see above))
- Liability for induced infringement only if

the inducement leads to actual infringement
the principle that there can be no indirect
infringement without direct infringement is
well-settled (Commil USA, 6/25/13 (J.
OMalley, dissenting whether the patentee
failed to prove direct infringement by third
parties, and thus inducement, should be
1050
decided by the CAFC on appeal, based on
the record, to avoid an unnecessary new
trial); Akamai Techs., 8/31/12 (en banc)
(adding that: The reason for that rule is
simple: There is no such thing as attempted
patent infringement, so if there is no
infringement, there can be no indirect
liability for infringement.))
- For direct infringement, the patentee must

either point to specific instances of direct
infringement or show that the accused
device necessarily infringes the patent in suit
(Toshiba, 6/11/12; Bettcher Indus., 10/3/11
(record on appeal failed to show that
accused blades ever start to infringe, let
alone always, necessarily, or even usually
wear to the allegedly infringing shape);
Fujitsu, 9/20/10 (no direct infringement for
proving contributory infringement where the
accused products based on their user
materials were only capable of infringement,
comparing case to Acco Brands and
distinguishing Ricoh and Vita-Mix); Vita-
Mix, 9/16/09 (expert testimony based on
supporting facts showed that the accused
blenders necessarily infringed); Lucent,
9/11/09; Exergen, 8/4/09 (rejecting the
patentees necessary infringement
argument based on instructions and
drawings accompanying the sale of the
accused infrared thermometers, which
argument ignored the claim language
(requiring the lateral scan to occur across a
forehead)); Ricoh, 12/23/08); ALSO,
hypothetical instances of direct infringement
are insufficient to establish vicarious
liability or indirect infringement Dynacore
1051
(Lucent Techs., 9/25/08 (insufficient
evidence of actual infringement, and thus
too speculative to conclude that the accused
product necessarily infringed); Broadcom,
9/19/08 (neither requirement met for
inducement); Acco Brands, 9/12/07
(accused device could be used in
noninfringing manner, thus no
inducement)); See also Convolve, 7/1/13
(nonprecedential)
- Liability only for a specific instance

of direct infringement (Abraxis
Bioscience, 11/9/10 (complaint in
Hatch-Waxman case erroneously
alleged indirect infringement where
there was no required act of actual
commercial direct infringement);
Lucent, 9/11/09; Symantec, 4/11/08
(circumstantial evidence of direct
infringement sufficient to avoid SJ,
despite no evidence that any particular
customer had directly infringed the
patent); Dynacore Holdings, 3/31/04)
- Prove specific instances by

witness testimony, surveys of
customers (Lucent, 9/11/09;
Acco Brands, 9/12/07 (expert
testimony was insufficient
proof))
- Patentee always has the burden of proving

direct infringement for each instance of
indirect infringement (Power Integrations,
3/26/13 (patentees damages expert failed to
link sales of mobile phones with sales of
phone chargers incorporating the infringing
1052
power circuits); Mirror Worlds, 9/4/12;
Meyer, 8/15/12; i4i, 3/10/10 (reasonable
jury could have found based on the evidence
(expert testimony, joint stipulation, and
interrogatory responses) that at least one
person performed the claimed methods);
Lucent, 9/11/09 (direct infringement by at
least one person within the U.S. proven
circumstantially through expert testimony,
and distinguishing Acco Brands and E-Pass
Techs.); Exergen, 8/4/09; Broadcom,
9/19/08 (no direct or inducing infringement
where the industry standard created by the
accused infringer for use with the accused
devices did not require claim limitation,
distinguishing may from shall in the
standard); Acco Brands, 9/12/07; E-Pass
Technologies, 1/12/07; DSU Medical,
12/13/06); See also Convolve, 7/1/13
(nonprecedential); O2 Micro, 11/18/11
(nonprecedential the patentee is not
required to prove direct infringement to a
complete certainty, since the burden of proof
for direct infringement is a preponderance of
the evidence that it is more likely than not
that the direct infringement occurred
Lucent)
- In the United States (E-Pass

- Patentee must prove that the patented

method was actually practiced on
accused devices (Lucent Techs.,
9/25/08; E-Pass Technologies,
1/12/07)
1053
- Proving direct infringement based on
circumstantial evidence must show that at
least one person directly infringed an
asserted claim during the relevant time
period Lucent Techs. (ePlus, 11/21/12
(jury verdict of infringement of method
claims was not supported by substantial
evidence where there was no evidence that
showed or suggested actual infringement,
rather than the capability of infringement);
Mirror Worlds, 9/4/12 (affirming JMOL
where the jury verdict was not supported by
substantial evidence; see also J. Prost,
dissenting finding that circumstantial
evidence sufficed to prove infringement of
method claims, and that the patentee had
offered sufficient evidence to allow a
reasonable jury to find infringement);
Toshiba, 6/11/12 (enough evidence in the
record, including accused product design
and instructions to users, for why someone
would finalize a DVD or use infringing
mode to preclude SJ of noninfringement);
R+L Carriers, 6/7/12 (pleading direct
infringement, in light of the above rule: To
state a claim for indirect infringement, . . . a
plaintiff need not identify a specific direct
infringer if it pleads facts sufficient to allow
an inference that at least one direct infringer
exists.); Advanced Software Design, 6/2/11
(genuine issue of material fact regarding
circumstantial evidence of direct
infringement, including based on
instructions provided to bank customers
concerning allegedly infringing software);
Vita-Mix, 9/16/09 (combining testimonies
of experts and fact witnesses); Lucent,
9/11/09 (through expert testimony);
1054
Exergen, 8/4/09 (rejecting the patentees
reliance on instructions and drawings
accompanying the accused infringers
infrared thermometers as circumstantial
evidence that customers would necessarily
infringe the patent); Broadcom, 9/24/08;
Lucent Techs., 9/25/08 (expert evidence
rejected as speculative); Symantec, 4/11/08
(circumstantial evidence of direct
infringement based on product manual
created genuine issue of material fact to
avoid SJ); E-Pass Technologies, 1/12/07;
Liquid Dynamics, 6/1/06; Golden Blount,
2/15/06); See also Convolve, 7/1/13
(nonprecedential citing Lucent); O2 Micro,
did not commit clear error in finding direct
infringement based on circumstantial
evidence, comparing the case to Lucent; see
also J. Prost, dissenting)
- Direct evidence of infringement, as

opposed to circumstantial evidence, is
not necessary (Mirror Worlds, 9/4/12;
Lucent, 9/11/09; Broadcom, 9/24/08
(a jurys preference for circumstantial
evidence over direct evidence is not
unreasonable per se Liquid
Dynamics); Symantec, 4/11/08); See
also O2 Micro, 11/18/11
(nonprecedential)
- Direct infringers knowledge or intent is

irrelevant, as direct infringement requires no
more than the unauthorized use of a patented
invention (Global-Tech v. SEB, 5/31/11
(S.C.) (n.2))
1055
- Proving direct infringement vs. claim to
capable of infringement (ePlus, 11/21/12;
Broadcom, 9/19/08 (direct infringement not
proven, and argument waived on appeal that
operable meant capable of); Acco Brands,
9/12/07; Cross Medical Prods., 9/30/05)
- That the accused product is capable of

being used, and thus some of the time
is used, in an infringing manner is
insufficient evidence to prove direct
infringement (ePlus, 11/21/12 (no
infringement shown where only the
capability of the accused system to
perform the claimed method was
shown, rather than an actual act of
infringement); Mirror Worlds, 9/4/12
(patentee needed to show that each
step of the claimed method was
actually performed, where expert
testimony was focused on capability,
not actual use: Evidence of actual
use of each limitation is required.);
Toshiba, 6/11/12 (accused infringer
went beyond describing the infringing
mode, and recommended that
customers use the infringing mode,
thus distinguishing cases including
Fujitsu and Acco Brands); Fujitsu,
9/20/10 (no contributory infringement
where actual infringement was not
shown); Exergen, 8/4/09 (no direct
infringement based on testimony
showing that the accused device can
be used in an infringing manner (by
scanning across the forehead), as
opposed to the noninfringing manner
disclosed in instructions included with
1056
the accused products, stating that
[b]ecause the accused device can be
used at any given time in a
noninfringing manner, the accused
device does not necessarily infringe
the patent Acco Brands); Acco
Brands, 9/12/07); See also Convolve,
7/1/13 (nonprecedential reversing
and remanding SJ of no inducement
where the patentee did not merely
demonstrate that the accused disk
drives were capable of infringing,
but provided evidence of specific
tools, with attendant instructions, on
how to use the drives in an infringing
way distinguishing Fujitsu)
- Design of accused product for use in an infringing

way (Toshiba, 6/11/12 (accused DVDs were
designed to comply with standards and be used in
an infringing way))
- Instructions used to prove direct infringement, i.e.,

follow instructions and infringe (ePlus, 11/21/12
(course catalogs and webinar presentations offered
by the infringer to its customers supported the
jurys inducement verdict); Mirror Worlds, 9/4/12
(no direct infringement shown where the user
manuals and review articles showed the steps of
the claimed method in isolation, rather than
together in an infringing manner citing E-Pass);
Toshiba, 6/11/12 (instructions to users that they
must finalize DVDs to ensure compatibility as
circumstantial evidence of direct infringement);
Advanced Software Design, 6/2/11 (instructions
provided to bank customers concerning allegedly
infringing software); Astrazeneca, 11/1/10; Fujitsu,
9/20/10 (product manuals and customer service
1057
records raised genuine issues of material fact to
avoid SJ of noninfringement); Lucent, 9/11/09
(instruction manuals disseminated with software
products proved direct infringement); Exergen,
8/4/09 (evidence rejected where customers who
actually followed the instructions would not have
directly infringed the claimed method); Broadcom,
9/19/08 (industry standard did not require claim
limitation); Symantec, 4/11/08 (genuine issues of
material fact where product manual promoted, and
thus encouraged, the use of accused product in
combination with a downloading program in an
infringing manner); Acco Brands, 9/12/07
(instructions to use noninfringing method = no
inducement); *E-Pass Technologies, 1/12/07;
Golden Blount, 2/15/06); See also Convolve,
7/1/13 (nonprecedential the accused infringers
instructions to users of computers as circumstantial
evidence of direct infringement precluded SJ of no
inducement citing Toshiba)
- Product materials to prove direct

infringement Moleculon (ePlus, 11/21/12;
Mirror Worlds, 9/4/12; Symantec, 4/11/08;
E-Pass Technologies, 1/12/07; Arthrocare,
5/10/05)
- Product materials need to be specific

(E-Pass Technologies, 1/12/07)
- Product manuals must teach

steps of claimed method
together, and in required order;
how speculative is the leap to
conclude that the customer
actually performed the claimed
method? (Mirror Worlds,
9/4/12 (user manuals taught the
1058
steps of the claimed method in
isolation, rather than together,
and the accused products could
be used in a non-infringing
manner; see also J. Prost,
dissenting the patentee
offered sufficient circumstantial
evidence to allow a reasonable
jury to find infringement); E-
Pass Technologies, 1/12/07)
- Whether accused devices can

be used in ways other than the
claimed method, or are
instructions specific to claimed
method? (Exergen, 8/4/09
(rejecting argument based on
instructions not specific to the
claim requirement (of scanning
the thermometer across the
forehead)); Symantec, 4/11/08
(accused product could only be
used in an infringing way); E-
Pass Technologies, 1/12/07)
Intent required factual determination
(Commil USA, 6/25/13 (holding a good faith belief of

invalidity is evidence that may negate the specific intent
to encourage anothers infringement required for induced
infringement -- seeing no principled distinction between
good faith beliefs of noninfringement and invalidity for
the purpose of whether a defendant possessed the specific
intent to induce infringement, based on the axiom that
one cannot infringe an invalid patent (Prima Tek II)
citing district court cases; adding (in n.1) that the court
certainly do[es] not hold that there can be no liability
1059
for induced infringement whenever the accused inducer
has a good faith belief of invalidity: This is, of course,
not to say that such evidence precludes a finding of
induced infringement. Rather, it is evidence that should
be considered by the fact-finder in determining whether
an accused party knew that the induced acts constitute
patent infringement Global-Tech (S.C.); see also J.
OMalley, concurring; see also J. Newman, dissenting
from the courts holding that a showing of good faith
belief in patent invalidity can avoid all liability for
induced infringement of a valid patent, stating that [a]
good-faith belief of patent invalidity may be raised as a
defense to willfulness of the infringement, but it is not a
defense to the fact of the infringement.) [On 10/25/13,
the CAFC denied en banc review see summary of
dissenting opinions above]; Akamai Techs., 8/31/12 (en
banc); Merial, 5/31/12; Advanced Software Design,
6/2/11 (genuine dispute of material fact on whether the
requisite specific intent); *Global-Tech v. SEB, 5/31/11
(S.C.); Astrazeneca, 11/1/10; Fujitsu, 9/20/10; i4i,
3/10/10; *SEB, 2/5/10 (specific intent was shown by the
accused infringers deliberate indifference to the
existence of the patent) [On 5/31/11, the U.S. Supreme
Court, in Global-Tech v. SEB, rejected the CAFCs
deliberate indifference standard, adopting instead
the doctrine of willful blindness; see above]; Vita-Mix,
9/16/09; Lucent, 9/11/09; Ecolab, 6/9/09 (jury had
substantial evidence from which it could have reasonably
concluded that the accused infringer lacked the required
intent); Kinetic Concepts, 2/2/09 (substantial evidence
supported a lack of the necessary intent, including the
infringers testimony that it believed it was practicing the
prior art); Ricoh, 12/23/08 (material issues of fact existed
as to the accused infringers intent that the accused
devices be used to infringe method claims); Kyocera
Wireless, 10/14/08; Broadcom, 9/24/08 (failure to obtain
opinion of counsel is relevant to the intent determination;
jurys inference of the specific intent necessary to induce
1060
infringement was substantial evidence to support
verdict); Symantec, 4/11/08; BMC Resources, 9/20/07
[overruled by Akamai Techs., 8/31/12 (en banc)]; Acco
Brands, 9/12/07; DSU Medical, 12/13/06 (en banc) [the
CAFC clarified the specific intent requirement for
inducement of infringement by holding en banc that,
as was stated in Manville (CAFC 1990), [t]he plaintiff
has the burden of showing that the alleged infringers
actions induced infringing acts and that he knew or
should have known his actions would induce actual
infringements. The requirement that the alleged
infringer knew or should have known his actions
would induce actual infringement necessarily includes
the requirement that he or she knew of the patent.];
Kim, 9/20/06; Golden Blount, 2/15/06; NCube, 1/9/06;
MEMC Electronic, 8/22/05; Metabolite Labs, 6/8/04)
- Must show direct infringement and that the

defendant possessed the requisite knowledge and
intent to encourage anothers infringement
(Commil USA, 6/25/13; Synqor, 3/13/13; Move,
3/4/13; ePlus, 11/21/12 (sufficient evidence of
inducement to support jury verdict); Akamai
Techs., 8/31/12 (en banc) (act of direct
infringement of a method claim need not be
committed by a single entity); Merial, 5/31/12
(facts supported inducement of infringement from
a foreign country); *Global-Tech v. SEB, 5/31/11
(S.C.); Arris Group, 5/19/11 (n.13); Astrazeneca,
11/1/10; *SEB, 2/5/10 [On 5/31/11, the U.S.
Supreme Court, in Global-Tech v. SEB, rejected
the CAFCs deliberate indifference standard,
adopting instead the doctrine of willful
blindness; see above]; Vita-Mix, 9/16/09; Lucent,
9/11/09; Ricoh, 12/23/08 (evidence of intent may
be relevant even without communicating
information regarding the patented method);
Kyocera Wireless, 10/14/08 (accused infringer
1061
providing customers with infringing software for
use in chipsets was not sufficient to show the
necessary specific intent to cause infringement);
Broadcom, 9/24/08; Symantec, 4/11/08; Acco
Brands, 9/12/07; Golden Blount, 2/15/06; NCube,
1/9/06; Dynacore Holdings, 3/31/04)
- [Old law] Intent shown by the accused

infringers deliberate indifference to the
existence of the patent; the standard of
deliberate indifference to a known risk is not
different from actual knowledge, but is a
form of actual knowledge (*SEB, 2/5/10
(citing Supreme Court, 2nd and 7th Cir.
decisions) [On 5/31/11, the U.S. Supreme
Court, in Global-Tech v. SEB, rejected the
CAFCs deliberate indifference
standard, adopting instead the doctrine of
willful blindness; see above])
- [Old law] Accused infringer may

defeat a showing of subjective
deliberate indifference to the
existence of a patent by showing that
it was genuinely unaware even of an
obvious risk Farmer (S.C.) (*SEB,
2/5/10 (accused infringer failed to
produce any exculpatory evidence
(i.e., that he actually believed that a
patent covering the accused product
did not exist), and the record
otherwise contained considerable
evidence of deliberate indifference)
[On 5/31/11, the U.S. Supreme
Court, in Global-Tech v. SEB,
rejected the CAFCs deliberate
indifference standard, adopting
1062
instead the doctrine of willful
blindness; see above])
- [Old law] Failure to inform

ones counsel of copying would
be highly suggestive of
deliberate indifference in most
circumstances (*SEB, 2/5/10
[On 5/31/11, the U.S.
Supreme Court, in Global-
Tech v. SEB, rejected the
CAFCs deliberate
indifference standard,
adopting instead the doctrine
of willful blindness; see above
the evidence of defendants
failure to inform opinion
counsel of copying was
sufficient to prove induced
infringement under the
willful blindness standard])
- Intent showing does not require evidence

that the accused indirect infringer was
successful in communicating a message of
encouragement to infringe to the alleged
direct infringers for inducement; rather, need
only show that the accused infringer made
the communication Grokster (S.C.)
(Ricoh, 12/23/08)
- Testimony by defendant of no intent to

infringe patent supported jury verdict of no
infringement (DSU Medical, 12/13/06 (en
banc))
- To establish liability under section 271(b), a patent

holder must prove that once the defendant knew of
1063
the patent, it actively and knowingly aided and
abetted anothers direct infringement; however,
knowledge of the acts alleged to constitute
infringement is not enough; the mere knowledge of
possible infringement by others does not amount to
inducement; specific intent and action to induce
infringement must be proven Grokster (S.C.),
Manville (Akamai Techs., 8/31/12 (en banc);
*Global-Tech v. SEB, 5/31/11 (S.C.) (see above);
Astrazeneca, 11/1/10; Fujitsu, 9/20/10 (It is not
enough to simply intend to induce the infringing
acts); Vita-Mix, 9/16/09; Lucent, 9/11/09 (jurys
factual finding of intent was supported by expert
testimony, and supporting documents encouraging
infringement, such that the accused infringer
possessed the requisite intent to induce at least one
user of its products to infringe the claimed
methods); Ricoh, 12/23/08; Kyocera Wireless,
10/14/08; Broadcom, 9/24/08; DSU Medical,
12/13/06 (en banc))
- Specific intent requires a showing that the

alleged infringers actions induced
infringing acts and that he knew or should
have known his actions would induce actual
infringements DSU Medical (adding that
the alleged infringer knew or should have
known his actions would induce actual
infringement necessarily includes the
requirement that he or she knew of the
patent) (Commil USA, 6/25/13 (rejecting
erroneous jury instruction including the
should have known standard, stating that
to the extent our prior case law allowed the
finding of induced infringement based on
recklessness or negligence, such case law is
inconsistent with Global-Tech and no longer
good law.); *Global-Tech v. SEB, 5/31/11
1064
(S.C.) (tempering DSU Medical (en banc)
and implicitly rejecting should have
known (negligence) standard) [holding
that induced infringement requires
knowledge that the induced acts
constitute patent infringement, which
knowledge includes the defendants
willful blindness to infringement two
requirements: 1) the defendant must
subjectively believe that there is a high
probability that a fact exists, and 2) the
defendant must take deliberate actions to
avoid learning of that fact see above];
Fujitsu, 9/20/10 (genuine issues of material
fact precluded SJ of no induced
infringement where notice letters identified
the patent claiming a technology standard
and standard compliant products); *SEB,
2/5/10 (knowledge of the patent was shown
by the accused infringers deliberate
indifference to the existence of the patent,
despite no evidence of actual knowledge of
the patent, where the accused infringer
copied the plaintiffs product covered by the
patent, and did not inform its counsel who
conducted a right-to-use study of such
copying; adding that the standard of
deliberate indifference [to] a known risk is
not different from actual knowledge, but is a
form of actual knowledge (citing 2nd and 7th
Cir. decisions)) [On 5/31/11, the U.S.
Supreme Court, in Global-Tech v. SEB,
rejected the CAFCs deliberate
indifference standard, adopting instead
the doctrine of willful blindness; see
above]; Ecolab, 6/9/09 (expert testimony
supported lack of intent based on the
accused infringers personnel reasonably
1065
believing that the patent did not cover the
accused product, for reasons including that
the product contained the same combination
of agents as in a prior art patent); Ricoh,
12/23/08; Broadcom, 9/24/08; Acco Brands,
9/12/07)
- Claim for inducement is viable even

where the patentee has not produced
direct evidence that the accused
infringer actually knew of the patent-
in-suit (Synqor, 3/13/13 (specific
evidence was presented that allowed
the jury to infer the defendants actual
pre-suit knowledge of the patent,
which was sufficient to support the
verdict); *SEB, 2/5/10 (intent shown
by deliberate indifference where the
record contained adequate evidence to
support a conclusion that the accused
infringer deliberately disregarded a
known risk that the plaintiff had a
protective patent) [On 5/31/11, the
U.S. Supreme Court, in Global-Tech
v. SEB, rejected the CAFCs
deliberate indifference standard,
adopting instead the doctrine of
willful blindness; see above])
- The inducement rule premises liability on

purposeful, culpable expression and conduct
Grokster (S.C.); Grokster validates the
CAFCs state of mind requirement for
inducement, and has clarified that the
specific intent necessary for inducement
requires more than just intent to cause the
acts that produce direct infringement;
beyond that threshold knowledge, the
1066
inducer must have an affirmative intent to
cause direct infringement (*Global-Tech v.
SEB, 5/31/11 (S.C.) (observing that the
adverb actively modifying induces in
Section 271(b) suggests that the
inducement must involve the taking of
affirmative steps to bring about the desired
result); Astrazeneca, 11/1/10; Ricoh,
12/23/08; Kyocera Wireless, 10/14/08
(reversing ITCs finding of inducement,
which was made before the CAFCs
clarification of the intent standard in DSU,
stating that [p]roof of intent to cause
infringing acts is a necessary but not
sufficient condition for induced
infringement); Broadcom, 9/24/08;
Symantec, 4/11/08; DSU Medical, 12/13/06
(en banc))
- Culpable conduct by the inducer

required - inducement requires
evidence of culpable conduct, directed
to encouraging anothers infringement
(i.e., a specific intent to cause,
encourage infringement), not merely
that the inducer had knowledge of the
direct infringers activities DSU
Medical (en banc) (*Global-Tech v.
SEB, 5/31/11 (S.C.) (induced
infringement requires knowledge that
the induced acts constitute patent
infringement, which knowledge
includes willful blindness by the
accused infringer); Astrazeneca,
11/1/10; Lucent, 9/11/09; Ricoh,
12/23/08; Kyocera Wireless,
10/14/08; Broadcom, 9/24/08;
Symantec, 4/11/08)
1067
- Knowingly induce infringement and possess a
specific intent to encourage anothers
infringement; whether intent to knowingly cause
infringement required (vs. merely knowingly
induce the acts that constitute direct infringement)?
(*Global-Tech v. SEB, 5/31/11 (S.C.) (induced
infringement requires knowledge that the induced
acts constitute patent infringement); DSU Medical,
12/13/06 (en banc) (intent to knowingly cause
infringement required) presumed if knew about
the patent (Golden Blount, 2/15/06; Cross Medical
Prods., 9/30/05; MEMC Electronic, 8/22/05;
MercExchange, 3/16/05; Fuji Photo, 1/14/05;
- Level of intent required? General vs.

specific (knowledge of patent; actual vs.
constructive notice) (*Global-Tech v. SEB,
5/31/11 (S.C.) (knowlege of patent
infringement required); *SEB, 2/5/10 (the
accused infringers knowledge of the patent
was shown by its deliberate indifference
to the patents existence, stating that DSU
Medical (en banc) did not set out the metes
and bounds of the knowledge-of-the-patent
requirement and did not require [the
CAFC] to address the scope of the
knowledge requirement for intent) [On
5/31/11, the U.S. Supreme Court, in
Global-Tech v. SEB, rejected the CAFCs
deliberate indifference standard,
adopting instead the doctrine of willful
blindness; see above]; Fuji Photo, 1/14/05)
[In DSU Medical, 12/13/06 (en banc), C.J.
Michel and J. Mayer, concurring, wrote
that the CAFC was not setting forth a
new standard as to what satisfies the
1068
knowledge of the patent requirement in
cases under section 271(b) the
knowledge of the patent issue was not
before the court]
- Knowledge based on the presence vs.

absence of patent markings under
Section 287(a)? - Insituform (*SEB,
2/5/10)
- Need more than mere sale of a device

capable of substantial non-infringing use
inducement requires active steps to
encourage direct infringement (Astrazeneca,
11/1/10; Ricoh, 12/23/08 (citing Grokster
(S.C.)); Acco Brands, 9/12/07; Dynacore
Holdings, 3/31/04); See also Eli Lilly,
7/29/11 (nonprecedential CAFC has long
held that inducement and contributory
infringement are shown by the sale of a
(generic drug) product specifically labeled
for use in a patented method)
- Opinions of counsel
- Opinions of noninfringement
supported jury verdict that defendant
did not induce infringement by
purposefully and culpably
encouraging anothers infringement;
opinions showed that defendant did
not believe it infringed patent, and
thus lacked the necessary specific
intent to infringe (Bettcher Indus.,
10/3/11 (oral opinion of counsel
relevant to the accused infringers
state of mind supported jury verdict of
1069
no indirect infringement); DSU
Medical, 12/13/06 (en banc))
- Failure to obtain an opinion of

noninfringement is relevant to
the specific intent analysis, i.e.,
whether the accused infringer
knew or should have known
that its actions would induce
actual direct infringement
[i]t would be manifestly unfair
to allow opinion-of-counsel
evidence to serve an
exculpatory function, as was
the case in DSU itself, . . . and
yet not permit patentees to
identify failures to procure such
advice as circumstantial
evidence of intent to infringe
(Broadcom, 9/24/08 (jury
instruction regarding
inducement, including whether
the accused infringer obtained
advice of counsel, was proper
even after Seagate) [overruled
by new Section 298 added in
the AIA, effective 9/16/12])
- Proof of specific intent direct evidence not

required; intent inferred by the fact finder;
circumstantial evidence may suffice, e.g.,
advertising an infringing use or instructing
how to engage in an infringing use -
Grokster (Commil USA, 6/25/13
(circumstantial evidence can support a
finding of actual knowledge of the patent or
willful blindness (just as it did in Global-
Tech (S.C.))); Astrazeneca, 11/1/10 (specific
1070
intent was shown in part by drug product
label instructing an infringing use, i.e., the
downward titration language would
inevitably lead some consumers to practice
the claimed method citing Vita-Mix); i4i,
3/10/10 (detailed online instructional
materials (and supporting internal emails of
the infringer) were substantial evidence that
the infringer intended the accused product to
be used in an infringing manner); Vita-Mix,
9/16/09; Lucent, 9/11/09; Ricoh, 12/23/08
(accused infringer incorporating software
into the accused product that allegedly
instructed the hardware to perform the
claimed method under normal use
conditions created material issue of fact
regarding specific intent); Kyocera Wireless,
10/14/08; Broadcom, 9/24/08 (failure to
obtain opinion of counsel as a basis for the
jurys inference of specific intent);
Symantec, 4/11/08; DSU Medical, 12/13/06
(en banc); Liquid Dynamics, 6/1/06; Golden
Blount, 2/15/06; NCube, 1/9/06; MEMC
Electronic, 8/22/05; Fuji Photo, 1/14/05;
Insituform Techs., 10/4/04; Metabolite Labs,
6/8/04)
- Mere knowledge of possible

infringement will no suffice (Vita-
Mix, 9/16/09 (see also J. Bryson,
dissenting))
- Specific intent may be inferred from

circumstantial evidence where the
defendant has both knowledge of the
patent and specific intent to cause the
acts constituting infringement
MEMC Elect. (Astrazeneca, 11/1/10
1071
(specific intent was not avoided by
reliance on the FDAs statements
supporting noninfringement the
FDA is not the arbiter of patent
infringement issues); Ricoh,
12/23/08 (design of a product is
evidence of intent))
- Accused infringers control

over the design and
manufacture of the accused
product may evidence a
specific intent to induce
infringement Water Techs.
(Vita-Mix, 9/16/09; Ricoh,
12/23/08 (including infringing
component(s) with
noninfringing component(s) in
the same device may evidence a
specific intent))
- Where the accused

product has substantial
non-infringing uses,
intent to induce
infringement cannot be
inferred even when the
defendant has actual
knowledge that some
users of its product may
be infringing Warner-
Lambert (Astrazeneca,
11/1/10; Vita-Mix,
9/16/09 (no intent could
be inferred where the
accused blenders had a
substantial noninfringing
1072
use; see also J. Bryson,
dissenting))
- Product instructions to show

intent (Astrazeneca, 11/1/10
(downward titration instruction
in proposed drug product label
induced infringement); Fujitsu,
9/20/10 (product manuals
raised genuine issues of
material fact to preclude SJ);
i4i, 3/10/10 (detailed online
instructions showed intent);
Vita-Mix, 9/16/09 (showed no
intent to encourage
infringement; see also J.
Bryson, dissenting))
Inducement must be proven for all claim elements
(MercExchange, 3/16/05)
Inducement occurring from foreign country
(Power Integrations, 3/26/13 (stating rule and that the

direct infringement must occur in the U.S.); Merial,
5/31/12; Kyocera Wireless, 10/14/08 (inducement claim
in ITC action); DSU Medical, 12/13/06 (approving jury
instruction); MEMC Electronic, 8/22/05)
- Section 271(b) does not foreclose liability for

extraterritorial acts that actively induce an act of
direct infringement that occurs within the U.S.
(Power Integrations, 3/26/13 (stating rule citing
Merial); Merial, 5/31/12)
1073
Indemnity agreements
(MEMC Electronic, 8/22/05)
C. 35 USC 271(c) contributory infringement
(Synqor, 3/13/13; Superior Indus., 11/27/12 (affirming the

dismissal of complaint that failed to adequately plead
contributory infringement under the Twombly/Iqbal (S.C.)
pleading standard); Toshiba, 6/11/12 (substantial nonfringing
uses); R+L Carriers, 6/7/12 (addressing pleading requirements,
and no contributory infringement based on substantial
noninfringing uses); *Global-Tech v. SEB, 5/31/11 (S.C.)
(interpreting the knowledge required for liability under Sections
271(b) and (c) in the same way as knowledge of patent
infringment, based on Aro II (S.C.)); Section Arris Group,
5/19/11 (addressing requirements for infringement of both
system and method claims, in the context of DJ jurisdiction by
a supplier whose customer was accused of direct infringement;
n.8 and n.9 citing cases); Spansion, 12/21/10 (presuming
required knowledge where there was no substantial
noninfringing use for the accused product Grokster (S.C.);
Fujitsu, 9/20/10 (addressing all four elements); Wordtech
Systems, 6/16/10 (officer liability); i4i, 3/10/10; Vita-Mix,
9/16/09; Lucent, 9/11/09; Ricoh, 12/23/08 (process claims are
infringed by the sale of device containing an infringing
component; see also J. Gajarsa, dissenting); BMC Resources,
9/20/07 [overruled by Akamai Techs., 8/31/12 (en banc)];
Pharmastem, 7/9/07; DSU Medical, 12/13/06; Golden Blount,
2/15/06; Cross Medical Prods., 9/30/05)
Generally
- (c) Whoever offers to sell or sells within the United

States or imports into the United States a component of a
patented machine, manufacture, combination or
1074
composition, or a material or apparatus for use in
practicing a patented process, constituting a material part
of the invention, knowing the same to be especially made
or especially adapted for use in an infringement of such
patent, and not a staple article or commodity of
commerce suitable for substantial noninfringing use,
shall be liable as a contributory infringer. 35 USC
271(c)
- Contributory infringement imposes liability on one who

embodies in a non-staple device the heart of a patented
process and supplies the device to others to complete the
process and appropriate the benefit of the patented
invention Ricoh (Vita-Mix, 9/16/09)
- Direct infringement required (R+L Carriers, 6/7/12

(*pleading direct infringement need only satisfy Form
18, while pleading induced and contributory
infringements must meet the plausible claim
requirement of Twombly (S.C.) and Iqbal (S.C.); see also
J. Newman, dissenting all claims must meet the
Supreme Court standard); Spansion, 12/21/10; Fujitsu,
9/20/10 (patentee must show actual infringement, and not
capable of infringement (unless claim recites capacity to
infringe)); i4i, 3/10/10 (evidence of direct infringement
included testimony by the patentees expert, a joint
stipulation, and the infringers response to
interrogatories); Vita-Mix, 9/16/09; Lucent, 9/11/09;
Erbe Elektromedizin, 5/19/09 (no direct infringement
proven based on limited claim construction); Ricoh,
12/23/08; DSU Medical, 12/13/06)
- Pleading direct infringement (R+L Carriers, 6/7/12

(see above))
1075
- Patentee always has the burden to show direct
infringement for each instance of indirect
infringement (i4i, 12/22/09 (direct infringement
shown, since a reasonable jury could have found
that at least one person performed the methods
claimed in the patent; also, survey evidence for
estimating the amount of infringing use was
properly relied on for calculating damages); DSU
Medical, 12/13/06)
Knowledge of infringement
- Patentee must show that the defendant knew that the

combination for which its components were especially
made was both patented and infringing Golden Blount,
Aro II (S.C.) (*Global-Tech v. SEB, 5/31/11 (S.C.)
(interpreting Sections 271(b) and (c) in the same way,
based on Aro II (S.C.)), and that the defendants
components have no substantial non-infringing uses
Cross Medical Prods. (Spansion, 12/21/10; Fujitsu,
9/20/10 (CAFC unable to hold that the accused infringer
did not have the requisite knowledge based on a notice
letter that identified the patent and stated that all standard
compliant products infringe); i4i, 3/10/10 (jury could
have reasonably concluded the defendants knowledge of
infringement based on circumstantial evidence); Lucent,
9/11/09; Golden Blount, 2/15/06)
Intent (knowing)
- Presumption of intent One who makes and sells

articles which are only adapted to be used in a patented
combination will be presumed to intend the natural
consequences of his acts; he will be presumed to intend
that they shall be used in the combination of the patent
Grokster (S.C.) (Spansion, 12/21/10 (presumption based
1076
on instructions to infringe sold with the accused product);
DSU Medical, 12/13/06)
- Potential for induced infringement is not a practical

substitute for contributory infringement liability, because
unlike contributory infringement, induced infringement
liability under Section 271(b) requires proof of an
affirmative intent to cause direct infringement under
DSU Medical (en banc) (Ricoh, 12/23/08)
Offer for sale or sale of a component . . . .
- Section 271(c) applies not only to the bare sale of an

infringing component, but also to the sale of that
component as part of a product or device (i4i, 3/10/10
(sale of XML editor as part of Microsoft Word); Ricoh,
12/23/08 (ruling that an accused infringer should not be
permitted to escape liability as a contributory infringer
merely by embedding an otherwise infringing component
into a larger product also having some additional,
separable, substantially noninfringing feature; see also
J. Gajarsa, dissenting, opining that the larger product
with infringing component and other substantially
noninfringing components does not contributorily
infringe under Section 271(c)))
- Sale vs. bailment (Pharmastem, 7/9/07)
- Sale or provision of a service for compensation

that assists another in committing infringement is
not contributory infringement, although may be
active inducement of infringement; sale of a
product is required for contributory infringement
(Pharmastem, 7/9/07 (see also J. Newman,
dissenting))
1077
Substantial non-infringing uses
- Noninfringing uses are substantial when they are not

unusual, far-fetched, illusory, impractical, occasional,
aberrant, or experimental (Toshiba, 6/11/12; R+L
Carriers, 6/7/12 (alternative noninfringing uses of the
accused products may be substantial even though
practicing the patented method may be the most logical
or useful purpose for the products); i4i, 3/10/10 (cannot
be evaluated in a vacuum Vita-Mix; jurys verdict was
not unreasonable, since the alleged noninfringing uses
were not practical or worthwhile to the intended market);
Vita-Mix, 9/16/09 (non-infringing use of accused blender
was substantial, which thus defeated claim for
contributory infringement as a matter of law; see also J.
Bryson, dissenting))
- Whether use is substantial the fact finder may

consider the uses frequency, the uses practicality,
the inventions intended purpose, and the intended
market i4i (Toshiba, 6/11/12)
- Patentee must make prima facie case of the absence of

substantial non-infringing uses; the burden of production
then shifts to the accused infringer to show a non-
infringing use (Toshiba, 6/11/12 (despite having the
burden to prove the lack of substantial noninfringing
uses, the patentee failed to proffer evidence that created a
genuine issue of material fact as to whether using
unfinalized DVDs was not a substantial noninfringing
use citing Golden Blount); R+L Carriers, 6/7/12 (the
complaints attachments supplied the facts that defeated
the patentees allegation of no substantial noninfringing
uses and thus claim of contributory infringement, the
CAFC stating that the patentee must plead facts that
allow an inference that the components sold or offered
for sale have no substantial noninfringing uses the
relevant inquiry focuses on whether the accused products
1078
can be used for purposes other than infringement);
Spansion, 12/21/10 (evidence was insufficient to
overcome prima facie showing, where customers were
instructed to use the accused product in an infringing
manner citing Golden Blount); Golden Blount, 2/15/06)
- Instructions for the accused product as evidence of

no substantial noninfringing uses (Toshiba,
6/11/12)
- Recommending one use over another does

not mean the non-recommended use is not
substantial (Toshiba, 6/11/12)
- Nature of the accused device may be important to the

analysis of whether a substantial non-infringing use
exists Ricoh (Spansion, 12/21/10); See also Eli Lilly,
7/29/11 (nonprecedential unauthorized uses of a drug
product do not avoid infringement by a product that is
authorized to be sold solely for the infringing use)
- Component sold as part of a larger product it is

entirely appropriate to presume that one who sells
a product containing a component (which is a
separate and distinct feature of the product) that
has no substantial noninfringing use in that product
does so with the intent that the component will be
used to infringe (Spansion, 12/21/10; Fujitsu,
9/20/10 (similar to i4i, analyzing contributory
infringement based on separate and distinct
features (fragmentation functions), rather than the
entire product when activated, the product is
infringing); i4i, 3/10/10 (no abuse of discretion in
instructing the jury to focus on component (XML
editor), rather than the larger product containing
the component (Microsoft Word)); Lucent, 9/11/09
(jury could reasonably conclude that the accused
infringer intended computer users to use the
1079
infringing date-picker tool, which was part of a
larger software program, citing Grokster (S.C.));
Ricoh, 12/23/08 (citing and/or distinguishing
Grokster (S.C.) and Sony (S.C.), ruling that unable
to read them as requiring the court to ignore the
sale of a separable, distinct infringing component
because it is bundled together with a noninfringing
component before being distributed))
Material part of the invention
- Material part of the invention (Arris Group, 5/19/11;

Fujitsu, 9/20/10 (product that only defragments messages
cannot constitute a material part of a claimed invention
drawn solely to fragmentation))
Within the United States
- Section 271(c) has a territorial limitation requiring

contributory acts to occur in the United States; there must
be evidence of direct infringement to which the accused
infringer contributed in the United States (DSU Medical,
12/13/06 (for product imported into the U.S.))
D. 35 USC 271(e)(1) FDA exemption, safe harbor
Generally Merck v. Integra (S.C.)
- (e)(1) It shall not be an act of infringement to make, use, offer

to sell, or sell within the United States or import into the United
States a patented invention . . . solely for uses reasonably
related to the development and submission of information under
a Federal law which regulates the manufacture, use, or sale of
drugs or veterinary biological products. 35 USC 271(e)(1)
1080
- 271(e)(1) FDA exemption, safe harbor provision - R&D
exemption from infringement when solely for uses reasonably
related to obtaining regulatory approval (Momenta, 8/3/12
(holding that post-approval activities required by the FDA (to
satisfy the FDAs requirements) and that are reasonably
related to the development and submission of information under
a Federal law which regulates the manufacture, use, or sale of
drugs fall within the scope of the 271(e)(1) safe harbor;
reasoning that the scope of the safe harbor does not stop at
activities reasonably related to development of information
submitted in an ANDA for approval of a generic drug based
on Section 271(e)(1)s plain and unambiguous language, the
allegedly infringing use must be for uses reasonably related
to the development and submission of information to the FDA
relying on Eli Lilly (S.C.) and Merck (S.C.); thus, applying the
the exemption to information obtained from post-approval,
quality control batch testing, and distinguishing Classen (in
which post-approval activities were held not exempted), stating
that the scope of the safe harbor provision does not extend to
information not required by the FDA that may be routinely
reported to the FDA, long after marketing approval has been
obtained, vs. here the information submitted was necessary
both to the continued approval of the ANDA and to the ability
to market the generic drug; also ruling that the exemption
nowhere mandates the use of a noninfringing alternative when
one exists; see also J. Rader, dissenting based on the
legislative history of the Hatch-Waxman Act, the exemption
applies only to pre-marketing approval, experimental, limited
use to obtain FDA marketing approval, and not post-marketing
approval, commercial, continuous infringing use, and stating
that the courts decision will render worthless manufacturing
test method patents and more broadly would essentially
render manufacturing method patents worthless); Classen,
8/31/11 (exemption is not applicable to post-approval
activity/submissions to the FDA, and J. Newman and C.J.
Rader opining, based on the intent of the statute as expressed in
the legislative history, that the exemption is for infringement by
generic drug companies seeking approval for a generic of an
1081
NDA-approved drug; see also J. Moore, dissenting, based on
the language of the statute that the exemption applies to post-
approval activity) [on 6/25/12, the U.S. Supreme Court asked
the Solicitor General to recommend whether the Court
should grant certiorari]; Amgen, 4/30/09 (exemption applies
to patented products and/or products made by patented
processes, whether the infringement action is in the district
court or the ITC, citing the broadly stated congressional
policy in enacting 271(g) and as implemented in Merck v.
Integra (S.C.) and Eli Lilly v. Medtronic (S.C.); see also J. Linn,
dissenting for process patent infringement, the safe harbor
applies only to 271(g) infringement, and not to process patent
infringement under Section 337) [the CAFCs prior opinion,
issued 3/19/08, was vacated and withdrawn]; Proveris, 8/5/08
(rejecting a broad reading of patented invention in Section
271(e)(1) and holding that the safe harbor provision does not
immunize from infringement the manufacture, marketing or
sale of a research tool, which is used in the development of
FDA regulatory submissions but is not itself subject to the FDA
premarket approval process - citing the Supreme Courts
interpretation of patented invention in Eli Lilly v. Medtronic
to include within the terms scope all products listed in Section
156(f), eligible for a patent term extension (drug products,
medical devices, food additives, and color additives) and which
are themselves subject to FDA premarket approval, i.e., as to
produce a perfect product fit between the two provisions);
Integra, 7/27/07 [on remand from the U.S. Supreme Court];
Benitec, 7/20/07 (divesting the district court of DJ jurisdiction
over the defendants counterclaims); Integra, 6/6/03 [vacated
by the U.S. Supreme Court, and remanded to the CAFC for
additional briefing])
- [Old law] Pre-clinical research is not covered by the

exemption (Integra, 6/6/03, and 12/03 errata) [vacated
by the U.S. Supreme Court in Merck v. Integra, which
held a broad scope for the safe harbor provision:
271(e)(1)s exemption from infringement extends to
all uses of patented inventions that are reasonably
1082
related to the development and submission of any
information under the FDCA.; both pre-clinical
research (IND and NDA) and clinical research (NDA)
of a patented compound are exempt from
infringement under 271(e)(1), whether testing was
conducted for safety or efficacy of the patented
compound; the use of patented compounds in
preclinical studies is protected under 271(e)(1) as
long as there is a reasonable basis for believing that
the experiments will produce the types of
information that are relevant to an IND or NDA;
the experimental results need not actually be
submitted in the IND or NDA for the exemption to
apply; research tool patents were specifically
excluded (in footnote 7) from the Courts holding]
- 271(e)(1) exempts from infringement all uses of

patented compounds reasonably related to the process
of developing information for submission to the FDA
(e.g., preclinical studies relating to efficacy, safety,
mechanism of action, pharmacology, pharmacokinetics);
reasonably related includes uses in research that are
conducted after the biological mechanism and
physiological effect of a candidate drug have been
recognized (i.e., once reasonable to believe that the
compound under study may work for the intended use),
such that if the research is successful it would
appropriately be included in a submission to the FDA
Merck (S.C.) (Proveris, 8/5/08; Integra, 7/27/07 (on
remand from the Supreme Court, holding that the
preclinical research in question was reasonably related
to FDA approval); Benitec, 7/20/07)
- Exemption includes all experiments even though

not actually submitted to the FDA, i.e., (1)
experimentation on drugs that are not ultimately
the subject of an FDA submission, or (2) the use of
patented compounds in experiments that are not
1083
ultimately submitted to the FDA Merck (S.C.)
(Momenta, 8/3/12 (information regarding quality
control batch testing was submitted to the FDA
where was subject to FDA inspection); Integra,
7/27/07)
- Reasonably related to the development of

information for submission to the FDA criterion
established at the time of the experiment, and does
not depend on the success or failure of the
experimentation or actual submission of the
experimental results; studies of compounds that are
not ultimately proposed for clinical trials are
within the FDA exemption, when there was a
reasonable basis for identifying the compounds as
working through a particular biological process to
produce a particular physiological effect Merck
(S.C.) (Proveris, 8/5/08; Integra, 7/27/07)
- Exemption applies to information for submission

under any federal law regulating the manufacture,
use, or distribution of drugs Merck (S.C.)
(Benitec, 7/20/07 (whether the parenthetical
exception for animal drugs in 271(e)(1) applied))
- Statutory symmetry between Sections 156 (patent

term extension) and 271(e)(1) is not required, i.e. a
patent term extension need not be available for the
safe harbor exemption to apply Abtox (Momenta,
8/3/12 (see also J. Rader, dissenting))
- Accused activities are evaluated separately each of the

accused activites must be evaluated separately to
determine whether the exemption applies Merck (S.C.)
the Court in Merck set careful boundaries to the
exemption, requiring separate review of all studies for
which the exemption was claimed (Amgen, 4/30/09
(ITC incorrectly assumed that all otherwise infringing
1084
activities are exempt if conducted during the period
before regulatory approval is granted the safe harbor
statute does not so provide))
- Scientific studies vs. commercial and marketing

studies, which are more clearly subject to separate
evaluation for the exemption to apply (Amgen,
4/30/09 (remanded to determine the extent of
Roches post-BLA activities, uses of imported
EPO which were unrelated to obtaining FDA
approval, and thus not shielded by the exemption))
Alternative uses/purposes of research are also exempt
- Alternative uses or purposes of research activities otherwise

covered by the 271(e)(1) exemption are permitted and are not
infringement (Momenta, 8/3/12 (n.2); Integra, 7/27/07)
- That experiments also contributed to scientific

knowledge (i.e., discovery, as opposed to routine
experiments) does not deprive them of the safe-harbor
benefit of 271(e)(1) when the requirements of the
exemption are met (Integra, 7/27/07)
Basic scientific research is not exempt
- Basic scientific research is not covered by the FDA exemption

the exemption is not directed to basic scientific research
unrelated to the development of a particular drug basic
scientific research on a particular compound, performed without
the intent to develop a particular drug or a reasonable belief that
the compound will cause the sort of physiological effect the
researcher intends to induce is surely not reasonably related to
the development and submission of information to the FDA
Merck (S.C.) (Integra, 7/27/07)
1085
Research tools
- Patented research tools - generally
- Merck v. Integra (S.C.) did not address patented research

tools - both the U.S. Supreme Court and the CAFC
confirmed that Merck v. Integra did not raise the issue of
research tools; the Supreme Court confirmed this in
footnote 7, stating in part: We need not and do not
express a view about whether, or to what extent,
271(e)(1) exempts from infringement the use of research
tools in the development of information for the
regulatory process (Integra, 7/27/07 (see also J. Rader,
dissenting-in-part and concurring-in-part ([T]his court
today expands the exemption beyond the Supreme
Courts limits on the provision to eliminate protection for
research tool inventions, in response to which the
majority disagreed, holding that research tools were not
at issue in the case; Judge Rader stated further that the
Supreme Court only extended the scope of the exemption
to patented compounds (as opposed to patented
inventions used to experiment with compounds) in pre-
clinical studies leading to FDA approval, and that two of
the patents in the case, if construed, claimed research
tools))
- Research tools (as defined by the NIH) are tools that

scientists use in the laboratory including cell lines,
monoclonal antibodies, reagents, animal models, growth
factors, combinatorial chemistry and DNA libraries,
clones and cloning tools (such as PCR), methods,
laboratory equipment and machines (Integra, 7/27/07)
- Patented research tools are not exempted from infringement by

Section 271(e)(1)
- Section 271(e)(1) does not immunize from infringement

patented research tools, which are not themselves subject
1086
to FDA premarket approval requirements (Proveris,
8/5/08 (holding that Section 271(e)(1) did not immunize
from infringement the manufacture, marketing, or sale of
a research tool (a device for measuring spray
characteristics in aerosol drug delivery products), which
is used in the development of FDA regulatory
submissions, but is not itself subject to the FDA
premarket approval process))
- Exemption does not apply to a party who is not seeking

FDA approval for a product in order to enter the market
to compete with the patentee (Proveris, 8/5/08
(addressing the first and second unintended distortions
of a patent term resulting from premarket approval
(referenced in Eli Lilly (S.C.)), which Sections 156 and
271(e)(1) were enacted to eliminate))
E. 35 USC 271(f)
Active inducement
- Active inducement (in 271(f)) requires direct

infringement and requisite showing of intent prove
intent circumstantially (Liquid Dynamics, 6/1/06)
Method/process inventions
- Section 271(f) does not apply to method claims (Cardiac

Pacemakers, 8/19/09 (en banc) - see also J. Newman,
dissenting, interpreting Section 271(f) to encompass
method claims, in part because the term patented
invention in Section 271(f) is a general term embracing
all of the statutory classes of patentable invention; Union
Carbide, 10/3/05 (ruling that 271(f) applies to
method/process inventions, since 271(f) applies to
every component of every form of invention, and is not
limited to physical machines Eolas; thus, the export
from the U.S. of a component (a catalyst) for use outside
1087
the U.S. in a patented method infringed) [overruled by
Cardiac Pacemakers (en banc) on 8/19/09, along with
any implication in Eolas or other decisions that
Section 271(f) applies to method patents; previously,
on 1/10/06, the CAFC had denied a petition for en
banc review; Judges Lourie, Michel and Linn
dissented, stating that 271(f) does not apply to
method claims, as the statute speaks instead of
supplying components of a patented invention,
which relates to physical inventions, i.e., apparatus or
compositions, not methods; in contrast, material for
use in practicing a process is not a component of that
process]); See also Cardiac Pacemakers, 12/18/08
(nonprecedential affirming the district courts decision
permitting overseas damages under Section 271(f), while
ruling that Microsoft v. AT&T (S.C.) did not overturn
CAFC precedent holding that Section 271(f) applies to
method claims, including Union Carbide in which the
full court was not unanimous in its approval of the
courts holding, see above, but stating that [a]s a panel,
we cannot reverse the holding of another panel of this
court) [vacated and the appeal reinstated, on 3/6/09,
for en banc review of the question: Does Section
271(f) apply to method claims, as well as product
claims? No Section 271(f) does not apply to method
claims - Cardiac Pacemakers, 8/19/09 (en banc)]; See
also STATUTORY INTERPRETATION
- Steps of a method claim are not components

under 271(f) - NTP (Cardiac Pacemakers,
8/19/09 (en banc) (concluding that method steps
are components of the method, but because they
cannot be supplied under Section 271(f) since
physically impossible, Section 271(f) cannot apply
to method or process claims); NTP, 8/2/05)
- Section 271(f) does not forbid the supplying of

products that are the result of steps of the patented
1088
method; rather it forbids the supply of the
components themselves (Cardiac Pacemakers,
8/19/09 (en banc) (in dicta, rejecting argument in
amicus curiae brief that one might infringe Section
271(f) by supplying a physical object that is the
result of one of the steps of a patented process and
combine that object with the remaining steps
abroad))
Physical supply of components is required
- Supplying or causing to be supplied refers to physical

supply of components, and not to supply of (design)
instructions or corporate oversight (Pellegrini, 7/8/04)
Software as a component Microsoft v. AT&T (S.C.),

Eolas
- Software may be a component of a patented invention

under 271(f) Eolas - does not apply to software
replicated abroad from a master version exported from
the U.S., as the copies are not supplied under 271(f)
(AT&T, 7/13/05 (ruling that copies of software produced
abroad from a master version exported from the U.S.
were supplied under Section 271(f), as copying abroad
= supplied) [overruled by Microsoft v. AT&T on April
30, 2007, in which the U.S. Supreme Court, 7-1, by
Justice Ginsburg (C.J. Roberts took no part in the
consideration or decision of the case), reversed the
CAFCs decision, holding that a copy of Windows on
a CD-ROM, not Windows in the abstract, qualifies as
a component under 271(f), and thus because
Microsoft did not supply from the United States the
copies of Windows that were installed in the
infringing computers in a foreign country (but rather
supplied from the United States a master disk or
1089
electronic transmission from which the copies of
Windows were produced in the foreign country),
Microsoft did not infringe AT&Ts patent under
271(f); 1) Its important to note that the Court did not
address whether software in the abstract, or any
other intangible, can ever be a component under
271(f), for instance, if an intangible method or process
qualifies as a patented invention under 271(f) (n.
13); 2) With respect to the ease of copying
argument on which the CAFCs decision was based,
i.e., that copying software abroad is easy and
inexpensive, the Supreme Court stated: Section
271(f) contains no instruction to gauge when
duplication is easy and cheap enough to deem a copy
in fact made abroad [is] nevertheless supplie[d] . . .
from the United States. The absence of anything
addressing copying in the statutory text weighs
against a judicial determination that replication
abroad of a master dispatched from the United States
supplies the foreign-made copies from the United
States within the intendment of 271(f); 3) Given the
expanded extraterritorial thrust of AT&Ts
argument, this loophole for software makers is
properly left for Congress to consider, and to close if
it finds such action warranted; 4) As an additional
basis for why Microsofts conduct fell outside
271(f)s compass, the Court cited the presumption
against extraterritoriality, which applies with
particular force in patent law [i]f AT&T desires to
prevent copying in foreign countries, its remedy today
lies in obtaining and enforcing foreign patents; 5) In
a concurring opinion, Justices Alito, Thomas, and
Breyer agreed with the Court that a component of a
machine must be something physical; however, no
physical aspect of a Windows CD-ROM original
disk or copy is ever incorporated into the computer
itself; 6) In a dissenting opinion, Justice Stevens stated
that the master disk is the functional equivalent of a
1090
warehouse of components components that
Microsoft fully expects to be incorporated into
foreign-manufactured computers]; Eolas, 3/2/05); See
also Pellegrini, 6/5/08 (nonprecedential stating that
Eolas did not change the law regarding whether software
qualifies as a component under 271(f), but rather
interpreted what 271(f) has always meant)
- Liability under 35 USC 271(f) does not extend to

the installation of software onto a computer abroad
when the copies of that software are made abroad,
because in such case the copies are not supplied
from the U.S. within the meaning of the statute
(Amado, 2/26/08 (remanded for the district court
to decide the applicability of AT&T (S.C.) to sales
of software abroad))
F. 35 USC 271(g), 295
(Creative Compounds, 6/24/11; Finjan, 11/4/10 (n.3); Amgen,

9/15/09; Monsanto, 10/4/07; NTP, 8/2/05; Bayer, 8/22/03); See
also Adams & Assocs., 3/18/13 (nonprecedential rejecting
argument that computer motherboards could be made by
certification testing (which was not part of the process to
make the motherboards) and thus the importation of the
motherboards infringe under Section 271(g)), because the mere
production of information is not covered by Section 271(g)
citing Bayer)
- Section 271(g) makes the importation into the U.S. of a

product made by a process patented in the U.S. an act of
infringement; however, if the product made by the
patented process is materially changed by subsequent
processes prior to importation, then importation of that
product does not constitute infringement - 271(g)(1)
(Amgen, 9/15/09 (process claims were infringed under
Section 271(g) where the imported drug product was not
1091
materially changed by pegylating EPO made by the
patented processes))
- Materiality of change is context-dependent, a

factual determination for the trier of fact, and a
question of degree (Amgen, 9/15/09 (stating that
[i]n the biotechnology context, a significant
change in a proteins structure and/or properties
would constitute a material change))
- Process must be for the manufacturing of a physical

article vs. a tangible result which is required for
101 patentability (NTP, 8/2/05)
- Section 271(g) infringement requires that the patent be

issued and in force at the time the process is practiced
and the product is made - Mycogen Plant Science
(Monsanto, 10/4/07)
- Presumption of infringement under Section 295 in

actions alleging infringement of a process claim under
Section 271(g), there is a rebuttable presumption that the
imported product was made from the patented process if
the court finds: 1) that a substantial likelihood exists that
the product was made by the patented process, and 2) that
the patentee has made a reasonable effort to determine
the process actually used to produce the product but was
unable to do so if both 1 and 2 are met, the product is
presumed to have been made by the process, and the
burden of establishing that the product was not made by
the process is on the accused infringer 35 USC 295
(Creative Compounds, 6/24/11 (affirming SJ of
infringement where the accused infringer failed to satisfy
burden of producing evidence or argument showing that
the accused product was not made by the claimed
process))
1092
G. 35 USC 272
(National Steel Car, 1/29/04)
- Entering the U.S. for the sole purpose of engaging in

international commerce is not infringing (National Steel
Car, 1/29/04)
H. Other Infringement Issues
Admissions by counsel
- Counsels statement during opening statement was

binding evidential, not conclusive, admission of
noninfringement by certain structure jury was therefore
free to weigh against other evidence (Paice, 10/18/07);
See also Realsource, 6/23/08 (nonprecedential
admission by the patentees counsel during oral argument
that the patentee did not intend to expand the claim scope
by changing the claim language during prosecution)
Admissions in the specification and publications
- Teachings of the specification indicating

noninfringement (Astrazeneca, 6/10/08 (nonprecedential
noninfringement shown where the specification
described talc as an ordinary additive and not a claimed
ARC, and the listed ARCs did not include talc))
- Teachings in publications supporting infringement

(Abbott Labs, 10/21/08 (admission that component had
extended release properties))
Affirmative defenses to infringement 35 USC 282
1093
- Affirmative defenses to infringement include
noninfringement, unenforceability, invalidity (35 USC
282), patent misuse, and the existence of an implied
license (Monsanto, 8/16/06)
- Invalid claim cannot give rise to liability for

infringement an accused product cannot be found
liable for infringement of an invalid claim -
Medtronic (Lazare Kaplan, 4/19/13)
Apparatus, system vs. method claims
- Apparatus claims cover what a device is, not what a

device does Hewlett-Packard; absent an express
limitation to the contrary, any use of a device that meets
all of the limitations of an apparatus claim written in
structural terms infringes the apparatus claims (Advanced
Software Design, 6/2/11 (raising issue of differences
between system and method claims; see also n.2);
Centillion Data Systems, 1/20/11 (no infringement of
system claims, applying vacarious liability precedent);
Uniloc, 1/4/11 (rejecting argument that would have
imported a method step into the claimed software system,
which the claim language did not support); Research
Corp., 12/8/10 (pure apparatus claim without process
limitations was not limited to the process of making the
apparatus described in the patent); Finjan, 11/4/10
(comparing system claims to method claims); Silicon
Graphics, 6/4/10 (use not required to infringe); Vizio,
5/26/10 (J. Clevenger, dissenting); Paragon Solutions,
5/22/09 (improper for the district court to have read a
contextual requirement into the term displaying real-
time data for a sports watch); Baldwin Graphic Systems,
1/15/08 (device claim not limited to process or sequence
of steps)); See also Creative Internet Advertising, 4/22/11
(nonprecedential limiting apparatus (computer
program) claim to requiring all limitations in the same
1094
text message; see also J. Clevenger, dissenting); See also
CLAIM CONSTRUCTION Apparatus claims not
limited by use or process of making and Product-based
claim limited to process by which the product is made?;
INDEFINITENESS Notice function of claims,
functional language, claims covering both apparatus and
method
- Apparatus vs. method claims rules may not always

apply the same to each NTP (Akamai Techs., 8/31/12
(en banc) (The problem of divided infringement in
induced infringement cases typically arises only with
respect to method patents. When claims are directed to a
product or apparatus, direct infringement is always
present, because the entity that installs the final part and
thereby completes the claimed invention is a direct
infringer.); Advanced Software Design, 6/2/11 (raising
issue and citing NTP); Centillion Data Systems, 1/20/11
(distinguishing system and method claims, based on
NTP); Finjan, 11/4/10 (system claims do not require
method steps); Cardiac Pacemakers, 8/19/09 (damages
from infringement of apparatus claims cover any sale of
an apparatus that could execute the elements of the
claims, distinguishing Stryker since only a method claim
was infringed); Cross Medical Prods., 9/30/05); See also
Cardiac Pacemakers, 12/18/08 (nonprecedential proof
of damages differed)
- For infringement of a process invention, all of the

steps of the process must be performed, either as
claimed or by an equivalent step (ePlus, 11/21/12
(noting distinction between system and method
claims); Finjan, 11/4/10; Cardiac Pacemakers,
8/19/09 (limiting damages to the sale of devices
shown to infringe the method patent, where no
apparatus claims were at issue); Ricoh, 12/23/08;
Muniauction, 7/14/08; Monsanto, 10/4/07; BMC
1095
Resources, 9/20/07 [overruled by Akamai Techs.,
8/31/12 (en banc)]); See also Joint infringement
- Method claims are directly infringed only

when all steps of the claimed process are
performed NTP, Joy Tech. (Meyer,
8/15/12; Finjan, 11/4/10; Lucent, 9/11/09;
Cardiac Pacemakers, 8/19/09; Ricoh,
12/23/08 (the sale or offer for sale of
software (i.e., the computers instructions
for performing a method) that causes the
accused devices to perform the claimed
methods does not directly infringe, but
rather the actual carrying out of the
instructions is that which constitutes a
process within the meaning of Section
271(a); otherwise not answering the
question of whether a process may ever be
sold to directly infringe under Section
271(a), citing NTP and that such concept is
ambiguous); Monsanto, 10/4/07), not by the
sale of an apparatus that is capable of
infringing use (Ricoh, 12/23/08; Ormco,
8/30/06); See also Cardiac Pacemakers,
12/18/08 (nonprecedential the district
court correctly limited damages to sales of
ICDs that performed the steps of the claimed
method; also distinguishing method from
apparatus claims); See also
INFRINGEMENT Generally
- Process consists of doing something, and therefore

has to be carried out or performed In re Kollar
(Ricoh, 12/23/08)
- Sale of equipment to perform a process is not a

sale of the process Joy Techs. (Cardiac
Pacemakers, 8/19/09 (limiting damages to devices
1096
that actually performed the patented method during
the relevant infringement period, citing Joy
Techs.); Ricoh, 12/23/08 (citing Joy Techs., ruling
that [t]he law is unequivocal that the sale of
equipment to perform a process is not a sale of the
process within the meaning of section 271(a)));
See also Cardiac Pacemakers, 12/18/08
(nonprecedential stating the above rule as the
basis for awarding damages only on those devices
that actually performed the patented method)
- Patented method may not be sold in the

same way as an article or device Quanta
(S.C.) (R+L Carriers, 6/7/12 (no need to
address issue of direct infringement of
method claim based on an offer to sell the
method); Ricoh, 12/23/08)
- Sale of software the sale or offer for sale of

software containing instructions to perform a
patented method does not directly infringe a patent
under Section 271(a) (Centillion Data Systems,
1/20/11 (providing software was not direct
infringement of system claims); Ricoh, 12/23/08)
- Method claims often include structural details

(Akamai Techs., 12/20/10 (structural element was
explicitly and properly included in the asserted
method claims) [vacated and en banc review
granted, on 4/20/11])
- Performance of claimed method being unnecessary

is no defense to infringement (Dow, 9/5/03)
Bankruptcy
1097
- Discharge in bankruptcy effect thereof to asserting
cause of action for infringement; discharge does not
enjoin from asserting cause of action that arose after
bankruptcy discharge (Hazelquist, 2/9/06)
Biotech/Pharma
- Biotech/Pharma
- Under the U.S. Supreme Courts April 30, 2007

ruling in Microsoft v. AT&T, which addressed
the applicability of 35 USC 271(f) to software,
the Court suggested that chemical or biological
substances created by reproduction in a foreign
country (e.g., from a cell line supplied from the
U.S.) cannot be components of a patented
invention supplied from the U.S. for purposes of
infringement under 271(f).
- Common law research exemption (Classen,

8/31/11; Integra, 6/6/03); See also Experimental
use exception to infringement
- Biotech
- Principles of patent law (e.g., infringement) do not

cease to apply when patentable inventions (e.g.,
chimeric genes) are incorporated within living
things, either genetically or mechanically
(Monsanto, 5/24/07)
- Fact that patented technology can replicate

itself, e.g., Round-up Ready seeds, does not
give a purchaser the right to use replicated
copies of the technology; applying the first
sale doctrine to subsequent generations of
self-replicating technology would eviscerate
1098
the rights of the patent holder (Monsanto,
8/16/06)
- Pharma
- Comparative pH testing results to prove

infringement (Warner-Lambert, 9/21/07); See
Proof of infringement
- Infringement does not require bioequivalence

(Adams, 8/5/10)
- In vitro dissolution data to prove in vivo delivery

need evidence demonstrating that the in vitro
system is a good model of actual in vivo behavior
(Alza, 9/6/06)
- Medicines claimed in patents can be made inside

or outside of body (Novartis, 4/2/04)
Capable of, sometimes infringement
(Sunovion, 9/26/13 (ANDA drug product with 0.0-0.6%

levorotatory isomer literally infringed claim to less than 0.25%
isomer); Versata Software, 5/1/13 (expert testimony supported
infringement of software claims in that the accused software
product did not need to be modified or altered for, but rather
was capable of, infringement); Accent Packaging, 2/4/13
(accused product did not infringe where safety stop had to be
removed to meet claim limitation); ePlus, 11/21/12
(infringement was not shown either directly or circumstantially
where only the capability of the accused system to perform the
claimed method was shown, rather than evidence showing or
suggesting an actual act of infringement); Typhoon Touch,
11/4/11 (affirming construction that claim required that the
accused device actually perform, or was configured or
programmed to perform, each of the functional limitations in
1099
apparatus claims for infringement); Finjan, 11/4/10 (apparatus
claims required for infringement only that software be
programmed for performing the claimed steps, distinguishing
Acco Brands); Fujitsu, 9/20/10 (actual infringement required
for contributory infringement, and not capable of infringement
(unless claim recites capacity to infringe) case similar to Acco
Brands); Enzo Biochem, 3/26/10 (rejecting argument based on
doctrine of claim differentiation where the independent claim
only was capable of what the dependent claim required, citing
Revolution Eyewear); Vita-Mix, 9/16/09 (undisputed that the
accused blenders could be used in either an infringing or
noninfringing manner); Gemtron, 7/20/09 (requiring only that
the disputed term end edge portion be relatively resilient at
that time of assembly of the claimed refrigerator shelf, which
term was thus infringed by the accused shelfs which also were
relatively resilient only at the time of assembly); Revolution
Eyewear, 4/29/09 (claim reciting capable of engaging was
infringed even though the accused eyeglass frame was not used
commercially in an infringing manner); Ball Aerosol, 2/9/09;
Technology Licensing, 10/10/08 (mentioning de minimus
infringement, and that the district court did not find that those
few pulses actually would infringe very quickly or briefly); U.
Texas, 7/24/08 (intermittent infringement theory rejected
based on narrow claim construction); Z4 Technologies,
11/16/07; Acco Brands, 9/12/07; Ormco, 8/30/06; LG
Electronics, 7/7/06; Cross Medical Prods., 9/30/05; Ferguson,
12/4/03; HP, 8/7/03)
- In every infringement analysis, the language of the

claims, as well as the nature of the accused product,
dictates whether an infringement has occurred Fantasy
Sports (Finjan, 11/4/10)
- Infringement argument rendering claim limitation

meaningless (Accent Packaging, 2/4/13 (rejecting
argument that ignored presence of safety stop in
the accused device that avoided infringement of
ninety degree arc limitation))
1100
- Infringement requires specific instances of direct
infringement or that the accused device necessarily
infringes the patent in suit (Finjan, 11/4/10
(distinguishing Acco Brands); Fujitsu, 9/20/10 (capable
of infringement failed to prove actual infringement for
contributory infringement); Ball Aerosol, 2/9/09 (that the
accused candle was reasonably capable of being put into
the claimed configuration was insufficient for a finding
of infringement, where there was no proof that the
accused candle was ever placed in the infringing
configuration and the accused candle did not necessarily
have to be placed in the infringing configuration, citing
Acco Brands))
- Accused device, product that sometimes, but not always,

embodies a claimed (device, product, method) invention
nonetheless infringes Bell Commcn Research
(Broadcom, 10/7/13 (applying rule to affirm JMOL of
infringement based on the accused infringers experts
admission); Acco Brands, 9/12/07 (sometimes
infringement is not direct infringement for proving
inducement; instead must show that the accused device
necessarily infringes the patent in suit); Cross Medical
Prods., 9/30/05)
- Non-infringing mode of operation does not avoid

infringement the accused device is still
infringing if reasonably capable of satisfying the
claim limitations, even though also capable of non-
infringing modes of operation (Versata Software,
5/1/13 (affirming jury verdict of infringement of
software claims, relying on rule from Finjan and
admissions by the accused infringers expert
regarding how customers are expected to set up the
software); Finjan, 11/4/10 (infringement found
where apparatus, non-method claims described
capabilities without requiring that any software
1101
components be active or enabled); Ball Aerosol,
2/9/09 (rejecting argument that accused product
infringed because was reasonably capable of
infringement, where the claims clearly specified a
particular configuration and failed to recite
capable language; also distinguishing line of
cases for this reason); Z4 Technologies, 11/16/07);
See also Harris, 1/17/13 (nonprecedential
remanding infringement issue for further
consideration where five minute feature that
rendered the accused system noninfringing under
the correct claim construction was only an option
of the accused system; also distinguishing method
from system claims)
- Any practice of claimed invention = infringement, but

claim must be considered in entirety (LG Electronics,
7/7/06)
- Claim reciting capable of (or similar language, e.g.,

programmable, rotatable) accused device need only be
capable of doing the recited feature, vs. actual operation
is not required Intel (Finjan, 11/4/10 (e.g., engine for
__ claim element need not be active for infringement);
Fujitsu, 9/20/10 (proof of actual infringement was
required for contributory infringement where the claim
did not recite the capacity to infringe); Vizio, 5/26/10
(claim language for identifying and suitable for use
on their face suggest actually being capable of use for the
claimed function); Enzo Biochem, 3/26/10; Abbott Labs,
5/18/09 (optional language (e.g., obtainable by) in a
product-by-process claim is limiting); Revolution
Eyewear, 4/29/09 (accused eyeglass frames infringed
where although not specifically designed or sold to be
used in an infringing manner, were nevertheless capable
of being used in that way))
1102
- Capable of being modified to an infringing device
when specified claim limitation present, the
CAFC has rejected claim constructions that would
merely require that infringing devices be capable
of being modified to conform to a specified claim
limitation Cross Medical Prods. + other cases
(Typhoon Touch, 11/4/11 (rejecting argument
(based on MEC and Fantasy Sports) that was
irrelevant if the claimed function was actually
performed by the accused device, if the device
could be programmed or configured to perform the
function); Ball Aerosol, 2/9/09 (claims failed to
recite capable of language); Ormco, 8/30/06);
See also Luma, 4/10/08 (nonprecedential capable
of customization failed to prove infringement)
- Device does not infringe simply because it is

possible to alter it in a way that would
satisfy all the limitations of a claim High
Tech (Versata Software, 5/1/13 (affirming
infringement where the patentees expert did
not alter or modify the accused code in order
to achieve the claimed functionality, but
rather followed the accused infringers own
directions on how to implement the accused
functionality in its software and activated
functions already present in the software);
Accent Packaging, 2/4/13 (fact that it was
possible to alter the accused product by
removing a safety stop to satisfy the ninety
degree arc limitation did not show
infringement); Typhoon Touch, 11/4/11;
Revolution Eyewear, 4/29/09 (distinguishing
the facts of High Tech in which the claim
required a structure and the accused
structure needed to be altered to infringe, vs.
the claim here required a capacity to
perform a function (capable of engaging
1103
magnetic members from the top of an
eyeglass frame) and the accused frame did
not need to be altered to infringe))
- Claiming structure vs. capacity to

perform a function (Typhoon Touch,
11/4/11; Revolution Eyewear, 4/29/09
(claim reciting capable of engaging
a primary eyeglass frame was
infringed where sample auxiliary
frames were made and shown to be
capable of top-mounting onto the
accused primary frame, even though
the commercially available auxiliary
frames were not capable of being top-
mounted))
- Modifying the structure itself vs. the

way in which the structure is used
irrelevant if the structure is claimed,
vs. a method of using the structure
(whether the usage of the claimed
primary eyeglass frame was modified
was irrelevant where the structure was
claimed))
- Method claims are only infringed when the claimed

process is performed, not by the sale of an apparatus that
is capable of an infringing use (Ormco, 8/30/06)
De minimis infringement
- De minimis infringement can still be infringement Sun

Tiger (If a claim reads merely on a part of an accused
device, that is enough for infringement) (Organic Seed
Growers, 6/10/13 (assuming (without deciding) that
1104
inadvertent infringement is infringement for purposes of
a courts DJ jurisdiction, specifically that using or selling
any (trace amounts of) patented seeds was infringement,
regardless of whether the alleged infringer intended to
benefit from the patented technology citing SmithKline
Beecham, Abbott Labs); Abbott Labs, 5/18/09 (accused
crystalline compounds of Crystal B containing a small
amount of Crystal A may literally infringe a claim to
Crystal A))
Dependent claims
- Infringement of independent vs. dependent claims - while

one may infringe an independent claim and not infringe a
claim dependent on that claim, the reverse is not true; one
who does not infringe an independent claim cannot
infringe a claim dependent on (and thus containing all the
limitations of) that claim Wahpeton Canvas (Taurus IP,
8/9/13 (n.11); Voter Verified, 11/5/12; Exergen, 8/4/09
(citing Muniauction); Muniauction, 7/14/08 (n.5);
Monsanto, 10/4/07); See CLAIM CONSTRUCTION
- Wahpeton Canvas rule does not change where all

of the steps of the independent claim are missing
(Monsanto, 10/4/07)
- Infringement of a dependent claim entails

infringement of its associated independent claim
(Honeywell, 5/25/07)
- All steps of the independent claim, from

which the dependent claim depends, must be
performed during the patent term
(Monsanto, 10/4/07)
Direct infringement is a strict liability offense
1105
- Direct infringement is a strict liability offense, but is
limited to those who practice each and every element of
the claimed invention (BMC Resources, 9/20/07
[overruled by Akamai Techs., 8/31/12 (en banc)]); See
Joint infringement
- Because patent infringement is a strict liability offense,

the nature of the offense is only relevant in determining
whether enhanced damages are warranted (Technology
Licensing, 10/10/08 (rejecting argument that the district
court required an intent to directly infringe, as the court
did not equate design of the accused product with intent);
In re Seagate Technology, 8/20/07 (en banc))
- Motive of accused infringer irrelevant (Dow, 9/5/03)
- Direct infringement requires no more than the

unauthorized use of a patented invention, i.e., a
direct infringers knowledge or intent is irrelevant
(Global-Tech v. SEB, 5/31/11 (S.C.) (n.2))
- While evidence of intent is not required to prove

infringement, it is required to prove induced
infringement (Ecolab, 6/9/09)
Experimential use exception to infringement
- Scientific investigation of patented subject matter is

not infringement the study of information in patents is
not preempted, not infringement part of the quid pro
quo for obtaining a patent and the right to exclude others
(Ultramercial, 6/21/13 (n.1: the preemption analysis (for
determining patent eligibility) must recognize that the
Patent Act does not halt or impede academic research,
without commercial ends, to test, confirm, or improve a
patented invention.); Astrazeneca, 12/14/12 (J.
Newman, joined by J. Plager (responding to J. Mayers
1106
argument that the reissue patentees failure to act
promptly to narrow its overbroad claim deprived the
public of the right to experiment with, and to improve
upon, the compounds encompassed by [the] claim)
stating that patenting does not deprive the public of the
right to experiment with and improve upon the patented
subject matter citing cases and Justice Story); Myriad,
8/16/12 (Moreover, patents are rarely enforced against
scientific research, even during their terms.); Momenta,
8/3/12 (C.J. Rader, dissenting - patents properly remain
a tool for research and experimentation because the
system encourages publication and sharing of research
results. Disclosure of how to make and use the invention
is the quid pro quo of the patent grant; also opining
that [t]he information in patents is added to the store of
knowledge with the publication/issuance of the patent . . .
. [It] is not insulated from analysis, study, and
experimentation for the twenty years until patent
expiration, but rather that information shared through
patent applications is immediately available for others to
build upon. It speeds the progress of scientific endeavor.
In other words, the patent systems modern benefits
facilitate experimentation far more than any hypothetical
inhibition. quoting Classen); Classen, 8/31/11
(question for remand))
- Claim breadth, e.g., pioneering invention, does not

preclude investigation by others (Classen, 8/31/11)
First sale (patent exhaustion) defense
Quanta Computer v. LG Electronics (S.C.)
On June 9, 2008, a unanimous Court (by Justice Thomas) reversed the

CAFC, ruling broadly that the patent exhaustion doctrine applies to method
patents, and ruling narrowly that because a license agreement between LGE
and Intel (the LGE-Intel license agreement) authorized the sale of
1107
components that substantially embodied the LGE patents in suit, the sale
exhausted the patents.
First, with respect to the Courts holding that the exhaustion doctrine
applies to method patents, the Court stated that this Court has repeatedly
held that method patents were exhausted by the sale of an item that
embodied the method and that the Courts precedents do not differentiate
transactions involving embodiments of patented methods or processes from
those involving patented apparatuses or materials. The Court reasoned that
[e]liminating exhaustion for method patents would seriously undermine the
exhaustion doctrine as [p]atentees seeking to avoid patent exhaustion
could simply draft their patent claims to describe a method rather than an
apparatus . . . By characterizing their claims as method instead of apparatus
claims, or including a method claim for the machines patented method of
performing its task, a patent drafter could shield practically any patented
item from exhaustion.
With respect to the second part of the Courts holding, the Court first
recognized that: The longstanding doctrine of patent exhaustion provides
that the initial authorized sale of a patented item terminates all patent rights
to that item. Similarly, the Court stated that [e]xhaustion is triggered only
by a sale authorized by the patent holder. Univis Lens Co.
The Court relied on its prior decision in Univis Lens Co., in which the
Court held that the sale of lens blanks, which subsequently were grounded
into finished lenses claimed by the patent in suit, exhausted the patents on
the finished lenses, explaining that the lens blanks embodied essential
features of the patented device and had no use until ground and polished to
the finished lenses of the patent. Thus, the [Univis] Court concluded that
the traditional bar on patent restrictions following the sale of an item applies
when the item sufficiently embodies the patent even if it does not
completely practice the patent such that its only and intended use is to be
finished under the terms of the patent.
According to the Court, Univis governed the present case because

each of the attributes of the lenses was shared by the microprocessors and
chipsets which Intel was authorized to make and sell to Quanta under the
LGE-Intel license agreement. Here, LGE has suggested no reasonable use
1108
for the Intel Products other than incorporating them into computer systems
that practice the LGE patents. Also, [l]ike the Univis lens blanks, the Intel
Products constitute a material part of the patented invention and all but
completely practice the patent. Here, as in Univis, the incomplete article
substantially embodies the patent because the only step necessary to practice
the patent is the application of common processes or the addition of
standards parts. Everything inventive about each [LGE] patent is embodied
in the Intel Products.
Addressing next whether the sale of the Intel components to Quanta

exhausted LGEs patent rights, the Court ruled that nothing in the LGE-Intel
license agreement restricted Intels rights to sell its microprocessors and
chipsets to purchasers who intended to combine them with non-Intel parts,
but rather broadly permitted Intel to make, use, [or] sell products free of
LGEs patent claims. (This interpretation was different from the CAFCs
interpretation of the LGE-Intel license agreement, having concluded that
exhaustion did not apply because LGE did not license Intel to sell the Intel
Products to Quanta for use in combination with non-Intel products.) The
Court further ruled that certain restrictions in an ancillary agreement (such
as a requirement that Intel provide notice to its customers that LGE had not
licensed those customers to practice its patents (which notice Intel provided),
and a disclaimer of any license to third parties to practice the patents by
combining Intel components with non-Intel components) did not affect
Intels authority to sell its products embodying the LGE patents, because
exhaustion turn[ed] only on Intels own license to sell products practicing
the LGE patents.
Thus, the Courts holding was based on the important fact that [n]o
conditions were placed on Intels authority to sell products substantially
embodying the LGE patents, the Court stating the following:
The License Agreement authorized Intel to sell products

that practiced the LGE Patents. No conditions limited Intels
authority to sell products substantially embodying the patents.
Because Intel was authorized to sell its products to Quanta, the
doctrine of patent exhaustion prevents LGE from further
asserting its patent rights with respect to the patents
substantially embodied by those products. (emphasis added)
1109
The Court emphasized: Nothing in the License Agreement limited
Intels ability to sell its products practicing the LGE patents. Intels
authorized sale to Quanta thus took its products outside the scope of
the patent monopoly, and as a result, LGE can no longer assert its
patent rights against Quanta. (emphasis added)
Also important, the Court added (in footnote 7) that it expressed

no opinion on whether contract damages might be available against
Quanta and the other computer manufacturers even though exhaustion
operated under the facts of the case to eliminate patent damages.
First sale/patent exhaustion doctrine - generally
- Patent exhaustion is a defense to patent

infringement, not a cause of action Monsanto
(Keurig, 10/17/13; Excelstor Tech., 9/16/08 (patent
exhaustion is an affirmative defense))
- Patent exhaustion doctrine prohibits patent holders

from selling a patented article and then invoking
patent law to control postsale use of the article
Quanta (S.C.) (Lifescan, 11/4/13; Keurig, 10/17/13
(rejecting the patentees attempt to impermissibly
restrict purchasers of patented Keurig brewers
from using non-Keurig coffee cartridges by
invoking patent law (via the patentees method
claims) to enforce restrictions on the post-sale use
of its brewers citing Quanta (S.C.); also rejecting
the patentees argument that patent exhaustion
must be adjudged on a claim-by-claim basis, but
rather must look at exhaustion of the patents in
their entirety, rather than the exhaustion of the
claims on an individual basis, and thus judging the
patentees apparatus and method claims together
for purposes of patent exhaustion; see also J.
OMalley, concurring in the result, but rejecting as
1110
dicta the majoritys apparent rule that patent
exhaustion is not determined on a claim-by-claim
basis); Bowman v. Monsanto, 5/13/13 (S.C.)
(under the doctrine of patent exhaustion, the
authorized sale of a patented article gives the
purchaser, or any subsequent owner, a right to use
or resell that article); Tessera, 5/23/11 (absurd
result argued by the patentee that authorized sales
would become unauthorized if its licensee
defaulted on royalty payments was wholly
inconsistent with the fundamental purpose of
patent exhaustion above); Honeywell, 5/25/10;
Transcore, 4/8/09 (patent rights were exhausted
where the sale of the accused product to the
defendant from its supplier was authorized after
the patentee granted the supplier a covenant not to
sue in a settlement agreement between the patentee
and the supplier); Excelstor Tech., 9/16/08)
- Patent exhaustion doctrine provides that the

initial authorized sale of a patented item
terminates all patent rights to that item;
patent exhaustion is triggered only by a sale
authorized by the patent holder Quanta
(S.C.) (Lifescan, 11/4/13 (sale is not
required - patent exhaustion applies to all
authorized transfers of title to an item,
including products distributed for free, i.e.,
gifts), stating that in the case of an
authorized and unconditional transfer of
title, the absence of consideration is no
barrier to the application of patent
exhaustion principles and concluding that
patentees cannot circumvent the application
of patent exhaustion principles by
distributing a product embodying the patent
for free); Keurig, 10/17/13 (see also J.
OMalley, concurring in the result: agreeing
1111
with the majoritys conclusion that the
patentees asserted patent rights (in method
of using claims) were exhausted by the sale
of its patented brewers, but adding that
reaching this result requires application of a
single principle, the longstanding rule that
the initial authorized sale of a patented item
terminates all patent rights to that item,
which would include all rights to claims
which recite methods which involve the
normal and intended use of the patented
item citing Quanta (S.C.)); Bowman v.
Monsanto, 5/13/13 (S.C.) (the doctrine
restricts a patentees rights only as to the
particular article sold, while leaving
untouched the patentees ability to prevent a
buyer from making new copies of the
patented item); Powertech, 9/30/11
(addressing the CAFCs decision in Tessera
and its binding effect on the district court for
deciding controversy in DJ action); Tessera,
5/23/11 (authorized sales by the patent
owners licensees did not become
unauthorized based on the licensees failure
to make royalty payments); Rembrandt,
4/18/11 (patent rights were exhausted where
the defendants supplier had a sublicense
(from a prior patent owner) to sell under the
patents); Honeywell, 5/25/10 (the first sale
doctrine did not apply retroactively against
an unauthorized sale of the accused product
by the plaintiff who subsequently acquired
rights to the patent in suit; see also J. Mayer,
dissenting); Transcore, 4/8/09 (holding that
an unconditional covenant not to sue
authorizes sales by the covenantee for
purposes of patent exhaustion))
1112
- By exhausting the patentees
monopoly in the item, the sale confers
on the purchaser, or any subsequent
owner, the right to use or sell the
thing as he sees fit Univis Lens
(S.C.) (Bowman v. Monsanto, 5/13/13
(S.C.))
- Exhaustion applies only to the

particular item sold, and not to
reproductions the patentee retains an
undiminished right to prohibit others
from making the thing his patent
protects Cotton-Tie (S.C.) (Bowman
v. Monsanto, 5/13/13 (S.C.))
- Only issue relevant to patent

exhaustion is whether sales were
authorized by the patentee (Tessera,
5/23/11 ([t]he proper focus is on
whether the sales were authorized,
where license agreements expressly
authorized the licensees to sell the
licensed products and to pay royalties
at the end of the reporting period);
Honeywell, 5/25/10; Transcore,
4/8/09 (stating that whether the
patentee and other party to a
settlement agreement intended,
expressly or impliedly, for a covenant
not to sue to extend to the other
partys customers, was not relevant to
patent exhaustion))
- Exhaustion analysis focuses on the

patents in their entirety, rather than on
claims on an individual basis (Keurig,
10/17/13 (judging the patentees
1113
apparatus and method claims together
for purposes of patent exhaustion; see
also J. O Malley, concurring in the
result, rejecting as dicta the majoritys
reliance on the above basis for its
ruling, stating that there could be
instances where assessing exhaustion
on a claim-by-claim basis would be
necessary and appropriate))
- No international patent exhaustion first

sale must occur in the U.S. for patent
exhaustion - Quanta (S.C.) did not change
the territoriality requirement for patent
exhaustion, i.e., that the first sale (under the
first sale doctrine) must occur in the U.S.
(Ninestar Tech., 2/8/12 (rejecting argument
that foreign manufacture and sale of ink
cartridges exhausted U.S. patent rights, and
thus affirming the ITCs $11 million civil
penalty against respondents for violating
exclusion and cease and desist orders)
[Question presented to the U.S. Supreme
Court in a petition for certiorari: whether
the initial authorized sale outside the U.S.
of a patented item terminates all patent
rights to that item?]; Fujifilm, 5/27/10
(affirming infringement where the patent
exhaustion defense did not apply to foreign
sales))
[On 3/19/13, the U.S. Supreme Court held

in a copyright case, Kirtsaeng v. John
Wiley & Sons, that the first saledoctrine
in the Copyright Act applies to copies of a
copyrighted work lawfully made abroad.]
1114
- Patent exhaustion prohibits patentees from
enforcing patent rights in certain
circumstances, but it does not forbid
multiple licenses on a single product or even
multiple royalties (Excelstor Tech., 9/16/08
(dismissing for lack of subject matter
jurisdiction where the defendants allegedly
collecting license royalties twice on the
same goods did not present a federal cause
of action))
- First sale/patent exhaustion doctrine establishes

that the unrestricted first sale by a patentee of his
patented article exhausts his patent rights in the
article Mallinckrodt v. Medipart (Lifescan,
11/4/13 (sale of article is not required for patent
exhaustion, which also applies to articles
distributed for free, stating that in the case of an
authorized and unconditional transfer of title, the
absence of consideration is no barrier to the
application of patent exhaustion principles and
that such a narrow application of patent exhaustion
would be inconsistent with the doctrines
underlying rationale to permit the owner of an
item who received it in an authorized transfer to
use it; the CAFC also citing the first sale doctrine
in copyright law as further reinforcing its
conclusion that patent exhaustion applies to gifts);
Keurig, 10/17/13; Tessera, 5/23/11; Princo,
8/30/10 (en banc); Monsanto, 8/16/06)
- Patent exhaustion doctrine (i.e., exhaustion of the

patentees right to control the purchasers use of
the device thereafter), commonly referred to as the
first sale doctrine, is triggered by an unconditional
sale the theory behind the rule is that in such a
transaction the patentee has bargained for and
received an amount equal to the full value of the
1115
goods (Keurig, 10/17/13 (The doctrine of patent
exhaustion has the effect of providing an efficient
means for ensuring the termination of the patent
right thus prohibiting, as contradictory to policy
and the law, the patentee from recovering multiple
times on its patented brewers, first, from the initial
sale of the patented brewers, and then by allowing
recovery for direct and indirect infringement of
method claims by coffee cartridge manufacturers
based on the independent manufacture and sale of
cartridges for use in those brewers); Bowman v.
Monsanto, 5/13/13 (S.C.) (citing the above theory
as to why the doctrine restricts a patentees rights
only as to the particular article sold, while leaving
untouched the patentees ability to prevent a buyer
from making new copies of the patented item);
Monsanto, 9/21/11 (no patent exhaustion for
patented self-replicating seeds, where new
infringing, second-generation copies were made
from the purchased seeds, addressing prior cases)
[On 10/5/12, the U.S. Supreme Court granted
certiorari - the Question Presented was: Patent
exhaustion delimits rights of patent holders by
eliminating the right to control or prohibit use
of the invention after an authorized sale. In this
case, the Federal Circuit refused to find
exhaustion where a farmer used seeds
purchased in an authorized sale for their
natural and forseeable purpose namely, for
planting. The question presented is: Whether
the Federal Circuit erred by (1) refusing to find
patent exhaustion in patented seeds even after
an authorized sale and by (2) creating an
exception to the doctrine of patent exhaustion
for self-replicating technologies?; On 5/13/13,
the unanimous Court held (in a limited holding,
not addressing every situation involving self-
replicating technology) that patent exhaustion
1116
does not permit a farmer to reproduce patented
(soybean) seeds through planting and
harvesting without the patent holders
permission, stating that the doctrine restricts
the patentees rights only as to the particular
article sold, but leaves untouched the
patentees ability to prevent a buyer from
making new copies of the patented item, in
accordance with the well-settled rule that
exhaustion does not extend to the right to make
new copies of the patented item, which would
deprive the patentee of the reward patent law
provides for the sale of each article; also
rejecting the blame-the-beandefense, since
the petitioner was not a passive observer of his
soybeans multiplication, but rather controlled
the reproduction of the patented invention; the
Courts holding also was limited, addressing
only the situation before it, rather than every
one involving a self-replicating product
however, recognizing that such inventions are
becoming ever more prevalent, complex, and
diverse. In another case, the articles self-
replication might occur outside the purchasers
control. Or it might be a necessary but
incidental step in using the item for another
purpose. (citing computer software and the
Copyright Act as an example)]; Tessera, 5/23/11
(patent rights were exhausted where license
agreements contained an unconditional grant of a
license to sell, and there was nothing in the
agreements suggesting that the existence of a
condition subsequent, namely, the payment of
royalties, operated to convert initial authorized
sales into unauthorized sales for purposes of patent
exhaustion); Princo, 8/30/10 (en banc); Honeywell,
5/25/10 (see J. Mayer, dissenting the first sale
doctrine should apply against the unauthorized sale
1117
by someone who subsequently acquires rights to
the patent); LG Electronics, 7/7/06 [reversed on
more limited grounds by the U.S. Supreme
Court on 6/9/08, see discussion above])
- Exhaustion doctrine does not apply to an

expressly conditional sale or license in
such a transaction, it is more reasonable to
infer that the parties negotiated a price that
reflects only the value of the use rights
conferred by the patentee B. Braun
Medical, Mallinckrodt v. Medipart
(Lifescan, 11/4/13 (n.8: notice on packaging
of blood glucose meters that the meters
could only be used with the patentees test
strips was irrelevant to patent exhaustion
because of the absence of an express
contractual agreement with the purchaser, as
required for a conditional sale or license);
Monsanto, 9/21/11 (exhaustion not
applicable where patented self-replicating
seeds were sold for use only, and not for
making new infringing seeds, citing cases);
Princo, 8/30/10 (en banc); LG Electronics,
7/7/06 [On 6/9/08, the U.S. Supreme
Court reversed the CAFC on more
limited grounds, in part based on a
different interpretation of the license
agreement between LG and Intel,
concluding that the sale by Intel to
Quanta and other third party computer
manufacturers of Intel computer
components that embodied LGs patents
was authorized under the license
agreement, and thus the sale exhausted all
of LGs patent rights to the components
and the right to patent damages from
Quanta and the other manufacturers who
1118
combined the Intel components with non-
Intel components in practicing LGs
patents See discussion above of Quanta
Computer v. LG Electronics (S.C.);
previously, on 9/25/07, the U.S. Supreme
Court granted certiorari to determine
whether LGs license agreement with
Intel, which the CAFC had interpreted as
expressly restricting the use by
purchasers of Intels chipsets, avoided the
exhaustion doctrine; the question
presented was whether the CAFC erred
by holding, in conflict with decisions of
the Supreme Court and other courts of
appeals, that LGs patent rights were not
exhausted by its license agreement with
Intel, and Intels sale of products under
the license to Quanta and the other
computer manufacturers])
- Patented technology that can replicate

itself, e.g., Round-up Ready seeds,
does not give a purchaser the right to
use replicated copies of the
technology; applying the first sale
doctrine to subsequent generations of
self-replicating technology would
eviscerate the rights of the patent
holder (Bowman v. Monsanto,
5/13/13 (S.C.); Monsanto, 9/21/11
(infringement action was not barred
by patent exhaustion, where the
defendants planting of second-
generation seeds and producing the
next-generation seeds was an
infringing making of the claimed
invention -- distinguishing the right to
use from the right to make a patented
1119
article Jazz Photo) [affirmed by the
Supreme Court in Bowman v.
Monsanto, 5/13/13 see discussion
above]; Monsanto, 8/16/06)
Licenses (and Covenants not to sue)
- License = sale for exhaustion purposes (Tessera,

5/23/11; Rembrandt, 4/18/11 (exhaustion where
the defendants supplier had a sublicense to sell
under the patents); Excelstor Tech., 9/16/08
(involving licensing and royalty payments); LG
- Covenant not to sue is the same thing as a license

the difference is only one of form, not substance
both are properly viewed as authorizations
(ActiveVideo Networks, 8/24/12 (rejecting
argument that the infringer was a third party
beneficiary of a covenant not to sue in agreement
between other parties); General Protecht Group,
7/8/11 (accused infringer had an implied license to
continuation patents based on a covenant not to sue
on a parent patent in a settlement agreement in
prior litigation, following Transcore); Transcore,
4/8/09 (unconditional covenant not to sue in an
earlier settlement agreement between the patentee
and the defendants supplier of the patented
product authorized the suppliers sale and
exhausted patent rights against the defendant-
customer))
Method claims
- Method claims whether the sale of a device

exhausts a patentees rights in its method claims
1120
(Lifescan, 11/4/13 (method of use claims were
exhausted by authorized transfers of title (sales,
gifts) to blood glucose monitoring meters that
substantially embodied the method claims citing
Quanta (S.C.), Univis (S.C.); adding that barring
the use of the meter with (unpatentable) test strips
made by the accused infringer would bar the use of
the meters for their contemplated function and
extend the patent monopoly improperly, as the
CAFC held in Keurig, 10/17/13; see also J. Reyna,
dissenting objecting to the majoritys reliance on
the unpatentability of the test strips and its
misunderstanding of Quanta (S.C.); in the patented
combination, the unpatented test strips, not the
unpatented meters, substantially embodied the
essential features of the method claims the steps
performed by the meter were common and
noninventive; also stating that [i]n a case such as
this one where the essential component is
consumed in the patented process, it is
inappropriate to limit that patentee [through
exhaustion] to a single reward for the sale or
giveaway of the first component and that [e]ach
successive performance of the method would be an
infringement unless licensed by the patentee, either
explicitly or implicitly); Keurig, 10/17/13 (the
patentees authorized and unconditional sale of
patented coffee brewers (i.e., commercial
embodiments of apparatus claims) exhausted its
patent rights in method of brewing claims using
brewing cartridges; distinguishing Quanta (S.C.)
and Univis (S.C.) (the leading cases in which
patent exhaustion has been applied to method
claims) and their application of the substantial
embodiment test because both opinions
emphasized the unpatented nature of the products
sold and that the substantial embodiment test
provided a framework for determining whether the
1121
sale of an unpatented component [e.g., lens blanks
or microprocessors], which by itself does not
practice the patented method, is still sufficient for
exhaustion; relying instead on the principle in
Adams v. Burke (S.C.) (quoted in Quanta (S.C.))
that the authorized purchase of a patented machine
carrie[s] with it the right to the use of the machine
so long as it [is] capable of use, to conclude that
the patentees sale of its patented brewers without
condition resulted in the purchasers obtaining the
unfettered right to use them in any way they chose,
at least as against a challenge from Keurig); LG
Electronics, 7/7/06 [reversed by the U.S.
Supreme Court on 6/9/08 in Quanta v. LG,
which rejected LGs argument that method
claims, as a category, are never exhausted; the
Court ruled that method claims, like apparatus
claims, may be embodied in a product, the
sale of which exhausts patent rights and that
this Court has repeatedly held that method
patents were exhausted by the sale of an item
that embodied the method (citing Ethyl
Gasoline Corp. and Univis Lens Co.); the Court
reasoned that [e]liminating exhaustion for
method patents would seriously undermine the
exhaustion doctrine. Patentees seeking to avoid
patent exhaustion could simply draft their
patent claims to describe a method rather than
an apparatus.])
- Reasonable alternative, noninfringing uses

of a device must also be an intended use
patent exhaustion is not precluded by a
reasonable noninfringing use that is not an
intended use by the patentee or its
authorized licensee Quanta (S.C.), Univis
(S.C.) (Lifescan, 11/4/13 (stating that the
CAFC had recently rejected the contention
1122
that a potential noninfringing use prevents
exhaustion where the use in question is the
very use contemplated by the patented
invention itself citing Keurig; any possible
alternative use of the patentees blood
glucose meters which was reasonably
available to users was plainly not intended,
and thus not relevant to patent exhaustion))
- Products sold, transferred embody the

essential patented features? -- the question is
whether the product controls and carries
out the inventive functions described in
method claims Quanta (S.C.) (Lifescan,
11/4/13 (inventive concept of method claims
lied in the blood glucose meter, rather than
the test strips (which were unpatentable
separately), because the meter controlled
and carried out the inventive error-detecting
functions of the method claims, and thus the
meter substantially embodied the method
claims))
- Inventive? what is inventive

about patent claims in the patent
exhaustion context is what
distinguishes them from the prior art
Univis (S.C.) (Lifescan, 11/4/13 (see
also J. Reyna, dissenting (n.4)))
Sale of components of the patented invention
- Sale of a component of patented invention vs. sale

of the entire patented system (LG Electronics,
7/7/06 [the Supreme Court in Quanta v. LG
treated the sale of components the same as the
entire system for exhaustion purposes when the
1123
components substantially embody the patents
in suit, as did the Intel microprocessors and
chipsets sold to Quanta and other computer
manufacturers])
Implied license from authorized sale
- When the sale of the patented invention is

authorized, the buyer/user has an implied license to
use and repair the patented product (Bowman v.
Monsanto, 5/13/13 (S.C.) (referencing implied
license); Transcore, 4/8/09 (patent rights were
exhausted (where sales of the patented product
were previously authorized under related patents)
under an implied license by virtue of legal
estoppel); Glenayre Electronics, 4/11/06); See also
Implied license defense Met-Coil
- Estoppel under the implied license doctrine

the patent grantor is estopped from taking
back in any extent that for which he has
already received compensation (General
Protecht Group, 7/8/11 (citing rule as basis
for implied license, relying on Transcore as
controlling); Transcore, 4/8/09 (patentee
was legally estopped from asserting a later-
issued broad patent, where the patentee had
already been compensated under a
settlement agreement with the other party
with respect to earlier related patents))
- Legal estoppel, giving rise to an

implied license in a patent refers to
the narrow category of conduct
encompassing scenarios where a
patentee has licensed or assigned a
right, received consideration, and then
1124
sought to derogate from the right
granted Wang Labs (General
Protecht Group, 7/8/11; Transcore,
4/8/09 (party had an implied license
under a related, broad patent which
was not issued at the time of an earlier
settlement agreement between the
patentee and party))
First sale (patent exhaustion) and permissible repair vs.

reconstruction
- Patent-exhausting first sale must occur within the U.S.

(Fujifilm, 5/27/10), and constitute permissible repair, as
opposed to reconstruction, of the patented device (Fuji
Photo Film, 1/11/07; Jazz Photo, 2/28/06 (CIT); Fuji
Photo, 1/14/05)
- Affirmative defense of first sale and permissible

repair = unrestricted sale of a patented article, by
or with the authority of the patentee, exhausts
the patentees right to control further sale and use
of that article by enforcing the patent under which
it was first sold; when a patented device has been
lawfully sold in the U.S., subsequent purchasers
inherit the same immunity under the doctrine of
patent exhaustion so long as the device has been
permissibly repaired; the party raising the
affirmative defense has the burden of establishing
exhaustion and permissible repair by a
preponderance of the evidence (means the greater
weight of evidence, evidence which is more
convincing than the evidence which is offered in
opposition to it) (Bowman v. Monsanto, 5/13/13
(S.C.) (applying the well-settled rule that
exhaustion does not extend to the right to make
1125
new copies of the patented item see above); Fuji
Photo Film, 1/11/07; Jazz Photo, 2/28/06 (CIT))
- Patentees intent regarding refurbishment

although not intending that the product in
question be refurbished, the patentees
unilateral intent, without more, does not bar
reuse of the patented article, or convert
repair into reconstruction (Fuji Photo Film,
1/11/07)
- Reconstruction of a patented entity,

comprised of unpatented elements, is limited
to such a true reconstruction of the entity as
to in fact make a new article, after the entity,
viewed as a whole, has been spent; the right
of repair accompanies article to succeeding
owners Aro Mfg.(S.C.) (Jazz Photo,
2/28/06 (CIT))
- Whether extent of refurbishment is

disproportionate to the overall value
of the parts not replaced? (Fuji Photo
Film, 1/11/07); See also Canon,
1/25/08 (nonprecedential;
replacement of toner cartridge was
impermissible reconstruction)
- Replacement of a part that must be broken

or removed to repair the device does not
convert permissible repair into
impermissible reconstruction; instead,
replacement of part is part of a permissible
repair (Fuji Photo Film, 1/11/07)
- When the use infringes (e.g., when the first

sale was not authorized), so does the repair
1126
since it perpetuates the infringing use
(Glenayre Electronics, 4/11/06)
Permissible repair
- BOP on the party raising the defense (via an

affirmative defense to infringement) of permissible
repair (and exhaustion) preponderance of the
evidence (Fuji Photo Film, 1/11/07; Jazz Photo,
2/28/06; Fuji Photo, 1/14/05)
- First sale must occur in the U.S. affirmative

defense of repair only applies to products whose
patent rights have been exhausted through a first
sale in the United States (Fuji Photo Film, 1/11/07;
Jazz Photo, 2/28/06; Fuji Photo, 1/14/05)
- Replacement of a spent part is a fundamental

example of a permissible repair (Fuji Photo Film,
1/11/07); See also Fargo Electronics, 6/27/08
(nonprecedential permissible repair precluded
contributory and inducement of infringement of
combination claim where printer ribbon supply
rolls sold by the accused infringer were a readily
replaceable part and the reasonable repair
doctrine applied such that there was no underlying
act of direct infringement)
- Extensive market for refurbishment of

product in question tends to prove a
reasonable expectation that the spent parts
can be permissibly replaced (Fuji Photo
Film, 1/11/07)
- Repair of patented combination the U.S.

Supreme Court has taken an expansive view of
conduct that constitutes permissible repair of a
1127
patented combination of unpatented elements (Fuji
Photo Film, 1/11/07)
- Repair/reconstruction test the Supreme

Court has rejected a test for
repair/reconstruction that looks to whether
an essential or distinguishing part of the
patented combination has been replaced;
there is no legally recognizable or protected
essential element, gist or heart of the
invention in a combination patent Aro
Mfg. (S.C.) (Fuji Photo Film, 1/11/07)
- Repair does not turn on minor details - while there

is no bright-line test for determining whether a
device has been permissibly repaired, it does not
turn on minor details (Jazz Photo, 2/28/06 (CIT))
Future technology
- Future technology literally within claim scope infringes,

even if not known or described in the specification
(Innogenetics, 1/17/08; Superguide, 2/12/04)
- After-arising technology (that did not exist at the

time of filing) can literally infringe a valid claim
drafted broadly enough Superguide
Implied license defense Met-Coil
- Implied license defense to infringement (LaserDynamics,

8/30/12 (holding that the defendant had an implied
license to the patented method where it purchased optical
disc drives indirectly from a licensed party citing
Cyrix))
1128
- Implied license defense is typically presented when a
patentee or its licensee sells an article and the question is
whether the sale carries with it a license to engage in
conduct that would infringe the patent owners rights
Jacobs v. Nintendo (Zenith Electronics, 4/16/08)
- Typical implied license case where the question

is whether a license is implied by virtue of a sale
of nonpatented equipment used to practice a
patented invention Met-Coil (Zenith Electronics,
4/16/08)
- To establish an implied license, there are two

requirements: 1) product has no noninfringing uses, and
2) the circumstances of the sale must plainly indicate
that the grant of a license should be inferred Met-Coil
(Zenith Electronics, 4/16/08 (purchasers obtained an
implied license under the patent to use products in
combination with any compatible television, not just the
patentees, where the patentee failed to restrict the
purchasers use of the products in an express license
agreement between the patentee and the manufacturers of
the products); Monsanto, 8/16/06)
- Absent an express agreement between the parties,

the defendant must show that the product sold has
no non-infringing uses = implied license from the
patentee noninfringing use doctrine (Zenith
Electronics, 4/16/08 (implied license was derived
from an express license to the patented invention,
such that the issue of noninfringing uses was
irrelevant to the implied license defense; no
implied license defense to infringement of other
patent where the products had non-infringing
uses); Jacobs, 5/28/04 (implied license derived
from express license, such that issue of
noninfringing uses was irrelevant))
1129
- No implied license when express disclaimer
of rights (Zenith Electronics, 4/16/08
(purchasers obtained an implied license
where there was no disclaimer or restriction
of rights in an express license between the
patentee and manufacturers of products for
use only with the patentees televisions;
express licenses could have required the
manufacturers to label each pillow speaker
with a disclaimer informing purchasers that
they are only licensed to use the pillow
speakers with Zenith televisions); LG
Electronics, 7/7/06 (conditional sale where
express disclaimer) [the U.S. Supreme
Court, on 6/9/08, in Quanta Computer v.
LG Electronics did not address whether
the disclaimer of a third party license in
the Intel-LG license agreement to use the
purchased Intel components with non-
Intel components disclaimed any implied
license of Quanta and the other computer
manufacturers to practice the LG patents,
stating that the issue was irrelevant
because Quanta asserted its right to
practice the patents based not on an
implied license but on exhaustion, and
that exhaustion turned only on Intels
own license from LG to sell products
practicing the LG patents])
- Evidence of the parties intent is

limiting where there is a clear, broad
grant of patent rights in an express
license (Zenith Electronics, 4/16/08
(noncontractual intention is simply
the sellers hope or wish, rather than
an enforceable restriction)
1130
- Accused infringer acquires an implied license once
it has compensated the patentee for the full amount
of infringement damages owed (i.e., the patentee
collected the full amount of the money judgment);
whereas the entry of an infringement judgment
does not in and of itself confer an implied license
Aro Mfg. (S.C.) (Fuji Photo Film, 1/11/07)
- Implied license based on covenant not to sue in

settlement agreement (General Protecht Group,
7/8/11 (accused infringer had an implied license to
continuation patents based on a settlement
agreement in a prior litigation which included a
covenant not to sue on a parent patent Transcore
was controlling, and distinguishing Jacobs)); See
also First sale (patent exhaustion) defense
- Burden of proving the establishment of an implied

license falls upon the defendant in a patent
infringement suit (LG Electronics, 7/7/06)
- Defendants must satisfy two requirements

for the grant of an implied license: 1) that
the products have no noninfringing uses, and
2) that the circumstances of the sale plainly
indicate that the grant of a license should be
inferred Met-Coil (Zenith Electronics,
4/16/08; LG Electronics, 7/7/06)
- Seller of a patented product must have authority to

confer a right or license to use the patented
technology, e.g., a seller cannot confer broader
rights via an implied license than it has been
granted by the patent holder (Monsanto, 8/16/06)
1131
Indirect infringement - generally
(Lucent, 9/11/09; Glenayre Electronics, 4/11/06; Aquatex,

8/19/05; Linear Technology, 6/17/04); See also 35 USC
271(b) active inducement of infringement; 35 USC 271(c)
contributory infringement; and Proof of infringement
- Defendant who causes, participates in, or encourages

infringement but does not directly infringe a patent, can
be liable for indirect infringement (BMC Resources,
9/20/07 [overruled by Akamai Techs., 8/31/12 (en
banc)])
- Direct, inducing and contributory infringement defined

(Fujitsu, 9/20/10; Lucent, 9/11/09; Golden Blount,
4/19/04)
- Direct infringement required for indirect infringement

(R+L Carriers, 6/7/12 (addressing requirements for
pleading direct infringement); Fujitsu, 9/20/10; i4i,
3/10/10; Lucent, 9/11/09; Erbe Elektromedizin, 5/19/09
(no direct infringement proven based on limited claim
construction); BMC Resources, 9/20/07 [overruled by
Akamai Techs., 8/31/12 (en banc)]; Glenayre
Electronics, 4/11/06) can prove with circumstantial
evidence (Lucent, 9/11/09; Liquid Dynamics, 6/1/06;
Metabolite Labs, 6/8/04)
- When indirect infringer also direct infringer

Invalid patent is not infringed
- Axiomatic that one cannot infringe (or rather, be liable

for infringement of?) an invalid patent Prima Tek II
(Commil USA, 6/25/13) [On 10/25/13, the CAFC
denied en banc review, in which Judge Reyna, with
1132
whom Judges Rader, Newman, Lourie, and Wallach
joined, dissented from the denial of en banc review,
addressing the panel majoritys substantive,
precedential change in patent law by expressly
holding that evidence of an accused inducers good-
faith belief of invalidity may negate the requisite
intent for induced infringement which the majority
based on the axiom that one cannot infringe an
invalid patent J. Reyna, et al. argued that [a] more
accurate statement of our precedent is that liability
for patent infringement depends on an infringed
claim being valid and enforceable; that is, one cannot
be liable for infringement of an invalid patent.; in a
separate dissenting opinion, Judge Newman, joined
by Judges Rader, Reyna, and Wallach, wrote that it is
not axiomatic that one cannot infringe an invalid
patent, and that precedent is contrary, stating rule
that although an invalid claim cannot give rise to
liability for infringement, whether it is infringed is an
entirely separate question capable of determination
without regard to its validity citing Medtronic and
Spectra-Physics]; See also Mikkelsen, 8/16/13
(nonprecedential district court erred by (sua sponte)
implicitly including SJ of no invalidity within grant of SJ
of infringement, based on rule that infringement and
validity are treated as separate issues Pandrol)
Joint infringement
- Direct infringement requires, as it always has, a showing

that the defendant has practiced each and every element
of the claimed invention Warner-Jenkinson (S.C.);
thus, liability for infringement requires a party to make,
use, sell, or offer to sell the entire patented invention, or
perform all of the steps of the patented method 35 USC
271(a); Fromson, Cross Medical Prods. (Aristocrat
Techs., 3/13/13; Move, 3/4/13 (addressing joint
1133
infringement of method patent citing Akamai Techs.);
Akamai Techs., 8/31/12 (en banc) (holding that the act of
direct infringement of a method claim for proving
induced infringement need not be performed by a single
entity; the court deemed it unnecessary to resolve the
issue of joint infringement for liability for direct
infringement because we find that these cases and cases
like them can be resolved through an application of the
doctrine of induced infringement and similarly stating
that: Because the reasoning of our decision today is not
predicated on the doctrine of direct infringement, we
have no occasion at this time to revisit any of those
principles regarding the law of divided infringement as it
applies to liability for direct infringement under [Section
271(a)]; see also J. Linn, dissenting, joined by J. Dyk, J.
Prost, and J. OMalley the statute requires (liability for)
direct infringement of a method claim by a single entity
to prove induced infringement; see also J. Newman,
dissenting objecting to the majoritys inducement-only
rule permitting divided infringement of a method claim
for direct infringement to prove inducement, and arguing
that neither faction decided the divided infringement
issues posed to the court for en banc review); Meyer,
8/15/12 (concluding that the patented method could be
performed by a single user, based on the correct
construction of term providing); Advanced Software
Design, 6/2/11 (rejecting the district courts construction
of system and method claims as requiring that the
accused infringer also practice the steps recited in the
preamble, where the preamble instead described the
claim environment only); McKesson, 4/12/11 (single
entity must perform, or control or direct, each step of
method claim for direct infringement before there can be
indirect infringement; see also J. Newman, dissenting
single-entity rule is against precedent, and must consider
common-law concept of joint tortfeasor) [vacated and
en banc review granted, on 5/26/11; the parties were
requested to brief the following two issues: 1) If
1134
separate entities each perform separate steps of a
method claim, under what circumstances, if any,
would either entity or any third party be liable for
inducing infringement or for contributory
infringement? (citing Fromson), and 2) Does the
nature of the relationship between the relevant actors
e.g., service provider/user; doctor/patient affect
the question of direct or indirect infringement
liability?; on 8/31/12, the en banc court held that a
single entity need not perform each step of a method
claim for direct infringement to prove inducement;
see also J. Linn, dissenting, joined by J. Dyk, J. Prost,
and J. OMalley the statute requires that a single
entity perform a method claim for direct infringement
before there can be induced infringement; see also J.
Newman, dissenting]; Akamai Techs., 12/20/10
[vacated and en banc review granted, on 4/20/11; the
parties were requested to brief the following issue: If
separate entities each perform separate steps of a
method claim, under what circumstances would that
claim be directly infringed and to what extent would
each of the parties be liable?; see above]; SiRF
Technology, 4/12/10 (the accused infringer performed all
of the limitations of the method claims and thus directly
infringed); Muniauction, 7/14/08 (no joint infringement
under the standard of BMC Resources); BMC Resources,
9/20/07 (no direct infringement when the accused
infringer performed only some steps, while unrelated
entities performed the other steps, of the claimed process)
[single entity rule and case overruled by Akamai
Techs., 8/31/12 (en banc), in which the court held that
for direct infringement in order to prove induced
infringement of a method claim, it is not necessary to
prove that all the steps were committed by a single
entity]); See also Travel Sentry, 11/5/12
(nonprecedential direction or control test was not met
for showing direct infringement; see also J. Linn,
concurring-in-part)
1135
- Liability for direct infringement under Section
271(a) requires that a party commit all the acts
necessary to infringe the patent, either personally
or vicariously; for a method claim, the accused
infringer must perform all the steps of the claimed
method, either personally or through another
acting under his direction or control (Aristocrat
Techs., 3/13/13 (affirming no direct infringement
where player of gambling machine performed
some method steps and was not under the direction
or control of the accused infringer casino or game
operator); Move, 3/4/13 (affirming no direct
infringement where the accused infringer did not
exercise direction or control over users of its
website who performed some of the claimed
method steps); Akamai Techs., 8/31/12 (en banc))
- Joint infringement when infringement results from

participation and combined actions of one or more
persons or entities joint liability for infringement?
(Technology Patents, 10/17/12 (joint infringement was
not at issue where the claims did not require performance
by multiple actors, and remanding to determine whether
system claims were infringed by software providers
based on their use of the invention, under NTP and
Centillion see below); McKesson, 4/12/11 (no joint
infringement, following CAFC precedent, where the
alleged direct infringer-doctor did not control or direct
patients to use interactive website; see also J. Newman,
dissenting patents on computer-based interactive
methods cannot be infringed based on the CAFCs rules;
J. Bryson, concurring en banc review is needed)
[vacated and en banc review granted, on 5/26/11; see
above]; Uniloc, 1/4/11 (distinguishing Cross Medical,
Muniauction, and BMC); Akamai Techs., 12/20/10
[vacated and en banc review granted, on 4/20/11; see
above]; Golden Hour Data Systems, 8/9/10 (affirming
1136
JMOL of no joint infringement even though the two
defendants had formed a strategic partnership, enabled
their two software programs to work together, and
collaborated to sell the two programs as a unit, which
together practiced the claimed method; see also J.
Newman, dissenting reasonable jury could have found
joint infringement); BMC Resources, 9/20/07 (On
Demand [dicta] did not change [the CAFCs] precedent
with regard to joint infringement) [overruled by
Akamai Techs., 8/31/12 (en banc)]; Pharmastem, 7/9/07;
On Demand Machine, 3/31/06; Cross Medical Prods.,
9/30/05); See also Travel Sentry, 11/5/12
(nonprecedential)
- Under joint infringement theory, two related

parties are both deemed liable for direct
infringement of a method patent when each
performs some steps of the claimed method; the
viability and scope of the theory is the subject of
considerable debate (Pharmastem, 7/9/07 (panel
not presented with issue; see also J. Newman,
dissenting))
- That other parties are necessary to complete the

environment in which the claimed element
functions does not necessarily divide the
infringement between the necessary parties
(Advanced Software Design, 6/2/11 (limiting
claim preamble described the environment only of
the method and system claims, and thus direct
infringer needed only perform the validation step
or use the structure recited in the claim body -
citing Uniloc Like the claim in Uniloc, the
claims at issue in this case contain preambles that
define the environment in which an accused
infringer must act or describe capabilities that an
accused device must have.); Uniloc, 1/4/11)
1137
- Courts faced with divided or joint infringement
theory have generally refused to find liability
where one party did not sufficiently control or
direct each step of the patented process, such that
every step is attributable to the controlling party,
i.e., the mastermind; versus, at the other end of
the multi-party spectrum, mere arms-length
cooperation will not give rise to direct
infringement by any party (Move, 3/4/13; Voter
Verified, 11/5/12 (affirming no direct infringement
of method claims where there was no direction or
control by the defendants over voters actions from
providing instructions on how to use the accused
systems); McKesson, 4/12/11 [vacated and en
banc review granted, on 5/26/11; see above];
Akamai Techs., 12/20/10 [vacated and en banc
review granted, on 4/20/11; see above]; Golden
Hour Data Systems, 8/9/10 (affirming no joint
infringement where neither of the two defendants
controlled or directed the other in performing the
claimed invention); SiRF Technology, 4/12/10
(concluding direct infringement, but not reaching
the question of joint infringement after construing
the method claims not to require any direct actions
by customers or end users of the accused devices,
since the claims encompassed indirect actions
performed by the accused infringer alone);
Muniauction, 7/14/08 (accused direct infringer did
not sufficiently direct or control other parties in
performing patented steps for direct infringement,
even though the accused infringer controlled
access and instructed bidders on the use of its
system, distinguishing On Demand); Cordis,
1/7/08 (citing BMC Resources); BMC Resources,
9/20/07 [overruled by Akamai Techs., 8/31/12
(en banc)]); See also Travel Sentry, 11/5/12
(nonprecedential direction or control test was not
met for showing direct infringement (addressing
1138
direction and control separately), while suggesting
(in dicta) that in possible future cases directing
infringing activity only may be enough for direct
infringement, stating: While a reasonable fact-
finder could in some circumstances find that
direction could be separated from control and lead
to infringement liability, such circumstances have
not found their way into our precedent at the
present time.; see also J. Linn, concurring-in-part
objecting to the majoritys dictum as
unnecessary to resolve the case, and arguing that
the direction or control test requires vacarious
liability by the accused infringer, i.e., an agency
relationship with those performing the claimed
method steps, and that [t]he majoritys proposed
separation of direction from control is contrary to
this courts precedent.); Desenberg, 8/31/10
(nonprecedential affirming dismissal under Rule
12(b)(6) where the plaintiff was unable to show
direct or joint infringement)
- Control or direction standard of BMC

Resources is satisfied in situations where the
accused direct infringer would be held
vicariously liable for the acts committed by
another party required to complete
performance of a claimed method
(Aristocrat Techs., 3/13/13; Akamai Techs.,
8/31/12 (en banc) (summarizing the courts
prior holdings regarding direct infringement
in the divided infringement context);
McKesson, 4/12/11 [vacated and en banc
review granted, on 5/26/11; see above];
Akamai Techs., 12/20/10 (what is
essential for joint infringement is not
merely the exercise of control or the
providing of instructions, but whether the
relationship between the parties is such that
1139
acts of one may be attributed to the other)
4/20/11; see above]; See also Travel Sentry,
11/5/12 (nonprecedential suggesting
vacarious liability by the accused infringer
as an alternative way to show direction or
control for liability for direct infringement
under divided infringement theory; see also
J. Linn, concurring-in-part, arguing that
direct infringement liability requires that the
accused infringer be vacariously liable for
the actions of a third party performing the
claimed method steps); Muniauction,
7/14/08); See also Vacarious liability
- Liability for direct infringement is not

avoided when a party contracts out
steps of a patented process to another
entity; the party in control is liable for
the infringement (Move, 3/4/13 (fact-
specific inquiry contrasting when
the accused direct infringer provides
instructions or directions to another
for performing claimed steps, with
contracting out steps of the process);
Akamai Techs., 12/20/10 (no
infringement where a standard form
contract did not obligate the accused
infringers customers to perform any
of the method steps, who instead
acted principally for their own benefit
and under their own control) [vacated
4/20/11; see above]; Muniauction,
7/14/08 (no direct infringement where
the accused infringer neither
performed every step of the claimed
methods nor had another party
1140
perform steps on its behalf); BMC
Resources, 9/20/07 [overruled by
Akamai Techs., 8/31/12 (en banc)]);
See also Travel Sentry, 11/5/12
(nonprecedential)
- Use of claimed system where the

accused infringer is vicariously liable
for the actions of its customers such
that use by its customers may be
attributed to the accused infringer
(Technology Patents, 10/17/12
(remanding to address the issue of
use of system claims by software
providers); Advanced Software
Design, 6/2/11 (raising issue, citing
Centillion); Centillion Data Systems,
1/20/11 (applying BMC, Muniauction,
Akamai, and Cross Medical in
holding the accused infringer not
vicariously liable for actions of its
customers where no direction or
agency relationship)); See also 35
USC 271(a) direct infringement
Use
- Control or direction standard need

principal and agent relationship, i.e., consent
by the principal and agent that the agent is
acting on the principals behalf and subject
to the principals control, or contractual
obligation by the third party to the accused
infringer to perform a method step; it is not
enough to determine for whose benefit the
actions serve (Aristocrat Techs., 3/13/13;
McKesson, 4/12/11 (This court has time
and again rejected liability where one party
performed most of the patented method and
1141
left it to another party to complete the
method in the absence of any contractual
obligation or agency relationship that would
vicariously attribute the acts of the one party
to the other citing Akamai, Muniauction,
and BMC Resources; see also J. Newman,
dissenting) [vacated and en banc review
granted, on 5/26/11; see above]; Akamai
Techs., 12/20/10 (neither requirement above
was met, where the accused infringer simply
provided direction, i.e., instructions, to the
third party on how to use the accused
infringers service, which method step was
performed independently by the third party)
4/20/11; see above]); See also Travel
Sentry, 11/5/12 (nonprecedential)
- Independent contractor need agency

relationship for joint infringement
(Akamai Techs., 12/20/10) [vacated
4/20/11; see above]
- Proper claim drafting to cover joint infringement -

concerns over a party avoiding infringement by
arms-length cooperation with another party can
usually be offset by proper claim drafting Sage
Prods. ([I]t is the patentee who must bear the cost
of its failure to seek [proper claim] protection) a
patentee can usually structure a claim (or correct a
claim by reissue patent) to capture infringement by
a single party (McKesson, 4/12/11 (see J.
Newman, dissenting patents on interactive
methods cannot be infringed based on the CAFCs
rules on joint infringement) [vacated and en banc
review granted, on 5/26/11; see above]; Uniloc,
1/4/11 (rejecting noninfringement argument where
1142
claim covered infringement by a single party);
Akamai Techs., 12/20/10 (also can correct claim
by seeking a reissue patent) [vacated and en banc
review granted, on 4/20/11; see above]; SiRF
Technology, 4/12/10 (direct infringement was
found where the method claims were drawn to
actions performed by a single party, ruling that the
actions of forwarding and downloading
performed by customers and end users of the
accused devices were not required by the claims,
and thus the fact that parties other than the accused
infringer performed these actions did not preclude
a finding of direct infringement); BMC Resources,
9/20/07 [overruled by Akamai Techs., 8/31/12
(en banc)])
- No joint infringement based on the proper

claim construction (SiRF Technology,
4/12/10 (rejecting the accused infringers
arguments for why no joint infringement,
which required the court to read limitations
into the method claims))
Joint tortfeasors
- Joint-tortfeasors see DAMAGES
- Conspiracy to infringe (Intl Rectifier (1), 3/18/04)
License defense to infringement
- License to patent immunizes licensee from charges of

infringement based on acts committed while the
agreement is in force - 271(a) (Taurus IP, 8/9/13
(breach of warranty in settlement-license agreement);
Alexsam, 5/20/13 (affirming noninfringement where the
1143
defendants transactions were sublicensed under an
agreement between the patentee and a third party, and the
failure to pay royalties did not retroactively revoke the
sublicense under which the transactions took place
citing Tessera (patent exhaustion case)); Slesinger,
12/21/12 (J. Reyna, dissenting license defense relevant
in trademark infringement context); Intel, 12/17/12
(affirming SJ of noninfringement where the accused
infringer, who had a license to original patents, was held
to also have a license to the reissue patents in suit);
Silicon Graphics, 6/4/10; Imation, 11/3/09 (patent license
agreement unambiguously included Imations future
formed and acquired subsidiaries, where the license was
interpreted as a single, unitary grant of a license to
Imations present and future subsidiaries); See also
Buckhorn, 9/19/13 (nonprecedential defendants also
were entitled to (attorney) fees under broad fee-shifting
provision in settlement and license agreement); Radar
Industries, 3/30/11 (nonprecedential defendant-
manufacturer had a license defense to infringement based
on a have made license between the patentee and the
manufacturers customer; also, the license can be express
or implied, and need not be in writing, but may be based
on the parties conduct or language and course of
performance, showing their intent); Murphey, 10/7/08
(nonprecedential stating the above rule, in which the
accused infringer with a license to the patent, with right
to sublicense, did not infringe))
Means-plus-function claims - 35 USC 112, 6
(Uniloc, 1/4/11; General Protecht Group, 8/27/10 (accused and

corresponding structures for term latching means performed
the recited function in a substantially different way (magnet vs.
mechanical solution, relying on Toro)); Pass & Seymour,
8/27/10 (claimed function not infringed where narrowly
written); Baran, 8/12/10 (accused structure (flexible) was
1144
substantially different from the corresponding structure (rigid));
Hearing Components, 4/1/10; Intellectual Science, 12/15/09;
Lucent, 9/11/09; Welker Bearing, 12/15/08; Minks, 10/17/08;
Lucent Techs., 9/25/08; CSIRO, 9/19/08; Applied Medical
Resources, 5/15/06; JVW Enterprises, 10/3/05; Cross Medical
Prods., 9/30/05; Cytologix, 9/21/05; Utah Products, 12/4/03);
See also Bennett Marine, 9/19/13 (nonprecedential); Accentra,
1/4/13 (nonprecedential substantial evidence including expert
testimony supported the jurys infringement verdict where the
accused device contained a structural equivalent of the
corresponding structure in the specification); Icon Health &
Fitness, 10/24/12 (nonprecedential no literal or DOE
infringement where the accused structure was not equivalent to
the corresponding structure required to enable the recited
function); See also CLAIM CONSTRUCTION Means-plus-
function claims 35 USC 112, 6
- Structural, not functional, analysis is required to prove

infringement compare disclosed corresponding
structure(s) to accused structure(s) (Baran, 8/12/10;
Lucent, 9/11/09 (affirming SJ of noninfringement where
the patentee failed to analyze the source code, or identify
the algorithms, of the accused products - citing Aristocrat
Techs. (claim construction case)); Fresenius, 9/10/09
(addressing validity of means-plus-function limitation,
citing Cytologix); Cytologix, 9/21/05); See also Genlyte,
5/14/08 (nonprecedential testimony from the patentees
expert described what the specification would convey to
a POS in the art as to corresponding structure, as
compared to the accused devices)
- Literal infringement requires that the relevant structure

in the accused device performs the identical function
recited in the claim and is identical or equivalent to the
corresponding structure in the specification; equivalent if
insubstantial differences, i.e., both structures perform the
identical (claimed) function in substantially the same way
to achieve substantially the same result (Uniloc, 1/4/11;
1145
General Protecht Group, 8/27/10 (accused product was
not equivalent to the corresponding structure, where
experts failed to testify how the structures performed the
recited function in substantially the same way; see also J.
Newman, dissenting expert evidence supported
equivalence by testimony of interchangeability); Baran,
8/12/10 (affirming no literal infringement where
structures were substantially different: The two
structures rely on opposing principles one requiring
rigid and the other flexible component); Hearing
Components, 4/1/10; Intellectual Science, 12/15/09;
Welker Bearing, 12/15/08 (accused structure was not
equivalent to the only corresponding structure disclosed
in the specification); Minks, 10/17/08 (accused and
claimed circuitry were equivalent or interchangeable);
CSIRO, 9/19/08 (accused device infringed where its
structure corresponded to only one of two
subcomponents in a device disclosed in the patent, where
the subcomponents were separable and distinct); Applied
Medical Resources, 5/15/06; JVW Enterprises, 10/3/05;
Cross Medical Prods., 9/30/05); See also Bennett Marine,
9/19/13 (nonprecedential reversing literal infringement
based on the correct narrower claim construction limiting
the corresponding structure to the specific disclosed
control circuit and its equivalents, where the patentee
failed to present any evidence of literal infringement
under the correct construction); Icon Health & Fitness,
10/24/12 (nonprecedential affirming no literal or DOE
infringement where the alleged equivalents in the
accused products did not perform the same function and
did not contain a structure equivalent to the
corresponding structure); Restaurant Technologies,
1/6/10 (nonprecedential affirming SJ of
noninfringement where the relevant parts of the accused
structure were not equivalents of the corresponding
structures of multiple means limitations); Applied
Medical Resources, 2/24/09 (nonprecedential no
1146
infringement where the structures performed the claimed
functions in a substantially different way)
- Equivalents function-way-result test -

substantiality of differences whether the accused
and disclosed structures perform the identical (as
claimed) function in substantially the same way to
give substantially the same result (Uniloc, 1/4/11;
General Protecht Group, 8/27/10 (magnet vs.
mechanical solution were substantially different
ways, relying on Toro; see also J. Newman Toro
did not hold the above); Hearing Components,
4/1/10; Minks, 10/17/08; CSIRO, 9/19/08
(uncontroverted expert testimony supported
insubstantial differences for infringement);
Applied Medical Resources, 5/15/06; JVW
9/30/05; Franks Casing, 11/30/04; Toro, 1/20/04;
Utah Products, 12/4/03); See also Bennett Marine,
9/19/13 (nonprecedential); Restaurant
Technologies, 1/6/10 (nonprecedential the
differences between the accused system and the
structures corresponding to multiple means
limitations were not insubstantial, one of which
operated in a substantially different way than the
accused system; also, certain components of the
accused system did not perform the claimed
functions); Applied Medical Resources, 2/24/09
(nonprecedential); Aspex Eyewear, 8/1/08
(nonprecedential no infringement where the
accused pins retained glass lenses in a substantially
different way than the disclosed rims
corresponding to term retaining mechanism)
- Difference in physical structure alone is not

determinative of Section 112, sixth
paragraph, equivalence (Minks, 10/17/08
1147
(statute does not require that structures be
structurally equivalent))
- DOE for after-arising technology

developed after patent issuance, vs.
equivalent structure under Section 112, sixth
paragraph, must have been available at the
time of issuance (Welker Bearing, 12/15/08
(important difference between structural
equivalents and DOE is the timing of the
separate analyses for insubstantial change;
accused structure was not after-arising
technology, as was well known in the prior
art); Franks Casing, 11/30/04; Nomos,
(nonprecedential reversing finding of DOE
infringement by accused structure available
at time of patent filing)
- Analysis for equivalent structure

under DOE collapses into the
Section 112, sixth paragraph,
structural equivalents analysis where
the proposed equivalent arose before
patent issuance (Welker Bearing,
12/15/08); See also Bennett Marine,
9/19/13 (nonprecedential reversing
finding of DOE infringement under
the correct claim construction, citing
rule that a finding of no literal
infringement for lack of equivalent
structure may preclude a finding of
DOE infringement Chiuminatta)
- Function for which the accused device must

be identical is the function specified in the
claim (Uniloc, 1/4/11 (enhanced
functionality of component of accused
1148
device did not prevent it from being an
equivalent); Minks, 10/17/08 (rejecting
infringers argument that devices had
different functions not recited in the claim))
- Insubstantial differences corresponding

structure and accused structure perform
identical (claimed) function in substantially
the same way (General Protecht Group,
8/27/10; Welker Bearing, 12/15/08
(mechanisms were substantially different
for reasons including that the inventor had
expressly contemplated but rejected
alternatives to the disclosed structure such as
those in the accused structure, because of the
benefits and advantages of the disclosed
structure); CSIRO, 9/19/08; JVW
9/30/05); See also Restaurant Technologies,
1/6/10 (nonprecedential differences
between a pump and squeezable valve were
not insubstantial)
- Whether accused structure and

corresponding structure are
interchangeable evidence of known
interchangeability between structure
in the accused device and the
disclosed structure has been
considered an important factor
(General Protecht Group, 8/27/10
(rejecting expert testimony of
equivalence which was based on
interchangeability, where the
testimony failed to explain why the
accused and corresponding structures
functioned in substantially the same
way; see also J. Newman, dissenting
1149
substantial evidence of equivalence
based on known interchangeability);
Hearing Components, 4/1/10; Minks,
10/17/08 (expert testimony and the
patent in suit evidenced that a POS in
the art would know the accused and
claimed structures were
interchangeable and equivalent);
Cross Medical Prods., 9/30/05); See
also Bennett Marine, 9/19/13
district courts finding of
interchangeability of the disclosed
and accused structures, stating that the
question is not whether both
structures serve the same function, but
whether it was known that one
structure was an equivalent of another
Chiuminatta)
- Range of permissible
equivalents depends upon the
extent and nature of the
invention when the disclosed
physical structure is of little or
no importance to the claimed
invention, there may be a
broader range of equivalent
structures than if the physical
characteristics of the structure
are critical in performing the
claimed function in the context
of the claimed invention IMS
Tech. (Uniloc, 1/4/11 (given as
a reason why the structural
disclosure of the disputed
limitation may have been
minimal, because of the relative
1150
unimportance of the particular
structure of that element))
- Equivalence is a Q of fact to be
determined against the context
of the patent, the prior art, and
the particular circumstances of
the case Graver Tank (S.C.)
(General Protecht Group,
8/27/10 (J. Newman,
dissenting))
- Separate finding from DOE equivalents

(Welker Bearing, 12/15/08 (structural
equivalents and DOE are closely related in
that they apply similar analyses of
insubstantiality of the differences between
the disclosed and accused structures); Toro,
(nonprecedential reversing the district
courts finding of infringement under the
DOE for DOE infringement of claim
containing means-plus-function limitation,
referring to using the traditional function-
way-result test citing Kemco Sales); Icon
Health & Fitness, 10/24/12 (nonprecedential
lack of equivalent structure in the accused
products for purposes of literal infringement
also precluded equivalence under the DOE
citing Chiuminatta for rule that a finding of
non-equivalence for Section 112, paragraph
6, purposes should preclude a contrary
finding under the DOE)
- Structural equivalent must have been

available at time of patent issuance (Welker
Bearing, 12/15/08; Cross Medical Prods.,
9/30/05)
1151
- Improper to import unclaimed functions into a
means-plus-function claim limitation (Welker
Bearing, 12/15/08) this can happen in two ways:
1) can occur during claim construction by defining
a claimed function to require more than is actually
claimed, and 2) can occur during infringement
analysis if the court improperly determines the
way in which the disclosed structure performs the
previously defined function, i.e., the court includes
the way in which the disclosed structure performs
other, extraneous functions (Applied Medical
Resources, 5/15/06, see J. Dyk, dissenting the
disclosed and accused devices performed the
identical function in a substantially different way;
the analysis of the way a function is performed
necessarily requires descriptive language not
contained in the claim itself); See also Centillion
Data Systems, 11/25/13 (nonprecedential
genuine issue of material fact on infringement
where the district courts construction of the term
data processing means did not require that
database tables be generated, but rather that the
corresponding (computer) structure was capable of
creating database tables); Applied Medical
Resources, 2/24/09 (nonprecedential district
court did not err by allowing the accused infringer
to argue to the jury that part of the disclosed
embodiment (deformable outer valve portions),
which were not included within the courts
construction of the corresponding structure, were
relevant to the way the disclosed embodiment
performed the claimed functions, which was
substantially different from the accused structure,
citing Cross Medical Prods.)
1152
Personal liability for infringement
- Personal liability for infringement piercing corporate

veil unnecessary for corporate officers who actively
assist with their corporations infringement (Wordtech
Systems, 6/16/10 (addressing personal liability for direct,
inducing and contributory infringements); Insituform
Techs., 10/4/04; Ferguson, 12/4/03)
- Corporate officers who aid and abet infringement are

personally liable (Wordtech Systems, 6/16/10 (reversing
for multiple reasons the denial of the defendants motion
for a new trial on the defendants individual liability for
infringement); Insituform Techs., 10/4/04)
- Unless corporate structure is a sham, personal

liability for inducement must be supported by
personal liability, which requires the officer to
have possessed a specific intent to aid and abet the
infringement (Wechsler, 5/18/07)
- Standards for personal liability for infringement

and willful infringement are different (Wordtech
Systems, 6/16/10) primary consideration for
willful infringement is whether the infringer had a
good faith belief that the patent was invalid and/or
not infringed; thus, an officers negligent belief
that a patent is invalid and/or not infringed might
support finding of willful infringement but not a
finding of personal liability for the officer
(Wechsler, 5/18/07)
Piercing the corporate veil alter ego theory of

infringement
1153
(Hall, 1/25/13 (affirming dismissal of action against corporate
officer personally, applying 2nd Cir. law); Wordtech Systems,
6/16/10; Wechsler, 5/18/07; Insituform Techs., 10/4/04)
- Alter ego theory of infringement disregarding corporate

form when corporation is the alter ego of an individual
(Wordtech Systems, 6/16/10 (jury was never instructed
on the defendants corporate status); Wechsler, 5/18/07;
Insituform Techs., 10/4/04); See also Kippen, 8/2/12
(nonprecedential affirming SJ of noninfringement
against president, where the evidence failed to support
piercing the corporate veil)
- Bad faith must be shown before a court may

disregard the fiction of a separate corporate
existence (Wechsler, 5/18/07 (9th Cir. (applying
state law)); See also Tiger Team Techs., 4/12/10
(nonprecedential breach of contract claim)
Practicing the prior art not a viable defense to

infringement
(Mintz, 5/30/12 (affirming noninfringement, stating that the

patentees argument for why a prior art reference lacked a
certain claim limitation applied similarly to explain why the
accused products also lacked that limitation); Cordance,
9/23/11 (rejecting the patentees argument that the accused
infringer was relying on the practicing the prior art defense);
Uniloc, 1/4/11 (allegedly practicing the prior art does not prove
anticipation citing Zenith); Kinetic Concepts, 2/2/09 (relevant
to showing no intent for inducing infringement, and to rebut
allegations of copying and willful infringement); In re
Omeprazole, 8/20/08 (rejecting the accused infringers
noninfringement argument that its manufacturing process was
that disclosed in a prior art EP application); Zenith Electronics,
4/16/08 (applying rule to proof of anticipation Tate Access
Floors); Nazomi, 4/11/05; Koito Mfg., 8/23/04)
1154
- Accused infringers are not free to flout the requirement
of proving invalidity by C&C evidence by asserting a
practicing the prior art defense to literal infringement
under the less stringent preponderance of evidence
standard; instead, anticipation requires a showing that
each element of the claim at issue, properly construed, is
found in a single prior art reference it is the presence of
the prior art and its relationship to the claim language
that matters for invalidity Tate Access Floors, Zenith
Electronics (Cordance, 9/23/11 (accused infringers
experts showed how each claim element was present in
the prior art system))
- Pre-issuance activity relevant to show post-issuance

activity creates genuine issue of fact (Chimie, 4/11/05)
- Product-by-process claims (ACTV, 10/8/03)
- Process terms in product-by-process claims serve as

limitations in determining infringement Atlantic
Thermoplastics, In re Thorpe (Abbott Labs, 5/18/09 (en
banc) (clarifying en banc (in view of Supreme Court
precedent) the scope of product-by-process claims by
adopting the rule in Atlantic Thermoplastics over the rule
in Scripps Clinic that product-by process claims are not
limited to product prepared by the process set forth in the
claims, and therefore holding that [t]o the extent that
Scripps Clinic is inconsistent with this rule, this court
hereby expressly overrules Scripps Clinic as it is both
unnecessary and logically unsound to create a rule [i.e.,
the Scripps rule, as argued by the dissent] that the process
limitations of a product-by-process claim should not be
enforced in some exceptional instance when the structure
of the claimed product is unknown and the product can
1155
be defined only by reference to a process by which it can
be made; see also J. Newman, dissenting, with J. Mayer,
J. Lourie, joining advocating for the Scripps rule when
a product-by-process claim is directed to a new and
unobvious product whose structure is not fully known at
the time of filing the patent application, and for which
process parameters are thus used to aid in defining the
product; also asserting that [t]his claiming expedient
[called the rule of necessity] has been recognized since
at least 1891 but that [t]he court today [by adopting a
simplistic universal rule] overturns this expedient for all
circumstances, brooking no exception; opining further
that the courts decision is a new restraint on patents for
new products, particularly todays complex chemical and
biological products whose structure may be difficult to
analyze with precision; see also J. Lourie, dissenting
separately, stating that [b]right lines have their uses, but
judging should take account of differing circumstances -
- and thus he would make a distinction between old
products and new products in interpreting product-by-
process claims)); Compare to ANTICIPATION
- Dependent claim, if construed as a product-by-

process claim, would only be infringed by first
performing all of the steps of the process recited in
the claim from which it depends (Monsanto,
10/4/07)
- Optional language in a product-by-process claim is

limiting, since there is no test by which to identify
the product the claim covers except by the recited
process BASF (S.C.) (Abbott Labs, 5/18/09
(product-by-process claim to cefdinir crystals
obtainable by the process recited in the claim
was construed not to cover the product obtained by
or obtainable by processes other than those
explicitly recited in the claim, stating that [t]his
1156
court must enforce the ways and terms that a party
chooses to define its invention))
- Claims that include ambiguous language

should be viewed extremely narrowly;
otherwise, the recitation of the process
becomes redundant (Abbott Labs, 5/18/09
(reciting obtainable by did not give the
patentee a free pass to escape the ambit of
the product-by-process claiming doctrine))
Proof of infringement
Burden of proof on the patentee
- Burden of proof on infringement falls on the patentee
- Burden remains with the patentee to prove

infringement (Rembrandt Vision, 8/7/13 (the
patentee must prove infringement with admissible
evidence! - affirming JMOL of noninfringement
based on the patentees failure to prove
infringement with admissible evidence, where the
patentees only evidence of infringement was
expert testimony not admissible under Rules 26
and 37 because not in the experts report); Frolow,
3/15/13 (cautioning the parties to limit the scope
of the disputed issues to facts that are truly
disputable after concluding that the defendants
argument that its tennis rackets lacked basic racket
elements as claimed bordered on the frivolous;
also affirming the district courts JMOL of
noninfringement entered at the close of the
patentees case, where the patentee failed to
present evidence that the accused rackets met a
disputed claim element); Welker Bearing, 12/15/08
(stating that the burden remains with the patentee
to prove infringement, not on the defendant to
1157
disprove it)); See also Paradox Security Systems,
7/19/10 (nonprecedential affirming JMOL of
noninfringement granted after the patentees case
where the accused product was not proven to
contain all claim elements, including means-plus-
function limitations, after excluding the patentees
experts infringement testimony which was outside
the scope of the expert report, and infringement
was not otherwise proven based on non-expert
testimony)
- Preponderance of the evidence standard for

proving infringement (Spansion, 12/21/10; Lucent,
9/11/09 (patentees circumstantial evidence was
something less than the weight of the evidence,
yet just more than a mere scintilla); Astrazeneca,
6/10/08 (nonprecedential district court defined
and applied the correct standard in concluding
noninfringement))
- More likely than not for infringement (Adams,

8/5/10 (standard for showing infringement of
pharmaceutical claim))
- Defendants documents used to prove infringement

(Checkpoint Systems, 3/25/13 (the patentees
reliance on the accused infringers patents for how
the accused product was made was reasonable
distinguishing L&W); Amgen, 9/15/09; E-Pass
Technologies, 1/12/07; AFG Indus., 7/13/04)
- Patent application describing accused

products failed to prove infringement
(L&W, 12/14/06)
- Inadvertent errors in patent the patentee bears the

burden of proof (PSC Computer Prods., 1/20/04)
1158
- Patentee must produce evidence of infringement
for each accused product, in the course of its
intended use; an expert cannot assume all accused
products are the same (L&W, 12/14/06)
- Nothing improper about an expert testifying

in detail about a particular infringing device
and then stating that the same analysis
applies to other allegedly infringing devices
that operate similarly, without discussing
each type of device in detail (Tivo, 1/31/08
(stated with respect to the patentees expert;
the accused infringers expert also discussed
various infringing devices collectively))
- Patentee must establish that the patented method

was actually practiced on the accused devices
(Vita-Mix, 9/16/09 (expert testimony); Ricoh,
12/23/08 (testing evidence failed to establish
infringement); Johns Hopkins, 10/2/08 (jury
verdict not supported by substantial evidence
(expert testimony) that the requirements of method
claims were met during operation of the accused
devices); Lucent Techs., 9/25/08 (patentees
experts testimony of actual practice based on
circumstantial evidence rejected as speculative); E-
Pass Technologies, 1/12/07); See also Cardiac
Pacemakers, 12/18/08 (nonprecedential limiting
damages to those devices shown to infringe the
asserted method claim); See also 35 USC
271(b) inducing infringement Direct
infringement required
Contributory infringement
- Contributory infringement record must contain

evidence that the accused product imported into the U.S.
1159
was sold or used in a directly infringing manner (DSU
Medical, 12/13/06); See also 35 USC 271(c)
contributory infringement
Direct vs. indirect evidence of infringement
- Proof of direct infringement or inducement of

infringement by either direct or circumstantial evidence
(Frolow, 3/15/13 (improper to grant SJ where
infringement could be proven based on circumstantial
evidence - by the accused infringers marking of products
with patent number and history of paying royalties on the
accused products; see also J. Clevenger, additional views
admission of the above evidence on remand excludable
under FRE 403 (by motion in limine) because the district
court found noninfringement based on separate ground;
see also J. Moore, additional views disagreeing with J.
Clevenger); ePlus, 11/21/12 (direct and induced
infringement of method claim was proven by
circumstantial evidence sufficient to support jury
verdict); Mirror Worlds, 9/4/12 (patentee failed to show
that the accused infringer performed all of the steps in the
claimed methods); Vita-Mix, 9/16/09; Lucent, 9/11/09
(circumstantial evidence permitted the jury to find that at
least one person other than the patentees expert had
performed the claimed method within the U.S. during the
relevant time period); Martek Biosciences, 9/3/09
(infringement of process claim having functional
limitation was proven by circumstantial evidence through
expert testimony); Linear Tech., 5/21/09; Lucent Techs.,
9/25/08; BMC Resources, 9/20/07 [overruled by
Akamai Techs., 8/31/12 (en banc)]; Pharmastem, 7/9/07;
E-Pass Technologies, 1/12/07; Liquid Dynamics, 6/1/06);
See also 35 USC 271(b) inducing infringement
1160
- Circumstantial evidence is not only sufficient, but
also may be more certain, satisfying and
persuasive than direct evidence Michalic (S.C.)
(Frolow, 3/15/13)
- For direct infringement, the patentee must either

point to specific instances of direct infringement or
show that the accused device necessarily infringes
the patent in suit (Praxair, 9/29/08 (infringement
proven based on expert testimony and testing
showing that the accused filters necessarily
contained the claimed capillary feature)); See
also 35 USC 271(b) inducing infringement
- Direct evidence vs. indirect evidence of

infringement (Rembrandt Vision, 8/7/13 (district
court did not abuse discretion by excluding the
patentees circumstantial evidence of infringement
based on the accused infringers characterization
that contact lenses were soft generally where the
claimed soft limitation was construed as having
a more detailed meaning) Frolow, 3/15/13;
Pharmastem, 7/9/07); to prove infringement using
indirect evidence, must credibly link indirect
evidence to the relevant evidence of infringement
(Power Integrations, 3/26/13 (patentees damages
expert failed to present evidence linking mobile
phone sales data to the infringing power circuits,
ruling that although direct evidence of
infringement is not required, the CAFC requires
that the record demonstrate something more than
speculation that infringing activity has occurred
citing ePass Techs.); Alza, 9/6/06)
- Indirect evidence in the form of advertising

and other materials of defendants, general
scientific evidence relating to the subject
1161
matter at issue, and testimony and
admissions of defendants representatives
and defendants expert were not substantial
evidence of infringement; direct testing or
direct scientific evidence was required to
prove infringement (Pharmastem, 7/9/07
(see also J. Newman, dissenting))
- Instructions to prove inducing infringement

(ePlus, 11/21/12; E-Pass Technologies,
1/12/07); See also 35 USC 271(b) -
inducing infringement
- Accused infringers admission that making

the accused product according to the
methods in its own patents (Checkpoint
Systems, 3/25/13 (distinguishing L&W))
Doctrine of equivalents
- Doctrine of equivalents
- Expert testimony
- Accused element and accused product work

in a substantially the same way (Energy
Transportation Group, 10/12/12; Voda,
8/18/08 (insubstantial difference where
expert testimony that cardiologists would
have difficulty distinguishing accused and
claimed elements during use); Miken
Composites, 2/6/08 (element-by-element
analysis required, rather than the
equivalence of the invention as a whole);
Paice, 10/18/07; Abraxis Bioscience,
11/15/06); See also DOE issues
Insubstantial differences; DISTRICT
1162
COURT PRACTICE AND PROCEDURE
Expert testimony
- Substantially different function (Crown

Packaging, 3/17/09 (SJ of noninfringement
reversed where there was a material fact
issue regarding the function prong based on
conflicting expert testimony))
- Patentee must provide particularized testimony and

linking argument with respect to the function, way,
result test when such evidence is presented to
support a finding of DOE infringement;
generalized testimony as to the overall similarity
between the claims and the accused infringers
product or process will not suffice (Cephalon,
2/14/13 (patentees expert testimony failed to show
infringement literally or under the DOE, as
supported by testimony of the accused infringers
expert that the patentee and its expert did not show
that the accused generic drug product satisfied
claim limitation); Energy Transportation Group,
10/12/12 (proper linking argument presented);
American Calcar, 6/27/11 (patentee failed to
provide particularized testimony and linking
argument to avoid SJ of noninfringement, where
the only evidence proffered was generalized
testimony by the inventor as to the overall
similarity between the claims and the accused
product); Amgen, 9/15/09; Crown Packaging,
3/17/09 (SJ of noninfringement reversed where the
patentees expert performed a detailed analysis
under the DOE); Stumbo, 11/28/07 (expert
testimony was insufficient); Paice, 10/18/07
(expert testimony was sufficient; experts
testimony regarding literal infringement implicitly
incorporated into later testimony regarding DOE
infringement)); See also Creative Internet
1163
Advertising, 4/22/11 (nonprecedential the
patentees expert testimony failed to address
equivalence with respect to the complete claim
limitation, focusing instead on only part of the
limitation; see also J. Clevenger, dissenting)
- Differences between claim and accused

product need not be first identified,
acknowledged before explaining why
insubstantial (Paice, 10/18/07)
- Linking argument provided by

demonstration of accused device and
comparison to function of claim element
(Paice, 10/18/07)
- Evidence must be particularized, not conclusory;

otherwise foreclosed from raising DOE on appeal
(Amgen, 9/15/09; Miken Composites, 2/6/08;
Paice, 10/18/07; Motionless Keyboard, 5/29/07;
Microstrategy, 11/17/05; PC Connector Solutions,
5/6/05)
- Conclusory statements by an expert are

insufficient to prove DOE infringement
(Mirror Worlds, 9/4/12; Stumbo, 11/28/07
(explanation required of why differences are
insubstantial); Microstrategy, 11/17/05)
- Evidence of DOE infringement the patentee must

provide particularized testimony and linking
argument with respect to the function, way result
test, and regarding insubstantiality of differences,
on a limitation by limitation basis (Energy
Transportation Group, 10/12/12 (affirming DOE
infringement based on expert testimony);
American Calcar, 6/27/11; Amgen, 9/15/09 (no
substantial evidence in the record that would have
1164
permitted the jury to find that any limitation had
been met by equivalents); Cordis, 3/31/09
(experts testimony fulfilled the patentees
obligation with respect to the function, way, result
test); Crown Packaging, 3/17/09 (SJ of
noninfringement reversed where the patentees
expert performed a detailed analysis under the
function-way-result test and there was a material
fact issue regarding the function prong); Johns
Hopkins, 10/2/08 (CAFCs conclusion of
noninfringement would not have changed even if
the jury based its verdict of infringement on
equivalency rather than literal infringement, as the
patentee did not present the particularized
testimony and linking argument necessary to
support a jury finding of infringement based on
DOE; see also J. Newman, dissenting, taking a
more relaxed approach and agreeing with the
district courts judgment of infringement where the
jury was properly instructed on claim construction
and found infringement); Miken Composites,
2/6/08; Stumbo, 11/28/07; Paice, 10/18/07;
Network Commerce, 9/8/05); See also Fraser,
7/8/09 (nonprecedential a patentee could not
prove DOE infringement of the claimed method
merely based on the presence of vegetable oil as an
ingredient of the accused fish products)
- Evidence and argument for infringement

under the DOE cannot merely be subsumed
in the plaintiffs case of literal infringement
but the expert is not required to start over
when transitioning to a DOE analysis
(Amgen, 9/15/09 (patentee pointed to no
argument at trial that linked its experts
testimony relating to literal infringement to
DOE infringement))
1165
- Reason for selecting accused product supporting DOE
infringement (Abraxis Bioscience, 11/15/06 (accused
product was selected because of structural similarities to,
stability profile of the claimed product))
- No DOE infringement affirmed although no explanation

presented by the district court (Cias, 9/27/07 (district
court ruled that claims were limited by PH disclaimer))
- Waiver for failure to address DOE in the district court

(Boss Control, 6/8/05)
Infringement evidence expert testimony, testing, etc.
- Infringement evidence e.g., studies, testing, expert

testimony (relying on other evidence) (Meadwestvaco,
9/26/13 (infringement came down to a battle of experts as
to whether XRD crystallinity limitation was met, with the
district court crediting the patentees expert (despite
deviating slightly during his testing from the courts
claim construction) while finding the accused infringers
expert unreliable); Rembrandt Vision, 8/7/13 (no abuse
of discretion in excluding experts trial testimony of
infringement based on testing not in the experts report,
and affirming JMOL of no infringement because of the
patentees failure to prove it with admissible evidence);
Alexsam, 5/20/13; Presidio Components, 12/19/12 (jury
had the ultimate discretion to evaluate credibility and
weigh the patentees experts testimony of infringement,
even if his direct and cross-examination were not entirely
consistent); Edwards Lifesciences, 11/13/12 (jury verdict
of infringement was supported by substantial evidence,
despite the testimony at trial being in direct conflict);
General Electric, 7/6/12; Powell, 11/14/11 (experts
agreed on infringement); Star Scientific, 8/26/11 (expert
testimony, supported by test results, was dispositive of
noninfringement); Uniloc, 1/4/11 (expert testimony and
1166
documentary evidence proving infringement); Spansion,
12/21/10 (detailed computer simulations by expert of
accused products proved infringement); Fujitsu, 9/20/10
(experts testing proved noninfringement); Becton
Dickinson, 7/29/10 (*reversing denial of JMOL of
noninfringement where there was insufficient evidence
(including expert testimony, testing results, and video
evidence) to support the jury verdict, even under the
district courts erroneous claim construction; see also J.
Gajarsa, dissenting - arguing that the majority interfered
with the jurys role of finding infringement, which
included direct examination by the jury of the accused
products); i4i, 3/10/10 (expert testimony, joint
stipulation, and interrogatory responses evidenced direct
infringement for purpose of showing indirect
infringement); Resqnet.com, 2/5/10 (infringement found
based on the user manual for the accused software
product); Therasense, 1/25/10 (expert testimony and
video recordings showed noninfringement) [vacated on
4/26/10, and reinstated by Therasense, 5/25/11 (en
banc)]; Intellectual Science, 12/15/09 (testimony of the
patentees expert failed to sufficiently describe the
accused products to avoid SJ of noninfringement);
Amgen, 9/15/09 (patentee was not required to have
duplicated the defendants actual production process to
prove infringement, where the patentee properly relied on
expert testimony and the defendants internal documents
to prove infringement); Cordis, 3/31/09 (expert testimony
was substantial evidence of infringement to support jury
verdict); Cohesive Techs., 10/7/08 (experts opinion
supported by testing of the accused product showing that
the requirements of the district courts claim construction
of term (rigid) were met was sufficient evidence to
support jury verdict); Praxair, 9/29/08 (expert testimony
and testing proved that the accused filters necessarily
infringed the claimed capillary feature); In re
Omeprazole, 8/20/08 (infringement of drug patent proven
through the testimony and extensive testing done by the
1167
patentees experts; battle of the experts); PSN Illinois,
5/6/08 (expert and inventor testimony rejected as wholly
conclusory); Litecubes, 4/28/08 (expert testimony, the
defendants website); Miken Composites, 2/6/08
(experts testimony based on testing was not specific to
the claim elements in dispute, but rather improperly the
invention as a whole; testing otherwise failed to prove
infringement); Tivo, 1/31/08 (competing expert
presentations); Cordis, 1/7/08 (method for measuring
thickness of stent wall for determining infringement of
claim term was a Q of fact for the jury, as supported by
expert testimony); Paice, 10/18/07; Warner-Lambert,
9/21/07; Kim, 9/20/06 (expert testimony cannot be
conclusory, but must be based on the accused products
themselves); *Liquid Dynamics, 6/1/06); See also
Learning Curve Brands, 3/30/12 (nonprecedential
patentees experts own evidence of infringement (CT
scans) showed noninfringement of claim element); O2
Micro, 11/18/11 (nonprecedential exclusion of expert
testimony on noninfringement was proper, where could
be proven based on documentary evidence, testimony of
technical fact witnesses, and testimony of the patentees
technical expert on cross-examination); Smith &
Nephew, 6/20/11 (nonprecedential rejecting the
patentees theory of infringement (based on its experts
schematic of the accused device and testimony) which
was inconsistent with the plain language of the claim);
Kimberly-Clark, 6/1/11 (nonprecedential evidence of
infringement (for grant of PI) in the form of photographs
of the accused machine, with supporting testimony, while
the accused infringer failed to offer its own photographs
and video to support noninfringement); Gentile, 4/6/10
(nonprecedential infringer destroyed documents);
Orenshteyn, 7/24/09 (nonprecedential note at the
bottom of a claim chart saying that a similar comparision
can be made for a second patent-in-suit was not
sufficient evidence of infringement); Uniloc USA, 8/7/08
(nonprecedential infringement evidence in accused
1168
infringers documents); Astrazeneca, 6/10/08
(nonprecedential expert testimony, testing on a
component of the the accused drug product were weighed
in concluding noninfringement)
- Careful of what your expert says! (Lazare Kaplan,

12/22/10 (failure to prove infringement, based on
experts admissions); In re Chippendales, 10/1/10
(TTAB the CAFC citing article against expert
which was attached as an exhibit to the experts
affidavit); Miken Composites, 2/6/08 (experts
casual reference to parts of the accused product
being the disputed claim term insert did not
suffice without more to establish literal
infringement)); See also Learning Curve Brands,
3/30/12 (nonprecedential patentees experts own
evidence established noninfringement of claim
element); Uniloc USA, 8/7/08 (nonprecedential
evidence of infringement in an exhibit attached to
experts declaration); Genlyte, 5/14/08
(nonprecedential infringement proven in part
based on concessions by accused infringers
expert)
- Experts testimony, opinions and testing evidence

must correspond with, satisfy, show the claim
limitations Abbott, Zenith (Intellectual Science,
12/15/09 (patentees expert failed to show how the
claim limitations were found in the accused
products to avoid SJ of noninfringement); Linear
Tech., 5/21/09 (expert testimony failed to explain
how the accused product met the claim
limitations); Rentrop, 12/18/08 (experts testimony
on infringement was consistent with the district
courts construction of tip despite not knowing
what Markman hearing meant); Johns Hopkins,
10/2/08 (reversing the denial of motion for JMOL
where no substantial evidence because the
1169
patentees experts opinions of infringement did
not satisfy the method claim limitations, as
construed by the district court in jury instruction;
see also dissent, J. Newman); Miken Composites,
2/6/08 (no element-by-element analysis conducted,
as required for literal and DOE infringement;
testing failed to prove infringement); Warner-
Lambert, 9/21/07 (comparative pH testing
sufficient to avoid SJ noninfringement)); See also
Paradox Security Systems, 7/19/10
(nonprecedential expert testimony failed to show
all claim limitations in the accused product)
- Recited method for measuring claim

limitation claim term may be measured by
another comparable method Union
Carbide (Amgen, 9/15/09 (testing using
ELISA was comparable to RIA recited in
claim))
- Results of pH testing, as supported by expert

testimony, raised fact issues regarding
infringement to avoid SJ (Warner-Lambert,
9/21/07)
- Testing, experiments by expert must relate closely

to accused product (In re Omeprazole, 8/20/08
(testing by the accused infringers expert rejected
as not comparable to the accused product; the
accused infringers evidence also improperly
compared the claims to a prior art product, rather
than the accused product); Miken Composites,
2/6/08; L&W, 12/14/06)
- Testing must be specific to the claim

elements, rather than the invention as a
whole; testing failed to prove infringement
of the disputed claim terms (Miken
1170
Composites, 2/6/08 (terms insert and
gap))
- Indirect evidence of infringement is proper

to prove infringement Alza (Spansion,
12/21/10 (expert used complex computer
simulations to prove infringement))
- Burden to show infringement by a

preponderance of the evidence does
not require physical validation of all
indirect evidence (Spansion,
12/21/10)
- Claim containing functional limitations no

general rule requiring one who alleges
infringement of a claim containing functional
limitations to perform actual tests or experiments
on the accused product or method (Checkpoint
Systems, 3/25/13 (citing Martek rule in holding
that litigation was not objectively baseless);
Martek Biosciences, 9/3/09 (testimony from two
experts who conceptually analyzed the accused
process was sufficient, without comparative
testing, to prove infringement of claim containing
a functional limitation, distinguishing Kim))
- Inventor having no expertise regarding

infringement of patent (Cordis, 3/31/09)
- FDA submissions, promotional materials of the

accused infringer (Regents of U. Minn., 6/3/13 (the
accused infringers sales literature describing its
mesh tube device as having two disks neither
expanded the scope of the patent in suit nor
brought the accused device within its scope, where
was undisputed that the device was not constructed
from two physically separate disks, but was rather
1171
made from lengths of mesh tubing); Amgen,
9/15/09 (proving infringement based on the
accused infringers internal documents and FDA
submissions); Boston Scientific Scimed, 1/15/09
(infringement not decided, as mooted by
obviousness ruling))
Practicing industry standards
- Practice of industry standard to show infringement

where the claims, as construed, include any device that
practices a standard; in response, an accused infringer
can either prove that the claims do not cover all
implementations of the standard or prove that it does not
practice the standard - Dynacore (Fujitsu, 9/20/10
(holding that a district court may rely on an industry
standard in analyzing infringement, while acknowledging
that in many instances an industry standard does not
provide the level of specificity required to establish that
practicing that standard would always result in
infringement or that the section of the standard relevant
to infringement is optional))
- Only in the situation where a patent covers every

possible implementation of a standard will it be
enough to prove infringement by showing standard
compliance; otherwise, the patentee must compare
the claims to the accused products, or prove that
the accused products implement any relevant
optional sections of the standard (Fujitsu, 9/20/10)
Process claims 35 USC 295
- Process claims 35 USC 295 accused infringer given

burden of proving noninfringement (Kemin Foods,
9/25/06)
1172
Right to exclude
- Federal patent laws grant the right to exclude others from

practicing the claimed invention, and not any affirmative
right to make, use, or sell anything - 35 USC 154(a)(1)
(Siemens, 6/7/11 (Order) (see J. Lourie, with whom C.J.
Rader, J. Newman, J. Linn, J. Moore, and J. OMalley
joined, concurring in the denial of a petition for rehearing
en banc citing the rule that a patent does not grant the
right to make or use or sell, but rather grants the right to
exclude others, as the basis for ruling that a separately
patented improvement can infringe a dominating patent
under the DOE); Transcore, 4/8/09 (equating a covenant
not to sue with a patent license, in the context of patent
exhaustion); BIO, 8/1/07)
Vacarious liability
- Vacarious liability for direct infringement party is

vicariously liable for the acts of another in circumstances
showing that the liable party controlled the conduct of the
acting party; in the context of patent infringement, a
defendant cannot thus avoid liability for direct
infringement by having someone else carry out one or
more of the claimed steps on its behalf Cross Medical
Prods. (Centillion Data Systems, 1/20/11 (accused
infringer was not liable for making or using the claimed
system where did not direct customers, or was no agency
or contractual obligation, citing the precedent regarding
joint infringement, vacarious liability); BMC Resources,
9/20/07 [overruled by Akamai Techs., 8/31/12 (en
banc)]); See also Joint infringement
- Infringement based on an agent hired for

infringing purpose (Pellegrini, 7/8/04)
1173
V. DOCTRINE OF EQUIVALENTS and PROSECUTION
HISTORY ESTOPPEL Festo (S.C.)
(Integrated Tech., 11/4/13 (PHE reversing infringement under

DOE); Trading Techs., 8/30/13 (PHE); Charles Machine Works,
7/26/13 (reversing SJ of noninfringement and rejecting vitiation
argument where the patentees expert declaration established genuine
disputes about equivalence between the claimed deflection shoe and
the accused bent sub under the function-way-result test, concluding
that the elements were interchangeable and substitutes and that any
differences were insubstantial); Brilliant Instruments, 2/20/13
(reversing and remanding SJ of noninfringement where genuine issues
of material fact under the function-way-result test; see also J. Dyk,
dissenting); Cephalon, 2/14/13; Deere, 12/4/12 (rejecting the district
courts (binary choice in which an element is either present or not
present) application of vitiation in granting SJ of noninfringement,
and explaining when vitiation is applicable to DOE infringement
analysis); Technology Patents, 10/17/12 (rejecting DOE infringement
based on vitiation because would bypass . . . claim limitations
where there was a fundamental difference between the accused
systems and the claimed invention that went to the heart of the
claimed invention and the alleged equivalent was not insignificant in
the context of the patent -- the accused systems did not even
resemble the claimed invention, so the DOE had no application in the
case); Energy Transportation Group, 10/12/12 (DOE infringement
based on after-arising technology and where hypothetical claim was
not anticipated by or obvious over a prior art reference under Wilson
Sporting Goods; also no DOE infringement based on PHE where no
reason was given during the PH for a narrowing amendment and the
alleged equivalent was forseeable); Sandisk, 10/9/12 (disclosure-
dedication rule as applied to the disclosure of a reference incorporated
by reference into a host document, applying a two-part inquiry, did
not preclude DOE infringement); Pozen, 9/28/12 (district court did not
err in construing term substantially all as meaning at least 90%, to
which was entitled equivalents of 85%; see also J. Clevenger,
dissenting); Mirror Worlds, 9/4/12; General Electric, 7/6/12
(affirming no DOE infringement where the accused and claimed
systems were not substantially the same, based on expert testimony);
1174
Wrigley, 6/22/12 (no DOE infringement where narrow claiming and
disclosure in patent citing Tanabe); Absolute Software, 10/11/11;
Duramed, 7/21/11 (Festo presumption of PHE was not rebutted where
the alleged equivalent was foreseeable pre-amendment
foreseeability (for claimed pharmaceutical composition) does not
require flawless perfection to create an estoppel); Retractable Techs.,
7/8/11 (no DOE infringement where the patent distinguished the prior
art including the alleged equivalent product); American Calcar,
6/27/11 (patentee failed to provide particularized testimony and
linking argument as to insubstantiality of differences); Siemens,
2/24/11 (preponderance standard still applies (rather than C&C
evidence) when the asserted equivalent is separately patented
equivalence does not constructively invalidate a separate patent on the
equivalent equivalence and obviousness require different legal
analyses, and different time frames; separate patentability is relevant
to equivalence only, among other facts regarding similarities and
differences and may make equivalency considerably more difficult to
make out (Festo) by a preponderance of the evidence; see also J.
Prost, dissenting, based on the overlap and tension between the
equivalence and nonobviousness inquiries (including the presumption
of validity) presented in the appeal) [petition for rehearing en banc
was denied on 6/7/11; J. Lourie, with whom C.J. Rader, J.
Newman, J. Linn, J. Moore, and J. OMalley joined, concurred in
the denial of the petition, first, disagreeing with the dissents
characterization of what the case is about, and emphasizing the
well-established law that a patent can dominate separately
patented subject matter, and that a patent grants only the right to
exclude others and not the right to practice the invention free
from infringement liability; C.J. Rader, with whom J. Newman, J.
Lourie, and J. Linn joined, also concurred separately in the denial
of the petition, adding that [a] major, if not the primary, purpose
of the doctrine of equivalents is to protect inventions from
infringement by after-arising technology . . . Inventing an
improvement to patented inventions . . . does not entitle such an
inventor to infringe the underlying patented technology. The
doctrine of equivalents ensures that both the basic inventor and
the inventive improver obtain their deserved protection. Without
the doctrine of equivalents, improving technology could deprive
1175
basic inventors of their rights under the patent system citing
Festo (2007) for the additional rule that an applicant surrenders
forseeable equivalents known before a claim amendment, but not
equivalents known after the amendment; J. Newman, with whom
C.J. Rader and J. Lourie joined, also concurred separately with
the denial of the petition, responding to the dissents position --
that the separate patenting of an equivalent automatically
liberates the subject matter from infringement, whatever the facts
of the substitution is not the law and that precedent
recognizes that an equivalent substitution may or may not be an
obvious variant; J. Newman also opined that patent law seeks a
careful balance between the need to promote innovation and the
recognition that imitation and refinement through imitation are
both necessary to invention itself and the very lifeblood of a
competitive economy . . . The doctrine of equivalents is part of
that balance . . . citing Bonito Boats (S.C.); J. Dyk, with whom
J. Gajarsa and J. Prost joined, dissented from the denial of the
petition, stating that this case presents an important question:
whether, under the doctrine of equivalents, a patent claims scope
can encompass a new and separately patented (or patentable)
invention . . . The doctrine of equivalents is not designed to enable
the patent holder to secure the rights to a new invention that the
inventor did not create . . . [A] product cannot be insubstantially
different if it is nonobvious and separately patentable)]; Spine
Solutions, 9/9/10 (PHE); Funai, 9/1/10 (no PHE tangentialness);
Intervet, 8/4/10 (district court misapplied PHE tangentialness); Bid
for Position, 4/7/10 (DOE); Trading Techs., 2/25/10 (DOE/PHE/all
elements rule); SEB, 2/5/10 (rejecting PHE argument where the
accused infringer failed to file a pre-verdict motion for JMOL);
Edwards Lifesciences, 9/22/09 (no DOE where alleged equivalent was
disclaimed); Amgen, 9/15/09 (DOE); Nystrom, 9/8/09 (See J. Raders
additional views regarding claim vitiation); Wavetronix, 7/29/09
(DOE); Depuy Spine, 6/1/09 (ensnarement of prior art); Abbott Labs,
5/18/09 (DOE); Felix, 4/10/09 (PHE); Cordis, 3/31/09 (DOE); Crown
Packaging, 3/17/09 (material fact issue regarding function prong of
DOE test); Cohesive Techs., 10/7/08 (DOE for about?); Carnegie
Mellon U., 9/8/08 (DOE); Voda, 8/18/08 (DOE/PHE); Tip Systems,
6/18/08 (DOE); Lucent Techs., 5/8/08 (PHE); Decisioning.com,
1176
5/7/08 (vitiation); PSN Illinois, 5/6/08 (DOE); Honeywell Intl,
4/18/08 (PHE - appeal from remand of Honeywell Intl (en banc)
(6/2/04); Festo presumption of surrender not rebutted); O2 Micro,
4/3/08 (PHE district court erred in allowing the jury to find DOE
infringement); Regents of U. Cal., 2/28/08 (PHE); Intl Rectifier,
2/11/08 (PHE); Miken Composites, 2/6/08 (expert testimony
insufficient for DOE infringement); Cordis, 1/7/08; Stumbo, 11/28/07;
*U.S. Philips, 11/2/07 (remand for DOE infringement); Paice,
10/18/07 (jury found DOE infringement); Schwarz Pharma, 10/12/07;
Cias, 9/27/07; L.B. Plastics, 9/12/07; Festo, 7/5/07; Hutchins, 7/3/07;
Foremost in Packaging Systems, 5/2/07; Pods, 4/27/07; Aquatex,
2/27/07; Ortho-McNeil, 1/19/07; E-Pass Technologies, 1/12/07;
Abbott Labs, 1/5/07; Planet Bingo, 12/13/06; *Depuy Spine, 11/20/06
(remand for DOE infringement); Abraxis Bioscience, 11/15/06 (DOE
infringement affirmed); Cook Biotech, 8/18/06; Conoco, 8/17/06; LG
Electronics, 7/7/06; Honeywell, 6/22/06; Primos, 6/14/06; Panduit,
6/12/06; Old Town Canoe, 5/9/06; Bicon, 3/20/06; Varco, 2/1/06;
Pfizer, 11/22/05; Biagro, 9/13/05; Network Commerce, 9/8/05; Tap
Pharmaceutical, 8/18/05; Research Plastics, 8/18/05; Terlep, 8/16/05;
Freedman Seating, 8/11/05; Salazar, 7/8/05; Connector Solutions,
5/6/05; Hoffer, 4/22/05; Chimie, 4/11/05; Asyst Techs., 3/22/05; V-
Formation, 3/15/05; Business Objects, 1/6/05; Insituform Techs.,
10/4/04; Toro, 9/13/04; Lighting World, 9/3/04; Searfoss, 7/6/04;
Honeywell Intl, 6/2/04 (en banc); Novartis, 4/2/04; Gaus, 4/1/04;
Liquid Dynamics, 1/23/04; Ericsson (dissent), 12/9/03; Ranbaxy,
11/26/03; Merck, 10/30/03; Talbert, 10/28/03; Deering, 10/17/03;
ACTV, 10/8/03; Acco, 10/7/03; Festo, 9/26/03; Glaxo, 9/22/03;
Cordis, 8/12/03; HP, 8/7/03; Abbott, 7/3/03)
A. Doctrine of equivalents
Generally
- A device that does not literally infringe a claim may

nonetheless infringe under the doctrine of equivalents if
every element in the claim is literally or equivalently
present in the accused device Sage Products (Energy
Transportation Group, 10/12/12 (affirming the jurys
1177
verdict of DOE infringement based on substantial
evidence (expert testimony) despite the jury verdict form
not distinguishing between literal and DOE infringement,
and thus it was not possible to determine which elements
of method claims were met only by equivalents))
- Any analysis of infringement under the doctrine of

equivalents necessarily deals with subject matter that is
beyond, ignored by, and not included in the literal scope
of a claim (Depuy Spine, 11/20/06)
- DOE is a doctrine designed to do equity and to

relieve an inventor from a semantic strait jacket
Perkin-Elmer (Exergen, 8/4/09 (patentee waived
DOE infringement before trial, relying only on
literal infringement, despite making argument on
appeal according to the court sounding in the
doctrine of equivalents rather than literal
infringement))
- Doctrine of equivalents allows the patentee to claim

those insubstantial alterations that were not captured in
drafting the original patent claim but which could be
created through trivial changes Festo (S.C.) (Pozen,
9/28/12; Felix, 4/10/09; O2 Micro, 4/3/08; L.B. Plastics,
9/12/07)
- Numeric ranges DOE can be used to broaden ranges

(Pozen, 9/28/12 (term substantially all defined to mean
at least 90% encompassed equivalent of 85%); Cohesive
Techs., 10/7/08); See also Vitiation Ranges
- Pioneering inventions, broad claims by their very

nature, pioneering inventions result in broader
application of the DOE (Cohesive Techs., 10/7/08
(CAFC has never held that DOE is inapplicable to broad
claims))
1178
- Under the doctrine of equivalents, a product or process
that does not literally infringe upon the express terms of a
patent claim may nonetheless be found to infringe if there
is equivalence between the elements of the accused
product or process and the claimed elements of the
patented invention Warner-Jenkinson v. Hilton Davis
(S.C.) (Charles Machine Works, 7/26/13; Cephalon,
2/14/13; Deere, 12/4/12; Energy Transportation Group,
10/12/12; Sandisk, 10/9/12; Pozen, 9/28/12; Mirror
Worlds, 9/4/12; Duramed, 7/21/11 (no DOE
infringement, based on PHE and foreseeability of alleged
equivalent); American Calcar, 6/27/11; Siemens, 2/24/11
(affirming DOE infringement despite the equivalent
being separately patented); Amgen, 9/15/09; Wavetronix,
7/29/09 (no DOE infringement); Carnegie Mellon U.,
9/8/08; Voda, 8/18/08; Tip Systems, 6/18/08 (the
essential inquiry is whether the accused device or
process contain elements identical or equivalent to each
claimed element of the patented invention, citing
Warner-Jenkinson); Honeywell Intl, 4/18/08; Pods,
4/27/07; Depuy Spine, 11/20/06)
- DOE must be applied to individual claim elements,

not the invention as a whole Warner-Jenkinson
(Brilliant Instruments, 2/20/13 (J. Dyk, dissenting -
the patentees expert applied DOE to the invention
as a whole); Deere, 12/4/12; Pozen, 9/28/12;
Mirror Worlds, 9/4/12; American Calcar, 6/27/11;
Abbott Labs, 5/18/09; Tip Systems, 6/18/08 (the
all elements rule applies to infringement under
the DOE just as it does to literal infringement); O2
Micro, 4/3/08 (generalized testimony was
insufficient to establish that individual claim
limitations were infringed under DOE); Aquatex,
2/27/07); See also Applied Medical Resources,
1179
- DOE may not ignore the individual claim
elements, limitations Warner-Jenkinson
(Wavetronix, 7/29/09 (accused system
worked in a very different way where
limitations so critical to the claimed
method were irrelevant to the accused
system); Abbott Labs, 5/18/09 (DOE could
not encompass known but unclaimed subject
matter, where a claim to a crystalline
compound was construed as limited to
Crystal A, and disclosure regarding Crystal
B was removed from the specification))
- DOE is not a license to ignore claim

limitations - Dolly (Tip Systems, 6/18/08)
- Equivalence established from the perspective of a

POS in the art (Crown Packaging, 3/17/09 (the
patentees expert properly evaluated a claim
elements function in light of the specification and
as one of ordinary skill in the art); Sundance,
12/24/08 (n.3); Lighting World, 9/3/04)
- DOE is unavailable to broaden claim scope where

the patentee has brought what would otherwise be
equivalents of a limitation into the literal scope of
the claim (Cohesive Techs., 10/7/08 (any
equivalents were in the context of the case and
claim within the literal scope of the term about))
- Infringement under the doctrine of equivalents requires a

showing that the difference between the claimed
invention and the accused product or method is
insubstantial -- one way is by showing on a limitation-
by-limitation basis that the accused product or method
performs the substantially same function in substantially
the same way with substantially the same result as each
claim limitation of the patented product or method
1180
Graver Tank (S.C.) (Brilliant Instruments, 2/20/13;
Cephalon, 2/14/13; Deere, 12/4/12; Energy
Transportation Group, 10/12/12; Pozen, 9/28/12 (no clear
error in finding DOE infringement based on the above
test, in view of expert and documentary evidence, even
though there was no evidence that the comparison
required by the patent for determining the claimed
independent dissolution was ever done); Mirror
Worlds, 9/4/12 (affirming JMOL of no infringement
where the patentee failed to present substantial evidence
to jury); Absolute Software, 10/11/11; American Calcar,
6/27/11 (failure to provide particularized testimony and
linking argument as to insubstantiality of the
differences); Siemens, 2/24/11; Amgen, 9/15/09;
Wavetronix, 7/29/09 (the accused system worked in a
very different way and thus the differences were not
insubstantial); Abbott Labs, 5/18/09; Crown Packaging,
3/17/09 (genuine issue of material fact regarding function
prong); Voda, 8/18/08; Tip Systems, 6/18/08; Stumbo,
11/28/07; Festo, 7/5/07; Aquatex, 2/27/07); See also
Textron Innovations, 9/7/12 (nonprecedential SJ of
noninfringement improper where fact question as to
whether the accused device achieved the result in
substantially the same way as the patented invention);
Learning Curve Brands, 3/30/12 (nonprecedential no
DOE infringement where substantial differences);
Alcohol Monitoring Systems, 1/24/11 (nonprecedential
reversing SJ of noninfringement under DOE where a
reasonable jury could conclude that the accused device
infringed based on the triple identity test)
- Equivalency may be determined based on the

insubstantial differences test or based on the
triple identity test, namely, whether the element
of the accused device performs substantially the
same function in substantially the same way to
obtain the same result Warner-Jenkinson
(Charles Machine Works, 7/26/13; Deere, 12/4/12;
1181
Pozen, 9/28/12 (referring to both tests); Abbott
Labs, 5/18/09; Voda, 8/18/08; Tip Systems,
6/18/08)
- Infringement may be found under the doctrine of

equivalents if every limitation of the asserted
claim, or its equivalent, is found in the accused
subject matter, where an equivalent differs from
the claimed limitation only insubstantially (Energy
Transportation Group, 10/12/12; Absolute
Software, 10/11/11; American Calcar, 6/27/11;
Amgen, 9/15/09; Wavetronix, 7/29/09; Aquatex,
2/27/07; Abraxis Bioscience, 11/15/06)
- Infringement under the DOE requires that

any differences between the claimed
elements at issue and the corresponding
elements of the accused products be
insubstantial (Amgen, 9/15/09; Wavetronix,
7/29/09; Voda, 8/18/08 (affirming judgment
of DOE infringement based on jury verdict);
Stumbo, 11/28/07; Aquatex, 2/27/07; Ortho-
McNeil, 1/19/07)
- Strong argument that an equivalent cannot

be both nonobvious and insubstantial
difference (Siemens, 2/24/11 (concluding
DOE infringement despite separate patent
on the alleged equivalent, in view of
statement in Festo); Festo, 7/5/07)
- An accused device that performs substantially the

same function in substantially the same way to
obtain the same result as the patented invention
may infringe under the doctrine Graver Tank
(S.C.) (Energy Transportation Group, 10/12/12;
General Electric, 7/6/12 (affirming no DOE
infringement where the accused and claimed
1182
systems were not substantially the same, based on
expert testimony); American Calcar, 6/27/11;
Siemens, 2/24/11; Bid for Position, 4/7/10 (no
DOE infringement where the claimed and accused
methods operated in a quite different manner);
Amgen, 9/15/09; Abbott Labs, 5/18/09; Voda,
8/18/08 (applying test in finding substantial
evidence to support jury verdict of DOE
infringement); Tip Systems, 6/18/08; Abraxis
Bioscience, 11/15/06)
- Function, way, result inquiry focuses on an

examination of the claim and the
explanation of it found in the written
description, and PH, of the patent (Cohesive
Techs., 10/7/08 (patentee had already
captured equivalents within the literal scope
of about, applying rule to analyze the role
played by each element in the context of the
claim in determining whether a substitute
element matches the function, way, and
result of the claimed element Warner-
Jenkinson (S.C.)); Aquatex, 2/27/07); but
does not mean that discussion of the
function, way and result between a claimed
invention and an accused product is
irrelevant when the claims and specification
are silent on the subject when the claims
and specification are silent as to the result of
a claim limitation, court should turn to the
ordinarily skilled artisan, e.g., via expert
testimony (Stumbo, 11/28/07 (failure of
patent to discuss safety and ease of use does
not make evidence irrelevant to DOE
analysis))
- Either or both tests for equivalence may be

applicable because different linguistic frameworks
1183
may be more suitable to different cases, depending
on their particular facts Warner-Jenkinson (S.C.)
(Abbott Labs, 5/18/09; Voda, 8/18/08 (applying
the function-way-result test in affirming judgment
based on DOE that accused curved portion was
insubstantial from and thus equivalent to the
claimed straight or substantially straight
limitations); Festo, 7/5/07)
- Reliance on DOE for determining infringement only

when claim term(s) construed correctly (Cordis, 1/7/08
(definition of claim term in the PH of reexam (via
declaration) was sufficiently broad such that it literally
encompassed the accused product))
- What constitutes equivalency must be determined against

the context of the patent, the prior art, and the particular
circumstances of the case Graver Tank (S.C.) (Aquatex,
2/27/07; Abraxis Bioscience, 11/15/06)
- Equivalence requires an intensely factual inquiry

(Depuy Spine, 6/1/09 (the record, viewed
objectively, showed the question of equivalence to
be a close one))
- Equivalence is not a prisoner of formula and is not

an absolute to be considered in a vacuum
Warner-Jenkinson (S.C.) (Pozen, 9/28/12;
Siemens, 2/24/11)
- All claim limitations are not entitled to an equal

scope of equivalents whether the result of the all
limitations rule, prosecution history estoppel, or
the inherent narrowness of the claim language,
many limitations warrant little, if any, range of
equivalents Moore (Pozen, 9/28/12)
1184
- FDA equivalence is irrelevant to patent law
because it involves fundamentally different
inquiries (Abbott Labs, 5/18/09; Johns Hopkins,
10/2/08 (n.3)); See also Reckitt Benckiser, 7/7/11
(nonprecedential)
- While bioequivalency may be relevant to the

function prong of the function-way-result
test, bioequivalency and equivalent
infringement are different inquiries (Abbott
Labs, 5/18/09 (distinguishing the two, and
ruling that while potentially relevant, the
bioequivalency of an accused product with a
product produced from the patent at issue is
not sufficient to establish infringement by
equivalents))
DOE issues
After-arising technology
- After-arising technology (e.g., improvements)

appropriate to consider infringement under DOE
quintessential example of an enforceable equivalent is
after-arising technology Smithkline Beecham, Glaxo
Wellcome (Energy Transportation Group, 10/12/12 (DOE
infringement by advances in computer technology where
insubstantial change in the way the claimed function was
performed citing Hughes Aircraft); Siemens, 6/7/11
(Order) (see C.J. Rader, with whom J. Newman, J.
Lourie, and J. Linn joined, concurring in the denial of a
petition for rehearing en banc stating rule above and
that the DOE ensures that both the basic inventor and
the inventive improver obtain their deserved protection
as a basis for ruling that a separately patented
improvement can infringe another patent under the
DOE); Varco, 2/1/06)
1185
All limitations, elements rule
- All limitations rule vitiation under the all elements

rule, to find infringement, the accused device must
contain each limitation of the claim, either literally or by
an equivalent Warner-Jenkinson (Deere, 12/4/12
(explaining that the concept of vitiation derives from the
requirement that the DOE must be applied to the claims
on an element-by-element basis, so that every claimed
element of the invention or its equivalent is present in the
accused product Warner-Jenkinson (S.C.)); Pozen,
9/28/12; Trading Techs., 2/25/10; Tip Systems, 6/18/08
(the all elements rule applies to infringement under the
DOE just as it does to literal infringement);
Decisioning.com, 5/7/08; PSN Illinois, 5/6/08 (no DOE
infringement where finding of equivalence would vitiate
term ready for mounting); Foremost in Packaging
Systems, 5/2/07; E-Pass Technologies, 1/12/07; Abbott
Labs, 1/5/07; *Depuy Spine, 11/20/06; Cook Biotech,
8/18/06; *LG Electronics, 7/7/06; Primos, 6/14/06;
Panduit, 6/12/06; Pfizer, 11/22/05; Freedman Seating,
8/11/05; Hoffer, 4/22/05); See also Joy, 11/8/12
(nonprecedential no DOE infringement by holes in the
accused product of term indentations construed to
expressly exclude a hole limitation would have been
read out of the claim if holes were equivalent to
indentations); Textron Innovations, 9/7/12
(nonprecedential rejecting defense where the limitation
reciting the structure of the term strap would not have
been entirely vitiated); In re Transaction Holdings,
4/23/12 (nonprecedential substantial differences
between private network and the Internet); See also
Vitiation
- All limitations rule violated, and thus no

material issue for the jury to resolve regarding
equivalence judgment by the CAFC of
noninfringement under DOE appropriate
1186
(Decisioning.com, 5/7/08; PSN Illinois, 5/6/08 (no
reasonable jury would conclude that the accused
product included an equivalent to the disputed
limitation); Cook Biotech, 8/18/06)
- As a corollary to the all limitations rule,

the concept of equivalency cannot embrace a
structure that is specifically excluded from
the scope of the claims (Decisioning.com,
5/7/08 (asserting the claims against
consumer-owned personal computers would
have vitiated the term remote interface
which as properly construed excluded
consumer-owned computers; citing several
cases concluding vitiation based on the
claims as construed)); See also Joy, 11/8/12
(nonprecedential holes were expressly
excluded from term indentations based on
the inventors deliberate choice of term)
- Claim element is not vitiated merely because it

does not literally exist in the accused product
such an interpretation of the all elements rule
would swallow DOE entirely Depuy Spine
(Abbott Labs, 1/5/07)
- Supreme Court emphasizes that DOE must not

expand or eliminate a claim element entirely
Warner-Jenkinson v. Hilton Davis (S.C.) (Planet
Bingo, 12/13/06)
- DOE operates under the all elements or all

limitations rule equivalence is assessed on a
limitation-by-limitation basis, as opposed to from
the perspective of the invention as a whole
Warner-Jenkinson (S.C.) (Abbott Labs, 5/18/09;
Tip Systems, 6/18/08 (handset limitation, as
claimed to include a handle, was not infringed
1187
under the DOE since the accused devices lacked
any structural equivalent to the handle); E-Pass
Technologies, 1/12/07; Depuy Spine, 11/20/06;
LG Electronics, 7/7/06)
- All elements rule attempts to balance

DOE with the basic patent law principle that
claim language defines the scope of an
invention and every limitation is material
Warner-Jenkinson (S.C.) (Depuy Spine,
11/20/06)
- All claim limitations are not entitled to an

equal scope of equivalents (LG Electronics,
7/7/06)
- A holding that DOE cannot be applied to an

accused device because it violates the all
elements rule or that it vitiates a claim
limitation is nothing more than a conclusion that
the evidence is such that no reasonable jury could
conclude that an element of an accused device is
equivalent to an element called for in the claim
(i.e., factual equivalence), or that the theory of
equivalence to support the conclusion of
infringement otherwise lacks legal sufficiency
Depuy Spine (Trading Techs., 2/25/10; E-Pass
Technologies, 1/12/07 (all elements rule);
Abbott Labs, 1/5/07 (vitiation); Depuy Spine,
11/20/06)
Theory, evidence of equivalence
- Evidence of equivalents
- Evidence of equivalents must be from the

perspective of one skilled in the art, e.g., testimony
1188
of experts or others versed in the technology, by
documents, including texts and treatises, and
disclosures in the prior art Graver Tank (S.C.),
Texas Instruments (Aquatex, 2/27/07)
- Difficulties and complexities of DOE

require that evidence be presented to fact
finder through particularized testimony of
POS in the art, typically a qualified expert,
who on a limitation-by limitation basis
describes the claim limitations and
establishes that those skilled in the art would
recognize the equivalents Texas
Instruments (Aquatex, 2/27/07)
- Theory of equivalence
- Theory of equivalence selecting the best theory -

all elements rule is generally not met, and thus
claim limitation can be said to be vitiated, if the
theory or evidence of equivalence is legally
incapable of establishing that the differences
between the limitation in the claim and the accused
product are insubstantial (as was the case in
Tronzo v. Biomet), i.e., if the theory or evidence is
so legally insufficient as to warrant a holding of
noninfringement as a matter of law (Trading
Techs., 2/25/10; Abbott Labs, 1/5/07; Planet
Bingo, 12/13/06 (accused product containing
antithesis of claim limitation); *Depuy Spine,
8/27/13 (nonprecedential affirming no DOE
infringement because the patentees theory of
equivalence vitiated a claim limitation); Fraser,
7/8/09 (nonprecedential rejecting the appellants
theory of DOE infringement, which relied on the
false belief that the mere presence of vegetable oil
in the list of ingredients in the defendants fish
1189
products was sufficient for showing infringement,
without consideration of the various elements and
limitations of the method claim!)
- Substantiality of differences between claim

limitation and accused product, i.e., no reasonable
jury could conclude that the differences between
the accused products and the claim limitation are
insubstantial (Deere, 12/4/12 (emphasizing that the
equivalence analysis is a factual inquiry reserved
for the fact finder, where a reasonable jury could
have found that small spacers resulting in indirect
contact between walls represented an insubstantial
difference from direct contact); E-Pass
Vitiation
Generally
- Vitiation - no DOE infringement if would vitiate a claim

limitation; courts assess under the totality of the
circumstances whether the alleged equivalent is an
insubstantial change from the claimed subject matter,
without rendering the limitation meaningless or
effectively eliminating the element in its entirety (Charles
Machine Works, 7/26/13; Brilliant Instruments, 2/20/13
(finding no vitiation, based on Deere); Deere, 12/4/12
(rejecting the district courts binary choice (element
present or not) application of vitiation in granting SJ of
noninfringement, where a reasonable jury could have
found in the context of the patent an insubstantial
difference between direct contact (as the claim was
construed by the district court) and indirect contact);
Technology Patents, 10/17/12 (rejecting DOE argument
that would bypass claim limitations); Mirror Worlds,
9/4/12 (alleged equivalent was the opposite); American
Calcar, 6/27/11 (finding a signal from one source to be
1190
equivalent to the claimed signals from a plurality of
sources would vitiate that claim limitation by rendering
it meaningless); Trading Techs., 2/25/10 (In other
words, [the all elements/vitiation] rule empowers a
court to perform again the standard insubstantial
variation test for equivalency, but this time as a question
of law); Nystrom, 9/8/09 (See J. Raders additional
views regarding vitiation, opining that the vitiation
doctrine is really subsumed within the test for equivalents
itself, and thus highlighting the conflicting problem with
judges deciding vitiation (a Q of law) vs. juries deciding
equivalents (a Q of fact)); Wavetronix, 7/29/09; Cordis,
3/31/09 (corners limitation was not antithetical to, and
thus vitiated by, the equivalence of circular arcs in the
accused stent; equivalence also did not render the
limitation meaningless or effectively eliminate the
element in its entirety); Carnegie Mellon U., 9/8/08
(DOE by Taq bacteria would vitiate E. coli limitation by
rendering meaningless); Tip Systems, 6/18/08 (vitiation
where the accused device lacked the electrical connection
required by the claim, or an equivalent, despite the
accused device otherwise containing all the claimed
elements); Decisioning.com, 5/7/08; PSN Illinois, 5/6/08
(equivalence would render the term ready for mounting
meaningless); U.S. Philips, 11/2/07 (no vitiation, DOE
remanded); Ortho-McNeil, 1/19/07; Planet Bingo,
12/13/06; Depuy Spine, 11/20/06; LG Electronics,
7/7/06; Primos, 6/14/06; Panduit, 6/12/06; Pfizer,
11/22/05; Tap Pharmaceutical, 8/18/05; Freedman
Seating, 8/11/05; Seachange Intl, 6/29/05; PC Connector
Solutions, 5/6/05; Searfoss, 7/6/04; Asyst Techs.,
3/22/05; Novartis, 7/8/04; Novartis, 4/2/04); See also
Kruse Tech., 10/8/13 (nonprecedential affirming SJ of
no DOE infringement based on vitiation); In re
substantial differences between private network and the
Internet); Sanofi-Aventis, 3/22/12 (nonprecedential two
instances of vitiation; no DOE infringement of
1191
inserting foreign DNA into cells by mitotic
propagation of cells because would vitiate the term
inserting where inserting foreign DNA into a cell
differs substantially from routine mitotic propagation
citing Trading Techs.; also, no equivalence between term
plasmid (meaning circular, extrachromosomal DNA)
and linear, integrated DNA, which would read plasmid
out of the claims entirely); Restaurant Technologies,
1/6/10 (nonprecedential the district court was correct in
limiting possible equivalents as a matter of law,
concluding that there were no insubstantial or trivial
changes that could be made to the interconnecting
limitation, since the specified components were either
connected or not to one another); Amazin Raisins Intl,
10/31/08 (nonprecedential); Wleklinski, 12/19/07
(nonprecedential - vitiation where the accused strap was
the fundamental opposite of the claimed invention);
See also Specific exclusion principle
- Vitiation of a claim element is saying that there is

no equivalent to the claim element in the accused
device based on the well-established function-way-
result and insubstantial differences tests (Charles
Machine Works, 7/26/13 (rejecting vitiation where
the patentees expert declaration established
genuine disputes regarding equivalence under the
function-way-result test, and concluded that any
differences were insubstantial); Brilliant
Instruments, 2/20/13 (genuine issue of material
fact regarding function-way-result between the
claimed and accused arrangement of components
precluded SJ of noninfringement; see also J. Dyk,
dissenting))
- Difference in degree vs. difference in kind (i.e.,

substantial difference) (Trading Techs., 2/25/10
(alleged equivalent was substantially different, not
a subtle difference, despite the infrequency of the
1192
alleged equivalent, where the difference lie[d] at
the heart of the advantages of the patented
invention over prior art); Depuy Spine, 11/20/06;
Freedman Seating, 8/11/05); See also Applied
Medical Resources, 8/27/13 (nonprecedential no
DOE infringement where the accused feature
(rotation in place at a fixed point with no lateral
movement) was a difference in kind from the
claimed freely lateral movement side to side
limitation)
- Claim vitiation applies when there is a

clear, substantial difference or a difference
in kind between the claim limitation and
the accused product; it does not apply when
there is a subtle difference in degree
Freedman Seating (Trading Techs.,
2/25/10); See also Applied Medical
Resources, 8/27/13 (nonprecedential)
- Eviscerating claim limitation, when intrinsic

evidence points to the criticality of claimed ratio,
thus necessitating a narrow construction and range
of equivalents that does not encompass accused
product (Ortho-McNeil, 1/19/07)
- Holding that DOE cannot be applied to an accused

device because it vitiates a claim limitation is
nothing more than a conclusion that the evidence is
such that no reasonable jury could conclude that an
element of an accused device is equivalent to an
element called for in the claim, or that the theory
of equivalence to support the conclusion of
infringement otherwise lacks legal sufficiency
DePuy Spine (Brilliant Instruments, 2/20/13;
American Calcar, 6/27/11 (theory of equivalence
requiring vitiation of claim limitation was legally
insufficient); Voda, 8/18/08; U.S. Philips,
1193
8/27/13 (nonprecedential allowing rotation in
place with no lateral movement of the accused
device to be equivalent to side to side movement
would vitiate the free lateral movement
limitation); See Theory, evidence of equivalence
- All elements/vitiation rule empowers a

court to perform (i.e., along with the fact
finder) the standard insubstantial variation
test for equivalency, but as a Q of law
(Trading Techs., 2/25/10)
- Meaningful structural and functional limitations

cannot be erased by DOE all elements are
material to defining the scope of the patented
invention (Depuy Spine, 11/20/06; V-Formation,
3/15/05); See also Taltech, 5/22/08
(nonprecedential DOE infringement would have
read the abuts limitation (meaning touching) out
of the claim)
- Notice function of claims whether finding DOE

infringement would unjustly undermine the
reasonable expectations of the public (Freedman
Seating, 8/11/05)
Ranges
- Claim reciting numeric ranges does not preclude reliance

on DOE, no vitiation of end points of ranges Abbott
Labs, Warner-Jenkinson (S.C.) (Pozen, 9/28/12 (district
courts construction of term substantially all to mean at
least 90% based on the specification also properly
encompassed the accused equivalent of 85%, citing
Adams and Kemin Foods, and rejecting the accused
infringers argument based on Cohesive Techs.); Adams,
1194
8/5/10 (the proper inquiry is whether insubstantial
differences between the accused and claimed values;
also, the term at least before the recited value did not
change the analysis; see also n.5: 1 is a less precise
quantity than 1.0); U.S. Philips, 11/2/07 (concluding that
a reasonable juror could make a finding that a quantity of
halogen outside the claimed range is insubstantially
different from a quantity within that range without
ignoring a material limitation of the claim))
- Hypothetical claim inquiry applied to claimed

range relevant inquiry for DOE is whether a
hypothetical claim that literally recites the range
of equivalents asserted to infringe the claimed
range could have been allowed by the PTO over
the prior art Abbott Labs, Wilson Sporting Goods
(U.S. Philips, 11/2/07 (asserted equivalents were
below the prior art range))
- Words of approximation (e.g., about) are not

needed in ranges for DOE to apply; such terms
serve only to expand the scope of literal
infringement (Pozen, 9/28/12; Adams, 8/5/10;
Cohesive Techs., 10/7/08)
Ensnarement of prior art
- Ensnarement bars a patentee from asserting a scope of

equivalency that would encompass, or ensnare, the
prior art Wilson Sporting Goods (Energy
Transportation Group, 10/12/12 (rejecting argument for
no DOE infringement based on Wilson Sporting Goods);
Depuy Spine, 6/1/09 (affirming the denial of an
ensnarement defense where the asserted combination of
prior art references, along with other relevant prior art,
taught away from the hypothetically claimed rigid spinal
screw, and various secondary considerations (failure by
1195
others, copying) also supported a conclusion of
nonobviousness)); See also Icon Health & Fitness,
10/24/12 (nonprecedential no DOE infringement where
the alleged equivalent encompassed a prior art patent
under which the accused product was licensed); Textron
Innovations, 9/7/12 (nonprecedential n.2: leaving
defense for the district court on remand)
- Burden of persuasion is on the patentee to establish

that the asserted scope of equivalency would not
ensnare the prior art (Depuy Spine, 6/1/09 (no
ensnarement of prior art)); See also Icon Health &
Fitness, 10/24/12 (nonprecedential burden of
persuasion not met)
- Ensnarement, like prosecution history estoppel, is

a legal limitation on the DOE to be decided by the
court, not a jury (Depuy Spine, 6/1/09); See also
Textron Innovations, 9/7/12 (nonprecedential
n.2)
- Ensnarement inquiry is separate and distinct from

the jurys equivalence analysis, and has no bearing
on the validity of the actual claims (Depuy Spine,
6/1/09 (deciding the ensnarement issue in a
subsequent bench trial after the jurys verdict of
equivalence))
- Ensnarement analysis: 1) construct a hypothetical claim

that literally covers the accused device, 2) assess the
prior art introduced by the accused infringer and
determine whether the patentee has carried its burden of
persuading the court that the hypothetical claim is
patentable over the prior art -- if the claim is unpatentable
under Sections 102 or 103, the patentee has overreached,
and the accused device is noninfringing as a matter of
law Interactive Pictures (Energy Transportation Group,
10/12/12; Depuy Spine, 6/1/09)
1196
- Accused infringer bears the burden of presenting
prior art which shows that the asserted range of
equivalence would encompass the prior art, but the
patentee bears the ultimate burden of persuasion to
show that its claims do not cover the prior art
Streamfeeder (Energy Transportation Group,
10/12/12 (no prior art was presented barring DOE
infringement, including where the jury found no
anticipation by prior art reference of one claim
element; not using term ensnarement of prior
art))
Foreseeability, narrow claiming
- Foreseeable alterations not infringing as between the

patentee who had a clear opportunity to negotiate broader
claims but did not do so, and the public at large, it is the
patentee who must bear the cost of its failure to seek
protection for this foreseeable alteration of the claimed
structure Freedman Seating, Sage Products (Siemens,
6/7/11 (Order) (see C.J. Rader, with whom J. Newman, J.
Lourie, and J. Linn joined, concurring in the denial of a
petition for rehearing en banc summarizing the rule that
forseeable equivalents at the time of a claim amendment
are surrendered citing Festo and Sage Products); Tip
Systems, 6/18/08)
- Narrow claiming, forseeability of alleged equivalent

consider: 1) simplicity of structure vs. complexity,
subtlety of the technology, 2) specificity and narrowness
of the claim, and 3) forseeability of variations at the time
of filing, vs. later-developed technology - i.e., Sage
Products (Planet Bingo, 12/13/06; *Depuy Spine,
11/20/06; Freedman Seating, 8/11/05)
1197
- Deliberate and foreseeable claim drafting decision
the patent contains a distinct limitation, which was part
of the bargain when the patent issued; the CAFC cannot
overlook that limitation or expand the DOE beyond its
purpose to allow recapture of subject matter exluded by a
deliberate and foreseeable claim drafting decision Sage
Products (Tip Systems, 6/18/08; Planet Bingo, 12/13/06)
- Forseeability
- DOE is designed to protect inventors from

unscrupulous copyists and unanticipated
equivalents (Abraxis Bioscience, 11/15/06)
- DOE provides additional coverage for the

exclusive right to protect a patentee in the
event of an unforeseeable change (Planet
Bingo, 12/13/06)
- Unforseeability of alleged equivalent during

prosecution = no surrender or waiver of
coverage as an equivalent (Wrigley, 6/22/12
(distinguishing Abraxis Bioscience, in which
DOE applied because interchangeability was
unknown); Abraxis Bioscience, 11/15/06)
- Lack of known interchangeability

underscores unforseeability (Wrigley,
6/22/12 (no DOE infringement where
the inventors were on notice of the
potential interchangeability of the
claimed component and the alleged
equivalent, but claimed narrowly);
Abraxis Bioscience, 11/15/06)
- Narrow claiming
1198
- Draft narrow claims for allowance, cannot
later broaden under DOE (Carnegie Mellon
U., 9/8/08; PSC Computer Prods., 1/20/04)
- Finding of equivalence would effectively

remove relevant limitations from the claim
(Planet Bingo, 12/13/06); therefore, no
reasonable jury could find that differences in
accused device were insubstantial (Depuy
Spine, 11/20/06)
- Claim containing detailed recitation of

structure has limited DOE Tanabe
(Wrigley, 6/22/12 (no DOE infringement
where narrow disclosure and claiming of a
subset of compounds in patent citing
Tanabe and Bicon); Bicon, 3/20/06)
- Tanabe distinguished narrow claim

limitations argued as important during
foreign prosecution = disclaimer (i.e.,
clear and unmistakable surrender) of
subject matter beyond narrowly
claimed subject matter (Abraxis
Disclosure-dedication rule
- Unclaimed equivalents Disclosure-dedication rule

whereby the failure to claim a disclosed embodiment
forecloses any right to recapture that embodiment under
the DOE - Johnson & Johnston (Sandisk, 10/9/12
(proposed equivalent was not dedicated to the public;
also applying rule to when the host document
incorporates by reference another reference which
allegedly discloses unclaimed subject matter argued to be
an equivalent); Siemens, 6/7/11 (Order) (see C.J. Rader,
1199
with whom J. Newman, J. Lourie, and J. Linn joined,
concurring in the denial of a petition for rehearing en
banc citing the Johnson & Johnston rule that forseeable
technology disclosed, but not claimed, enters the public
domain); Abbott Labs, 5/18/09 (dedication to the public
when the patentee declined to claim the Crystal B
embodiment expressly disclosed in the foreign priority
document); Pfizer, 11/22/05; Toro, 9/13/04; PSC
Computer Prods., 1/20/04; Merck (dissent), 10/30/03;
Abbott, 7/3/03); See also Zircon, 10/5/11
(nonprecedential no DOE infringement where claims
construed to exclude alternate disclosed embodiment);
Reckitt Benckiser, 7/7/11 (nonprecedential n.2)
- Generic disclosure does not dedicate to public

specification needs specificity so that a POS in the
art can identify subject matter that was disclosed,
but not claimed (Sandisk, 10/9/12 (proposed
equivalent was not dedicated to the public); Pfizer,
11/22/05; PSC Computer Prods., 1/20/04); See
also Zircon, 10/5/11 (nonprecedential patentee
did not dispute that the specification disclosed the
unclaimed method - citing PSC Computer)
- Unclaimed subject matter must be identified

in the specification as an alternative to a
claim limitation -- which is not satisfied by
whether a POS in the art ultimately could
employ the disclosures to implement a
purported equivalent (Sandisk, 10/9/12;
Pfizer, 11/22/05)
- Inadvertent dedication (PSC Computer Prods.,

1/20/04)
- Intent not part of analysis; patentees

subjective intent is irrelevant (Toro, 9/13/04)
1200
- 112, 1, requirement not imposed on disclosed
but unclaimed subject matter need only that POS
in the art can understand the unclaimed disclosed
teaching upon reading the specification (Toro,
9/13/04)
- Unclaimed disclosure that is incorporated by

reference into the host document two-part
inquiry 1) the host document must sufficiently
inform one of ordinary skill that the incorporated
document contains subject matter that is an
alternative to a claim limitation - Pfizer; if it does,
2) assess whether the disclosure of that subject
matter in the incorporated document is of such
specificity that one of ordinary skill in the art
could identify the subject matter that has been
disclosed and not claimed PSC Computer
(Sandisk, 10/9/12 (in a case of first impression,
ruling that the host patents discussion of the
incorporated patent did not sufficiently identify to
one of ordinary skill that the incorporated patent
contained subject matter that was an alternative to
the claimed controller, but rather spoke only in
general terms))
Specific exclusion principle
- Specific exclusion principle corollary to all

elements rule, vitation, e.g., majority vs. minority
Moore; where accused device contains antithesis of the
claimed structure (Brilliant Instruments, 2/20/13 (clearest
application of the vitiation concept citing Planet
Bingo); Deere, 12/4/12; Mirror Worlds, 9/4/12 (alleged
equivalent was the opposite); Cordis, 3/31/09 (circular
arcs in accused stent were not antithetical to corners
limitation); Voda, 8/18/08 (curved portion of accused
catheter was equivalent to claimed straight limitation);
1201
Abbott Labs, 1/5/07; Planet Bingo, 12/13/06 (change
before to after); Bicon, 3/20/06; Asyst Techs.,
3/22/05 (mounted vs. unmounted); Novartis, 7/8/04);
See also Kruse Tech., 10/8/13 (nonprecedential
affirming no DOE infringement); Sanofi-Aventis,
3/22/12 (nonprecedential no DOE infringement of term
plasmid (meaning circular, extrachromosomal DNA)
by linear, integrated DNA)
- Corollary to the all limitations rule that the

concept of equivalency cannot embrace a structure
that is specifically excluded from the scope of the
claims (Trading Techs., 2/25/10 (no DOE
infringement where the term static was
construed to specifically exclude any instances of
the alleged equivalent, citing SciMed); Abbott
Labs, 1/5/07); also, a claim that specifically
excludes an element cannot through a theory of
equivalence be used to capture a composition that
contains that expressly excluded element without
violating the all limitations rule (Cook Biotech,
8/18/06)
Totality of circumstances considered
- Totality of circumstances considered determine

whether an insubstantial change without rendering the
limitation meaningless (PSN Illinois, 5/6/08; *LG
Electronics, 7/7/06; Primos, 6/14/06; Pfizer, 11/22/05)
- No set formula for determining whether finding of

equivalence would vitiate claim limitation, and
thereby violate the all limitations rule (LG
Electronics, 7/7/06; Primos, 6/14/06)
- Claim term all may = substantially all or nearly

all no vitiation (LG Electronics, 7/7/06)
1202
- Obviousness-type double patenting rejection (Tip
Systems, 6/18/08 (finding of equivalence not
required under the circumstances of the case))
Function, way, result test
- Function (step), way, result test (Cordis, 3/31/09; Crown

Packaging, 3/17/09 (function prong at issue); Stumbo,
11/28/07; Aquatex, 2/27/07; Abbott Labs, 1/5/07 (shows
that accused infringer should always challenge, even if
relying on other theories of noninfringement); Planet
Bingo, 12/13/06; Abraxis Bioscience, 11/15/06;
Honeywell, 6/22/06; V-Formation, 3/15/05; Lighting
World, 9/3/04)
- Accused structure did not perform same function

as claimed element (fuel filter) thus, substantially
different (Crown Packaging, 3/17/09 (issue of fact
where claimed element alleged to have additional
functions); Honeywell, 6/22/06 (vs. district court
relied on non-interchangeability and dedication to
public because specification too narrow))
- Function-way-result test is particularly suitable for

analyzing the equivalence of mechanical devices
Warner-Jenkinson (S.C.) (Cordis, 3/31/09; Crown
Packaging, 3/17/09; Stumbo, 11/28/07)
- Known interchangeability between claimed

element and accused product only one factor to
consider in the DOE analysis Chiuminatta
Concrete (Depuy Spine, 6/1/09 (a finding of
equivalence did not necessarily follow from
evidence that the accused conical and claimed
spherical surfaces were interchangeable); Abraxis
1203
- Lack of known interchangeability is not
dispositive (Abraxis Bioscience, 11/15/06)
Insubstantial differences
- Insubstantial differences - Festo (Aquatex, 2/27/07;

Conoco, 8/17/06; Pfizer, 11/22/05; Aquatex, 8/19/05;
Lighting World, 9/3/04; Searfoss, 7/6/04; Talbert,
10/28/03; Acco, 10/7/03; Glaxo, 9/22/03)
- Doctrine of equivalents extends to those

insubstantial alterations that were not captured in
drafting the original patent claim but which could
be created through trivial changes Festo (S.C.)
(L.B. Plastics, 9/12/07; Conoco, 8/17/06)
- Small variations in the degree of achieving a

claim limitation (Planet Bingo, 12/13/06)
- Evidence of DOE infringement patentee must

prove by a preponderance of the evidence,
providing particularized [expert] testimony and
linking argument regarding insubstantiality of
differences, on limitation by limitation basis,
between the claimed invention and the accused
product (Aquatex, 2/27/07; Applied Medical
Resources, 5/15/06; Network Commerce, 9/8/05)
- Evidence must be particularized, not

conclusory, or attorney argument - i.e.,
linking insubstantial differences between the
claimed invention and the accused device
(Aquatex, 2/27/07); otherwise foreclosed
from raising DOE on appeal (PC Connector
Solutions, 5/6/05)
1204
- When claim amendment made to distinguish prior
art at point of difference between claim and
accused device (Acco, 10/7/03)
- Means-plus-function claims (Franks Casing, 11/30/04;

HP, 8/7/03)
- Separate patentability of infringing product (i.e., patent

on alleged equivalent) is not dispositive (Siemens, 6/7/11
(Order) [petition for rehearing en banc was denied on
6/7/11; most of the court members concurred with or
dissented from the denial of the petition; see the main
listing above for details] ; Siemens, 2/24/11 (rejecting
argument based on statement in Festo that a separately
patented alleged equivalent cannot be an equivalent, but
instead holding that separate patentability is relevant to
equivalence, among other facts regarding similarities and
differences; see also J. Prost, dissenting); Festo, 7/5/07
(citing cases); Abraxis Bioscience, 11/15/06; Glaxo,
9/22/03)
One-to-one correspondence not required; equivalency

when limitations, components combined
- Although there need not be one-to-one correspondence

between elements of the accused device and the claimed
invention (Dolly), claim limitations cannot be ignored
under the DOE (Tip Systems, 6/18/08 (finding that the
housing in the accused device could not function as an
equivalent of the recited handle in the patented
invention without rendering the housing limitation
meaningless))
- Combination of physical components of the accused

device may be equivalent to a single limitation of the
claimed invention, as long as no claim limitiation is
thereby wholly vitiated (Wavetronix, 7/29/09 (no DOE
1205
infringement, where, even if the rule applied, the accused
system still worked in a very different way than the
patented invention); Searfoss, 7/6/04)
- Equivalency can exist when separate claim limitations

are combined into a single component of the accused
device Dolly (Gaus, 4/1/04)
B. Reverse doctrine of equivalents
- Reverse DOE is an equitable doctrine designed to

prevent unwarranted extension of the claims beyond a
fair scope of the patentees invention Scripps, Graver
Tank (S.C.) (Depuy Spine, 6/1/09 (rejecting the district
courts understanding of the circumstances in which the
reverse DOE may be asserted (that the doctrine is only
relevant to literal, and not DOE, infringement), because
the reverse DOE, like the DOE, is applied to individual
limitations of a claim, and thus the accused infringer was
not prevented from raising the reverse DOE against the
literal scope of a different claim limitation from that at
issue under the DOE); Roche Palo Alto, 7/9/08 (rejecting
noninfringement defense based on the reverse DOE))
- Graver Tank (S.C.): Where a device is so far

changed in principle from a patented article that it
performs the same or similar function in a
substantially different way, but nevertheless falls
within the literal words of the claim, the reverse
doctrine of equivalents may be used to restrict the
claim and defeat the patentees action for
infringement (Depuy Spine, 6/1/09 (stating that
because the reverse DOE requires a fundamental
change in the basic principle by which the device
operates, the doctrine (albeit a viable defense) is
rarely invoked and virtually never sustained, citing
Roche, Graver Tank (S.C.)); Roche Palo Alto,
1206
7/9/08 (rejecting argument that the concentration
of a component in the accused infringers
formulation was far below that required to achieve
the principle of the invention (i.e., the formation
of micelles) and that it functioned in a substantially
different way from the claimed formulation))
- Principle or equitable scope of the

claims of the patented invention under the
reverse DOE is determined in light of the
claims, specification, PH, and the prior art
Scripps (Roche Palo Alto, 7/9/08 (where the
accused infringer failed to properly establish
the principle of the patent based on the
intrinsic evidence, instead relying
exclusively on its experts declaration))
- Reverse DOE, like the DOE, is applied to

individual limitations of a claim (Depuy
Spine, 6/1/09 (thus proper for the accused
infringer to have raised the reverse DOE
against the literal scope of a single claim
limitation))
- Burden of proof once the patentee establishes

literal infringement, the burden shifts to the
accused infringer to set forth a prima facie case of
noninfringement under the reverse DOE; the
patentee must then rebut the prima facie case, if
made (Cordis, 9/28/11 (issue of reverse DOE was
moot in light of the CAFCs holding of no literal
infringement); Roche Palo Alto, 7/9/08
(confirming that the CAFC has never affirmed a
finding of noninfringement under the rarely
applied reverse DOE))
C. Prosecution history estoppel
1207
Generally
- Prosecution history estoppel acts as a legal limitation on

the doctrine of equivalents, and prevents a patentee from
recapturing through the doctrine of equivalents subject
matter surrendered during prosecution to obtain a patent
Festo (S.C.) (Integrated Tech., 11/4/13; Trading Techs.,
8/30/13 (comparing PHE and PH disclaimer); Duramed,
7/21/11 (PHE where the alleged equivalent was
foreseeable at time of narrowing amendment); Trading
Techs., 2/25/10 (alleged equivalent was surrendered by
claim amendment); Felix, 4/10/09; Voda, 8/18/08;
Honeywell Intl, 4/18/08; Regents of U. Cal., 2/28/08;
Schwarz Pharma, 10/12/07; Cias, 9/27/07; Festo, 7/5/07;
Hutchins, 7/3/07; Pods, 4/27/07; Cross Medical Prods.,
3/20/07); See also Ottah, 4/8/13 (nonprecedential PHE
with respect to fixed mounts where the removable nature
of the mount was emphasized during prosecution to
overcome prior art rejection)
- When a patent claim is narrowed during

prosecution, prosecution history estoppel may limit
application of the doctrine of equivalents - Conoco
(Integrated Tech., 11/4/13; Duramed, 7/21/11;
Trading Techs., 2/25/10 (narrowing claim
amendment based on cited prior art precluded the
alleged equivalent); Felix, 4/10/09; Voda, 8/18/08;
O2 Micro, 4/3/08 (PHE prevented DOE
infringement for term only if))
- Prosecution history estoppel limits the broad

application of the doctrine of equivalents by
barring an equivalents argument for subject
matter relinquished when a patent claim is
narrowed during prosecution Festo (S.C.),
Conoco (Integrated Tech., 11/4/13; Trading
Techs., 2/25/10 (rejecting the patentees
circular argument that there could still be
1208
DOE infringement of the disputed claim
term (static) which was construed
narrowly during prosecution, stating that
both claim construction and prosecution
history estoppel operate in this case with
similar limited results because during
prosecution, the inventors surrendered any
subject matter that moves automatically);
Voda, 8/18/08; O2 Micro, 4/3/08 (district
court erred by allowing for DOE
infringement at jury trial); Regents of U.
Cal., 2/28/08; Intl Rectifier, 2/11/08); See
also Webzero, 8/3/10 (nonprecedential
affirming the patentee was not able to assert
DOE infringement because of PHE where
claims were amended to overcome prior art)
- Prosecution history estoppel is a flexible

doctrine, not a rigid one Festo (U.S.) (O2
Micro, 4/3/08 (patentees flexible interpretation of
added term only if for purpose of rebutting
surrender by arguing tangential relation rejected))
- Scope of estoppel the scope of estoppel, i.e.,

what subject matter has been surrendered during
prosecution by the patentee, is to be viewed from
the vantage point of a reasonable competitor of the
patentee Sextant Avionique (American Calcar,
6/27/11 (broad estoppel))
- Prosecution history estoppel can occur during

prosecution in one of two ways, either 1) by making a
narrowing amendment to the claim for purposes of
patentability (amendment-based estoppel), or 2) by
surrendering claim scope through argument to the
examiner (argument-based estoppel) - Conoco
(American Calcar, 6/27/11; Voda, 8/18/08; Cordis,
1/7/08 (both estoppels asserted unsuccessfully by the
1209
alleged infringer); Schwarz Pharma, 10/12/07; Conoco,
8/17/06)
Argument-based estoppel
- Argument-based estoppel requires clear and

unmistakable surrender of subject matter objective test
applied (American Calcar, 6/27/11 (PHE based on broad
disclaimer to overcome an anticipation rejection); SEB,
2/5/10; Cordis, 1/7/08 (no disclaimer during PH of claim
equivalents other than the particular prior art structure
distinguished, and clearly disavowed, from the claim
term; PH arguments crafted to disclaim only the prior art
structure and other structures not comparable to the
claim term PH thus left room for the jury to determine
literal or DOE infringement); Cias, 9/27/07 (arguments
and amendments precluded DOE infringement under
Festo); Pods, 4/27/07; Conoco, 8/17/06; Aquatex,
8/19/05; Salazar, 7/8/05; Cordis, 8/12/03; Deering,
10/17/03); See also Helena Labs, 4/16/08
(nonprecedential no DOE infringement where there
was a clear and unmistakable surrender of structures
without the claimed stabilizing supports)
- Argument-based vs. amendment-based estoppel

unlike amendment-based estoppel, a patentees
arguments are not presumed to surrender an entire
field of equivalents through simple arguments and
explanations to the examiner; though arguments to
the examiner may have the same effect, they do
not always evidence the same clear disavowal of
scope that a formal amendment to the claim would
have the relevant inquiry is whether a competitor
would reasonably believe that the applicant had
surrendered the relevant subject matter (Cordis,
1/7/08 (Cordis simply made explicit the meaning
of the claim term (wall surface) that was already
1210
implicit in the patent); Conoco, 8/17/06 (patentees
arguments merely explained the claim term and
how it operated in the invention))
- Must determine what was actually

disclaimed the scope of the argument-
based disavowal will depend on the nature
of the argument made by the patentee even
in a case of an unequivocal disavowal of
claim scope, a court must construe the claim
congruent with the scope of the surrender
Omega Engg (Cordis, 1/7/08 (arguments
only disclaimed the actual prior art device,
and not claim equivalents))
- Argument-based surrender of a
particular possible equivalent is not a
clear surrender of other possible
equivalents Conoco (Cordis, 1/7/08)
- Explanations to the examiner do not =

estoppel (Conoco, 8/17/06)
- No disclaimer, estoppel when

statements in the PH merely
explained, in more explicit terms,
what the claims already covered PH
simply served the purpose of
informing the meaning of the claim
language by demonstrating how the
inventor understood the invention
Phillips (Cordis, 1/7/08 (Cordiss
definitional explanation in the PH
did not surrender all equivalents that
would otherwise have been available
under the patent))
1211
- Arguments unnecessary for securing allowance
still may create an estoppel (Cias, 9/27/07; Pods,
4/27/07)
- Estoppel applies to same term in other claims

once an argument is made regarding a claim term
so as to create an estoppel, the estoppel applies to
that term in other claims, even if arguments
distinguishing prior art do not directly apply to
claim in question (Pods, 4/27/07)
- Multiple bases argued to distinguish invention

from the prior art - separate arguments can create
separate estoppels as long as the prior art was not
distinguished based on the combination of the
grounds argued (Pods, 4/27/07)
- Foreign prosecution arguments made

emphasizing importance of claim limitations =
disclaimer, estoppel of DOE infringement
Tanabe (Abraxis Bioscience, 11/15/06)
- Unilateral statements by examiner do not show

surrender of claimed subject matter that cannot be
recaptured (Salazar, 7/8/05)
- Failure to rebut Examiners rejections

acquiescence (Glaxo (2), 1/29/04)
- Collateral estoppel (Torpharm, 7/23/03)
- Disclaimer/disavowal in the specification or PH

precludes DOE infringement (Trading Techs., 8/30/13;
Retractable Techs., 7/8/11 (statements in the
specification distinguishing prior art syringe bodies
having multiple pieces from the claimed syringe body
having a one-piece structure precluded DOE
infringement by the accused syringe); American Calcar,
1212
6/27/11 (PHE based on broad disclaimer during the PH);
Spine Solutions, 9/9/10 (PHE based on clear disavowal
during prosecution); MBO Labs, 4/12/10 (PHE and rule
against recapture for reissue patents also applied to
related parent applications); Trading Techs., 2/25/10
(applying the rule in a roundabout way in rejecting the
patentees argument that there still could be DOE
infringement despite a narrow construction of the
disputed term (static) based on disclaimers in the
specification and PH); Abbott Labs, 5/18/09 (no
equivalents between claim construed as limited to Crystal
A and Crystal B where the patentee effectively
disclaimed Crystal B during prosecution by not including
in the specification the disclosure of Crystal B from the
foreign priority application); Cordis, 1/7/08 (same
standards apply to both doctrines, citing Omega Engg);
Paice, 10/18/07 (no disclaimer in specification); Cias,
9/27/07 (rule not expressly stated); L.B. Plastics, 9/12/07
(specification); Hutchins, 7/3/07 (PH); Astrazeneca,
9/30/04; Gaus, 4/1/04); See also Textron Innovations,
9/7/12 (nonprecedential no estoppel based on claim
amendment and disclaimer to overcome prior art);
Reckitt Benckiser, 7/7/11 (nonprecedential PHE based
on PH disclaimer of single-formulation tablets); Marctec,
- Disclaimer in the specification of scope of

equivalents (Franks Casing, 11/30/04)
- Prior art the same as, or similar to, the accused

device criticized in the specification, while touting
advantages of the invention shows non-
equivalence SciMed, Gaus, Dawn Equipment
(Retractable Techs., 7/8/11 (no DOE infringement
by syringe body having multiple pieces, which the
patent distinguished from the claimed one-piece
syringe body citing L.B. Plastics); Paice,
10/18/07 (no disclaimer; construed SciMed
1213
narrowly, where the patentee selected the coaxial
configuration for all embodiments of the
invention to the exclusion of the only other known
configuration); L.B. Plastics, 9/12/07; Gaus,
4/1/04)
- Disclaimer, and non-equivalence, where the

patentee touts the inventions improvements
over the very same subject matter sought
to be recaptured under DOE Gaus, Dawn
Equipment (Paice, 10/18/07)
- Specific exclusion principle (Novartis, 7/8/04)
- Structure clearly excluded from the claims in

specification, whether exclusion is express or
implied, does not infringe under DOE SciMed
(Paice, 10/18/07 (no disclaimer; distinction
between claimed and prior art design was
equivocal at best); L.B. Plastics, 9/12/07; Gaus,
4/1/04)
- Disclaimer based on extrinsic evidence, e.g.,

marketing documents, emails (Paice, 10/18/07
(CAFC opted not to address issue))
Amendment-based estoppel Festo (S.C.)
Narrowing amendments made for the purpose of

patentability create a rebuttable presumption of
surrender
- Amendment-based estoppel - narrowing amendments

made for the purpose of patentability, i.e., to satisfy any
requirement of the Patent Act creates rebuttable
presumption of surrender (i.e., disclaimer) of territory
between the original claim and amended claim limitation
Festo (S.C.) and Festo (en banc) (Integrated Tech.,
1214
11/4/13; Energy Transportation Group, 10/12/12
(presumption not overcome where claim limitation was
added in response to a rejection of closely related claims,
and no other explanation for the limitation was given in
the PH); Duramed, 7/21/11 (surrender not rebutted based
on unforeseeability of the alleged equivalent at the time
of narrowing amendment); Funai, 9/1/10 (no estoppel
where the equivalent was tangential to the claim
amendment); Intervet, 8/4/10 (no PHE where the reason
for the amendment was tangential to the alleged
equivalent DNA molecule); Felix, 4/10/09 (PHE from
amending dependent claim to incorporate independent
claim and canceling the independent claim); Voda,
8/18/08 (estoppel barred DOE where the patentee failed
to make arguments for overcoming the presumption);
Lucent Techs., 5/8/08 (PHE, not rebutted based on the
tangential exception, precluded DOE); O2 Micro, 4/3/08
(patentee agreed that the addition of term only if to
claim was a narrowing amendment made for a substantial
reason relating to patentability, thus relying on rebuttal
arguments); Regents of U. Cal., 2/28/08, see also dissent,
J. Prost (patentees surrender of all equivalents of the
added blocking nucleic acid limitation, construed as
meaning DNA or RNA, included the infringing peptide
nucleic acids (PNAs) having the same function, because
the claim should have been amended to recite blocking
only); Intl Rectifier, 2/11/08 (rebuttable presumption
not expressly mentioned); Cordis, 1/7/08 (district court
held the presumption was rebutted; CAFC concluded that
DOE was unnecessary for upholding jurys infringement
verdict, since claim term was defined too restrictively);
Schwarz Pharma, 10/12/07; Festo, 7/5/07; Hutchins,
7/3/07 ; Cross Medical Prods., 3/20/07; Aquatex,
2/27/07; Conoco, 8/17/06; *Amgen, 8/3/06; Primos,
6/14/06; Old Town Canoe, 5/9/06; Norian, 12/6/05;
Biagro, 9/13/05; Research Plastics, 8/18/05; Terlep,
8/16/05; Salazar, 7/8/05; Chimie, 4/11/05; Business
Objects, 1/6/05; Insituform Techs., 10/4/04; Honeywell
1215
Intl, 6/2/04 (en banc); Glaxo (2), 1/29/04; Liquid
Dynamics, 1/23/04; Ericsson (dissent), 12/9/03;
Ranbaxy, 11/26/03; Talbert, 10/28/03; Deering,
10/17/03; Festo, 9/26/03); See also Reckitt Benckiser,
7/7/11 (nonprecedential PHE based on claim
amendment)
- Claim amendments not insubstantial part of

invention (Liquid Dynamics, 1/23/04)
- Determining whether an estoppel arose, and the

scope of the estoppel, the analysis focuses on the
claims as originally filed, the amendments made,
and the reasons therefor (Funai, 9/1/10)
- Narrowing amendment to claim patentee has the

burden to demonstrate that the reason for the
amendment was unrelated to patentability (e.g., to
avoid prior art) (Integrated Tech., 11/4/13; Festo,
7/5/07; Aquatex, 2/27/07); AND when the record
lacks an explanation for the amendment, presumed
(rebuttable) that the PTO had a substantial reason
related to patentability for including the limiting
element added by amendment Warner-Jenkinson
v. Hilton Davis (S.C.) (Energy Transportation
Group, 10/12/12 (citing Honeywell Intl for rule
that if the PH reveals no reason for the narrowing
amendment, the presumption is not rebutted, as
silence does not overcome the presumption);
Honeywell Intl, 4/18/08; Festo, 7/5/07; Conoco,
8/17/06)
- Burden is on the patentee to establish that

the reason for the amendment was unrelated
to patentability; otherwise, the court must
presume that the patentee had a substantial
reason related to patentability for including
the limiting element added by amendment; if
1216
there is a substantial reason related to
patentability, prosecution history estoppel
would bar the application of the doctrine of
equivalents as to that element Warner-
Jenkinson (S.C.) (Festo, 7/5/07)
- Patentees response to a rejection by

narrowing a claim, and not the
examiners ultimate allowance of the
claim, gives rise to PHE Festo
(S.C.) (Felix, 4/10/09 (did not matter
for PHE that the examiner did not
allow the amended claim))
- Narrowing amendment (over the prior art)

need be made for application of PHE;
without narrowing amendment, no surrender
and no PHE (U.S. Philips, 11/2/07 (claimed
range allegedly drafted to avoid prior art))
- Narrowing amendment = adding limitation

and narrowing existing element (Honeywell
Intl, 6/2/04 (en banc))
- Narrowing amendment along with

broadening amendments is still a
narrowing amendment amendment
narrowing the scope of a claim with
respect to an added claim limitation
cannot be considered a broadening
amendment merely because the claim
was also amended to eliminate other
claim limitations (Intl Rectifier,
2/11/08 (term adjoining added to
overcome Section 112 rejection))
- Narrowing amendment made by

adding new claim limitation,
1217
equivalents presumptively unavailable
for limitation Honeywell (Intl
Rectifier, 2/11/08 (term adjoining
added to claim equivalents barred);
Biagro, 9/13/05); See also AG Design
& Assocs., 3/24/08 (nonprecedential,
citing Biagro)
- Surrendering more than necessary to

overcome the prior art it is not relevant to
the determination of the scope of surrender
that the applicant did not need to amend the
claims to overcome the prior art (Energy
Transportation Group, 10/12/12 (citing
Norian for rule that PHE bars application of
DOE even where the applicant surrendered
more claim scope than was necessary to
overcome a rejection); Felix, 4/10/09
(immaterial to the scope of PHE that the
patentee added two limitations from a
dependent claim, where only one may have
been sufficient for patentability); Lucent
Techs., 5/8/08); See also CLAIM
CONSTRUCTION Disclaimer during
prosecution
- Presumption of surrender attaches to

each added limitation (Felix, 4/10/09)
- Double patenting related to patentability

(Amgen, 8/3/06)
- Section 112 - amendment made to comply

with 112 may give rise to estoppel (Intl
Rectifier, 2/11/08 (equivalents barred);
Festo, 7/5/07; Cross Medical Prods.,
3/20/07)
1218
- Amendment not narrowing for purposes of
patentability no estoppel from claiming
equivalents (Conoco, 8/17/06; Business
Objects, 1/6/05)
- Amendment made to correct

inadvertent omission of term from
claim, rather than the intentional
narrowing of a broad claim for
patentability purposes (Conoco,
8/17/06)
- Claim amendment for reason other

than the prior art disclosing the
alleged equivalent no estoppel
(Stephens, 12/29/04)
- Claim amendment must bear relation

to the claim element in question, or no
estoppel (Aquatex, 2/27/07)
- Rewriting dependent claim as an

independent claim, and canceling the
original independent claim not containing
the added limitation = presumption of
surrender of territory between the original
claim and amended claim Ranbaxy,
Deering; equivalents are presumptively not
available with respect to the added
limitation(s) - Honeywell (Funai, 9/1/10
(equivalency not surrendered with respect to
insulating material limitation which was
not further limited by the rewitten dependent
claim equivalent was merely tangential to
the reason for the amendment); Felix,
4/10/09 (n.4: leaving open the question of
whether the presumption of surrender would
have attached as to the gasket limitation if
1219
the patentee had not attempted to secure
broader coverage by rewriting a first
dependent claim (containing the disputed
limitation) as an intermediate step to
rewriting a second (allowable) dependent
claim); Honeywell Intl, 4/18/08
(presumption not rebutted; see also J.
Newman, dissenting referring to the
CAFCs new presumption of surrender,
stating that [c]ancelling an independent
claim is not an estoppel-generating act as to
elements whose scope was not amended or
otherwise restricted during prosecution);
Cordis, 1/7/08 (DOE not relied on for
infringement); Honeywell Intl, 6/2/04 (en
banc))
- Rule applies even if the amendment

does not succeed in placing the claim
in condition for allowance (Felix,
4/10/09)
- Presumption applies to all claims having limitation

- even if unamended (Felix, 4/10/09 (immaterial to
PHE that the narrowing amendment was made as
an intermediate step to amending the asserted
dependent claim); Old Town Canoe, 5/9/06; Glaxo
(2), 1/29/04; Deering, 10/17/03)
Rebutting the presumption - generally
- Scope of the estoppel must fit the nature of the narrowing

amendment PHE does not completely bar the benefit of
DOE for the amended claim must interpret what was
surrendered (Intervet, 8/4/10 (district court interpreted
the scope of surrender too broadly))
1220
- Presumption that equivalents surrendered may be
rebutted if patentee shows that at the time of the
amendment one skilled in the art could not reasonably be
expected to have drafted a claim that would have literally
encompassed the alleged equivalent - Festo (Intervet,
8/4/10; Schwarz Pharma, 10/12/07; Conoco, 8/17/06;
*Amgen, 8/3/06)
- Rebuttal of presumption 3 ways, show that: 1) alleged

equivalent would have been unforeseeable at the time of
the narrowing amendment (or patent application), 2) the
rationale underlying the amendment bore no more than a
tangential relation to the equivalent in question, or 3)
there was some other reason suggesting that the patentee
could not reasonably be expected to have described the
alleged equivalent Festo, Honeywell (Integrated Tech.,
11/4/13 (exceptions did not prevent PHE); Duramed,
7/21/11 (foreseeability of alleged equivalent at the time
of narrowing amendment not rebutted); Felix, 4/10/09;
Voda, 8/18/08; Honeywell Intl, 4/18/08 (no rebuttal
based on foreseeability or tangential relation); O2 Micro,
4/3/08 (merely tangential rebuttal argument rejected);
Regents of U. Cal., 2/28/08 (rebuttal based on tangential
relation); Schwarz Pharma, 10/12/07; Cias, 9/27/07
(district court recognized burden not met because of PH
disclaimers based on prior art); Festo, 7/5/07; Cross
Medical Prods., 3/20/07; Conoco, 8/17/06; Amgen,
8/3/06 (CAFC addresses all three factors in detail,
summarizing the guidelines provided in Festo); Primos,
6/14/06; Biagro, 9/13/05; Research Plastics, 8/18/05;
Terlep, 8/16/05; Chimie, 4/11/05; Business Objects,
1/6/05; Insituform Techs., 10/4/04; Honeywell Intl,
6/2/04 (en banc); Glaxo (2), 1/29/04)
- Patentee bears the burden of rebutting the

presumption of surrender (Integrated Tech.,
11/4/13 (the patentee must establish one of the
three exceptions by a preponderance of the
1221
evidence); Felix, 4/10/09; Schwarz Pharma,
10/12/07; Amgen, 8/3/06) - thus, movant for SJ of
noninfringement need not establish absence of fact
issues relating to patentees rebuttal (Biagro,
9/13/05)
Foreseeability
- Objective unforeseeability of alleged equivalent to one of

ordinary skill in the art at the time of the amendment
technology developed after an amendment is not
necessarily objectively unforeseeable - Festo (Integrated
Tech., 11/4/13 (the patentee failed to prove that the
alleged equivalent (no-touch product) was objectively
unforeseeable, stating that technology developed after an
amendment is not necessarily objectively unforeseeable -
Festo); Energy Transportation Group, 10/12/12
(difference between determining and measuring
phase and amplitude was forseeable, since the patentee
used determining in a related patent); Duramed,
7/21/11 (rejecting argument that prior art reference failed
to establish with test data the suitability of PVA as a
moisture barrier for a pharmaceutical compound, ruling
that foreseeability does not require such precise
evidence of suitability and that [f]oreseeability does
not require flawless perfection to create an estoppel);
*Honeywell Intl, 4/18/08 (agreed with the district court
that even the narrow equivalent proposed by the
patentee was foreseeable and thus precluded by estoppel;
quotes Festos (S.C.) lengthy explanation of the
foreseeability criterion, and explains further the basis for
the foreseeability criterion, including contrasting
foreseeable from unforeseeable circumstances and that
the foreseeability principle thus relegates the doctrine of
equivalents to its appropriate exceptional place in patent
enforcement); Schwarz Pharma, 10/12/07; Festo, 7/5/07;
1222
Cross Medical Prods., 3/20/07; *Amgen, 8/3/06; Glaxo
(2), 1/29/04)
- Alleged equivalent is foreseeable if it was

generally known to those skilled in the art at the
time of the amendment as available in the field of
the invention, as defined by the pre-amendment
claim scope (Duramed, 7/21/11 (rejecting
argument based on a restrictive definition of the
field of invention as being conjugated estrogens,
rather than the claimed pharmaceutical
compositions generally); Schwarz Pharma,
10/12/07), even if the suitability of the alternative
for the particular purposes defined by the amended
claim scope were unknown (Duramed, 7/21/11;
Honeywell Intl, 4/18/08) surrender is
appropriate where the inventor turned his attention
to the subject matter in question, knew the words
for both the broader and narrower claim, and
affirmatively chose the latter Festo (S.C.) (Festo,
7/5/07)
- Applicant is charged with surrender of

foreseeable equivalents known before the
amendment, not equivalents known after the
amendment (Festo, 7/5/07)
- Function/way/result test or insubstantial

differences test is inapplicable to the
question of foreseeability (Schwarz Pharma,
10/12/07; Festo, 7/5/07)
- Equivalents known in the pertinent prior art at the

time of the amendment are foreseeable (Duramed,
7/21/11; Honeywell Intl, 4/18/08 (relying on
extrinsic evidence, including prior art references of
record in concluding foreseeability of the alleged
1223
equivalent); Schwarz Pharma, 10/12/07; Festo,
7/5/07; Research Plastics, 8/18/05)
- Foreseeability only requires that one of ordinary

skill in the art would have reasonably forseen the
proposed equivalent at the pertinent time;
foreseeability does not require that the accused
infringing product or process be foreseeable, nor
that any equivalent exist at the time Festo
(Honeywell Intl, 4/18/08)
- Equivalent foreseeable when person skilled

in the art would foresee that alleged
equivalent might be useful in method
invention (Schwarz Pharma, 10/12/07)
- Language of claim defines field of invention

language of the claim defining an invention
defines the field within which forseeability is
considered (Integrated Tech., 11/4/13 (applying
principle from Festo that when the patentee
originally claimed the subject matter alleged to
infringe but then narrowed the claim in response to
a rejection, he may not argue that the surrendered
territory comprised unforeseen subject matter
principle controlled in case regardless of when the
accused infringer developed its no-touch
products); Duramed, 7/21/11 (same as Schwarz
Pharma language of claim (pharmaceutical
composition) defined the field of invention for
purposes of foreseeability); Schwarz Pharma,
10/12/07 (field of invention, as recited in claim,
was pharmaceutical compositions and alleged
equivalent was known in field))
- Objective standard used, e.g., via expert testimony

person skilled in the art (Integrated Tech.,
11/4/13; Honeywell Intl, 4/18/08 (district court
1224
observed expert witnesses demeanor and
credibility in concluding alleged equivalent was
foreseeable); Glaxo (2), 1/29/04)
- Old technology, foreseeability at the time of

claiming (Sage Products) vs. later-developed
technology, which is usually not foreseeable
(Integrated Tech., 11/4/13 (applying rule that
technology developed after an amendment is not
necessarily objectively unforeseeable, where the
equivalent was within the scope of the original,
pre-amendment claim Festo; also, the record did
not demonstrate that the (no-touch) equivalent was
the innovative aspect of the accused infringers
patented technology); Honeywell Intl, 4/18/08
(development time required for the alleged
equivalent was ambiguous with respect to the
foreseeability criterion; see also dissent, J.
Newman foreseeability means readily known
equivalents under Festo (S.C.)); Festo, 7/5/07;
Cross Medical Prods., 3/20/07)
- Timing of the equivalent is not dispositive

the mere temporal relationship of the
equivalent to the patent acquisition and
amendment process does not make the
equivalent unforeseeable (Honeywell Intl,
4/18/08 (equivalent was foreseeable despite
10 year separation; see also J. Newman,
dissenting foreseeability under Festo
(S.C.) means readily known equivalents,
and not unknown equivalents developed a
decade later))
- Same definition of the alleged equivalent must be

used to evaluate both foreseeability and
infringement; the adoption of different equivalents
for infringement and foreseeability would produce
1225
perverse results, as under such a paradigm,
patentees and accused infringers would reverse
roles when arguing whether the equivalent met the
test for infringement on the one hand, and
foreseeability, on the other - Festo (Honeywell
Intl, 4/18/08 (patentee judically estopped (dicta?)
where the patentee successfully argued for a
broader definition of an alleged equivalent for
establishing DOE infringement than it later urged
with respect to the foreseeability issue))
- Test whether applicant would have been

expected to know of, and thus properly claim the
alleged equivalent at the time of the amendment
(Honeywell Intl, 4/18/08 (foreseeability ensures
that the DOE does not capture subject matter that
the patent drafter could have forseen during
prosecution and included in the claims); Festo,
7/5/07), vs. where applicant purposely left known
equivalent out of application at the time of filing
(Glaxo (2), 1/29/04)
Tangentialness
- Tangentialness patentee must prove that the alleged

equivalent is tangential, peripheral, not directly relevant
to the purpose of, rationale underlying, the amendment -
Festo (Integrated Tech., 11/4/13; Funai, 9/1/10 (no
estoppel with respect to the equivalency of insulating
material element, since the nature of the insulating
material was not at issue in overcoming the prior art, and
thus the equivalent was merely tangential to the reason
for the amendment); Intervet, 8/4/10 (district court
misapplied PHE where the amendment limited PCV to
PCV-2, and bore only a tangential relation to the
question of which DNA sequences are and are not
properly characterized as PCV-2); Felix, 4/10/09;
1226
Lucent Techs., 5/8/08 (equivalent not tangential);
Honeywell Intl, 4/18/08 (alleged equivalent was not
tangential where it focused on the added limitation when
dependent claims were rewritten in independent form);
O2 Micro, 4/3/08; Regents of U. Cal., 2/28/08
(presumption rebutted), see also J. Prost, dissenting,
addressed below, also distinguishing Insituform and
Primos; Intl Rectifier, 2/11/08 (argument rejected;
adding term adjoining to overcome Section 112
rejection was not tangentially related to the equivalency
of a structure with non-adjoining regions); Cross Medical
Prods., 3/20/07 (see J. Rader, concurring, criticizing
tangentialness exception); Amgen, 8/3/06; Primos,
6/14/06; Biagro, 9/13/05; Research Plastics, 8/18/05;
Terlep, 8/16/05; Chimie, 4/11/05; Insituform Techs.,
10/4/04 (presumption rebutted)); See also AG Design &
Assocs., 3/24/08 (nonprecedential the patentee
conflated the Festo PHE tangential rebuttal analysis with
the DOE function-way-result test, where the the relevant
equivalent in question was the accused devices reflector
without the recited plurality of ports limitation added
during prosecution to overcome prior art)
- Tangential relation criterion is very narrow

(Integrated Tech., 11/4/13; Energy Transportation
Group, 10/12/12; Honeywell Intl, 4/18/08; Cross
- Amendment made to avoid prior art that contains

the equivalent in question is not tangential
Chimie (Integrated Tech., 11/4/13 (adding, also
from Chimie, that it does not follow, however, that
equivalents not within the prior art must be
tangential to the amendment); Intervet, 8/4/10;
Felix, 4/10/09; Cross Medical Prods., 3/20/07); See
also Southwestern Bell, 5/27/08 (nonprecedential
rejecting the patentees argument that amendments
were tangential to patentability and were merely
1227
intended to clarify the claim, stating that an
amendment is directly, and not tangentially, related
to patentability when an applicants narrowing
additions to a claim along with the applicants own
statements in the PH indicate that the amendment
was made to distinguish over a prior art reference)
- Narrowing amendment found in the accused

product rebutting the presumption by showing
that the rationale underlying the amendment
beared no more than a tangential relationship to the
alleged equivalent (Primos, 6/14/06)
- Tangentialness decided based only on the public

record (i.e., the prosecution history) (Integrated
Tech., 11/4/13; Felix, 4/10/09 (no explanation was
identified in the PH for the addition of the disputed
gasket limitation, and that the limitation was
tangential to the presence and position of a gasket);
Honeywell Intl, 4/18/08 (reason for the narrowing
amendment should be discernable from the
prosecution history record Festo); Regents of U.
Cal., 2/28/08 (PH and reasons for the amendment
were examined); Cross Medical Prods., 3/20/07);
except when necessary, testimony considered from
those skilled in the art regarding interpretation of
the record (*Amgen, 8/3/06; Biagro, 9/13/05;
- Patentee must provide a reason for the

amendment to know if tangentially related;
the presumption is not rebutted if no reason
for the narrowing amendment is revealed by
the PH record (Felix, 4/10/09; Honeywell
Intl, 4/18/08; O2 Micro, 4/3/08 (Silence
doee not overcome the presumption); Cross
Medical Prods., 3/20/07; Biagro, 9/13/05)
1228
- Focusing on the context in which the
narrowing amendment was made
determines whether the amendment
was merely tangential (Honeywell
Intl, 4/18/08 (the key to the
tangential inquiry when dependent
claims are rewritten into independent
form is the content of the dependent
claims))
- Patentees reason for the narrowing

amendment is the focus - whether the reason
for the amendment was peripheral, or not
directly relevant to the alleged equivalent;
the focus is on the patentees objectively
apparent reason for the narrowing
amendment, which should be discernible
from the PH record (Integrated Tech.,
11/4/13 (patentee failed to prove, based on
the PH, tangentialness by a preponderance
of the evidence, where the patentees
representations to the public conveyed that it
was relying on physical contact to overcome
the prior art); Funai, 9/1/10 (cancelling
independent claims and rewriting dependent
claim in independent form did not surrender
equivalency where patentability was based
on other claim limitations); Felix, 4/10/09;
Lucent Techs., 5/8/08 (tangentialness
rejected where the purpose of the
amendment was not unrelated to the alleged
equivalent); Honeywell Intl, 4/18/08
(patentees rewriting of dependent claims
into independent form effectively added a
limitation to the claim, which was thus the
reason for making the amendment; see also
dissent, J. Newman record did not reveal
the reason for canceling the independent
1229
claim, as the applicant must relinquish scope
for estoppel to apply)); O2 Micro, 4/3/08
(patentees objective apparent reason for
adding term only if was as the claim
language clearly stated, and thus the alleged
equivalent was not tangential to the reason
for the amendment); Regents of U. Cal.,
2/28/08 (focus of the patentees arguments
concerning added blocking nucleic acid
limitation centered on the method of
blocking generally, and not the type of
nucleic acid that could be used for
blocking); see also dissent, J. Prost (alleged
equivalent (PNA) and added claim
limitation (nucleic acid, i.e., DNA or
RNA) had the same function and thus the
purpose of the amendment was not
tangential, unrelated to the equivalent);
Cross Medical Prods., 3/20/07; *Amgen,
8/3/06; Research Plastics, 8/18/05; Terlep,
8/16/05)
- Alleged equivalent directly implicated

by the amended claim language
narrowing amendment not merely
tangential to alleged equivalent (Intl
Rectifier, 2/11/08; Schwarz Pharma,
10/12/07)
- That claim could have been defended

without amendment is irrelevant and
speculative (Intl Rectifier, 2/11/08;
Schwarz Pharma, 10/12/07)
Some other reason for the amendment
1230
- Some other reason narrow one; e.g., shortcomings of
language (Amgen, 8/3/06)
VI. WILLFUL INFRINGEMENT
(Edwards Lifesciences, 11/13/12 (affirming no enhancement of

damages and attorney fees where sufficiently close issues and the
defenses were not frivolous citing Bard (enhancement of damages is
not automatic)); Energy Transportation Group, 10/12/12 (not reaching
issue where the denial of enhanced damages and attorney fees was not
appealed); K-Tec, 9/6/12; Bard, 6/14/12 (en banc) (whether the
threshold objective prong is met, including whether there are
substantial defenses to infringement, is a question of law for the
court); Advanced Fiber, 4/3/12 (affirming SJ of no willfulness where
the accused infringer had objectively reasonable noninfringement and
invalidity defenses to infringement); Bard, 2/10/12 (affirming $371
million in damages enhanced after willful infringement finding,
despite an opinion of counsel that claims invalid; see also J. Newman,
dissenting) [vacated in part after remanded on 6/14/12 - the
portion of the courts opinion addressing willfulness was modified
in accordance with the courts 6/14/12 opinion above see also
below]; Powell, 11/14/11 (affirming willful infringement and
enhanced damages where the district court properly concluded that
claim construction and IC arguments were not objectively reasonable
defenses; also distinguishing the reasonableness of the infringers
reliance on defenses to infringement under the objective prong for
avoiding willfulness based on issues of law (decided by the court) vs.
issues of fact (for the jury); see also J. Dyk, dissenting); Spectralytics,
6/13/11; Uniloc, 1/4/11 (no willfulness where the patentee failed to
meet the threshold objective prong of Seagate); Spine Solutions,
9/9/10 (no objective recklessness where substantial defense
(obviousness) was raised to infringement); Transocean, 8/18/10 (no
objective recklessness, where evidence of an intent to avoid
infringement); i4i, 3/10/10 (willfulness not challenged, including jury
instruction -- but even if challenged, the jurys verdict was supported
by substantial evidence); Trading Techs., 2/25/10 (affirming JMOL of
no willful infringement); SEB, 2/5/10 (district court properly vacated
1231
the jurys pre-Seagate verdict of willful infringement where the jury
was not required under the intervening Seagate standard to find by
C&C evidence willful infringement); Depuy Spine, 6/1/09 (issue of
willful DOE infringement was correctly not submitted to the jury
where an objectively high likelihood of infringement could not be
found under Seagates first prong); Minks, 10/17/08 (pre-Seagate jury
instruction was not plain error, including that the accused infringer
had deliberately copied the claimed device, distinguishing Voda);
Cohesive Techs., 10/7/08 (no willful infringement where reasonable
noninfringing construction for disputed claim term); Voda, 8/18/08
(vacating and remanding willfulness judgment for determination
under Seagate standard, where jury instruction was based on the old
standard); Finisar, 4/18/08 (opinion of counsel need not address both
infringement and validity); Innogenetics, 1/17/08 (stating willfulness
standards under Seagate); Mitutoyo, 9/5/07 (requirements for pleading
willful infringement); *In re Seagate Technology, 8/20/07 (en banc;
writ of mandamus); Acumed, 4/12/07; Liquid Dynamics, 6/1/06; *In
re Echostar Communications, 5/1/06 (writ of mandamus); Golden
Blount, 2/15/06; Applied Medical Resources, 1/24/06; NCube, 1/9/06;
Union Carbide, 10/3/05; Harris, 8/5/05; Fuji Photo, 1/14/05;
Insituform Techs., 10/4/04; *Knorr-Bremse, 9/13/04 (en banc);
Norian, 4/6/04; Golight, 1/20/04; State Contracting, 10/7/03; See also
Calico, 7/18/13 (nonprecedential affirming JMOL setting aside jury
verdict of willful infringement); In re Electro-Mechanical Indus.,
12/22/09 (nonprecedential no clear error in the district courts
finding of willfulness); Black & Decker, 1/7/08 (nonprecedential;
dicta - under the objective standard of Seagate, both legitimate
defenses to infringement claims and credible invalidity arguments
demonstrate the lack of an objectively high likelihood that a party
took actions constituting infringement of a valid patent))
A. In re Seagate Technology (en banc)
On 1/26/07, the CAFC decided sua sponte in In re Seagate

Technology (nonprecedential) that a petition for writ of mandamus
(which concerned the scope of waiver of privilege when relying on
advice of counsel as a defense to willful infringement) was
1232
appropriate for en banc consideration. The CAFC thus invited the
parties to address three questions, the first two of which were relevant
to the scope of waiver (see Advice of counsel defense to willful
infringement), and the third was relevant to the standard for willful
infringement, as follows: 1) Should a partys assertion of the advice of
counsel defense to willful infringement extend waiver of the attorney-
client privilege to communications with that partys trial counsel ?
(citing In re Echostar Communications); 2) What is the effect of any
such waiver on work-product immunity?; and 3) Given the impact of
the statutory duty of care standard announced in Underwater Devices,
Inc. v. Morrison-Knudsen Co., 717 F.2d 1380 (Fed. Cir. 1983), on the
issue of waiver of attorney-client privilege, should the CAFC
reconsider the decision in Underwater Devices and the duty of care
standard itself?
On 8/20/07, in a precedential opinion (In re Seagate

Technology), the en banc court overruled the affirmative duty of due
care standard set out in Underwater Devices (i.e., Where . . . a
potential infringer has actual notice of anothers patent rights, he has
an affirmative duty to exercise due care to determine whether or not
he is infringing. Such an affirmative duty includes, inter alia, the duty
to seek and obtain competent legal advice from counsel before the
initiation of any possible infringing activity. Specifically, obtaining
(or not) an opinion of counsel under the due care standard, although
not dispositive of the willfulness inquiry, was crucial to the analysis
and an important factor to avoid a willfulness determination.).
The en banc court in Seagate held that proof of willful

infringement permitting enhanced damages now requires at least a
showing, by clear and convincing evidence, of objective
recklessness on the part of the accused infringer. Importantly,
because it was abandoning the affirmative duty of due care standard,
the court reemphasize[d] that there is no affirmative obligation to
obtain opinion of counsel.
To establish willful infringement, the court held that a patentee

must show by clear and convincing evidence that the infringer acted
despite an objectively high likelihood that its actions constituted
1233
infringement of a valid patent. Once this threshold objective
standard is satisfied, the patentee must also demonstrate that this
objectively-defined risk (determined by the record developed in the
infringement proceeding) was either known or so obvious that it
should have been known to the accused infringer. Further, the state
of mind of the accused infringer is not relevant to this objective
inquiry.
In determining whether this threshold objective standard is

met, the CAFC expected that the standards of commerce, as suggested
by Judge Newman (The standards of behavior by which a possible
infringer evaluates adverse patents should be the standards of fair
commerce, including reasonableness of the actions taken in the
particular circumstances), would be among the factors that a court
might consider.
The court also addressed the appropriate scope of waiver of the

attorney-client privilege and work product protection resulting when
an accused infringer asserts the advice of counsel defense to a charge
of willful infringement. See Advice of counsel defense to willful
infringement
B. Generally Objective recklessness standard
- Proof of willful infringement permitting enhanced

damages requires at least a showing of objective
recklessness Seagate (K-Tec, 9/6/12; Bard, 6/14/12
(en banc); Advanced Fiber, 4/3/12 (relying on numerous
factors by the district court for why the accused
infringers acts were not objectively reckless); Bard,
2/10/12 [vacated in part after remanded on 6/14/12
see below]; Powell, 11/14/11; Spectralytics, 6/13/11;
Ilor, 1/11/11 (equating standard with objective
baselessness for awarding attorney fees based on bad
faith litigation); Uniloc, 1/4/11; Spine Solutions, 9/9/10;
Transocean, 8/18/10; Trading Techs., 2/25/10 (prompt
redesign efforts and complete removal of infringing
1234
software products in a span of a few months, along with
no evidence that the infringer could have achieved the
above any earlier, showed no objective recklessness);
SEB, 2/5/10 (the district court did not err in vacating
enhanced damages and attorney fees awards where the
patentees evidence was not so strong that there was
willful infringement as a matter of law under the
intervening Seagate decision); Depuy Spine, 6/1/09;
Minks, 10/17/08; Voda, 8/18/08; Finisar, 4/18/08;
Innogenetics, 1/17/08); See also Calico, 7/18/13
(nonprecedential); Lexion Medical, 8/28/08
(nonprecedential reliance on an oral opinion of counsel
which predicted noninfringement in view of a renewed
motion for JMOL was not objectively reckless for
willful infringement with respect to post-verdict sales)
- To establish willful infringement, a patentee must

show by C&C evidence that the infringer was
aware of the asserted patent, but acted despite an
objectively high likelihood that its actions
constituted infringement of a valid patent, and
(once the threshold objective standard above is
satisfied) the patentee must also demonstrate that
this objectively-defined risk (determined by the
record developed in the infringement proceeding)
was either known or so obvious that it should have
been known to the accused infringer (subjective
inquiry) - Seagate (Commil USA, 6/25/13; Power
Integrations, 3/26/13; K-Tec, 9/6/12 (substantial
evidence that infringer knew of the objectively
high risk but proceeded anyway); Bard, 6/14/12
(en banc) (whether the threshold objective prong is
met is a question of law for the court); Advanced
Fiber, 4/3/12; Bard, 2/10/12 (substantial evidence
of willful infringement, including that the named
inventor was awarded priority of invention in an
interference, and the defendant relied on prior art
references to support invalidity defenses which
1235
were rejected as not invalidating by the PTO (not
a close call)) [vacated in part after remanded
on 6/14/12, after the CAFC granted rehearing
en banc for the limited purpose of authorizing
the panel to revise the portion of the opinion
addressing willfulness and the award of
attorney fees and enhanced damages; the
courts 2/10/12 judgment was thus vacated in
part, and the panels opinion was modified in
accordance with the new panel opinion
accompanying the courts order, in which the
panel held that the legal standard for the
threshold objective prong for willfulness is a
question of law for the court, based on
underlying mixed questions of law and fact,
which is subject to de novo review; see also J.
Newman, dissenting concurring with the legal
standard, but dissenting from the majoritys
decision to remand, where there was evidence in
the record of substantial defenses to
infringement]; Powell, 11/14/11 (see also J. Dyk,
dissenting objective prong not proven by C&C
evidence in view of objectively reasonable claim
construction defense to infringement); Ilor, 1/11/11
(comparing willfulness to bad faith litigation);
Uniloc, 1/4/11 (objective prong not satisfied,
where infringement of the disputed means-plus-
function limitation was a complicated issue, made
more so because determining equivalence
requires an intensely factual inquiry Depuy
Spine); Spine Solutions, 9/9/10; Transocean,
8/18/10; i4i, 3/10/10 (sufficient evidence was
presented to the jury to prove each prong of the
Seagate standard for willfulness, including emails
and testimony by the infringers employees, along
with the lack of evidence that the infringer took
any remedial action, e.g., by either ceasing
infringing activity or attempting to design around,
1236
or otherwise made a good faith effort to avoid
infringement); Trading Techs., 2/25/10; SEB,
2/5/10; Depuy Spine, 6/1/09 (that there was not an
objectively high likelihood of DOE infringement
under Seagates first prong was confirmed by a
prior CAFC appeal remanding the issue to the jury
after holding that material facts existed); Cohesive
Techs., 10/7/08 (no objectively high likelihood of
infringement where reasonable for the accused
infringer to have interpreted the PH to disclaim the
accused product); Voda, 8/18/08; Innogenetics,
1/17/08 (record did not indicate how the
infringers development and sale of its genotyping
products were at risk of an objectively high
likelihood of infringement)); See also Lee,
11/21/13 (nonprecedential); Calico, 7/18/13
(nonprecedential affirming JMOL of no
willfulness because no C&C evidence of willful
infringement based on spartan record that the
subjective prong was not satisfied where the
infringer did not know about the patent at the time
of sales (and when it learned of the patent, it
immediately demanded assurances from its
supplier of noninfringement and thereafter
returned the lighters), and the infringers sales
document for a sale made after obtaining
knowledge of the patent (and trial testimony) did
not indicate whether lighters were infringing or
noninfringing alternatives)
- Substantial defense to infringement the

objective prong tends not to be met where
the accused infringer relies on a reasonable
defense to a charge of infringement
(Commil USA, 6/25/13; K-Tec, 9/6/12 (no
error in denial of JMOL of no willfulness
where noninfringement and invalidity
theories were rejected on SJ or soundly by
1237
the jury); Bard, 6/14/12 (en banc) (whether
the objective prong is met, including
whether there are substantial defenses to
infringement, is a question of law for the
court the judge remains the final arbiter of
whether a defense was reasonable, even
when the underlying fact question is sent to
the jury); Advanced Fiber, 4/3/12 (no
willfulness where reasonable defenses to
infringement and validity); Bard, 2/10/12
6/14/12, and the court concluding that, on
remand, the district court should
determine, based on the record ultimately
made in the infringement proceedings,
whether a reasonable litigant could
realistically expect those defenses to
succeed, and that if, in view of the facts,
the asserted defenses were not reasonable,
only then can the jurys subjective
willfulness finding be reviewed for
substantial evidence]; Powell, 11/14/11
(district court did not err in concluding that
claim construction and IC arguments (both
issues of law for the court to decide) were
not reasonable defenses; see also J. Dyk,
dissenting); Uniloc, 1/4/11 (if the accused
infringers position is susceptible to a
reasonable conclusion of no infringement,
the objective prong cannot be met
Cohesive Techs.); Spine Solutions, 9/9/10
(reversing denial of JMOL of no willfulness
where substantial question raised regarding
obviousness)); See also Lee, 11/21/13
(nonprecedential reversing willfulness
because first prong was not satisfied where
infringement defense was not objectively
unreasonable)
1238
- Reasonableness of defense under the
objective prong decided by the court
(issues of law) vs. the jury (issues of
fact) (Bard, 6/14/12 (en banc) (the
ultimate legal question of the
reasonableness of a defense should
always be decided as a matter of law
by the judge, even though the judge
may when the defense is a question of
fact or a mixed question of law and
fact allow the jury to determine the
underlying facts relevant to the
defense in the first instance, for
example, the questions of anticipation
or obviousness); Powell, 11/14/11
(see also n.2 addressing logistics));
See also Lee, 11/21/13
(nonprecedential if the district court
decides that the infringers reliance on
a defense was not objectively
reckless, it cannot send the question
of willfulness to the jury); Harris,
1/17/13 (nonprecedential remanding
in light of Bard rule that the district
court should have reviewed the
objective prong evidence de novo)
- State of mind of the accused infringer is not

relevant to the objective inquiry of the first
prong, but is relevant to the second prong
(Advanced Fiber, 4/3/12; Ilor, 1/11/11;
Depuy Spine, 6/1/09 (ruling no willful
infringement where evidence of copying
was not relevant to the first prong, and thus
there was no need to address the second
prong under which copying is relevant, as it
may show that the accused infringer knew or
1239
should have known about the likelihood of
its infringement)))
- Evidence of copying is relevant only

to the second prong Depuy Spine
(Uniloc, 1/4/11)
- No affirmative obligation to obtain opinion of

counsel in order to avoid liability for willful
infringement (Spectralytics, 6/13/11; Voda,
8/18/08 (suggesting that evidence that accused
infringer obtained opinions of counsel showed no
objective recklessness))
- Willfulness is not an all-or-nothing trait, but one of

degree Comark (Acumed, 4/12/07)
- Equivalence requires an intensely factual inquiry

(Uniloc, 1/4/11 (reason for why the objective
prong of Seagate was not met with respect to
infringement of a means-plus-function limitation);
Depuy Spine, 6/1/09 (no willfulness despite the
jurys finding of DOE infringement, which
question was a close one and which did not
diminish the difficulty of their task, which must be
viewed objectively))
- Pre-filing vs. post-filing conduct
- Pre-filing conduct determines willfulness -

willfulness typically depends on an infringers
prelitigation conduct; a willfulness claim asserted
in the original complaint must necessarily be
grounded exclusively on the accused infringers
pre-filing conduct (In re Seagate Technology,
8/20/07 (en banc))
1240
- Post-filing conduct and PIs when an accused
infringers post-filing conduct is reckless, a
patentee can move for a PI: A patentee who does
not attempt to stop an accused infringers activities
[by filing for a PI] should not be allowed to accrue
enhanced damages based solely on the infringers
post-filing conduct; similarly, if a patentee
attempts to secure injunctive relief but fails, it is
likely the infringement did not rise to the level of
recklessness; the facts of each case are considered
when a PI is denied based on other than the first PI
factor, i.e., likelihood of success on the merits
(Powell, 11/14/11 (affirming willfulness despite
denial of PI relief); In re Seagate Technology,
8/20/07 (en banc))
- Lessened showing (i.e., vulnerability of

patent) needed to avoid PI accords with the
requirement that recklessness must be
shown to recover enhanced damages; a
substantial question about invalidity or
infringement is likely sufficient not only to
avoid a PI, but also a charge of willfulness
based on post-filing conduct (In re Seagate
Technology, 8/20/07 (en banc))
C. No affirmative duty of due care
- Seagate overruled the affirmative duty of due care set

forth in Underwater Devices, i.e., satisfied by obtaining
an exculpatory opinion of counsel (Spectralytics,
6/13/11; SEB, 2/5/10 (district court properly vacated the
jurys pre-Seagate finding of willful infringement which
was based on an affirmative duty of due care))
- Seagate did not hold that after willful infringement

is established, it is improper to consider whether
1241
the infringer exercised adequate investigation of
any adverse patents, i.e., which is one of the Read
v. Portec factors for awarding enhanced damages
(Spectralytics, 6/13/11 (vacating the district courts
denial of enhanced damages, where the district
court erred by discounting the above factor based
on Seagates abrogation of the duty of due care))
- [Old law] Actual notice vs. constructive notice (patent

marking) of infringement Actual notice of patent rights
triggers an affirmative duty of due care to avoid
infringement (NCube, 1/9/06; Imonex, 5/23/05
[overruled by In re Seagate Technology, 8/20/07 (en
banc) and replaced by the objective recklessness
standard the duty of care standard in Underwater
Devices set a lower threshold for willful infringement
that is more akin to negligence, and thus failed to
comport with the general understanding of willfulness
in the civil context, i.e., reckless behavior])
- Once have actual notice of patents, have duty of

care to investigate infringement/validity (Golden
Blount, 2/15/06; NCube, 1/9/06; Fuji Photo,
1/14/05 [overruled by In re Seagate Technology,
8/20/07 (en banc) and replaced by the objective
recklessness standard])
D. Burden of proof
- Willfulness must be proven by C&C evidence in view of

totality of the circumstances (Acco Brands, 9/12/07),
including that the defendant disregarded the patent and
lacked a reasonable basis for believing had a right to do
what it did egregious conduct required (Golden Blount,
2/15/06; NCube, 1/9/06; Norian, 4/6/04)
1242
- Threshold showing required patentee presents
threshold evidence of culpable behavior burden
then shifts to the accused infringer to show acted
with due care (Golden Blount, 2/15/06; Norian,
4/6/04 [due care standard rejected by In re
Seagate Technology, 8/20/07 (en banc)])
- Totality of the circumstances for determining

willfulness Knorr-Bremse (In re Seagate
Technology, 8/20/07 (en banc); Liquid Dynamics,
6/1/06; Golden Blount, 2/15/06; NCube, 1/9/06;
Imonex, 5/23/05; Fuji Photo, 1/14/05; Insituform
Techs., 10/4/04)
- Drawing of inferences, particularly for an

intent-implicating question such as
willfulness, is within the province of fact-
finder that observed the witnesses (Bard,
2/10/12 [vacated in part after remanded
on 6/14/12]; Liquid Dynamics, 6/1/06)
- Whether accused infringer was reasonable in

response to the patent? totality of the
circumstances examined (Union Carbide,
10/3/05 (opinion of in-house patent attorney
(with PhD in relevant technology) was not
entirely implausible thus, conduct was
not egregious or reckless such that
warranted willfulness finding))
- When act without a reasonable belief of non-

infringement (Golight, 1/20/04)
- Assurance of noninfringement from

manufacturer is not sufficient (Golight,
1/20/04)
1243
E. Read v. Portec factors (9) for assessing enhanced damages
for willful infringement
(Edwards Lifesciences, 11/13/12 (affirming no enhancement

where sufficiently close issues and defenses were not
frivolous citing Bard (enhancement of damages is not
automatic)); Bard, 2/10/12 (no abuse of discretion in doubling
damages after the district court conducted a detailed and
exhaustive review of all nine Read factors to ascertain the
infringers bad faith) [vacated in part after remanded on
6/14/12]; Powell, 11/14/11; Spectralytics, 6/13/11; Funai,
9/1/10 (no abuse of discretion in denying enhanced damages
after weighing Read v. Portec factors, and calling its decision a
close call which included DOE rather than literal
infringement of two of three patents); Liquid Dynamics, 6/1/06;
Imonex, 5/23/05; Golight, 1/20/04); See also DAMAGES
Enhanced damages 35 USC 284
- District court has broad discretion in determining the

amount of enhanced damages and attorneys fees
applies the Read v. Portec factors, e.g., defendants level
of culpability; consider totality of the circumstances
(Edwards Lifesciences, 11/13/12; Bard, 2/10/12 [vacated
in part after remanded on 6/14/12]; Powell, 11/14/11
(affirming award of enhanced damages which the district
court based on all the facts and circumstances); Funai,
9/1/10; In re Seagate Technology, 8/20/07 (en banc);
NCube, 1/9/06; Harris, 8/5/05)
- Read v. Portec factors: 1) whether the infringer

deliberately copied the ideas or design of another, 2)
whether the infringer, when he knew of the others patent
protection, investigated the scope of the patent and
formed a good-faith belief that it was invalid or
noninfringed (i.e., normally shown by obtaining advice
of counsel regarding infringement, validity), 3) the
infringers behavior as a party to the litigation, 4)
defendants size and financial condition, 5) closeness of
1244
the case, 6) duration of the defendants misconduct, 7)
remedial action by the defendant, 8) defendants
motivation for harm, and 9) whether the defendant
attempted to conceal its misconduct (Bard, 2/10/12
[vacated in part after remanded on 6/14/12];
Spectralytics, 6/13/11; Funai, 9/1/10; Liquid Dynamics,
6/1/06); See also DAMAGES Enhanced damages 35
USC 284
- When knew of the patent, whether investigated the

scope of the patent and formed a good faith belief
of invalidity and noninfringement (Spectralytics,
6/13/11 (failure to obtain an opinion of counsel or
otherwise investigate the patent situation can be
considered in the totality of the circumstances for
awarding enhanced damages); and duration of
defendants conduct (Golden Blount, 2/15/06;
Imonex, 5/23/05); See also DAMAGES
F. Knorr-Bremse (en banc)
- No adverse inference shall arise from asserting attorney-

client and/or work product privileges, or from the failure
to consult with counsel; no adverse inference that opinion
of counsel was or would have been unfavorable flows
from the alleged infringers failure to obtain or produce
an exculpatory opinion of counsel (In re Seagate
Technology, 8/20/07 (en banc)) [See also new Section
298 added in the AIA, effective 9/16/12, stating: The
failure of an infringer to obtain the advice of counsel
with respect to any allegedly infringed patent, or the
failure of the infringer to present such advice to the
court or jury, may not be used to prove that the
accused infringer willfully infringed the patent . . . .]
1245
- For willful infringement, a court must consider the
totality of the circumstances, which may include
contributions of several factors (Read v. Portec) that are
evaluated and weighed by the trier of fact (In re Seagate
- Substantial defense to infringement is not sufficient per

se to defeat liability for willful infringement, even if no
legal advice has been secured; instead, this factor is
included with others to be considered under the totality of
the circumstances (I4I, 3/10/10 (finding willfulness
despite the infringers noninfringement and invalidity
defenses, the jury was free to decide for itself whether
Microsoft reasonably believed there were any substantial
defenses to a claim of infringement citing Cohesive
Techs. and Depuy Spine); See also Black & Decker,
1/7/08 (nonprecedential - dicta - under the objective
standard of Seagate, both legitimate defenses to
infringement claims and credible invalidity arguments
demonstrate the lack of an objectively high likelihood
that a party took actions constituting infringement of a
valid patent)
- Substantial question of noninfringement under the

DOE presented (Depuy Spine, 6/1/09 (evidence of
a lack of equivalence, based on showing that the
accused conical surface achieved a rigid lock in a
different way than the claimed spherical surface,
and thus the jury could have reasonably found for
either party on the question of equivalence))
- There continues to be an affirmative duty of due care to

avoid infringement of known patent rights of others
[overruled by In re Seagate Technology, 8/20/07 (en
banc) and replaced by the objective recklessness
standard]; however, the failure to obtain an exculpatory
opinion of counsel no longer provides an adverse
inference that the opinion would have been unfavorable,
1246
and of willfulness (In re Seagate Technology, 8/20/07 (en
banc))
G. Advice of counsel defense to willful infringement
Advice of counsel defense - generally
- [N]o affirmative obligation to obtain opinion of

counsel Seagate (Spectralytics, 6/13/11; Voda,
8/18/08; Finisar, 4/18/08)
- Infringers reliance on favorable advice of counsel

is not dispositive of the willfulness inquiry
Seagate (Bard, 2/10/12) [vacated in part after
remanded on 6/14/12]
- Advice of counsel defense to willfulness requires

the court to decide, inter alia, whether counsels
opinion was thorough enough to instill a belief in
the infringer that a court might reasonably hold the
patent is invalid, not infringed, or unenforceable
(Bard, 2/10/12 (affirming willful infringement
despite opinion of counsel) [vacated in part after
remanded on 6/14/12]; In re Echostar
Communications, 5/1/06); See also Lexion
Medical, 8/28/08 (nonprecedential reliance on
oral opinion of counsel was not objectively
reckless)
- Opinion not based on the best available

evidence (Bard, 2/10/12 (opinion excluded
available evidence relevant to invalidity
defenses) [vacated in part after remanded
on 6/14/12])
- Opinion of counsel need not address both

infringement and validity to avoid
willfulness; competent opinion of counsel
1247
that the accused infringer does not infringe
or that the patent is invalid provides a
sufficient basis to proceed without engaging
in objectively reckless behavior (Finisar,
4/18/08)
- Favorable opinions of counsel normally

present a well-grounded defense to
willfulness, but the protection they afford is
not absolute; those cases where willfull
infringement is found despite an opinion of
counsel are generally where the opinion was
either ignored or found to be incompetent
(Bard, 2/10/12 (opinion of counsel did not
avoid willfulness finding by the jury where
it was not based on an objective perspective
and the invalidity arguments therein were
directly contrary to the arguments made
previously to the PTO) [vacated in part
after remanded on 6/14/12]; Acumed,
4/12/07)
- Reliance on opinion of counsel must rely

on opinion in good faith, i.e., as legitimate
advice as to whether infringement if not,
willful infringement can be found (Acumed,
4/12/07; Golden Blount, 2/15/06; Applied
Medical Resources, 1/24/06)
- Whether an infringer ignored the

opinion of counsel is, as part of the
willfulness inquiry, a question of
degree; evidence of the extent of that
ignorance is weighed by the fact
finder together with the totality of the
other circumstances surrounding the
infringers culpability (Acumed,
4/12/07)
1248
- Offered advice or opinion is advice of
counsel or an opinion of counsel whether
from in-house or outside counsel use of in-
house counsel may affect the strength of the
defense, but does not affect the legal nature
of the advice (In re Echostar
Competent opinion of counsel
- Opinion counsel needs independent verification for

arguments client must convey accurate
information to opinion counsel (Liquid Dynamics,
6/1/06; Harris, 8/5/05)
- Incompetent opinion fact finder may

discount its usefulness in determining a
partys good faith (Liquid Dynamics,
6/1/06)
- Opinion of counsel flawed for failure to

provide best information to opinion counsel
(Liquid Dynamics, 6/1/06; NCube, 1/9/06)
- Review of PH, examination of accused product

required (Golden Blount, 2/15/06)
- Inference of reckless conduct in absence of

competent opinion of counsel - Knorr-Bremse (en
banc) no adverse inference rule applied when
privilege asserted; vs. when privilege not asserted,
the patentee in making a threshold showing of
culpable conduct is free to introduce as evidence
whatever opinions were obtained and challenge
their competence; consider all facts in assessing
whether the accused infringer acted in reckless
1249
disregard of the patentees rights assertions that
the accused infringer subjectively did not believe it
was infringing are insufficient to rebut an
inference of reckless conduct, as supported by the
facts, including the absence of a competent opinion
of counsel (Golden Blount, 2/15/06)
When opinion of counsel obtained
- Failure to obtain legal advice until after suit filed

(when previously knew about patents) too late to
exercise duty of due care? [Old rule] (In re
Seagate Technology, 8/20/07 (en banc); Imonex,
5/23/05)
- Reliance on opinions of counsel after

litigation was commenced (although the
reasoning contained in those opinions
ultimately may preclude the accused
infringers conduct from being considered
reckless if infringement is found) will
likely be of little significance (In re Seagate
- Accused infringer failed to obtain a

written opinion of counsel for two and
a half years after notice of patent, and
then obtained the opinion only after
suit was filed, and only to avoid a
finding of willfulness and attorney
fees, and was not concerned about
paying infringement damages =
evidence of willfulness (Golden
Blount, 2/15/06)
- Opinion of counsel obtained after suit

filed, and the accused infringer did
1250
not rely on the opinion in good faith =
willfull infringement (Aero Products,
10/2/06)
- Failure to obtain formal opinion of counsel after

becoming aware of patent no adverse inference
drawn Knorr-Bremse (Union Carbide, 10/3/05)
- Obtaining an early opinion of counsel strengthens

argument of no willful infringement (Imonex,
5/23/05)
- Timely consultation with counsel may be

evidence that an infringer did not engage in
objectively reckless behavior (Spectralytics,
6/13/11 (citing Aspex rule); Aspex Eyewear,
5/24/10 (equitable estoppel at issue))
- Opinions of counsel obtained early and at

different times (On Demand Machine,
3/31/06)
Scope of waiver of attorney-client privilege and attorney

work-product immunity Seagate, Echostar
In In re Seagate Technology, 8/20/07, the en banc court

held that asserting the advice of counsel defense and disclosing
the opinions of opinion counsel do not constitute waiver of the
attorney-client privilege for communications with trial counsel
or work product immunity with respect to trial counsel. Trial
courts, however, remain free to exercise their discretion in
unique circumstances to extend waiver to trial counsel, such as
if a party or its counsel engages in chicanery.
***What the court did not address, at least expressly, was

the scope of waiver for trial counsel who (or his or her law
firm) also is opinion counsel. Indeed, the court stated that
1251
there was no dispute that Seagates opinion counsel operated
separately and independently of trial counsel at all times. The
court thus left this issue for the trial courts to decide.
Generally
- Attorney-client privilege belongs to the

client, who alone may waive it (In re
Seagate Technology, 8/20/07 (en banc))
- Attorney-client privilege and work product

immunity are two distinct concepts and
waiver of one does not necessarily waive the
other (In re Echostar Communications,
5/1/06)
Scope of waiver of attorney-client privilege
- Scope of waiver of attorney-client privilege

extends to any attorney-client
communication, at any time (In re Echostar
Communications, 5/1/06 [modified by In re
Seagate Technology, 8/20/07 (en banc)
waiver does not extend to trial counsel,
absent unique circumstances])
- Broad scope of waiver - when assert

reliance on advice of counsel,
attorney-client privilege is waived
with regard to any attorney-client
communication relating to the same
subject matter of the opinion; waiver
also extends to advice and work
product given to the client after the
litigation began, so long as ongoing
infringement is at issue in the
1252
litigation (In re Echostar
Communications, 5/1/06 [modified
by Seagate see above])
Scope of waiver of attorney work-product immunity
- Narrow scope of waiver work-product

waiver extends only so far as to inform the
court of the infringers state of mind it is
what the alleged infringer knew or believed,
vs. work product never communicated to
client is not discoverable under FRCP
26(b)(3), this opinion work product
deserves the highest protection from
disclosure (In re Seagate Technology,
8/20/07 (en banc) (citing Echostar); In re
Echostar Communications, 5/1/06 [modified
by Seagate, as relates to trial counsel no
waiver see above])
- Waiver also extends to documents that

reference and/or describe a communication
between the attorney and client (i.e,
documents memorializing attorney-client
communications), but were not themselves
actually communicated to the client (In re
Seagate Technology, 8/20/07 (en banc)
(citing Echostar); In re Echostar
Communications, 5/1/06 [modified by
Seagate, as relates to trial counsel no
waiver see above])
- Documents (of opinion counsel) can

be redacted to the extent they contain
work product not communicated to
the client (In re Echostar
1253
Opinion counsel vs. litigation (trial) counsel - Seagate
- Opinion counsel - scope of waiver

Echostar waiver rules (above) apply
- In-house opinion counsel same

scope of waiver (In re Seagate
Technology, 8/20/07 (en banc) (citing
Echostar); In re Echostar
- Litigation (trial) counsel no waiver
- Echostar did not consider waiver as it

relates (specifically) to trial counsel
(In re Seagate Technology, 8/20/07
(en banc))
- Asserting the advice of counsel

defense and disclosing opinions of
opinion counsel do not constitute
waiver of the attorney-client privilege
for communications with trial
counsel; also not a waiver of the work
product immunity of trial counsel,
absent exceptional circumstances (i.e.,
FRCP 26(b)(3) (need and undue
hardship factual work product vs.
attorneys mental processes);
Hickman v. Taylor (S.C.) protects
nontangible work product, e.g.,
attorneys testimony); however, trial
courts remain free to exercise their
discretion in unique circumstances to
extend waiver to trial counsel, such as
if a party or its counsel engages in
1254
chicanery (In re Seagate Technology,
8/20/07 (en banc))
- Significantly different functions

of trial counsel and opinion
counsel advise against
extending waiver to trial
counsel; whereas opinion
counsel serves to provide an
objective assessment for
making informed business
decisions, trial counsel focuses
on litigation strategy, evaluates
the most successful manner of
presenting a case to a judicial
decision maker, and is engaged
in an adversarial process;
because of these differences,
the classic sword and shield
concerns typically mandating
broad subject matter waiver are
not presented (In re Seagate
Technology, 8/20/07 (en banc)
(also citing Hickman v. Taylor
(S.C.) and the need to protect
trial counsels thoughts))
- Willfulness typically depends on an

infringers prelitigation conduct
another reason for not extending
waiver to trial counsel (In re Seagate
- Litigation counsel and opinion counsel in

the same firm [not addressed by Seagate]
- Opinion written by attorney in the

same firm that litigated for the
1255
patentee no bad faith in asserting the
patent (Brooks Furniture, 1/4/05)
VII. REMEDIES
A. DAMAGES 35 USC 284
(Integrated Tech., 11/4/13 (upholding jurys award of lost profits

damages for literal infringement); Versata Software, 5/1/13 (affirming
jurys $345 million damages award based on lost profits and
reasonable royalty as supported by sufficient evidence); Power
Integrations, 3/26/13 (rejecting the patentees foreseeability
argument for compensatory damages for worldwide sales, based on
the principle that it is axiomatic that U.S. patent law does not operate
extraterritorially to prohibit infringement abroad (citing S.C. cases)
the patent laws allow specifically damages adequate to compensate
for the infringement (35 USC 284), and thus do not thereby provide
compensation for the defendants foreign exploitation of a patented
invention, which is not infringement at all); Synqor, 3/13/13
(affirming $95 million in lost profits damages); Presidio Components,
12/19/12 (lost profits damages); ePlus, 11/21/12 (no abuse of
discretion by excluding damages expert testimony that was based on
flawed and unreliable methodology); Edwards Lifesciences, 11/13/12
(affirming jurys damages award of over $72 million in lost profits
and over $1 million as a reasonable royalty); Energy Transportation
Group, 10/12/12 (rejecting new trial on damages based on the district
courts admission of damages evidence, affirming lump sum
reasonable royalty award based on experts testimony and analysis);
K-Tec, 9/6/12 (affirming denial of JMOL on damages and the jurys
$11 million in reasonable royalty and lost profits damages, where the
patentee provided adequate notice of infringement); LaserDynamics,
8/30/12; ActiveVideo Networks, 8/24/12; Whitserve, 8/7/12 (vacating
and remanding the jurys reasonable royalty damages award, which
was not supported by substantial evidence where the patentees
experts testimony regarding royalty rate did not support the verdict
because was conclusory and speculative); Marine Polymer, 3/15/12
(en banc) (affirming $29.4 million jury damages award based on
reasonable royalty); Powell, 11/14/11 (jurys (use-based) reasonable
1256
royalty award was supported by substantial evidence, including cost
savings and other benefits to the infringer); Sanofi-Aventis, 10/18/11
(reversing the district courts award of prejudgment interest where the
amount of actual damages agreed to in settlement agreement
included such interest; see also J. Newman, dissenting); Spectralytics,
6/13/11; Siemens, 2/24/11 (lost profits damages); Uniloc, 1/4/11
(granting the accused infringer a new trial on damages, while rejecting
the 25 percent rule of thumb for determining a reasonable royalty, and
reaffirming use of G-P factors) [petition for rehearing en banc was
denied on 5/16/11; J. OMalley dissented from the denial of the
petition; the CAFC permitted ten damages experts, all appearing
pro se, to file an amici curiae brief]; Finjan, 11/4/10; Funai, 9/1/10
(affirming jury damages award based on lost profits); Wordtech
Systems, 6/16/10 (reversing the jurys reasonable royalty damages
verdict which was based on speculative evidence relating to the G-P
factors, including a hypothetical negotiation, the patentees prior
licenses to the patent, and the infringers sales revenues and profits);
Fujifilm, 5/27/10 (affirming the jurys reasonable royalty award); *i4i,
3/10/10 (affirming the jurys $200 million reasonable royalty damages
award, based on a detailed explanation by the patentees damages
expert that was based on a hypothetical negotiation and several of the
G-P factors); Resqnet.com, 2/5/10 (vacating a reasonable royalty-
based damages award that was based on royalties received by the
patentee from other licenses (first G-P factor), where most of the
licenses were unrelated to the claimed invention and thus the district
courts award relied on speculative and unreliable evidence divorced
from proof of economic harm linked to the claimed invention; see
also J. Newman, dissenting the damages award was properly based
on undisputed and extensive testimony by the patentees expert, who
considered all of the relevant G-P factors); *Lucent, 9/11/09 (vacating
the jurys excessive award of reasonable royalty damages where
damages calculation lacked sufficient evidentiary support; addressing
damages apportionment where the infringed patented invention was
only a small component of the much larger software product sold);
Depuy Spine, 6/1/09 (lost profits); Revolution Eyewear, 4/29/09
(jurys damages award based on a reasonable royalty was reasonable);
Minks, 10/17/08 (jurys award of reasonable royalty damages);
Cohesive Techs., 10/7/08 (lost profits); Mars, 6/2/08 (lost profits and
1257
reasonable royalty damages); Verizon, 9/26/07 (jury apportionment);
Mitutoyo, 9/5/07; Monsanto, 5/24/07; Aero Products, 10/2/06;
Glenayre Electronics, 4/11/06; Golden Blount, 2/15/06; Union
Carbide, 10/3/05; MEMC Electronic, 8/22/05; Imonex, 5/23/05; Fuji
Photo, 1/14/05; Poly-America, 9/14/04; Juicy Whip, 9/3/04; Norian,
4/6/04; Golight, 1/20/04; Dow, 9/5/03; Ericsson, 12/9/03; Ferguson,
12/4/03; State Contracting, 10/7/03; Rhone-Poulenc, 9/29/03; Integra,
6/6/03); See also Calico, 7/18/13 (nonprecedential vacating lost
profits damages award where not proven, but reinstating reasonable
royalty award); Heeling Sports, 4/3/09 (nonprecedential reasonable
royalty damages)
Damages - generally
Damages in patent infringement cases - 35 USC 284, 286
- Upon finding for the claimant the court shall award the
claimant damages adequate to compensate for the
infringement, but in no event less than a reasonable
royalty for the use made of the invention by the infringer,
together with interest and costs as fixed by the court.
35 USC 284 (Transocean, 11/15/12; Whitserve, 8/7/12
(n.18: addressing improper statements the patentees
counsel made during closing argument, stating that the
purpose of damages is not to punish the infringer, e.g.,
award litigation costs, but to make the patentee whole);
Sanofi-Aventis, 10/18/11 (see also J. Newman,
dissenting); Spectralytics, 6/13/11; Siemens, 2/24/11;
Uniloc, 1/4/11; Wordtech Systems, 6/16/10 (reasonable
royalty); Resqnet.com, 2/5/10; *Lucent, 9/11/09; Depuy
Spine, 6/1/09 (not deciding whether an otherwise
untimely inconsistency objection to a jury verdict
regarding reasonable royalty damages can be saved by
the statutory damages floor of Section 284, where the lost
profits damages awarded exceeded the alternative request
for reasonable royalty damages); Revolution Eyewear,
4/29/09 (jury damages award of $4.3 million was
reasonable, stating that a damages award based on a
1258
reasonable royalty rate is only the floor, not the exact
amount); Minks, 10/17/08; Mars, 6/2/08); See also
Adams & Assocs., 3/18/13 (nonprecedential patentee
unable to recover for infringement, where the alleged
infringing acts occurred more than six years before filing
the complaint; also stating the test under Section 286,
citing Standard Oil); Kippen, 8/2/12 (nonprecedential
damages not awarded for infringements occurring more
than six years before filing the complaint Section 286);
Tiger Team Techs., 4/12/10 (nonprecedential sum
certain); Gentile, 4/6/10 (nonprecedential effect of a
prior settlement on damages); Heeling Sports, 4/3/09
(nonprecedential vacating and remanding where the
district court failed to explain its basis for the damages
award based on a reasonable royalty, and stating: The
question to be asked in determining damages is how
much had the Patent Holder and Licensee suffered by the
infringement. And that question is primarily: had the
Infringer not infringed, what would the Patent Holder-
Licensee have made? King Instruments)
- General issue of determining damages, at least for

competitors had the infringer not infringed, what
would the patent holder have made? Aro Mfg.
(S.C.); the purpose of compensatory damages is
not to punish the infringer, but to make the
patentee whole Pall Corp. (Sanofi-Aventis,
10/18/11 (reason for why pre-judgment interest is
also awarded under Section 284);*Lucent, 9/11/09)
- Damages award split between lost profits as actual

damages to the extent they are proven and a
reasonable royalty for the remainder Rite-Hite
(Siemens, 2/24/11 (district court legally erred by
eliminating the jurys lost profits award on
infringing products made but not sold, without
then determining an appropriate measure of
damages (reasonable royalty) for those products))
1259
- Damages inquiry, at all times, must concentrate on
compensation for the economic harm caused by
infringement of the claimed invention Aro Mfg. (S.C.);
any evidence unrelated to the claimed invention does not
support compensation for infringement but punishes
beyond the reach of the statute (Resqnet.com, 2/5/10
(rejecting the patentees reliance on royalties received
from other licenses (first G-P factor) to support a
reasonable royalty damages award where the licenses
were different from the hypothetical license to the
claimed method, and thus were problematic for the same
reasons that doomed the damage award in Lucent; see
also J. Newman, dissenting was improper for the
majority to have completely rejected the patentees
existing licenses, as supported by unrebutted testimony
from the patentees expert, as relevant evidence for
calculating a reasonable royalty))
- Correct measure of damages is a highly case-specific and

fact-specific analysis (Minks, 10/17/08 (proper amount of
reasonable royalty damages were fact questions for the
jury); Mars, 6/2/08)
- District court judge as the gatekeeper of the

damages evidence the responsibility for
objecting to evidence remains with the parties
(*Lucent, 9/11/09 (infringer waived any objection
on appeal to evidence admitted where failed to
object at trial))
- District court must explain the basis for arriving at

the damages award, to enable appellate review
(Heeling Sports, 4/3/09 (nonprecedential remand
was necessary to avoid speculation as to the
methodology used and making determinations that
should be made in the first instance by the district
court)
1260
- Jurys royalty award must be within the range
encompassed by the record as a whole; the jury
may choose an intermediate royalty rate from that
proffered by a partys expert (Versata Software,
5/1/13 (jurys $85 million reasonable royalty
award was supported by the record as a whole);
Powell, 11/14/11 (affirming the jurys intermediate
royalty rate and damages award); Spectralytics,
6/13/11)
- Patentee may obtain damages only for acts of

infringement after patent issuance (Welker Bearing,
12/15/08)
- Mere possession of a product which becomes

covered by a subsequently issued patent does not
infringe the patent until the product is used, sold,
or offered for sale in the U.S. during the term of
the patent Johns Hopkins (Welker Bearing,
12/15/08 (ruling that the accused infringer did not
have to prove it retracted any offer for sale made
prior to patent issuance))
- Infringer may be liable for damages that exceed the

amount that the infringer could have paid to avoid
infringement (Mars, 6/2/08)
Broad damages language of 35 USC 284
- Adequate damages in 284 means (and what Congress

sought in enacting the statute) that adequate damages
should approximate those damages that will fully
compensate the patentee for infringement Rite-Hite
([T]he language of the statute is expansive rather than
limiting. It affirmatively states that damages must be
1261
adequate, while providing only a lower limit and no other
limitation) (Mars, 6/2/08)
- Damages possible other than lost profits and reasonable

royalty? - despite the broad damages language of 284,
patentees try to fit their damages cases into the lost
profits framework, or else fall back on the statutory
grant of the reasonable royalty; however, lost profits is
not the only way to fully compensate the patentee
under 284 (Mars, 6/2/08 (the CAFC did not consider
other damages theories for the economic injury the parent
company suffered as a result of its wholly owned
subsidiarys lost sales after the patentee had stipulated
that it would not pursue damages other than lost profits
and reasonable royalty))
- Compensatory damages in addition to a reasonable

royalty may be awarded - Maxwell (Whitserve,
8/7/12 (no evidence presented to jury by the
patentee to support a higher award))
Apportionment of damages
- Damages apportionment necessary where the infringed

patented invention is only a small component of the
product sold (LaserDynamics, 8/30/12; *Lucent, 9/11/09
(new trial on damages ordered where the jurys award
was excessive compared to the much smaller value
provided by the patented component as part of a larger
software program))
- Jury apportionment necessary, or new trial required

where jurys single verdict on damages does not break
down the damages attributable to each patent-in-suit, the
normal rule requires a new trial on damages Memphis
Cmty. (S.C.); NTP (ActiveVideo Networks, 8/24/12
(affirming the jurys damages award in full where the
1262
infringer did not argue to the district court or on appeal
for a reduction of damages if one of the patents was
found not to be infringed); Verizon, 9/26/07; see also
C.J. Michel, dissenting When the evidence shows that
each of the accused products infringes all of the patents-
in-suit, and the infringer fails to make any showing on
appeal that the damages award would not be supported
by only those patents for which liability was affirmed,
the damages award must be affirmed despite the CAFCs
reversal of part of the infringers liability; remanding
simply to reconfirm that the damages award is supported
by the patents for which liability was affirmed imposes
unnecessary costs on litigants and wastes judicial
resources)); See also Accentra, 1/4/13 (nonprecedential
vacating the district courts and jurys damages award,
which was based on infringement of all three patents in
suit, and remanding so that the district court could revisit
the damages issue based on its reevaluation of liability
with respect to two of the patents for which the CAFC
vacated the judgments of infringement)
- Damages award affirmed when damages

calculation at trial was not predicated on the
infringement of particular claims of the patent in
suit, only some of which were infringed (Tivo,
1/31/08)
- 271(f) damages vs. 271(a) damages separating the

two in damages calculation (Z4 Technologies, 11/16/07
(accused infringer did not define 271(f) issues))
Damages award for past infringement
- Damages award for particular infringing acts, unlike a

comprehensive license, does not automatically entitle the
infringer or others to continue infringing conduct in the
1263
form of additional sales or uses throughout the patent life
Double damages are not recoverable
- Double damages are not recoverable (Transclean,

1/18/07; Aero Products, 10/2/06; Glenayre Electronics,
4/11/06; Imonex, 5/23/05)
- Acceptance of damage award forecloses patentee

from the opportunity of obtaining a second bite at
the apple to hold otherwise would be to
empower a patentee to obtain new trials against the
same party where it could relitigate issues
regarding damages that it lost in previous trials
- Once fully compensated (35 USC 284

damages shall be adequate to compensate
for the infringement) for infringement (e.g.,
by direct infringer), patentee cannot bring
infringement action against joint-tortfeasor
(indirect infringer) e.g., patentee is
precluded from suing to collect damages for
direct infringement by buyers, users of
patented product when (full) actual damages
covering the same use have already been
collected from the maker, seller of the
product the patentee effectively adopts the
sales by the manufacturer such that buyers,
users receive implied licenses (analogous to
first sale doctrine) that free them from
liability for (past) patent infringement
- Each joint tortfeasor is liable for the

full amount of damages (up to a single
1264
recovery) suffered by the patentee
(Transclean, 1/18/07)
- Test to determine whether party has

been fully compensated =
compensation received must be
compared to amount of money
patentee would have made had
infringer not infringed (Glenayre
- Doctrine of full compensation - although

multiple suits against joint tortfeasors are allowed
(e.g, manufacturers and sellers vs. users of
infringing product), multiple (i.e., double)
recoveries of damages are not allowed Birdsell
(S.C.) (Transclean, 1/18/07)
- Patentee may not sue users of an infringing

product for damages if he has already
collected actual damages from a
manufacturer or seller, and those damages
fully compensate the patentee for
infringement by users Birdsell (S.C.),
Glenayre Elecs. (Transclean, 1/18/07)
- Patent damages (35 USC 284) vs. trademark

damages (15 USC 1117(a)) double recovery is
impermissible; when damages flow from the same
operative facts (e.g., sales of infringing product);
when claims arise out of the same operative facts,
only one recovery allowed (Aero Products,
10/2/06)
Liability of joint-tortfeasors
1265
- Each joint-tortfeasor is liable for the full amount of
damages up to full, single recovery; may be as many
causes of action (e.g., direct infringement by maker,
seller; inducing and contributory infringements; direct
infringement by customers) as there are joint-tortfeasors
Shockley (Sanofi-Aventis, 10/18/11 (defendants were
jointly and severally liable for damages based on the
terms of a settlement agreement with the patentee);
Glenayre Electronics, 4/11/06)
Successor liability
- Successor corporation liable for its predecessors

infringement (damages)? (Funai, 9/1/10 (applying New
Jersey law, based on California choice of laws rules, in
holding a successor U.S. corporation liable for
infringement damages resulting from a default judgment
against its U.S. predecessor corporation))
Burden of proving damages, expert testimony
- Burden of proving damages falls on the patentee

(Transocean, 11/15/12; Whitserve, 8/7/12; Uniloc,
1/4/11; Resqnet.com, 2/5/10 (absence of expert testimony
to rebut the patentees expert was not determinative
where the patentee relied on inapposite licenses to
support the royalty award; see also J. Newman,
dissenting citing the infringers failure to rebut the
patentees expert with expert testimony); *Lucent,
9/11/09 (the patentee had the burden to prove that the
extent to which the infringing method had been used as
part of a larger software program supported the jurys
lump-sum damages award; concluding that the jurys
excessive damages award was not supported by
substantial evidence, as was based mainly on
speculation or guesswork)); See also In re Electro-
1266
Mechanical Indus., 12/22/09 (nonprecedential patentee
failed to show damages related to the manufacture of
infringing products, stating that the amount of damages is
a finding of fact on which the plaintiff bears the BOP by
a preponderance of the evidence)
- Expert testimony in determining damages, a jury

may rely on expert testimony 35 USC 284;
district courts, as gatekeepers, must ensure that all
expert testimony is reliable must be the product
of reliable principles and methods applied to
sufficient facts or data, and be rooted in firm
scientific or technical ground FRE 702, 703,
Daubert (S.C.) (Power Integrations, 3/26/13
(damages experts testimony was unreliable in
several respects, including the source and
reliability of documents and data the expert relied
upon, as well as the experts methodology based
on assumptions made from the documents and data
which were speculative); See also DISTRICT
COURT PRACTICE AND PROCEDURE . . .
Expert testimony . . .
- While an experts data need not be

admissible under FRE 703, the data cannot
be derived from a manifestly unreliable
source (Power Integrations, 3/26/13 (sales
data obtained from the internet was
unreliable))
- Patentee must sufficiently tie the expert testimony

on damages (i.e., theory on damages) to the facts
of the case - if not, the testimony is excluded
Daubert (S.C.) (Power Integrations, 3/26/13
(expert opinion was unreliable where derived from
unreliable data and built on speculation, and thus
was too far removed from the facts of the case,
stating that [s]uch unreliable testimony frustrates
1267
a primary goal of expert testimony in any case,
which is meant to place experience from
professional specialization at the jurys disposal,
not muddle the jurys fact-finding with
unreliability and speculation); ePlus, 11/21/12
(district court properly excluded expert testimony
under Daubert (S.C.), where the testimony was
based on a flawed and unreliable methodology
using past settlement and license agreements);
ActiveVideo Networks, 8/24/12 (rejecting the
exclusion of expert testimony under FRE 702 and
Daubert (S.C.), where the infringers disagreement
was with the facts and assumptions underlying the
experts conclusions (on, e.g., degree of
comparability of license agreements), and not his
methodology, and thus went to the weight, not
admissibility, of the testimony); Whitserve, 8/7/12
(patentees experts reasoning regarding the
royalty base was not impermissible speculation,
citing rule from i4i that cross examination and
presenting contrary evidence are means for
attacking the patentees evidence); Uniloc, 1/4/11
(to be admissible, expert testimony opining on a
reasonable royalty rate must carefully tie proof of
damages to the claimed inventions footprint in the
market place - ResQNet))
- Any evidence unrelated to the claimed

invention does not support compensation for
infringement but punishes beyond the reach
of Section 284 ResQNet.com (Uniloc,
1/4/11)
- Show amounts attributable to the defendant with

reasonable certainty; proximate cause defined
(Microstrategy, 11/17/05); See also Cardiac
Pacemakers, 12/18/08 (nonprecedential damages
1268
limited to devices shown to practice the asserted
method claim)
- Expert testimony is unnecessary - 284

(Resqnet.com, 2/5/10 (expert testimony was not
needed to rebut the patentees expert where the
patentee failed to meet its burden for proving a
reasonable royalty); Dow, 9/5/03)
Marking/Notice of infringement for recovering damages 35 USC

287(a)
(Power Integrations, 3/26/13 (pre-notice price erosion of the

patented product was included in determining damages for
post-notice infringement); Frolow, 3/15/13 (marking estoppel
issues created genuine issues of material fact to preclude SJ that
accused products were not within the scope of the patent
claims); K-Tec, 9/6/12 (scope of adequate notice of
infringement by product covered later related product citing
Funai); ActiveVideo Networks, 8/24/12 (marking does not
apply to method patents); Monsanto, 9/21/11 (notice of actual
infringement was given in a letter where was an affirmative
communication to the alleged infringer of a specific charge of
infringement by a specific accused product or device and was
sufficiently specific to support an objective understanding that
the recipient may be an infringer Gart, Funai ); Fujitsu,
9/20/10 (marking statute is inapplicable to process claims);
Funai, 9/1/10 (discussing actual and constructive notice of
infringement; see also J. Linn, concurring would not have
addressed constructive notice as related to OEMs, based on the
limited record); SEB, 2/5/10; Crown Packaging, 3/17/09
(marking requirement of Section 287(a) did not apply where the
patentee only asserted the method claims of a patent which
included both method and apparatus claims -- bound by
Hanson); Minks, 10/17/08 (improper jury instruction regarding
actual notice requirement, which precluded the jury from
finding notice prior to when the patentee learned of the
1269
infringement); DSW, 8/19/08 (the purpose of the actual notice
requirement is to provide protection against deception by
unmarked patented articles Wine Railway (S.C.)); Honeywell
Intl, 4/18/08 (noninfringement mooted the district courts
holding that product should have been marked with a method
patent); U.S. Philips, 11/2/07; Kemin Foods, 9/25/06; Syngenta
Seeds, 7/28/06; Gemmy Indus., 6/22/06; Clontech, 5/5/05;
Sentry, 3/11/05; State Contracting, 10/7/03)
- Generally a patentee that sells its patented product

within the United States must, under Section 287(a),
provide actual or constructive notice of the patent to the
accused infringer to qualify for damages - Sentry (K-Tec,
9/6/12; ActiveVideo Networks, 8/24/12; Monsanto,
9/21/11; Funai, 9/1/10; SEB, 2/5/10)
- Party (i.e., the patentee or its licensee) that does

not mark a patented article is not entitled to
damages for infringement prior to actual notice
(Power Integrations, 3/26/13; Funai, 9/1/10;
Crown Packaging, 3/17/09)
- Damages for post-notice infringement

assessed when infringement began - while
the marking statute precludes recovery of
damages for pre-notice infringement,
damages for post-notice infringement are
assessed relative to market conditions at the
point in time when infringement began; the
infringers pre-notice infringement is part of
the whole infringement, and it is the whole
infringement that must be considered in
calculating damages for legally compensable
post-notice infringement - citing Wang Labs
(Power Integrations, 3/26/13 (the basis for
including price erosion of the patented
product caused by pre-notice infringement
1270
in the calculation of damages for post-notice
infringement))
- Actual notice under 287(a) requires the affirmative

communication of a specific charge of infringement of
specific patents by a specific accused product or group of
products Amsted, SRI Intl (K-Tec, 9/6/12 (applying
Funai rule below); Monsanto, 9/21/11; Funai, 9/1/10
(adding that when the threshold specificity is met, the
ensuing discovery of other models and related products
may bring those products within the scope of the
notice); Minks, 10/17/08 (in context of the ongoing
relationship between the parties, knowledge of a specific
infringing device was not a legal prerequisite to finding
actual notice); U.S. Philips, 11/2/07)
- Notice of who owns patent the actual notice

requirement demands notice of the patentees
identity as well as notice of infringement, and that
the notice must arise by an affirmative act on the
part of the patentee which informs the defendant
of infringement Lans, Amsted (U.S. Philips,
11/2/07 (letter sent by company related to patentee,
which was responsible for enforcing and licensing
patentees patents, provided sufficient notice))
- When copy of patent included with notice

letter, and face of patent contains correct
assignment information, the accused
infringer is sufficiently put on notice of the
patentees identity (U.S. Philips, 11/2/07)
- Specific charge of infringement standard under

the standard, general letters referring to the patent
and including an admonishment not to infringe do
not constitute actual notice, vs. letters that
specifically identify a product and offer a license
1271
for that product do constitute actual notice (Minks,
10/17/08)
- Unqualified charge of infringement not

necessary for a specific charge of
infringement for providing actual notice
Gart (Minks, 10/17/08 (qualified charge of
infringement, based on how the accused
product was used))
- Recovery of damages for patent infringement patentee

bears the burden of pleading and proving either actual or
constructive notice to the infringer that the article is
patented; once adequate notice is given, the defendant is
liable for any infringement proven after the date of the
letter (Minks, 10/17/08; U.S. Philips, 11/2/07; Syngenta
Seeds, 7/28/06; Sentry, 3/11/05)
- Constructive notice by the patentee consistently

marking substantially all of its patented products
(Funai, 9/1/10 (a rule of reason is applied when
others than the patentee (e.g., licensees) are
involved in sales to the public Maxwell; see also
J. Linn, concurring would not have addressed
constructive notice as related to unmarked sales
through the patentees OEMs, where the record
was limited on the differences between licensees
and OEMs, and substantial evidence otherwise
supported the jurys damages verdict); SEB, 2/5/10
(the record supplied sufficient evidence to support
the jurys conclusion that the patentee consistently
marked substantially all of its patented deep
fryers); Sentry, 3/11/05)
- Infringement mooted when insufficient notice, and

thus not able to recover damages (Sentry, 3/11/05)
1272
- Patentee may recover damages for infringement
that continues after actual notice is provided
Wine Railway (S.C.); without a doubt, the law
offers an infringer no exception to liability for the
time it takes to terminate infringing activities, no
matter how expeditious and reasonable its efforts
(DSW, 8/19/08 (ruling that damages were owed
for the 6-7 months of continued infringement after
receiving notice while phasing out the accused
product; contrasting infringement, a strict liability
offense, from whether enhanced damages are
warranted, for which the nature of the offense is
relevant Seagate))
- Pleading notice (Sentry, 3/11/05)
- Method patents the marking requirement of Section

287(a) does not apply to method patents (ActiveVideo
Networks, 8/24/12 (marking does not apply to method
patents, rejecting argument that should apply to method
patent reciting a method of using an apparatus claimed in
other patents); Fujitsu, 9/20/10 (district court erred by
limiting damages under Section 287 where all patent
claims were method claims); Crown Packaging, 3/17/09;
Honeywell Intl, 4/18/08 (noninfringement mooted the
district courts holding that product should have been
marked with both a method patent and systems patent
where both patents referred to the same tangible
product); State Contracting, 10/7/03)
- Marking requirement also does not apply where

the patentee only asserts the method claims of a
patent which includes both method and apparatus
claims - Hanson (Crown Packaging, 3/17/09)
- Doctrine of marking estoppel (recognized by some

circuits, but not adopted or approved by the Supreme
Court), a party that marks it products with a patent
1273
number is estopped from asserting that its product is not
covered by the patent - SmithKline (Frolow, 3/15/13
(declining to create a separate, equitable doctrine unique
to patent law, but agreeing that the fact of marking
accused products with a patent number supported the
patentee-licensors allegation that the marked products
fell within the scope of the licensed patent claims,
because the practice of marking a product with a patent
number is a form of extrajudicial admission of fact that
the marked product falls within the scope of the patent
claims; also relying on AIA amendments to the false
marking statute))
- No marking estoppel = extrinsic evidence,

especially if conflicts with intrinsic evidence
False marking 35 USC 292
- False marking 35 USC 292 2 elements of

claim: 1) marking an unpatented article, and 2)
intent to deceive the public Clontech (Brooks,
12/13/12; Juniper Networks, 4/29/11 (affirming
dismissal of false marking claim which did not
reasonably allege an unpatented article under
Section 292); Stauffer, 8/31/10 (CAFC not
deciding the constitutionality of Section 292
(under the take Care clause of Article II, section
3 of the Constitution) where the issue was not
raised or argued by the parties); Forest Group,
12/28/09); See also Rogers, 5/2/12 (Order)
(nonprecedential retroactive amendment to the
false marking statute in the AIA is constitutional)
- AIA amendments to Section 292

retroactive competitive injury required for
violation of Section 292(b) (Hall, 1/25/13
1274
(affirming dismissal of false marking claim
based on patent pending label where no
competitive injury pled))
- Standing to sue [Old law] any person

under Section 292 has standing to bring a
qui tam false marking claim on behalf of the
government, regardless of whether the
plaintiff has suffered any individual injury,
i.e., as the governments implicit assignee of
the action, damages claim, to recover for
injury, i.e., the governments interest in
enforcing its laws when not obeyed
standing does not depend upon the alleged
injury to the U.S. being a proprietary, rather
than (purely) sovereign, injury - Vermont
Agency (S.C.) (Presidio Components,
12/19/12 (retroactive amendments under the
AIA to Section 292(a) applied to appeal, and
thus only the United States was allowed to
bring a false marking claim; not reaching the
question of a Section 292(b) claim, which
the district court had not yet addressed in the
first instance); Brooks, 12/13/12 (holding
that Congresss retroactive elimination of
the qui tam provision from Section 292(b)
under the AIA does not violate the Due
Process Clause or the Intellectual Property
Clause of the Constitution); Juniper
Networks, 4/29/11 (plaintiff had standing to
bring qui tam action because the U.S. suffers
an injury when the false marking statute is
violated - Stauffer); Stauffer, 8/31/10) [On
9/16/11, the Leahy-Smith America
Invents Act amended Section 292 to
eliminate the qui tam provision, and the
amendment was retroactive to apply to
all cases, without exception, that are
1275
pending on, or commenced on or after
the enactment date above of the Act the
CAFC held in Brooks, 12/13/12, that the
amendment was not unconstitutional, as
did not violate the Due Process Clause or
the Intellectual Property Clause see
above]; See also FLFMC, 10/19/11 (Order)
(nonprecedential dismissing the appeal
and vacating the district courts decision
dismissing the case for lack of standing after
the parties agreed that the Act rendered the
appeal and the district courts standing
determination moot)
- Burden of proof prove by a preponderance

of the evidence that the accused party did
not have a reasonable belief that the articles
were properly marked - i.e., covered by a
patent - Clontech (Forest Group, 12/28/09;
Kemin Foods, 9/25/06; Clontech, 5/5/05)
- Pleading false marking particularity

requirement of FRCP 9(b) applies to false
marking claims (Juniper Networks, 4/29/11
(false marking claim sounds in fraud and
thus requires the plaintiff to plead in detail
the specific who, what, when, where, and
how of the alleged fraud In re BP
Lubricants, Exergen); In re BP Lubricants,
3/15/11 (Order) (complaint alleging false
marking was insufficient when it only
asserted conclusory allegations that the
defendant is a sophisticated company and
knew or should have known that the
patent expired addressing Exergen
(pleading IC))
1276
- Complaint for false marking must
provide some objective indication to
reasonably infer that the defendant
was aware that the patent expired (In
re BP Lubricants, 3/15/11 (Order)
(complaint failed to meet Rule 9(b)
requirements where it provided only
generalized allegations rather than
specific underlying facts from which
the requisite intent could be
reasonably inferred))
- Intent to deceive a state of mind arising

when a party acts with sufficient knowledge
that what it is saying is not so and
consequently that the recipient of its saying
will be misled into thinking that the
statement is true Clontech (Forest Group,
12/28/09 (district court did not clearly err in
finding that the patentees lacked the
requisite knowledge for false marking prior
to a court determination that the patentees
article was not covered by the patent,
including where the patentees relied on their
patent counsel and did not otherwise have an
in-depth appreciation of patent law))
- Assertion by a party that it did not

intend to deceive, standing alone, is
worthless as proof of no intent to
deceive where there is knowledge of
falsehood Clontech (Forest Group,
12/28/09)
- High bar to prove intent to deceive by

false marking the false marking
creates a rebuttable presumption of
intent to deceive which requires only
1277
a preponderance of the evidence to
rebut (In re BP Lubricants, 3/15/11
(Order) (stating rule, referring to the
Pequignot presumption); Pequignot,
6/10/10 (presumption from false
marking with expired patents was
rebutted based on opinion of counsel))
- Heightened pleading requirements for

alleging intent to deceive the public
FRCP 9(b) (In re BP Lubricants,
3/15/11 (Order); Stauffer, 8/31/10
(remanding to decide whether intent
to deceive was pled with sufficient
specificity to meet the heightened
pleading requirements for claims of
fraud imposed by Rule 9(b))
- Unpatented article means that the article

in question is not covered by at least one
claim of each patent with which the article is
marked Clontech (Juniper Networks,
4/29/11 (affirming dismissal of false
marking claim where patent marking, when
considered in context, was not of the
accused website but of software program no
longer in existence))
- Article mismarked must actually

exist, i.e., the article must be
completed before Section 292 will
allow a claim to continue Lang
(Juniper Networks, 4/29/11)
- Leaving expired patent numbers on a

product is false marking under
Section 292 (Pequignot, 6/10/10)
1278
- Websites qualify as unpatented
articles under Section 292 (Juniper
Networks, 4/29/11 (reasoning that the
same policy concerns apply equally to
websites as traditional articles of
manufacture or design, and because
websites may both embody IP and
contain identifying markings))
- Affixing and advertising prongs of

Section 292 (Juniper Networks, 4/29/11
(rejecting arguments based on these prongs
for same reason as marking argument))
- Offense Section 292s plain language

(every such offense), as well as policy
considerations, require the penalty for false
marking to be imposed on a per article
basis, i.e., the statute clearly requires that
each article that is falsely marked with intent
to deceive constitutes an offense otherwise
the statute would be rendered ineffective
(Forest Group, 12/28/09 (rejecting the
district courts single $500 penalty based on
interpreting offense to mean a single
decision to falsely mark articles, and instead
holding (as supported by numerous policy
reasons described, and the fact that the
statute allows qui tam actions): Section 292
clearly requires a per article fine))
- Third parties may sue under Section 292 -

any person may bring a qui tam suit to
enforce the statute (Forest Group, 12/28/09
(rejecting marking troll argument,
including for suits brought when an expired
patent number appears on a product))
1279
- [N]ot more than $500 statute provides
district courts the discretion to strike a
balance between encouraging enforcement
of an important public policy and imposing
disproportionately large penalties for small,
inexpensive items produced in large
quantities in the case of inexpensive mass-
produced articles, a court has the discretion
to determine that a fraction of a penny per
article is a proper penalty (Forest Group,
12/28/09)
- False marking based on the sale of products

marked with a patent number after a courts
invalidity ruling (Gemmy Indus., 6/22/06)
Damages for pre-verdict vs. post-verdict sales
- Pre-verdict vs. post-verdict damages; post-trial

accounting for damages for periods of infringement not
considered by the jury, under Section 284 (district court
shall assess them) (Synqor, 3/13/13; Whitserve, 8/7/12
(abuse of discretion for denying damages for the period
between the jurys verdict and judgment))
- Damages award for pre-verdict sales of the

infringing product does not fully compensate the
patentee because it fails to account for post-verdict
sales of repair parts Carborundum (Fresenius,
9/10/09 (district court did not abuse its discretion
in awarding damages for post-verdict sales of
disposable products linked to infringing machines
sold pre-verdict))
- Post-judgment damages - damages between judgment

and entering an injunction Section 284 (Power
Integrations, 3/26/13 (patentee was entitled to an
1280
accounting limited to post-verdict direct infringement,
where no waiver citing Finjan, Fresenius); Synqor,
3/13/13 (no jury right to decide factual issues related to
supplemental, post-verdict damages); Finjan, 11/4/10
(district court should have awarded compensation for any
infringement prior to the injunction))
Remittitur of damages, excessive damages award
(Power Integrations, 3/26/13 (rejecting the district courts

remitted damages award, which was improperly based on the
patentees experts reliance on mobile phone sales in the U.S.
without the patentee establishing a direct connection between
those sales and sales of phone chargers incorporating the
infringing power circuits (citing Chiuminatta), and the experts
assumptions that all sales included infringing circuits was pure
speculation); Energy Transportation Group, 10/12/12 (no
remittitur where not requested); Wordtech Systems, 6/16/10;
Revolution Eyewear, 4/29/09; Minks, 10/17/08 (district court
improperly reduced the jurys compensatory damages award,
under the Seventh Amendment, without offering the option of a
new trial); Glenayre Electronics, 4/11/06)
- Jurys supportable finding of the amount of damages

must be upheld unless the amount is grossly excessive or
monstrous (Energy Transportation Group, 10/12/12; i4i,
3/10/10 (stating that all the different ways of asking
whether a damages award is excessive are simply
different ways of asking whether the jurys award was
supported by the evidence -- which question the CAFC
was unable to decide on appeal because the infringer did
not file a pre-verdict JMOL motion on damages ($200
million)); Revolution Eyewear, 4/29/09 ($4.3 million
jury award not grossly excessive, applying 9th Cir. law))
- Courts may not arbitrarily reduce the amount of a

jurys damages award, as would deprive the parties
1281
of their constitutional right to a jury need
identifiable sum in the verdict that should not
have been there (Energy Transportation Group,
10/12/12 (CAFC was unable to adjust damages
award where there was no clearly identifiable sum
in the verdict that was allocable to the
noninfringed patent))
State law claims
- Damages need only be proven with reasonable certainty,

not mathematical certainty (Agrizap, 3/28/08 (applying
Pennsylvania law, affirming the jurys verdict of
fraudulent misrepresentation and damages award, after
party introduced sufficient facts for the jury to fairly
estimate an amount of damages, which amount was not
unreasonable))
Unlawful repair prolonging infringing use
- When use infringes (e.g., when first sale not authorized),

repair does also for it perpetuates infringing use
damages include the money patentee lost in the form of
prolongation of infringing use (Glenayre Electronics,
4/11/06)
Types of Damages
Lost Profits 35 USC 284
(Integrated Tech., 11/4/13 (upholding the jurys general verdict

award of lost profits damages, despite possible noninfringing
alternatives, where the patentee proffered (and thus the jury
could have relied on) a two-supplier theory of lost profits that
was independent of the existence of noninfringing alternatives
citing State Indus.); Versata Software, 5/1/13 (affirming jurys
1282
$260 million lost profits award, applying Panduit factors);
Power Integrations, 3/26/13 (rejecting the patentees argument
for worldwide damages based on a foreseeability theory, and
including price erosion from pre-notice infringement (where the
patentee did not mark the patented product under Section 287)
in determining damages for post-notice infringement); Synqor,
3/13/13 (affirming the jurys $95 million damages award of lost
profits and reasonable royalty damages, which was based on the
patentees price erosion theory); Presidio Components,
12/19/12 (discussing Panduit factors (customer demand and
absence of substantial noninfringing alternatives)); Edwards
Lifesciences, 11/13/12 (rejecting the infringers argument
against awarding lost profits damages that it could have
manufactured the infringing device overseas and thus would
have avoided all liability for infringement by avoiding
infringement); Siemens, 2/24/11 (substantial evidence
supported the elements of the jurys award of lost profits
damages); Spine Solutions, 9/9/10 (reversing lost profits
damages award after concluding that the patent owners sister
company, which sold the only commercial product of the
patent, lacked standing to sue); Funai, 9/1/10 (affirming jury
damages award based on unrebutted expert testimony regarding
the patentees market share and direct losses in a two-supplier
market, and the entire market value rule); Depuy Spine, 6/1/09
(discussing multiple lost profits damages issues); Cohesive
Techs., 10/7/08 (acceptable noninfringing substitutes at issue);
Mars, 6/2/08; American Seating, 1/29/08 (convoyed sales);
Mitutoyo, 9/5/07 (jury trial denied); Wechsler, 5/18/07; DSU
Medical, 12/13/06; Depuy Spine, 11/20/06; Golden Blount,
2/15/06; Poly-America, 9/14/04 (lost profits defined); Juicy
Whip, 9/3/04; Norian, 4/6/04; Ericsson, 12/9/03; Ferguson,
12/4/03; Utah Products, 12/4/03); See also Calico, 7/18/13
(nonprecedential - vacating lost profits award and reinstating
reasonable royalty award, where lost profits damages were not
proven)
Generally
1283
- Patent infringement is a tort, and thus in patent cases, as
in other commercial torts, damages are measured by
inquiring: had the tortfeasor not committed the wrong,
what would have been the financial position of the person
wronged? Brooktree, Aro Mfg. (S.C.) (Mars, 6/2/08)
- Damages theory must be grounded in sound economic

principle; while damages analysis invariably involves
hypothetical reconstruction of a but for marketplace,
that reconstruction must include some footing in
economic principle (Versata Software, 5/1/13 (infringer
on appeal, under the guise of sufficiency of the evidence,
improperly attacked the admissibility of the patentees
damages experts testimony as not tied to the facts of the
case, which should have been resolved at trial based on
the FRE and a Daubert (S.C.) challenge); DSU Medical,
12/13/06)
Panduit test but for standard
- Panduit test but for standard -- patent owner must

show causation in fact, establishing that but for the
infringement, he would have made additional profits
four Panduit factors (useful, but non-exclusive, way
Rite-Hite) the patent owner must prove for causation
(which is a classical jury question): 1) a demand for the
patented product, 2) an absence of acceptable
noninfringing substitutes, 3) manufacturing and
marketing capability to exploit the demand, and 4) the
amount of profit the patent owner would have made
(Versata Software, 5/1/13 (classical jury question);
Presidio Components, 12/19/12 (lost profits damages
were established, addressing the first two Panduit
factors); Siemens, 2/24/11; Funai, 9/1/10 (affirming the
jurys damages award where test was met); Depuy Spine,
6/1/09 (addressing the first two factors, and awarding lost
1284
profits); Cohesive Techs., 10/7/08)); ALSO, the patentee
must show a reasonable probability that but for the
infringement, it would have made the sales that were
made by the infringer Rite-Hite; once reasonability is
shown, the burden then shifts to the infringer to show that
the but for causation analysis is unreasonable under the
specific circumstances Grain Processing (Versata
Software, 5/1/13 (affirming jurys damages award where
the infringer failed to show that a different rate was
reasonable, once the patentee made a prima facie
showing of lost profits); American Seating, 1/29/08 (lost
profits from lost sales based on infringing offers to sell,
followed by delivery of noninfringing products);
Wechsler, 5/18/07; Golden Blount, 2/15/06); See also
Calico, 7/18/13 (nonprecedential district court
improperly permitted the jury to consider lost profits
damages, where its conclusions on the first Panduit
factor (consumer demand) was error, and the patentee
failed to demonstrate a reasonable probability that in the
absence of the infringing lighters, the infringer or its
customers would have purchased the patentees lighters
rather than noninfringing alternatives)
Demand for the patented product
- Panduit factors place no qualitative requirement on

the level of demand necessary to show lost profits
(Versata Software, 5/1/13)
- Factor simply requires demand for the

patented product, i.e., a product that is
covered by the patent in suit or that
directly competes with the infringing
device Rite-Hite (en banc) (Versata
Software, 5/1/13 (demand need not be
shown for a particular embodiment of the
patented functionality, i.e., the patentees
1285
commercial product); Presidio Components,
12/19/12 (substantial evidence, including
testimony of damages expert and other
witnesses, along with the infringers internal
documents, supported the jurys finding of
demand for the patentees capacitor
(admittedly not covered by the patent) and
that it directly competed with the infringing
capacitor); Depuy Spine, 6/1/09); See also
Calico, 7/18/13 (nonprecedential district
court overlooked well-established precedent
requiring a causal relation between the
infringement and the patentees lost profits;
lost profits must be tied to the intrinsic value
of the patented feature Rite-Hite; also,
demand for the entire apparatus is, in most
circumstances, not interchangeable with
demand for a patented component of the
larger apparatus citing Uniloc, Lucent
(reasonable royalty cases), and thus rejecting
evidence of gross sales data for the
patentees lighters to establish consumer
demand based on the patented safety
mechanism, and the patentee made no
attempt to argue that the safety mechanism
drove demand for it utility lighters, and
instead the evidence showed that the most
salient driver of the demand was the
lighters price)
- Selling the patented product during

the damages period does not
necessarily mean the product must be
sold to show demand (Versata
Software, 5/1/13)
- Factor does not require any allocation of

consumer demand among the various
1286
limitations recited in a claim (Versata
Software, 5/1/13; Presidio Components,
12/19/12; Depuy Spine, 6/1/09 (rejecting the
accused infringers argument that the
requisite demand under this factor is demand
for the specific feature (i.e., claim
limitation) that distinguishes the patented
product from a noninfringing substitute, as
unnecessarily conflating the first and second
factors))
Absence of acceptable noninfringing substitutes
- Absence of acceptable noninfringing substitutes

(Synqor, 3/13/13 (noninfringing alternative was
not available prior to 2010); Presidio Components,
12/19/12 (record showed that the proposed
noninfringing substitutes (two-piece capacitors)
were not adequate substitutes in the same market
as one-piece capacitors); IGT, 12/17/12
(distinguishing from economic substitutes for
purposes of defining a relevant market under
antitrust law; see also J. Bryson, dissenting);
Siemens, 2/24/11 (addressing the availability of
substitute); Depuy Spine, 6/1/09 (alleged
noninfringing alternatives were neither available
nor acceptable during the relevant accounting
period); Cohesive Techs., 10/7/08 (including
Standard Havens explanation of the acceptable
noninfringing substitutes analysis acceptable
noninfringing substitute must have the advantages
of the patented product); Mars, 6/2/08 (patentee
agreed was not entitled to lost profits damages
after the accused infringer introduced non-
infringing alternative); American Seating, 1/29/08
(noninfringing replacement product was not an
acceptable substitute); Cordis, 1/7/08 (new trial
1287
maybe necessary based on construction of claim
term); Wechsler, 5/18/07 (J. Mayer, dissenting);
DSU Medical, 12/13/06); See also Calico, 7/18/13
(nonprecedential recovery of lost profits was
precluded where no reasonable probability that the
patentees lighters would have been purchased (in
a crowded market) rather than noninfringing
alternatives, and thus reversing the district courts
conclusion under a market share theory (based
on the BIC Leisure lines of cases holding that the
patentee may satisfy the second Panduit factor by
substituting proof of its market share for proof of
the absence of acceptable substitutes) that the
patentee would have captured profits but for the
infringement)
- Mere existence of a competing device does

not make that device an acceptable
substitute TWM Mfg. (Presidio
Components, 12/19/12)
- Proof of no acceptable noninfringing

substitutes the patent owner must show
either that 1) the purchasers in the
marketplace generally were willing to buy
the patented product for its advantages, or 2)
the specific purchasers of the infringing
product purchased on that basis Standard
Havens (Presidio Components, 12/19/12
(two-piece capacitors did not have the
advantages of the patentees and the
infringing one-piece capacitors); Cohesive
Techs., 10/7/08)
- When alleged noninfringing substitute

is not on the market during the
relevant accounting period, there is an
inference of unavailability, and the
1288
accused infringer bears the burden of
overcoming the inference Grain
Processing (Synqor, 3/13/13 (no
abuse of discretion by district court in
excluding evidence of noninfringing
alternative where inference was not
overcome); Siemens, 2/24/11; Depuy
Spine, 6/1/09 (unavailability shown
by the accused infringers
unsuccessful attempts to develop a
noninfringing design during the
accounting period)
- Substitute need not be on sale

at the time of infringement, but
if the substitute cannot be
commercialized readily, then it
is not available for purposes of
a lost profits determination
(Synqor, 3/13/13 (not available
because took defendants a year
or more to make noninfringing
converters available for
commercial use); Siemens,
2/24/11 (alleged alternative was
unavailable where over one
year behind the infringing
product in development))
- Noninfringing product must be acceptable to

all purchasers of the infringing product
buyers must view the substitute as
equivalent to the patented device Grain
Processing (Cohesive Techs., 10/7/08
(district courts finding that an alleged
substitute was a reasonably acceptable
substitute did not resolve whether it was an
acceptable noninfringing substitute under
1289
the Standard Havens test); American
Seating, 1/29/08 (purchasers objected to
switch to noninfringing product)); See also
Calico, 7/18/13 (nonprecedential the
absence of noninfringing alternatives was
not shown where unrebutted testimony of
the infringers established practice of
purchasing utility lighters from another
manufacturer that were interchangeable with
the patentees lighters, stating that [a]
seamless substitution of the asserted product
with a non-infringing, alternative product
that is sourced from a third party supplier, is
evidence of acceptable non-infringing
alternatives under the second Panduit
factor.)
Amount of lost profits
- Amount of profit the patent owner would have

made accounting for market pressures, market
and economic variables (e.g., price elasticity, costs
of making sales) during the damages period
(Versata Software, 5/1/13 (patentees experts
damages theory was based on sound economic
proof confirmed by the record, not speculation,
accounting for a number of variables))
Causation
- Causation in fact - to recover lost profits, the

patent owner must show causation in fact
establishing that but for the infringement, he
would have made additional profits (Presidio
Components, 12/19/12; Siemens, 2/24/11 (no
abuse of discretion in reducing the jurys lost
1290
profits damages award where there was no proof
that additional PET scanners were sold (even if
made) before patent expiration); American
Seating, 1/29/08 (jury award of damages);
Mitutoyo, 9/5/07 (jury trial on lost profits denied);
Wechsler, 5/18/07 (jury)); See also Calico, 7/18/13
(nonprecedential district court erred in awarding
lost profits damages where no causation shown)
- Patentee need only show that there was a

reasonable probability that the sales of its
product would have been made but for the
infringement the patentee need not negate
every possibility that the purchaser might
not have purchased a product other than its
own, absent the infringement - Rite-Hite
(Versata Software, 5/1/13; Presidio
Components, 12/19/12); See also Calico,
7/18/13 (nonprecedential no reasonable
probability was shown)
- Market and price overlap were not shown

for entitlement to lost profits damages; the
patentees products were more complex
than, and sold outside the price range of, the
accused infringers products (the demand for
which was highly elastic) the products
thus competed for entirely different market
segments (Mitutoyo, 9/5/07)
- Two-supplier, competitor market requires an

analysis which excludes alternatives to the
patented product with disparately different prices
or significantly different characteristics (Integrated
Tech., 11/4/13 (affirming award where the jury
could have relied on the patenteees proffered two-
supplier theory); Siemens, 2/24/11 (reasonable for
the jury to infer the existence of a two-supplier
1291
high-end PET scanner market); Golden Blount,
2/15/06)
Patentees entitlement to lost profits
- Patentee must be selling the patented product during the

period of infringement for lost profits damages
- General rule normally, if the patentee is not

selling a product during the period of infringement,
by definition there can be no lost profits Rite-
Hite (Versata Software, 5/1/13 (selling product
does not necessarily mean the product was sold
particularly given the economic reality that the
infringer had eroded the market for the patentees
commercial product through sale of its own
product); Spine Solutions, 9/9/10 (patent owner
was not entitled to lost profits damages where only
the patent owners sister company sold the
patented product, but lacked standing to sue);
Wechsler, 5/18/07 (See J. Mayer, dissenting))
- Exception is where the patentee has the

ability to manufacture and market a product,
but for some legitimate reason does not;
however, even in these situations, the burden
on a patentee who has not begun to
manufacture the patented product is heavy
(Wechsler, 5/18/07)
- Evidence of later manufacturing and

marketing is not dispositive as to
whether the patentee was able to do so
during the period of infringement
must be indicative of the ability to
manufacture and market the patented
device during the period of
1292
infringement for relevance (Wechsler,
5/18/07)
- Preempting patentees sales and price

erosion the patentee can receive lost profit
damages if infringing sales preempted
subsequent sales by the patentee and/or
eroded the market price the patentee was
able to charge for his product (Wechsler,
5/18/07)
- Patented product need not be sold to recover

damages, but only some item with lost profits
because of the infringement (Poly-America,
9/14/04)
- Infringers profits (Bosch, 6/14/13 (en banc) (n.1: an

infringers profits are not an available remedy for
infringement of a utility patent, under Section 284, but
remain available in cases of design patent infringement,
under Section 289))
Foreseeability
- Foreseeability principle Rite-Hite (Power Integrations,

3/26/13 (rejecting the patentees argument for full
compensation in the form of damages based on loss of
sales in foreign markets which the patentee claimed were
a foreseeable result of infringing conduct in the U.S.);
DSU Medical, 12/13/06)
- Foreseeable economic effects - patentees have

significant latitude to prove and recover lost profits
for a wide variety of foreseeable economic effects
of the infringement Grain Processing (American
Seating, 1/29/08 (evidence sufficed for the jury to
assume a bait-and-switch by the infringers
1293
substitution and delivery of a noninfringing
product after making an infringing offer to sell
another product))
Entire market value rule/convoyed sales
- Entire market value rule permits a patentee to recover

the entire value of an apparatus that contains both
patented and unpatented components, so long as the
patented component is the basis for customer demand
Imonex, Ferguson, Rite-Hite (en banc) (Synqor, 3/13/13
(patentee properly used the entire market value of the
customer end products to support price erosion damages
theory); Funai, 9/1/10 (affirming the jurys damages
award supported by evidence that the benefits of the
patented VCRs were the basis for customer demand
citing Imonex); Depuy Spine, 6/1/09 (distinguishing
Ferguson))
- Entire market value rule show functional unit or

functional relationship - recovery of lost profits on
unpatented components typically sold with a patented
item, i.e., a convoyed sale, or collateral sale; show that
both the patented and unpatented products together were
considered to be components of a single assembly or
parts of a complete machine, or they together constituted
a functional unit - Rite-Hite, Juicy Whip (Depuy Spine,
6/1/09 (citing American Seating); American Seating,
1/29/08; Golden Blount, 2/15/06; Poly-America, 9/14/04;
Juicy Whip, 9/3/04 (non-patented syrup was central to
the visual appearance of the patented dispenser))
- Damages are not awarded for unpatented items

that neither compete nor function with the patented
invention Rite-Hite (en banc) (Depuy Spine,
6/1/09 (irrelevant whether the products were sold
together or as separate transactions))
1294
- Convoyed sales refers to the relationship
between the sale of a patented product and a
functionally associated non-patented product
(Depuy Spine, 6/1/09; American Seating, 1/29/08
(no functional relationship shown between
patented invention and unpatented item))
- Functional relationship distinguished from

convenience or business advantage
liability is not extended to include items that
essentially have no functional relationship to
the patented invention and that may have
been sold with an infringing device only as a
matter of convenience or business
advantage; a functional relationship does not
exist when independently operating patented
and unpatented products are purchased as a
package solely because of customer demand
damages on these items would exceed that
which suitably compensates for the
infringement Rite-Hite (Depuy Spine,
6/1/09 (patentee was not legally entitled to
recover lost profits damages for unpatented
products sold only because of the patentees
business relationship with surgeons);
American Seating, 1/29/08 (merely
customer preference that the patented and
unpatented products come from the same
supplier, rather than both being part of a
single functional unit))
- No independent purpose or market value -

lost profit damages are properly granted for
collateral products that have no useful
purpose or market value independent of the
patented product Rite-Hite (American
Seating, 1/29/08 (passenger seats
1295
commanded a market value and served a
useful purpose independent of the patented
product))
Price erosion lost profits
- Price erosion damages to establish entitlement to price

erosion damages, the patentee has the burden to show
that but for infringement, it would have sold its product
at higher prices; a credible but for analysis must
account for the effect of a higher price on demand for the
product; also must consider the impact of any acceptable
noninfringing alternatives (i.e., that a would-be infringer
is likely to offer rather than leave the market altogether)
on the market as a whole (Power Integrations, 3/26/13
(where the patentee did not mark the patented product
under Section 287, concluding that to the extent an
infringers pre-notice infringement erodes the market
price of the patented product, that price erosion is
relevant in determining for each post-notice act of
infringement what the patentee would have made but for
the infringement thus holding that a price erosion
analysis relating to damages arising from post-notice
infringement must measure price changes against
infringement-free market conditions, and thus the proper
starting point of such a price erosion analysis is the date
of first infringement - citing Aro (S.C.), Amstar); Synqor,
3/13/13 (jurys award of lost profits and reasonable
royalty damages, which was based on a price erosion
theory, was supported by substantial evidence where
there was sufficient evidence for the jury to accept the
patentees experts but for pricing); Wechsler, 5/18/07;
DSU Medical, 12/13/06; Ericsson, 12/9/03)
Other lost profits-related issues
1296
- Allocation of profits between patents (Ferguson, 12/4/03)
- Corporate entity, assignee of patent, seeking damages

suffered by parent company (Mars, 6/2/08 (parent
company, patent owner failed to prove was entitled to
lost profits damages for sales lost by its licensed, wholly
owned subsidiary); Union Carbide, 10/3/05)
- Corporate parent recover the lost profits of its

wholly owned subsidiary when the subsidiarys
profits flow inexorably to the parent? (Mars,
6/2/08 (issue not decided because the parent and
subsidiary had a traditional royalty-bearing license
agreement, which was not dependent on profits));
See also Fujitsu, 9/11/13 (Order) (nonprecedential
denying permission to appeal interlocutory order
under 28 USC 1292(b) regarding the issue of
whether a foreign parent company patent owner
may recover lost profits damages for its wholly-
owned U.S. subsidiarys lost sales; see also J.
OMalley, dissenting)
- Exclusive licensees entitlement to lost profits damages -

exclusive license for entitlement to award of lost profits
whether the licensee is exclusive licensee or bare licensee
ascertain the intent of the parties; the license is an
exclusive license only if the patentee has promised,
expressly or impliedly, that others shall be excluded from
practicing the invention within the field covered by
license (Mars, 6/2/08 (wholly owned subsidiary was a
non-exclusive licensee of the parent, patent owner and
thus not entitled to lost profits damages); Depuy Spine,
11/20/06)
- Licensor claiming lost profits of a licensee the

licensee must have exclusive rights under the
patent, including the right to sue for infringement
and damages (Mars, 6/2/08 (citing Poly-America,
1297
parent company, patent owner failed to show was
entitled to lost profits damages for sales lost by its
non-exclusive licensed, wholly owned subsidiary);
Poly-America, 9/14/04 (holding that a patent
holder is not entitled to recover lost profits
damages as a result of sales lost by a sister
corporation, absent a showing that the patent
holder itself had lost profits))
- Lost sales (American Seating, 1/29/08; DSU Medical,

12/13/06; Ericsson, 12/9/03)
- Market reconstruction (DSU Medical, 12/13/06;

Ericsson, 12/9/03)
Reasonable Royalty 35 USC 284
(Douglas Dynamics, 5/21/13 (vacating and remanding ongoing

reasonable royalty award that was based on the infamous 25%
rule of thumb and was erroneously limited based on the
infringers profit margins); Versata Software, 5/1/13 (affirming
$85 million damages award, where the only evidence for the
royalty award came from the infringers expert); Synqor,
3/13/13 (affirming the jurys damages award of lost profits and
reasonable royalty damages, which was based on the patentees
price erosion theory); Transocean, 11/15/12 (affirming the
jurys $15 million damages award as supported by substantial
evidence, which was an established upfront payment made by
licensees under the patentees model license agreement for the
claimed device); Energy Transportation Group, 10/12/12
(affirming lump sum damages award based on testimony and
analysis by damages experts); LaserDynamics, 8/30/12;
Whitserve, 8/7/12 (vacating and remanding the jurys damages
award for a new trial, where the patentees experts superficial
testimony failed to provide analysis to allow the jury to
evaluate the probative value of royalty rates, where the expert
shifted from a rate based on the percentage of profits to a
1298
percentage of revenue; also, n 16: when parties rely on
demonstrative exhibits to present damages evidence to the jury,
they must make sure that the record captures the substance of
the data presented, since cannot guess what the jury saw); In re
MSTG, 4/9/12 (Order) (district court did not abuse its
discretion by ordering the production of settlement negotiation
documents relevant to the patentees settlement and license
discussions with third parties and other defendants relating to
reasonable royalty damages, where the documents were likely
relevant to the patentees damages experts opinion); Marine
Polymer, 3/15/12 (en banc) (affirming jurys $29.4 million
damages award where conflicting expert testimony on the
appropriate royalty rate and the royalty base was total sales of
the infringing product applying the entire market value rule);
Powell, 11/14/11 (affirming the jurys reasonable royalty
award, which was properly based on a hypothetical negotiation
when infringement began analysis and other G-P factors);
Spectralytics, 6/13/11 (affirming the jurys 5-percent reasonable
royalty award for sales of stents made using infringing
machine) ; Siemens, 2/24/11 (remanding to determine
reasonable royalty for infringing products made, but not sold,
and thus were not entitled to lost profits damages); Uniloc,
1/4/11 (rejecting use of the 25 percent rule of thumb for
determining a baseline royalty rate, and reaffirming use of the
G-P factors); Finjan, 11/4/10 (substantial evidence supported
the jurys reasonable royalty damages award); Telcordia Techs.,
7/6/10 (awarding an ongoing royalty in lieu of an injunction -
Paice); Wordtech Systems, 6/16/10 (rejecting the jurys
damages verdict which was based on speculation, and noting
the absence of expert damages testimony); Fujifilm, 5/27/10
(affirming the jurys reasonable royalty damages award, after
determining a royalty rate and base based on expert testimony
regarding a hypothetical negotiation and including convoyed
sales/bundling in the calculations); *i4i, 3/10/10 (affirming the
use by the patentees expert of a $98 reasonable royalty rate to
calculate $200 million in damages, based on a hypothetical
negotiation, and several of the G-P factors, along with survey
evidence used to estimate the amount of infringing use); SEB,
1299
2/5/10 (counsels closing argument relating to reasonable
royalty damages was proper); Resqnet.com, 2/5/10 (rejecting
damages award that was based on royalties received by the
patentee from other licenses (first G-P factor) which were
different from a hypothetical license to the patent in suit; see
also J. Newman, dissenting the patentees damages expert
properly considered the patentees other licenses in arriving at a
reasonable royalty); *Lucent, 9/11/09 (royalty rate and the
jurys excessive damages award were not supported by
substantial evidence where the infringed patented invention was
a tiny part of the larger software program sold); Fresenius,
9/10/09 (vacating royalty award and remanding for the district
court to consider whether appropriate in light of the CAFCs
reversal of JMOL of nonobviousness); Depuy Spine, 6/1/09
(affirming the denial of a motion for a new trial on reasonable
royalty damages, where the patentee failed to timely object to
the jurys inconsistent verdict in awarding a 0% royalty);
Revolution Eyewear, 4/29/09 (evidence was sufficient to
support the jurys finding of a 5% royalty rate (based on the
district courts detailed analysis of the relevant Georgia-Pacific
factors) and selection of royalty base for the accused product);
Minks, 10/17/08; Mars, 6/2/08 (blended royalty rate for two
patents based on the fifteen Georgia-Pacific factors was
proper); Amado, 2/26/08 (damages for pre-verdict vs. post-
verdict infringement); Monsanto, 2/5/08; Innogenetics, 1/17/08
(running royalty characterized as a compulsory license); Paice,
10/18/07 (award of ongoing reasonable royalty for future
infringement in lieu of permanent injunction, remanded; see
Permanent Injunctions); Mitutoyo, 9/5/07; Monsanto, 5/24/07
(jury); Aero Products, 10/2/06; Applied Medical Resources,
1/24/06; Union Carbide, 10/3/05; Fuji Photo, 1/14/05;
Monsanto, 9/7/04; Harris, 8/5/05; Imonex, 5/23/05; Golight,
1/20/04 (rules generally); Dow, 9/5/03; Utah Products, 12/4/03;
State Contracting, 10/7/03; Integra, 6/6/03); See also Calico,
7/18/13 (nonprecedential vacating lost profits award and
reinstating reasonable royalty award, where lost profits
damages were not proven); In re Electro-Mechanical Indus.,
1300
12/22/09 (nonprecedential); Heeling Sports, 4/3/09
(nonprecedential)
Generally
- Reasonable royalty is the predominant measure of

damages in patent infringement cases (Uniloc, 1/4/11)
- Reasonable royalty is the amount that a person, desiring

to manufacture, use or sell a patented article, as a
business proposition, would be willing to pay as a royalty
and yet be able to make, use or sell the patented article in
the market at a reasonable profit; the objective of a
reasonable royalty calculation is to determine the amount
necessary to adequately compensate for an infringement
(Applied Medical Resources, 1/24/06)
- Party challenging a jury damages verdict must

show that the award is, in view of all the evidence,
either so outrageously high or so outrageously low
as to be unsupportable as an estimation of a
reasonable royalty Rite-Hite (Energy
Transportation Group, 10/12/12; Powell, 11/14/11;
Spectralytics, 6/13/11 (jurys 5-percent royalty
award was not outrageously high in view of
expert testimony that 20-percent was reasonable
and appropriate in light of the G-P factors, i.e.,
reflective of trade practices and the economic and
competitive circumstances))
- Any reasonable royalty analysis necessarily

involves an element of approximation, and
uncertainty Lucent (Whitserve, 8/7/12;
Spectralytics, 6/13/11; Wordtech Systems,
6/16/10; i4i, 3/10/10; Resqnet.com, 2/5/10 (J.
Newman, dissenting))
1301
- Proving damages the reasonable royalty
analysis requires a court to hypothesize, not
to speculate sound economic proof tied to
the claimed inventions presence in the
marketplace is required, whereas speculative
evidence violates the statutory requirement
that damages under Section 284 be
adequate to compensate for the
infringement (Resqnet.com, 2/5/10 (the
district court erred by considering the
patentees other licenses for calculating a
royalty award without making any factual
findings that accounted for the technological
and economic differences between those
licenses and the patent in suit))
- Reasonable royalty is merely the floor below

which damages shall not fall (Versata Software,
5/1/13; *Lucent, 9/11/09)
- Infringers net profit margin is not the ceiling by

which a reasonable royalty is capped Golight; the
infringers selling price can be raised if necessary
to accommodate a higher royalty rate (Douglas
Dynamics, 5/21/13 (district court erred by limiting
the ongoing royalty rate based on the infringers
profit margins))
- Reasonable royalty damages may exceed the

amount that the infringer could have paid to avoid
infringement Monsanto v. Ralph (Mars, 6/2/08
(rejecting the infringers arguments that reasonable
royalty damages are capped at the cost of
implementing the cheapest, available, acceptable,
noninfringing alternative))
Georgia-Pacific factors to determine reasonable royalty
1302
- Georgia-Pacific factors considered in determining a
reasonable royalty (Energy Transportation Group,
10/12/12 (affirming damages award based on the
patentees experts reliance on factors, stating: Once
again, this court does not endorse Georgia-Pacific as
setting forth a test for royalty calculations, but only as a
list of admissible factors informing a reliable economic
analysis.); LaserDynamics, 8/30/12 (concluding that the
amount and form (e.g., running vs. lump sum) of a
reasonable royalty depend on full consideration of all the
G-P factors); Whitserve, 8/7/12 (listed in n.11; use of any
or all of the factors are not required during witness
testimony about damages in patent cases; however, if
used, more than conclusory remarks by the expert about
the factors is needed: Expert witnesses should
concentrate on fully analyzing the applicable factors, not
cursorily reciting all fifteen.); Powell, 11/14/11 (listed in
n.3); Spectralytics, 6/13/11; Uniloc, 1/4/11 (reaffirming
use of the G-P factors (particularly factors 1 and 2
(which look at royalties paid or received in licenses for
the patent in suit or in comparable licenses) and factor 12
(which looks at the portion of the profit customarily
allowed in the particular business for use of the invention
or similar inventions)), which properly tie the reasonable
royalty calculation to the facts of the hypothetical
negotiation); Finjan, 11/4/10 (several G-P factors (1, 4, 5,
7, 8, 10, 11, and 13) considered); Wordtech Systems,
6/16/10; Fujifilm, 5/27/10 (factor 6 (collateral sales)
considered); *i4i, 3/10/10 (providing a detailed
discussion of the patentees experts analysis of several
relevant G-P factors (3, 5, 6, 9, and 11, with all 15 listed
in n.3) in arriving at a $98 reasonably royalty and $200
million in reasonable royalty damages); Resqnet.com,
2/5/10 (rejecting reliance on the royalties received from
the patentees other licenses (first G-P factor) which
were different from a hypothetical license to the patent in
suit; see also J. Newman, dissenting the majority
1303
ignored the patentees experts thorough analysis of the
G-P factors); *Lucent, 9/11/09 (conducting a detailed
analysis of several relevant G-P factors as the basis for
vacating the jurys excessive damages award where the
infringing feature in Microsoft Outlook was but a tiny
feature of one part of a much larger software program
(here, the factors inform how the parties would have
valued the patented feature during the hypothetical
negotiation)); Revolution Eyewear, 4/29/09; Minks,
10/17/08 (first (established royalty) and sixth (derivative
or convoyed sales) factors applied); Mars, 6/2/08 (the
district court considered the fifteen Georgia-Pacific
factors in arriving at a blended 7% royalty rate);
Glenayre Electronics, 4/11/06; Monsanto, 9/7/04;
Imonex, 5/23/05)
- Evidence purporting to apply to the G-P factors

must be tied to the relevant facts and
circumstances of the particular case at issue and
the hypothetical negotiations that would have
taken place in light of those facts and
circumstances at the relevant time
(LaserDynamics, 8/30/12; Powell, 11/14/11
(circumstances were more favorable to the
patentee at the time infringement began than two
years earlier, including the cost savings to the
infringer from using the claimed saw guard);
Uniloc, 1/4/11 (rejecting the patentees experts
testimony as inadmissible under Daubert (S.C.),
which was based on use of the 25 percent rule of
thumb as arbitrary, unreliable, and irrelevant to the
facts of the case))
Hypothetical negotiation
- Reasonable royalty determined (in the

absence of an established royalty) based on
1304
a hypothetical negotiation at arms length
between a willing licensor and willing
licensee at the time infringement began, in
which the G-P factors are assessed Rite-
Hite (Versata Software, 5/1/13; Transocean,
11/15/12 (jurys damages award was
supported by substantial evidence, including
testimony that the patentee would have
required the infringer as a direct competitor
to pay an upfront fee to license its dual-
activity drilling patents); LaserDynamics,
8/30/12 (hypothetical negotiation for active
inducement takes place on the date of the
first direct infringement traceable to the
accused infringers first instance of
inducement conduct; also, only a single
negotiation date, not separate dates for
separate acts of infringement); Whitserve,
8/7/12; Powell, 11/14/11 (emphasizing that
the negotiation occurs at the time
infringement began); Spectralytics, 6/13/11
(jury was properly instructed on the above
and the G-P factors in awarding a 5-percent
royalty for sales of stents made using the
infringing machine); Uniloc, 1/4/11; Finjan,
11/4/10; Wordtech Systems, 6/16/10
(litigation . . . can skew the results of the
hypothetical negotiation ResQNet);
Fujifilm, 5/27/10; *i4i, 3/10/10 (patentees
expert also chose a benchmark product to
value the infringers use of the claimed
invention at the time of the hypothetical
negotiation, along with using the 25-
percent rule (which assumes the inventor
will keep 25% of the profits from any
infringing sales) to arrive at a $98 royalty
rate used in calculating $200 million in
damages); SEB, 2/5/10 (affirming denial of
1305
a new trial where counsels closing
argument of an expectation of success, as
opposed to actual success, at achieving a
certain profit margin, was relevant to
calculations during the hypothetical
negotiation); Resqnet.com, 2/5/10; *Lucent,
9/11/09 (substantial evidence did not
support the jurys implicit finding that the
infringer would have agreed to, at the time
of the hypothetical negotiation, a lump-sum,
paid-in-full royalty of about $358 million for
a license to the patented invention which
was only a small component of the software
product sold); Fresenius, 9/10/09 (vacating
award where the CAFCs reversal of JMOL
of nonobviousness may affect the royalty
rate resulting from a hypothetical
negotiation between the parties, and may
affect how the district court weighs one or
more of the G-P factors that influence this
analysis); Minks, 10/17/08; Mars, 6/2/08
(hypothetical negotiation must be between
competitors in determining the proper
royalty rate); Mitutoyo, 9/5/07 (based on the
entirety of evidence in record); Monsanto,
5/24/07 (jury); Applied Medical Resources,
1/24/06); See also In re Electro-Mechanical
Indus., 12/22/09 (nonprecedential); Heeling
Sports, 4/3/09 (nonprecedential remanding
for the district court to explain the reasons
for the damage award)
- Arms length transaction the

hypothetical negotiation is deemed to
be an arms length transaction, i.e.,
between competitors, rather than, e.g.,
an intra-family sale Rite-Hite
(Transocean, 11/15/12; *Lucent,
1306
9/11/09 (necessarily involves an
element of approximation and
uncertainty); Minks, 10/17/08
(royalty rate between the inventor and
his company was not determinative of
a reasonable royalty rate between two
competitors))
- Hypothetical negotiation as of the

time infringement began, i.e., must
return to the date when the
infringement began (LaserDynamics,
8/30/12 (district court erred in setting
the hypothetical negotiation date too
late, when the lawsuit was filed);
Powell, 11/14/11; Wordtech Systems,
6/16/10; *Lucent, 9/11/09; Minks,
10/17/08; Applied Medical
Resources, 1/24/06), but not
automatically excluding evidence of
subsequent events Wang (*Lucent,
9/11/09; Monsanto, 9/7/04; Harris,
8/5/05)
- Assumes that the asserted

patent claims are valid and
infringed (LaserDynamics,
8/30/12; *Lucent, 9/11/09)
- Factual developments (e.g.,

sales projections based on past
sales, consumer surveys, focus
group testing, etc.) occurring
after the date of the
hypothetical negotiation can
inform the damages calculation
Sinclair (S.C.) (Resqnet.com,
2/5/10 (events subsequent to
1307
the hypothetical negotiation
may be considered on remand);
*Lucent, 9/11/09)
- No rigid requirement that

damages in all circumstances
be limited to specific instances
of infringement proven with
direct evidence, as would not
reflect a real-world licensing
negotiation (*Lucent, 9/11/09
(giving reasons why licensing
not always tied to usage of the
licensed product, but also
ruling that the damages award
ought to be correlated, in some
respect, to the extent the
infringing method was used by
consumers))
- Must identify the infringement

requiring compensation (i.e., if
multiple infringements), including the
time infringement began (Applied
Medical Resources, 1/24/06)
License agreements tending to prove an established

royalty
- License agreements, royalties paid proving or

tending to prove an established royalty (Versata
Software, 5/1/13; Transocean, 11/15/12 (affirming
the jurys $15 million damages award that was an
established upfront royalty paid by licensees in the
patentees model license agreement for the claimed
device); LaserDynamics, 8/30/12 (actual licenses
to the patented technology are highly probative
1308
because they most clearly reflect the economic
value of the patented technology in the
marketplace; also highly probative of the form that
a hypothetical license agreement would likely have
taken, e.g., lump sum vs running royalty, and thus
rejecting the patentees experts rejection of lump
sum actual licenses to the patent near the time of
the correct date of the hypothetical negotiation; in
sum, the amount and form of royalty depend on
full consideration of all the G-P factors);
Whitserve, 8/7/12; In re MSTG, 4/9/12 (Order)
(settlement agreements can be pertinent to the
issue of reasonable royalties -- citing
Resqnet.com); Uniloc, 1/4/11; Finjan, 11/4/10;
Wordtech Systems, 6/16/10 (discussing license
agreements rejected in Lucent); Resqnet.com,
2/5/10 (rejecting evidence of the patentees other
license agreements (first G-P factor), which were
different from a hypothetical license to the patent
in suit; see also J. Newman, dissenting the
majority held that it is improper to consider, for
the purpose of understanding the value of the
infringed patents, any licenses involving the
technology of those patents bundled with
additional technologies, such as software code);
*Lucent, 9/11/09 (multiple license agreements
relied on by the patentee in defending its royalty
rate calculated by its damages expert at trial were
not probative of the jurys excessive damages
award); Minks, 10/17/08 (consider established
royalty between competitors, and not intra-family
royalty agreement); Mars, 6/2/08 (terms of an
intra-company license agreement were not
representative of terms that would result from a
hypothetical negotiation between competitors);
Amado, 2/26/08 (high end of royalty rate was what
the patentee was willing to accept in exchange for
1309
a license); Innogenetics, 1/17/08; Monsanto,
5/24/07; Utah Products, 12/4/03)
- Basis in fact needed to associate the royalty

rates used in prior licenses to the particular
hypothetical negotiation at issue in the case
(LaserDynamics, 8/30/12; Uniloc, 1/4/11)
- Examine whether the licenses are

sufficiently comparable to the
hypothetical license at issue in suit
(LaserDynamics, 8/30/12; Whitserve, 8/7/12
(rejecting experts use of past lump-sum
payment licenses to calculate higher running
royalty rates); Uniloc, 1/4/11 (citing
uncomparable licenses cases as the basis for
rejecting the 25 percent rule of thumb
Relying on the 25 percent rule of thumb in
a reasonable royalty calculation [which
does not say anything about a particular
hypothetical negotiation or reasonable
royalty involving any particular technology,
industry, or party] is far more unreliable
and irrelevant than reliance on parties
unrelated licenses, which we rejected in
ResQNet and Lucent Technologies); Finjan,
11/4/10 (jury properly discounted the cited
license - must account for differences in the
technologies and economic circumstances of
the contracting parties Resqnet.com,
Wordtech Sys.); Wordtech Systems, 6/16/10
(rejecting evidence of the patentees 13 prior
licenses to the patent as not comparable,
based on lump-sum license vs. running
royalty license distinction raised in Lucent);
Resqnet.com, 2/5/10 (vacating damages
award where some licenses relied on were
not comparable); *Lucent, 9/11/09 (lump-
1310
sum and running royalty license agreements
(as presented to the jury by the patentees
damages expert) did not support the jurys
royalty rate where they were far different
from a license negotiation for the patented
invention))
- Running royalty vs. lump-sum

payment - subsumed within this factor
is whether the licensor and licensee
would have agreed to a lump-sum
payment or instead a running royalty
based on ongoing sales or usage
also must consider the parties
expectations (based on estimates, not
speculation) for usage of the claimed
invention (*Lucent, 9/11/09
(addressing significant differences
between the two types of royalties))
- Under Georgia-Pacific, must consider past

and present royalties received by the
patentee for the licensing of the patent in
suit, proving or tending to prove an
established royalty; the first G-P factor by
its terms considers only past and present
licenses to the actual patent and the actual
claims in litigation; vigilance must be
exercised when considering past licenses to
technologies other than the patent in suit -
Lucent (LaserDynamics, 8/30/12; Uniloc,
1/4/11; Resqnet.com, 2/5/10 (the patentees
expert improperly based his damages
calculations on seven of the patentees
licenses, five of which had no relation to the
claimed invention; see also J. Newman,
dissenting the patentees licenses related to
the patented technology and thus were
1311
relevant evidence for calculating a
reasonable royalty))
- First G-P factor must consider

licenses that are commensurate with
what the defendant has appropriated
there must be an economic or other
link to the technology in question
(LaserDynamics, 8/30/12; Uniloc,
1/4/11; Resqnet.com, 2/5/10)
- Reasonable royalty decided by court based

on contemporaneous license agreements
(Transocean, 11/15/12; Glenayre
- License agreement with competitor

used as a template for damages
experts calculations (Transocean,
11/15/12; Innogenetics, 1/17/08)
- Proposed licenses for determining a

reasonable royalty evidentiary value is
limited because the patentee could
artificially inflate the royalty rate by making
outrageous offers (Whitserve, 8/7/12
(proposed offer and 31.8% rate rejected as
having no probative value))
- License agreement entered to settle prior

litigation involving the patent in suit, as
evidence of the patents actual value (ePlus,
11/21/12 (district court properly excluded
expert testimony based on past settlement
and license agreements which was flawed
and unreliable, where the expert relied only
on agreements paying the highest amount of
royalty); LaserDynamics, 8/30/12 (abuse of
1312
discretion in denying a motion in limine to
exclude evidence under FRE 403 of a prior
settlement of litigation and license relating
to the patent, stating that the propriety of
using prior settlement agreements to prove
the amount of a reasonable royalty is
questionable the premise of the G-P
factors assumes a voluntary, not coercive,
agreement reached between a willing
licensor and willing licensee, with validity
and infringement not disputed - citing Rude
(S.C.), Deere, and distinguishing ResQNet);
Resqnet.com, 2/5/10 (discussing the
relevance for calculating damages of a
straight license to the claimed invention
entered in the settlement of litigation; see
also J. Newman, dissenting relying only
on the license entered in settlement of
litigation, the majority has assur[ed] the
infringer, after losing in litigation, of no
worse penalty than the lowest royalty
previously accepted in settlement))
- Royalty rate between non-competitors was

no basis for reasonable royalty rate (Mars,
6/2/08 (royalty terms in an intra-company
license agreement made to satisfy the
requirements of the UK taxing authorities
were likely different from those resulting
from a hypothetical negotiation between
competitors))
Determining the royalty base
- Determining royalty base
1313
- Infringing sales as base (Energy Transportation
Group, 10/12/12; Whitserve, 8/7/12 (discussing
how to calculate the reasonable royalty amount
based on royalty base from infringing sales citing
Finjin)) accused product must infringe at the
time of sale (In re Electro-Mechanical Indus.,
12/22/09 (nonprecedential applying royalty rate
to noninfringing sales of product was clearly
erroneous, even though the product infringed at the
time of manufacture, but was modified and
noninfringing at the time of sale)
- Survey evidence for estimating the number

of infringing uses of product (i4i, 3/10/10
(survey evidence was properly admitted, as
supported by expert testimony and compiled
according to acceptable survey methods))
- Value of entire commercial embodiment as base

as long as the magnitude of the rate is within an
acceptable range (as determined by the evidence)
(*Lucent, 9/11/09 (rejecting the jurys excessive
damages award which was calculated based on 8%
of the total sales of Microsoft Outlook))
- Muliplier (i.e., the rate) must account for the

proportion of the base represented by the
infringing component or feature (*Lucent,
9/11/09)
- Relationship of accused infringers considered in

determining the royalty base, i.e., which of the
infringers sales to include in the calculation
parent-subsidiary relationship vs. no corporate
relationship Allen Archery (Mitutoyo, 9/5/07)
- Length of time of infringement for calculating

damages based on royalty rate (Mars, 6/2/08
1314
(remanded for recalculation of damages based on
the partys lack of standing during a seven year
time period))
- Sales of product where the infringed patented

invention is only a small component of the product
(LaserDynamics, 8/30/12; *i4i, 3/10/10; *Lucent,
9/11/09)
Determining the royalty rate Georgia-Pacific factors
- Alternative(s) to licensing or infringement provides a

reasonable basis for estimating the advantages conferred
by the use of the patented technology (Monsanto,
5/24/07)
- Possibility of producing an acceptable

noninfringing alternative (at the time of the
hypothetical negotiation) vs. the actual availability
of an acceptable noninfringing alternative
(Spectralytics, 6/13/11 (reasonable jury could have
found that alleged alternatives were either not
acceptable or not available, and that such a finding
was supported by substantial evidence); Mars,
6/2/08 (the district court correctly reduced the
blended royalty rate, from 11.5% to 7%, based on
the potential availability of noninfringing
alternatives))
- Benefits to both the patentee and licensee, infringer are

considered (Powell, 11/14/11 (cost-savings and other
benefits to the infringer from infringement provided
substantial evidence for the jurys damages award);
*Lucent, 9/11/09; Monsanto, 5/24/07)
- 25-percent rule of thumb suggesting that the licensee

pay a royalty rate equivalent to 25 percent of its expected
1315
profits from the accused product -- rejected (Energy
Transportation Group, 10/12/12 (not departing from
holding of Uniloc, where the patentees damages expert
relied more on other factors to show reasonable royalty,
as well as on an entirely separate, alternative damages
analysis to support the jurys verdict); Whitserve, 8/7/12
(31.8% rate was based on pure conjecture and was, like
the 25% rule of thumb, irrelevant and rejected; use of the
25% rule to be revisited on remand); Uniloc, 1/4/11
(rejecting the 25 percent rule, holding that the 25
percent rule of thumb is a fundamentally flawed tool for
determining a baseline royalty rate in a hypothetical
negotiation. Evidence relying on the 25 percent rule of
thumb is thus inadmissible under Daubert [(S.C.)] and
the Federal Rules of Evidence, because it fails to tie a
reasonable royalty base to the facts of the case at issue))
- Convoyed sales and bundling, i.e., the existing value of

the patented invention to the licensor for generating sales
of his non-patented items, and the extent of such
derivative or convoyed sales - damages evidence allowed
for calculating reasonable royalty (Powell, 11/14/11
(sales and profits from items sold with lumber cut using
the claimed saw guard supported the jurys damages
award); Fujifilm, 5/27/10 (convoyed sales/bundling were
included in reasonable royalty calculations); i4i, 3/10/10;
Minks, 10/17/08; Union Carbide, 10/3/05)
- Entire market value rule requires functional

relationship between the patented and unpatented
components - Rite-Hite (Uniloc, 1/4/11; *Lucent,
9/11/09; Minks, 10/17/08 (entire market value rule also
applicable to determining royalty base); Imonex, 5/23/05)
- For the entire market value rule to apply, the

patentee must prove that the patent-related feature
is the basis for customer demand, or substantially
creates the value of the component parts Lucent,
1316
Rite-Hite (Versata Software, 5/1/13 (entire market
value exception did not apply, and thus the
patentee was not required to show that the patented
feature drove the demand for the infringers
product citing LaserDynamics and SynQor (lost
profits case)); LaserDynamics, 8/30/12 (damages
theory rejected where the patentee failed to prove
that the patented method was the basis for demand
for laptop computers; addressing the entire market
value rule in detail, further to Lucent); Marine
Polymer, 3/15/12 (en banc (5-5)) (substantial
evidence for the jurys damages award based on
the entire market value of the infringing products,
including evidence of the importance of the
patented feature in the infringing products and its
significance for market demand); Uniloc, 1/4/11
(granting a new trial on damages where the
patentee improperly used the entire market value
of $19 billion for Microsoft Windows and Office
as a check against the 2.3% reasonable royalty
rate arrived at by the patentees damages expert,
where the patented feature was not the basis for
customer demand); Finjan, 11/4/10 (substantial
evidence that the accused products profits
stemmed from the claimed feature); *Lucent,
9/11/09 (rejecting application of the entire market
value rule where the patentee failed to present
evidence showing that its claimed method was the
basis, or even a substantial basis, for the consumer
demand for Microsoft Outlook))
- Royalties generally are not based on the

entire product, but instead on the smallest
salable patent-practicing unit the entire
market value rule is a narrow exception to
this general rule, where the patented feature
is the basis for customer demand for an
entire multi-component product Rite-Hite
1317
(Versata Software, 5/1/13; LaserDynamics,
8/30/12 (reaffirming rule that the patentee
must show that the demand for the entire
product is attributable to the patented
feature))
- Consideration of the entire market value of

accused product(s) is not allowed for minor
patent improvements simply by asserting a
low enough royalty rate (LaserDynamics,
8/30/12; Uniloc, 1/4/11)
- Two objectives by the Supreme Court 1)

determining the correct (or at least approximately
correct) value of the patented invention when it is
one part or feature among many, and 2)
ascertaining what the parties would have agreed to
in the context of a license negotiation; the two
objectives do not always meet at the same precise
number (*Lucent, 9/11/09)
- Entire market value of a product is useful for

determining reasonable royalty damages,
especially when there is no established
market value for the infringing component
or feature (LaserDynamics, 8/30/12
(rejecting economic necessity argument);
*Lucent, 9/11/09)
- Established royalty
- Established royalty is usually the best measure of a

reasonable royalty for a given use of an invention
because it removes the need to guess at the terms
to which parties would hypothetically agree; when
a patentee has consistently licensed others to
engage in conduct comparable to the defendants
at a uniform royalty, that royalty is taken as
1318
established and indicates the terms upon which the
patentee would have licensed the defendants use
of the invention Birdsall (S.C.) (*Lucent, 9/11/09
(subject matter of other license agreements relied
on for determining a reasonable royalty was not
comparable to licensing the infringed patented
invention); Monsanto, 5/24/07 (established royalty
approach rejected); See also Monsanto, 2/5/08
(technology fee was not an established royalty for
the infringing act of saving patented seed))
- Baseline royalty rate as the starting point for the

Georgia-Pacific analysis (Finjan, 11/4/10; i4i, 3/10/10
(was necessary because the infringers business strategy
made it difficult to value the infringing component of the
infringers product))
- Foreign sales of component of patented invention may be

evidence of damages 35 USC 271(f) (Union Carbide,
10/3/05)
- Incremental profits of infringer and lost profits of

patentee considered (Powell, 11/14/11 (infringers and
the patentees profit expectations are not an absolute
limit to the amount of reasonable royalty awarded based
on a hypothetical negotiation analysis under the G-P
factors); Finjan, 11/4/10; Wordtech Systems, 6/16/10
(infringers invoices to prove sales revenues, profits);
*Lucent, 9/11/09 (two methods for calculating a
reasonable royalty 1) focus on the infringers
projections of profit for the infringing product, and 2) the
more common approach - the hypothetical negotiation or
willing licensor-willing licensee approach); Mars,
6/2/08 (consideration of incremental, rather than
operating, profits was proper) Fuji Photo, 1/14/05); See
also Heeling Sports, 4/3/09 (nonprecedential
suggesting that the district courts reasonably royalty
damages award, which appeared to be based on the
1319
infringers profits rather than the profits the patentee
would have made absent infringement, was improper)
- Selection of the appropriate method of profit

accounting is left to the broad discretion of the
district court (Finjan, 11/4/10; Mars, 6/2/08
(profitability analysis based on incremental profits
was appropriate)); See also Heeling Sports, 4/3/09
(nonprecedential vacating and remanding for the
district court to explain the methodology used for
calculating reasonable royalty damages)
- Infringers anticipated profit margin from use of the

patented invention can be relevant to determining a
royalty rate (Energy Transportation Group, 10/12/12
(patentees expert properly used profit margin analysis
based on the benefit provided by the patented technology
to the accused products (i.e., the premium on operating
profits enjoyed by the accused products), as set forth in
TWM Mfg.); Finjan, 11/4/10; Wordtech Systems,
6/16/10; *i4i, 3/10/10 (infringers profit margin used in
calculating a baseline royalty rate); *Lucent, 9/11/09;
Mars, 6/2/08; Innogenetics, 1/17/08)
- Law does not require that an infringer be permitted

to make a profit; there is no rule that a royalty be
no higher than the infringers net profit margin
(Powell, 11/14/11 (citing Golight); Mars, 6/2/08
(rejecting the infringers argument that a
reasonable royalty can never result in an infringer
operating at a loss))
- Infringers cost-savings from use of the infringing

product is a well-settled method for determing a
reasonable royalty - Hanson (Powell, 11/14/11)
- Market entry fee (amount paid in anticipation of

infringers long-term license to sell infringing products)
1320
and running royalty awarded fully compensated the
patentee for past and future infringement (Innogenetics,
1/17/08)
- Pre-verdict vs. post-verdict infringement damages

fundamental difference between a reasonable royalty
amount for the two; consider the change in the parties
legal relationship and other factors Paice (J. Rader,
concurring); liability for infringement, as well as the
validity of the patent, prior to judgment is uncertain, and
damages are determined in this context, vs. once
infringement and validity judgment entered, must
consider the change in the parties bargaining positions,
and the resulting change in economic circumstances after
liability determined (several listed) (Bard, 2/10/12
(applying rule in the context of deciding the proper
amount of an ongoing royalty to award in lieu of an
injunction citing Amado) [vacated in part after
remanded on 6/14/12]; Amado, 2/26/08 (distinguishing
Paice, in that the district court judge should have
accounted for fact of infringing sales, which were
enjoined, in determining a reasonable royalty for sales
during the stay of an injunction))
- Reasonable royalties found
- Blended royalty rate for two patents was

appropriate (Mars, 6/2/08)
- Royalty awarded was reasonable given the

contentious history between the parties (Mitutoyo,
9/5/07)
- Royalty awarded was reasonable when patentee

not likely to have accepted royalty less than
patentees profit margin (Mitutoyo, 9/5/07)
1321
Other reasonable royalty-related issues
- Expert testimony (Synqor, 3/13/13; LaserDynamics,

8/30/12 (granting a new trial after rejecting testimony of
the patentees expert, which included relying on the
entire market value rule for calculating damages and
failing to consider actual licenses to the patent, as
speculative, inconsistent, lacking economic analysis, and
otherwise not supported by the facts, including that the
expert failed to conduct market studies or consumer
surveys to ascertain whether the demand for laptop
computers was driven by the patented method; also
rejecting under Daubert (S.C.) and FRE 702 additional
expert testimony relating to damages methodology);
Whitserve, 8/7/12 (patentees experts testimony
regarding royalty rate rejected as speculative); In re
MSTG, 4/9/12 (Order) (district court did not abuse
discretion in ordering production of settlement
documents likely relevant to the opinion of the patentees
damages expert); Marine Polymer, 3/15/12 (en banc)
(conflicting expert testimony on royalty rate); Powell,
11/14/11; Spectralytics, 6/13/11 (patentees expert
testified that the hypothetical negotiation favored a 20-
percent royalty, based on the G-P factors, and thus the
jurys 5-percent royalty award was not too high);
Siemens, 2/24/11 (expert testimony on reasonable royalty
appropriate on remand); Uniloc, 1/4/11 (damages
testimony must be tied to the facts of the case Daubert
(S.C.)); Finjan, 11/4/10 (jurys damages award had a
reasonable basis where the jury was entitled to weigh the
opposing damages experts testimony); Wordtech
Systems, 6/16/10 (noting the absence of expert damages
testimony); Fujifilm, 5/27/10 (basing royalty rate and
base on expert testimony regarding a hypothetical
negotiation, and including convoyed sales/bundling);
*i4i, 3/10/10 (containing a detailed discussion of the
patentees experts reasonable royalty damages analysis
based on a hypothetical negotiation and, inter alia,
1322
several relevant G-P factors); *Lucent, 9/11/09
(testimony of the patentees damages expert did not
provide substantial evidence to support the jurys
excessive damages award); Monsanto, 2/5/08; Monsanto,
5/24/07; Imonex, 5/23/05; Utah Products, 12/4/03)
- Jury is free to evaluate conflicting evidence, expert

testimony (Versata Software, 5/1/13 (jury drew
inferences based on common sense, applying the
infringers experts proposed royalty to a larger
number of sales than the infringer desired
applying 5th Cir. law); Marine Polymer, 3/15/12
(en banc) (jurys damages award was supported by
substantial evidence based on witness testimony
and where it properly credited the testimony of the
patentees expert over the infringers expert))
- Jury can choose intermediate royalty rate,

and is not bound to accept rate proffered by
one partys experts (Versata Software,
5/1/13; Powell, 11/14/11; *Lucent, 9/11/09;
Fuji Photo, 1/14/05)
- Valuation of damages, via expert testimony

(Versata Software, 5/1/13; (jurys award was based
on the infringers experts damages theory, after
the patentees experts testimony was
excluded);LaserDynamics, 8/30/12; Powell,
11/14/11; Uniloc, 1/4/11; Fujifilm, 5/27/10 (jury
award supported by expert testimony); *i4i,
3/10/10 (detailed explanation of the jurys $200
million damages award by the patentees damages
expert); *Lucent, 9/11/09 (experts valuation of
damages was excessive and not supported by the
evidence); *Monsanto, 5/24/07); See also Heeling
Sports, 4/3/09 (nonprecedential the patentees
expert opined that the amount of the reasonable
royalty equaled the patentees profit per unit)
1323
- Settlement agreement providing for reasonable royalty
based on law applicable to Section 284 thus, court or
jury determines, and G-P factors applied (Parental Guide
of Texas, 4/21/06)
- 35 USC 154(d)(1) and (2) patent applicant can obtain

reasonable royalties for infringement of a published
application if two conditions are met -- 1) issued claims
must be substantially identical to the published claims,
and 2) actual notice was given of the published
application, i.e., 154 notice (Stephens, 12/29/05)
- Section 284 gives the district court discretion to increase

the damages up to three times the amount found or
assessed; enhanced damages are punitive, not
compensatory, and can be awarded only in the judges
discretion (Whitserve, 8/7/12 (abuse of discretion and
remanding for determination and explanation regarding
award of enhanced damages); Bard, 2/10/12 [vacated in
part after remanded on 6/14/12]; i4i, 3/10/10)
- Willfulness required - an award of enhanced damages

under Section 284 requires a showing of willful
infringement (or bad faith) Seagate, Beatrice Foods
(Synqor, 3/13/13; Whitserve, 8/7/12 (willfulness is
sufficient to meet the first requirement to increase a
compensatory damages award); Bard, 2/10/12 [vacated
in part after remanded on 6/14/12]; Spine Solutions,
9/9/10 (vacating award of enhanced damages after
reversing willfulness judgment); i4i, 3/10/10; Depuy
Spine, 6/1/09; Cohesive Techs., 10/7/08 (rejecting the
patentees argument to overrule the Beatrice Foods rule);
In re Seagate Technology, 8/20/07 (en banc) (see also J.
Gajarsa and J. Newman, concurring - asserting reasons
1324
for why an award of enhanced damages under Section
284 should not be limited to willful infringement, but
rather should be left to the discretion of district courts;
the willfulness requirement should not be read into
Section 284, because there is a remedial, in addition to a
punitive, aspect of enhanced damages)); See also Lee,
- Willfulness, i.e., objective recklessness by the

accused infringer, must be shown (by C&C
evidence) for the patentee to recover enhanced
damages (Bard, 2/10/12 [vacated in part after
remanded on 6/14/12]; Powell, 11/14/11; i4i,
3/10/10 (jury was instructed on the above and
found willfulness); In re Seagate Technology,
8/20/07 (en banc))
- Read v. Portec factors are applied in determining whether

an infringer acted in bad faith, and in deciding whether,
and by how much, to enhance damages within the
district courts discretion, informed by the totality of the
circumstances (Synqor, 3/13/13; Whitserve, 8/7/12;
Bard, 2/10/12 (no abuse of discretion in doubling
damages where the district court conducted a detailed
and exhaustive review of all nine Read factors to
ascertain whether the infringer acted in bad faith to merit
an increase of the jurys damages award) [vacated in
part after remanded on 6/14/12]; Powell, 11/14/11
(affirming enhanced damages which the district court
based on all the facts and circumstances);
Spectralytics, 6/13/11 (precedent has clarified that the
failure to obtain an opinion of counsel or otherwise
investigate the patent situation can be considered in the
totality of the circumstances); Funai, 9/1/10 (no abuse of
discretion in denying enhanced damages after weighing
Read v. Portec factors, and calling its decision a close
call which included DOE rather than literal infringement
of two of three patents); i4i, 3/10/10 (affirming the
1325
district courts enhancement of $200 million jury
damages award by $40 million after weighing several
Read v. Portec factors, including factor 2, finding that the
willful infringer was aware of the patent but never
formed a good faith belief of noninfringement); In re
Seagate Technology, 8/20/07 (en banc); NCube, 1/9/06;
MercExchange, 3/16/05; Juicy Whip, 9/3/04; Metabolite
Labs, 6/8/04; Novo, 12/5/03); See also Gentile, 4/6/10
(nonprecedential all relevant factors considered); See
also WILLFUL INFRINGEMENT Read v. Portec
factors . . .
- Paramount determination in deciding to grant

enhancement and the amount thereof is the
egregiousness of the defendants conduct based on
all the facts and circumstances Read v. Portec
(Synqor, 3/13/13 (basis for the district courts
correct determination awarding enhanced damages
for willful post-verdict infringement);
Spectralytics, 6/13/11)
- Award of enhanced damages, and not attorney

fees, and vice versa (Group One, 5/16/05)
- District courts discretion - willful infringement

merely authorizes, but does not mandate an award
of, enhanced damages (Edwards Lifesciences,
11/13/12 (no abuse of discretion in the district
courts decision not to enhance damages despite
sustaining the jurys verdict of willfulness, where
the district court found that the issues were
sufficiently close and the defenses not frivolous
citing Bard (enhancement of damages is not
automatic)); Bard, 2/10/12 [vacated in part after
remanded on 6/14/12]; Spectralytics, 6/13/11;
Funai, 9/1/10 (trial judge is in the best position to
weigh considerations relating to enhancing
damages); In re Seagate Technology, 8/20/07 (en
1326
banc); NCube, 1/9/06; Group One, 5/16/05; Juicy
Whip, 9/3/04); See also Lee, 11/21/13
(nonprecedential)
- Broad discretion in determining amount of

enhanced damages and attorneys fees
district court applies Read v. Portec factors,
e.g., defendants level of culpability (Bard,
2/10/12 (no abuse of discretion in doubling
(rather than tripling, as Section 284 allows)
of damages based on the Read factors)
6/14/12]; Spectralytics, 6/13/11; Funai,
9/1/10; i4i, 3/10/10 (agreeing that damages
may not be enhanced based on the
infringers litigation misconduct alone);
NCube, 1/9/06; Harris, 8/5/05;
MercExchange, 3/16/05); See also
WILLFUL INFRINGEMENT
- Seagate (test for willfulness) vs. Read

(enhancement of damages) the test for
willfulness is distinct and separate from the
factors guiding a district courts discretion
regarding enhanced damages (Spectralytics,
6/13/11 (district court improperly applied
the Seagate standard in denying enhanced
damages after willful infringement was
found); i4i, 3/10/10)
- Post-filing conduct patentee must move for a PI to

recover enhanced damages (In re Seagate Technology,
8/20/07 (en banc)); See WILLFUL INFRINGEMENT
Generally Objective recklessness standard
Pre-judgment interest
1327
- Pre-judgment interest on infringement damages 35
USC 284 (shall award the claimant damages . . .
together with interest and costs . . . .) the award of pre-
judgment interest is the rule, not the exception -- when a
patentee asserts a patent claim that is held to be valid and
infringed, prejudgment interest is generally awarded,
absent some justification for withholding such an award
(e.g., undue delay in prosecuting the lawsuit) GM Corp.
(S.C.) (Energy Transportation Group, 10/12/12 (no abuse
of discretion by following the standard rule of awarding
pre-judgment interest); Whitserve, 8/7/12; Sanofi-
Aventis, 10/18/11 (reversing the district courts award of
prejudgment interest based on the terms of a settlement
agreement between the parties specifying the full amount
of compensatory damages, which included prejudgment
interest; see also J. Newman, dissenting the settlement
agreement did not alter the general rule that prejudgment
interest is awarded on damages for patent infringement
If the parties had intended to prevent the award of
interest they would have done so explicitly, for the award
of interest is the statutory rule, not the exception.
citing Section 284, GM Corp. (S.C.) and Ecolab);
Telcordia Techs., 7/6/10; Ecolab, 6/9/09 (district court
abused its discretion in denying the patentees motion for
prejudgment interest without providing a valid
justification for withholding the interest); Group One,
5/16/05); See also Extreme Networks, 9/30/10
(nonprecedential defining prejudgment interest, and
that courts should calculate prejudgment interest before
determining the amount of damages that would fully
compensate the patentee for the infringers use of the
patented invention); Hildebrand, 5/7/09 (nonprecedential
district court did not abuse its discretion in denying an
untimely motion for prejudgment interest)
- Prejudgment interest is a form of compensatory

relief, which compensates the patent owner for the
use of its money between the time of infringement
1328
and the date of judgment serves to make the
patent owner whole GM Corp. (S.C.) (Whitserve,
8/7/12; Sanofi-Aventis, 10/18/11 (interpreting
actual damages in settlement agreement as
intended to account for all potential compensatory
damages, including prejudgment interest; see also
J. Newman, dissenting distinguishing damages
from interest as separate categories in Section
284))
Post-judgment interest
- Generally 28 USC 1961(a) (Taltech, 5/12/10

(applying 9th Cir. law))
- Post-judgment interest (during appeal period) the

responsibility and authority for determining whether a
party to an appeal is entitled to post-judgment interest
(under FRAP 37(b) when the appellate decision
modifies the district courts judgment) is assigned to
the appellate tribunal (Depuy Spine, 6/1/09 (remanding
for calculation of post-judgment interest); Mars, 3/9/09
(Order) (recalling mandate to instruct the district court
concerning an award of post-judgment interest))
Costs FRCP 54(d)(1), 28 USC 1919, 1920
- Costs awarded to the prevailing party; district court has

broad discretion; Section 1920 limits what costs can be
awarded (Synopsys, 11/23/11 (addressing whether
disputed costs allowable under Section 1920, including
costs for copies, written transcription and video of
depositions, translations and interpreters, and electronic
discovery, databases (applying 9th Cir. law, including
local rules)); Shum, 12/22/10 (n.8: trial court retains
broad discretion as to how much to award, if anything;
1329
see also J. Newman, dissenting); Kara Technology,
9/24/09 (n.3: district courts determination that defendant
who won on infringement was not the prevailing party
because it lost on its counterclaim of unenforceability
conflicted with CAFC precedent); Blackboard, 7/27/09
(cross-appeal of denial of costs related to discovery
expenses dismissed as moot upon reversal of the district
courts judgment); Ortho-McNeil, 6/10/09; Clearvalue,
3/24/09 (no longer a prevailing party after reinstating
claims stricken by the district court); Rothman, 2/13/09
(vacating cost award based on IC where no IC); Kemin
Foods, 9/25/06; Summit Technology, 1/26/06; Power
Mosfet Techs., 8/17/04; Inland Steel, 4/9/04)
- Award of costs involves two separate inquiries: 1)

who is the prevailing party within the meaning
of Rule 54(d)(1), and 2) how much (if any) costs
should be awarded to the prevailing party? (Shum,
12/22/10 (determining that defendants were the
prevailing party under Rule 54 based on an
examination of the parties respective successes;
see also J. Newman, dissenting the plaintiff was
the prevailing party))
- Only one prevailing party (Shum,

12/22/10 (interpreting Rule 54(d)(1))
- Claims dismissed with prejudice have

prevailing party (Power Mosfet Techs.,
8/17/04)
- Prevailing party requires that the party have

received at least some relief on the merits, which
relief must materially alter the legal relationship
between the parties by modifying one partys
behavior in a way that directly benefits the
opposing party Farrar (S.C.), Manildra Milling
(Shum, 12/22/10 (giving examples where the
1330
winning party is given a competitive edge over
the other party e.g., a party that obtains an
injunction, judgment of infringement, or
declaration of patent invalidity; see also J.
Newman, dissenting competitive edge is not a
requirement))
- Party need not prevail on all claims in order

to qualify as a prevailing party under Rule
54 (Shum, 12/22/10)
- Award of costs presumption in favor of awarding

costs to the prevailing party to overcome this
presumption, the losing party must establish a
reason to deny costs and the district court must
give specific reasons for refusing to award costs
(Shum, 12/22/10 (losing party failed to overcome
the strong presumption of awarding costs to the
prevailing party, applying 9th Cir. law))
- Full costs vs. apportioning costs district courts

discretion (Shum, 12/22/10 (see also J. Newman,
dissenting making the plaintiff pay Intels costs
was unfair); Ortho-McNeil, 6/10/09 (district court
abused discretion by not apportioning joint
discovery (shared deposition) costs between the
present action and a parallel action brought in
another district against another defendant, where
the plaintiff had already effectively received half
of the shared costs when it settled with the other
defendant)); Kemin Foods, 9/25/06)
- Apportioning payment of jointly incurred

costs among the losing parties (in multiparty
proceeding or consolidation of multiple
cases into a single proceeding, before a
single judge) or invoking the default rule
that the losing parties are jointly and
1331
severally liable for costs? (Ortho-McNeil,
6/10/09 (apportioning shared costs for joint
discovery conducted in separate cases in
different district courts))
- Apportioning costs for joint discovery

conducted in multiple cases pending in
different districts, to avoid double recovery
(Ortho-McNeil, 6/10/09)
- Equal apportionment between the losing

parties? (Ortho-McNeil, 6/10/09 (remanding
for the district court to decide apportionment
in the first instance))
- Mixed judgment case (Shum, 12/22/10

(district court did not abuse its discretion in
awarding costs to each party with respect to
the claims on which they each prevailed,
then netting those sums to arrive at the final
figure and award to the defendants; see also
J. Newman, dissenting when the plaintiff
and defendant both have lost on significant
issues, courts have generally awarded no
costs))
- No double recovery to the winning party

allowed (Ortho-McNeil, 6/10/09)
- District court must provide explanation of its

decision regarding costs (Zenith Electronics,
4/16/08 (applying 7th Cir. law))
- Cost awards under 28 USC 1920 controls a

federal courts power to hold a losing party
responsible for the opponents fees by limiting
what costs can be awarded Crawford Fitting
(S.C.) (Synopsys, 11/23/11; Clearvalue, 3/24/09
1332
(reversing award where no prevailing party after
reinstating claims))
- Cost awards bound by constraints of 28 USC

1920 burden is on the prevailing party;
when challenged, the prevailing party needs
reliable documentation or other proof that its
bill of costs represents the allowable costs
that it actually and necessarily incurred
during the litigation (Synopsys, 11/23/11
(prevailing party failed to meet its burden
under Section 1920 to establish entitlement
to costs, where evidence (invoices, itemized
spreadsheets) was not specific enough
stating the requirements for a bill of costs -
represent a calculation that is reasonably
accurate under the circumstances); Summit
- Section 1920 does not set maximum

costs around which private parties
may not contract contractual costs
are not limited by 1920; however,
double assessment of costs is not
permitted (Monsanto, 2/5/08 (costs
agreed to in technology agreement
were enforceable, even though those
costs exceeded the costs recoverable
under 1920))
- Limiting award of costs parties may

agree to limit or share costs that
would otherwise be taxable under
Section 1920 (Synopsys, 11/23/11
(limiting the award of costs based on
the parties cost-sharing agreement)
1333
- Cost awards under 28 USC 1919 - whenever a
lawsuit is dismissed by a district court (Propat
Intl, 1/4/07)
Punitive damages
- Punitive damages - 3 factors (Rhone-Poulenc, 9/29/03)
Equitable remedies
- District courts equity jurisdiction provides broad and

flexible powers to deliver justice in unique
circumstances; equitable remedies must be flexible if the
underlying principles are to be enforced with fairness and
precision Freeman (S.C.) (Taylor, 8/4/09
(nonprecedential equitable relief was appropriate to
remedy the PTOs arbitrary and capricious actions)
B. INJUNCTIONS 35 USC 283, FRCP 65
Preliminary Injunctions
(Lifescan, 11/4/13 (reversing PI where accused infringer established it

had a patent exhaustion defense); Aevoe, 8/29/13 (dismissing appeal
for lack of CAFC jurisdiction because of the enjoined partys failure
to appeal from the grant of an original PI, where its appeal from a
later revised PI after selling a redesign of the accused product was
untimely because the later PI clarified, and did not modify, the scope
of the original PI as it did not substantially alter the legal relationships
between the parties, applying 9th Cir. law); Aria Diagnostics, 8/9/13
(vacating and remanding the denial of PI where the district court
improperly balanced factors, and erred in finding a substantial
question of noninfringement based on erroneous narrow claim
constructions); Revision Military, 11/27/12 (vacating the district
courts denial of PI where it improperly applied the Second Circuits
heightened clear and substantial likelihood of success standard
1334
(applied when a movant seeks an injunction that will alter rather than
maintain the status quo), rather than the CAFC (more-likely-than-
not) standard); Apple, 10/11/12 (reversing the grant of PI where no
causal nexus between the alleged harm and the alleged infringement);
Momenta, 8/3/12 (vacating grant of PI where the district court erred in
interpreting Section 271(e)(1) too narrowly); Sciele Pharma, 7/2/12
(vacating grant of PI where the district court erroneously interpreted
the law in not concluding a substantial question of invalidity
(obviousness) based on motivation to combine prior art references
previously considered by the PTO); Apple, 5/14/12 (affirming the
denial of PI, based on the district courts discretion, where irreparable
harm was not shown in the absence of a required nexus between the
infringement and the alleged harms, and because of the patentees
delay in moving for the PI; vacating and remanding the denial of PI
for one design patent, where the required nexus and irreparable harm
were shown, but the district court had not yet weighed the balance of
hardships and public interest factors; see also J. OMalley, dissenting
would have remanded and ordered the grant of PI based on the
record for the above design patent, which included irreparable harm to
the patentee, and to avoid unnecessary delay; also discussing the
purpose of FRCP 65 (and its provision for a bond in Rule 65(c)) and
the presence of the other PI factors weighing in the patentees favor);
Celsis In Vitro, 1/9/12 (affirming grant of PI where likelihood of
success of showing nonobviousness; see also J. Gajarsa, dissenting);
Kimberly-Clark, 9/29/11 (Order) (J. Newman and J. OMalley
dissenting from the courts denial of petition for rehearing en banc in
Kimberly-Clark, 6/1/11 (nonprecedential) see below); General
Protecht Group, 7/8/11 (affirming grant of PI against enforcing
patents in other forums contrary to a forum selection clause in a
settlement agreement in a prior litigation); Astrazeneca, 11/1/10
(affirming grant of PI where the patentee was likely to prove
inducement of valid method claims; see also J. Bryson, dissenting);
Titan Tire, 6/3/09 (no abuse of discretion in denying motion for PI
where the design patentee failed to show a likelihood of success with
regard to validity (obviousness)); Abbott Labs, 5/18/09 (no abuse of
discretion in denying motion for PI where the claims were properly
construed to exclude the accused Crystal B, both literally and by
equivalents); Altana Pharma, 5/14/09 (PI motion denied where there
1335
was a substantial question of obviousness of the claimed compound,
and no irreparable harm based on generic entry to market); Procter &
Gamble, 12/5/08 (district court abused discretion by effectively
denying motion for PI without considering and balancing the required
factors); *Abbott Labs, 10/21/08 (majority ruling no abuse of
discretion by the district court in granting motion for PI (based on the
patentee Abbotts likelihood of success on the merits and the three PI
equitable factors weighing in Abbotts favor) pending final resolution
at trial of infringement, validity, and enforceability challenges; J.
Newman, writing for the majority, ruled that the correct standard for
granting a motion for PI is whether the patentee is likely to succeed
on the merits, upon application of the standards of proof that will
prevail at trial (and not whether the patent is vulnerable because
the infringer raises a substantial question concerning the patents
infringement or validity, as argued by J. Gajarsa, dissenting); also, not
clear from the case which standard J. Archer (completing the majority
opinion affirming the grant of the PI) believes to be correct);
Jacobsen, 8/13/08 (PI against copyright infringement, applying 9th Cir.
law); DuPont, 5/14/08 (district court abused its discretion in finding
that a substantial question as to validity existed because of uncertainty
regarding the priority date); Judkins, 4/8/08 (section 43(a) Lanham
Act claim based on patentees notice of patent rights); Erico Intl,
2/19/08; Chamberlain Group, 2/19/08 (vacated because of erroneous
claim construction); Somerset, 10/4/07; GP Industries, 9/20/07 (notice
of patent rights); In re Seagate Technology, 8/20/07 (en banc)
(proving willfulness by filing a motion for PI); Entegris, 6/13/07
(motion to dissolve PI); Abbott Labs, 1/5/07; Sanofi-Synthelabo,
12/8/06; PHG Technologies, 11/17/06; Abbott Labs, 6/22/06; Varco,
2/1/06; Pfizer, 11/22/05; Gillette, 4/29/05; National Steel Car,
1/29/04; Ranbaxy, 11/26/03); See also Core Labs, 8/7/13
(nonprecedential reversing the denial of PI with respect to trade
secret misappriation claim, where the district court clearly erred by
not finding irreparable injury and the plaintiff showed a likelihood of
success for establishing the elements of trade secret misappropriation
under Texas law); Hoffmann-La Roche, 10/11/12 (nonprecedential
affirming denial of PI where the patentee failed to show
nonobviousness, and no abuse of discretion where there were no
clearly erroneous findings by the district court that a likelihood of
1336
success was not shown; see also J. Newman, dissenting must
consider the equities that apply at the PI stage, which weigh heavily
for preserving the status quo during the litigation); Sciele Pharma,
2/6/12 (Order) (nonprecedential district court must make adequate
findings of fact and conclusions of law (here, regarding the
defendants obviousness challenge) before granting a PI to allow the
CAFC to have a basis for meaningful review citing FRCP 52(a) and
53(a)(1)); Warner Chilcott, 12/12/11 (nonprecedential vacating PI
because the district court failed to conduct an evidentiary hearing
despite disputed fact issues (between experts), and also failed to
address the defendants invalidity arguments (applying 3rd Cir. law);
also addressing granting a TRO and consolidating the PI hearing and
trial on the merits); Mytee Products, 9/2/11 (nonprecedential delay
in seeking a PI is a factor to consider in deciding whether to issue the
PI); Kimberly-Clark, 6/1/11 (nonprecedential vacating PI on three
patents for which substantial question of validity shown, while
affirming grant of PI on fourth patent) [petition for rehearing en
banc was denied in a precedential Order on 9/29/11; J. Newman
and J. OMalley dissented from the denial of the petition, arguing
that the panel (and panels in other cases) applied the wrong test in
denying PI relief (i.e., denying relief when the accused infringer
asserts a defense that does not lack substantial merit) and should
have 1) applied the four-factor test for a PI used by the Supreme
Court and every other circuit, 2) considered the presumptions and
burdens that will inhere at trial, and 3) respected the district
courts discretionary authority in granting PI relief]; Quad/Tech,
3/21/11 (nonprecedential PI properly denied based on the district
courts construction of claim term); Duhn Oil Tool, 1/19/10 (Order)
(nonprecedential vacating PI where the patentee showed no
irreparable harm); Automated Merchandising Systems, 12/16/09
(nonprecedential vacating PI where the district court also stayed the
litigation pending reexam); Novo Nordisk, 7/30/08 (nonprecedential
no likelihood of success shown); AG Design & Assocs., 3/24/08
(nonprecedential no likelihood of success in showing DOE
infringement, because of PHE); Outside the Box Innovations, 1/15/08
(nonprecedential; no likelihood of success in showing infringement)
1337
District courts discretion
- Discretion of trial judge for the extraordinary relief of a PI --

analogous to Ebay v. MercExchange (S.C.) regarding
permanent injunctions, which grant thereof is within the
equitable discretion of the district court (Revision Military,
11/27/12 (remanding a denial of PI for redetermination in
accordance with the correct criteria because [i]t is the role of
the district court to determine, in the first instance, whether a
preliminary injunction is warranted on the law, facts, and
equities of the case.); Momenta, 8/3/12 (discretion not
absolute); Apple, 5/14/12 (affirming the denial of PI based on
the district courts discretion, which makes the appellants task
in overturning that decision a difficult one); Celsis In Vitro,
1/9/12 (no abuse of discretion in granting PI); Kimberly-Clark,
9/29/11 (Order) (J. Newman and J. OMalley dissenting from
denial of petition for rehearing en banc); Titan Tire, 6/3/09
(granting a motion for PI is within the district courts discretion
based on the four factors, even when the patentee has shown a
likelihood of success on the merits); Abbott Labs, 5/18/09 (trial
court is given broad leeway to discern a likelihood of
success); Altana Pharma, 5/14/09 (the law highlights the
CAFCs deference to a district courts determination whether a
movant has sufficiently shown irreparable harm); Procter &
Gamble, 12/5/08; Abbott Labs, 10/21/08 (no abuse of discretion
in granting motion for PI); Erico Intl, 2/19/08 (J. Newman,
dissenting, citing eBay and that a PI preserves the status quo
and is fully within the district courts discretionary authority);
Abbott Labs, 6/22/06); See also Kimberly-Clark, 6/1/11
(nonprecedential the district courts findings at the PI stage
deserve tolerance by reviewing courts so they can tailor
procedures of adjudication to the case); See also STANDARDS
OF REVIEW Injunctions
- Bond FRCP 65(c) amount of bond rests within

discretion of district court (Celsis In Vitro, 1/9/12;
Abbott Labs, 10/21/08 (abuse of discretion shown in
setting terms of PI); Sanofi-Synthelabo, 12/8/06)
1338
- District court must state findings of fact and conclusions
of law for granting or refusing a PI, under FRCP 52(a)(1)
(Warner Chilcott, 12/12/11 (nonprecedential vacating
and remanding PI for the proper analysis, where the
district court failed to make findings and conclusions of
law regarding the defendants invalidity defense citing
Titan Tire))
- Harmless error when an alternative basis for denying a PI

motion (Abbott Labs, 5/18/09 (misstatements of law
were harmless because they merely formed an alternative
basis for the district courts denial of motion for PI))
- Purpose of a PI to preserve the relative positions of the

parties until a trial on the merits can be held U. Texas
(S.C.) (Abbott Labs, 10/21/08 (J. Newman))
Extraordinary relief - four-factor test for PI
- PI is an extraordinary remedy that may only be awarded upon a

clear showing that the plaintiff is entitled to such relief Winter
(S.C.) (Lifescan, 11/4/13)
- FOUR FACTORS must be shown by the patent owner for

obtaining a PI: 1) a reasonable (or some) likelihood of success
on the merits; 2) the prospect of (immediate) irreparable harm
to the patent owner if the injunction is not granted; 3) a balance
of hardships i.e., that this harm would exceed the harm to the
alleged infringer when subject to the injunction tipping in the
movants favor; and 4) that granting the injunction is in the
public interest (Lifescan, 11/4/13; Aria Diagnostics, 8/9/13;
Apple, 10/11/12; Momenta, 8/3/12; Sciele Pharma, 7/2/12;
Apple, 5/14/12; Celsis In Vitro, 1/9/12 (addressing all four
factors in affirming grant of PI); Kimberly-Clark, 9/29/11
(Order) (J. Newman and J. OMalley dissenting from denial of
petition for rehearing en banc four factor test is the correct
1339
test to apply, rather than deciding whether the accused infringer
asserted a defense that does not lack substantial merit);
Astrazeneca, 11/1/10; *Titan Tire, 6/3/09 (citing the four
factors recently reiterated by the U.S. Supreme Court (2008) as
the current statement of the test having slight differences
from the above, including that the first factor requires a
likelihood (rather than a reasonable likelihood) of success on
the merits as the definitive one); Abbott Labs, 5/18/09;
Altana Pharma, 5/14/09; Procter & Gamble, 12/5/08; Abbott
Labs, 10/21/08 (no abuse of discretion in granting motion for PI
based on a likelihood of success regarding infringement,
validity and enforceability; see also dissent, J. Gajarsa, arguing
no likelihood of success on the merits based on substantial
questions as to both validity and enforceability); Judkins,
4/8/08 (applying 3rd Cir. law to section 43(a) Lanham Act claim
for bad faith enforcement of patent); Erico Intl, 2/19/08;
Somerset, 10/4/07; GP Industries, 9/20/07; Abbott Labs, 1/5/07;
Sanofi-Synthelabo, 12/8/06; PHG Technologies, 11/17/06
(validity, design patents); Abbott Labs, 6/22/06 (invalidity);
Pfizer, 11/22/05; National Steel Car, 1/29/04)
- Unclear whether the addition of reasonable to the first

factor adds anything substantive to the test (Titan Tire,
6/3/09 (applying the Supreme Court test in which the first
factor is a likelihood of success on the merits))
- First two of the four factors must be shown before granting a

motion for PI (Altana Pharma, 5/14/09 (PI properly denied
where neither factor was shown); PHG Technologies, 11/17/06;
National Steel Car, 1/29/04); See also Kimberly-Clark, 6/1/11
(nonprecedential); Automated Merchandising Systems,
12/16/09 (nonprecedential); AG Design & Assocs., 3/24/08
(nonprecedential movant for PI must establish a reasonable
likelihood of success on the merits, citing Somerset); Canon,
1/25/08 (nonprecedential - the ultimate decision in a PI context
requires a flexible balancing of the parties respective showings
of potential irreparable harm and the movants likelihood of
success on the merits)
1340
Likelihood of success on the merits
- Likelihood of success on the merits PI motion denied if

a substantial question is raised by the nonmovant
regarding infringement or validity (Lifescan, 11/4/13
(reversing PI where the accused infringer established a
patent exhaustion defense as a matter of law); Aria
Diagnostics, 8/9/13; Apple, 10/11/12; Sciele Pharma,
7/2/12 (vacating PI where substantial question of
invalidity, obviousness); Celsis In Vitro, 1/9/12;
Astrazeneca, 11/1/10; Titan Tire, 6/3/09 (PI motion was
properly denied where the defendant raised a substantial
question regarding the validity (obviousness) of a design
patent); Altana Pharma, 5/14/09 (substantial question
raised regarding the obviousness of the claimed
compound); Procter & Gamble, 12/5/08 (distinguishing
the PTOs substantial new question of patentability
standard for ordering a reexamination from the (more
strict) substantial question of validity standard for
showing the absence of a likelihood of success on the
merits for a PI); *Abbott Labs, 10/21/08 (panel disagreed
as to the proper standard for granting PI motion - J.
Newman opining that likelihood of success on the merits,
based on the burdens of proof imposed at trial, alone is
the standard, which is not based on whether the infringer
raises a substantial question as to infringement or
validity which prevents a finding of a likelihood of
success on the merits, as argued by J. Gajarsa,
dissenting); DuPont, 5/14/08; Erico Intl, 2/19/08 (the
defendant need not prove actual invalidity; invalidity
challenge based on obviousness cast enough doubt on
the validity of the disputed claim to negate likelihood of
success on the merits as to infringement of a valid patent;
see also J. Newman, dissenting: The correct criterion is
not whether there is a substantial question; it is whether
the defendants have shown that they are likely to succeed
1341
on the merits, on the standards and burdens of proof as
would prevail at trial; also stressing the importance of
preserving the status quo pending a final decision on
validity, and that all four PI factors should be considered
under eBay (S.C.) (compare dissent to J. Newmans
dissent in Abbott Labs, 6/22/06, below); In re Seagate
Technology, 8/20/07 (en banc); Entegris, 6/13/07; Abbott
Labs, 1/5/07), AND the burden shifts and the movant
(patentee) cannot show the defense lacks substantial
merit (for invalidity less proof than C&C evidence
required at the PI stage) (Celsis In Vitro, 1/9/12 (see also
J. Gajarsa, dissenting majority required C&C evidence
of obviousness at PI stage); Kimberly-Clark, 9/29/11
(Order) (J. Newman and J. OMalley dissenting from
denial of petition for rehearing en banc substantial
merit and vulnerability tests are incorrect tests see
above); Astrazeneca, 11/1/10; *Titan Tire, 6/3/09
(explaining that a substantial question of validity refers
to a substantive conclusion the trial court reaches after
weighing all the evidence regarding validity presented by
the plaintiff and defendant; the accused infringer need
not prove invalidity by C&C evidence at the PI stage);
Altana Pharma, 5/14/09 (district court did not apply a
legally incorrect standard by placing the burden on the
patentee); In re Seagate Technology, 8/20/07 (en banc);
Entegris, 6/13/07; Sanofi-Synthelabo, 12/8/06; PHG
Technologies, 11/17/06; Abbott Labs, 6/22/06 (J.
Newman dissented from the majoritys de novo ruling,
citing eBay v. MercExchange (S.C.), stating that the
decision on grant of a PI is within the sound discretion of
the district court, particularly when the PI preserves
relationships of parties, i.e., the status quo, during the
litigation; abuse of discretion standard; also necessary to
consider the burdens of proof in determining likelihood
of patent invalidity, substantial question and
vulnerability of invalidity are not the correct criteria
for determining likelihood of success); National Steel
Car, 1/29/04); See also Butamax, 11/16/12
1342
(nonprecedential affirming the denial of PI); Warner
Chilcott, 12/12/11 (nonprecedential vacating PI where
the district court failed to weigh the evidence or make
findings regarding the defendants invalidity challenge
citing Titan Tire); Kimberly-Clark, 6/1/11
(nonprecedential standard met for three of four patents
on which PI was granted); Novo Nordisk, 7/30/08
(nonprecedential patentee failed to show that non-
movants noninfringement defense lacked substantial
merit, which raised substantial questions regarding
whether the claims based on the specification as a whole
required certain features not in the accused product; also,
at the PI stage, irrelevant whether the case presents
greater issues of claim construction or validity, as the
existence of one or both issues is sufficient to justify the
district courts denial of a PI, citing the Saunders Group
rule); AG Design & Assocs., 3/24/08 (nonprecedential
substantial question of invalidity raised when the district
court failed to provide findings in the PI order regarding
whether a prior art prototype contained all limitations of
the asserted claims)
- Evidentiary burdens at PI stage track the burdens

at trial Gonzales (S.C.) (Revision Military,
11/27/12 (more likely than not standard is
applied to likelihood of success on infringement);
Momenta, 8/3/12 (burden on movant to show
likely infringement); Sciele Pharma, 7/2/12; Celsis
In Vitro, 1/9/12; Astrazeneca, 11/1/10; Titan Tire,
6/3/09 (trial court views the matter in light of the
burdens and presumptions that will inhere at trial
and that the application of these burdens and
presumptions is tailored to fit the [PI] context);
Altana Pharma, 5/14/09 (J. Newman, concurring);
Procter & Gamble, 12/5/08; Abbott Labs,
10/21/08; Erico Intl, 2/19/08, J. Newman,
dissenting; Abbott Labs, 1/5/07; PHG
1343
Technologies, 11/17/06); See also Hoffmann-La
Roche, 10/11/12 (nonprecedential)
- Presumption of patent validity also applies

at the PI stage (Sciele Pharma, 7/2/12
(presumption of validity is not altered,
whether or not prior art was previously
considered by the PTO Microsoft v. i4i
(S.C.)); Titan Tire, 6/3/09)
- Ultimate question before the trial court at

the PI stage is different, as the movant must
establish the likelihood of success on the
merits i.e., instead of the alleged infringer
having to persuade the trial court that the
patent is invalid, at the PI stage the movant
(patentee) must persuade the court that,
despite the challenge presented to validity,
the patentee nevertheless is likely to succeed
at trial on the infringement and validity
issues (Revision Military, 11/27/12 (more
likely than not standard is applied to
likelihood of success on infringement --
while the weight of the likelihood may be
considered as an equitable factor, along with
issues of the position of the parties with
respect to the status quo, in the ultimate
balance of equities); Sciele Pharma, 7/2/12
(citing standard from Amazon.com); Celsis
In Vitro, 1/9/12 (see also J. Gajarsa,
dissenting); Titan Tire, 6/3/09); See also
Automated Merchandising Systems,
improperly shifted the burden to the
defendant to show that the patentee was
unlikely to succeed on the merits to avoid a
PI, where the court also was quick to
1344
dismiss the defendants invalidity
argument)
- Defeating injunction based on invalidity and

unenforceability defenses, the party bearing the
BOP must establish a substantial question of
invalidity or unenforceability, i.e., that it is likely
to succeed in proving invalidity or unenforceability
of the asserted patents and thus by definition the
patentee is not likely to succeed on the merits of
the validity issue, at least at the PI stage (Sciele
Pharma, 7/2/12 (vacating PI where substantial
question of invalidity and the district court
erroneously interpreted the law); Celsis In Vitro,
1/9/12; *Titan Tire, 6/3/09 (clarifying the burdens
and the trial courts responsibilities at the PI stage;
also contrasting substantial question from the
substantial evidence standard); Altana Pharma,
5/14/09; Abbott Labs, 10/21/08 (J. Gajarsa,
dissenting); Erico Intl, 2/19/08 (substantial
question of obviousness established; see also J.
Newman, dissenting - distinguishing the
substantial question standard from the defendant
is likely to succeed on the merits based on the
standards and burdens of proof that apply at trial);
In re Seagate Technology, 8/20/07 (en banc);
Abbott Labs, 1/5/07); See also Automated
(nonprecedential suggesting that the burden of
showing a substantial question of invalidity based
on prior art already examined by the PTO is easier
after KSR (S.C.))
- Trial court, after weighing all the evidence,

must determine whether it is more likely
than not that the challenger will be able to
prove at trial, by C&C evidence (which
standard, however, only applies at trial on
1345
the merits), that the patent is invalid; the
trial judge also must consider the fact that, at
trial on the merits, proof of invalidity will
require C&C evidence, even though it is not
an evidentiary burden of the challenger at
the PI stage (Celsis In Vitro, 1/9/12 (J.
Gajarsa, dissenting majority required C&C
evidence of obviousness in affirming the
grant of PI); Titan Tire, 6/3/09)
- Vulnerability is the issue at PI stage (i.e.,

claim(s) are vulnerable to allegations of invalidity;
less proof than C&C evidence is required to prove
invalidity, but in no way resolves the ultimate
question of invalidity Amazon.com (Celsis In
Vitro, 1/9/12 (J. Gajarsa, dissenting); Kimberly-
Clark, 9/29/11 (Order) (J. Newman and J.
OMalley dissenting from denial of petition for
rehearing en banc vulnerability is incorrect
test); Altana Pharma, 5/14/09 (see also J. Newman,
concurring based on deference being warranted
to the district courts weighing of the conflicting
expert opinions interpreting the evidence relevant
to obviousness); Abbott Labs, 10/21/08 (J.
Gajarsa, dissenting); Erico Intl, 2/19/08 (the
defendant need not prove actual invalidity; where
obviousness challenge cast enough doubt on
patent validity to vacate PI; of course, Docs has
only cast doubt on the patents validity, and that
the district court would have the opportunity to
reach a final validity determination at trial); In re
Seagate Technology, 8/20/07 (en banc); Abbott
Labs, 6/22/06); See also Kimberly-Clark, 6/1/11
(nonprecedential)
- Likelihood of success of (literal) infringement

construe the claim first, and compare the construed
claim to the accused product; claim construction is
1346
only preliminary, and may change based on a
complete record (Aria Diagnostics, 8/9/13; Abbott
Labs, 10/21/08; Pfizer, 11/22/05; Gillette, 4/29/05)
- Patentee must show that it will likely prove

that the accused infringer infringes at least
one valid and enforceable patent claim
(Revision Military, 11/27/12 (more likely
than not standard is applied); Astrazeneca,
11/1/10; Titan Tire, 6/3/09; Erico Intl,
2/19/08; Abbott Labs, 1/5/07)
- Correct claim construction is almost

always a prerequisite for a patentees
likelihood of success on infringement,
and thus a PI (Aria Diagnostics,
8/9/13 (parties disputed the standard
of review, for which the CAFC
recognizes some flexibility the
above rule vs. the CAFC need not
definitively construe claims in PI
appeals the district court erred in its
claim construction even under the
more relaxed standard); Apple,
10/11/12 (reversing grant of PI, where
the intrinsic evidence did not show
that the patentee was likely to succeed
with its infringement claim);
Chamberlain Group, 2/19/08 (PI
vacated, when errors in claim
construction would have influenced
the likelihood of success in proving
infringement))
- Patentee must present a clear case

supporting patent validity (Abbott Labs,
6/22/06)
1347
- Conclusions of law (e.g., claim construction)
are subject to change once record developed
after decision on PI motion (Pfizer,
11/22/05)
- Judicial estoppel is not favored to

prevent claim construction arguments
from evolving after the PI stage,
because know more about the claim
terms after discovery (Sandisk,
7/8/05)
- Rolling claim construction, in which

construction is altered as the district
courts understanding of technology
improves, permitted (Pfizer, 11/22/05)
- Infringement need not be shown through

quantitative testing of the accused product,
at the PI stage (Pfizer, 11/22/05)
Irreparable harm
- Well established that the party seeking emergency relief

must make a clear showing that it is at risk of irreparable
harm, which entails showing a likelihood of substantial
and immediate irreparable injury (Apple, 10/11/12)
- To satisfy the irreparable harm factor in a patent

infringement suit, the patentee must establish both: 1)
that absent an injunction, it will suffer irreparable harm,
and 2) that a sufficiently strong causal nexus relates the
alleged harm to the alleged infringement 1 and 2 are
inextricably related concepts the question is to what
extent the harm resulting from selling the accused
product can be ascribed to the infringement (Apple,
11/18/13 (same requirements for permanent injunction);
1348
Apple, 10/11/12 (sufficient causal nexus was not shown
where the alleged infringement was only by one feature
of the accused product))
- Causal nexus is required between the infringement

and the alleged harm a likelihood of irreparable
harm cannot be shown if sales would be lost
regardless of the infringing conduct Voda; the
patentee must show that the infringing feature
drives consumer demand for the accused product
(Apple, 11/18/13 (same requirements for granting
a permanent injunction); Broadcom, 10/7/13
(addressing the grant of a permanent injunction,
the CAFC concluding that the adjudicated (not
likely) infringement caused the adjudicated (not
likely) harm where also the market involving
design wins sales to a limited number of OEMs
was distinguishable from the market in Apple
involving discrete sales to numerous customers);
Apple, 10/11/12; Apple, 5/14/12 (no nexus was
shown between the patented invention or design
and lost sales and market share for some of the
asserted design and utility patents, stating: Sales
lost to an infringing product cannot irreparably
harm a patentee if consumers buy that product for
reasons other than the patented feature. If the
patented feature does not drive the demand for the
product, sales would be lost even if the offending
feature were absent from the accused product.;
required nexus was established for one of the
asserted design patents, where shown that design
mattered to customers)
- Relevant inquiry focuses on the objective

reasons as to why the patentee lost sales, not
on the infringers subjective beliefs as to
why it gained them (or would be likely to
gain them) (Apple, 5/14/12)
1349
- Irreparable harm vs. damages are adequate to
compensate the harm
- Infringement of valid patent inherently causes

irreparable harm in absence of exception (e.g.,
future infringement no longer likely, the patentees
licensing of patent, the patentees delay in bringing
lawsuit) (Pfizer, 11/22/05)
- Presumption of irreparable harm = when patentee

makes a strong showing of likelihood of success
on the merits (i.e., infringement of a valid and
enforceable patent) (*Bosch, 10/13/11
(presumption discarded by eBay for determining
the appropriateness of injunctive relief); Sanofi-
Synthelabo, 12/8/06; Abbott Labs, 6/22/06; Pfizer,
11/22/05)
- Presumption is not negated by the presence

of other infringers in the marketplace; the
patentee need not sue all infringers at once
(Bosch, 10/13/11 (citing rule in connection
with permanent injunction analysis and the
absence of a two-supplier market it is
well-established that the fact that other
infringers may be in the marketplace does
not negate irreparable harm - Pfizer); Pfizer,
11/22/05)
- Presumption contravenes ebay (S.C.)?

(Bosch, 10/13/11 (YES - presumption
discarded by eBay for injunctive relief
generally); Abbott Labs, 10/21/08 (question
left unanswered, as the district court did not
apply the presumption, instead ruling that all
four PI factors weighed in the patentee
Abbotts favor); Broadcom, 9/24/08
1350
(remains an open question following eBay
(S.C.)); Sanofi-Synthelabo, 12/8/06); See
also Duhn Oil Tool, 1/19/10 (Order)
(nonprecedential vacating PI where the
patentee failed to show irreparable harm);
Automated Merchandising Systems,
12/16/09 (nonprecedential presumption is
no longer the law after eBay (S.C.), in
which the presumption of irreparable harm,
based just on proof of infringement, was
discarded. The burden is now on the
patentee to demonstrate that its potential
losses cannot be compensated by monetary
damages.)
- Adequacy of monetary damages when neither

party can show that monetary damages
would/would not suffice, irreparable prong favors
neither party (Celsis In Vitro, 1/9/12 (irreparable
harm inquiry seeks to measure harms that no
damages payment, however great, could address
citing Altana Pharma; also, the defendants
argument that damages were quantifiable because
of two-competitor market was waived); Altana
Pharma, 5/14/09 (no abuse of discretion in denying
PI where the patentee had not shown that the
generic defendants were unable to respond in
money damages, and that the patentee likely had a
business plan in place to deal with the launch of
generic competition); Abbott Labs, 6/22/06); See
also Automated Merchandising Systems, 12/16/09
(nonprecedential lost sales (without more) are
presumed to be compensable through damages, so
that they do not require injunctive relief; district
court clearly erred in finding the patentees alleged
harms to be non-compensable by monetary
damages); Canon, 1/25/08 (nonprecedential -
irreparable harm consists of the harm that could
1351
not be sufficiently compensated by money
damages or avoided by a later decision on the
merits; damages resulting from price erosion and
loss of market share are difficult, if not impossible,
to determine, and thus an award of money
damages would be inadequate)
- Mere possibility of future monetary

damages does not defeat a motion for PI
citing Abbott Labs, Sanofi-Synthelabo (Aria
Diagnostics, 8/9/13 (rejecting the district
courts kind of universal assumption that
damages were reparable, stating that
patents would lose their character as an
exclusive right as articulated by the
Constitution and become at best a judicially
imposed and monitored compulsory
license.); Celsis In Vitro, 1/9/12)
- Market share and revenue loss, price erosion

(Apple, 5/14/12 (required nexus between the
infringement and the alleged harms was not shown
for some design and utility patents, while was
shown for one design patent, with other factors
including relative market share and the absence of
other competitors in the relevant market); Celsis In
Vitro, 1/9/12 (evidence of a sensitive market
showed irreparable harm); Astrazeneca, 11/1/10
(calculating economic harm from premature
launch of generic drug product was impossible);
Altana Pharma, 5/14/09 (no abuse of discretion in
not finding these types of harms irreparable, where
the district court understood that the CAFC has
upheld findings of irreparable harm based on these
factors); Abbott Labs, 10/21/08 (price erosion
caused by generic competition for drug already in
the market did not negate the additional market
share and revenue loss that would occur upon
1352
market entry of the defendant generic); Sanofi-
Synthelabo, 12/8/06 (affirming the district courts
finding of irreparable harm based, in part, on price
erosion)); See also Automated Merchandising
Systems, 12/16/09 (nonprecedential lost sales
standing alone are insufficient to prove irreparable
harm Abbott Labs; also, lost market share must
be proven, or at least substantiated with evidence,
for entry of PI loss of market share cannot be
speculative)
- Price erosion, damage to reputation, and loss

of market position, revenue, goodwill, R&D
support, customers, and market, business
opportunities are evidence of irreparable
harm (Aria Diagnostics, 8/9/13; Celsis In
Vitro, 1/9/12 (affirming grant of PI, where
no error in the district courts finding that
the patentee would suffer irreparable harm
based on the above evidence, and that
[d]uring the growth stage of a product, it is
particularly crucial to be able to distinguish
oneself from competitors); Astrazeneca,
11/1/10 (damage to reputation and goodwill,
and from layoffs of employees); Abbott
Labs, 10/21/08)
- Erosion of markets, customers, and

prices are rarely reversible (Celsis
In Vitro, 1/9/12; Abbott Labs,
10/21/08); See also Automated
(nonprecedential price erosion is
possible was not evidence of
irreparable harm)
- Loss of some insubstantial market share is

not enough clear showing of irreparable
1353
harm, and a likelihood of substantial and
immediate irreparable injury, are required
Winter (S.C.), OShea (S.C.) (Apple, 5/14/12
(design erosion and brand dilution
theories argued with respect to infringement
of design patent were properly rejected for
lack of evidence))
- Entry of generic drugs to the market

(Astrazeneca, 11/1/10 (irreparable harm to
be caused by premature launch of generic
drug product supported affirmance of PI);
Altana Pharma, 5/14/09 (no abuse of
discretion in denying PI where the manner
in which the district court addressed the
credibility of the patentees argument
regarding the impact of generics entering the
market on the patentees business was not
clearly erroneous)); See also
BIOTECH/PHARMA CASES Hatch-
Waxman Issues Preliminary injunction
- End of Hatch-Waxman Act (30-

month) stay (Altana Pharma, 5/14/09
(no abuse of discretion in denying PI
where the patentees argument that its
business would be crushed by the
entry of generics was exaggerated in
light of the expiration of the Hatch-
Waxman stay))
- Delay in moving for a PI as evidence of a lack of

irreparable harm (Apple, 5/14/12 (affirming
finding of no irreparable harm in part based on
delay))
Balance of hardships
1354
- Preserving the status quo preserves the current market
structure (Abbott Labs, 10/21/08 (district court finding
that the patentee would lose much more if PI not
granted))
- Balance of hardships favoring accused infringer where

would be put out of business if enjoined Intel (Aria
Diagnostics, 8/9/13 (remanding to consider balance of
hardships on both parties))
- Licensing patent vs. patentee who engages in commerce

equity may add weight to permitting infringing activity
to continue during litigation when the patentee licenses
the patent because the patentee is readily made whole if
infringement found (Abbott Labs, 10/21/08 (patentee
who both licensed patent and engaged in commerce
under the patent could not be made whole if it prevailed,
because of rarely reversible erosion of markets,
customers, and prices; also ruling that the district court
objectively weighed the legal probabilities and the
equities, and exercised its discretionary judgment as to
the entirety of the cause))
- Licensing others under the patent does not mean

that unlicensed infringement must also be
permitted while patent is litigated (Abbott Labs,
10/21/08)
Public interest
- Enforcing valid patents absent other relevant concerns,

the public is best served by enforcing valid patents
(Celsis In Vitro, 1/9/12 (district court also properly
addressed the publics interest in obtaining an adequate
supply of products); Abbott Labs, 10/21/08; Sanofi-
Synthelabo, 12/8/06; Abbott Labs, 6/22/06)
1355
- Importance of the patent system in encouraging
innovation - the encouragement of investment-
based risk is the fundamental purpose of the patent
grant, and is based directly on the right to exclude
(Celsis In Vitro, 1/9/12; Abbott Labs, 10/21/08;
Sanofi-Synthelabo, 12/8/06 (cited in BIO, 8/1/07
see FEDERAL PREEMPTION))
- Selling a lower priced product does not justify infringing

a patent (Abbott Labs, 10/21/08; Pfizer, 11/22/05)
Other PI-related issues
PI opinion has no conclusive bearing on later trial or appeal
- PI opinion has no conclusive bearing on the later trial or appeal

(Outside the Box Innovations, 9/21/12 (stating rule that PI
claim construction is evolving and subject to change with new
evidence at trial, but suggesting without deciding that the
CAFCs prior decision affirming the district courts claim
construction rendered in a PI proceeding, where the district
court conducted a full Markman hearing and the parties had not
identified any new factual findings, was law of the case; see
also J. Newman, dissenting PI rulings are not law of the
case); SEB, 2/5/10 (district courts claim construction for a PI is
not definitive); Titan Tire, 6/3/09; Sanofi-Synthelabo, 12/8/06;
Glaxo, 7/27/04); See also Butamax, 11/16/12 (nonprecedential
affirming denial of PI and ordering the district court to
reconsider its very questionable claim construction when it
holds a Markman hearing)
- Collateral estoppel in the context of prior PI

proceedings see CLAIM AND ISSUE
PRECLUSIONS
- District court is not bound by its conclusions during the

PI stage at the full trial on the merits (Outside the Box
1356
Innovations, 9/21/12; Titan Tire, 6/3/09 (concluding
with: We remind that there have been no final rulings on
the merits of the case, and the trial court is not bound by
its preliminary conclusions. The trial court will have the
opportunity to reach a final determination on obviousness
and other issues at trial.); Altana Pharma, 5/14/09 (the
district court carefully explained that its obviousness
findings were preliminary); Sanofi-Synthelabo, 12/8/06)
- Findings of fact and conclusions of law at the PI

stage are subject to change upon the ultimate trial
on the merits (Entegris, 6/13/07); See also
Kimberly-Clark, 6/1/11 (nonprecedential stating
same)
Contempt proceedings
- Contempt proceedings
- Whether contempt proceeding is appropriate for

addressing a redesigned product, i.e., inappropriate if
substantial open infringement issues are raised by the
redesigned product (Entegris, 6/13/07)
Grant/denial of PI vs. stay of litigation pending reexamination
- PI and stay ordinarily should not be granted at the same time

(Procter & Gamble, 12/5/08); See also Automated
Merchandising Systems, 12/16/09 (nonprecedential citing the
Procter & Gamble rule, where the parties agreed that the
district court improperly granted both a PI and stay pending
reexamination)
Stay of injunction, pending appeal
1357
- Court assesses the movants chances of success on the merits
and weighs the equities as they affect the parties and the public
DuPont, Standard Havens; to prevail, a movant must
establish a strong likelihood of success on the merits or, failing
that, must demonstrate that it has a substantial case on the
merits and that the harms factors militate in its favor Hilton
(S.C.) (Apple, 7/19/12 (Order) (nonprecedential denying
motion to stay PI); Sciele Pharma, 2/6/12 (Order)
(nonprecedential vacating and remanding PI because the
district court failed to make appropriate fact findings and
conclusions of law regarding the defendants obviousness
arguments, and instead simply stated that the defendant relied
on only prior art before the PTO during prosecution and
therefore failed to raise a substantial question that its
obviousness argument was likely to succeed at trial); Bushnell,
12/30/09 (Order) (nonprecedential movant failed to meet its
burden in its motion papers of demonstrating the requisites for a
stay of a PI, pending appeal))
Scope of PI overbroad
- Scope of PI overbroad, e.g., geography, time (Celsis In Vitro,

1/9/12 (argument that scope of PI was overbroad in terms of
geography and time was waived for not presenting first to the
district court))
PI against communicating ones patent rights
- PI against communicating ones patent rights federal patent

law applied reviewed in the context of whether the notice of
patent rights was properly given since one has a right under
federal patent law, 35 USC 287, to inform others of his or her
patent rights, a showing of bad faith is required in order to bar
such communications; an injunction against communication of
ones patent rights is rare, and is used only in exceptional
circumstances (Clearplay, 4/21/10 (the CAFC lacked arising
1358
under jurisdiction to address the merits of the district courts
PI against the patentees communications to the plaintiffs
customers of infringement, after the district court concluded
that a patent license agreement between the parties was valid
and enforceable, with the CAFC transferring the appeal to the
Eleventh Circuit); Judkins, 4/8/08 (section 43(a) claim); GP
Industries, 9/20/07); See also Unitronics, 12/3/08
(nonprecedential affirming permanent injunction against
asserting patent rights where no infringement); See also
LANHAM ACT - UNFAIR COMPETITION
- Objectively baseless claim required for bad faith and

grant of PI against the patentee requirement not met
when the district court determines that the patent is not
necessarily invalid or unenforceable GP Indus.
(Judkins, 4/8/08)
Willful infringement based on post-filing conduct - Seagate
- Willful infringement based on post-filing conduct patentee

must move for a PI to recover enhanced damages (In re Seagate
Technology, 8/20/07 (en banc)); See WILLFUL
INFRINGEMENT Generally Objective recklessness
standard
Bond amount
- Retroactive increases in bond amount for past damages, e.g.,

due to the enjoined partys delay in requesting the increase
(Astrazeneca, 10/30/13 (nonprecedential predicting that the
Third Circuit would consider improper an increase in bond
amount to cover past damages; addressing the reasons for not
retroactively increasing the bond amount relative to the
applicants decision to seek a PI and that its liability would be
limited to the bond amount))
1359
Permanent Injunctions
(Apple, 11/18/13 (no abuse of discretion and affirming the denial of

injunction with respect to design patents (because no causal nexus,
including that evidence showing the importance of a general feature of
the type covered by a patent is typically insufficient to establish a
causal nexus) and trade dress dilution (where no continuing dilution),
while vacating and remanding the denial with respect to utility patents
(for which the district court erred in the causal nexus analysis by
requiring the patentee to show that a patented feature was the sole
reason for consumers purchases, and abused its discretion in rejecting
the patentees expert, as supported by survey, evidence of product
price increases to show consumer demand for the patented features));
nCube, 10/10/13 (no abuse of discretion in denying contempt motion
based on the district courts factual findings relating to the colorable-
differences prong of Tivo (en banc), and because affirming that
contempt was inappropriate under the colorable-differences prong, the
CAFC thus not reaching the question of actual infringement by the
modified system); Broadcom, 10/7/13 (no abuse of discretion in
granting injunction with a sunset period, where the parties were direct
competitors in a limited market and the patentees harm was clearly
linked to the infringement of the claimed invention); Douglas
Dynamics, 5/21/13 (reversing the denial of injunction where there was
irreparable harm based on direct competition; see also J. Mayer,
dissenting the district court properly denied an injunction because
the eBay (S.C.) factors were not met, including no direct competition)
; Versata Software, 5/1/13 (remanding for the district court to modify
scope of overbroad injunction that emphasized the infringing product
as a whole rather than the enjoined patented capability ); Presidio
Components, 12/19/12 (irreparable injury); ePlus, 11/21/12 (rejecting
the infringers argument that the scope of the injunction was overly
broad based on analogous repair cases, and also remanding for the
district court to consider what changes were required to the terms of
the injunction in light of the opinion holding the system claims invalid
and reversing infringement on some of the method claims); Edwards
Lifesciences, 11/13/12 (vacating the denial of injunction and
remanding for the district courts consideration in light of ensuing
events and any other relevant factors emphasizing the patentees
1360
right to exclude and stating that [a]bsent adverse equitable
considerations, the winner of a judgment of validity and infringement
may normally expect to regain the exclusivity that was lost with the
infringement and that [t]he Court in eBay did not hold that there is a
presumption against exclusivity on successful infringement litigation
(J. Newman and J. Rader); see also J. Prost, concurring presumption
of an injunction after finding infringement of a valid patent, which
must be rebutted by the defendant, is not the law after eBay (S.C.) and
Bosch); ActiveVideo Networks, 8/24/12 (vacating permanent
injunction based on no irreparable harm, and adequate remedies at
law, and remanding for determination of an ongoing royalty for future
infringement); Whitserve, 8/7/12 (addressing different types of relief
for ongoing infringement citing Telcordia Techs. and Paice); Novo
Nordisk, 7/30/12 (Order) (ordering by mandatory injunction the
correction of Orange Book use code); Merial, 5/31/12 (contempt of
injunction based on active concert by a non-party); Bard, 2/10/12
(affirming ongoing royalty in lieu of injunction) [vacated in part
after remanded on 6/14/12]; Streck, 1/10/12 (injunction was not
overbroad where specifically identified the enjoined products, despite
the phrase from otherwise infringing the asserted claims); In re
Construction Equipment Co., 12/8/11 (n.2: expressing no opinion on
whether an enjoined party was entitled to seek abrogation of an
injunction entered previously by a district court after concluding
patent validity, where the patent was subsequently invalidated during
reexamination, which was affirmed by the CAFC); Bosch, 10/13/11
(reversing the district courts denial of a permanent injunction which
was an abuse of discretion, where the patentee was entitled based on
the record to an injunction based on the eBay (S.C.) factors,
particularly irreparable harm (see reasons below); ***also holding
that the presumption of irreparable harm used by district courts after
finding infringement of a valid patent was discarded by eBay: We
take this opportunity to put the question to rest and confirm that eBay
jettisoned the presumption of irreparable harm as it applies to
determining the appropriateness of injunctive relief; see also J.
Bryson, dissenting in part regarding granting the injunction on appeal,
rather than remanding to the district court to make fact findings
regarding the eBay factors in the first instance (the majority concluded
that based on the record any result on remand other than an injunction
1361
would be an abuse of discretion, and remand would only delay relief
to which the patentee was entitled)); Tivo, 4/20/11 (en banc)
(announcing new standard for deciding contempt of injunction, while
overruling prior two-part KSM test; also, applying rule that vagueness
and overbreadth challenges to injunctions require direct appeal of the
injunction or requesting the district court to clarify or modify the
injunction waiting until appeal of a contempt finding is too late and
the challenge is waived; see also J. Dyk, with whom C.J. Rader, J.
Gajarsa, J. Linn, and J. Prost joined, dissenting an unclear injunction
cannot be the basis for contempt); Spine Solutions, 9/9/10
((permanent) injunction is only proper for preventing future
infringement, not to remedy past infringement; also, modifying
injunction that improperly enjoined the infringers future
extraterritorial activities); Ortho-McNeil, 5/10/10 (affirming scope of
injunction in view of patent term extension); i4i, 3/10/10 (no abuse of
discretion in granting an injunction of narrow scope, which applied
only to users who purchased or licensed the accused product after the
date the injunction took effect); Amgen, 9/15/09 (district court was
free to reconsider scope of injunction after the CAFC vacated and
remanded certain infringement rulings); Fresenius, 9/10/09 (vacating
injunction and remanding for revision or reconsideration thereof after
reversing JMOL of nonobviousness, while also holding that the
district court did not abuse it discretion in granting the injunction after
consideration of the eBay factors); Gemtron, 7/20/09 (affirming grant
of injunction without comment); Ecolab, 6/9/09 (remanding for the
district court to perform the eBay analysis); Baden Sports, 2/13/09
(motion to enjoin correctly rejected as mooted by the district courts
amended injunction; also improperly argued on appeal a new statutory
basis for injunction); Acumed, 12/30/08 (affirming district courts
grant of injunction, which was a close case, especially with regard to
the irreparable harm and lack of adequate remedy at law prongs of the
four-factor test, in view of past licenses having been granted, and the
public interest prong, in light of testimony that the accused product
was a medically superior one); Praxair, 9/29/08 (J. Lourie,
concurring, addressing the issue of granting an injunction against one
competitor in a two-party market, under eBay, where the infringing
product constitutes only a small portion of the parties revenues);
Broadcom, 9/24/08 (district court did not abuse discretion in issuing
1362
injunction based on detailed analysis of the eBay four-factor test);
CSIRO, 9/19/08 (several amici filed briefs supporting or opposing the
issuance of injunctive relief, but the CAFC did not decide question
after vacating and remanding SJ of nonobviousness); Voda, 8/18/08
(patentee failed to show any irreparable injury to itself, as opposed to
its exclusive licensee, and that monetary damages were inadequate
compensation for infringement); Finisar, 4/18/08 (district courts grant
of compulsory license in lieu of injunction vacated based on incorrect
claim construction); Amado, 2/26/08 (dissolution of injunction post-
eBay (S.C.), applying the four-factor test, where the grant of the
injunction was based on the CAFC rule rejected by eBay); Tivo,
1/31/08 (stay of a permanent injunction dissolved after the appeal
became final); Innogenetics, 1/17/08 (injunction vacated); Paice,
10/18/07 (appeal of ongoing royalty in lieu of injunction awarded
sua sponte by district court for future acts of infringement - remanded;
patentee did not appeal the district courts denial of injunction, which
district court based on the four eBay (S.C.) factors, as discussed in the
CAFCs decision); Abbott Labs, 10/11/07 (ANDA case); Verizon,
9/26/07; Forest Labs, 9/5/07 (ANDA case); Acumed, 4/12/07;
Monsanto, 8/16/06; MercExchange, 3/16/05 [vacated and remanded
by the U.S. Supreme Court, in eBay v. MercExchange, on 5/15/06
see below]; Fuji Photo, 1/14/05; Intl Rectifier, 9/13/04; Metabolite
Labs, 6/8/04; Intl Rectifier (1), 3/18/04); See also O2 Micro,
11/18/11 (nonprecedential affirming grant of permanent injunction,
where irreparable harm proven by evidence of past harm to the
patentee, and inadequacy of damages also shown); i4i, 9/3/09
(nonprecedential granting Microsofts motion for a stay, pending
appeal, of the district courts injunction against the sale of Microsoft
Word)
eBay v. MercExchange (S.C.)
On May 15, 2006, the U.S. Supreme Court, in eBay v. MercExchange,

unanimously rejected the CAFCs general rule (i.e., that courts will issue a
permanent injunction once validity and infringement are adjudged, absent
exceptional circumstances). The Court vacated the CAFCs judgment and
remanded, holding that the traditional four-factor test applied by courts of
1363
equity when considering whether to grant a permanent injunction to a
prevailing plaintiff applies as well to disputes arising under the Patent Act.
The four-factor test requires a plaintiff to demonstrate: (1) that it has
suffered an irreparable injury; (2) that remedies available at law, such as
monetary damages, are inadequate to compensate for that injury; (3) that,
considering the balance of hardships between the plaintiff and defendant, a
remedy in equity is warranted; and (4) that the public interest would not be
disserved by a permanent injunction. Whether to grant or deny an
injunction, according to the Court, is within the equitable discretion of the
district court (limited by the four-factor test), reviewable on appeal for an
abuse of discretion.
The Court recognized that the Patent Act expressly provides, in 35

USC 283, that injunctions may issue in accordance with the principles
of equity. The CAFC had based its general rule on the statutory right to
exclude, to which the Supreme Court held that the creation of a right is
distinct from the provision of remedies for violations of that right. The
district court had adopted a categorical rule, under which certain types of
patent holders (e.g., those that license and/or do not practice their patents),
according to the district court, would not suffer irreparable harm if an
injunction did not issue. The Supreme Courts response was that traditional
equitable principles do not permit such broad classifications, explaining
that some patent holders, such as university researchers and self-made
inventors, might prefer to license their patents, and that such patent holders
may be able to satisfy the traditional four-factor test.
There also were TWO CONCURRING OPINIONS: 1) Chief Justice

Roberts (joined by Justices Scalia and Ginsburg) referred to the long
tradition of equity practice in which courts have granted injunctive relief
upon a finding of infringement in the vast majority of patent cases. With
this historical practice in mind, courts should limit their equitable discretion
in deciding whether to grant an injunction to the established four-factor test
to promote the basic principle of justice that like cases should be decided
alike; 2) Justice Kennedy (joined by Justices Stevens, Souter, and Breyer)
emphasized that many patent holders today use patents, not as a basis for
producing and selling goods but, instead, primarily for obtaining licensing
fees (i.e., patent holding companies), and that [f]or these firms, an
injunction, and the potentially serious sanctions arising from its violation,
1364
can be employed as a bargaining tool to charge exorbitant fees to companies
that seek to buy licenses to practice the patent. Further, when the patented
invention is but a small component of an accused product, the threat of
an injunction is employed simply for undue leverage in negotiations and
that legal damages may be sufficient to compensate for the infringement and
an injunction may not serve the public interest. The concurring justices also
addressed the different consequences of injunctive relief for business
method patents, and how their potential vagueness and suspect validity . . .
may affect the calculus under the four-factor test.
- [Pre-eBay (S.C.) rule] General rule is that courts will issue a

permanent injunction once validity and infringement are
adjudged, absent exceptional circumstances (Apple, 11/18/13
(n.5); Edwards Lifesciences, 11/13/12 (J. Prost, concurring
disagreeing with the majoritys discussion of the permanent
injunction standard, stating that the general rule is no longer the
law after eBay (S.C.)); Bosch, 10/13/11 (citing pre-eBay rule);
MercExchange, 3/16/05 [On 5/15/06, the Supreme Court in
eBay rejected the CAFCs general rule, holding that a
district court should apply the traditional four-factor test
when considering whether to issue a permanent injunction,
as discussed above]; Fuji Photo, 1/14/05)
- Presumption of irreparable harm that follows a validity and

infringement judgment eliminated by eBay (S.C.) (Apple,
11/18/13 (n.5); Bosch, 10/13/11 (presumption discarded by
eBay); Broadcom, 9/24/08 (remains an open question);
Amado, 2/26/08 (unnecessary to reach argument)); See also
Automated Merchandising Systems, 12/16/09 (nonprecedential
presumption is no longer the law after eBay (S.C.)); See
also Preliminary Injunctions Irreparable harm
- Although presumption no longer applies, courts should

consider in the injunction analysis the fundamental nature
of patents as property rights granting the owner the right
to exclude (Apple, 11/18/13 (n.5: noting that the
Edwards court stated that the right to an injunction is
subject to equitable considerations); Presidio
1365
Components, 12/19/12; Edwards Lifesciences, 11/13/12
(emphasizing the patentees right to exclude as basis for
an injunction; see also J. Prost, concurring); Bosch,
10/13/11)
Generally an injunction is a drastic and extraordinary remedy
- An injunction is a drastic and extraordinary remedy, which

should not be granted as a matter of course; rather, if a less
drastic remedy is sufficient to redress a plaintiffs injury, no
recourse to the additional and extraordinary relief of an
injunction is warranted Monsanto (S.C.) (Apple, 11/18/13)
- Creation of a (patent) right is distinct from providing remedies

for violating that right eBay (S.C.) (Apple, 11/18/13
(emphasizing Section 283 and that a court may grant an
injunction in accordance with the principles of equity))
District courts broad discretion ongoing royalty in lieu of

injunction
- District court possesses broad discretion in granting an

injunction (Presidio Components, 12/19/12; Whitserve, 8/7/12
(remanding where the district courts treatment of post-trial
motions regarding prospective relief was inadequate); Bosch,
10/13/11 (district courts discretion is not whim and
discretion is limited by the eBay factors); Acumed, 12/30/08
(the CAFC made this very clear in affirming the district courts
grant of injunction based on the eBay (S.C.) factors, stating that
the standard of review, viz., abuse of discretion, compels our
decision to affirm the district court; also declining to consider
whether denial of an injunction would be appropriate under
other circumstances where the patentee had licensed the patent
to other competitors); Amado, 2/26/08; Fuji Photo, 1/14/05)
[Under the Supreme Courts decision in eBay, the district
1366
courts discretion is limited by the traditional four-factor
test for issuing permanent injunctions]
- District courts are in the best position to fashion an

injunction tailored to prevent or remedy infringement
Joy Techs. (Broadcom, 10/7/13 (including 18 month
sunset period was an exemplary exercise of discretion in
crafting a tailored equitable remedy); Edwards
Lifesciences, 11/13/12 (vacating and remanding the
denial of injunction for the district courts consideration
in light of ensuing events citing Tivo); Tivo, 4/20/11
(en banc) (n.9: adding that the CAFC has never barred
outright -- although it has strongly discouraged -- judicial
restraint of noninfringing activities, and that because the
issue was not before the en banc court in the case, it
would make no en banc holding thereon))
- District court, as the first-line court of equity, determines

whether to grant injunctive relief (based on the four eBay
factors); the CAFCs task is solely to review the district
courts decision for an abuse of discretion eBay (S.C.)
(Apple, 11/18/13; Bosch, 10/13/11 (J. Bryson, dissenting
disagreeing with the majoritys reversal on appeal of
the district courts denial of an injunction, without
remanding for the district court to make fact findings
regarding the eBay factors in the first instance); i4i,
3/10/10 (affirming injunction and limited scope applying
only to users of the enjoined product after the
injunctions effective date); Fresenius, 9/10/09; Ecolab,
6/9/09 (rejecting the patentees argument on appeal that it
was entitled to injunctive relief, despite the district
courts failure to explain the reasons for denial, citing
Acumed); Acumed, 4/12/07)
- Due to the equitable nature of injunctive relief,

district courts have wide discretion to determine
under what circumstances the grant of injunctive
relief is appropriate (eBay (S.C.)) (Edwards
1367
Lifesciences, 11/13/12 (noting practice that courts
awarding permanent injunctions typically do so
under circumstances where the plaintiff practices
its invention and is a direct market competitor),
and under what circumstances the modification or
dissolution of the injunction is warranted (Amado,
2/26/08 (applying the four-factor eBay test, the
district court dissolved the injunction))
- Dissolution of injunction post-eBay (S.C.), applying the

four-factor test, where the grant of the injunction was
based on the CAFCs rule rejected by eBay, was well
within the district courts wide discretion (Amado,
2/26/08)
- Injunction is only proper to prevent future infringement,

not to remedy past infringement Section 283, Johns
Hopkins (Spine Solutions, 9/9/10 (injunction improperly
enjoined the accused infringers extraterritorial activities
with respect to products already outside the U.S., which
cannot infringe a U.S. patent))
- Injunctions may not be punitive - injunctive relief ought

not to be a form of extra damages to compensate for
the patentees litigation costs (Innogenetics, 1/17/08)
- Ongoing or running royalty for future infringement (is a

compulsory license?) (Whitserve, 8/7/12; Bard, 2/10/12
[vacated in part after remanded on 6/14/12];
Innogenetics, 1/17/08)
- Award of ongoing royalty for future

infringement in lieu of injunction an equitable
remedy - an ongoing royalty (which is limited to
one set of defendants) is distinguishable from a
compulsory license (which implies to anyone
who meets certain criteria) Shatterproof Glass
(Edwards Lifesciences, 11/13/12 (providing
1368
reasons for royalty-bearing license instead of an
injunction: situations where the patentee would
experience no competitive injury (ActiveVideo
Networks), or where there is an overriding public
interest in continued provision of the infringing
product); Bard, 2/10/12 [vacated in part after
remanded on 6/14/12]; Telcordia Techs., 7/6/10
(no abuse of discretion for awarding an ongoing
royalty for continued infringment in lieu of an
injunction); Paice, 10/18/07, see also J. Rader,
concurring calling a compulsory license an
ongoing royalty does not make it any less a
compulsory license)
- District courts order permitting use of a

patented invention in exchange for a royalty
is properly characterized as prevent[ing]
the violation of any right secured by patent
under 35 USC 283 (right to injunction)
(Paice, 10/18/07)
- Not all monetary relief is properly

characterized as damages (Paice,
10/18/07 (no right to jury trial for
determining amount of ongoing
reasonable royalty in lieu of
injunction))
- District court, when determines that a permanent

injunction is not warranted, may wish to allow the
parties to negotiate a license amongst themselves
regarding the future use of a patented invention
before imposing an ongoing royalty should the
parties fail to reach an agreement, the district court
then could assess a reasonable royalty to remedy
ongoing infringement (ActiveVideo Networks,
8/24/12 (reversing grant of injunction and
remanding for determination of ongoing royalty);
1369
Whitserve, 8/7/12 (remanding where the district
court failed to adequately explain why it denied
this alternative form of relief citing Telcordia
Techs. and Paice); Bard, 2/10/12 (awarding an
ongoing royalty in lieu of an injunction was
appropriate where the district court found that it
was in the public interest to allow competition in
the medical device arena) [vacated in part after
remanded on 6/14/12]; Telcordia Techs., 7/6/10;
Resqnet.com, 2/5/10 (J. Newman, dissenting
discussing the issue of an ongoing, compulsory
license based on Paice); Paice, 10/18/07, see also
J. Rader, concurring would require the district
court to first allow the parties an opportunity to set
an ongoing royalty, or at least secure the
permission of both parties before setting the rate
itself, particularly in the case of a patentee who has
proven infringement)
- District court must explain the reasoning in

establishing the appropriate royalty rate
(Bard, 2/10/12 (reasonable for the district
court to take economic market forces into
account in determining different royalty
rates for products, depending on the relative
size of the markets, whether there was direct
competition between the parties, and amount
of profits) [vacated in part after remanded
on 6/14/12])
- Parties changed legal post-verdict

status considered, e.g., patent found to
be infringed, and not invalid
(ActiveVideo Networks, 8/24/12
(sunset royalty rate was appropriate
where the patentee was in a much
better bargaining position post-
verdict, and instructing the district
1370
court to consider the same on remand
in determining an appropriate ongoing
royalty -- adding that the patentees
bargaining position was even stronger
after the appeal); Bard, 2/10/12
(proper for the district court to have
increased the amount of ongoing
royalty awarded by the jury - Amado)
6/14/12])
- Award of monetary damages instead of permanent

injunction substantial evidence supported district
courts conclusion that potential licensees would
not be less likely to take a license (Paice, 10/18/07)
Four-factor test of eBay (S.C.)
- eBay v. MercExchange (S.C.) requires courts to consider the

standard four-factor test (see above discussion of eBay) before
granting, or denying, permanent injunctions in patent cases
(Apple, 11/18/13; Broadcom, 10/7/13; Douglas Dynamics,
5/21/13 (reversing the denial of injunction because supported
by the eBay (S.C.) factors; see also J. Mayer, dissenting eBay
(S.C.) factors were not met for an injunction) Presidio
Components, 12/19/12; ActiveVideo Networks, 8/24/12;
Merial, 5/31/12; Bosch, 10/13/11; i4i, 3/10/10 (analyzing the
district courts application of the eBay (S.C.) factors in granting
an injunction of narrow scope); Fresenius, 9/10/09; Ecolab,
6/9/09 (district court abused its discretion by failing to consider
any of the four factors, or make fact findings regarding the
factors, before denying an injunction); Acumed, 12/30/08 (no
abuse of discretion in granting injunction); Broadcom, 9/24/08
(district court did not abuse discretion in issuing injunction);
Voda, 8/18/08; Amado, 2/26/08 (dissolving injunction after
applying the four-factor eBay test); Innogenetics, 1/17/08;
Paice, 10/18/07 (district courts denial or permanent injunction
1371
not appealed); Verizon, 9/26/07), THUS reversing the CAFCs
traditional rule that courts will issue permanent injunctions
against patent infringement of valid patents, absent exceptional
circumstances (Bosch, 10/13/11; Acumed, 4/12/07; Monsanto,
8/16/06); See also Mytee Products, 9/2/11 (nonprecedential
rejecting argument that failure to seek a PI was relevant to
whether to grant a permanent injunction there are significant
difference in the requirements and uses of PIs and permanent
injunctions); See also Preliminary Injunctions Four-factor
test for PI
- Injunction does not necessarily follow a determination

that a patent has been infringed (Innogenetics, 1/17/08)
- eBay (S.C.) (Roberts, C.J., concurring) - courts

have granted injunctive relief upon a finding of
infringement in the vast majority of patent cases
(Broadcom, 10/7/13 (no abuse of discretion in
granting injunction citing Presidio); Presidio
Components, 12/19/12; Fresenius, 9/10/09 (n.4:
suggesting as the reason why the district court
judge said an injunction was all but inevitable in
the case))
- Well-settled principles of equity govern injunctions in

patent disputes just as in disputes in other areas of law
eBay (S.C.) (Innogenetics, 1/17/08; Abbott Labs,
10/11/07)
Irreparable injury
- Irreparable harm, injury?
- Irreparable injury and lack of adequate

remedy at law addressed in connection with
each other (ActiveVideo Networks, 8/24/12
1372
(inextricably intertwined); Acumed,
12/30/08)
- Irreparable injury from infringement not

remediable by a reasonable royalty, as the
patent grant provides the right to exclude
competitors from infringing the patent 35
USC 154(a)(1) (Broadcom, 10/7/13 (citing
Presidio for proposition that patent property
rights are especially difficult to protect with
solely monetary relief because infringers
may risk a delayed payment for use of
valuable property without the patent owners
permission); Douglas Dynamics, 5/21/13
(market exclusivity from patents as property
rights is an intangible asset that is part of the
patentee companys reputation); Presidio
Components, 12/19/12; Bosch, 10/13/11
(citing Acumed); Acumed, 12/30/08)
- Patentee has suffered an irreparable injury

although injunctions are tools for
prospective relief designed to alleviate
future harm, by its terms the irreparable
injury factor looks, in part, at what has
already occurred (i4i, 3/10/10 (proper for the
district court to have considered evidence of
past harm to the patentee, including loss of
market share caused by the infringers
product rendering the patentees product
obsolete, where the patentee and infringer
were direct competitors)); See also O2
Micro, 11/18/11 (nonprecedential relying
on evidence of past harm to support the
grant of injunction, citing i4i)
- Past harm to a patentees market

share, revenues, and brand
1373
recognition is relevant for
determining whether the patentee has
suffered an irreparable injury
(insufficient evidence, including that
the patentees licensee, rather than the
patentee, lost market share); i4i,
3/10/10); See also O2 Micro,
11/18/11 (nonprecedential same,
citing i4i)
- Loss of market share proven by

circumstantial evidence (Bosch,
10/13/11 (prima facie showing of lost
market share was unrebutted); i4i,
3/10/10 (the patentee was not required
to prove that its customers stopped
using its software because they
switched to the infringing product))
- Patentee must show that it has suffered an

irreparable injury nothing in eBay (S.C.)
eliminates the requirement that the party
seeking a permanent injunction must show
that it has suffered an irreparable injury
(Voda, 8/18/08 (rejecting patentees
argument for entitlement to an injunction by
showing irreparable harm to its exclusive
licensee)); See also Mytee Products, 9/2/11
(nonprecedential grant of injunction
supported by loss of market share based on
indirect competition through the partys
customers)
- Causal nexus is required between the

infringement and the alleged harm Apple
(Apple, 11/18/13 (rejecting the patentees
contention that the causal nexus requirement
1374
conflicts with the CAFCs post-eBay
injunction cases; also, the district court erred
by requiring the patentee to show that a
patented feature was the sole reason for
consumers purchases, and that the correct
standard was for the patentee to show some
connection between the patented feature and
demand for the accused products, providing
examples); Broadcom, 10/7/13 (the
infringement caused the harm where the
market involving design wins sales to a
limited number of OEMs (along with an
incumbency effect) was distinguishable
from the market in Apple involving discrete
sales to numerous customers)); See also
Preliminary Injunctions
- Patents may be considered in the

aggregate for determining whether
causal nexus (Apple, 11/18/13)
- Irreparable injury shown despite the

patentee not (currently) practicing the
claimed invention (Presidio Components,
12/19/12 (direct competition between the
parties in the same markets); i4i, 3/10/10
(infringers software product rendered the
patentees product obsolete); Broadcom,
9/24/08 (indirect competition between the
accused infringer and patentee))
- Unwillingness to license patent (to maintain

market exclusivity) supports finding of
irreparable harm (Douglas Dynamics,
5/21/13; Presidio Components, 12/19/12)
- Irreparable injury shown e.g., lost sales

and customers, price erosion, direct
1375
competition between the parties, loss in
market share, lost opportunities to sell other
services to lost customers, support
injunction (Broadcom, 10/7/13 (harm
shown); Douglas Dynamics, 5/21/13
(reversing the district courts denial of an
injunction, stating that irreparable injury
encompasses different types of losses that
are often difficult to quantify, including lost
sales and erosion in reputation and brand
erosion; noting the district courts
comparison of the patented snowplow to a
Mercedes and the infringing plow to a Ford
Taurus, and that a buyer of a Mercedes
would not likely purchase the Ford, and vice
versa, but adding that the harm to the
patentee may go beyond lost sales if the
Ford made its place in the market by
infringing on the intellectual property of the
Mercedes and capitalized on its similarity to
the better product causing the Mercedes . .
. [to] lose some of its distinctiveness and
market lure; see also J. Mayer, dissenting);
Presidio Components, 12/19/12 (vacating
the denial of an injunction where the district
court clearly erred in finding no irreparable
injury); Merial, 5/31/12 (affirming
injunction based on evidence of marketing
strategy to tout infringing product as a
cheaper, equal alternative); Bosch, 10/13/11
(injunction supported by the parties direct
competition in the relevant distribution
channels, loss in market share and access to
potential customers, price erosion, and the
infringers inability to satisfy a judgment;
see also J. Bryson, dissenting); i4i, 3/10/10
(lost market share to the direct competitor
infringer); Acumed, 12/30/08 (irreparable
1376
injury shown based on lost market share,
relying on post-eBay (S.C.) district court
decisions);Verizon, 9/26/07); See also
Mytee Products, 9/2/11 (nonprecedential
CAFC has not held that for irreparable harm
a patentee must show it is entitled to lost
profits or is in direct competition with the
infringer)
- Direct competition between the

parties shows irreparable harm
(Broadcom, 10/7/13 (undisputed
evidence linked the claimed invention
to the success of the products
incorporating it, and as direct
competitors in a limited market, the
patentees harm was clearly linked to
the infringement, in that the patentee
lost market share as the infringer
gained it citing Douglas Dynamics);
Douglas Dynamics, 5/21/13 (when the
patentee suffers irreparable harm from
being forced to compete against
products that incorporate and infringe
its own patented inventions; see also
J. Mayer, dissenting parties were
not direct competitors, since they sold
different quality snowplow products);
Presidio Components, 12/19/12
(direct and substantial competition
between the parties, e.g., competing
for the same customers in the same
markets, showed irreparable harm
rejecting the district courts finding of
no competition for the purpose of
irreparable harm, which conflicted
with the jurys finding of competition
1377
for the purpose of awarding lost
profits damages))
- Other infringers in the marketplace,

i.e., the absence of a two-supplier
market, does not negate irreparable
harm a patentee need not sue all
infringers at once Pfizer (Aria
Diagnostics, 8/9/13 (PI case); Bosch,
10/13/11 (district court erred in
concluding that the absence of a two-
player market prohibited a finding of
irreparable harm; see also J. Bryson,
dissenting issues regarding the
number of competitors and other
characteristics of the market affected
the impact of the infringers sales on
the patentee)); See also Preliminary
Injunctions Four-factor test for PI
Irreparable harm
- Making a profit in the face of

infringing competition does not
automatically rebut a case for
irreparable injury (Douglas
Dynamics, 5/21/13)
- Maintaining or increasing market

share (to rebut irreparable injury) can
be due to a variety of reasons, e.g.,
heavy marketing and advertising
(Douglas Dynamics, 5/21/13)
- Reputation loss shows irreparable

harm (Douglas Dynamics, 5/21/13
(the patentees innovations appearing
in the lower quality, competitors
1378
snowplow, and from perceptions of
others for not enforcing IP rights))
- Injuries to non-core aspect of the

patentees business are equally
capable of being irreparable as ones
that affect more significant operations
(Bosch, 10/13/11 (district court erred
in attributing weight to the non-core
nature of the patentees wiper blade
business in denying injunction))
- Inability to satisfy a judgment

(ongoing royalty was better remedy,
including that the infringer was able
to satisfy the judgment); Bosch,
10/13/11 (factor favored finding of
irreparable harm where the infringer
failed to introduce rebuttal evidence
regarding its financial status, as well
as based on counsels statements
during the CAFC oral argument and
the procedural history of the case in
which the district court granted the
infringers motion to bifurcate
damages, thus denying the patentee
discovery relating to the infringers
financial condition))
- Litigation costs do not support irreparable

harm (ActiveVideo Networks, 8/24/12)
- No irreparable injury shown reasonable

royalties awarded included an upfront
market entry fee that contemplated future
sales in a long term market; thus, the
patentee was compensated and could not be
1379
irreparably harmed by future sales
Monetary damages inadequate to compensate injury
- Monetary damages adequate to compensate injury?

(Apple, 11/18/13; Douglas Dynamics, 5/21/13
(damages were inadequate to compensate for the
patentees reputation loss from the infringement,
and the competitors increasing market share,
which underscore[d] the profitability of
infringement); ActiveVideo Networks, 8/24/12
(harm to the patentee due to the infringement was
readily quantifiable and compensable by an
ongoing royalty, where license fees the infringer
owed per subscriber of service were easily
calculable); Whitserve, 8/7/12 (remanding the
denial of permanent injunction where the district
court failed to address whether monetary damages
for future infringement were adequate); Bosch,
10/13/11 (questionable financial condition of the
infringer and its parent company reinforced the
inadequacy of money damages); i4i, 3/10/10;
Acumed, 12/30/08 (the patentees previous
licensing of patent is but one factor for the
district court to consider); Broadcom, 9/24/08
(damages not adequate -- based on the structure of
the market; license was to a customer, rather than a
compulsory license to a direct competitor; and was
difficult to estimate monetary damages); Voda,
8/18/08 (district court did not err in finding
monetary damages to be adequate to compensate
for infringement); Verizon, 9/26/07 (reasonable
royalty not sufficient to compensate the patentees
harm; district court considered detailed testimony
on both sides before issuing injunction)); See also
O2 Micro, 11/18/11 (nonprecedential inadequacy
1380
of damages shown where the infringer operated in
Asia)
- District court should assess whether a

damage remedy is a meaningful one in light
of the infringers financial condition before
the alternative of money damages can be
deemed adequate (Apple, 11/18/13 (the
infringers ability to pay the judgment
merely indicates that the district court
should look to other considerations to
determine whether a damages award will
adequately compensate the patentee for the
harm caused by continuing infringement);
Bosch, 10/13/11 (district court erred by
failing to consider the extent to which a
forward-looking monetary award was a
viable or meaningful alternative to an
injunction))
- Difficulty in estimating monetary damages

is evidence that remedies at law are
inadequate - Broadcom (i4i, 3/10/10 (no
abuse of discretion in concluding that
monetary damages were inadequate, where
the infringer captured 80% of the market,
forcing the patentee to change its business
strategy)); See also O2 Micro, 11/18/11
(nonprecedential)
- Previous licensing of patent is but one

factor for the district court to consider in
determining whether a reasonable royalty
constitutes an adequate remedy, based on 1)
the fact of the grant of previous licenses, 2)
the identity of the past licensees, 3) the
experience in the market since the licenses
were granted, and 4) the identity of the new
1381
infringer - Acumed; the weight accorded to
prior licenses falls squarely within the
district courts discretion (Apple, 11/18/13
(evidence showed that the patentee was
willing to license the patents only in some
circumstances, and not to the defendant who
was its primary competitor -- the district
court focused improperly on the patentees
past licensing practices without exploring
any relevant differences from the current
situation, citing the Acumed rule that a
plaintiffs past willingness to license its
patent is not sufficient per se to establish
lack of irreparable harm if a new infringer
were licensed); ActiveVideo Networks,
8/24/12 (licensing evidence considered as a
basis for reversing the grant of injunction);
Acumed, 12/30/08 (no abuse of discretion in
granting injunction despite the patentees
previous licensing of the patent, stating that
a patentees past willingness to license its
patent is not sufficient per se to establish
lack of irreparable harm if a new infringer
were licensed . . . . Adding a new competitor
to the market may create an irreparable harm
that the prior licenses did not, citing eBay
(S.C.))); See also O2 Micro, 11/18/11
(nonprecedential the patentees past grant
of a license to a customer did not preclude
the grant of an injunction against a direct
competitor citing Acumed)
- Size of the parties, proportion of the

patentees business (Bosch, 10/13/11; i4i,
3/10/10 (the patentee was a small company
. . . practicing its patent, only to suffer a loss
of market share, brand recognition, and
customer goodwill as the result of
1382
[Microsofts] infringing acts); Acumed,
12/30/08 (no abuse of discretion in granting
injunction where the patentee was smaller
and its product was its flagship product))
- Granting of injunction is not

dependent on the proportion that the
infringing goods bear on a patentees
total business (Bosch, 10/13/11 (citing
J. Louries concurrence in Praxair in
the context of irreparable harm, ruling
that [a]n injury is either of the
irreparable sort, or it is not.); Praxair,
9/29/08 (J. Lourie, concurring, stating
that provided the four-factor test has
been met, a patentee should be able to
exclude competitors who sell only a
small amount of an infringing product
or competitors whose sales of an
infringing product constitute only a
small portion of its sales or of the
patentees sales. Otherwise, the patent
right becomes devalued.)
Balance of hardships
- Balance of hardships
- Factors considered parties sizes, products,

and revenue sources (ActiveVideo
Networks, 8/24/12 (reversing the grant of
injunction despite the patentees small size);
Bosch, 10/13/11 (a party cannot escape an
injunction simply because it is smaller than
the patentee or because its primary product
is an infringing one Windsurfing Intl; see
also J. Bryson, dissenting issue as to the
1383
effect of the size and diversity of the two
parties); i4i, 3/10/10 (factor favored the
patentee, where the patented technology was
central to the patentees software business,
while relating to only a small fraction of
Microsofts sizeable business))
- Balance considered is only between a

plaintiff and a defendant (Acumed, 12/30/08
(ruling that the injunctions effect on
customers and patients was irrelevant to this
factor, citing eBay (S.C.)))
- One who elects to build a business on a

product found to infringe cannot be heard to
complain if an injunction against continuing
infringement destroys the business so
elected Windsurfing Intl (Merial,
5/31/12; Bosch, 10/13/11 (requiring the
patentee to compete against its own patented
invention, where would be irreparably
harmed, placed a substantial hardship on the
patentee); Acumed, 12/30/08 (no abuse of
discretion in the district courts decision not
to consider the infringers expenses in
designing and marketing the infringing
device, as those expenses related to an
infringing product); Broadcom, 9/24/08)
- Expenses incurred creating the

infringing products are irrelevant -
Broadcom (i4i, 3/10/10 (district court
properly ignored))
- Costs of redesigning the infringing

products are irrelevant (i4i, 3/10/10)
1384
- Infringers commercial success in
exploiting the infringement is
irrelevant Broadcom, Windsurfing
Intl (i4i, 3/10/10)
- Allowance of time for infringer to

implement work-around that would avoid
continued infringement before issuing
injunction (ActiveVideo Networks, 8/24/12
(amount of sunset royalty was proper); the
patentee is entitled to end infringement, but
not put the accused infringer out of business
(Verizon, 9/26/07)
- Balance favored the patentee where

twenty-month sunset provision in the
injunction allowed continued sales of
infringing products with mandatory
royalty to allow the accused infringer
time to commercialize design-around
product (Edwards Lifesciences,
11/13/12 (citing approach in
Broadcom as form of an equitable
response to infringement); Broadcom,
9/24/08)
- Business decision made by the

infringer not to produce non-
infringing alternative (Acumed,
12/30/08)
Public interest
- Public interest
- Touchstone of the public interest factor

whether the injunction, both in scope and
1385
effect, strikes a workable balance between
protecting the patentees rights and
protecting the public from the injunctions
adverse effects Broadcom (Apple,
11/18/13 (no abuse of discretion in
concluding that the public interest weighed
against the grant of an injunction where the
injunction would have the effect of
depriving the public of access to a large
number of noninfringing features); Douglas
Dynamics, 5/21/13 (rejecting the district
courts reasoning that the public interest is
better served having a new competitor that
sells cheaper snowplows to an untapped
market segment, where the competitor is
able to compete in the marketplace as a
result of using the patented technology); i4i,
3/10/10 (district courts injunction of limited
scope on current users of the infringing
product properly recognized the balance))
- Publics general interest in upholding patent

rights in inventive technology (Apple,
11/18/13; Douglas Dynamics, 5/21/13
(relying on the above coupled with that
cheap copies of patented inventions have
the effect of inhibiting innovation and
incentive which outweighs any interest the
public has in purchasing cheaper infringing
products); ActiveVideo Networks, 8/24/12
(favored injunction, despite reversing grant);
i4i, 3/10/10 (favored injunction (of narrow
scope)))
- Objective evidence of public health issue

with the patentees product such that the
public interest would be disserved by an
injunction? (Acumed, 12/30/08 (no abuse of
1386
discretion in giving no weight to testimony
of biased experts, and assuming that
physicians could use noninfringing
alternatives to the patentees product))
- District court is in the best position to

determine whether an injunction
would cause a public health problem
(Acumed, 12/30/08 (ruling that the
district court was in the best position
to assess the credibility of the
witnesses and affiants and to weigh
the evidence))
- Sunset provision in injunction (for allowing

time to develop non-infringing substitutes)
to balance the policy of protecting the
patentees rights against the desirability of
avoiding immediate market disruptions
(Broadcom, 10/7/13 (18 month sunset period
was not an abuse of discretion, which
allowed time to remove the infringing
product from the market without causing
significant downstream disturbance for
OEMs and consumers); Broadcom, 9/24/08)
Contempt proceedings
- Contempt proceedings, extending injunction (nCube, 10/10/13;

Tivo, 4/20/11 (en banc) [the prior panel decision, Tivo,
3/4/10, was vacated and en banc review was granted on
5/14/10 to decide the question of when is a contempt
proceeding, rather than a new infringement trial, the
proper forum to decide infringement by the enjoined
partys redesigned product?]; Abbott Labs, 10/11/07;
Conoco, 8/17/06; Intl Rectifier (1), 3/18/04)
1387
- Contempt is a severe remedy, and should not be resorted
to where there is a fair ground of doubt as to the
wrongfulness of the defendants conduct Cal.
Artificial Stone Paving (S.C.) (Tivo, 4/20/11 (en banc)
(see also J. Dyk, with whom C.J. Rader, J. Gajarsa, J.
Linn, and J. Prost joined, dissenting))
- Contempt proceedings are appropriate as long as the new

issue does not raise a substantial question of
infringement; if an accused infringer merely makes
colorable changes to the accused product that infringed, a
court may properly extend the injunction to the new
device and find the party in contempt (nCube, 10/10/13;
Aevoe, 8/29/13 (district court did not modify a PI by
excising and then reinserting colorable imitation
language, since the district court was required to apply
the colorable differences test to redesigned products in
the contempt proceeding, regardless of whether the
language was included in the PI citing Tivo); Tivo,
4/20/11 (en banc); Abbott Labs, 10/11/07; Conoco,
8/17/06)
- Contempt proceedings of a summary nature are not

appropriate where expert and other testimony
subject to cross-examination would be helpful or
necessary applies in the context of a former
infringer who has made a good faith effort to
modify a previously adjudged or admitted
infringing device to remain in the marketplace
(Tivo, 4/20/11 (en banc) (CAFC was bound by
Supreme Court precedent to reject the infringers
good faith arguments and its reliance on opinions
of counsel, stating that a lack of intent to violate an
injunction alone cannot save an infringer from a
finding of contempt); Abbott Labs, 10/11/07 (no
good faith effort where defendant had another
company file a second ANDA as a subterfuge to
1388
case being assigned to a different district court
judge)
- Diligence and good faith efforts considered

when assessing penalties although not a
defense to contempt, diligence and good
faith efforts may be considered in assessing
penalties, a matter for which the district
court has considerable discretion (Tivo,
4/20/11 (en banc) (district court was correct
in rejecting the infringers good faith
arguments (which included 8000 hours of
design-around effort and obtaining an
opinion of noninfringement from a respected
law firm) in deciding whether injunction
was violated))
- Good faith vs. the infringers intent in

violating the injunction a lack of intent
alone cannot save an infringer from a
finding of contempt Arbek Mfg., Additive
Controls (Tivo, 4/20/11 (en banc) (district
court was correct in rejecting the infringers
good faith arguments in deciding whether
injunction was violated))
- Time to appeal an injunction the scope of an injunction

may be challenged only on direct appeal i.e., the time
to appeal an injunction order is when it is handed down,
not when a party is later found to be in contempt
Maggio (S.C.), Travelers Indemnity (S.C.) (Tivo, 4/20/11
(en banc) (arguments on overbreadth of the district
courts injunction were waived due to the infringers
failure to raise them earlier on direct appeal; see also J.
Dyk, with whom C.J. Rader, J. Gajarsa, J. Linn, and J.
Prost joined, dissenting))
- Contempt judgment
1389
- Courts possess broad equitable powers to enforce
their own decrees KSM (Tivo, 4/20/11 (en banc);
Abbott Labs, 10/11/07)
- KSMs two-step inquiry overruled threshold

inquiry on the propriety of initiating a contempt
proceeding eliminated, because confused the
merits of the contempt with the propriety of
initiating contempt proceedings question of
whether to initiate contempt proceedings is left to
the broad discretion of the district court to be
answered based on the facts presented (Tivo,
4/20/11 (en banc) (under the CAFCs holding, the
district court did not abuse its discretion in
initiating a contempt proceeding))
- Whats needed to hold a contempt

proceeding a detailed accusation from the
injured party setting forth the alleged facts
constituting the contempt (Tivo, 4/20/11 (en
banc))
- More than colorable differences standard for

determining whether an injunction against patent
infringement has been violated the party seeking
to enforce the injunction (the patentee) must prove
both 1) that the newly accused product is not more
than colorably different from the product found to
infringe, and 2) that the newly accused product
actually infringes the asserted patent C&C
evidence is required for proving the injunction was
violated, both for colorable differences and actual
infringement (nCube, 10/10/13; Merial, 5/31/12
(affirming the district courts contempt finding
where the previously enjoined infringers newly
accused product was not more than colorably
different from the previously enjoined product and
1390
it infringed the claims; the district court also did
not improperly compare the newly accused product
with the commercial embodiment of the patent to
find infringement, where such an approach was
especially convenient or expeditious in a summary
contempt proceeding); Tivo, 4/20/11 (en banc))
- Primary question on contempt whether the

newly accused product is so different from
the product previously found to infringe that
it raises a fair ground of doubt as to the
wrongfulness of the defendants conduct
Cal. Artificial Stone Paving (S.C.) (nCube,
10/10/13 (contempt is not resorted to if the
above doubt is found, because contempt is a
severe remedy); Tivo, 4/20/11 (en banc))
- Infringement-based understanding of the

colorably different test rejected the
contempt analysis, instead of focusing solely
on infringement, must focus initially on the
differences between the feature(s) relied
upon to establish infringement and the
modified feature(s) of the newly accused
products (rather than on randomly chosen
features) where one or more elements
previously found to infringe has been
modified, or removed, the court must inquire
whether that modification is significant if
significant, the newly accused product as a
whole shall be deemed more than colorably
different from the adjudged infringing one,
and the inquiry into whether the newly
accused product actually infringes (i.e., the
second part above) is irrelevant, and
contempt is inappropriate (nCube, 10/10/13
(rejecting the patentees argument that a
claim limitation was met in the modified
1391
system by an element not argued at trial as
infringing, based on the rule from Tivo (en
banc) that the determination of whether
more than colorable differences are present
requires the court to focus on those
elements of the adjudged infringing products
that the patentee previously contended, and
proved, satisfy specific limitations of the
asserted claims; also highlighting the
separate prongs of the contempt analysis
under Tivo (en banc) (colorable-differences
and actually infringing), stating that the
colorable-differences standard focuses on
how the patentee in fact proved
infringement, not what the claims require
and adding that [i]n this way, the Tivo
standard preserves values of notice and
preservation of trial rights by keeping
contempt suitably limited; because
affirming that contempt was inappropriate
under the colorable-differences prong, the
CAFC not reaching the question of actual
infringement by the modified system);
Merial, 5/31/12 (procedure not done where
infringement was based on a default
judgment); Tivo, 4/20/11 (en banc) (district
court did not determine whether a replaced,
newly designed feature was significantly
different from the feature alleged and the
jury found to infringe, thus making the
district courts finding of infringement
irrelevant to whether the injunction was
violated))
- Assessing the significance of

differences depends on the nature of
the products at issue, as well as the
relevant prior art, i.e., a nonobvious
1392
modification (determined based on
expert testimony) may well result in a
finding of more than a colorable
difference (Tivo, 4/20/11 (en banc))
- Policy encouraging legitimate

design-around efforts also may
be considered (Tivo, 4/20/11
(en banc))
- Newly developed feature is

protected by patent? - not prima
facie evidence of more than
colorable differences the
district court must evaluate the
specific differences between the
original and modified products
(Tivo, 4/20/11 (en banc) (n.3))
- Newly accused product actually infringes

(second part above)? the district court is
bound by any prior claim construction it
performed in the case (Tivo, 4/20/11 (en
banc))
- New infringement trial where more than colorable

differences found the district court is able to
utilize principles of claim and issue preclusion (res
judicata) to determine what issues were settled by
the original suit and what issues would have to be
tried KSM (Tivo, 4/20/11 (en banc) (n.4))
- Non-party in active concert with the enjoined party to

assist in violating the injunction may also be held in
contempt FRCP 65(d) (Merial, 5/31/12 (district court
did not clearly err in holding non-party in contempt of
injunction))
1393
- Aiding and abetting by a non-party (Intl Rectifier (1),
3/18/04)
- Injunction extended to contributory infringer, drug

supplier, who was considered a partner of, and
as culpable as, the ANDA filer (Forest Labs,
9/5/07)
Form and scope of injunction FRCP 65(d)
- Form and scope of injunction
- Specificity and detail required - FRCP 65(d) requires

specificity and reasonable detail of the acts sought to be
restrained, to avoid unwarranted contempt proceedings
(Streck, 1/10/12; Tivo, 4/20/11 (en banc); Abbott Labs,
10/11/07); a district court can deny an injunction if the
requirement cannot be met (Group One, 5/16/05; Fuji
Photo, 1/14/05; Intl Rectifier, 9/13/04)
- Basic fairness requires that those enjoined receive

explicit notice of precisely what conduct is
outlawed Schmidt (S.C.) (Tivo, 4/20/11 (en banc)
(injunction was clear as to the conduct enjoined;
see also J. Dyk, with whom C.J. Rader, J. Gajarsa,
J. Linn, and J. Prost joined, dissenting injunction
did not explicitly address the issue of design-
arounds); Abbott Labs, 10/11/07); See also Paw
Wash, 12/14/12 (nonprecedential instructing the
district court to revise the injunction to limit the
enjoined acts to those infringing claim 17, rather
than one or more of the claims)
- Although vagueness can be a defense to

contempt in certain circumstances, where
the enjoined party perceives an ambiguity in
the injunction it cannot unilaterally decide to
1394
proceed in the face of the injunction and
then object to being held in contempt by
making an after-the-fact contention that the
injunction is unduly vague McComb (S.C.)
(Tivo, 4/20/11 (en banc) (rejecting collateral
attack to injunction as waived, where the
party held in contempt missed opportunities
to present vagueness claim on appeal or in a
motion to the district court to clarify or
modify the injunction the CAFC was
bound by McComb (S.C.) and distinguishing
other Supreme Court cases relied on by the
dissent; see also J. Dyk, with whom C.J.
Rader, J. Gajarsa, J. Linn, and J. Prost
joined, dissenting even if the disputed
provision of the injunction was unclear, an
unclear injunction cannot be the basis for
contempt))
- Vague injunctions construed narrowly -

courts construe injunctions narrowly where
they failed to give adequate notice that
particular conduct was enjoined; ambiguities
and omissions in orders redound to the
benefit of the person charged with contempt
no conduct will be prohibited by
implication (Abbott Labs, 10/11/07
(injunction lacked explicit notice that filing
a second ANDA was forbidden))
- Injunction may only prohibit infringement of

patent by the adjudicated products and
infringement by products that are not more than
colorably different from the adjudicated products
Intl Rectifier (Merial, 5/31/12 (distinguishing Intl
Rectifier and rule against extraterritoriality where
injunction here was broader, including inducing
infringement); Streck, 1/10/12 (injunction was not
1395
overbroad despite the phrase from otherwise
infringing the asserted claims, where the specific
products at issue were listed along with extending
only to products that are only colorably different
therefrom, and when taken in the context of the
entire order and record); Tivo, 4/20/11 (en banc)
(party barred from making overbreadth argument
(that the scope of the injunction improperly
covered non-infringing activity) as a defense to the
district courts contempt finding where the party
failed to raise the issue previously on direct appeal
of the injunction); Forest Labs, 9/5/07; see also
Black & Decker, 1/7/08 (nonprecedential - party
should be given an opportunity to demonstrate that
additional product(s) constitute nothing more than
a colorable variation from the enjoined products))
- In ANDA case, injunctive relief under

271(e)(4)(B) applies only to the approved
drug, and does not extend to the remainder
of products covered by the patent (Forest
Labs, 9/5/07 (CAFC narrowed the district
courts overly broad injunction to the
accused product))
- Judicial restraint of noninfringing activities

is strongly discouraged Johns Hopkins -
but the CAFC has never barred it outright
because the district court is in the best
position to fashion an injunction tailored to
prevent or remedy infringement (Tivo,
4/20/11 (en banc) (n.9: declining to make an
en banc holding on the issue because was
not before the en banc court in the case; see
also J. Dyk, with whom C.J. Rader, J.
Gajarsa, J. Linn, and J. Prost joined,
dissenting injunctions in the patent context
must be limited to restraints designed to
1396
prevent further infringement)); See also O2
Micro, 11/18/11 (nonprecedential infringer
waived objection and the right to appeal the
form of an injunction where the infringer
proposed the language challenged on appeal
and failed to raise before the district court its
overbreadth and extraterritorial arguments
stemming from the proposed language)
- Non-party bound by injunction when in active concert

or participation with an enjoined party FRCP
65(d)(2)(C) includes aiders and abettors, and privies of,
an enjoined party (Aevoe, 8/29/13 (non-party was bound
by PI because acting in concert with -- as privies of --
the named party in connection with the resale of
redesigned products, and had notice of the PI); See also
In re Cyclobenzaprine, 2/14/13 (nonprecedential non-
party was bound by (preliminary) injunction in part based
on a settlement agreement with -- and thus being in
privity of contract with -- the enjoined party))
- Modifying an injunctions effective date e.g., based on

the amount of time required to comply (i4i, 3/10/10
(modifying the injunctions effective date on appeal,
where not supported by the record))
Need not practice the patent for an injunction eBay (S.C.)
- Injunctions are not reserved only for those patentees who intend
to practice their patents, as opposed to those who choose to
license (Edwards Lifesciences, 11/13/12 (noting practice that
courts awarding permanent injunctions typically do so under
circumstances where the plaintiff practices its invention and is a
direct market competitor); Broadcom, 9/24/08 (patentee
indirectly competed with the accused and enjoined infringer,
despite not practicing the claimed invention; and the patentee
licensed only a customer, not a direct competitor); Voda,
1397
8/18/08 (rejecting the patentees argument that the district court
had improperly adopted a categorical rule conflicting with
eBay (S.C.)); MercExchange, 3/16/05) [the Supreme Court in
eBay agreed with the above, so long as such patent holders
(e.g., independent inventors and university researchers, vs.
patent-holding companies) are able to satisfy the traditional
four-factor test, as discussed above]
- There is no requirement in this country that a patentee

make, use, or sell its patented invention Rite-Hite
(Broadcom, 9/24/08)
C. ATTORNEY FEES 35 USC 285
Attorney Fees 35 USC 285
(Integrated Tech., 11/4/13 (vacating finding of exceptional case

and award of attorney fees, which the district court based in part
on its finding of willfulness rather than litigation misconduct
alone); Synthes USA, 10/29/13 (affirming denial of attorney
fees for bad faith litigation); Monolithic Power Systems,
8/13/13 (affirming exceptional case finding and full attorney
fees award of $8.4 million (including for discovery in parallel
ITC litigation) for litigation misconduct, including filing
baseless motions to mask false testimony regarding conception,
and vexatious litigation strategy based on filing covenants not
to sue late in litigation to avoid litigation on patent validity);
Taurus IP, 8/9/13 (affirming exceptional case finding for bad
faith litigation (based on unreasonable claim construction), and
declining to address the amount of the attorney fees because not
appealed); Checkpoint Systems, 3/25/13 (reversing $6.6 million
in attorney fees (including costs and interest) awarded to
defendant, where the case was not shown to be brought in bad
faith or objectively baseless; explaining the reason for the
American rule (that the parties pay their own attorney fees
because otherwise the poor might be unjustly discouraged from
suing if the penalty included paying the opponents legal fees)
and its exception for baseless cases, or litigation or PTO
1398
misconduct; the suit or defense must be reasonable to avoid
fee-shifting citing Highmark); Raylon, 12/7/12 (vacating and
remanding the denial of attorney fees and costs after reversing
the denial of Rule 11 sanctions (for a frivolous claim
construction) upon which the district court relied in not finding
the case exceptional and denying attorney fees and costs; see
also J. Reyna, concurring district court must, if a party moves,
undertake a detailed and thorough Section 285 inquiry and
analysis when the court finds a Rule 11 sanction based on
conduct involving the allegation and pursuit of infringement
claims that have been found objectively unreasonable; also,
given the record in the case, would have reversed and declared
the case exceptional and limited the remand to determining
appropriate sanctions); Whitserve, 8/7/12 (remanding because
the district court abused its discretion by failing to explain why
attorney fees were not warranted); Highmark, 8/7/12
(remanding attorney fee award based on bad faith litigation of
infringement counterclaim in a DJ action, and litigation
misconduct); Grober, 7/30/12 (dismissing appeal of denial of
fees as moot after vacating SJ of noninfringement, since
defendants were no longer a prevailing party); Bard, 2/10/12
(affirming $19 million award of attorney fees and costs)
[vacated in part after remanded on 6/14/12]; Marctec, 1/3/12
(affirming $4.7 million award of attorney and expert witness
fees against the patentee based on bad faith litigation (including
continuing litigation after an unfavorable claim construction)
and litigation misconduct (including misrepresenting claim
construction law and the district courts claim construction, and
introducing and relying on unreliable expert testimony that was
inadmissible under Daubert (S.C.), thereby prolonging the
litigation and its expenses)); Powell, 11/14/11 (affirming
attorney fees award against the infringer based on litigation
misconduct and vexatious and bad faith litigation); Eon-Net,
7/29/11 (affirming bad faith litigation and litigation misconduct
where the action was brought to extract a nuisance value
settlement by exploiting the high cost of defending against the
patentees baseless claims); Spectralytics, 6/13/11 (willful
infringement); Old Reliable Wholesale, 3/16/11 (reversing
1399
attorney fees award where the patentees non-anticipation
arguments were not objectively baseless); Ilor, 1/11/11
(patentees proposed broader claim construction not objectively
baseless, where supported by the intrinsic record and because
claim construction can be difficult and not always predictable);
Lazare Kaplan, 12/22/10 (district courts exceptional case
finding was based on clearly erroneous IC ruling); Advanced
Magnetic Closures, 6/11/10 (affirming attorney fees award
based on IC and litigation misconduct); Leviton Mfg., 5/28/10
(vacating and remanding attorney fees and costs award based
on SJ of IC and vexatious litigation); Aspex Eyewear, 5/24/10
(affirming the denial of attorney fees for bad faith litigation
based on equitable estoppel, and for IC); Taltech, 5/12/10
(affirming attorney fees based on IC and litigation misconduct);
Medtronic Navigation, 4/26/10 (reversing an attorney fee award
against the patentee, despite the patentee proceeding to trial
(including under a DOE theory in the face of a PHE defense)
after obtaining a narrow claim construction (after SJ of
noninfringement was denied); see also J. Lourie, concurring,
but opining that most patent cases have no merit, and that the
district court should control the courtroom, arguments, etc.);
Forest Group, 12/28/09 (affirming no exceptional case where
the prevailing partys counterclaims were largely unsuccessful);
Ultimax Cement, 12/3/09 (cross-appeal and denial of motion
for attorney fees mooted by the reversal and vacatur of SJ
motions favoring the movant); Wedgetail, 8/12/09 (affirming
the district courts denial of attorney fees, although no reasons
were provided, where the accused infringer did not file a
motion for fees, as required by FRCP 54(d)(2)(B), or otherwise
argue on appeal the reasons the district court erred, in order for
the CAFC to order a remand); Depuy Spine, 6/1/09 (reversing
the award of attorney fees based on litigation misconduct);
Revolution Eyewear, 4/29/09 (denying fee award based on lack
of exceptional case where there was insufficient evidence to
support a finding of willful infringement, where the claim was
not pleaded (barring enhanced damages) and thus was not
decided by the trier of fact); Clearvalue, 3/24/09; Larson Mfg.,
3/18/09 (cross-appeal of decision not finding case exceptional
1400
and awarding attorney fees was moot after vacating finding of
IC); ICU Medical, 3/13/09 (attorney fees awarded against the
patentee in part based on the patentees (frivolous) claim
construction, despite a claim differentiation argument); E-Pass
Technologies, 3/20/09 (attorney fees award affirmed in
companion Rule 36 case based on inadequate pre-filing
investigation and litigation misconduct); Takeda, 12/8/08
(attorney fees awarded under Section 271(e)(4) based on
baseless Paragraph IV certification letter and litigation
misconduct); Qualcomm, 12/1/08 (awarding fees based on
litigation misconduct); Minks, 10/17/08 (no abuse of discretion
in reducing attorney fee award in half where the patentee
wasted time and was unable to articulate a damages theory);
Research Corp. Techs., 8/1/08 (grant of attorney fees reversed
with reversal of IC); Scanner Techs., 6/19/08 (district court
erred in finding an exceptional case and awarding attorney fees,
as the court also erred in finding IC based on alleged false
material statements in a petition to make special); Nilssen,
6/17/08 (attorney fees awarded based on IC and litigation
misconduct; see also dissent, J. Newman); Innovation Techs.,
6/16/08 (attorney fee award was vacated and the case remanded
after the district court failed to make any fact findings as to why
the case was exceptional under section 285); Samsung
Electronics, 4/29/08 (accused infringers motion, claim for
attorney fees was mooted by the patentees offer to pay the full
amount of the fees); Computer Docking Station, 3/21/08
(attorney fees denied despite noninfringement based on a clear
disavow[al] in the PH of the accused laptop computers from
the scope of the term portable computer); Monsanto, 2/5/08;
Innogenetics, 1/17/08 (bringing claim of IC was exceptional);
Digeo, 11/1/07; In re Omeprazole, 4/23/07; RFR Industries,
2/16/07; Highway Equipment, 11/21/06; Serio-Us Industries,
8/10/06; Kao, 3/21/06; NCube, 1/9/06; Fieldturf Intl, 1/5/06;
Perricone, 12/20/05; IPXL Holdings, 11/21/05; Imonex,
5/23/05; Stephens, 12/29/04; Juicy Whip, 9/3/04; Inland Steel,
4/9/04)
1401
35 USC 285 attorney fees awarded in exceptional cases
- Section 285 provides: The court in exceptional cases

may award reasonable attorney fees to the prevailing
party. (Integrated Tech., 11/4/13; Checkpoint Systems,
3/25/13; Whitserve, 8/7/12; Highmark, 8/7/12; Bard,
2/10/12 [vacated in part after remanded on 6/14/12];
Marctec, 1/3/12 (bad faith litigation (frivolous suit) and
litigation misconduct); Spectralytics, 6/13/11 (willful
infringement); Old Reliable Wholesale, 3/16/11; Ilor,
1/11/11 (Section 285 (as relates to bad faith litigation)
must be interpreted against the background of the
Supreme Courts decision in Professional Real Estate
Investors, i.e., whether the lawsuit was objectively
baseless); Aspex Eyewear, 5/24/10; Wedgetail, 8/12/09
(explaining that Section 285 is an exception to the
American Rule, under which each party bears its own
attorney fees and expenses, and that Section 285 codified
in patent cases the bad faith equitable exception to the
American Rule, expressly limiting fee awards only to
exceptional cases Sun-Tek); Nilssen, 6/17/08 (Section
285 is the statutory authority needed under the American
rule (i.e., that courts do not award attorney fees to
prevailing parties, absent statutory authority) for
awarding attorney fees in patent cases; see also J.
Newman, dissenting, stating that the premise of the
American Rule against fee-shifting is that one should
not be penalized for merely defending or prosecuting a
lawsuit Summit Valley Indus. (S.C.)); Innovation
Techs., 6/16/08)
- Exceptionality is only an element for the attorney

fees award, not a separate sanction (Samsung
Electronics, 4/29/08 (district court was without
jurisdiction to assess exceptionality after the
patentee agreed to pay in full the accused
infringers attorney fees))
1402
- Must request attorney fees! (i.e., file a motion for fees
no later than 14 days after entry of judgment, and
must state the amount or provide a fair estimate of the
amount sought, under FRCP 54(d)(2)(B)) Section 285
does not exempt requests for attorney fees from
compliance with the above rule IPXL Holdings
(Wedgetail, 8/12/09 (prevailing party should have filed a
motion for fees anyway, as the above rule requires,
despite the district courts dismissal order stating that
each party shall bear their own costs and attorneys fees,
in order to make the arguments and evidence of record
for appeal)); See also DISTRICT COURT PRACTICE
AND PROCEDURE Motion for attorney fees, costs
FRCP 54(d)(2)
District courts discretion factors considered inherent

power expert witness fees
- District courts (broad, yet not unbridled) discretion to

award attorney fees (Marctec, 1/3/12; Old Reliable
Wholesale, 3/16/11 (broad, yet not unbridled, discretion);
Taltech, 5/12/10; Wedgetail, 8/12/09; Takeda, 12/8/08 (J.
Bryson, concurring, stating that the task of determining
an exceptional case is necessarily committed almost
entirely to the judgment of the district court); Minks,
10/17/08; 800 Adept, 8/29/08 (finding exceptional case
and that the patentee was entitled to attorney fees, but
denying motion without prejudice to reassertion after
completion of the appellate process); Nilssen, 6/17/08;
Innovation Techs., 6/16/08 (bad faith litigation); NCube,
1/9/06; Group One, 5/16/05; Golight, 1/20/04); See also
Brady Construction, 8/15/08 (nonprecedential district
court did not clearly err in concluding no IC during
prosecution of reissue patent (and no exceptional case)
where the examiner could have rejected the patentees
arguments that the reissue claims filed more than two
1403
years after grant of the original patent were narrower than
the original claims)
- Abuse of discretion standard of review as the key

to affirming the district courts award of attorney
fees (Taurus IP, 8/9/13 (the CAFC is mindful of
the fact that the district court, with its first-hand
knowledge of the parties and their positions,
should not be unduly second-guessed citing Eon-
Net); Nilssen, 6/17/08 (emphasizing the
importance of deferring to district court judges on
matters assigned to their discretion: In reviewing
such matters, when we find them to be supported
by evidence, and not unreasonable, we must, and
do, respect their choices.))
- CAFC is responsible to examine the record with

care when the district court has awarded attorney
fees based on an exceptional case, to determine
whether there was clear error in the exceptional
case finding or an abuse of discretion in the award
of fees Medtronic Navigation (Marctec, 1/3/12;
Eon-Net, 7/29/11; Old Reliable Wholesale,
3/16/11; Ilor, 1/11/11 (reversing attorney fee
award where the patentees proposed claim
construction was not objectively baseless)); See
also Precision Links, 6/7/13 (nonprecedential
rule is because of the substantial economic and
reputational impact of an award of attorney fees
quoting Eon-Net)
- Factors that the district court considers when using its

discretion in deciding whether to award attorney fees
(Taltech, 5/12/10; Nilssen, 6/17/08; MercExchange,
3/16/05; Junker, 2/8/05; Franks Casing, 11/30/04; Juicy
Whip, 9/3/04)
1404
- Intangible as well as tangible factors weighed,
including: degree of culpability of the infringer,
closeness of the question, litigation behavior, and
any other factors whereby fee shifting may serve
as an instrument of justice (Taltech, 5/12/10;
Nilssen, 6/17/08 (district court was within its
discretion and did not clearly err in weighing the
evidence in determining that litigation misconduct
and IC were sufficient grounds to award attorney
fees to prevent a gross injustice to the accused
infringer); Serio-Us Industries, 8/10/06; Perricone,
12/20/05; MercExchange, 3/16/05)
- What are reasonable attorney fees? Amount

client paid attorney does not establish absolute
ceiling (Junker, 2/8/05); See also In re Electro-
Mechanical Indus., 12/22/09 (nonprecedential
need evidence to support the reasonableness of,
inter alia, the billing rate charged and the number
of hours expended)
- Attorney fee award not mandatory when willful

infringement found, but the district court should explain
its decision not to award attorney fees (Whitserve, 8/7/12
(distinguishing an award of attorney fees from enhanced
damages, quoting from Spectralytics); Spectralytics,
6/13/11)
- Courts possess inherent power to sanction litigation

misconduct (i.e., powers over and above sanctions
imposed under rules or statutes) a court may use its
inherent power to assess attorney fees when a party has
acted in bad faith, vexatiously, wantonly, or for
oppressive reasons Chambers (S.C.), Amsted
(Marctec, 1/3/12 (affirming the district courts use of its
inherent authority to award expert witness fees against
the patentee); Medtronic Navigation, 4/26/10 (reversing
sanctions award based on inherent authority); Clearvalue,
1405
3/24/09 (abuse of discretion where the misconduct was a
discovery violation appropriately addressed by FRCP
37); Takeda, 12/8/08 (award of expert witness fees, in
addition to Section 285 attorney fees, was proper; see
also J. Bryson, concurring, expressing qualifications to
the district courts use of its inherent power in patent
cases); Samsung Electronics, 4/29/08 (court must have
jurisdiction to use its inherent power)); See also
LITIGATION MISCONDUCT
- District courts use of its inherent power is

reserved for cases with a finding of fraud or abuse
of the judicial process (Marctec, 1/3/12;
Medtronic Navigation, 4/26/10; Takeda, 12/8/08
(abuse of judicial process, based on bad faith and
vexatious litigation misconduct)); See also In re
Electro-Mechanical Indus., 12/22/09
(nonprecedential expert witness fees were
improperly awarded under Section 285, but are
properly awarded under the district courts
inherent power)
- Expert witness fees Section 285 does not provide

for the award of expert witness fees (Marctec,
1/3/12 (district court properly used its inherent
power to award expert witness fees against the
patentee, based on bad faith litigation and litigation
misconduct); Ilor, 1/11/11 (court can invoke its
inherent power to award expert fees in exceptional
cases based upon a finding of bad faith); In re
Electro-Mechanical Indus., 12/22/09
(nonprecedential district court erred by awarding
expert witness fees as part of the attorney fees
awarded under Section 285))
Two-step inquiry for determining attorney fees award
Generally
1406
- Two-step inquiry 1) has prevailing party proven an
exceptional case by C&C evidence?; and if so, 2)
whether a fee award is appropriate (a decision that lies
primarily within the district courts discretion), and the
amount of the award (depends on the extent to which the
case is exceptional)? (Integrated Tech., 11/4/13; Taurus
IP, 8/9/13; Checkpoint Systems, 3/25/13; Highmark,
8/7/12; Bard, 2/10/12 [vacated in part after remanded
on 6/14/12]; Marctec, 1/3/12; Eon-Net, 7/29/11; Lazare
Kaplan, 12/22/10; Aspex Eyewear, 5/24/10; Wedgetail,
8/12/09; Revolution Eyewear, 4/29/09 (district courts
limited finding of willfulness on an equitable issue
(equitable intervening rights) was not a C&C finding of
willfulness to support an exceptional case); ICU Medical,
3/13/09 (attorney fees properly awarded only for
vexatious and frivolous portion of case); Research Corp.
Techs., 8/1/08; Nilssen, 6/17/08; Innovation Techs.,
6/16/08; Samsung Electronics, 4/29/08 (exceptionality is
an element or precondition for the imposition of attorney
fees, and not a separate sanction like Rule 11
sanctions); Computer Docking Station, 3/21/08;
Monsanto, 2/5/08 (fee award appropriate, citing
Perricone); Digeo, 11/1/07; Highway Equipment,
11/21/06; Perricone, 12/20/05; MEMC Electronic,
8/22/05; Evident, 2/22/05)
Prevailing party
- Prevailing party? whether the judgment has res

judicata effect vs. voluntary dismissal by the
plaintiff the defendant is not necessarily a
prevailing party (RFR Industries, 2/16/07
(voluntary dismissal); Brooks Furniture, 1/4/05;
Inland Steel, 4/9/04)
1407
- Dismissal with prejudice = adjudication on
the merits for purposes of res judicata
(Highway Equipment, 11/21/06; Inland
Steel, 4/9/04)
- Prevailing party when voluntary dismissal

with prejudice under FRCP 41(a)(2), based
on covenant not to sue (Wedgetail, 8/12/09
(implying that the accused infringer was the
prevailing party -- despite the accused
infringers opposition to a motion to dismiss
with prejudice (also granting a covenant not
to sue) solely on the ground that the
proposed order would deprive the accused
infringer of the opportunity to seek attorney
fees as the prevailing party); Highway
- Not prevailing party when

voluntary dismissal without prejudice
under FRCP(a)(1) to be a
prevailing party, must have
sufficient judicial imprimatur to
constitute judicially sanctioned
change in legal relationship of the
parties Buckhannon (S.C.);
voluntary dismissal without prejudice
under FRCP 41(a)(1) doesnt change
the legal relationship of the parties
because the plaintiff is free to refile
the action, and also is not judicially
sanctioned because dismissal does not
require a court order (RFR Industries,
2/16/07); See also Tavory, 10/28/08
(nonprecedential attorney fees
awarded in copyright infringement
suit under 17 USC 505 where the
defendant was ruled a prevailing
1408
party under Buckhannon (S.C.) after
the district court dismissed the claim
for lack of subject matter jurisidiction
based on invalidating defects in the
plaintiffs copyright registration
which materially altered the legal
relationship between the parties)
- Not prevailing party when case resolved

by settlement, not incorporated by judicial
decree (Exigent Tech., 3/22/06)
- Reinstatement of claims after reversing the

district courts striking of pleadings no
longer a prevailing party (Clearvalue,
3/24/09 (reversing award of Section 285
attorney fees))
- Reversal and vacatur of the district courts

SJs favoring the movant for attorney fees
no longer a prevailing party (Grober,
7/30/12; Ultimax Cement, 12/3/09); See also
Adams & Assocs., 3/18/13 (nonprecedential
the patentee was no longer the prevailing
party after the CAFCs reversal of denial of
JMOL of noninfringement)
Exceptional case
- Exceptional case 285 (Synthes USA,

10/29/13; Monolithic Power Systems, 8/13/13;
Checkpoint Systems, 3/25/13; Raylon, 12/7/12 (A
case is exceptional under Section 285 if there has
been some inappropriate conduct relating to the
matter in litigation. Brooks Furniture);
Highmark, 8/7/12; Bard, 2/10/12 (affirming $19
million in attorney fees and costs, based on the
1409
jurys verdict of willfulness, the evidence of
willfulness, the extensive litigation history
between the parties that the infringer repeatedly
lost yet continued to infringe, the infringers
inconsistent positions on infringement throughout
the litigation, and the infringers reliance on
testimony that was not credible) [vacated in part
after remanded on 6/14/12]; Marctec, 1/3/12;
Eon-Net, 7/29/11; Old Reliable Wholesale,
3/16/11; Ilor, 1/11/11; Spine Solutions, 9/9/10
(vacating award of attorney fees after reversing
willfulness judgment, on which the district court
based its exceptionality finding); Advanced
Magnetic Closures, 6/11/10 (affirming attorney
fees award based on IC for failing to disclose to
the PTO an inventorship dispute, and the applicant
lying about being the inventor, as well as for
litigation misconduct); Taltech, 5/12/10;
Medtronic Navigation, 4/26/10 (reversing
exceptional case finding where clear error); Forest
Group, 12/28/09 (affirming no exceptional case
despite award of sanctions for discovery abuses,
where the patentee had reasonable belief of
infringement); Wedgetail, 8/12/09 (the CAFC has
consistently found that only a limited universe
of circumstances warrant a finding of
exceptionality in a patent case); Depuy Spine,
6/1/09 (no exceptional case based on litigation
misconduct from the mere assertion of the reverse
DOE, where there was no finding that the defense
was litigated in bad faith); Revolution Eyewear,
4/29/09 (no exceptional case based on willful
infringement, where claim not pleaded); ICU
Medical, 3/13/09 (exceptional case based on bad
faith litigation, litigation misconduct, and frivolous
claim construction); Takeda, 12/8/08; Qualcomm,
12/1/08 (exceptional case based on litigation
misconduct); Nilssen, 6/17/08 (exceptional case
1410
based on IC and litigation misconduct); Innovation
Techs., 6/16/08 (attorney fee award was vacated
and the case remanded after the district court failed
to make fact findings regarding exceptional
case); Computer Docking Station, 3/21/08;
Monsanto, 2/5/08; Innogenetics, 1/17/08 (bringing
claims of IC was exceptional); Digeo, 11/1/07;
Propat Intl, 1/4/07; Highway Equipment,
11/21/06; Serio-Us Industries, 8/10/06; NCube,
1/9/06; MEMC Electronic, 8/22/05; Imonex,
5/23/05; Evident, 2/22/05; Bruno, 1/11/05; Brooks
Furniture, 1/4/05; Stephens, 12/29/04; Franks
Casing, 11/30/04; Q-Pharma, 3/8/04; Golight,
1/20/04; Sulzer, 12/9/03; Phonometrics, 11/26/03;
Forest Labs, 8/7/03; McNeil-PPC, 8/1/03)
Burden of proof
- BOP C&C evidence Brooks

Furniture (Synthes USA, 10/29/13
(failed to prove by C&C evidence that
entitled to attorney fees for bad faith
litigation); Checkpoint Systems,
3/25/13; Highmark, 8/7/12; Marctec,
1/3/12; Old Reliable Wholesale,
3/16/11; Aspex Eyewear, 5/24/10;
Forest Group, 12/28/09; Wedgetail,
8/12/09; Takeda, 12/8/08), vs. not
based on speculation and conjecture
(Innovation Techs., 6/16/08 (district
court speculated without any fact
findings that the lawsuit was filed
solely for the purposes of harassing a
small competitor); Digeo, 11/1/07
(request for additional discovery
relating to defective title denied when
request based on unsubstantiated
1411
speculation); Stephens, 12/29/04);
See also Luma, 4/10/08
(nonprecedential differences of
opinion without sufficient underlying
evidence fall far short of showing
clear error in the district courts
finding that the case was not
exceptional and denying attorney
fees)
- Motion for Rule 11 sanctions vs.

motion for attorney fees burden of
proofs are different once a litigant
moves based on non-frivolous
allegations for a Rule 11 sanction, the
burden of proof shifts to the non-
movant to show it made a reasonable
pre-suit inquiry into its claim; vs. the
burden of proof for 285 motions
remains with the movant to show by
C&C evidence that the case is
exceptional (Digeo, 11/1/07)
- Burden on accused infringer to

prove by C&C evidence that
case was exceptional by
showing that patentee brought
frivolous suit because knew or
should have known that lacked
title to patent (Digeo, 11/1/07)
Criteria for determining exceptional case
- Criteria for determining exceptional case

include: willful infringement, fraud or
inequitable conduct in procuring patent, bad
faith (vexatious, unjustified or frivolous)
1412
litigation, litigation misconduct,
unprofessional behavior, conduct that
violates Rule 11, or like infractions Brooks
Furniture (Monolithic Power Systems,
8/13/13; Highmark, 8/7/12 (whether
infringement counterclaims were frivolous);
Marctec, 1/3/12; Eon-Net, 7/29/11; Ilor,
1/11/11 (no bad faith litigation); Advanced
Magnetic Closures, 6/11/10 (exceptional
case based on IC (falsely claiming
inventorship) and litigation misconduct
(including fabricating or re-constructing
evidence)); Leviton Mfg., 5/28/10 (vacating
and remanding SJ of IC and vexatious
litigation; see also J. Prost, dissenting);
Aspex Eyewear, 5/24/10; Taltech, 5/12/10
(affirming fees based on IC and litigation
misconduct); Wedgetail, 8/12/09 (citing a
number of cases to make clear the above
rule); Depuy Spine, 6/1/09 (no bad faith
litigation); ICU Medical, 3/13/09 (bad faith
litigation and litigation misconduct);
Takeda, 12/8/08; Computer Docking
Station, 3/21/08; Monsanto, 2/5/08 (a case
of a farmer with apparent disregard for
patent rights, license agreements, and the
judicial process); Digeo, 11/1/07 (no
baseless or frivolous suit; Rule 11 sanctions
never requested); Highway Equipment,
11/21/06 (no IC or litigation misconduct);
Serio-Us Industries, 8/10/06 (bad faith
litigation); NCube, 1/9/06 (willful
infringement); Fieldturf Intl, 1/5/06;
Frazier, 8/2/05; Imonex, 5/23/05; Evident,
2/22/05; Bruno, 1/11/05 (IC); Brooks
Furniture, 1/4/05; Stephens, 12/29/04;
Knorr-Bremse, 9/13/04 (en banc); Glaxo,
7/27/04)
1413
- Egregious action required prevent a
gross injustice - need finding of
unfairness, bad faith, inequitable
conduct, vexatious litigation, or
something similar need to show
egregious action for award of attorney
fees (Old Reliable Wholesale,
3/16/11; Aspex Eyewear, 5/24/10 (to
prevent a gross injustice); Wedgetail,
8/12/09 (really makes this clear,
identifying the limited
circumstances in which an attorney
fees award is appropriate); Depuy
Spine, 6/1/09 (citing Beckman rule);
Takeda, 12/8/08 (a purpose of Section
285 is to prevent a gross injustice
when the accused infringer has
litigated in bad faith - Beckman);
Nilssen, 6/17/08 (exceptional case
was also supported by litigation
conduct, and thus not dispositive
even if IC was based on less
egregious actions than typical of IC
holdings; see also J. Newman,
dissenting Section 285 permits fee-
shifting only in egregious situations
and was intended to prevent gross
injustice); Digeo, 11/1/07; Fieldturf
Intl, 1/5/06)
- Merely negligent conduct does

not suffice to establish that a
case is exceptional; movant
must prove actual wrongful
intent or gross negligence, i.e.,
conduct short of fraud but in
excess of simple negligence
1414
(Digeo, 11/1/07 (pertient
inquiry was whether plaintiff
knew or should have known its
legal title to patent was
defective))
Inequitable conduct
- No per se rule of exceptionality

in cases involving IC; district
courts have wide discretion
to award attorney fees in IC
cases, but are not required to do
so (Nilssen, 6/17/08 (referring
to numerous instances in
which the CAFC has affirmed a
district courts denial of
attorney fees in cases involving
IC)); See also Synthon, 6/17/08
(nonprecedential affirming
the district courts findings of
IC and exceptional case, and
the award of attorney fees)
- No benign IC there is no
distinction between IC that is
somehow benign, and IC that is
otherwise (Nilssen, 6/17/08 (It
is a contradiction to call
inequitable conduct benign;
see also dissent, J. Newman
arguing that the distinction
between benign IC and
otherwise is critical and must
be considered, and that the
egregiousness of the
malefactions on which the
1415
finding of inequitable conduct
was based is highly relevant
to whether the case is
exceptional and whether fee
shifting is appropriate; attorney
fee awards should be limited to
major infractions, as statute
and precedent require))
Bad faith litigation
- Courts consider the totality of

the circumstances surrounding
not just the initial allegations of
infringement, but the
maintenance of those claims
throughout the litigation; thus,
when information gleaned from
discovery or the courts rulings
makes clear that the continued
pursuit of litigation is frivolous
or vexatious, fees may be
warranted even where the filing
of the initial complaint was
arguably justified (Synthes
USA, 10/29/13 (affirming the
denial of attorney fees - citing
MarcTec))
- Bad faith litigation requires not

misleading pre-litigation
conduct, but vexatious,
unjustified or frivolous
litigation Forest Labs
(Highmark, 8/7/12 (addressing
frivolous litigation based on
infringement counterclaim in
1416
DJ action); Eon-Net, 7/29/11
(written description of patents
clearly refuted the patentees
proposed claim construction,
distinguishing Ilor); Old
Reliable Wholesale, 3/16/11;
Ilor, 1/11/11; Aspex Eyewear,
5/24/10; Medtronic Navigation,
4/26/10; Forest Group,
12/28/09 (affirming no
exceptional case where the
patentee had a reasonable belief
of infringement); Wedgetail,
8/12/09; Depuy Spine, 6/1/09
(no bad faith litigation from
asserting reverse DOE); ICU
Medical, 3/13/09 (bad faith
litigation was supported by
evidence that accused product
prior to filing was not believed
to infringe spike claims);
Takeda, 12/8/08; Digeo,
11/1/07 (no C&C evidence that
plaintiff knew or should have
known of defect in title to
patent)); See also Precision
Links, 6/7/13 (nonprecedential
evidence was not sufficiently
conclusive to render the
patentees claim construction
and infringement positions
frivolous, stating that patentees
are shielded from the
additional litigation burden of
fee-shifting when their
positions are reasonable
citing Checkpoint Systems;
however, affirming the district
1417
court that charges of indirect
infringement as to other claims
were frivolous, despite a pre-
filing opinion of counsel, which
was unreasonable to rely on
where devoid of analysis and
evidence, e.g., acts of third
party direct infringement, to
provide an objective basis for
indirect infringement)
- Frivolous suit defined

(Stephens, 12/29/04)
- Absent litigation misconduct or

misconduct in securing the
patent, a court can award
attorney fees under Section 285
only if the litigation is both 1)
brought in subjective bad faith,
and 2) objectively baseless
the same objective/subjective
standard applies for both
patentees asserting claims of
infringement and alleged
infringers defending against
claims of infringement - must
establish both prongs by C&C
evidence Professional Real
Estate Investors (S.C.), Brooks
Furniture applied on a claim
by claim basis (Synthes USA,
10/29/13; Monolithic Power
Systems, 8/13/13 (basis for
rejecting argument that
litigation misconduct alone was
not sufficient to award attorney
fees for an exceptional case);
1418
Taurus IP, 8/9/13; Checkpoint
Systems, 3/25/13 (litigation
was not objectively baseless,
where the patentee and its
expert reasonably relied on the
accused infringers admission
(under FRCP 36) that the
accused product was made
generally in accordance with
the process in its own patents,
and which according to expert
testimony produced resonance
tags having the infringing hole
feature distinguishing L&W);
Raylon, 12/7/12 (remanding
after reversing the denial of
Rule 11 sanctions, where the
district court relied on the
denial in finding that the
litigation was not objectively
baseless and thus exceptional;
see also J. Reyna, concurring
the district court should have
explored the existence of an
inference of subjective bad
faith after concluding that the
patentees claim construction
positions stretched the bounds
of reasonableness; also
opining that an inference of bad
faith may arise where pre-suit
(patent) expert opinions are
steadfastly relied upon to
support a partys claim
construction position that is
inconsistent with the intrinsic
record); Highmark, 8/7/12
(treating exceptional case
1419
findings separately for each
asserted patent claim, and
ruling that the objective prong
is a question of law subject to
de novo review on appeal
citing Bard (willfulness case);
see also n.1 and J. Mayer,
dissenting opining that Bard
was wrongly decided in holding
that no deference is given the
district courts objectively
reasonableness determination
and that de novo review is
required)); Marctec, 1/3/12
(affirming attorney fees award
where the patentee filed an
objectively baseless lawsuit in
bad faith (i.e., subjective bad
faith) accompanied by litigation
misconduct); Eon-Net, 7/29/11
(affirming exceptional case
finding and attorney fees award
based on bad faith litigation
and litigation misconduct,
including spoliation of
documents and the failure to
engage in the claim
construction process in good
faith); Old Reliable Wholesale,
3/16/11; Ilor, 1/11/11 (under
the exacting standard of
Brooks Furniture, the
plaintiffs case must have no
objective foundation, and the
plaintiff must actually know
this); Aspex Eyewear,
5/24/10; Wedgetail, 8/12/09;
ICU Medical, 3/13/09 (attorney
1420
fees may be warranted for
litigation misconduct or if both
of the above are present, citing
Brooks Furniture); E-Pass
Technologies, 3/20/09 (attorney
fees awarded based on
frivolous appeal where the
patentee omitted the
introductory phrase above from
the legal standard for
exceptional case); Serio-Us
Industries, 8/10/06; Brooks
Furniture, 1/4/05); See also
Icon Health & Fitness,
rejecting the accused infringers
argument to lower the standard
for exceptionality to
objectively unreasonable to
rebalance what it alleged as the
power of large companies over
smaller companies in patent
infringement litigation, and
concluding based on the record
that the district court did not err
in finding the case not to be
exceptional, and thus the CAFC
had no reason to revisit the
settled standard for
exceptionality) [On 10/1/13,
the U.S. Supreme Court
granted certiorari, and the
question presented is: Does
the CAFCs promulgation of
a rigid and exclusive two-part
test for determining whether
a case is exceptional under
Section 285 improperly
1421
appropriate a district courts
discretionary authority to
award attorney fees to
prevailing accused infringers
in contravention of statutory
intent and Supreme Court
precedent, thereby raising the
standard for accused
infringers (but not patentees)
to recoup fees and
encouraging patent plaintiffs
to bring spurious patent cases
to cause competitive harm or
coerce unwarranted
settlements from
defendants?]
- Patentees reliance on
opinion of patent counsel
in initiating action and
attempt to communicate
with the defendant before
filing suit no bad faith
litigation (Serio-Us
Industries, 8/10/06)
- Vexatious, unjustified
litigation brought in
subjective bad faith, and
litigation is objectively
baseless Professional
Real Estate Investors
(S.C.) decide first
whether objectively
baseless (question of law
for the court, reviewed
de novo; state of mind is
irrelevant to the objective
1422
baselessness inquiry) if
not met, the question of
subjective bad faith is not
reached (deferential
review); for subjective
prong, presumption that
patent infringement
action was brought in
good faith C&C
evidence required to
overcome presumption
(Taurus IP, 8/9/13;
Highmark, 8/7/12 (see
also n.4); Old Reliable
Wholesale, 3/16/11
(patentees arguments
were not objectively
meritless, where
supported by the accused
infringers documents);
Ilor, 1/11/11 (no bad
faith litigation by the
patentee based on its
proposed claim
construction); Medtronic
Navigation, 4/26/10 (no
bad faith litigation);
Brooks Furniture, 1/4/05
(opinion of counsel))
- Objective baselessness
argument or claim
asserted during litigation
(whether in infringement
allegations or claim
construction positions) is
so unreasonable that no
reasonable litigant could
1423
reasonably expect
success on the merits
(Taurus IP, 8/9/13 (case
properly found to be
exceptional, because no
reasonable litigant in the
patentees position could
have expected a finding
that a web surfer satisfied
the user limitation
the patentees proposed
construction of user
fell below the threshold
required to avoid a
finding of objective
baselessness citing
Raylon and other cases);
Raylon, 12/7/12;
Highmark, 8/7/12
(alternative claim
construction by the
patentee was not
objectively baseless,
where was supported by
the specification citing
Ilor and Marctec);
Marctec, 1/3/12; Old
Reliable Wholesale,
3/16/11 (exacting
standard not met where
the patentee had
reasonable grounds for
arguing that the patent
was valid over the prior
art); Ilor, 1/11/11;
Dominant
Semiconductors,
4/23/08)
1424
whether a case is
objectively baseless
requires an objective
assessment of the merits
Brooks Furniture
(Highmark, 8/7/12;
Marctec, 1/3/12)
standard is identical to
objective recklessness
standard for enhanced
damages and attorney
fees for willful
infringement under
Seagate (Highmark,
8/7/12; Bard, 6/14/12 (en
banc) (relying on the fact
of identical standards in
holding that the legal
standard for the objective
prong for willfulness is a
question of law for the
court); Old Reliable
Wholesale, 3/16/11; Ilor,
1/11/11)
- Defeat of a litigation
position, even on SJ,
does not warrant an
automatic finding that
the suit was objectively
baseless all the
circumstances must be
considered (Marctec,
1/3/12 (infringement
1425
claims were objectively
baseless where the
specification and PH
clearly refuted the
patentees proposed
claim construction); Old
Reliable Wholesale,
3/16/11 (relying in part
on the PTOs confirming
the patentability of the
claims over the cited
prior art); Ilor, 1/11/11
(answering in the
negative the question of
whether the plaintiff-
patentees broader claim
construction was so
unreasonable that no
reasonable litigant could
believe it would succeed,
where the claim language
on its face, specification
and PH did not preclude
the patentees
construction); Aspex
Eyewear, 5/24/10)
- Existence of objective
baselessness is
determined based on the
record ultimately made
in the infringement
proceeding, which is a
single backwards looking
inquiry into the
reasonableness of the
claims in light of the full
record, including
1426
continued litigation of
baseless claims
(Highmark, 8/7/12 (n.1:
comparing Rule 11
sanctions, which depend
on facts, to the objective
reasonableness prong,
which does not require
fact finding but rather
simply whether the
record established in the
proceeding supports a
reasonable argument as
to the facts and law; see
also J. Mayer,
dissenting); Ilor, 1/11/11
(reason that blog entries
by the patentees CEO
regarding differences
between the patented and
accused products were
irrelevant to objective
baselessness))
- Subjective prong look

at the totality of the
circumstances show
that the lack of objective
foundation for the claim
was either known or so
obvious that it should
have been known by the
party asserting the claim
In re Seagate, Ilor a
case initially brought in
good faith may be
continued in bad faith
depending on
1427
developments during
discovery and otherwise
(Taurus IP, 8/9/13
(subjective prong met
where the patentee
subjectively knew its suit
lacked a reasonable
basis, and thus was
pursued and maintained
in bad faith); Highmark,
8/7/12 (subjective prong
was met since the
inception of the case))
- Subjective bad faith by

the offending party can
be upheld on review if,
despite the lack of an
explicit finding by the
district court, other
findings of fact are
compatible with, and
only with, that view
Eltech Sys. (Taurus IP,
8/9/13 (CAFC upheld the
district courts implicit
finding of subjective bad
faith based on other
factual findings))
- When the accused infringer

prevails in the underlying
action factors relevant to the
exceptional case inquiry
include the closeness of the
question, pre-filing
investigation and discussions
with the defendant, and
1428
litigation behavior Serio-US
(Marctec, 1/3/12; Computer
Docking Station, 3/21/08 (no
exceptional case when the
patentee made a serious
effort during the pre-suit
investigation and the
applicants disavowal of claim
scope in the PH did not seem
self-evident at the beginning of
the claim construction
analysis))
- Patentees broad claim

construction must
follow claim construction
principles and be
reasonably supported by
the intrinsic record Q-
Pharma (Taurus IP,
8/9/13 (patentees
construction was not
supported by the written
description citing
cases); Highmark, 8/7/12
(patentees non-limiting
construction of preamble
objectively
unreasonable); Marctec,
1/3/12 (bad faith
litigation where the
patentees proposed
claim construction was
frivolous because did not
reasonably apply the
principles in Phillips, as
it ignored the entirety of
the specification and
1429
disclaimers in the PH,
and thus was
unsupported by the
intrinsic record); Ilor,
1/11/11 (patentees
construction was not
objectively baseless,
where objective evidence
showed that the patentee
could reasonably argue
its broad claim
construction position was
correct))
- Continuing litigation (after

unfavorable claim construction)
exceptional case when a party
prolongs litigation in bad faith
party must continually assess
the soundness of pending
infringement claims, especially
after an adverse claim
construction (Taurus IP, 8/9/13
(rejecting argument by the
patentees counsel in defense to
bad faith litigation that it can
and should represent its client
zealously, the CAFC stating
that attorneys are always
charged with the obligation to
file cases reasonably based in
law and fact and to litigate
those cases in good faith
citing Eon-Net); Marctec,
1/3/12 (bad faith litigation
where the patentee continued
litigation after unfavorable
claim construction and without
1430
evidence of infringement); Old
Reliable Wholesale, 3/16/11
(reversing attorney fees award
where the patentees non-
anticipation arguments were not
objectively baseless in view of
deposition testimony by the
inventor and the patentees
expert); Ilor, 1/11/11 (no
exceptional case where suit and
claim construction were not
objectively baseless); Forest
Group, 12/28/09 (no
exceptional case after
noninfringement determination
where the patentee was only
defending against
counterclaims); Computer
Docking Station, 3/21/08 (no
exceptional case where the
patentee attempted to obtain a
final judgment of
noninfringement to expedite
appeal of the district courts
claim constructions, and where
substantial portions of the
parties appeal briefs addressed
the construction of the other
claim term in dispute))
- Failure to conduct an adequate

pre-filing investigation?
(Checkpoint Systems, 3/25/13
(despite not examining the
actual accused infringing
product, the patentees reliance
on the accused infringers
admission that the accused
1431
product was made generally in
accordance with the process
described in the accused
infringers own patents was
reasonable where the patents
taught the infringing feature
distinguishing L&W and citing
Martek Biosciences);
Highmark, 8/7/12 (n.4); Eon-
Net, 7/29/11; Innovation
Techs., 6/16/08 (attorney fee
award was vacated and the case
remanded after the district court
failed to find any facts for
concluding that the patentee
knew or, on reasonable
investigation, should have
known, that its claims of
infringement were baseless);
Computer Docking Station,
3/21/08 (case not objectively
baseless and thus exceptional,
based on the evidence of pre-
filing activities in the record,
including a serious effort to
evaluate the likelihood of
success on the patent claims,
including submitting affidavits
from the patentees employees
and in-house and outside
counsel who attested to the pre-
filing investigation of the
patent, PH, and the accused
devices); Digeo, 11/1/07 (not
learning of title defect in patent
not exceptional case); MEMC
Electronic, 8/22/05); See also
Precision Links, 6/7/13
1432
(nonprecedential pre-filing
investigation of infringement
allegation was adequate based
on a simple examination of the
accused product which showed
infringement under the
patentees proposed claim
construction)
- No reasonable ground for

infringement - although
most cases address
whether there was a
reasonable ground for
infringement, there could
not possibly be a
reasonable ground for
infringement if the
plaintiff has no legal title
to the patent (Digeo,
11/1/07)
- Reasonable pre-filing
inquiry shown by the
patentees testing of
sample of the allegedly
infringing product,
commissioning chemical
analyses and acquiring
documentary evidence
that appeared to confirm
that the accused product
fell within chemical
specifications of the
patented method, even if
the plaintiff did not ask
the alleged infringer
about the method it
1433
practiced (Computer
Docking Station, 3/21/08
(citing Cambridge
Prods.))
- Equitable estoppel found

(Aspex Eyewear, 5/24/10
(no bad faith litigation))
Litigation misconduct
- Litigation misconduct unethical or

unprofessional conduct by a party or
his attorneys during the course of
adjudicative proceedings; attorney
fees awarded even absent C&C
evidence that an asserted claim or
defense was objectively baseless;
usually does not support a full award
of attorney fees, but rather the fee
award must bear some relation to the
extent of the misconduct (Monolithic
Power Systems, 8/13/13 (affirming
the full amount of $8.4 million
attorney fees award for litigation
misconduct and vexatious litigation
strategy, stating that litigation
misconduct alone may suffice to make
a case exceptional and agreeing with
the district court that the rampant
misconduct so severely affected every
stage of the litigation that a full award
of attorney fees was proper citing
Beckman Instruments); Highmark,
8/7/12 (frivolous arguments were not
objectively unreasonable at the time
they were made the CAFC gives no
1434
deference to the district courts
determination; also, minor changes in
claim construction,where the
substance did not change, did not
support exceptional case finding; also,
the district court erred in not offering
justification for sanctioning conduct
before a different tribunal); Marctec,
1/3/12 (separate and independent
basis for exceptional case finding and
award of attorney fees); Eon-Net,
7/29/11 (lots of examples of litigation
misconduct supported the award of
attorney fees and Rule 11 sanctions);
Old Reliable Wholesale, 3/16/11
(failure to engage in settlement
negotiations was not litigation
misconduct); Advanced Magnetic
Closures, 6/11/10 (affirming attorney
fees award, where the patentee failed
to appeal against litigation
misconduct as an independent ground
for awarding fees); Taltech, 5/12/10
(affirming fee award based on IC and
litigation misconduct); i4i, 3/10/10
(defining litigation misconduct, and
ruling that misconduct based on
counsels improper statements to the
jury, in defiance of the courts
repeated admonitions, was properly
among the district courts reasons for
enhancing damages under Section 284
after a finding of willfulness see
also n.5); Forest Group, 12/28/09
(affirming no exceptional case despite
the district courts award of sanctions
for discovery abuses); Clearvalue,
3/24/09 (no prevailing party); ICU
1435
Medical, 3/13/09; Takeda, 12/8/08
(attorney fees properly awarded under
the Hatch-Waxman Act based on
litigation misconduct, including the
filing of a baseless certification
letter); Qualcomm, 12/1/08 (based on
repeated false claims during
discovery, trial, and post-trial, by
attorneys and witnesses); Nilssen,
6/17/08 (exceptional case based on IC
and litigation misconduct); Power
Mosfet Techs., 8/17/04); See also
Lee, 11/21/13 (nonprecedential
remanding for the district court to
determine whether the infringers
litigation misconduct alone supported
exceptional case finding, after
reversing willfulness); Precision
Links, 6/7/13 (nonprecedential
reconsider whether an exceptional
case based on litigation misconduct
and whether awarding attorney fees
was still appropriate, and how much,
after reversing one of the district
courts underlying grounds for an
exceptional case that the patentees
infringement charge was frivolous)
- Litigation misconduct also includes

advancing frivolous arguments during
the course of the litigation or
otherwise prolonging litigation in bad
faith Highmark (Precision Links,
6/7/13 (nonprecedential n.2:
agreeing with the district courts
finding of this category of litigation
misconduct, by the patentee seeking a
1436
PI based on a frivolous theory, and for
baseless litigation over the timeliness
of filing a notice of appeal
consider whether an exceptional case
and the appropriate sanction for the
misconduct))
- District court in a better

position than the CAFC to
assess litigation misconduct
the district court looks at the
totality of the circumstances in
assessing whether a case
qualifies as exceptional
Yamanouchi Pharm.
(Monolithic Power Systems,
8/13/13; Eon-Net, 7/29/11;
Taltech, 5/12/10 (pattern of
changing testimony); Takeda,
12/8/08; Qualcomm, 12/1/08;
Nilssen, 6/17/08 (CAFC ill-
suited to weigh such evidence
where the instances of litigation
misconduct found by the
district court were context-
specific and rejecting
arguments that the instances of
litigation misconduct were
either harmless oversight of
legal formalities or permissibly
rough litigation tactics);
Highway Equipment,
11/21/06); See also Precision
Links, 6/7/13 (nonprecedential)
- Failure to engage in settlement

negotiations is not litigation
1437
misconduct where an
objectively reasonable basis for
maintaining an infringement
suit, the refusal to make or
accept an offer of settlement is
not, in and of itself, sufficient
to establish litigation
misconduct a patentee has the
right to vigorously enforce a
presumptively valid patent (Old
Reliable Wholesale, 3/16/11)
- Exceptional case based on the

multiplicity of instances of
litigation misconduct, even
though individually not the
basis for an exceptional case
finding (Marctec, 1/3/12 (the
patentees mischaracterizations
of Phillips and claim
construction law, coupled with
frivolous and unsupported
infringement allegations
premised on the same, was
litigation misconduct; also
based on the patentees reliance
on inadmissible expert
testimony on infringement);
Nilssen, 6/17/08)
- Pre-litigation conduct the

patentees bad-faith business
conduct toward an accused
infringer prior to litigation is
not a basis for an exceptional
case Forest Labs (Qualcomm,
12/1/08 (exceptional case
properly found where pre-
1438
litigation misconduct was an
important predicate to
understanding and evaluating
the [patentees] litigation
misconduct))
Other attorney fees-related issues
- Attorney fee provisions in a contract vs. attorney fees

under Section 285 fees awarded under the contract are
not limited by statute (Monsanto, 2/5/08 (technology
agreement))
- Section 285 is not a separate sanctions statute

(Samsung Electronics, 4/29/08 (distinguishing attorney
fees under Section 285 from Rule 11 sanctions, which are
a type of collateral issue springing from the principal
suit, where the attorney fees were the main, not a
collateral, issue of the case)); See also In re Electro-
Mechanical Indus., 12/22/09 (nonprecedential
enhancing attorney fee award under Section 285 was
improper)
- District courts jurisdiction over a motion for attorney

fees separate jurisdiction, including for determining IC
(Orenshteyn, 7/26/12 (Order) (adjudication of attorney
fees is treated as a separate final decision from decision
on the merits); Advanced Magnetic Closures, 6/11/10
(district court )
- Due process when awarding attorney fees notice and

hearing requirements (Advanced Magnetic Closures,
6/11/10)
- Motion, claim for attorney fees mooted by an offer for

full relief (Samsung Electronics, 4/29/08)
1439
- Consent judgment - provision in consent judgment
awarding attorney fees (Intl Rectifier, 9/23/05)
- Inequitable conduct and attorneys fees under 285 file

application for fees promptly (Liebel-Flarsheim,
3/22/07); See also DISTRICT COURT PRACTICE AND
PROCEDURE Motion for attorney fees FRCP
54(d)(2)
- Intervenor may be entitled to fee award (Intl Rectifier,

9/23/05)
- Motive for patenting (e.g., business reason) is irrelevant

(McNeil-PPC, 8/1/03)
VIII. PRIORITY DATES 35 USC 119, 120
(In re Owens, 3/26/13 (affirming the BPAIs ruling that design patent
application was not entitled to priority under Section 120 to the filing
date of parent application where there was no support for added
unclaimed broken lines defining newly claimed trapezoidal shape on
bottle citing In re Daniels); Synqor, 3/13/13 (sufficient evidence to
support jurys finding of adequate support in priority application);
Loughlin, 7/11/12 (entitlement to an earlier filing date under Section
120 applied to avoid the 1-year bar of Section 135(b)(2)); Hollmer,
6/7/12 (no entitlement to earlier filing date where there was no
continuity of disclosure in intervening applications to satisfy Section
120 requirements, because of an insufficient incorporation by
reference of a pending application); Cordance, 9/23/11 (rejecting the
patentees arguments for priority to an earlier effective date based on
the filing date of a parent patent and an alleged dated conception
document); Star Scientific, 8/26/11 (broad language providing support
for specific values); In re Katz Patent Litigation, 2/18/11 (burden shift
to patentee to prove entitlement to earlier priority date); Research
Corp., 12/8/10 (later-filed claims reciting substantially all language
were not entitled to earlier filing dates, including based on inventor
admissions limiting the scope of the earlier applications); Goeddel,
1440
9/7/10 (foreign application was not constructive RTP for priority in an
interference, where failed to show possession of the actual invention
defined by the counts); Encyclopaedia Britannica, 6/18/10 (affirming
anticipation over the patents published foreign application where the
patent was found not to be entitled to the priority date of the original
application under Section 120 where an intermediate application in
the priority chain failed to claim priority to the original application
(the first page of the subject application, containing the priority claim,
was missing at the time of filing); case of first impression); Anascape,
4/13/10 (claims in patent issuing from a CIP were not supported by
the parent patent); Trading Techs., 2/25/10 (species in provisional
provided support for later-filed claim to genus); Martek Biosciences,
9/3/09; Cordis, 3/31/09; Technology Licensing, 10/10/08 (ruling that
Poweroasis did not change the challengers burden of proving
invalidity by C&C evidence, which includes the ultimate burden of
proving the patentees lack of entitlement to an earlier application
filing date); Lucent Techs., 9/25/08 (written descriptive support in
priority applications is relevant to determining when the claimed
technology was developed); DuPont, 5/14/08 (no magic words (i.e.,
claims the benefit of) are needed for claiming priority to a
provisional application); Poweroasis, 4/11/08 (no entitlement to
earlier filing date of application which provided no WD support for
broad claim construction based on later-filed CIP); Zenon
Environmental, 11/7/07 (grandchild patent anticipated by grandparent
patent due to no continuity of disclosure in chain of priority
documents); Frazer, 8/20/07; Boston Scientific Scimed, 8/8/07 (35
USC 119); Go Medical Indus., 10/27/06 (best mode); Callicrate,
10/31/05; Broadcast Innovation, 8/19/05)
A. Generally claiming priority to an earlier application
- Provided the criteria of Section 120 are met, applications shall,

without exception, receive the benefit of the earlier filing date
the statute does not limit its effect to only certain provisions
under the patent laws In re Hogan (CCPA) (Loughlin, 7/11/12
(rejecting argument that claim copied under Section 135(b)(2)
was not entitled to priority benefit under Section 120))
1441
- Each application in a priority chain must contain a priority
claim under Section 120 each application in a priority chain
must contain a specific reference to the earlier filed priority
application(s) and thus a later filed (continuation) application
cannot cure the defect in the priority claim of an earlier filed
parent application (Hollmer, 6/7/12 (later application could not
cure insufficient incorporation by reference statement in
intervening applications to satisfy Section 120 continuity of
disclosure requirement); Encyclopaedia Britannica, 6/18/10
(affirming anticipation over the patents published foreign
application where priority claim was not made in the subject
earlier application))
- All four requirements of Section 120 must be met by

each application in the priority chain to claim priority (In
re NTP II, 8/1/11; Encyclopaedia Britannica, 6/18/10)
- Co-pending applications okay to file a

continuation on the same day the parent issues, for
copendency under Section 120? (Encyclopaedia
Britannica, 6/18/10 (leaving issue for another day))
B. Benefit of foreign application
- Priority claim based on foreign application -
- Constructive RTP does not invoke different standards

whether the priority document is U.S. or foreign;
determine whether the document satisfies the WD and
enablement requirements of Section 112, first paragraph
(Goeddel, 9/7/10 (alleged constructive RTP by foreign
application failed to satisfy Section 112 requirements);
Frazer, 8/20/07)
- 35 USC 119 does not permit a U.S. applicant to benefit from

the priority of a foreign application previously filed by an entity
1442
that was not acting on behalf of the U.S. applicant at the time of
filing (Boston Scientific Scimed, 8/8/07)
- Section 119 gives rise to a right of priority that is

personal to the U.S. applicant; thus, a U.S. applicant may
only benefit from the priority of a foreign application if it
was filed by the U.S. applicant or by someone acting on
his behalf at the time the foreign application was filed
Vogel (CCPA) (Boston Scientific Scimed, 8/8/07)
- Filing the foreign application in accordance with the laws

of the foreign country (i.e., filing by someone other than
the inventor) has no bearing; section 119 requires that a
nexus exist between the inventor and the foreign
applicant at the time the foreign application was filed,
i.e., logically, an entity could not have filed a foreign
application on behalf of an inventor without the
inventors knowledge or consent (Boston Scientific
Scimed, 8/8/07)
C. Benefit of provisional application
- Four requirements under 35 USC 119(e)(1) for a non-

provisional application to claim priority to a provisional
application: 1) the provisional must comply with the
requirements of section 112, first paragraph, and the non-
provisional must be for the same invention; 2) the non-
provisional must be filed within twelve months of the
provisional; 3) there must be an overlap of inventorship;
and 4) the non-provisional must include a specific
reference to the provisional (which can be either in the
first sentence of the specification or in the application
data sheet (ADS) MPEP 201.11) (DuPont, 5/14/08)
- Overlap of inventorship for a non-provisional

utility application to be afforded the priority date
of the provisional application, the two applications
1443
must share at least one common inventor New
Railhead Mfg. (DuPont, 5/14/08 (applications
shared at least one common inventor))
- Inventorship of a provisional application

normally need not be corrected unless the
correction is needed to establish an overlap
of inventorship MPEP 201.03 (DuPont,
5/14/08)
- Specific reference required magic words

from the MPEP (i.e., claims the benefit of) are
unnecessary for claiming priority to a provisional
application, but rather that a reasonable person
reading the priority claim would conclude that the
applicant claimed priority to the earlier provisional
application (DuPont, 5/14/08 (no defect found in
the reference in the ADS: Continuity Data: This
application is a non-provisional of provisional
60/273669 2001-03-06 WHICH IS PENDING))
D. Section 112, 1, requirements must be satisfied for the

benefit of priority
- Priority claim, document must satisfy 112, first paragraph,

requirements with respect to the claims in the later-filed
application (Apple, 8/7/13 (J. Reyna, dissenting prior art
reference was not anticipatory because was not entitled to the
priority date of provisional which did not describe or enable the
claimed multitouch feature, that is, the provisional did not
indicate that the inventors knew how to detect multiple touches
on the filing date); In re Owens, 3/26/13 (newly claimed shape
on bottle defined by broken lines in design application was not
supported by (the drawings of) parent design application);
Hollmer, 6/7/12 (in an interference, the earlier application must
meet the requirements of Sections 112 and 120 for the subject
matter of the count); Cordance, 9/23/11 (no WD support in
1444
parent patent where the patentee failed to link the parent
patents disclosure with the construed limitations of the asserted
claims); Star Scientific, 8/26/11 (broad language (minimal air
flow may vary) in provisional application supported specific
values added in non-provisional); In re NTP II, 8/1/11 (proper
for examiner to consider priority claim during reexamination
where was not determined during prosecution); Centocor,
2/23/11 (broad claims to fully human antibodies were not
supported by adequate WD in earlier application); Research
Corp., 12/8/10 (later-filed claims reciting substantially all
language were not supported by earlier applications including
figures, objects of the invention, and other disclosure limiting
the present invention to a blue noise mask) ; Bradford,
4/29/10 (priority document may have provided sufficient
support for the later claims, but for the applicants prosecution
remarks to the contrary, i.e., priority date estoppel); Anascape,
4/13/10 (inadequate WD support in the parent patent for claims
in CIP patent); Yorkey I, 4/7/10 (interference); Yorkey II,
4/7/10 (interference); Trading Techs., 2/25/10 (substantial
evidence supported the jurys verdict that a provisional
applications WD of a species was adequate support for a later
claimed genus); Martek Biosciences, 9/3/09 (upholding jurys
finding as supported by substantial evidence that original
application adequately described later-filed claims); Cordis,
3/31/09 (expert testimony supported the jurys finding that
claims were entitled to priority of provisional applications
filing date); Technology Licensing, 10/10/08 (no adequate
support for the added claim term (other circuits) in the
earlier applications); Lucent Techs., 9/25/08 (failure of priority
application to describe later claimed subject matter evidenced
that subject matter was developed later); DuPont, 5/14/08
(addressing the requirements for claiming priority to a
provisional application); Poweroasis, 4/11/08 (patentee not
entitled to the benefit of priority when the original application
did not provide WD support for the broad construction given to
term customer interface based on the disclosure of a later-
filed CIP); Zenon Environmental, 11/7/07; Frazer, 8/20/07
(foreign application); Go Medical Indus., 10/27/06; Callicrate,
1445
10/31/05); See also Cummins-Allison, 5/25/12 (nonprecedential
drawings and description in earlier application supported
dimensions recited in later added claims explicit support is
not necessary, but rather what a POS in the art would conclude
from reading the earlier application); See also WRITTEN
DESCRIPTION Generally
- Focus is on the earlier application alone the support

issue is whether the POS in the art would understand
from the earlier application alone, without consulting the
new matter in the later application (e.g., comparing the
two applications), that the inventor had possession of the
later claimed subject matter when the earlier application
was filed (Apple, 8/7/13 (J. Reyna, dissenting no
possession of multitouch feature in provisional); In re
Owens, 3/26/13 (no possession of newly claimed shape
in parent design patent application (which for design
patents, the written description is provided by the
drawings)); Synqor, 3/13/13 (defendants failed to prove
lack of entitlement to earlier filing date, where sufficient
evidence supported the jurys factual finding of adequate
support in priority application); Yorkey I, 4/7/10 (the
BPAIs WD finding was supported by substantial
evidence); Yorkey II, 4/7/10 (same result as Yorkey I);
Ariad, 3/22/10 (en banc) (subject matter published after
the priority date was legally irrelevant to whether there
was adequate WD support); Martek Biosciences, 9/3/09;
Technology Licensing, 10/10/08); See also In re Meyer
Manufacturing, 12/17/10 (nonprecedential inventors
were not in possession of shorter expellers when parent
application was filed)
- Prior application must describe an invention in

sufficient detail that one skilled in the art can
clearly conclude that the inventor actually invented
the claimed invention as of the filing date sought
Lockwood (In re Owens, 3/26/13 (rejecting
argument that the shape of a bottle design in a
1446
parent design application could be subdivided and
claimed separately in a continuation application,
where the parent application did not provide
support for separately claiming the separate
portion); In re Katz Patent Litigation, 2/18/11
(earlier application must necessarily disclose the
later claimed subject matter - Hyatt); Research
Corp., 12/8/10; Bradford, 4/29/10; Anascape,
4/13/10 (lack of WD support in the parent patent
for claims in CIP patent was evidenced by all parts
of the parent patent, including the drawings, as
well as by describing the significant
disadvantages of the later claimed embodiment);
Trading Techs., 2/25/10 (substantial evidence,
including expert testimony, for the jury to
conclude that a later filed genus claim was
supported by a species in provisional application);
See also WRITTEN DESCRIPTION
- Absence of a disclaimer of the later-claimed

subject matter in the parent patent is not
relevant, but rather whether the parent
specification sufficiently describes the later-
claimed subject matter a patentee is not
presumed to support variants that are not
described (Anascape, 4/13/10)
- Must show (for adequate WD support) that

the inventor(s) had invented each feature
that is included as a claim limitation New
Realhead (Trading Techs., 2/25/10; Cordis,
3/31/09)
- Parent application must actually or

inherently disclose the elements of the
later-filed claims PowerOasis
(Research Corp., 12/8/10); See also
WRITTEN DESCRIPTION
1447
- Whole invention vs. preferred embodiment
only of a larger invention in the asserted
priority application - Honeywell (Anascape,
4/13/10 (rejecting argument that single
input member embodiment in the parent
patent was described only as a preferred
embodiment of a larger invention later-
claimed in a CIP patent))
- Supporting text in the asserted priority application

must have been part of the application as filed
(Anascape, 4/13/10 (rejecting support argument
based on claims in the asserted priority application
where the text relied on was not part of the
specification and claims as filed, but was later
added to the claims by amendment))
- Consider how an ordinarily skilled artisan would

understand the text of the asserted priority
application (In re Owens, 3/26/13; Synqor,
3/13/13; Hollmer, 6/7/12 (inadequate incorporation
by reference of application in intervening
applications in priority chain for entitlement to
earlier priority date); Research Corp., 12/8/10;
Anascape, 4/13/10 (Each case must be viewed as
it would be understood by a person of ordinary
skill in the field of the invention); Martek
Biosciences, 9/3/09 (supported by expert
testimony)); See also Cummins-Allison, 5/25/12
(nonprecedential explicit support is unnecessary,
for the above reason)
- Expert testimony for WD support

(Anascape, 4/13/10 (rejecting expert
testimony not supported by any evidence,
which also could not override the objective
content of the CIP and asserted priority
1448
documents, which included extensive
changes made to the CIP document))
- Earlier application need not describe the claimed

subject matter in precisely the same terms as found
in the claims at issue Tech. Licensing (Trading
Techs., 2/25/10; Martek Biosciences, 9/3/09); See
also Cummins-Allison, 5/25/12 (nonprecedential
explicit support for later claims unnecessary)
- Design patents, applications written description

is provided by the drawings In re Daniels (In re
Owens, 3/26/13)
- Claims are awarded priority on a claim-by-claim basis

based on the disclosure in the priority applications
(Lucent Techs., 9/25/08)
- CIP application contains subject matter from a prior

application and may also contain additional matter not
disclosed in the prior application; new subject matter
(i.e., new matter) does not receive the benefit of the
earlier priority date (Santarus, 9/4/12 (holding claims in
CIP patent obvious over issued parent patent as prior art,
based on the district courts finding due to breaks in the
chain of priority and the patentee waived argument to
the contrary; see also J. Newman, dissenting the panel
majority incorrectly held that the disclosure in a parent
patent is a reference against the common disclosure in a
CIP patent (where there were no breaks in the chain of
filings), tainting many properly granted patents);
Anascape, 4/13/10 (no benefit of priority to earlier filing
date for claims in CIP patent, where the claims and
specification were broadened by making extensive
changes to the parent application by removing a single
input member limitation calling it classical new
matter); Technology Licensing, 10/10/08; Poweroasis,
4/11/08 (broad claim construction given to term was
1449
supported only by CIP, and thus the patentee not entitled
to the earlier filing date of the original application); Go
Medical Indus., 10/27/06); See also In re Reiffin Family
Trust, 7/27/09 (nonprecedential express definition of
the claim term multithreading in the application was
not supported by the disclosure of the asserted priority
application which did not meet the definitions
requirements)
- Quintessential difference between a continuation

and a CIP is the addition of new matter; generally,
a CIP adds new matter on which at least one claim
relies for support (Poweroasis, 4/11/08)
- Consider the changes made to the later (CIP)

application in comparing the CIP claims to
the asserted priority application -
Poweroasis (Anascape, 4/13/10 (extensive
changes were made removing a single input
member limitation))
- Priority under section 120 - to gain the benefit of an

earlier filing date under section 120, each application in
the chain leading back to the earlier application must
comply with the WD requirement Lockwood (Hollmer,
6/7/12; In re NTP II, 8/1/11; Bradford, 4/29/10; Martek
Biosciences, 9/3/09; Technology Licensing, 10/10/08 (no
adequate support in the earlier applications for the
added claim term other circuits); that is, continuity of
disclosure must be maintained throughout a chain of
patents, applications (Hollmer, 6/7/12 (no continuity of
disclosure in priority chain where there was inadequate
incorporation by reference of application in intervening
applications); Zenon Environmental, 11/7/07 (continuity
of disclosure requirement not met for priority to an
earlier application, as the application in question failed to
incorporate by reference the disclosures of earlier
applications in their entirety; instead, the incorporation
1450
clause limited incorporation to only specific disclosures
in the earlier applications; see also J. Newman,
dissenting referring to the new risks of patent
drafting caused by the panel majoritys de novo review
and rejection of the factual foundations of incorporation
by reference (vs. majority patent draftsmanship is an
exacting art, and no less care is required in drafting an
incorporation by reference statement than in any other
aspect of a patent application)); See also In re Reiffin
Family Trust, 7/27/09 (nonprecedential patent issuing
from an application which excluded subject matter
present in earlier related priority applications could not
be amended during reexamination to add the excluded
matter, i.e., the failure to maintain continuity of
disclosure of the matter, once the patent issued, was
uncorrectable); Adang, 10/25/07 (nonprecedential -
failure to incorporate application by reference, for
purposes of showing written description support)
E. Incorporation by reference
- Incorporation by reference provides a method for integrating

material from various documents into a host document by citing
such material in a manner that makes clear that the material is
effectively part of the host document as if it were explicitly
contained therein Cook Biotech, Advanced Display Systems
(Hollmer, 6/7/12; Harari, 9/1/11 (application was unequivocally
incorporated in its entirety into the priority application, even
though 1) the incorporation statement did not recite in its
entirety and 2) the text of the priority application later also
incorporated only relevant portions of the application); Harari,
4/19/10 (incorporation by reference of an application containing
essential matter for WD purposes and identified by title and
filed on the same day as the present application (absent the
serial number and filing date) made clear to a reasonable
examiner the identity of the incorporated application - citing a
non-patent CAFC case for the rule that an incorporation by
1451
reference statement should leave no doubt as to what reference
is being incorporated); CSIRO, 9/19/08; Zenon
Environmental, 11/7/07 (no continuity of disclosure for priority
to earlier applications where the application in question failed
to incorporate by reference the disclosures of the earlier
applications in their entirety)); See also ANTICIPATION
Incorporation by reference in prior art reference; CLAIM
CONSTRUCTION Incorporation by reference
- Incorporation by reference in a patent - the standard of

one reasonably skilled in the art should be used to
determine whether the host document describes the
material to be incorporated by reference with sufficient
particularity Advanced Display (Hollmer, 6/7/12
(applying standard in determining no continuity of
disclosure in intervening applications, where on its face
the incorporation language did not directly lead one of
ordinary skill to the correct application but rather
presented several potential documents for incorporation
citing Zenon); Harari, 9/1/11 (interpreting the extent of
incorporated disclosure); Harari, 4/19/10 (n.2:
distinguishing standard for a patent from the reasonable
examiner standard for a pending application); Zenon
- Incorporation by reference in a pending application

standard is whether the identity of the incorporated
reference is clear to a reasonable examiner in light of the
documents presented In re Fouche (CCPA) (Hollmer,
6/7/12 (contrasting a reasonable examiner standard
applied in Harari, 4/19/10, when an application is at the
initial filing stage and the examiner is evaluating an
amendment that clarifies ambiguous incorporation by
reference language, with here applying a person of
ordinary skill standard to determine whether intervening
applications sufficiently incorporated by reference a
pending application to satisfy Section 120s continuity
requirements); Harari, 4/19/10 (the relevant inquiry is
1452
whether a reasonable examiner would be so befuddled by
the language of the original disclosure, despite the
explanation provided in the transmittal and preliminary
amendment, that he could not determine what document
was intended to be incorporated by reference))
- Clarifying amendments to an incorporation by

reference statement, e.g., adding the serial number
and filing date when later become available no
specific deadline for doing so (Harari, 4/19/10 (It
is not inappropriate for an application to identify
for the purposes of incorporation by reference a
co-pending application by title, inventors, and a
context-specific filing date, where such
information is sufficient to identify the application
at the time the information is presented citing
37 CFR 1.57(g)(2)))
- To incorporate material by reference, a host document

must contain language clearly identifying the subject
matter which is incorporated and where it is to be found;
a mere reference to another application, or patent, or
publication is not an incorporation of anything therein
In re de Seversky (CCPA) (Callaway, 8/14/09 (relating to
incorporation by reference for anticipation))
- To incorporate material by reference, the host

document must identify with detailed particularity
what specific material it incorporates and clearly
indicate where the material is found in the various
documents Cook Biotech, Advanced Display
Systems (Hollmer, 6/7/12 (incorporation language
in intervening applications was insufficient, where
on its face it did not directly lead one of ordinary
skill to the correct application, but rather presented
several potential documents for incorporation);
Harari, 4/19/10 (not questioning the identity of the
specific material of the application being
1453
incorporated); Zenon Environmental, 11/7/07); See
also ANTICIPATION Incorporation by
reference in prior art reference
F. Priority date estoppel
- Applicants arguments trumping possible disclosure in priority

document (Bradford, 4/29/10 (applicants arguments during the
PH regarding the disclosure of a related priority application
trumped an ambiguous disclosure that otherwise might have
sufficed to obtain an earlier priority date))
- Disclaimer of scope during prosecution of the parent

priority document (Bradford, 4/29/10 (CIP not entitled to
earlier priority date based on attorneys PH comments
regarding the scope of the priority document))
G. National stage application = PCT application and filing date
- Specific reference to the National stage application on a

patent equals a reference to the PCT application and filing date
(and thus the patent need not also contain a specific reference to
the PCT application); the U.S. filing date of the National
stage application = the filing date of the international (PCT)
application (Broadcast Innovation, 8/19/05)
H. Priority determination by the PTO
- PTO does not make priority determinations as a matter of

course during prosecution, in the absence of an interference or
rejection which would require the PTO to make a priority
determination (In re NTP II, 8/1/11 (basis for why the examiner
during the original prosecution did not consider priority claim
issue); Poweroasis, 4/11/08 (rejecting the patentees argument
that the presumption of validity includes a presumption that
1454
claims in a CIP are all entitled to the earliest effective filing
date, when the PTO had not previously considered priority,
stating that the PTOs own procedures indicate that examiners
do not make priority determinations except where necessary,
citing the MPEP))
- Deference to the PTOs determination of entitlement to

an earlier filing date? (Technology Licensing, 10/10/08
(distinguishing Poweroasis and Ralston regarding the
deference issue; no deference where there was no
express evidence that the examiner ever addressed the
priority issue); also, a subsequent reissue of the patent in
suit, in which the disputed prior art was considered, could
not change the district courts final judgment))
- No reason for the PTO to undertake what could be a quite

complex and very time consuming WD analysis simply
to pronounce the effective filing date of each claim of a
CIP, absent some dispute over it during prosecution
(Poweroasis, 4/11/08, n.4)
I. Alternative priority dates asserted
- Patentee may argue in the alternative for different priority dates

at trial (Ajinomoto, 3/8/10 (the patentee waived an alternative,
later priority date for compliance with the best mode
requirement by not raising the issue until after trial))
IX. DEFENSES TO INFRINGEMENT
A. INVALIDITY GENERALLY
Presumption of validity 35 USC 282
On 6/9/11, the U.S. Supreme Court affirmed the Federal

Circuits judgment in i4i, 3/10/10 and held, 8-0 (C.J. Roberts
1455
took no part in the case), in Microsoft Corp. v. i4i Limited
Partnership that Section 282 requires an invalidity defense to
be proved by C&C evidence, which same standard also applies
when the invalidity defense is based on prior art not considered
by the PTO -- Congress specified the applicable standard of
proof in 1952 when it codified the common-law presumption of
patent validity. Since then, it has allowed the Federal Circuits
correct interpretation of Section 282 to stand. Any recalibration
of the standard of proof remains in its hands.
The Court also opined that based on the commonsense

principle that if the PTO did not have all material facts before
it, its considered judgment may lose significant force, a jury
may be instructed to evaluate whether the evidence before it is
materially new, and if so, to consider that fact when deciding
whether an invalidity defense has been proved by C&C
evidence.
- Patents are presumed valid 35 USC 282 the patent

challenger therefore must prove invalidity by C&C
evidence, i.e., must submit C&C evidence of (the factual
elements of) invalidity (Broadcom, 10/7/13 (affirming
denial of JMOL of obviousness citing Power-One);
Meadwestvaco, 9/26/13 (obviousness); St. Jude Medical,
9/11/13 (rejecting as immaterial the challengers
arguments about the patentees experts conclusory
testimony, where the challenger failed to carry its burden
of proof on obviousness); Plantronics, 7/31/13
(obviousness burden of proof lies with the challenger,
and the CAFC has rejected any formal burden-shifting
framework in evaluating the Graham (S.C.) factors);
Ultramercial, 6/21/13 (patent-eligibility; it is rare that an
infringement suit can be dismissed at the pleading stage
(under FRCP 12(b)(6)) for lack of patentable subject
matter, in light of various factual issues to be resolved
(e.g., whether the patent embraces a scientific principle
or abstract idea, the scope of preemption), since every
patent is presumed to have been issued properly, absent
1456
C&C evidence to the contrary citing plurality opinions
in CLS Bank (en banc)); Novo Nordisk, 6/18/13
(obviousness; and stating that the presence or absence of
PTO findings on particular issues does not affect the
presumption of validity); Alexsam, 5/20/13
(obviousness); Allergan, 5/1/13 (obviousness); Cephalon,
2/14/13 (lack of enablement); Astrazeneca, 12/14/12
(obviousness); Osram Sylvania, 12/13/12 (anticipation by
prior art considered by the PTO may carry some
weight, but the burden does not change); Arcelormittal
France, 11/30/12 (anticipation); Fox Group, 11/28/12
(prior invention under Section 102(g)); Transocean,
11/15/12 (obviousness); Norgren, 11/14/12
(obviousness); Pozen, 9/28/12 (obviousness); Outside the
Box Innovations, 9/21/12 (obviousness); Santarus, 9/4/12
(obviousness); ActiveVideo Networks, 8/24/12; Amkor
Technology, 8/22/12 (anticipation - prior invention);
Magsil, 8/14/12 (lack of enablement); Alcon Research,
8/8/12 (dependent claims reciting the commercial
embodiment held nonobvious); Whitserve, 8/7/12
(anticipation); Sciele Pharma, 7/2/12 (district court
erroneously interpreted the law by failing to correctly
apply KSR (S.C.), because the C&C evidence standard
and the presumption of validity are not altered, i.e.,
heightened or weakened, by whether the prior art was
considered by the PTO Microsoft v. i4i (S.C.)); In re
Baxter, 5/17/12 (should the challenger fail to meet the
C&C evidence burden of proof, the court will not find the
patent valid, only that the patent challenger did not
carry the burden of establishing invalidity in the
particular case before the court In re Swanson); Leader
Technologies, 5/8/12 (that prior public use or on-sale
activity embodied the claimed invention); Streck, 1/10/12
(lack of enablement); Creative Compounds, 6/24/11
(prior invention under Section 102(g)); *Microsoft v. i4i,
6/9/11 (S.C.) (interpreting the presumption of validity in
Section 282 according to its common-law meaning (from
RCA (S.C.)) as requiring a C&C evidence standard of
1457
proof for proving invalidity -- which also applies to
invalidity challenges based on prior art not considered by
the PTO; see also J. Breyer, with whom J. Scalia and J.
Alito joined, concurring emphasizing that the
evidentiary standard of proof (C&C evidence) applies to
questions of fact and not to questions of law (i.e., how
the law applies to the facts as given): By preventing the
clear and convincing standard from roaming outside its
fact-related reservation, courts can increase the likelihood
that discoveries or inventions will not receive legal
protection where none is due; J. Thomas, concurring
opining that because Section 282 is silent as to the
standard of proof, it did not alter the common-law rule,
and thus the heightened standard of proof set forth in
RCA (S.C.) applies); Boston Scientific, 6/7/11 (lack of
WD); Hynix, 5/13/11 (affirming denial of motion for
JMOL based on lack of WD); Wellman, 4/29/11(best
mode violation and no indefiniteness); Innovention Toys,
3/21/11; Siemens, 2/24/11 (reason that equivalency
(preponderance BOP) does not invalidate a patent on the
alleged equivalent); Hologic, 2/24/11; Centocor, 2/23/11;
Tokai, 1/31/11 (no enhanced burden of overcoming the
presumption of validity with respect to the same prior art
before the PTO when the challenger also relies on new
prior art); Uniloc, 1/4/11 (presumption of validity and
C&C evidence standard are not changed when new prior
art is cited, citing i4i: Until changed by the Supreme
Court or this court sitting en banc, that is still the law.);
Spansion, 12/21/10 (claims not indefinite); Laryngeal
Mask, 9/21/10 (vacating and remanding SJ of invalidity
based on lack of WD); Eli Lilly, 9/1/10; Power-One,
3/30/10 (affirming denial of JMOL of obviousness);
Enzo Biochem, 3/26/10 (reversing SJ of claim
indefiniteness); Ariad, 3/22/10 (en banc) (holding biotech
patent invalid for lack of WD); *i4i, 3/10/10 (rejecting
challenge to jury instruction on the burden of proving
anticipation and argument that the burden should be
lower for prior art that was not before the PTO, based on
1458
the CAFCs precedent requiring the challenger to prove
invalidity by C&C evidence, and cases making clear that
KSR (S.C.) did not change the burden of proving
invalidity by C&C evidence) [affirmed by the U.S.
Supreme Court, on 6/9/11, in Microsoft v. i4i; On
11/29/10, the U.S. Supreme Court granted certiorari
the question presented was: Whether the [CAFC]
erred in holding that Microsofts invalidity defense
must be proved by clear and convincing evidence
when the asserted prior art was not before the PTO];
Intl Seaway Trading, 12/17/09 (accused infringers failed
to present C&C evidence of design patent invalidity that
shoe insoles were not considered significant to
consumers); Ultimax Cement, 12/3/09 (district court
erred in granting SJ of indefiniteness); Iovate Health
Sciences, 11/19/09; Amgen, 9/15/09; Fresenius, 9/10/09;
Martek Biosciences, 9/3/09; Titan Tire, 6/3/09
(comparing the requirements for a PI to the burden of
proving invalidity at trial, citing Technology Licensing);
Procter & Gamble, 5/13/09; Revolution Eyewear,
4/29/09 (no lack of WD for reissue claim); ICU Medical,
3/13/09 (affirming SJ based on lack of written
description); Abbott Labs, 10/21/08 (J. Newman
burden of establishing invalidity applies at the PI stage);
In re Ciprofloxacin, 10/15/08 (citing the rule as a basis
for holding that, in the absence of evidence of fraud
before the PTO or sham litigation, the court need not
consider patent validity in the antitrust analysis of a
reverse payment settlement agreement in the Hatch-
Waxman context, and adding that patent law bestows the
patent holder with the right to exclude others from
profiting by the patented invention); Technology
Licensing, 10/10/08 (the patent challenger always has the
ultimate burden of persuasion of proving invalidity (even
when priority to earlier applications is disputed), while
the burden of production with respect to invalidity and
entitlement to earlier application filing dates shifts
between the challenger and the patentee); Impax Labs,
1459
10/3/08; Praxair, 9/29/08 (the patentee appropriately
relied on the presumption of validity (i.e., without an
expert to rebut the challengers expert) in arguing that a
prior art reference did not anticipate); CSIRO, 9/19/08
(when validity challenge is based on introduction of new
matter, the PTOs allowance of the amendment(s) is
entitled to an especially weighty presumption of
correctness Brooktree); Voda, 8/18/08; Scanner
Techs., 6/19/08 (despite the presumption of validity,
unasserted claims were ruled obvious based on the
parties pretrial stipulation that case would stand or fall
on a single representative claim, citing Shelcore);
Poweroasis, 4/11/08 (the presumption of validity does
not require the patent challenger to prove a CIP is not
entitled to an earlier filing date where the PTO never
addressed the priority issue during prosecution with
respect to any prior art, distinguishing Ralston); Sitrick,
2/1/08 (enablement); American Seating, 1/29/08 (public
use bar); SRI Intl, 1/8/08 (issuance itself of the patent
showed that the specification satisfied the enablement
requirement); Z4 Technologies, 11/16/07 (prior invention
- 102(g)); Adenta, 9/19/07 (public use/on sale bars);
Automotive Techs., 9/6/07 (enablement); Takeda,
6/28/07 (obviousness); Young, 6/27/07 (indefiniteness);
Central Admixture Pharmacy Services, 4/3/07; Pfizer,
3/22/07 (C&C evidence defined); Liebel-Flarsheim,
3/22/07 (enablement, anticipation); Impax Labs,
11/20/06; Abbott Labs, 11/9/06; Aero Products, 10/2/06
(indefiniteness); Alza, 9/6/06 (obviousness); Gemmy
Indus., 6/22/06 (on sale bar); Stern, 1/17/06
(inventorship); Perricone, 12/20/05; Enzo Biochem,
9/30/05; Nystrom, 9/14/05; Lisle, 2/11/05; Iron Grip
Barbell, 12/14/04; Poly-America, 9/14/04; High Concrete
Structures, 7/29/04; Glaxo, 7/27/04; U. Rochester,
2/13/04)
- Burden of persuasion vs. burden of production

the challenger always has the burden of persuasion
1460
to prove invalidity by C&C evidence; once
sufficient evidence of invalidity is presented, the
burden of production (also known as going
forward with evidence) shifts to the patentee to
provide evidence and argument to the contrary
(e.g., that the prior art does not render the claims
invalid, secondary considerations, or that the
patentee is entitled to an earlier invention date, i.e.,
earlier application filing date or an earlier
conception date); the burden of production then
shifts again to the challenger to convince the court
by C&C evidence that the patent is invalid (e.g.,
the patentee is not entitled to the earlier filing date)
(Taurus IP, 8/9/13; Novo Nordisk, 6/18/13
(affirming obviousness and rejecting the patentees
arguments regarding the improper shifting of the
burden of persuasion where the district court
properly applied the burdens of persuasion and
production before reaching the ultimate conclusion
on obviousness citing In re Cyclobenzaprine); In
re Cyclobenzaprine, 4/16/12 (discussing the
different burdens as support for why there is no
formal burden shifting in an obviousness
determination with respect to secondary
considerations); *Microsoft v. i4i, 6/9/11 (S.C.)
(n.4: explaining the meaning of the term burden
of proof as historically encompassing two
separate burdens: the burden of persuasion
(specifying which party loses if the evidence is
balanced), and the burden of production
(specifying which party must come forward with
evidence at various stages in the litigation); also
noting that burden of proof has been confused with
the term standard of proof; here, using burden of
proof interchangeably with burden of persuasion to
identify the party who must persuade the jury in its
favor to prevail, and using standard of proof to
refer to the degree of certainty by which the
1461
factfinder must be persuaded of a factual
conclusion (i.e., by C&C evidence) to find in favor
of the party bearing the burden of persuasion); In
re Katz Patent Litigation, 2/18/11 (once an accused
infringer establishes obviousness by C&C
evidence, the burden shifts to the patentee to prove
priority over the invalidating prior art; to be
entitled to the priority date of an earlier
application, the patentee must show that the
application necessarily discloses that particular
device Hyatt, PowerOasis); Research Corp.,
12/8/10 (the district court properly placed the
burden on the patentee to show entitlement to an
earlier filing date, including where the patentee
failed to contest that the cited prior art patent
anticipated or rendered obvious the claimed
invention); Martek Biosciences, 9/3/09 (n.3: jurys
priority verdict was supported by substantial
evidence that the challenger failed to prove by
C&C evidence that later-filed claims were not
entitled to the benefit of the priority date of the
original application); Titan Tire, 6/3/09
(comparing the burdens at trial to the burdens at
the PI stage, citing Technology Licensing);
Technology Licensing, 10/10/08 (patent challenger
showed by C&C evidence the patentees lack of
entitlement to earlier application filing dates to
overcome an anticipating reference)); See also
Thomson Licensing, 6/19/13 (nonprecedential);
Novo Nordisk, 6/18/13 (nonprecedential
Cyclobenzaprine reaffirmed the CAFCs
longstanding precedent that it is error to find a
claim obvious before considering the objective
considerations, or to shift the burden of persuasion
to the patentee at any point during the obviousness
analysis); Stamps.com, 6/15/11 (nonprecedential
distinguishing the patentees burden of production
on prior invention for swearing behind a reference
1462
from the challengers burden of persuasion to
prove invalidity by C&C evidence); MEMS Tech.
Berhad, 6/3/11 (nonprecedential emphasizing
that the accused infringer bears the burden of
producing evidence demonstrating obviousness,
rather than relying on argument that no evidence
of nonobviousness exists)
- Clear and convincing evidence evidence that

places in the fact finder an abiding conviction that
the truth of [the] factual contentions are highly
probable Colorado (S.C.) (ActiveVideo
Networks, 8/24/12; Procter & Gamble, 5/13/09;
Pfizer, 3/22/07)
- Jury verdict in reviewing the jurys verdict, the

CAFC must determine whether the jury had
substantial evidence upon which to conclude that
the party alleging invalidity met its burden of
showing invalidity by C&C evidence (or
alternatively, the jury had substantial evidence that
the burden was not met) Koito (Fresenius,
9/10/09; Martek Biosciences, 9/3/09 (jury had
substantial evidence that burden was not met))
- Court is never bound by an examiners finding in

an ex parte application proceeding; an examiners
prima facie obviousness finding not followed; the
basis, rather than the existence, of an examiners
initial finding of prima facie obviousness of an
issued patent is a factual consideration to consider
in the context of the totality of the evidence in
determining whether the challengers burden was
met by C&C evidence (Pfizer, 3/22/07)
- Presumption for each claim independently (Whitserve,

8/7/12; Martek Biosciences, 9/3/09; 800 Adept, 8/29/08
(the validity of each claim must be considered
1463
separately); Dow, 9/5/03); See also Clearwater Systems,
8/30/10 (nonprecedential district court erred in not
considering dependent claims separately from
independent claim for anticipation); Lacks Indus.,
11/21/08 (nonprecedential district court erred in only
considering a single claim in the invalidity analysis)
- Invalidity is evaluated on a claim-by-claim basis

(Whitserve, 8/7/12; 800 Adept, 8/29/08 (reversing
the district courts judgment of invalidity of
unasserted claims, stating that the specific validity
of individual claims must have been at issue during
trial and actually litigated by the parties); Dystar,
10/3/06 (obviousness))
- Presumption exists at every stage of the litigation (Novo

Nordisk, 6/18/13; Sciele Pharma, 7/2/12; Titan Tire,
6/3/09 (including the PI stage); Abbott Labs, 10/21/08 (J.
Newman including at the PI stage); Sanofi-Synthelabo,
12/8/06)
- Prior art (not) before the PTO the presumption of

validity (or that the challenger, alleged infringer has the
burden of proof for establishing a prima facie case of
invalidity) and the C&C evidence standard of proof are
not changed by the fact that the prior art relied on by the
alleged infringer was not considered by the PTO during
examination (Osram Sylvania, 12/13/12 (burden does
change for prior art considered by the PTO); Sciele
Pharma, 7/2/12 (same rule applied for prior art
considered by the PTO, except less weight may be given
the prior art, under Microsoft v. i4i (S.C.)); Mintz,
5/30/12 (vacating the district courts invalidity holding,
where the examiner had considered all the prior art relied
on by the accused infringer, stating rule that prior art may
have different probative weight for reasons including
prior consideration by the PTO); *Microsoft v. i4i,
6/9/11 (S.C.) (see analysis above); i4i, 3/10/10 (rejecting
1464
argument that the burden for proving anticipation should
be lower for prior art that was not before the PTO, citing
recent precedent and KSR (S.C.)) [affirmed by the U.S.
Supreme Court, on 6/9/11, in Microsoft v. i4i; On
11/29/10, the U.S. Supreme Court granted certiorari
the question presented was: Whether the [CAFC]
erred in holding that Microsofts invalidity defense
must be proved by clear and convincing evidence
when the asserted prior art was not before the PTO];
Poweroasis, 4/11/08; Z4 Technologies, 11/16/07 (district
courts refusal to provide jury instruction that burden is
reduced was proper; burden is not changed, reduced
when new prior art was not before the examiner)); See
also Stone Strong, 10/17/11 (nonprecedential rationale
underlying the presumption of validity seems much
diminished under KSR (S.C.) where prior art references
were not before the examiner during prosecution citing
Microsoft v. i4i (S.C.)); Tokyo Keiso, 1/9/09
(nonprecedential declining to opine whether the
presumption of validity is weakened (under KSR (S.C.))
when the asserted prior art was not before the examiner);
See also Prior art before/not before the examiner
- Presumption of validity applies to an unenforceable

patent a patent procured through IC, although may be
unenforceable, is not invalidated thereby Zenith
(Judkins, 4/8/08)
- Presumption of validity does not warrant inquiry into the

examiners understanding or competence or gullibility;
validity is determined objectively based on prior art and
the requirements for patentability (Norian, 4/6/04)
Defenses to infringement 35 USC 282
- Conditions for patentability under Section 282(2) on

which invalidity defenses can be based are novelty
1465
(Section 102), utility and patentable subject matter
(Section 101), and nonobviousness (Section 103)
Graham v. Deere (S.C.); vs. the Section 112
requirements cited in Section 282(3) are merely
requirements for obtaining a valid patent (Aristocrat
Techs., 9/22/08)
- Anticipation is an affirmative defense (i4i, 3/10/10

(rejecting argument that the patentee had to rebut
the challengers prima facie case of anticipation
with corroboration for the inventors testimony of
no anticipation))
- Pre-existing equitable defenses (e.g., prosecution laches)

are included as defenses under Section 282 (Aristocrat
Techs., 9/22/08 (n.4, based on the legislative history of
Section 282))
- Procedural irregularities during prosecution are not an

invalidity defense to infringement, unless they involve
inequitable conduct because once the patent issues, the
procedural minutiae of prosecution have little relevance
to the metes and bounds of the patentees right to exclude
(Aristocrat Techs., 9/22/08)
- Improper revival by the PTO of an abandoned

application is not a cognizable invalidity defense
(either under Section 282 or the Quantum rule) in
an action involving the infringement or validity of
a patent (Aristocrat Techs., 9/22/08 (expressly
declining to reach on appeal the question of
whether the Patent Act permits revival of an
abandoned application only upon a showing of
unavoidable delay, where the PTO revived the
application based on an unintentional delay))
- Section 282 is not the only source of defenses in the

Patent Act, but rather certain provisions of the Patent Act
1466
not falling within the literal scope of Section 282 may
nevertheless provide a defense of noninfringement or
invalidity Quantum (invalidity based on improperly
enlarging the scope of claims during reexamination, as
any other result would render the prohibition in Section
305 meaningless) (Aristocrat Techs., 9/22/08 (concerns
underlying the Quantum rule not applicable to intentional
abandonment of application followed by improper
revival))
Burden of proof never shifts
- Burden of proof never shifts to the patentee to prove

validity (St. Jude Medical, 9/11/13); but once prima facie
case of invalidity is established, the patentee has the
burden to present rebuttal evidence, but does not shift
burden of persuasion; the totality of the evidence is
considered, including the patentees rebuttal evidence, in
determining whether the challenger has met its burden by
C&C evidence (Taurus IP, 8/9/13; Plantronics, 7/31/13
(no formal burden-shifting for obviousness); Novo
Nordisk, 6/18/13 (affirming obviousness where the
district court properly applied the burdens before
reaching the ultimate conclusion of obviousness based on
all the evidence, including evidence of unexpected
synergy and commercial success of the claimed
combination drug therapy citing Pfizer, In re
Cyclobenzaprine); In re Cyclobenzaprine, 4/16/12;
Scanner Techs., 6/19/08 (patentee presented little rebuttal
evidence of secondary considerations, and the challenger
adduced facts unrebutted by the patentee, including
expert testimony regarding the level of ordinary skill in
the art); Poweroasis, 4/11/08 (patentee had the burden to
come forward with evidence to prove entitlement to an
earlier application filing date once the challenger
established by C&C evidence the patents invalidity over
the prior art); Pfizer, 3/22/07); See also Thomson
1467
Licensing, 6/19/13 (nonprecedential affirming
obviousness where the ITC properly applied the burden
of proof and did not engage in impermissible burden
shifting, in finding that the respondents had shown a
prima facie case of obviousness based on the cited prior
art and expert testmony, followed by evaluating the
patentees secondary considerations before concluding
that the asserted claims were obvious citing In re
Cyclobenzaprine)
Priority date of patent
- See PRIORITY DATES 35 USC 119, 120
Prior art date of a patent reference
- Prior art date of a U.S. patent reference under Section

102(e) is the filing date of the provisional application to
which it claims priority, and which satisfies the Section
112 requirements consistent with the rule that one must
be the first to invent in the U.S. (In re Giacomini, 7/7/10
(affirming anticipation after interpreting applications for
patent in Section 102(e) to include a priority U.S.
provisional application, and distinguishing the In re
Hilmer (CCPA) rule that the prior art date of a U.S.
patent reference is not the foreign filing date))
Antedating a prior art reference
- Priority of invention goes to the first party to RTP an

invention unless the other party can show that it was the
first to conceive the invention and it exercised reasonable
diligence in later RTPing the invention Mahurkar
thus, to antedate a reference, the patentee needs to show:
1) conception and RTP before the filing date of the
1468
reference, or 2) a conception before the filing date of the
reference combined with diligence and RTP after that
date - Singh; conception and diligence are required from
prior to the reference date to the filing date (Taurus IP,
8/9/13); See also Stamps.com, 6/15/11 (nonprecedential
distinguishing the patentees burden of production on
prior invention from the challengers burden of
persuasion to prove invalidity by C&C evidence;
patentee did not meet its burden of production in
antedating reference, where alleged prior conception was
insufficiently corroborated); In re Meyer Manufacturing,
12/17/10 (nonprecedential an attempt to amend claims
of a parent application to add a feature may establish
conception to antedate a reference; also addressing
diligence requirements)
- Proving conception to establish an earlier effective

date of the invention must be proven by evidence
showing what the inventor disclosed to others and
what the disclosure means to one of ordinary skill
in the art, as well as corroboration In re Jolley,
Burroughs Wellcome (Cordance, 9/23/11 (patentee
failed to prove prior conception based on an
alleged dated conception document, to avoid
anticipation, where the patentee failed to link any
disclosure in the document to the construed claim
limitations))
- Antedating reference based on prior RTP must present

evidence of an actual RTP of the invention prior to the
effective date of the reference Rule 131(b); evidence is
assigned probative value and collectively weighed to
determine whether RTP has been achieved - Medichem
(In re NTP I, 8/1/11 (BPAIs findings were supported by
substantial evidence that documents did not evidence a
RTP prior to the critical date))
1469
- Each limitation of the claimed invention must be present
in the antedating evidence (Taurus IP, 8/9/13; Linear
Tech., 5/21/09 (remanding for another prior invention
determination after modifying claim construction of
term); Broadcom, 9/24/08 (rejecting argument that prior
art reference was anticipating where the patentees
antedating evidence (lab notebooks and prior
applications) was not rebutted by the accused infringer))
- Inventors testimony and evidence (e.g., lab notebooks)

must be corroborated to swear behind a prior art
reference (Taurus IP, 8/9/13 (inventors testimony of
prior conception not corroborated) sufficiency of
corroboration is determined by rule of reason analysis,
under which all pertinent evidence is examined when
determining the credibility of an inventors testimony -
Medichem (In re NTP I, 8/1/11 (rejecting the patentees
circular argument in which corroboration for the
inventors testimony was sought based on a document,
for which corroboration of the date of the document was
sought based on their testimony); Procter & Gamble,
5/13/09); See also Stamps.com, 6/15/11 (nonprecedential
inventors declaration testimony was insufficiently
corroborated, where alleged corroborating reports were
unclear); See also INTERFERENCES/PRIOR
INVENTION Inventorship
Construe the claims first -- and compare the prior art to the
claims as written
- Invalidity analysis begins with construction of the claims

Amazon.com (Flo Healthcare Solutions, 10/23/12
(affirming the PTAB that claims were unpatentable as
anticipated and obvious over a prior art reference after
correcting the PTABs claim construction analysis);
Kinetic Concepts, 8/13/12 (J. Dyk, concurring majority
and the district court should have construed term
1470
healing before addressing obviousness); In re
Montgomery, 5/8/12 (construing method claims in BPAI
appeal according to the broadest reasonable interpretation
prior to finding anticipation); Atlantic Research, 10/6/11
(lack of WD found after added reissue patent claims were
construed to cover embodiment not disclosed in the
specification, stating that claim construction is inherent
in any written description analysis); Cordance, 9/23/11
(human involvement in the prior art online process after
an order was complete was beyond the scope of the
claimed term automatically complete and wholly
irrelevant); Wellman, 4/29/11 (threshold step in a best
mode inquiry is to define the invention by construing the
claims); In re Katz Patent Litigation, 2/18/11 (proper for
the district court to have construed challenged claim
limitation in the context of another claim limitation
before determining whether sufficient WD support for
limitation, stating: That the defendants did not challenge
certain limitations does not make those limitations
irrelevant for understanding the scope of the claims
citing ACTV); Research Corp., 12/8/10 (construing scope
of later-filed claims before determining whether entitled
to earlier filing date); Enzo Biochem, 3/26/10 (claim
cannot be anticipated if cannot be construed because
indefinite); Therasense, 1/25/10 (rejecting the patentees
argument for nonobviousness that went to the scope of its
claims, rather than the content of the prior art);
Koninklijke Philips, 1/5/10 (the district court and BPAI
erred by rejecting a WD challenge without construing the
disputed claim term); Perfect Web, 12/2/09 (undisputed
claim terms need not be construed prior to issuing a SJ of
invalidity); Exergen, 8/4/09 (rule not expressly cited, but
reversing the jurys finding of no anticipation based on
the transitional term comprising and broad term
biological tissue); Blackboard, 7/27/09 (rule not
expressly cited, but claims were found anticipated by
expert testimony and documentary evidence, once
properly construed by the CAFC as not requiring a
1471
single login limitation relied on by the district court);
Rothman, 2/13/09 (claim recited nursing garment
rather than outerwear nursing garment in preamble);
Sd-Chemie, 1/30/09 (SJ of obviousness vacated where
the claimed compatible polymeric materials, as
expressly defined in the patent and important to the
invention, were not disclosed in the prior art patent
disclosing the same classes of polymeric materials); In re
Nuijten, 9/20/07 (patentable subject matter under 101);
Hakim, 2/23/07); See also Stone Strong, 10/17/11
(nonprecedential construing claims narrowly before
holding them obvious); In re Kryzpow, 12/20/10
(nonprecedential affirming obviousness based on
broadest reasonable interpretation of claims, and
proposing amendments to recite the argued inventive
feature); Smith & Nephew, 12/2/09 (nonprecedential
finding claims not anticipated or obvious by applying
claim construction from an earlier case involving the
same patent); Chapman, 3/11/09 (nonprecedential J.
Rader, dissenting opining that the claimed method for
making pure oxycodone was entitled to patent protection,
although avoiding the majoritys construction of the
claims as genus claims rendered obvious by prior art
species); Pivonka, 2/19/09 (nonprecedential although
the appellant was correct that the BPAI must analyze the
claim language, not its own interpretation of what the
claim covers, the BPAI did not err in using the term
barn-like shape to distinguish the claimed from prior
art pet carrier); Linear Tech., 8/28/08 (nonprecedential
substantial evidence supported the ITCs anticipation
finding under all proposed constructions, including the
more restrictive construction)
- District court need not construe undisputed claim

terms prior to issuing a SJ of invalidity Unitherm
Food Sys. (Perfect Web, 12/2/09 (no construction
was needed where neither of the disputed claim
terms was relevant to the obviousness of the
1472
recited step of repeating other recited prior art
known steps))
- Prior art reference is compared to the claim as

written (Smith & Nephew, 7/9/13 (reversing the
BPAIs finding of nonobviousness where the
claims did not require limitation relied on; claims
and figure identified were not limited to a
specialized screw as argued, but rather the patent
taught that any non-locking screw could be used in
the claimed invention, the CAFC stating that an
unclaimed and undisclosed feature such as the
specialized screw could not be the basis for
finding the claim nonobvious); Flo Healthcare
Solutions, 10/23/12 (affirming unpatentability after
rejecting the patentees attempt to import an
embodiment limitation into the term height
adjustment mechanism, stating that the patentee
could have amended the claims during
reexamination to recite the limitation if desired);
Aventis Pharma, 4/9/12 (claim to a composition
was obvious over the prior art disclosing a stock
solution satisfying the claim limitations, despite
the patentees argument that the prior art did not
meet the claim requirements with respect to a
perfusion, relying on the Titanium Metals rule that
a claim covering multiple compositions is
anticipated if one of them is in the prior art);
Martin, 8/20/10 (claimed bundle breaking machine
obvious where alleged engineering details were not
recited in the claims); King, 8/2/10 (method claims
anticipated where written broadly (administer the
drug with food), while specific conditions for
consuming food with the drug were disclosed only
in the specification); Therasense, 1/25/10 (claims
held obvious over a single prior art reference,
where the claims only required that a single
counter electrode be spaced downstream of a
1473
single working electrode); Iovate Health Sciences,
11/19/09 (prior art advertisements disclosure of
the claimed composition administered for the
claimed purpose sufficed for anticipation of the
claimed method, which did not require an
effective amount of the composition or a
determination of any result achieved by the
claimed composition); In re Gleave, 3/26/09); See
also Metso Minerals, 5/14/13 (nonprecedential
prior art must render obvious the claimed
invention, where the claims did not require a
stop element); In re Taylor, 6/14/12
(nonprecedential anticipation decided based on
the claim language, and not unrecited limitations);
Boesen, 12/15/11 (nonprecedential affirming SJ
of anticipation where there were no factual
disputes regarding the scope or content of the prior
art system, but rather a dispute over claim scope,
and the transition phrase comprising allowed for
other input methods as long as the prior art system
can and did perform the claimed input method);
Sram, 2/26/10 (nonprecedential prior art
reference did not need to recite unclaimed feature
for anticipation)
- Absent clear intent to the contrary, a court

cannot import embodiments or examples
from the specification into the claims (Flo
Healthcare Solutions, 10/23/12 (rejecting the
patentees argument to import embodiment
limitation into the claims to avoid a prior art
reference); King, 8/2/10; In re Omeprazole,
4/23/07); See also CLAIM
CONSTRUCTION
- [I]f we once begin to include elements not

mentioned in the claim, in order to limit
such claim, and avoid a defense of
1474
anticipation, we should never know where to
stop McCarty (S.C.) (Smith & Nephew,
7/9/13 (citing DuPont (quoting McCarty
(S.C.))); Decisioning.com, 5/7/08 (J. Linn,
dissenting)); See also In re Baggett, 6/16/09
(nonprecedential BPAI erred in sustaining
rejection of business method claims where
the term memoization (which was not
shown to be disclosed in the prior art) was
misread as memorization)
- PTO examination of claims given broadest reasonable

interpretation during examination, application claims
may be given their broadest reasonable interpretation
consistent with the specification in order to facilitate
sharpening and clarifying the claims at the application
stage In re Yamamoto (Flo Healthcare Solutions,
10/23/12 (see additional views of J. Plager and J.
Newman (including discussion that the broadest
reasonable interpretation is an examination protocol,
not a rule of law); In re Montgomery, 5/8/12 (construing
claims prior to anticipation finding); Yorkey I, 4/7/10
(determining whether interference-in-fact); In re Buszard,
9/27/07); See also In re Shoner, 8/10/09 (nonprecedential
claims obvious where they required only that an air
chamber be sealed and not sealed separately from the
tire core or wheel rim); In re Guess, 6/9/09
(nonprecedential); In re Wheeler, 12/19/08
(nonprecedential rejecting the BPAIs broad
interpretation (and anticipation finding) which was not
consistent with the specification and the claim
language, citing Phillips, where the specification and
claim stated that the entire claimed illuminated fishing
pole was transparent and lighted along its length); See
also CLAIM CONSTRUCTION BPAI/PTO claims
are given their broadest reasonable interpretation
1475
- Once scope of the claims is determined, the invalidity
determination begins (Regents of U. Minn., 6/3/13
(affirming anticipation citing In re Aoyama); American
Calcar, 6/27/11 (jurys verdict of no anticipation was the
result of the district courts erroneous claim
construction); In re Katz Patent Litigation, 2/18/11 (claim
construction prior to WD analysis); Honeywell, 5/25/10
(the district courts obviousness determination was based
on an erroneous claim construction); Yorkey I, 4/7/10
(anticipation for determining whether interference-in-
fact); Enzo Biochem, 3/26/10 (no anticipation analysis if
claim cannot be construed because indefinite); In re
Omeprazole, 8/20/08 (accused infringer challenged only
the district courts construction of claim terms, and not
the courts fact findings of anticipation); Muniauction,
7/14/08 (in which the prior art taught the disputed claim
step as construed by the district court, stating that an
expert testifying on invalidity (obviousness) must
compare the construed claims to the prior art); In re
Omeprazole, 4/23/07 (anticipation); Abbott Labs, 6/22/06
(obviousness)); See also Joovy, 8/5/11 (nonprecedential
(claim anticipated under proper contruction of term rear
wheels); In re Stauffer, 7/24/08 (nonprecedential
patentee argued claims were nonobvious based on
limitations ruled not in the claims); Luma, 4/10/08
(nonprecedential there was no support in the
specification for construing the claims narrowly, i.e.,
adding a temporal limitation, to avoid a finding of
anticipation)
- Claim construction is inherent in any WD analysis

(In re Katz Patent Litigation, 2/18/11 (permissible
for the district court to have construed the claims
before performing WD analysis))
1476
Claims are construed the same way for infringement and
invalidity
- Same claim construction governs for validity

determinations as for infringement determinations Kim
(Lazare Kaplan, 4/19/13 (J. Dyk, dissenting); Source
Search, 12/7/09 (factual issues precluded SJ of both
infringement and obviousness under the district courts
construction of the claim term quote citing string of
cases for the rule); Amgen, 9/15/09 (validity and
infringement analyses are conducted differently for
product-by-process claims); Symantec, 4/11/08 (district
courts SJ of validity vacated and remanded after SJ of
noninfringement vacated due to incorrect claim
construction); Kim, 9/20/06); See also Respironics,
12/16/08 (nonprecedential modifying claim
construction to satisfy rule, citing Kim)
- Definition of claim term that applies to the

infringement analysis must also apply to the issue
of invalidity (Poweroasis, 4/11/08 (patentee not
entitled to a different, narrower construction of
term customer interface for validity purposes
and entitlement to priority to earlier application
filing date); Cordis, 1/7/08 (obviousness to be
raised on remand after claim term more broadly
defined by CAFC)); See also AG Design &
Assocs., 3/24/08 (nonprecedential noting the
inconsistencies between the patentees invalidity
and infringement arguments, stating that one
cannot interpret a patent one way for the validity
analysis and a different way for the infringement
analysis a patent may not, like a nose of wax,
be twisted one way to avoid anticipation and
another to find infringement Amazon)
- Product-by-process claims construed differently

for validity and infringement (Amgen, 9/15/09;
1477
Abbott Labs, 5/18/09 (en banc) (J. Newman,
dissenting, with J. Mayer and J. Lourie, joining,
citing numerous cases for this rule and opining that
based on the majoritys ruling, an applicant would
need to demonstrate patentability of a new product
independent of the recited process, while the
patentee enforcing the claim against the identical
product would be limited to the infringers use of
the recited process steps, and thus concluding:
For the first time, claims are construed differently
for validity and for infringement))
- Product-by-process claim can be anticipated

by a prior art product that is made by a
process other than recited in the claim, vs. a
product-by-process claim is not infringed by
a product made by a process other than
recited in the claim (Amgen, 9/15/09)
Scope and interpretation of prior art reference
- Claims of a prior art patent are part of its disclosure In

re Brenno (Therasense, 1/25/10 (interpreting independent
claims of prior art patents to anticipate and support
obviousness of the asserted claims based on an added
limitation to a dependent claim giving rise to a
presumption (under Phillips) that the limitation was not
present in the independent claims; see also J. Linn,
dissenting improper to look to the claims of the prior
art patents as a measure of what the prior art discloses for
purposes of obviousness and anticipation, where the
structures in the asserted claims were not recited in the
prior art claims, but were instead disclosed in the
descriptive portions of the prior art specifications)
5/25/11 (en banc)])
1478
- Meaning of a prior art reference requires analysis of the
understanding of an artisan of ordinary skill (In re Suitco
Surface, 4/14/10 (rejecting the patentees strained
interpretation of prior art references for anticipation in
favor of a more reasonable interpretation); Sd-Chemie,
1/30/09 (clear from the context of prior art patent that
water meant liquid water, and not water vapor);
Finisar, 4/18/08 (distinguishing statutory construction
cases, and finding anticipation by prior art reference, in
part based on the overall context of a passage of the
reference)); See also Linear Tech., 8/28/08
(nonprecedential affirming anticipation finding where
the ITCs interpretation of passage in a prior art patent
was not unreasonable, and thus supported by substantial
evidence); See also Mitsubishi Chemical, 8/2/11
(nonprecedential conflicting expert testimony on proper
translation of sentence in alleged anticipating Japanese
language reference); In re Lackey, 4/9/10
(nonprecedential interpreting prior art reference based
on a dictionary definition (sanitary application meant
plumbing, based on the dictionary definition of
sanitary))
- Preferably implies that something is not

necessary (Therasense, 1/25/10 (preferably
implied that a membrane was not necessary)
[vacated on 4/26/10, and reinstated by
Therasense, 5/25/11 (en banc)])
- Rules, guidelines of English grammar and usage applied

for interpreting a prior art reference (Finisar, 4/18/08
(reversing judgment based on jury verdict and finding
anticipation by prior art reference, stating that words, in
context, receive their meaning according to their
placement in grammatical structure))
1479
Invalidity based on procedural or technical requirements of 35
USC
- Statutory scheme of 35 USC requires applicants to satisfy

certain requirements before obtaining a patent, some of
which are more procedural or technical than others
(Pfizer, 8/2/06 (dependent claim invalidated based on 35
USC 112, 4, relating to proper way to write
dependent claim))
- Among the available defenses to infringement is

the [i]nvalidity of the patent or any claim in suit
for failure to comply with any requirement of
sections 112 or 251 of this title 35 USC 282(3)
(Pfizer, 8/2/06)
- Invalidity because of a drafting error in an

asserted dependent claim - 35 USC 112,
4 requires dependent claim to contain a
reference to a claim previously set forth and
then specify a further limitation of the
subject matter claimed; does not exalt
form over substance (Pfizer, 8/2/06); See
also Zircon, 10/5/11 (nonprecedential
reading dependent claim in way other than
the CAFCs would render it invalid under
Section 112, 4; also, n.8: Pfizer did not
support the patentees position that a
dependent claim could provide a new
limitation that acts as a substitute for a
limitation in the independent claim)
- Challenger who seeks to demonstrate that a means-plus-

function limitation was present in the prior art must prove
by C&C evidence that the corresponding structure, or an
1480
equivalent, was present in the prior art In re Donaldson
(en banc) (Regents of U. Minn., 6/3/13 (citing rule in
affirming anticipation, where a disclaimer during the PH
of a parent patent did not limit the range of equivalent
structures within the scope of a means-plus-function
limitation in a later divisional, where the patents did not
contain the same limitations); In re Baxter, 5/17/12
(affirming obviousness where the BPAIs findings that
means-plus-function limitations, i.e., corresponding
structure or equivalents, were disclosed in the prior art
were supported by substantial evidence); Fresenius,
9/10/09 (affirming grant of JMOL where the challenger
failed to present any evidence to the jury that the
structure corresponding to the disputed means
limitations, or an equivalent thereof, existed in the prior
art)); See also Bennett Marine, 9/19/13 (nonprecedential
failure of proof)
Prior art before/not before the examiner
- Burden of proving invalidity is harder when the prior art

was before the PTO examiner (Osram Sylvania, 12/13/12
(consideration of prior art reference by the PTO may
carry some weight); K-Tec, 9/6/12 (no abuse of
discretion to allow the parties to discuss the extent to
which the PTO had considered a prior art reference
during reexam); Sciele Pharma, 7/2/12 (prior art may be
given less weight, but the same C&C evidence standard
and presumption of validity apply: In short, there is no
heightened or added burden that applies to invalidity
defenses that are based upon references that were before
the Patent Office. The burden is always the same, clear
and convincing evidence.); Bard, 2/10/12 (lack of
anticipation was supported by the fact that the PTO did
not find during prosecution that the prior art reference
anticipated) [vacated in part after remanded on
6/14/12]; Creative Compounds, 6/24/11 (enhanced
1481
burden if prior art was the same prior art considered by
the PTO citing Tokai); Tokai, 1/31/11 (depends on
whether new prior art also is relied on); Impax Labs,
10/3/08; Poweroasis, 4/11/08 (distinguishing Ralston
giving deference to the PTO for priority determination
and consideration of prior art); Pharmastem, 7/9/07;
Liebel-Flarsheim, 3/22/07; Sanofi-Synthelabo, 12/8/06;
Impax Labs, 11/20/06; Syntex, 5/18/05; Glaxo, 7/27/04;
Metabolite Labs, 6/8/04); VS. the burden may be easier
when the references relied on were not considered by the
PTO examiner (*Microsoft v. i4i, 6/9/11 (S.C.) (referring
to the commonsense principle that the CAFC has
recognized throughout its existence, that new evidence
supporting an invalidity defense may carry more
weight in an infringement action than evidence
previously considered by the PTO American Hoist (J.
Rich), SIBIA Neurosciences, Group One i.e., if the
PTO did not have all material facts before it, its
considered judgment may lose significant force and
thus the challengers burden to persuade the jury of its
invalidity defense by clear and convincing evidence may
be easier to sustain therefore, consistent with this
principle, a jury may be instructed to evaluate whether
the evidence before it is materially new, and if so, to
consider that fact when determining whether an invalidity
defense has been proved by C&C evidence); Z4
Technologies, 11/16/07 (district courts refusal to provide
jury instruction that burden is reduced was proper;
burden is not changed, reduced when new prior art was
not before the examiner); Group One, 5/16/05 (noting
that the fact that the examiner did not consider various
stripping means references during prosecution of the
patents . . . may affect the ease with which Hallmark may
carry its burden of proof)); See also Harris, 1/17/13
(nonprecedential stating that although not impacting the
challengers burden of proof, facts related to the prior art
reference being before the PTO during prosecution and
reexamination of the patents in suit were reasonable
1482
considerations when determining whether an invalidity
defense had been proven by C&C evidence citing
Microsoft v. i4i (S.C.))
- Whether a reference was before the PTO goes to

the weight of the evidence, which the parties are
free to argue to the fact finder (Sciele Pharma,
7/2/12)
- Burden of overcoming the deference due to the

examiner is especially difficult when the
infringer attempts to rely on prior art that was
before the examiner during examination or
reexamination (Bard, 2/10/12 [vacated in part
after remanded on 6/14/12]; Tokai, 1/31/11
(citing rule from PowerOasis); Impax Labs,
10/3/08 (the burden is particularly heavy when
the examiner considered the asserted prior art and
basis for the validity challenge during
prosecution); Poweroasis, 4/11/08 (citing Ralston
and the added burden of overcoming the
deference due to a qualified government agency
presumed to have properly done its job);
Pharmastem, 7/9/07 (reexamination; the CAFC
rejected the examiners reasons for allowance over
the same prior art; see also J. Newman,
dissenting); Liebel-Flarsheim, 3/22/07; Sanofi-
Synthelabo, 12/8/06; Glaxo, 7/27/04); See also
Sciele Pharma, 2/6/12 (Order) (nonprecedential
the district court failed to make adequate findings
of fact and conclusions of law before granting a PI
and simply stated that the defendant relied on only
prior art before the PTO during prosecution, the
CAFC stating the fact that prior art was before the
PTO cannot be the only reason to reject an
obviousness defense, but that an independent
assessment is required); Ortho-McNeil, 8/26/09
(nonprecedential the burden is especially
1483
heavy (citing Impax Labs), vacating SJ of
invalidity based on obviousness); Andersen,
11/19/08 (nonprecedential the district court, in
granting motion for SJ based on obviousness,
failed to consider the additional burden born by the
movants of overcoming the deference owed to the
PTO, which had allowed the claims over the same
prior art after the applicants amendments; also
distinguishing KSR (S.C.) in which the PTO had
not considered the prior art which rendered the
claims obvious)
- Added burden of deference to the PTO is not

required with respect to invalidity arguments
based on evidence that the PTO did not
consider (Novo Nordisk, 6/18/13 (rejecting
the patentees argument based on Kappos v.
Hyatt (S.C.) that the PTOs fact findings
regarding obviousness were owed deference,
ruling that (under the presumption of
validity and C&C evidence standard) there
is no added burden to overcome PTO
findings in district court infringement
proceedings); Kappos v. Hyatt, 4/18/12
(S.C.) (stating in the context of new
evidence presented during a Section 145
proceeding that [t]hough the PTO has
special expertise in evaluating patent
applications, the district court cannot
meaningfully defer to the PTOs factual
findings if the PTO considered a different
set of facts citing Microsoft v. i4i (S.C.));
Tokai, 1/31/11 (no added deference was
required when not all of the asserted prior
art was considered by the PTO))
- Newly cited art (*Microsoft v. i4i,

6/9/11 (S.C.) (see analysis above);
1484
Tokai, 1/31/11 (when relied on along
with prior art considered by the PTO);
Poweroasis, 4/11/08 (challengers
burden of proof on invalidity, or the
presumption of validity, is not
changed when newly cited art);
Abbott, 7/10/03); See also Stone
prior art references were not before
the examiner during prosecution, and
thus, under KSR(S.C.), the rationale
underlying the presumption of
validity seems much diminished
citing Microsoft v. i4i (S.C.)); Tokyo
Keiso, 1/9/09 (nonprecedential
declining to address whether
presumption of validity is changed by
newly cited art)
- Same art as before the examiner rendering

the claims invalid (obvious) (Sciele Pharma,
7/2/12 (vacating PI, where the district court
erroneously interpreted the law and thus
incorrectly concluded no motivation to
combine prior art references considered by
the PTO); Tokai, 1/31/11 (along with prior
art not cited to the PTO; see also J.
Newman, dissenting); Altana Pharma,
5/14/09 (substantial question of invalidity
raised to deny PI); Eisai, 7/21/08; Scanner
Techs., 6/19/08 (obviousness based on the
same prior art along with the knowledge of
the POS in the art (based on expert
testimony), citing KSR (S.C)); Agrizap,
3/28/08 (in the curious position of
reviewing the same prior art that the PTO
relied on to reject the asserted claims,
where the same art was a prior art
1485
commercial embodiment of a terminally
disclaimed patent; PTO was never presented
with objective evidence of
nonobviounsess)); See also Rambus, 6/28/13
(nonprecedential reversing the BPAIs
anticipation finding that was based on a
patent disclosure which was before the
examiner; also noting nothing in the record
indicating the BPAI considered prior ITC
decisions finding the patent claims not
anticipated by the same disclosure; see also
J. Wallach, dissenting)
- Patentees use of argument to successfully

overcome an office action rejection based on
a prior art reference does not, by itself,
diminish the strength of other arguments that
otherwise effectively reduce the significance
of that reference (Eli Lilly, 9/1/10 (did not
matter that the patentee attacked the prior art
reference during prosecution based on the
methodology underlying the disclosed
experiments rather than relying on
bioavailability concerns of the drug))
- Examiner expected to perform job reasonably (Syntex,

5/18/05); But see Prima Tek II, 6/22/05 patent system
depends primarily on PTOs care in screening out invalid
patents during prosecution (CAFC concluded that claims
anticipated by prior art which was considered by
examiner)
- Claims invalidated based on reference properly

before examiner Prima Tek II (IPXL Holdings,
11/21/05)
1486
Admissions in the specification or PH of prior art, or state of the
prior art
- A statement in the patent (or PH) that something is in the

prior art is binding on the applicant and patentee for
determinations of anticipation and obviousness
Constant, Sjolund (Smith & Nephew, 7/9/13 (patentees
admission in patent regarding prior art reference was not
undermined by the description in the reference, and
provided the motivation to combine with other prior art;
also rebutted the patentees argument that the claimed
bone plate system would not have been obvious because
would have been inoperable); Sciele Pharma, 7/2/12 (the
patentees acquiescence in the examiners conclusion of
unpatentability of cancelled, but mistakenly issued,
claims was relevant to obviousness); Sd-Chemie,
1/30/09 (claimed desiccant container having water-vapor-
permeable film would have been obvious, as the patent
acknowledged that desiccant containers that absorb water
vapor were well known in the prior art at the time of the
invention, and because desiccant containers must
necessarily be permeable to water vapor); Pharmastem,
7/9/07); See also In re Gardner, 11/14/11
(nonprecedential relying on the applicants disclosure
simply to support finding that prior art battery met claim
limitation); Tokyo Keiso, 1/9/09 (nonprecedential
ruling that claims were obvious based on prior art
reference combined with admissions in the specification
that many limitations were in the prior art, stating: Valid
prior art may be created by the admissions of the parties .
. . .); In re Stauffer, 7/24/08 (nonprecedential look to
the admitted state of the art in the specification, in
addition to prior art references); In re Reuning, 4/25/08
(nonprecedential admission of prior art in a BPAI
appeal brief)
- Admissions of prior art being conventional, i.e.,

well known, at the time of invention (Callaway,
1487
8/14/09 (n.8: comparisons in the specification
drawn between scales for measuring hardness of
golf balls were not an admission that an accurate
conversion between the scales was always
possible); In re Kubin, 4/3/09 (binding admission
in the specification that the claimed gene sequence
can be isolated and sequenced usingstandard
biochemical methods discussed in a well-known
manual on cloning techniques); Muniauction,
7/14/08 (use of conventional in the specification
to modify web browsers meant that browsers were
in existence at the time of the claimed invention))
- Expert opinions that are contrary to admissions in

the specification do not create a factual issue
(Smith & Nephew, 7/9/13 (n.6: experts
declaration during reexam was contrary to
statement in the specification citing
Pharmastem))
Witness testimony corroboration required
- General and conclusory testimony is not substantial

evidence of invalidity must explain in detail why patent
invalid (Creative Compounds, 6/24/11 (well established
that conclusory statements of counsel or a witness that a
patent is invalid do not raise a genuine issue of material
fact); Koito Mfg., 8/23/04)
- Invalidating witness testimony corroboration necessary

(called the Barbed-Wire doctrine) to prevent fraud
required regardless of the witnesss level of interest
(Finnigan) (Ohio Willow Wood, 11/15/13 (patentees
counsels withholding evidence of corroboration raised
genuine issues of material fact regarding IC); Meyer,
8/15/12 (testimony of lay witness regarding prior art,
which was based on personal knowledge regarding
1488
factual matters, was appropriate where corroborated by
documentation such as drawings and catalogs); Creative
Compounds, 6/24/11 (uncorroborated inventor testimony
is insufficient as a matter of law to establish patent
invalidity); Old Reliable Wholesale, 3/16/11 (testimony
was uncorroborated by documents showing the disputed
feature was present in the prior art product before the
critical date); Lazare Kaplan, 12/22/10; i4i, 3/10/10
(corroboration was not required for inventor testimony
defending against an invalidity challenge (anticipation)
regarding the content of the asserted prior art); Martek
Biosciences, 9/3/09 (n.4: corroboration requirement
applies whether the witness claims to be a prior inventor
under Section 102(g) or a prior user under Sections
102(a) or 102(b); here, prior inventors testimony was not
corroborated to invalidate patent under Section 102(g));
Monolithic Power Systems, 3/5/09 (prior art patent
corroborated expert testimony regarding the patents
teaching); Zenith Electronics, 4/16/08 (importantly,
experts statements supporting prior public use were
corroborated by testimony from other (disinterested)
witnesses, documentary evidence, and the patentees own
admissions); Adenta, 9/19/07 (different witnesses
corroborated each other, along with documentary
evidence, to support public use/on sale bars); Dow,
9/5/03); See also Ceats, 4/26/13 (nonprecedential);
Duramed, 3/25/11 (nonprecedential accused infringer
failed to meet its particularly high hurdle to
demonstrate that the district court abused its discretion in
excluding testimony on prior use which was
uncorroborated Texas Digital)
- Patent cannot be invalidated based on one persons

testimony alone, regardless of the witnesss level
of interest, without corroborating evidence,
particularly documentary evidence (Meyer,
8/15/12 (the so-called Barbed Wire doctrine);
Lazare Kaplan, 12/22/10 (documentary evidence
1489
created around the time the prior art machine was
developed provided strong support for invalidating
witness testimony); Martek Biosciences, 9/3/09;
Adenta, 9/19/07); See also Ceats, 4/26/13
(nonprecedential two fact witnesss testimony
supporting anticipation corroborated by
contemporaneous documents and videos); Stored
Value Solutions, 12/10/12 (nonprecedential
deposition testimony supporting anticipation by
prior art software manual was corroborated by the
copyright dates on the manual itself)
- Sufficiency of corroborating evidence analyzed

under the rule of reason test, which involves an
assessment of the totality of the circumstances
including an evaluation of all pertinent evidence,
including circumstantial evidence (Ohio Willow
Wood, 11/15/13 (concluding there were material
issues of fact regarding whether the patentees
counsel withheld evidence from the PTO during
reexam that corroborated witness testimony
regarding the prior art - citing Lazare Kaplan
standard below, and inventorship cases); Lazare
Kaplan, 12/22/10 (not an impossible standard of
independence imposed, i.e., not required that every
point be corroborated by evidence having a source
totally independent of the witness Knorr
(CCPA)); Martek Biosciences, 9/3/09 (stringent
standard for corroboration); Adenta, 9/19/07
(jury)); See also Ceats, 4/26/13 (nonprecedential)
- Witness testimony relied on for invalidity

requires corroboration; corroborating
evidence (written or oral) assessed
according to 8 factors (Ohio Willow Wood,
11/15/13; Lazare Kaplan, 12/22/10
(documentary evidence, including an
undated photo and video of the prior art
1490
machine, was sufficient based on factors to
corroborate witness testimony); Typeright
Keyboard, 7/6/04); See also Ceats, 4/26/13
(nonprecedential listing the 8 factors)
- Corroboration is not required to defend against

invalidity (i4i, 3/10/10 (corroboration was not
required for inventor testimony offered in response
to a defense of anticipation which pertained to
whether the prior art practiced the claimed
invention))
B. PATENTABLE SUBJECT MATTER 35 USC 101
(Accenture, 9/5/13 (affirming the district courts judgment that

computer software system claims were patent-ineligible because they
claimed the abstract idea of handling insurance-related information
(also noting the same for the method claims, although not appealed
(and thus waived)); the majority applied the plurality opinion in CLS
Bank (en banc): 1) two-step process derived from Mayo (S.C.) for
analyzing patent eligibility under Section 101 (see below); 2) for
abstractness, examining the claim to determine whether it would
preempt an abstract idea (here, concluding that the limitations were
insufficient to narrow, confine, or otherwise tie down the claims to
avoid preemption); and 3) a majority of the court in CLS Bank held
that system claims that closely track method claims and are grounded
by the same meaningful limitations will rise and fall together; the
court thus determined whether the system claim offered meaningful
limitations beyond generally linking the use of the method to a
particular technological environment (citing Bilski (S.C.)), and
concluded that the method and system claims should rise or fall
together, because the system claims are simply the method claims
implemented on a system for performing the method the system
claims were akin to stating the abstract idea of the method claim and
adding the words apply it on a computer (citing the plurality
opinion in CLS Bank (en banc), which cited Mayo (S.C.)) the system
and method claims contained only minor differences in terminology,
1491
but required performance of the same basic process when system
and method claims exist in the same patent and are shown to contain
insignificant meaningful limitations (to the claims patent-ineligible
abstract idea), the conclusion of ineligibility is inescapable; see also
J. Rader, dissenting citing Ultramercial for the proposition that a
court cannot go hunting for abstractions by ignoring the concrete,
palpable, tangible limitations of the invention the patentee actually
claims which is what the majority did; the system (with all its
recited components) does not preempt anything beyond the specific
claims, let alone a broad and undefined concept; also highlighting
that the plurality opinion in CLS Bank (en banc) is nonprecedential);
Aria Diagnostics, 8/9/13 (vacating and remanding the denial of PI to
consider the effect of Myriad (S.C.) on whether substantial question of
invalidity based on patent ineligible subject matter for diagnostic test
for detecting fetal genetic defects, e.g., Downs Syndrome);
Ultramercial, 6/21/13 ([On remand from the U.S. Supreme Court
in WildTangent v. Ultramercial] reversing and remanding again
because the district court erred in holding that the patented subject
matter (a particular internet and computer-based method for
monetizing copyrighted products, many steps of which require
intricate and complex computer programming) was not a process
within the meaning and language of Section 101, and holding instead
that the patent claimed a practical application of the concept of using
advertising as currency and an improvement to prior art technology,
was not so manifestly abstract as to override the statutory language
of Section 101 (Research Corp.), and that viewing the subject matter
as a whole the invention involved an extensive computer interface,
and thus the claims were patent-eligible; highlighting the various
factual issues underlying the patent eligibility determination, citing
CLS Bank (en banc) (e.g., whether the claim embraces a scientific
principle or abstract idea, the scope of preemption, whether the claim
contains only insignificant or token pre- or post-solution activity
such as identifying a relevant audience, a category of use, field of use,
or technological environment); posing the question for patent
eligibility when a claim embraces an abstract idea: whether the claim
contains limitations that meaningfully tie that abstract idea to an
actual application of that idea through meaningful limitations (see
also n.2: noting a two-step inquiry under Section 101 when assessing
1492
the abstract idea exception: 1) whether the claim involves an
intangible abstract idea; and if so, 2) whether meaningful limitations
in the claim make it clear that the claim is not to the abstract idea
itself, but to a non-routine and specific application of that idea; and
further noting that the claims in the case may not even involve an
intangible abstraction, because the claims relate to things that people
do, not to mere mental steps (but declining to address this alternative
ground on which to resolve the case)); also stating that preemption is
only a subject matter eligibility problem when a claim preempts all
practical uses of an abstract idea the breadth or narrowness of the
abstract idea is not relevant citing Benson (S.C.), Morse (S.C.);
ALSO, adding that the preemption analysis must recognize that the
Patent Act does not halt or impede academic research, without
commercial ends, to test, confirm, or improve a patented invention.
(n.1); see also J. Lourie, concurring responding to the majority,
stating: It is our obligation to attempt to follow the Supreme Courts
guidance in Mayo rather than to set forth our own independent views,
however valid we may consider them to be.; thus advocating for and
applying the two-step analysis (derived from Mayo (S.C.)) in Judge
Louries plurality opinion in CLS Bank, and concluding that the added
limitations in the claims represent significantly more than the
underlying abstract idea of using advertising as an exchange or
currency and, therefore, do not preempt the use of that idea in all
fields); Myriad, 6/13/13 (S.C.) (holding unanimously (by Justice
Thomas) that isolated genes are a product of nature, and thus not
patent-eligible, stating that genes and the information they encode
are not patent eligible under 101 simply because they have been
isolated from the surrounding genetic material, explaining that:
Myriad did not create anything . . . [I]t found an important and useful
gene [by discovering the location and genetic sequence of the BRCA1
and BRCA2 genes within chromosomes 17 and 13], but separating
that gene from its surrounding genetic material is not an act of
invention . . . Groundbreaking, innovative, or even brilliant discovery
does not by itself satisfy the 101 inquiry Funk Brothers (S.C.) --
and also extensive effort alone is insufficient to satisfy the demands
of 101; holding further that cDNA is patent-eligible because not
naturally occurring and not a product of nature (except when a short
sequence of DNA may have no intervening introns to remove when
1493
creating cDNA, and the cDNA thus may be indistinguishable from
natural DNA); and ending the opinion with an important note -- what
is not implicated by the decision: 1) method claims, 2) claims to new
applications of knowledge about the BRCA1 and BRCA2 genes, and
3) patentability of DNA in which the order of the naturally occurring
nucleotides has been altered; see also Justice Scalia, concurring,
except not joining in portions of the opinion going into fine details of
molecular biology.); Alexsam, 5/20/13 (J. Mayer, dissenting claims
not patent-eligible because disclosed nothing more than an abstract
idea for making a business run more efficiently, without disclosing
any technological advance sufficient to confer patent eligibility
specifically, the claims simply described the idea that it would be less
expensive to use point-of-sale terminals already present in retail
locations, along with the existing banking network, rather than
dedicated terminals, to activate gift and pre-paid telephone cards;
patent-eligibility is a threshold question under Bilski (S.C.), which
must be addressed before the CAFC can consider subordinate issues
related to obviousness and infringement; the claims disclosed no
inventive concept under Mayo (S.C.); also, the claims would
preempt future use of the fundamental concept or basic idea in other
fields); CLS Bank, 5/10/13 (en banc) (two questions were posed for
briefing see the summary of the vacated panel opinion in CLS Bank,
7/9/12, below; 10 judges affirming (in a two-sentence per curiam
opinion stating only the courts conclusions without reasons, along
with five concurring and/or dissenting opinions) the district courts
judgment with respect to all three claim types method, system, and
computer-readable medium, holding:Upon consideration en banc, a
majority of the court [7-3 (Linn, OMalley, and Newman, dissenting)]
affirms the district courts holding that the asserted method and
computer-readable media claims are not directed to eligible subject
matter under 35 USC 101. An equally divided court [5-5 (the
dissenting judges above, and Rader and Moore also dissenting)]
affirms the district courts holding that the asserted system claims are
not directed to eligible subject matter under that statute. 8 of the 10
judges believed that the three claim types should be treated the same;
None of the concurring and/or dissenting opinions commanded a
majority of the court, and were therefore nonprecedential (the per
curiam opinion was precedential), as follows -- Concurring opinion
1494
by Judge Lourie, in which Judges Dyk, Prost, Reyna, and
Wallach, joined, adopting an integrated approach to determining
patent eligibility, comprising first determining whether the claimed
invention fits within one of the four statutory classes in Section 101
(process, machine, manufacture, or composition of matter), followed
by determining whether the claimed invention is directed to one of the
three judicial exceptions to patent-eligible subject matter (i.e., law of
nature, natural phenomenon, or abstract idea), and opining that: 1)
patent claims should not preempt a natural law, natural phenomenon
or abstract idea; to avoid preemption, a patent-eligible claim must
include one or more substantive limitations that, in the words of the
Supreme Court, add significantly more to the basic principle, with
the result that the claim covers significantly less the claim must
contain meaningful limitations that prevent the claim as a whole from
covering the concepts every practical application, but rather add
enough beyond the abstract idea to sufficiently limit the claim to a
narrower, patent-eligible application of the idea meaningful
limitations must provide an inventive concept and cannot be
merely tangential, routine, well-understood, or conventional, or in
practice fail to narrow the claim relative to the fundamental principle
therein the inventive concept refers to a genuine human
contribution to the claimed subject matter and must be a product of
human ingenuity (which does not relate to the novelty and
nonobviousness requirements); computer-implementation in the
present claims failed to supply an inventive concept that represents
a nontrivial, non-conventional human contribution or materially
narrows the claims relative to the abstract idea they embrace [the
idea of reducing settlement risk by facilitating a trade though a third-
party intermediate, i.e., an escrow] finding that the concept of
reducing settlement risk by facilitating a trade through third-party
intermediation is an abstract idea because it is a disembodied
concept, a basic building block of human ingenuity, untethered from
any real-world application. Standing alone, that abstract idea is not
patent-eligible subject matter.; 2) the Supreme Court has warned that
evaluating claims under Section 101 should not invite manipulation by
a competent draftsman to endow abstract claims with a patent-
eligible status such as by using highly stylized language, hollow
field-of-use limitations or reciting token post-solution activity
1495
(concluding that the computer-readable media claims were merely
method claims in the guise of a device, i.e., a physical recitation of
an abstract method (and parallel claims from the same patent family
claim that same abstract method in the same or similar terms), while
the system claims mirrored the method claims, and that none of the
recited hardware, e.g., a computer, data storage unit, and
communications controller, offered a meaningful limitation, and such
limitations provided no significant inventive concept merely
adding existing computer technology to abstract ideas mental steps
does not as a matter of substance convert an abstract idea into a
machine Abstract methods do not become patent-eligible
machines by being clothed in computer language.; applying a
different approach to system claims would reward precisely the type
of clever claim drafting that the Supreme Court has repeatedly
instructed to ignore); 3) the cases urge a flexible, claim-by-claim
approach to subject matter eligibility that avoids rigid line drawing; 4)
simply appending generic computer functionality to lend speed or
efficiency to the performance of an otherwise abstract concept does
not meaningfully limit claim scope for purposes of patent eligibility
(citing Bancorp and Dealertrack) -- unless the claims require a
computer to perform operations that are not merely accelerated
calculations, a computer does not itself confer patent eligibility
adding generic computer functions to facilitate performance provides
no substantial limitation and therefore is not enough to satisfy
Section 101; 5) claims of different statutory classes may warrant
similar treatment under Section 101, e.g., when media and system
claims are physical recitations of an abstract method; 6) patent
eligibility under Section 101 is not a threshold test that must be
considered first, but rather district courts have discretion to control
their dockets and the order of issues presented, and 7) the presumption
of validity under Section 282 applies to a patent eligibility challenge
under Section 101; Concurring-in-part and dissenting-in-part
opinion by Chief Judge Rader and Judges Linn, Moore, and
OMalley, arguing that: 1) a court must consider the claim as a whole
when assessing eligibility, and that a court cannot go hunting for
abstractions by ignoring the concrete, palpable, tangential limitations
of the invention the patentee actually claims; 2) computer-
implemented claims must tie the otherwise abstract idea to a specific
1496
way of doing something with a computer, or a specific computer for
doing something (that is, a special purpose computer, i.e., a new
machine specially designed to implement a process may be sufficient
(citing Alappat)) for patent eligibility; 3) the Supreme Court in Mayo
and Flook did not instill an inventiveness or ingenuity
component into the inquiry, but rather that for claim steps beyond the
abstract idea to be meaningful, they should not be inherently required
to implement the abstract idea (Judges Rader and Moore concluded
that for the method and computer-readable media claims, the claim
limitations apart from the abstract idea were inherent within the
concept of an escrow, and were not enough to instill patent eligibility
to those claims; Judges Linn and OMalley disagreed, and would have
found the method and media claims to be patent-eligible; for the
system claims, all four judges believed they were patent-eligible,
finding that recited limitations were not inherent to the underlying
abstract idea of the claims, and stating: If a computer can do what a
human can in a better, specifically limited way, it could be patent
eligible.; and 4) the presumption of validity and clear and convincing
evidence standard under Section 282 also apply to Section 101 patent
eligibility challenges; Dissenting-in-part opinion by Judge Moore,
in which Judges Rader, Linn, and OMalley, joined, opining that:
1) the current interpretation of Section 101, and in particular the
abstract idea exception, is causing a free fall in the patent system -- if
all the claims, including the system claims, are not patent-eligible,
this case is the death of hundreds of thousands of patents, including
all business method, financial system, and software patents as well as
many computer implemented and telecommunications patents.; and
2) the system claims and their language must be considered as a
whole, rather than stripping away all known elements from those
claims and analyzing only whether what remains is an abstract idea,
explaining that a claim to a structurally defined machine is more than
a method claim rewritten in system form it is instead a practical
application of the underlying idea, limited to the specific hardware
recited and the algorithms disclosed to perform the recited functions;
Concurring-in-part and dissenting-in-part opinion by Judge
Newman, opining that: 1) Section 101 is an inclusive statement of
patent eligibility, and thus claims satisfy Section 101 if they recite a
process, machine, manufacture, or a composition of matter, and that
1497
issues of abstract and preemptive claiming would be eliminated by
applying the patentability laws (i.e., Sections 102, 103, and 112); 2)
future decisions on patent-eligibility will depend on the random
selection of the CAFC panel; 3) an experimental use exemption to
infringement, i.e., the right to study and experiment with patented
information, would address preemption concerns; and 4) patent
eligibility is not determined by the form of the claim or ingenuity of
the draftsman; Dissenting opinion by Judges Linn and OMalley,
arguing that: 1) each of the claim types must rise and fall together,
i.e., they are all patent-eligible or not, because they are all based on
the same meaningful limitations that render them patent-eligible; and
2) all of the claims were patent-eligible because they were directed to
very specific ways of performing the abstract idea, and thus did not
preempt all commercial uses of the abstract idea; and Additional
reflections by Chief Judge Rader, arguing that patent eligibility
should be determined by the words of Section 101, and adding that I
doubt that innovation is promoted when subjective and empty words
like contribution and inventiveness are offered up by the courts to
determine investment, resource allocation, and business decisions.);
Myriad, 8/16/12 ([on remand from the U.S. Supreme Court after
GVR (i.e., granting petition for certiorari, vacating the CAFCs
decision of 7/29/11, and remanding) for further consideration in
light of the Courts decision in Mayo v. Prometheus, 3/20/12]
addressing three types of claims: 1) isolated DNA claims -
reversing the district courts decision that composition claims to
isolated DNA molecules are patent-ineligible products of nature
under Section 101, ruling that the molecules do not exist in nature,
and that the distinction between a product of nature and a human-
made invention turns on a change in the claimed compositions
identity compared with what exists in nature i.e., where human
intervention has given the composition markedly different or
distinctive characteristics, as true for the claimed isolated DNA
covering molecules that are markedly different have a distinctive
chemical structure and identity from those found in nature; Mayo
does not control the question of patent-eligibility because Myriads
claims are to compositions of matter (and thus the issue remained
whether they claim patent-ineligible products of nature -- which the
majority held they do not under the Supreme Court cases of
1498
Chakrabarty and Funk Brothers), whereas Mayo concerned method
claims; also, a composition of matter is not a law of nature; up to
Congress to decide whether isolated DNA must be treated differently
from other compositions of matter; 2) diagnostic method claims -
affirming the district courts decision that diagnostic method claims
reciting comparing or analyzing DNA sequences are patent-
ineligible because they are not transformative steps, and are directed
to a patent-ineligible abstract mental process of comparing two
nucleotide sequences; and 3) therapeutic screening method claim -
reversing the district court, and holding that a method claim to
screening potential cancer therapeutics via changes in cell growth
rates, wherein the host cells are transformed by man with a foreign
gene, is directed to a patent-eligible process, stating that applying
various known types of procedures to a patent-eligible composition of
matter, i.e., the man-made transformed cells, is not merely applying
conventional steps to a law of nature, as in Mayo, and thus the
transformed, man-made nature of the underlying subject matter in the
claim makes the claim patent-eligible; see also J. Moore, concurring
in part analyzing the isolated DNA claims to determine whether
they have markedly different characteristics with the potential for
significant utility, e.g., an enlargement of the range of . . . utility as
compared to nature Chakrabarty (S.C.), Funk Bros. (S.C.); relying
on the proposition that [t]he settled expectations of the biotechnology
industry not to mention the thousands of issued patents cannot be
taken lightly and deserve deference; also rejecting the governments
magic microscope test for determining patentable subject matter;
also leaving it to Congress to decide whether to change the scope of
Section 101 to exclude claims to isolated DNA molecules The
patents in this case might well deserve to be excluded from the patent
system, but that is a debate for Congress to resolve.; see also J.
Bryson, dissenting in part -- concluding that isolated DNA molecules
are patent-ineligible, and the courts decision, if sustained, will likely
have broad consequences, such as preempting methods for whole-
genome sequencing; also comparing isolated DNA to a leaf plucked
from a tree extracting a gene is akin to snapping a leaf from a tree
. . . unless differences between the plucked leaf and a fallen leaf
imparted markedly different characteristics to the plucked leaf
Chakrabarty (S.C.); also relying on Chakrabarty for the proposition
1499
that [w]hat is claimed in the BRCA genes is the genetic coding
material; that material is the same, structurally and functionally, in
both the native gene and the isolated form of the gene; regarding
Mayo, opining that a patent involving a product of nature should
have an inventive concept that involves more than merely incidental
changes to the naturally occurring product; also disagreeing with
Judges Lourie and Moore that the PTOs past practice of granting
patents on isolated DNA molecules is entitled to significant weight,
because the PTO lacks substantial rulemaking authority as to issues
such as patentability Our role is to interpret the law that Congress
has written in accordance with the governing precedents.) [U.S.
Supreme Court, on 11/30/12, granted certiorari to review the first
question presented: Are human genes patentable? On 6/13/13, the
Supreme Court held that isolated genes are not patent-eligible,
while cDNA is patent-eligible see above]; Whitserve, 8/7/12 (J.
Mayer, dissenting patents are invalid at the threshold by Section
101 because they are directed to the abstract idea that it is useful to
provide people with reminders of important due dates and deadlines
and then apply that concept using conventional computer technology
and the Internet and that cloaking an otherwise abstract idea in the
guise of a computer-implemented claim is insufficient to bring it
within section 101); Highmark, 8/7/12 (J. Mayer, dissenting had
the case been decided after Bilski (S.C.) and Mayo (S.C.), the district
court could have invalidated the claims to a method of managing a
comprehensive health care management system under Section 101 as
directed to an abstract idea that certain symptoms are correlated
with certain diseases and then applies that idea using conventional
computer technology, . . . . but discloses no new technology or
inventive concept (under Mayo) for applying that idea; and
concluding that a robust application of section 101 at the
summaryjudgment stage will save both courts and litigants years of
needless litigation.); Bancorp Services, 7/26/12 (computer-
implemented method, system and medium claims for managing a
stable value protected life insurance policy were not patent-eligible,
where they covered no more than abstract ideas and a computer was
employed only for its most basic function, the performance of
repetitive calculations, and as such [did] not impose meaningful limits
on the scope of those claims and that the computer simply
1500
perform[ed] more efficiently what could otherwise be accomplished
manually or mentally; also concluding there was no material
difference for purposes of Section 101 between the claims and the
claims in Bilski, and that the courts holding was not inconsistent with
CLS Bank because the claims here were not directed to a very
specific application of the inventive concept, as in CLS Bank, but
instead the patentee sought to broadly claim the unpatentable abstract
concept of managing a stable value protected life insurance policy);
CLS Bank, 7/9/12 (reversing the district courts SJ that method,
system, and media (product) claims covering a computerized trading
platform for exchanging obligations between two parties using a third
party to eliminate settlement risk were patent ineligible because they
claimed an abstract idea, and ruling instead that the claims were
directed to practical applications of the idea, holding: Unless the
single most reasonable understanding is that a claim is directed to
nothing more than a fundamental truth or disembodied concept, with
no limitations in the claim attaching that idea to a [very?] specific
application, it is inappropriate to hold that the claim is directed to a
patent ineligible abstract idea under 35 USC 101.; also holding
that when after taking all of the claim recitations into consideration
it is not manifestly evident that a claim is directed to a patent
ineligible abstract idea, that claim must not be deemed for that reason
to be inadequate under 101 and adding (in n.3) that a court in
applying the Supreme Court and CAFC precedent must be wholly
convinced that the subject matter of the claims is abstract before
holding the claims to be patent ineligible; also responding (in n.2) to
the dissents argument that Mayo (S.C.) requires that claims include
an inventive concept for patent eligibility, which the majority stated
imposes no novelty or nonobviousness inquiry into the patent
eligibility analysis; see also J. Prost, dissenting stating that the
Supreme Court [in Mayo] has directed us to inquire whether the claim
limitations that are added to the abstract idea are inventive (while
agreeing that novelty and obviousness are separate inquiries from
patent eligibility), and concluding that for the added computer
limitations [o]ne need not be a computer scientist to suspect that this
level of computer implementation is not inventive; also opining with
respect to the system claims that [e]ven a quick glance of the patent
reveals that the claimed invention is not about physical systems; it is
1501
the abstract idea of risk-management in financial transactions carried
out on an already known infrastructure. That invention, even if new, is
an unpatentable abstract idea.) [vacated and rehearing en banc
granted on 10/9/12, with the parties requested to brief the
following questions: 1) What test should the court adopt to
determine whether a computer-implemented invention is a patent
ineligible abstract idea; and when, if ever, does the presence of
a computer in a claim lend patent eligibility to an otherwise
patent-ineligible idea?, and 2) In assessing patent eligibility under
35 USC 101 of a computer-implemented invention, should it
matter whether the invention is claimed as a method, system, or
storage medium; and should such claims at times be considered
equivalent for 101 purposes? On 5/10/13, the court (10 judges)
affirmed the district courts judgment with respect to all three
claim types method, system, and computer-readable medium,
holding in a two-sentence per curiam opinion:Upon consideration
en banc, a majority of the court affirms the district courts
holding that the asserted method and computer-readable media
claims are not directed to eligible subject matter under 35 USC
101. An equally divided court affirms the district courts holding
that the asserted system claims are not directed to eligible subject
matter under that statute. There were five concurring and/or
dissenting opinions, none of which commanded a majority of the
court, and were thus nonprecedential -- see above]; Mayo v.
Prometheus (S.C.), 3/20/12 (reversing (9-0, by Justice Breyer) the
CAFCs decision that a process reciting an application of a law of
nature (i.e., the correlation between the concentration in the blood of
certain thiopurine metabolites and the likelihood that the drug dosage
will be ineffective or induce harmful side-effects) was patent-eligible,
in which the process claims effectively claim the underlying laws of
nature themselves because the process steps added nothing specific
to the laws of nature other than what is well-understood, routine,
conventional activity, previously engaged in by those in the field, and
also ruling that simply appending conventional steps, specified at a
high level of generality, to laws of nature, natural phenomena, and
abstract ideas cannot make those laws, phenomena, and ideas
patentable; comparing Diehr (S.C.) and Flook (S.C.), also holding that
to avoid the use of a natural law being preempted by the process, a
1502
process to the use of a natural law must contain other elements or a
combination of elements, sometimes referred to as an inventive
concept, sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the natural law itself (here, the
combination of steps amounted to nothing significantly more than an
instruction to doctors to apply the applicable laws when treating their
patients); also ruling that the claimed process must have additional
features that provide practical assurance that the process is more than
a drafting effort designed to monopolize the law of nature itself);
MySpace, 3/2/12 (better course in litigation is to decide validity based
on Sections 102 and 103 (i.e., the conditions of patentability in
Section 282) and Section 112, rather than Section 101, particularly
when the invention raises the issue of being an abstract idea, such as a
business method claim referring to avoiding the swamp of verbiage
that is 101 and the murky morass that is 101 jurisprudence and
opining that this procedure would make patent litigation more
efficient, conserve judicial resources, and bring a degree of certainty
to the interests of both patentees and their competitors in the
marketplace; see also J. Mayer, dissenting Section 101 issue is an
antecedent question that must be addressed before the court can
consider whether particular claims are invalid under Sections 102 or
103, and referring to Section 101striking the balance between
protecting inventors and not granting monopolies over procedures that
others would discover by independent, creative application of general
principles Bilski (S.C.)); Fort Properties, 2/27/12 (process claims to
a real estate investment tool, when viewed as a whole, were not
patent-eligible because were directed to an abstract concept (applying
Supreme Court cases), and a computer limitation added to dependent
claims was insignificant post-solution activity; the case was like Bilski
and Dealertrack, and distinguished from Ultramercial); Dealertrack,
1/20/12 (affirming SJ and holding that claims to a computer-aided
method of managing a credit application were invalid as directed to
an abstract idea preemptive of a fundamental concept or idea (the
clearancehouse concept) that would foreclose innovation in this area
method steps did not impose meaningful limits on the claim scope,
under Bilski; see also J. Plager, dissenting would have vacated the
district courts Section 101 judgment and remanded for a
determination under Section 103, as a matter of efficient judicial
1503
process to not foray into the jurisprudential morass of 101 unless
absolutely necessary); Ultramercial, 9/15/11 (reversing the district
court and holding that a method for monetizing and distributing
copyrighted products over the Internet was patent-eligible, where the
claimed steps were not purely mental steps (as in Cybersource), but
rather require[d], among other things, controlled interaction with a
consumer via an Internet website, something far removed from purely
mental steps) [on 5/21/12, the U.S. Supreme Court in WildTangent
v. Ultramercial granted certiorari and vacated and remanded the
case (GVR) for the CAFCs reconsideration in view of the Courts
decision in Mayo v. Prometheus; the question presented was:
Whether, or in what circumstances, a patents general and
indeterminate references to over the Internet or at an Internet
website are sufficient to transform an unpatentable abstract idea
into a patentable process for purposes of [Section] 101; on
6/21/13, the CAFC issued its new decision see Ultramercial,
6/21/13, above]; Classen, 8/31/11 ([on remand from the U.S.
Supreme Court, which vacated the CAFCs prior
(nonprecedential) decision (issued 12/19/08, see below) in view of
the Courts decision in Bilski] holding that claimed processes
reciting mental steps along with a physical (immunizing) step
recited patent-eligible subject matter (and thus proceed with the
substantive patentability sections), vs. claimed processes reciting only
mental steps, and thus a patent-ineligible abstract idea, did not recite
patent-eligible subject matter; see also C.J. Rader, additional reviews,
joined by J. Newman; J. Moore, dissenting); Cybersource, 8/16/11
(claimed method for detecting credit card fraud, and claimed
computer readable medium containing program instructions for
performing the method (called a Beauregard claim) were not patent-
eligible because both claimed (purely) mental processes, i.e., the
claimed subject matter was able to be performed entirely in the human
mind (or on pen and paper) and did not require a computer); Myriad,
7/29/11 [vacated and remanded on 3/26/12 by the U.S. Supreme
Court for the CAFCs reconsideration in light of the Courts
decision on 3/20/12 in Mayo v. Prometheus; further vacated and
the appeal reinstated by the CAFC on 4/30/12, and the parties
were requested to brief the question: What is the applicability of
the Supreme Courts decision in Mayo to Myriads isolated DNA
1504
claims and to method claim 20 of the 282 patent?; on remand, the
panels opinion on reconsideration issued on 8/16/12 see above ];
Prometheus Labs, 12/17/10 ([on remand from the U.S. Supreme
Court in light of Bilski (S.C.)] reversing again the district courts SJ
of invalidity of method of treatment claims for the same reasons as in
the panels vacated 9/16/09 opinion see below, and adding (in n.2)
that the fact that five Justices in two concurrences in Bilski (S.C.) cited
with approval Justice Breyers dissent in Metabolite Labs (S.C.)
fail[s] to transform a dissent into controlling law) [on 6/20/11, the
U.S. Supreme Court granted Mayos petition for writ of certiorari
the question presented was: Whether Section 101 is satisfied by
a patent claim that covers observed correlations between blood
test results and patient health, so that the claim effectively
preempts all uses of the naturally occurring correlations, simply
because well-known methods used to administer prescription
drugs and test blood may involve transformations of body
chemistry? On 3/20/12, the Court (9-0) reversed the CAFC,
holding that the method claims were not patent-eligible see
above]; Research Corp., 12/8/10 (methods of halftoning on computer
were not abstract and thus patent-eligible); Astrazeneca, 11/1/10
(printed matter); King, 8/2/10 (declining to address whether the
claimed methods of treatment were patentable subject matter under
Section 101 in view of Bilski (S.C.), affirming SJ of invalidity instead
on the alternative ground of anticipation); Bilski v. Kappos (S.C.),
6/28/10 (machine-or-transformation test is not the sole test for
determining patent eligibility of process claims under Section 101;
also, business method claims are not categorically excluded from
patent eligibility instead, apply the definition of process in Section
100(b) with the guideposts in Benson, Flook, and Diehr see section
Bilski v. Kappos (S.C.)); SiRF Technology, 4/12/10 (method claims
tied to a GPS receiver were patent-eligible since the receiver (i.e.,
machine) imposed meaningful limits on the claims scope, as required
for patent-eligibility); Prometheus Labs, 9/16/09 (claimed methods for
calibrating drug dosage of thiopurine drugs were patent-eligible under
Bilskis machine-or-transformation test, since the recited
administering and determining steps were transformative and central
to the purpose of the claims to optimize therapeutic efficacy and
reduce drug toxicity; see also n.3 - the court rejecting the district
1505
courts holding that the claims were drawn merely to correlations
between metabolite levels and drug toxicity or efficacy, which the
district court based on Justice Breyers dissent in Metabolite Labs
(S.C.), stating [t]hat dissent is not controlling law and also involved
different claims from the ones at issue here) [vacated and
remanded by the Supreme Court, on 6/29/10, for reconsideration
in light of Bilski v. Kappos, decided 6/28/10 see above]; In re
Ferguson, 3/6/09 (claimed method of marketing a product and
paradigm for marketing software were not patent-eligible); In re
Comiskey, 1/13/09 (en banc) ([petition for rehearing en banc
granted for the limited purpose of authorizing the panel to revise
(and withdraw) its original opinion, issued 9/20/07, and reported
at 499 F.3d 1365; see also J. Dyk, C.J. Michel, J. Prost, and J.
Lourie, concurring in, and J. Moore, J. Newman, and J. Rader,
dissenting from, the denial of the petition for a full rehearing en
banc] the panel again ruling that the claimed business methods,
depending entirely on mental processes, were not patentable subject
matter under Section 101 -- a process must be tied to another category
of statutory subject matter or must change materials to a different
state, for patentability; however, the panel (vacating its original ruling
that the system claims defined patentable subject matter under Section
101) remanded the system claims (reciting a module and thus
which under the broadest reasonable interpretation recite the use of a
machine) to the PTO/BPAI for determination in the first instance
whether they recite patentable subject matter under Section 101; the
decision contains a detailed explanation of the Constitutional and
statutory bases, and history thereof, for determining patentable subject
matter under 101; also defines the four categories of patentable
subject matter, i.e., process, machine, manufacture, and composition
of matter); In re Bilski, 10/30/08 (en banc) (holding that the
machine-or-transformation test, properly applied, is the only
applicable test for determining patent eligibility of a process under
101; thus rejecting the other tests previously used, including the
useful, concrete and tangible result test of State Street Bank and the
technological arts test); In re Nuijten, 9/20/07 (claim to a transitory
signal, not limited by any specified physical medium, is not patentable
subject matter, because the signal is not encompassed by any of the
four enumerated statutory categories: process, machine, manufacture,
1506
or composition of matter; the CAFC examined each of the four
categories relative to the claimed signal; See also J. Linn, dissenting,
disagreeing that the claimed signal is not a manufacture under
101) [petition for panel rehearing and rehearing en banc was
denied on 2/11/08; J. Linn, with whom J. Newman and J. Rader
joined, dissented from the denial of the petition for rehearing en
banc, stating that the courts decision conflicts with the courts
precedent and U.S. Supreme Court precedent, in particular
Diamond v. Chakrabarty (1980), which held that patentable
subject matter includes anything under the sun that is made by
man except for laws of nature, physical phenomena, and abstract
ideas, each of which has been held unpatentable; the dissent also
questioned the distinction between a signal not being a patentable
manufacture while a storage medium containing the very same
signal was: The distinctions that are drawn between signals and
storage media containing those signals would appear to apply
equally to the distinctions between software and hardware and
are artifical at best.]; SmithKline, 4/8/05 (See J. Gajarsa,
concurring); Metabolite Labs, 6/8/04 [On 3/21/06, the U.S. Supreme
Court heard oral arguments on the question of the scope of
patentable subject matter, in particular whether a patent can
claim rights to a basic scientific relationship used in medical
treatment, such that a doctor necessarily infringes the patent
merely by thinking about the relationship after looking at a test
result; On 6/22/06, the Supreme Court concluded that the writ of
certiorari was improvidently granted and thus did not decide
the case; J. Breyer, joined by J. Stevens and J. Souter, dissenting,
wrote that the Court should have decided the issue, and that the
patented process was a natural phenomenon and thus
unpatentable subject matter under 101]); See also PerkinElmer,
11/20/12 (nonprecedential based on Mayo (S.C.) and Myriad,
reversing the district courts SJ of patent eligibility of diagnostic
claims (analytical methods to determine the risk of fetal Downs
syndrome) that recited a law of nature (the relationship between
screening marker levels and the risk of fetal Downs syndrome) and
an abstract mental process (of comparing data gathered to determine a
risk level) and were not rendered patent-eligible by other aspects of
the claims (i.e., by adding enough to the statements of ineligible
1507
subject matter to direct the claims, not to the ineligible concepts
themselves, but to applications of those concepts) looking to the
claims as a whole, the steps in combination did not make the
ineligible mental step and natural law patent-eligible; also, the claims
included no patent-eligible subject matter along with the ineligible
concepts (i.e., two data points are better than one), as in the patent-
eligible drug screening claims in Myriad, but included instead only
conventional steps, specified at a high level of generality, which are
insufficient; also, in n.2, distinguishing the claims from those held
patent-eligible in Classen because no further act (like the physical
immunizing step in Classen) moved the recited concepts to a
specific application); Classen Immunotherapies, 12/19/08
(nonprecedential affirming the district courts grant of SJ that claims
(to [a] method for determining whether an immunization schedule
affects the incidence or severity of a chronic immune-mediated
disorder in a treatment group of mammals, relative to a control group
of mammals, comprising an immunizing step and a comparing
step) were invalid under Section 101 based on In re Bilski (en banc)
and their failure to satisfy the machine-or-transformation test,
stating without explanation that the claims were neither tied to a
particular machine or apparatus nor did they transform[] a particular
article into a different state or thing) [vacated and remanded by the
Supreme Court, on 6/29/10, for reconsideration in light of Bilski v.
Kappos, decided 6/28/10 see above]
Bilski v. Kappos (S.C.)
On June 28, 2010, a majority of the U.S. Supreme Court (Justice

Kennedy, except for Justice Scalia in two parts) ruled that the machine-or-
transformation test is not the sole test for determining patent eligibility of
process claims under Section 101 although the test may be a useful and
important clue or investigative tool. The Court also ruled that business
method claims are not categorically excluded from patent eligibility under
Section 101. Instead, the Court advised to apply the definition of process
in Section 100(b) together with the guideposts in Benson, Flook, and Diehr
(i.e., revealing the three exceptions to Section 101 eligibility: laws of nature,
physical phenomena, and abstract ideas). The Court otherwise affirmed the
1508
CAFC that the claimed business methods (methods for hedging risk in
energy markets) were unpatentable under Section 101 as an unpatentable
abstract idea, like the algorithms in Benson and Flook.
In two other opinions, Justice Stevens, concurring and dissenting, and

joined by Justices Ginsburg, Breyer and Sotomayor, argued that business
methods are not patent-eligible, while Justice Breyer, concurring separately,
and joined by Justice Scalia, clarified four points made and agreed on by
many members of the Court.
Applying canons of statutory construction (including that the CAFC

improperly read limitations into Section 101 not expressed by Congress, and
that the ordinary, contemporary, and common meaning of process does
not require it to be tied to a machine or transformation of an article), the
Court held that its interpretation of Section 101 was supported by Section
273(b)(1), providing a prior use defense for business method claims, and
thus ruling that Section 273 clarifies that a business method is at least in
some circumstances eligible for patenting under Section 101 because a
contrary conclusion would violate the canon against interpreting a statutory
provision in a manner that would render another provision superfluous.
Finally, the Court emphasized that nothing in the Courts opinion

should be read as endorsing the CAFCs past interpretations of Section 101,
e.g., the useful, concrete, and tangible result test of State Street Bank. In
disapproving an exclusive machine-or-transformation test, the Court added
that it by no means desired to preclude the CAFCs development of other
limiting criteria that further the Patent Acts purposes and are not
inconsistent with its text.
In re Bilski (en banc)
In a nonprecedential order, dated February 15, 2008, the CAFC sua

sponte granted review en banc in In re Bilski (relating to patented business
methods). The CAFC requested briefing on the following questions: 1)
Whether claim 1 of the 08/833,892 patent application claims patent-eligible
subject matter under 35 USC 101?; 2) What standard should govern in
determining whether a process is patent-eligible subject matter under section
1509
101?; 3) Whether the claimed subject matter is not patent-eligible because it
constitutes an abstract idea or mental process; when does a claim that
contains both mental and physical steps create patent-eligible subject
matter?; 4) Whether a method or process must result in a physical
transformation of an article or be tied to a machine to be patent-eligible
subject matter under section 101?; and 5) Whether it is appropriate to
reconsider State Street Bank & Trust Co. v. Signature Financial Group, Inc.,
149 F.3d 1368 (Fed. Cir. 1998), and AT&T Corp. v. Excel Communications,
Inc., 172 F.3d 1352 (Fed. Cir. 1999), in this case and, if so, whether those
cases should be overruled in any respect?
On October 30, 2008, the court held, 9-3, that the machine-or-
transformation test, properly applied, is the only applicable test for
determining patent eligibility of a process under 101. The majority thus
rejected the other tests previously used, including the useful, concrete and
tangible result test of State Street Bank and the technological arts test. In
applying the test, a claimed process is patent-eligible under Section 101 if:
(1) it is tied to a particular machine or apparatus, or (2) it transforms a
particular article into a different state or thing Benson (S.C.), Diehr
(S.C.), Flook (S.C.). (See discussion of the issues relating to the machine-or-
transformation test below) Also under the test, patent eligibility is
determined based on the claim as a whole and not whether selected
limitations constitute patent-eligible subject matter Diehr (S.C.), Flook
(S.C.).
The courts holding was based on the general rule that a process claim
is not patent-eligible under Section 101 if it claims a fundamental principle,
i.e., a law of nature, natural phenomena, or abstract idea Diehr (S.C.),
Flook (S.C.), Benson (S.C.): Phenomena of nature, though just discovered,
mental processes, and abstract intellectual concepts are not patentable, as
they are the basic tools of scientific and technological work. Bilskis
process claims for a method of hedging risk in the field of commodities
trading were held unpatentable under Section 101 because, the court ruled,
they would preempt substantially all uses of a fundamental principle.
The court recognized that future developments in technology and the

sciences may present difficult challenges to the machine-or-transformation
test, including that the Supreme Court may ultimately decide to alter or
1510
perhaps even set aside [the] test to accommodate emerging technologies, as
well as that the CAFC may in the future refine or augment the test or how it
is applied.
Furthermore, the court ruled that there are no categorical exclusions

of patent-eligible subject matter beyond those for fundamental principles
identified by the Supreme Court; the court therefore declined to adopt a
broad exclusion over software or any other such category (while also not
distinguishing between those software claims that are patent-eligible and
those that are not).
Judge Dyk, with whom Judge Linn joined, CONCURRED in the

judgment, and responded to the claims of Judge Newman and Judge Rader
in their dissents that the majoritys opinion was not grounded in Section 101,
arguing instead based on a review of the history of Section 101 that the
unpatentability of processes not involving manufactures, machines, or
compositions of matter [such as Bilskis claimed method of organizing
human activity] has been firmly embedded in the statute since the time of
the Patent Act of 1793. Of particular interest was Judge Dyks comment
about the now-famous reference to patentable subject matter including
anything under the sun made by man (which was included in the House
Report accompanying the 1952 Patent Act, as well as relied on by the U.S.
Supreme Court in Diamond v. Chakrabarty (1980)). Judge Dyk wrote that
[a]lthough this passage has been used by our court in past cases to justify a
broad interpretation of patentable subject matter, I agree with Judge Mayer
[dissenting, see below] that, when read in context, the statement undercuts
the notion that Congress intended to expand the scope of 101 . . . It refers
to things made by man, not to methods of organizing human activity.
(emphasis added)
Judge Newman DISSENTED separately, arguing that the majoritys

new and far-reaching restriction on patent-eligible subject matter redefines
the word process in Section 101 to exclude all processes that do not
transform physical matter or that are not performed by machines. According
to Judge Newman, the majoritys impact on the future, as well as on the
thousands of [e.g., business method] patents already granted, is unknown.
1511
Judge Mayer also DISSENTED separately, arguing that State Street
Bank and its allowance for business method patents should be overruled, as
[t]he patent system is intended to protect and promote advances in science
and technology, not ideas about how to structure commercial transactions . .
. Affording patent protection to business methods . . . usurps that which
rightfully belongs in the public domain. Judge Mayer also opined that in
the context of business method patent applications, the machine-or
transformation test can be too easily circumvented: Through clever
draftsmanship, nearly every process claim can be rewritten to include a
physical transformation. In sum, Judge Mayer believes that [r]egardless
of whether a claimed process involves a physical transformation, it should
not be patent eligible unless it is directed to an advance in science or
technology.
Finally, Judge Rader also DISSENTED separately, arguing that the

courts holding could have been said in a single sentence: Because Bilski
claims merely an abstract idea, this Court affirms the Boards rejection. In
his dissent, Judge Rader focused on the words of Section 101, i.e., Whoever
invents or discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, . . .
Judge Rader argued that although the term process in Section 101
contains no hint of an exclusion for certain types of methods, under the
majoritys test a process is eligible only if it falls within certain subsets of
process. According to Judge Rader, under Supreme Court law (e.g.,
Diehr) the only limits on eligibility are inventions that embrace natural
laws, natural phenomena, and abstract ideas. The Supreme Court also
stated that all of the references in the cases to transformation and machine
linkage simply restated the abstractness rule. In addition, Judge Rader
also took issue with the oft-discussed dissent from the Supreme Courts
dismissal of its grant of certiorari in LabCorp v. Metabolite Labs (2006)
(addressed in the listing of cases, above). That dissent, according to Judge
Rader, is premised on a fundamental misapprehension of the distinction
between a natural phenomenon and a patentable process and that it avoids
the same fundamental question that the [Bilski majority] does not ask or
answer today: Is this entire field of subject matter undeserving of incentives
for invention? If so, why? Denial of patent protection for the invention in
LabCorp, according to Judge Rader, would undermine and discourage
future research for diagnostic tools [including, e.g., simple blood tests or
1512
urine tests that predict and diagnose breast cancers or immunodeficiency
diseases]. In sum, Judge Rader believes that the majoritys machine-or-
transformation test is circuitous and unnecessary and that the majority
should have merely noted that Bilski attempts to patent an abstract idea.
Nothing more was needed. Judge Rader added that the other statutory
conditions and requirements for patentability (in Sections 102, 103, and 112)
better serve the function of screening out unpatentable inventions than
some vague transformation or proper machine link test.
The U.S. Supreme Court granted certiorari on 6/1/09, with regard

to the following questions, and ruled on 6/2810: 1) Whether the CAFC
erred by holding that a process must be tied to a particular machine
or apparatus, or transform a particular article into a different state or
thing (machine-or-transformation test), to be eligible for patenting
under 35 USC 101, despite [the Supreme Courts] precedent declining
to limit the broad statutory grant of patent eligibility for any new and
useful process beyond excluding patents for laws of nature, physical
phenomena, and abstract ideas. [Yes]; and 2) Whether the CAFCs
machine-or-transformation test for patent eligibility, which effectively
forecloses meaningful patent protection to many business methods,
contradicts the clear Congressional intent that patents protect
method[s] of doing or conducting business. 35 USC 273. [Yes]
Importantly, the Supreme Court stated with respect to the above

five opinions by the en banc CAFC: Students of patent law would be
well advised to study these scholarly opinions.
Generally
Patentable subject matter 35 USC 101
- Whoever invents or discovers any new and useful

process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof,
may obtain a patent therefor, subject to the conditions
and requirements of this title. 35 USC 101
1513
Threshold question, claim construction
- Well-established that the first door which must be opened

on the difficult path to patentability is 101; only if the
requirements of 101 are satisfied is the inventor
allowed to pass through to the other requirements for
patentability, such as novelty and nonobviousness State
Street Bank, Diamond v. Diehr (S.C.); Parker v. Flook
(S.C.) (Alexsam, 5/20/13 (J. Mayer, dissenting); CLS
Bank, 7/9/12 (Section 101 need not always be addressed
first, and the district court in managing its docket
properly acts within its discretion in deciding when to
address the different statutory challenges to validity; see
also J. Prost, dissenting) [vacated and en banc review
granted on 10/9/12]; Mayo v. Prometheus (S.C.),
3/20/12 (stating rule implicitly in rejecting the
Governments argument, that to shift the patent-
eligibility inquiry entirely to these later sections risks
creating significantly greater legal uncertainty, while
assuming that those sections can do work that they are
not equipped to do); MySpace, 3/2/12 (J. Mayer,
dissenting); Classen, 8/31/11; In re Ferguson, 3/6/09; In
re Comiskey, 1/13/09 (en banc); In re Bilski, 10/30/08
(en banc) (clarifying Comiskey in that the CAFC did not
hold therein that the examiner must in every case conduct
a Section 101 analysis before assessing patentability, but
given that Section 101 is a threshold requirement, the
examiner should generally first satisfy herself that the
claims are drawn to patent-eligible subject matter))
- Threshold inquiry any claim failing the

requirements of Section 101 must be rejected even
if it meets all of the other legal requirements of
patentability (Myriad, 8/16/12 (sole issue (on
remand from the Supreme Court) was whether the
claims met the threshold test for patent-eligible
subject matter); Dealertrack, 1/20/12 (n.3; see
also J. Plager, dissenting as a matter of efficient
1514
judicial process, the jurisprudential morass of
Section 101 should not be addressed before the
other patentability defenses unless absolutely
necessary); In re Ferguson, 3/6/09; In re Bilski,
10/30/08 (en banc))
- Whether a claimed process is novel or

nonobvious is irrelevant to the Section 101
analysis Diehr (S.C.) (CLS Bank, 7/9/12
(citing Diehr (S.C.) rule; see also n.2, in
which the majority responds to the dissents
argument that for patent eligibility Mayo
(S.C.) requires the claims to include an
inventive concept, which the majority
states is the same thing as examining what
the patentee actually claims, and imposes no
novelty or nonobviousness inquiry into the
patent eligibility analysis) [vacated and en
banc review granted on 10/9/12]; In re
Bilski, 10/30/08 (en banc))
- Look to the claims for the Section 101 analysis

the claim as a whole is determinative - patent
eligibility is determined based on the claim as a
whole, and not whether selected limitations
constitute patent-eligible subject matter Diehr
(S.C.), Flook (S.C.) the relevant inquiry is
whether a claim, as a whole, includes meaningful
limitations restricting it to an application, rather
than merely an abstract idea Mayo (S.C.) (asking
whether the claims add enough to the natural law
to be patent-eligible processes that apply the
natural law) (Accenture, 9/5/13 (look to the claims,
not the specification, for the Section 101 analysis
thus rejecting the patentees arguments for patent
eligibility in view of the detail in the specification
and the complexity of the implementing software,
where the system claims only contained
1515
generalized software components arranged to
implement an abstract concept on a computer);
Ultramercial, 6/21/13 (A court cannot go hunting
for abstractions by ignoring the concrete, palpable,
tangible limitations of the invention the patentee
actually claims.); CLS Bank, 5/10/13 (en banc)
(nonprecedential see above); CLS Bank, 7/9/12
(stating that the law does not allow a court to go
hunting for abstractions by ignoring the concrete,
palpable, tangible, and otherwise not abstract
invention the patentee actually claims . . . Patent
eligibility must be evaluated based on what the
claims recite, not merely on the ideas upon which
they are premised. In assessing patent eligibility, a
court must consider the asserted claim as a whole
Diehr (S.C.)) [vacated and en banc review
3/20/12; Fort Properties, 2/27/12 (physical
activities involving deeds, contracts, and real
property in process claims to a real estate
investment tool viewed as a whole were
insufficient to render claims patent-eligible);
Ultramercial, 9/15/11 (claimed business method
was patent-eligible where viewed as a whole
required an extensive computer interface)
[vacated and remanded by the U.S. Supreme
Court on 5/21/12 see above]; Classen, 8/31/11;
Prometheus Labs, 12/17/10 (the presence of
mental steps in a claim does not detract from the
patentability of other steps) [reversed by the U.S.
Supreme Court, on 3/20/12]; Research Corp.,
12/8/10; King, 8/2/10 (district court improperly
focused on only one limitation of the method
claims); Bilski v. Kappos (S.C.), 6/28/10; In re
Bilski, 10/30/08 (en banc)); See also PerkinElmer,
11/20/12 (nonprecedential looking to the claims
as a whole, the steps in combination did not make
1516
an ineligible mental step and natural law patent-
eligible)
- Focus is on the claims a claim may

preempt only that which the claims
encompass, not what is disclosed but left
unclaimed (Accenture, 9/5/13; Dealertrack,
1/20/12 (computer-aided business method
claims invalid, where not limited to any
particular algorithm))
- Threshold test the Section 101 eligibility inquiry

is only a threshold test the claimed invention
must also satisfy the conditions and requirements
of 35 USC Sections 101(a) and 102 (novelty),
Section 103 (nonobviousness), and Section 112
(full and particular description) (Ultramercial,
6/21/13; CLS Bank, 7/9/12 [vacated and en banc
review granted on 10/9/12]; Ultramercial, 9/15/11
(CAFC emphasizing at the end of the opinion that
the decision of patent eligibility under Section 101
does not opine at all on the patentability of the
claimed invention under the substantive criteria set
forth in [Sections 102, 103 and 112]) [vacated
5/21/12 see above]; Classen, 8/31/11; Research
Corp., 12/8/10; Bilski v. Kappos (S.C.), 6/28/10)
- Section 101 makes clear (by reference to the

substantive criteria for patentability) that the
categories of patent-eligible subject matter
are no more than a coarse eligibility filter
Research Corp. (Ultramercial, 6/21/13
(emphasizing the broad language of Section
101 for determining patent eligibility, stating
that [t]he plain language of the statute
provides that any new, non-obvious, and
fully disclosed technical advance is eligible
1517
for protection.; also, the coarse eligibility
filter of Section 101 is not the statutory tool
to address concerns about vagueness,
indefinite disclosure, or lack of enablement,
which are expressly addressed by Section
112); MySpace, 3/2/12 (addressing when the
Section 101 defense should be raised in
litigation, to address only legitimate
questions of patent eligibility; see also J.
Mayer, dissenting Section 101 is an
antecedent question that must be
addressed before the other patentability
defenses); Dealertrack, 1/20/12 (the vast
number of claims pass the coarse eligibility
filter anything under the sun that is
made by man Chakrabarty (S.C.));
Ultramercial, 9/15/11 (ruling that the
coarse eligibility filter of Section 101
should not be used to invalidate patents
based on concerns about vagueness,
indefinite disclosure, or lack of enablement,
as these infirmities are expressly addressed
by Section 112) [vacated and remanded by
the U.S. Supreme Court on 5/21/12 see
above])
- Section 101 eligibility is not a substitute for

a patentability analysis related to prior art,
adequate disclosure, or other conditions and
requirements of Title 35 (Ultramercial,
9/15/11 [vacated and remanded by the
U.S. Supreme Court on 5/21/12 see
above]; Research Corp., 12/8/10 (section
101 does not permit a court to reject subject
matter categorically because it finds that a
claim is not worthy of a patent))
1518
- Claimed invention although not abstract
may nonetheless lack sufficient concrete
disclosure to warrant a patent, i.e., be invalid
based on Section 112 indefiniteness or lack
of enablement (Research Corp., 12/8/10)
- Claim construction before determining subject

matter eligibility under Section 101? may not
always be necessary - no bright line rule, because
eligibility is a coarse gauge of the suitability of
broad subject matter categories for patent
protection Research Corp. (Ultramercial, 6/21/13
(stating that claim construction should be required
when there are factual disputes, and that district
courts (at the SJ stage) can construe claims itself or
give a construction most favorable to the patentee,
and need not provide a formal claim construction:
claim meaning may clarify the actual subject
matter at stake in the invention and can enlighten,
or even answer, questions about subject matter
abstractness; also stating that the question of
eligible subject matter must be determined on a
claim-by-claim basis, but that construing every
asserted claim and then conducting a 101
analysis may not be a wise use of judicial
resources); Bancorp Services, 7/26/12 (claim
construction is not a prerequisite to a validity
determination under Section 101, but it will
ordinarily be desirable and often necessary to
resolve claim construction disputes prior to a 101
analysis, for the determination of patent eligibility
requires a full understanding of the basic character
of the claimed subject matter); CLS Bank, 7/9/12
(first construing the claims to require computer-
implementation) [vacated and en banc review
granted on 10/9/12]; Ultramercial, 9/15/11 (claim
construction was not required) [vacated and
remanded by the U.S. Supreme Court on
1519
5/21/12 see above]); See also Fuzzysharp
Techs., 11/4/11 (nonprecedential remanding
where the patent eligibility of at least one asserted
claim turned on questions of claim construction
that the district court had not yet addressed)
- Defining the invention via claim

construction can clarify the basic character
of the subject matter of the invention, and
thus may answer questions about subject
matter abstractness (Ultramercial, 6/21/13;
Ultramercial, 9/15/11) [vacated and
5/21/12 see above]
- Claim-by-claim basis question of patent

eligible subject matter must be determined
on a claim-by-claim basis (Ultramercial,
6/21/13)
Patentable subject matter, although broad, has limits
- Patentable subject matter under the 1952 Patent Act is

extremely broad, i.e., any subject matter in the four
independent categories and any improvement in that
subject matter qualify for protection (Ultramercial,
6/21/13); Congress intended statutory subject matter to
include anything under the sun that is made by man
(Diamond v. Chakrabarty (S.C.)); the Supreme Court,
however, has made clear that this statement does not
suggest that 101 has no limits or that it embraces every
discovery (Myriad, 8/16/12; CLS Bank, 7/9/12 [vacated
and en banc review granted on 10/9/12]; Dealertrack,
1/20/12; Ultramercial, 9/15/11 (focusing on the word
any and that Congress gave Section 101 wide scope,
and adding that this court detects no limitations or
conditions on subject matter eligibility expressed in
1520
statutory language and that unlike the Copyright Act
which divides idea from expression, the Patent Act
covers and protects any new and useful technical
advance, including applied ideas) [vacated and
remanded by the U.S. Supreme Court on 5/21/12 see
above]; Prometheus Labs, 12/17/10 [reversed by the
U.S. Supreme Court, on 3/20/12]; Research Corp.,
12/8/10; Bilski v. Kappos (S.C.), 6/28/10; In re
Comiskey, 1/13/09 (en banc))
Four categories of patentable subject matter in 101
- The four categories in 101 -- processes, machines,

manufactures, and compositions of matter -- together
describe the exclusive scope and reach of patentable
subject matter, even if the claimed subject matter is
otherwise new and useful; the claimed subject matter
must fall within at least one of the four categories State
Street Bank (Fort Properties, 2/27/12; In re Ferguson,
3/6/09 (claimed paradigm for marketing software did
not fall into any of the four categories); In re Bilski,
10/30/08 (en banc); In re Nuijten, 9/20/07)
- Process in 101 requires action; process is an

act or a series of acts NTP, Benson (S.C.) (In re
Bilski, 10/30/08 (en banc) (claim to a process must
be drawn to a statutory process within the
meaning of Section 101, as determined by the
Supreme Courts machine-or-transformation test);
In re Nuijten, 9/20/07)
- Statutory definition of process has no

express subject matter limitation
(Ultramercial, 6/21/13; Ultramercial,
9/15/11 [vacated and remanded by the
U.S. Supreme Court on 5/21/12 see
above])
1521
- Machine is defined as a concrete thing,
consisting of parts, or of certain devices and
combination of devices which includes every
mechanical device or combination of mechanical
powers and devices to perform some function and
produce a certain effect or result Burr (S.C.)
(SiRF Technology, 4/12/10 (GPS receiver is a
machine and was integral to each of the disputed
claims); In re Ferguson, 3/6/09 (applying In re
Nuijtens definition of machine to the machine-
or-transformation test; and holding that marketing
method claims reciting the use of a shared
marketing force were not tied to a machine, i.e.,
any concrete parts, devices, or combination of
devices; also, recited marketing company in
paradigm claims was not analogous to a
machine, as conceded that you cannot touch the
company); In re Nuijten, 9/20/07)
- Manufacture artificiality, physical qualities are

insufficient alone to render claimed subject matter
a manufacture under 101; manufacture relates
to articles (e.g., produced for use from raw or
prepared materials by giving to these materials a
new form Chakrabarty (S.C.)), as being tangible
and nontransitory articles or commodities
(Cybersource, 8/16/11 (rejecting argument that
claimed computer readable medium that performed
process was a manufacture, where the invention
underlying the claim was a method for detecting
credit card fraud, not a manufacture for storing
computer-readable information citing In re Abele
(CCPA)); In re Nuijten, 9/20/07 (transitory signal
not patentable subject matter; see also dissent, J.
Linn, giving reasons why the claimed signal is a
new and useful manufacture, including that it
1522
must involve some physical carrier of
information))
- Composition of matter means all compositions

of two or more substances and all composite
articles, whether they be the results of chemical
union, or of mechanical mixture, or whether they
be gases, fluids, powders or solids Chakrabarty
(S.C.) (In re Nuijten, 9/20/07)
Fundamental principles are not patentable subject matter -

preemption
Abstract ideas and other fundamental principles are

not patent-eligible
- Abstract ideas (e.g., in processes) and other fundamental

principles are not patentable subject matter (Ultramercial,
6/21/13 (defining abstractness, and stating that [a] claim
can embrace an abstract idea and be patentable and that
a claim is not patent eligible only if, instead of claiming
an application of an abstract idea, the claim is instead to
the abstract idea itself -- the inquiry is to determine on
which side the claim falls; adding that the question for
patent eligibility is whether the claim contains limitations
that meaningfully tie that abstract idea to an actual
application of that idea through meaningful limitations);
CLS Bank, 5/10/13 (en banc) (nonprecedential see
above); Myriad, 8/16/12 (diagnostic method claims
reciting comparing and analyzing DNA claimed only
abstract mental processes); Bancorp Services, 7/26/12
(the district court correctly treated the asserted computer-
implemented system and medium claims as being no
different from the asserted method claims for patent
eligibility purposes, and affirming invalidity of the
asserted claims which recited no more than abstract
ideas); CLS Bank, 7/9/12 (computer-implemented claims
were patent-eligible where drawn to practical
1523
applications of an idea see the listing of cases above for
new rules regarding the abstract idea exception to
patent eligibility; see also J. Prost, dissenting) [vacated
and en banc review granted on 10/9/12]; Mayo v.
Prometheus (S.C.), 3/20/12; MySpace, 3/2/12 (ruling that
better during litigation to address Section 102, 103, and
112 validity defenses, without first addressing a Section
101 defense, because of the difficulty of defining an
abstract idea; see also J. Mayer, dissenting); Fort
Properties, 2/27/12 (process claims to real estate
investment tool were not patent-eligible where directed to
an abstract concept, applying Supreme Court cases);
Dealertrack, 1/20/12 (rejecting argument that computer-
aided limitation in the preamble of business method
claims sufficiently limited them to the application of the
clearancehouse concept in car financing); Ultramercial,
9/15/11 (process claims contained patent-eligible subject
matter where the claimed steps were not purely mental
steps as in Cybersource: The eligibility exclusion for
purely mental steps is particularly narrow.) [vacated
and remanded by the U.S. Supreme Court on 5/21/12
see above]; Classen, 8/31/11 (patent-ineligible mental
process, and patent-eligible processes reciting both
mental steps and physical step; also addressing the
meaning of abstract); Cybersource, 8/16/11
(unpatentable purely mental processes); Research Corp.,
12/8/10 (the Supreme Court did not presume to provide
a rigid formula or definition for abstractness, but left for
the CAFC to develop limiting criteria); Bilski v. Kappos
(S.C.), 6/28/10) ALSO, the prohibition against
patenting has two distinct (though related) aspects: 1)
when an abstract concept has no claimed practical
application, it is not patentable - for example, an idea
(e.g., an algorithm) is not patentable; and 2) when the
abstract concept has a practical application, a claim
reciting an algorithm or abstract idea can state statutory
subject matter only if, as employed in the process, it is
embodied in, operates on, transforms, or otherwise
1524
involves another class of statutory subject matter, i.e., a
machine, manufacture, or composition of matter, under
101 Benson (S.C.), Diehr (S.C.); otherwise, the claim
improperly preempts the use of the fundamental principle
(CLS Bank, 7/9/12 (holding that claims held invalid by
the district court as claiming an abstract idea did not
preempt use of the idea, discussing Supreme Court
preemption cases and stating that the essential concern
is not preemption, per se, but the extent to which
preemption results in the foreclosure of innovation; see
also J. Prost, dissenting) [vacated and en banc review
3/20/12 (the Supreme Court precedent warns the Court
against upholding patents that claim processes that too
broadly preempt the use of a natural law; a process to the
use of a natural law must contain other elements or a
combination of elements, sometimes referred to as an
inventive concept, sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon
the natural law itself); Dealertrack, 1/20/12 (computer-
aided business method claims invalid because
preempted clearancehouse concept in car financing the
claims did not require a specific application and were not
tied to a particular machine); Prometheus Labs, 12/17/10
(method of medical treatment claims were patent-eligible
subject matter where contained specific steps and recited
specific drugs and thus did not preempt all uses of the
recited correlations between metabolite levels and drug
efficiency or toxicity) [reversed by the U.S. Supreme
Court, on 3/20/12]; In re Comiskey, 1/13/09 (en banc);
In re Bilski, 10/30/08 (en banc) (process claims for a
method of hedging risk in the field of commodities
trading held unpatentable under Section 101 as would
preempt substantially all uses of a fundamental principle;
also clarifying that Comiskey did not apply a new test
barring any claim reciting a mental process that lacks
significant physical steps))
1525
- Claim may not be patent-eligible, even if it fits
literally within one or more of the statutory
categories, because phenomena of nature, though
just discovered, mental processes, and abstract
intellectual concepts are not patentable, as they are
the basic tools of scientific and technological work
Benson (S.C.) (Ultramercial, 6/21/13; Myriad,
6/13/13 (S.C.); CLS Bank, 5/10/13 (en banc)
(nonprecedential see above); Myriad, 8/16/12;
Bancorp Services, 7/26/12; CLS Bank, 7/9/12
10/9/12]; Mayo v. Prometheus (S.C.), 3/20/12;
Fort Properties, 2/27/12; Classen, 8/31/11;
Cybersource, 8/16/11; Prometheus Labs, 12/17/10
[reversed by the U.S. Supreme Court, on
3/20/12]; Research Corp., 12/8/10 (claimed
halftoning methods were not abstract ideas where
presented functional and palpable applications in
the field of computer technology); Bilski v.
Kappos (S.C.), 6/28/10; In re Ferguson, 3/6/09
(claimed paradigm for marketing software was
directed to an abstract idea -- a business model for
an intangible marketing company; see also J.
Newman, concurring claimed marketing
paradigm was not an abstract idea, but was definite
and concrete and limited)); See also PerkinElmer,
- Patent protection strikes a delicate balance

between creating incentives that lead to
creation, invention, and discovery, and
imped[ing] the flow of information that
might permit, indeed spur, invention
Mayo (S.C.) (Myriad, 6/13/13 (S.C.))
- Claim does not recite patent-eligible subject

matter under Section 101 if it claims a
fundamental principle, i.e., the three
1526
exceptions to patent-eligible subject matter -
laws of nature, natural (physical)
phenomena, and abstract ideas (i.e., so
manifestly abstract as to preempt a
fundamental concept or idea) while
recognizing, however, that all inventions at
some level embody, use, reflect, rest upon,
or apply laws of nature, natural phenomena,
or abstract ideas, and too broad an
interpretation of this exclusionary principle
could eviscerate patent law Mayo (S.C.),
Diehr (S.C.), Flook (S.C.), Benson (S.C.)
(Ultramercial, 6/21/13 (emphasizing the
above exceptions are narrow against the
broad statutory language of Section 101,
stating that because eligibility requires
assessing judicially recognized exceptions
against a broad and deliberately expanded
statutory grant, one of the principles that
must guide our inquiry is these exceptions
should apply narrowly. Indeed, the Supreme
Court has cautioned that, to avoid improper
restraints on statutory language,
acknowledged exceptions thereto must be
rare.); Myriad, 6/13/13 (S.C.) (claim to an
isolated gene fell squarely within the law of
nature exception Funk Brothers (S.C.));
CLS Bank, 5/10/13 (en banc)
(nonprecedential see above); Myriad,
8/16/12 (claims to isolated DNA
molecules are patent eligible because they
cover molecules that are markedly
different i.e., have a distinctive chemical
identity and nature from molecules that
exist in nature); Bancorp Services, 7/26/12
(claimed abstract idea impermissibly
preempted the mathematical concept of
managing a stable value protected life
1527
insurance policy); CLS Bank, 7/9/12
(computer-implemented process, system and
media claims held patent-eligible and not
claiming an abstract idea where no
preemption of uses of the idea, stating that
these three exceptions should arise
infrequently and should not be understood to
subvert the patents constitutional mandate
to promote the progress of science and
useful arts; see also J. Prost, dissenting)
10/9/12]; Mayo v. Prometheus (S.C.),
3/20/12 (the exceptions above to statutory
subject matter are implicit in the statute);
MySpace, 3/2/12 (explaining what is an
abstract idea has been the most difficult of
the three exceptions); Fort Properties,
2/27/12; Dealertrack, 1/20/12 (therefore
generally follows that any invention within
the broad statutory categories of Section 101
that is made by man and is not directed to
one of the above is patent eligible;
Ultramercial, 9/15/11 (concluding that
process claim was patent-eligible, after
addressing the abstractness issue with
respect to the claim) [vacated and
5/21/12 see above]; Classen, 8/31/11
(exclusions from patent-eligibility should be
appled narrowly Bilski (S.C.));
Cybersource, 8/16/11; Prometheus Labs,
12/17/10 [reversed by the U.S. Supreme
Court, on 3/20/12]; Research Corp., 12/8/10
(examining the statutory language of
process followed by the Supreme Courts
three exceptions to patent-eligible subject
matter - only the third exception (abstract
idea) was relevant); King, 8/2/10; Bilski v.
1528
Kappos (S.C.), 6/28/10; In re Ferguson,
3/6/09; In re Bilski, 10/30/08 (en banc)
(Benson (S.C.): Phenomena of nature,
though just discovered, mental processes,
and abstract intellectual concepts are not
patentable, as they are the basic tools of
scientific and technological work)); See
also PerkinElmer, 11/20/12 (nonprecedential
stating that [t]he key distinction . . . is
between claims that recite ineligible subject
matter, and no more, and claims to specific
inventive applications of that subject matter
. . . . Unlike the former, the latter do not risk
the broad preemption of the basic tools of
scientific and technological work, and
therefore clear the threshold of section 101
citing Diamond (S.C.), Mayo (S.C.), and
Benson (S.C.))
- Product of nature is not patent-eligible

the distinction between a product of
nature and a human-made invention
turns on a change in the claimed
compositions identity compared with
what exists in nature i.e., where
human intervention has given the
composition markedly different or
distinctive characteristics from any
found in nature (Myriad, 6/13/13
(S.C.) (claim to an isolated gene is not
patent-eligible because not a new . . .
composition of matter under Section
101, but rather claims naturally
occurring phenomena -- products of
nature are not created, and
manifestations . . . of nature [are]
free to all men and reserved
exclusively to none Chakrabarty
1529
adding: Nor are Myriads claims
saved by the fact that isolating DNA
from the human genome severs
chemical bonds and thereby creates a
nonnaturally occurring molecule.
Myriads claims are simply not
expressed in terms of chemical
composition, . . . Instead, the claims
understandably focus on the genetic
information encoded in the BRCA1
and BRCA2 genes . . . [I]ts claim is
concerned primarily with the
information contained in the genetic
sequence, not with the specific
chemical composition of a particular
molecule.); Myriad, 8/16/12 (claims
to isolated DNA molecules were
patent eligible based on the above
test))
- Application of a law of nature or

mathematical formula to a known
structure or process may well be
deserving of patent protection In re
Bilski, Diehr (S.C.) (Ultramercial,
6/21/13; Bancorp Services, 7/26/12;
CLS Bank, 7/9/12 [vacated and en
banc review granted on 10/9/12];
Mayo v. Prometheus (S.C.), 3/20/12
(adding that the Supreme Court has
also made clear that to transform an
unpatentable law of nature into a
patent-eligible application of such a
law, one must do more that simply
state the law of nature while adding
the words apply it); Ultramercial,
9/15/11 (citing the above rule for rule
that the application of an abstract idea
1530
is deserving of patent protection)
[vacated and remanded by the U.S.
Supreme Court on 5/21/12 see
above]; Classen, 8/31/11 (claims
patent-eligible where directed to a
specific, tangible application, as in
Research Corp.); Prometheus Labs,
12/17/10 (inventive nature of the
claimed methods stemmed from the
application of a natural phenomenon
in a series of transformative steps
comprising particular methods of
treatment) [reversed by the U.S.
Supreme Court, on 3/20/12];
Research Corp., 12/8/10 (claimed
halftoning methods incorporating
algorithms and formulas that
controlled the halftoning were not
abstract))
- Ineligible subject matter does

not become patent-eligible
merely by adding the words
apply it Mayo (S.C.)
(Ultramercial, 6/21/13; Bancorp
Services, 7/26/12)
- Simply appending conventional

steps (what is well-understood,
routine, conventional activity,
previously engaged in by those
in the field), specified at a high
level of generality, to laws of
nature, natural phenomena, and
abstract ideas cannot make
those laws, phenomena, and
ideas patentable (Ultramercial,
6/21/13 (claim is not
1531
meaningfully limited if its
purported limitations provide
no real direction, cover all
possible ways to achieve the
provided result, or are overly-
generalized, and adding that
when the steps of the claim
must be taken to apply the
abstract idea in question, the
claim is essentially no different
from saying apply the abstract
idea Mayo (S.C.)); CLS Bank,
5/10/13 (en banc)
(nonprecedential see above);
Mayo v. Prometheus (S.C.),
3/20/12); See also PerkinElmer,
- Essential limitations to the

invention - claim is limited
meaningfully when, in addition
to the abstract idea, the claim
recites added limitations which
are essential to the invention,
i.e., are central to the solution
itself, rather than reciting pre-
or post-solution activity
Diehr (S.C.) (process for curing
synthetic rubber) (Ultramercial,
6/21/13)
- Inventive concept
requirement of Section 101 - a
process to the use of a natural
law must contain other
elements or a combination of
elements, sometimes referred to
as an inventive concept,
1532
sufficient to ensure that the
patent in practice amounts to
significantly more than a
patent upon the natural law
itself (Ultramercial, 6/21/13
(the reference to
inventiveness in Mayo (S.C.)
is shorthand for its inquiry into
whether implementing the
abstract idea in the context of
the claimed invention
inherently requires the recited
step(s), i.e., they would
necessarily be used, and thus
the step(s) do not further limit
the abstract concept to a
practical application); CLS
Bank, 5/10/13 (en banc)
Mayo v. Prometheus (S.C.),
3/20/12); See also PerkinElmer,
11/20/12 (nonprecedential -
basing the decision on Mayo
(S.C.), stating that where the
claims merely describe the
ineligible concept, amounting
to a claim on the concept, such
claims run afoul of section
101.)
- Application of an abstract idea

to a new and useful end is
deserving of patent protection
Benson (S.C.) (Ultramercial,
6/21/13; Ultramercial, 9/15/11
(claimed process, by its terms,
invoked computers and
applications of computer
1533
technology (wherein many
steps were likely to require
intricate and complex computer
programming), and applied the
abstract idea that advertising
can be used as a form of
currency) [vacated and
remanded by the U.S.
Supreme Court on 5/21/12
see above])
- Inventions with specific

applications or improvements
to technologies in the
marketplace are not likely to be
so abstract that they override
the statutory language and
framework of the Patent Act
Research Corp. (Ultramercial,
6/21/13; Bancorp Services,
7/26/12 (Research Corp.
distinguished); Ultramercial,
9/15/11 (claimed business
method was patent-eligible
where remedied problems with
prior art banner advertising and
improved existing technology,
and thus was not so manifestly
abstract as to override the
statutory language of section
101 Research Corp.)
[vacated and remanded by
the U.S. Supreme Court on
5/21/12 see above])
- Computer-implemented
methods See Business
method and software patents
1534
- Abstract subject matter vs. broadly
claimed subject matter the breadth
and lack of specificity of claimed
subject matter does not render the
claimed subject matter impermissibly
abstract, e.g., the disclosure need not
detail the particular instrumentalities
for each process step (Ultramercial,
9/15/11) [vacated and remanded by
the U.S. Supreme Court on 5/21/12
see above]
- Field of use limitation or adding token

pre- or post-solution components does
not render abstract idea patent-eligible
Bilski (S.C.) (Accenture, 9/5/13
(affirming as patent-ineligible the
patentees attempts in system claims
to limit an abstract concept to a
computer implementation and to a
specific industry (insurance), because
did not provide additional substantive
limitations to avoid preempting the
abstract idea); Ultramercial, 6/21/13
(claim is not limited meaningfully if it
contains only insignificant or token
pre- or post-solution activity such as
identifying a relevant audience, a
category of use, field of use, or
technological environment citing
Mayo (S.C.), Bilski (S.C.), and Flook
(S.C.)); CLS Bank, 5/10/13 (en banc)
Whitserve, 8/7/12 (J. Mayer,
dissenting); Bancorp Services,
7/26/12)
1535
Machine-or-transformation test is not the sole test
- Machine-or-transformation test is not the sole test

to be applied in determining patent eligibility of
process claims under Section 101 [the Supreme
Court on 6/28/10 in Bilski v. Kappos (see above)
rejected the en banc CAFCs holding that the M
or T test is the only test for determining
patent eligibility of process claims, and ruled
instead that the M or T test is not the sole test
for patent eligibility, but added that it may be a
useful and important clue or investigative tool]
the Supreme Court has enunciated a definitive
test to determine whether a process claim is
tailored narrowly enough to encompass only a
particular application of a fundamental principle
rather than to pre-empt the principle itself a
claimed process is patent-eligible under Section
101 if: (1) it is tied to a particular machine or
apparatus, or (2) it transforms a particular article
into a different state or thing Benson (S.C.),
Diehr (S.C.), Flook (S.C.) (Ultramercial, 6/21/13;
Myriad, 8/16/12 (diagnostic method claim steps
reciting comparing and analyzing DNA
sequences were not transformative, but rather
could be accomplished by mere inspection alone,
and thus the claims recited only abstract mental
processes); Bancorp Services, 7/26/12 (the district
court correctly found that the asserted claims did
not meet either prong of the M or T test, which
remains a useful and important clue . . .); CLS
Bank, 7/9/12 (citing Bilski (S.C.) rule that the test
is a useful and important clue but not
dispositive) [vacated and en banc review
3/20/12 (in stating that the M or T test is an
important and useful clue to patentability, the
Court neither said nor implied that the test trumps
1536
the law of nature exclusion); Fort Properties,
2/27/12 (affirming SJ of no patent eligibility of
process claims even though SJ decided pre-Bilski
(S.C.) based on the M or T test); Ultramercial,
9/15/11 [vacated and remanded by the U.S.
Supreme Court on 5/21/12 see above];
Cybersource, 8/16/11 (unpatentable mental
processes (abstract ideas) in claimed method and
claimed computer readable medium that performed
method where there was no transformation or
machine (computer) required, because the claimed
subject matter could be performed entirely in the
human mind merely claiming a software
implementation of a purely mental process that
could otherwise be performed without the use of a
computer does not satisfy the machine prong of the
[M or T] test That purely mental processes can
be unpatentable, even when performed by a
computer, was precisely the holding of the
Supreme Court in [Benson]); Prometheus Labs,
12/17/10 (method for calibrating drug dosage was
patentable subject matter since multiple steps
transformed drugs or substances to different drugs
or substances) [reversed by the U.S. Supreme
Court, on 3/20/12]; Bilski v. Kappos (S.C.),
6/28/10 (rejecting the CAFCs en banc ruling that
the machine-or-transformation test is the sole test);
In re Ferguson, 3/6/09 (reaffirming that the
machine-or-transformation test is the singular test
for a process claim under Section 101, and that the
claimed marketing method did not meet either
prong of the test, where the recited shared
marketing force was not a machine, as defined in
In re Nuijten, and the method at best was directed
to organizing business or legal relationships, and
thus did not transform an article into a different
state or thing, as required by In re Bilski); In re
Bilski, 10/30/08 (en banc) (machine aspect of test
1537
was not applicable as the process claims did not
recite a machine or apparatus, and the claims failed
to satisfy the transformation option of the test))
- No exclusive test for determining whether a

process is patentable subject matter while
a process may be patentable if it satisfies the
machine-or-transformation test, there is no
exclusive test for determining patentability
under Section 101 Bilski (S.C.) (Bancorp
Services, 7/26/12; Cybersource, 8/16/11;
King, 8/2/10 (We understand the
Supreme Court to have rejected the
exclusive nature of our test, but not
necessarily the wisdom behind it)); See
also Fuzzysharp Techs., 11/4/11
(nonprecedential remanding for claim
construction and a post-Bilski (S.C.)
decision regarding patentable subject matter,
where the district court correctly held the
claims failed the machine-or-transformation
test under In re Bilski (en banc))
- Considerations applicable to test 1) the use

of a specific machine or transformation of
an article must impose meaningful limits on
the claims scope to impart patent-eligibility,
and 2) the involvement of the machine or
transformation in the claimed process must
not merely be insignificant extra-solution
activity (Bancorp Services, 7/26/12 (claims
patent-ineligible where computer imposed
no meaningful limits on claim scope); CLS
Bank, 7/9/12 [vacated and en banc review
granted on 10/9/12]; Fort Properties,
2/27/12 (computer limitations were
insufficient to render process claims patent-
eligible, applying rules from Cybersource,
1538
distinguishing case from Ultramercial, and
comparing case to Dealertrack, in which the
computer limitation also did not play a
significant part in permitting the claimed
method to be performed; the computer
limitation was simply added to claims
covering an abstract concept - that is, the
computer limitation was simply insignificant
post-solution activity); Dealertrack, 1/20/12
(computer-aided method held invalid
where did not require a specific application
and was not tied to a particular machine);
Cybersource, 8/16/11; Prometheus Labs,
12/17/10 (administering and determining
steps in claimed method, although gathered
useful data, were not merely data-
gathering steps, as both were transformative
under the Bilski test) [reversed by the U.S.
Supreme Court, on 3/20/12]; SiRF
Technology, 4/12/10 (the presence of a GPS
receiver in the claimed methods placed a
meaningful limit on the claim scope, thus
holding that the claims were properly
directed to patentable subject matter as they
explicitly require the use of a particular
machine (a GPS receiver) and could not be
performed without the use of such a
receiver); In re Bilski, 10/30/08 (en banc));
See also PerkinElmer, 11/20/12
(nonprecedential applying rule from Mayo
(S.C.), the claims failed the M or T test
where the purported transformation resulting
from assaying a sample was insufficient
since it could be performed without
transforming the sample, should science
develop a totally different system for
assaying for a biochemical screening marker
that did not involve such a transformation)
1539
- Machine imposing a meaningful limit
on the claim scope? in order for the
addition of a machine to impose a
meaningful limit on the scope of a
claim, it must be a significant part in
permitting the claimed method to be
performed, rather than function solely
as an obvious mechanism for
permitting a solution to be achieved
more quickly, i.e., through the
utilization of a computer for
performing calculations (Bancorp
Services, 7/26/12; CLS Bank, 7/9/12
(relying on rule to hold computer-
implemented claims patent-eligible,
where it was difficult for the court to
conclude that the computer
limitations, which were integral to the
method, did not play a significant part
in the performance of the invention or
that the claims were not limited to a
very specific application of the
concept of using an intermediary to
help consummate exchanges between
parties, and that the claims appeared
to cover the practical application of a
business concept in a specific way,
after also stating that it can be
appreciated that a claim that is drawn
to a specific way of doing something
with a computer is likely to be patent
eligible whereas a claim to nothing
more than the idea of doing that thing
on a computer may not) [vacated
and en banc review granted on
10/9/12]; Fort Properties, 2/27/12
(claims not patent-eligible where
1540
required a computer to generate a
plurality of deedshares); Dealertrack,
1/20/12 (computer-aided method
held invalid where did not impose
meaningful limit on claim scope, and
for the other reasons above);
Cybersource, 8/16/11 (distinguishing
SiRF Tech. since computer was not
required to perform the claimed
process); SiRF Technology, 4/12/10
(ruling that a GPS receiver was
essential to the operation of the
claimed methods, and that the court
was not dealing with a situation in
which there is a method that can be
performed without a machine and
that there was no evidence that the
calculations could be performed
entirely in the human mind)); See
also Fuzzysharp Techs., 11/4/11
(nonprecedential no meaningful
limits in scope based on the claims
being tied to a general purpose
computer that merely performed
calculations and data storage))
- Articles self-evident that chemical

or physical transformation of physical
objects or substances is patent-eligible
subject matter -- What else?
(Prometheus Labs, 12/17/10 (methods
including transformation of drugs to
metabolites in the human body were
patent-eligible) [reversed by the U.S.
Supreme Court, on 3/20/12]; In re
Bilski, 10/30/08 (en banc) (examining
prior decisions to provide guidance as
to the boundaries of what constitutes
1541
patent-eligible transformations of
articles))
- Physical objects or substances

are required - purported
transformations or
manipulations simply of public
or private legal obligations or
relationships, business risks, or
other such abstractions cannot
meet the test because they are
not physical objects or
substances, and they are not
representative of physical
objects or substances (In re
Ferguson, 3/6/09 (claimed
marketing method at best was
directed to organizing business
or legal relationships in the
structuring of a sales force, or
marketing company); In re
Bilski, 10/30/08 (en banc)
(claim to a method of hedging
risk in the field of commodities
trading was not patent-eligible
subject matter, as did not
transform any article (i.e.,
any physical object or
substance, or an electronic
signal representative of any
physical object or substance)
to a different state or thing))
- Transforming data patent-

eligible so long as the claimed
process is limited to a practical
application of a fundamental
principle to transform specific
1542
data, and the claim is limited to
a visual depiction that
represents specific physical
objects or substances, e.g., X-
ray data (In re Bilski, 10/30/08
(en banc))
- Transformation (of an article into a

different state or thing) must be
central to the purpose of the claimed
process, as opposed to insignificant
extra-solution activity or data-
gathering (Prometheus Labs, 12/17/10
(requirement met where recited
transformations were central to the
inventions purpose - determining the
proper drug dosage for improving
therapeutic efficacy and reducing
toxicity) [reversed by the U.S.
Supreme Court, on 3/20/12]; In re
Bilski, 10/30/08 (en banc))
- Future developments in technology and the

sciences may present difficult challenges to
the machine-or-transformation test
(Ultramercial, 6/21/13 (the M or T test in
not applicable to the Information Age); CLS
Bank, 7/9/12 [vacated and en banc review
granted on 10/9/12]; Ultramercial, 9/15/11
(the M or T test has far less application to
the inventions of the Information Age)
[vacated and remanded by the U.S.
Supreme Court on 5/21/12 see above]; In
re Bilski, 10/30/08 (en banc) (recognizing
that the Supreme Court [by the use of
e.g. in Diehr (S.C.)] may ultimately decide
to alter or perhaps even set aside [the] test to
accommodate emerging technologies, as
1543
well as that the CAFC may in the future
refine or augment the test or how it is
applied)
- Mere field of use limitations (i.e., attempting

to limit the use of a formula or principle, etc.
to a particular technological environment)
are generally insufficient to render an
otherwise ineligible process claim patent-
eligible -- preemption of all uses of a
fundamental principle in all fields and
preemption of all uses of the principle in
only one field both indicate that the claim is
not limited to a particular application of the
principle Diehr (S.C.) (Bancorp Services,
7/26/12 (field of use limitation does not
make an abstract idea patent eligible); Mayo
v. Prometheus (S.C.), 3/20/12 (the
prohibition against patenting abstract ideas
cannot be circumvented by attempting to
limit the use of the formula to a particular
technological environment Bilski (S.C.),
Diehr (S.C.)); Dealertrack, 1/20/12
(computer-aided business method invalid
where preempted clearancehouse concept in
car financing); Bilski v. Kappos (S.C.),
6/28/10) vs. a claim that satisfies the
machine-or-transformation test does not
preempt all uses of a fundamental principle
in any field but rather is limited to a
particular use, a specific application and
thus is not drawn to the principle in the
abstract (Prometheus Labs, 12/17/10
(method claims did not preempt natural
processes (or a fundamental principle), but
utilized them in a series of specific steps)
[reversed by the U.S. Supreme Court, on
3/20/12]; In re Bilski, 10/30/08 (en banc)
1544
(holding that limiting the use of a principle
to methods of hedging risk in the field of
commodities trading was not a statutory
process under Section 101, as would
preempt all uses of the fundamental concept
of hedging in the field))
- Processes involving mathematical

algorithms used in computer
technology have been found
patentable because they claim
practical applications and are tied to
specific machines (Ultramercial,
9/15/11 [vacated and remanded by
the U.S. Supreme Court on 5/21/12
see above]; Cybersource, 8/16/11;
In re Comiskey, 1/13/09 (en banc))
- Recited machine or transformation

must not constitute mere
insignificant postsolution activity
(Diehr (S.C.), Flook (S.C.)) or
insignificant extra-solution activity
regardless of where and when it
appears in the claimed process
(Bancorp Services, 7/26/12; CLS
Bank, 7/9/12 [vacated and en banc
review granted on 10/9/12]; Mayo v.
Prometheus (S.C.), 3/20/12;
Prometheus Labs, 12/17/10 [reversed
by the U.S. Supreme Court, on
3/20/12]; Bilski v. Kappos (S.C.),
6/28/10 (Diehr and Flook rules cited);
In re Bilski, 10/30/08 (en banc)
(adding a data-gathering step to an
algorithm, as an example))
1545
Mental processes are not patent-eligible
- Mental processes or processes of human thinking

standing alone and untied to another category of statutory
subject matter are not patentable even if they have
practical application Benson (S.C.) (Ultramercial,
6/21/13 (method claims required, among other things,
controlled interaction with a consumer over an internet
website, something far removed from purely mental
steps, distinguishing Cybersource); Ultramercial,
9/15/11 (distinguishing Cybersource and process claims
reciting purely mental steps) [vacated and remanded by
the U.S. Supreme Court on 5/21/12 see above];
Cybersource, 8/16/11; Prometheus Labs, 12/17/10
(presence of mental step did not detract from
patentability of process as a whole, which also included
transformative steps) [reversed by the U.S. Supreme
Court, on 3/20/12]; In re Comiskey, 1/13/09 (en banc)
(holding that business methods (e.g., method of
conducting arbitration) that depend entirely on the use of
mental processes, human intelligence are not patentable
subject matter; see also J. Newman, dissenting from
denial of the petition for rehearing en banc: The
Comiskey process is not a mental process, . . . .); In re
Bilski, 10/30/08 (en banc) (claim to a mental process is
no more than a claim to a fundamental principle; the
claimed process was directed to a mental process just as
the claims in Comiskey))
- When an unpatentable mental process is combined

with a machine, the combination may produce
patentable subject matter State Street Bank,
AT&T, Diehr (S.C.) (Cybersource, 8/16/11
(machine must be required to perform process, vs.
being able to perform the process in the human
mind); In re Comiskey, 1/13/09 (en banc)
(remanding to the PTO/BPAI for determination in
the first instance whether the system claims
1546
(reciting module[s]) claimed patentable subject
matter under Section 101; see also J. Newman,
dissenting from denial of the petition for rehearing
en banc, opining that the innovation incentive
provided by the patent system does not turn on
whether mind or machine performs new and
unobvious processes of practical utility and
commercial value); In re Bilski, 10/30/08 (en
banc) (ruling that the machine option of the
required machine-or-transformation test requires
that the claimed process be tied to a particular
machine or apparatus and stating: We leave to
future cases the elaboration of the precise contours
of machine implementation, as well as the answers
to particular questions, such as whether or when
recitation of a computer suffices to tie a process
claim to a particular machine.))
- Mere use of a machine to collect data

necessary for application of a mental process
may not be patentable subject matter
(Cybersource, 8/16/11; In re Comiskey,
1/13/09 (en banc); In re Bilski, 10/30/08 (en
banc))
Biotech/Pharma
- Principles of patent law (e.g., infringement) do not cease

to apply when patentable inventions (e.g., chimeric
genes) are incorporated within living things, either
genetically or mechanically (Monsanto, 5/24/07)
- Patent-eligibility of method of treatment claims and

diagnostic claims (Myriad, 8/16/12 (diagnostic method
claims reciting comparing and analyzing DNA
claimed only abstract mental processes); Mayo v.
Prometheus (S.C.), 3/20/12 (see discussion above;
1547
responding to arguments for and against claims on
diagnostic methods that [p]atent protection is, after all, a
two-edged sword and also recognizing the role of
Congress in crafting more finely tailored rules where
necessary that the Court need not determine here
whether, from a policy perspective, increased protection
for discoveries of diagnostic laws of nature is desirable);
Prometheus Labs, 12/17/10 (treatment claim including
administering (of drug) step transformed the human
body, and was central to the purpose of the invention to
optimize therapeutic efficacy and reduce drug toxicity,
and thus satisfied the Bilski machine-or-transformation
test) [reversed by the U.S. Supreme Court, on
3/20/12]; King, 8/2/10 (stating -- in light of the Supreme
Courts vacatur in Prometheus that the present case did
not present the proper vehicle for determining whether
medical treatment claims are patent eligible under
Section 101 because the claims in suit were otherwise
anticipated); See also PerkinElmer, 11/20/12
(nonprecedential diagnostic claims held patent-
ineligible where directed only to an abstract mental
process and law of nature see above listing of cases);
Classen Immunotherapies, 12/19/08 (nonprecedential
affirming invalidity of method claims (directed to
evaluating immunization schedules in mammals) based
on In re Bilski and their failure to satisfy the machine-or-
transformation test) [vacated and remanded by the
Supreme Court, on 6/29/10]
- Patent-eligibility of claims to isolated DNA molecules

the distinction between a product of nature and a
human-made invention turns on a change in the claimed
compositions identity compared with what exists in
nature i.e., where human intervention has given the
composition markedly different or distinctive
characteristics (Myriad, 8/16/12 (claims to isolated
DNA molecules and cDNA molecules held patent
eligible; see above case listing for full summary);
1548
Intervet, 8/4/10 (See J. Dyk, concurring - questioning
whether isolated DNA molecules are patentable subject
matter under Section 101, citing Bilski (S.C.) and stating
that such patents do in fact raise serious questions of
patentable subject matter; adding that for a product of
nature to satisfy Section 101, it must be qualitatively
different from the product occurring in nature, and that it
is far from clear that an isolated DNA sequence satisfies
this condition))
- Patent-eligibility of purified natural products (Myriad,

8/16/12)
Business method and software patents
- Business methods are patentable - claims to business

methods are treated like any other process claims;
business methods are subject to the same legal
requirements for patentability as applied to any other
process or method State Street Bank (addressing claim
to a machine, not a process) (Ultramercial, 6/21/13;
Ultramercial, 9/15/11 [vacated and remanded by the
U.S. Supreme Court on 5/21/12 see above]; Bilski v.
Kappos (S.C.), 6/28/10 (ruling that business method
claims are not categorically excluded from patent
eligibility under Section 101); In re Ferguson, 3/6/09
(majority not contending that In re Bilski (en banc)
overturned State Street Bank, but merely noting that the
useful, concrete and tangible result test is insufficient
for determining patent-eligibility of a claim; thus
clarifying that the court in Bilski concluded that the test
was not valid or useful, as it inappropriately focused on
the result of the claimed invention rather than the
invention itself); In re Comiskey, 1/13/09 (en banc); In re
Bilski, 10/30/08 (en banc) (reaffirming the above, but
rejecting the useful, concrete and tangible result test of
State Street Bank in favor of the machine-or-
1549
transformation test); See also Abstract ideas, mental
processes are not patentable subject matter - preemption
- Not every process is patentable (In re Comiskey,

1/13/09 (en banc) (see also J. Newman, dissenting
from denial of the petition for rehearing en banc,
and presenting an outline of . . . concerns with the
panel decision, including the Section 101 split
between Comiskeys method and system claims,
and opining that [t]he court continues to present a
broad and ill-defined exclusion of business
methods from access to the patent system, an
exclusion that is poorly adapted to todays new and
creative modalities of data handling and
knowledge utilization . . . . Uncertainty is the
enemy of commercial investment.); In re Bilski,
10/30/08 (en banc) (process must satisfy the
machine-or-transformation test, which is the sole
test for determining whether the process is a
patent-eligible process under Section 101))
- No categorical exclusions of patent-eligible

subject matter beyond those for fundamental
principles identified by the Supreme Court
(Myriad, 8/16/12; Ultramercial, 9/15/11 [vacated
5/21/12 see above]; In re Bilski, 10/30/08 (en
banc) (declining to adopt a broad exclusion over
software or any other such category, while also not
distinguishing between those software claims that
are patent-eligible and those that are not))
- Computer-implemented claims (method, system,

medium) patent-eligible? (Accenture, 9/5/13
(system claims were not patent-eligible where they
were not significantly different from patent-
ineligible method claims); Ultramercial, 6/21/13
(holding claims patent-eligible, but not defining
1550
the level of programming complexity required
before a computer-implemented method can be
patent-eligible, nor holding that use of an internet
website to practice such a method is either
necessary or sufficient in every case to satisfy
Section 101); CLS Bank, 5/10/13 (en banc)
(nonprecedential see above); Whitserve, 8/7/12
(J. Mayer, dissenting patents were plainly
invalid based on Mayo (S.C.) and the CAFCs
Section 101 cases decided after the trial courts
decision); Bancorp Services, 7/26/12 (affirming
the invalidity of computer-implemented method,
system, and medium claims which covered no
more than abstract ideas, stating that [t]o salvage
an otherwise patent-ineligible process, a computer
must be integral to the claimed invention,
facilitating the process in a way that a person
making calculations or computations could not
and that [u]sing a computer to accelerate an
ineligible mental process does not make that
process patent-eligible); CLS Bank, 7/9/12
(reversing the district court, and holding that
computer-implemented method, system, and media
claims (which the CAFC treated the same) were
patent-eligible because they did not claim only an
abstract idea; see also J. Prost, dissenting)
10/9/12]; MySpace, 3/2/12 (J. Mayer, dissenting:
Many software and business method patents
simply describe a basic, well-known concept that
has been implemented or applied using
conventional computer technology . . . While
running a particular process on a computer
undeniably improves efficiency and accuracy,
cloaking an otherwise abstract idea in the guise of
a computer-implemented claim is insufficient to
bring it within section 101); Fort Properties,
2/27/12 (computer limitation was simply added to
1551
process claims covering an abstract concept);
Dealertrack, 1/20/12 (computer-aided business
method held invalid, where adding a computer did
not play a significant part in permitting the claimed
method to be performed, since it could be
programmed to perform very different tasks in
very different ways the claims were silent as to
how a computer aids the method, the extent to
which a computer aids the method, or the
significance of a computer to the performance of
the method distinguishing Ultramercial);
Ultramercial, 9/15/11 (declining neither to define
the level of programming complexity required
before a computer-implemented method can be
patent-eligible, nor holding that the use of an
Internet website to practice such a method is either
necessary or sufficient in every case to satisfy
Section 101) [vacated and remanded by the U.S.
Supreme Court on 5/21/12 see above])
- Inquiry focuses on whether the claims tie the

otherwise abstract idea to a specific way of
doing something with a computer, or a
specific computer for doing something; if so,
they likely will be patent eligible; vs. claims
directed to nothing more than the idea of
doing that thing on the computer are likely
to face larger problems; while no particular
type of limitation is necessary, meaningful
limitations may include the computer being
part of the solution, being integral to the
performance of the method, or containing an
improvement in computer technology
SiRF Technology (Accenture, 9/5/13;
Ultramercial, 6/21/13)
- Special purpose computer, i.e., a new

machine, specially designed,
1552
programmed to implement a process
may be sufficient Alappat
(Ultramercial, 6/21/13)
- Computer software patent-eligible? (Accenture, 9/5/13

(system and method claims were not patent-eligible
where they contained no significant meaningful
limitations aside from claiming an abstract concept);
Ultramercial, 6/21/13 (recognizing the patent-eligibility
of computer software, which renders computer hardware
circuits programmed with the software a new machine
or a special purpose computer (citing Alappat), stating:
Far from abstract, advances in computer technology
both hardware and software drive innovation in every
area of scientific and technical endeavor.); CLS Bank,
5/10/13 (en banc) (nonprecedential see above);
MySpace, 3/2/12 (See J. Mayer, dissenting suggesting
no for [m]any software and business method patents
that simply describe a basic, well-known concept that
has been implemented or applied using conventional
computer technology); Ultramercial, 9/15/11
(examining the patent eligibility of software, stating that
a programmed computer contains circuitry unique to that
computer, and thus the new machine could be claimed
in terms of a complex array of hardware circuits, or more
efficiently, in terms of the programming that facilitates a
unique function adding that far from abstract, advances
in computer technology (both hardware and software)
drive innovation in every area of scientific and technical
endeavor citing In re Alappat) [vacated and
remanded by the U.S. Supreme Court on 5/21/12 see
above])
Printed matter
- Printed matter the CAFC has generally found printed

matter to fall outside the scope of Section 101, subject to
1553
the functional relationship exception (Astrazeneca,
11/1/10); See ANTICIPATION Printed matter
C. ANTICIPATION
Generally 35 USC 102(a), 102 (b), and 102(e)
- If the claimed invention was described in a printed

publication either before the date of invention (102(a)),
or more than one year before the U.S. patent application
was filed (102(b)), then that prior art anticipates the
patent (Net Moneyin, 10/20/08 (taking the opportunity
to clarify what a reference must show in order to
anticipate a claimed invention); Finisar, 4/18/08); See
also Public use and On sale bars, below
- Although section 102 refers to the invention

generally, the anticipation inquiry proceeds on a
claim-by-claim basis Hakim (Orion, 5/17/10;
Finisar, 4/18/08)
- Motivation in the prior art is unimportant for

anticipation Callaway (Otsuka, 5/7/12)
- Section 102(e) reference patents effective filing date

must be before the date of invention - swearing behind a
reference based on an earlier conception (Spansion,
12/21/10); See also INVENTORSHIP Conception
Anticipation - standard
Generally all claim elements must be disclosed, expressly

or inherently, in a single enabling prior art reference
- Claimed subject matter is anticipated when it is not

new; that is, when it was previously known (In re
Skvorecz, 9/3/09; Sanofi-Synthelabo, 12/12/08)
1554
- Anticipation requires that each and every element and
limitation of the claimed invention be disclosed in a
single prior art reference, as read by one of ordinary skill
in the art (Apple, 8/7/13; Regents of U. Minn., 6/3/13 (all
elements of the claimed invention, including means-plus-
function structures or their equivalents citing Kegel);
Osram Sylvania, 12/13/12; Energy Transportation Group,
10/12/12 (fact question for jury that prior art reference
failed to disclose claimed feature was supported by
substantial evidence, based on the patentees experts
credibility and absence of testimony to the contrary by
defendants expert); K-Tec, 9/6/12; Whitserve, 8/7/12;
Krippelz, 1/27/12 (reversing the denial of JMOL of
anticipation after affirming the district courts narrow
construction, where the district court did not conclude
(via the jury verdict) lack of anticipation based on the
entirety of the prior art patent, but relied instead on an
experts extrapolation of a single drawing, embodiment
in the prior art patent, and otherwise relied on the
experts improper conclusory testimony that failed to
consider the entire reference; also, expert testimony that a
reference does not anticipate is no substitute for the
actual disclosure of the reference); Cordance, 9/23/11
(reversing JMOL of no invalidity and finding anticipation
as a matter of law by the accused infringers prior art
online ordering system, based on expert testimony);
Retractable Techs., 7/8/11 (no anticipation based on
expert testimony that claim element was missing from
prior art references); Tessera, 5/23/11 (substantial
evidence supported the ITCs determination of no
anticipation by any of three prior art references); Old
Reliable Wholesale, 3/16/11; Silicon Graphics, 6/4/10;
Orion, 5/17/10 (anticipation found where the claims did
not specify, limit the disputed proposal element as the
patentee argued); Verizon, 4/16/10; Pressure Products,
3/24/10; Amgen, 9/15/09; In re Skvorecz, 9/3/09 (BPAI
erred in holding, based on use of the transitional term
comprising in the claims, that some wire legs of the
1555
claimed device need not have an offset, when the claims
stated that each wire leg has an offset); Exergen, 8/4/09;
In re McNeil-PPC, 7/31/09 (BPAIs anticipation finding
was not close -- supported by not substantial evidence,
indeed, no evidence); Blackboard, 7/27/09 (prior art
contained every claim limitation once the claims were
properly construed by the CAFC as not requiring a
single login limitation relied on by the district court);
Ecolab, 6/9/09 (prior art reference that disclosed all
limitations of the claimed process anticipated even
though also disclosed additional steps); Sanofi-
Synthelabo, 12/12/08; Net Moneyin, 10/20/08; Kyocera
Wireless, 10/14/08 (collection of eleven separate GSM
specifications, written by different authors at different
times, together did not constitute a coherent whole
document with a single prior art date, and thus was not a
single reference for anticipation); Praxair, 9/29/08;
Broadcom, 9/24/08 (rejecting argument that claim as
construed by the district court was self-invalidating
based on generic prior art in the specification; antedating
prior art references also addressed); CSIRO, 9/19/08
(combination of references considered if second
reference properly incorporated by reference into the first
reference); In re Omeprazole, 8/20/08 (no anticipation of
claim terms, as properly construed); Voda, 8/18/08;
Finisar, 4/18/08; SRI Intl, 1/8/08; Zenon Environmental,
11/7/07 (grandchild patent anticipated by grandparent
patent); In re Buszard, 9/27/07 (flexible foam is not rigid
foam made flexible); stated another way, anticipation
occurs when one skilled in the art would reasonably
understand or infer from the prior arts teaching that
every claim element and limitation was disclosed in a
single prior art reference (Liebel-Flarsheim, 3/22/07;
Hakim, 2/23/07; Nystrom, 9/14/05; Arthrocare, 5/10/05;
Akamai, 9/15/03); See also In re Rehrig Pacific, 1/30/12
(nonprecedential reversing BPAI where no substantial
evidence that prior art reference teaching pallets, which
carry goods, taught the top frame limitation, which are
1556
placed only on top of goods to stabilize them); In re
Daneshvar, 2/18/10 (nonprecedential prior art patent
did not anticipate the claimed strap made of material this
was both stretchable and capable of attaching directly to
the attachment means); In re Guess, 6/9/09
(nonprecedential claim relying only on a single means-
plus-function limitation to distinguish itself from prior art
was broad enough based on multiple disclosed
corresponding structures in the specification to be
anticipated by a prior art reference); In re Wheeler,
12/19/08 (nonprecedential reversing the BPAIs
rejection based on anticipation, where the prior art clearly
did not teach the claimed fishing pole, as correctly
construed by the CAFC)
- To anticipate, a prior art reference must place the

inventive compound or composition in the
possession of the public (Sanofi-Synthelabo,
12/12/08 (enantiomer not anticipated by prior art
disclosure of its racemate accompanied by general
statement that the prior art invention includes
both enantiomeric forms or their mixture);
Impax Labs, 10/3/08; Pharmastem, 7/9/07 (J.
Newman, dissenting); Eli Lilly, 12/26/06)
- Anticipation requires that the identical invention

be described in the prior art reference (In re
Skvorecz, 9/3/09)
- Dispositive question regarding anticipation is

whether one skilled in the art would reasonably
understand or infer from a prior art reference that
every claim element is disclosed in that reference
(In re Montgomery, 5/8/12; Astrazeneca, 11/1/10
(expert testimony supported no anticipation based
on a lack of clinical knowledge at the time of the
prior art reference regarding the claimed once-a-
day feature)); See also Bennett Marine, 9/19/13
1557
(nonprecedential rejecting anticipation argument
of an implicit disclosure of claim element in a
prior art reference, based on estoppel or waiver
from arguing the absence of the element from the
reference where the patentee failed to argue the
same for a similar reference during the PH);
Rambus, 6/28/13 (nonprecedential reversing the
BPAIs anticipation finding where it failed to pick
one of its four theories of anticipation as the most
persuasive, which thus caused questions about its
confidence in the rejection; also noting nothing in
the record indicating the BPAI considered prior
ITC decisions finding the patent claims were not
anticipated by the same patent disclosure; see also
J. Wallach, dissenting the BPAIs anticipation
finding was supported by substantial evidence
because a reasonable person could conclude that
the prior art patent met the claim language);
Mitsubishi Chemical, 8/2/11 (nonprecedential
In order to anticipate, the teaching of a reference
must be clear and unambiguous In re Turlay
(CCPA))
- Anticipation requires that within the four corners

of a single prior art reference is described every
element of the claimed invention (In re
Montgomery, 5/8/12 (anticipation is a two-step
process claim construction, followed by
comparing the claims to the prior art reference);
Old Reliable Wholesale, 3/16/11 (rejecting
anticipation argument based solely on the prior art
and infringing products being functionally
equivalent); Spansion, 12/21/10; TriMed, 6/9/10;
Iovate Health Sciences, 11/19/09 (published
advertisement taught all the limitations of the
claimed method, even if the claim preamble was
limited to requiring an amount of the recited
composition effective for achieving the recited
1558
purpose); Callaway, 8/14/09; Net Moneyin,
10/20/08 (statement embodies the requirement in
Section 102 that the anticipating invention be
described in a printed publication and is
unimpeachable; but it does not tell the whole
story because the hallmark of anticipation is
prior invention and thus the prior art reference
must also disclose those elements arranged as in
the claim); Xerox, 6/8/06); See also In re Eaton,
11/22/13 (nonprecedential the PTAB was not
faithful to its claim construction in finding the
prior art composition anticipatory as essentially
free of antioxidants, which was construed as not
resulting in reduced effectiveness, rather than
meaning effective)
- All limitations of a claimed invention need

be described in a single reference, rather
than in a single example in a reference
(Clearvalue, 2/17/12 (disclosure in prior art
reference that chemical process worked for
systems with 150 ppm or less anticipated the
claimed range of 50 ppm or less (despite an
example in the reference teaching 60-70
ppm), where there was no allegation of
criticality or evidence demonstrating any
difference across the range); Krippelz,
1/27/12 (district courts reliance on expert
testimony that a drawing in a prior art patent
did not anticipate was improper, where the
claimed invention was anticipated based on
the entire reference); Net Moneyin, 10/20/08
(n.5: explaining Glaxo rule, stating that the
court must look at the prior art reference as a
whole (rather than example-by-example)
and conclude whether or not that reference
discloses all elements of the claimed
1559
invention arranged as in the claim); Glaxo,
7/27/04)
- Expert testimony that a reference does not

anticipate is no substitute for the actual
disclosure of the reference (Krippelz,
1/27/12)
- Testing evidence to replicate prior art to

show anticipation, e.g., models, re-creations
need for authentication to admit into
evidence (Callaway, 8/14/09 (testimony of
persons involved in preparing and testing
prior art golf balls may have been sufficient
to authenticate the balls for admission into
evidence))
- All claim limitations, elements must be found,

expressly or inherently, in a single prior art
reference (Alexsam, 5/20/13 (n.10); Arcelormittal
France, 11/30/12; Whitserve, 8/7/12; In re
Montgomery, 5/8/12; Clearvalue, 2/17/12; Bard,
2/10/12 [vacated in part after remanded on
6/14/12]; In re NTP I, 8/1/11; American Calcar,
6/27/11; Billups-Rothenberg, 4/29/11; Crown
Packaging, 4/1/11; In re Jung, 3/28/11; Old
Reliable Wholesale, 3/16/11; Spansion, 12/21/10;
King, 8/2/10 (affirming anticipation by inherency);
TriMed, 6/9/10; Orion, 5/17/10 (anticipation
proven based on expert and fact testimony, and
documentary evidence, regarding the prior art
reference); Yorkey I, 4/7/10 (anticipation for
establishing an interference-in-fact); Marrin,
3/22/10 (claim anticipated after concluding the
preamble was not limiting; see also J. Newman,
dissenting, stating that the majority misunderstood
the law of anticipation, which requires that the
same invention was previously known and
1560
described in the prior art); Therasense, 1/25/10
(adding the requirement that the claimed
arrangement or combination of those elements
must also be disclosed, either expressly or
inherently, in that same prior art reference see
below); Iovate Health Sciences, 11/19/09
(published advertisement taught the claimed
method of using a nutritional supplement);
Callaway, 8/14/09; Exergen, 8/4/09 (method
performed by prior art reference inherently
disclosed (multiple areas) limitation); Ecolab,
6/9/09 (explaining that anticipation is proven by
testimony from one skilled in the art (an expert)
showing how each construed claim element is
disclosed in the prior art - Schumer); Linear Tech.,
5/21/09; In re Gleave, 3/26/09; Sanofi-Synthelabo,
12/12/08; Kyocera Wireless, 10/14/08; Voda,
8/18/08; Finisar, 4/18/08; SRI Intl, 1/8/08;
Pharmastem, 7/9/07 (J. Newman, dissenting); In re
Omeprazole, 4/23/07 (see also J. Newman,
dissenting); Liebel-Flarsheim, 3/22/07; Eli Lilly,
12/26/06; Planet Bingo, 12/13/06; Sanofi-
Synthelabo, 12/8/06; Impax Labs, 11/20/06;
Amgen, 8/3/06; Atofina, 3/23/06; Perricone,
12/20/05; IPXL Holdings, 11/21/05; Union
Carbide, 10/3/05); See also Comaper, 9/6/13
(nonprecedential reversing and remanding JMOL
of anticipation because the district court erred in
concluding the jury verdict lacked substantial
evidence, where the movant failed to prove
anticipation by C&C evidence over several prior
art devices, based on the CAFCs prior
construction of a claim term which included a size
and location limitation relative to a computer
(applying (strict) 3rd Cir. law)); NYU, 8/7/13
(nonprecedential district court erred by not
addressing additional limitation in dependent
method of treatment claims that the tetracycline
1561
have substantially no anti-microbial activity in
finding anticipation of the asserted claims); In re
Giuffrida, 7/18/13 (nonprecedential no
anticipation where prior art reference did not
inherently disclose (preamble) limitation that
device be portable); In re Pond, 1/18/12
(nonprecedential device having unitary, one-
piece construction was anticipated by patent in
which an embodiment of the disclosed device was
made the same way); Clearwater Systems, 8/30/10
(nonprecedential district court improperly
compared the claims to the patents description of
the prior art reference)
- Anticipation requires the specific description

as well as enablement of an embodiment of
the claimed subject matter (Clearvalue,
2/17/12; Bard, 2/10/12 [vacated in part
after remanded on 6/14/12]; American
Calcar, 6/27/11; Iovate Health Sciences,
11/19/09 (published advertisement also
enabled the claimed method of using a
nutritional supplement, at least in view of
the knowledge in the art at the time, as
evidenced by other prior art cited in the
patent in suit, citing In re Gleave); In re
Gleave, 3/26/09; Sanofi-Synthelabo,
12/12/08 (claimed substantially pure
enantiomer not anticipated by prior art
disclosure of its racemate)); See also
Enablement of prior art
- Every element, limitation of the

claimed invention must be described,
either expressly or inherently, within
a single prior art reference, and enable
one of skill in the art to practice an
embodiment of the claimed invention
1562
without undue experimentation
(affirming the rejection of expert
testimony in pre-verdict JMOL as
conclusory and lacking sufficient
detail, and thus insufficient evidence
to reach the jury); Whitserve, 8/7/12;
Clearvalue, 2/17/12 (example in prior
art reference of 60-70 ppm supported
the fact that the disclosure in the
reference of 150 ppm or less taught
one skilled in the art how to make and
use the claimed process at 50 ppm or
less); Bard, 2/10/12 [vacated in part
after remanded on 6/14/12];
American Calcar, 6/27/11 (prior art
reference anticipated under the proper
construction, citing In re Gleave);
Spansion, 12/21/10; Orion, 5/17/10;
Iovate Health Sciences, 11/19/09;
Callaway, 8/14/09; In re Gleave,
3/26/09); See also Stored Value
Solutions, 12/10/12 (nonprecedential
citing In re Gleave)
- Actual application in which a prior art

reference is employed is irrelevant to
anticipation reference anticipates as
long as it discloses all of the claim
limitations and enables the subject
matter within the scope of the claims
(American Calcar, 6/27/11 (rejecting
argument for no anticipation based on
the reference suggesting an annoying
volume of alarm because used in
nuclear power facilities that would
prompt the user to decline an option))
1563
- Ipsissimis verbis test need not be satisfied by
the reference In re Bond (Whitserve,
8/7/12; In re Gleave, 3/26/09)
- Impractical technology (e.g., too expensive,

less than optimal) disclosed in the prior art
reference does not undermine an otherwise
anticipatory disclosure (Leggett & Platt,
8/21/08)
Disclosure of claim elements arranged as in the claim

is required
- Disclosure of each element in a single reference is

not enough [a]nticipation requires the presence
in a single prior art disclosure of all elements of a
claimed invention arranged as in the claim
Connell (Cheese Systems, 8/6/13 (affirming SJ of
no anticipation where no clear and unambiguous
teaching in the prior art patent); Synqor, 3/13/13
(prior art thesis failed to disclose all elements
arranged as required by the claims); Whitserve,
8/7/12; Wrigley, 6/22/12; Crown Packaging,
4/1/11; Therasense, 1/25/10 (jury instruction on
anticipation was incorrect that made sufficient, for
anticipation, a prior art disclosure of individual
claim elements that could have been arranged in
a way that was not itself described or depicted in
the alleged anticipatory reference); In re Gleave,
3/26/09; Sanofi-Synthelabo, 12/12/08; Abbott
Labs, 10/21/08 (J. Newman in the same form
and order as in the claim); Net Moneyin, 10/20/08
(stating that the test is more accurately understood
to mean arranged or combined in the same way
as in the claim); Praxair, 9/29/08; Finisar, 4/18/08
(reversing jury verdict and finding anticipation,
where the question on appeal focused on the
interrelationships between the claim elements as
1564
compared to the prior art disclosure, as well as the
correct interpretation of the prior art reference));
See also Respironics, 7/8/11 (nonprecedential
reversing SJ of no anticipation, based on testimony
from both partys experts that a prior art article
disclosed all of the claim elements in a manner that
did not require the disclosed elements to be
rearranged to obtain the claimed invention)
- Arranged or combined in the same way is

in the claim for anticipation - the arranged
as in the claim requirement applies to all
claims and refers to the need for an
anticipatory reference to show (to prove
prior invention) all of the limitations of the
claims arranged or combined in the same
way as recited in the claims, not merely in a
particular order (Whitserve, 8/7/12; Wrigley,
6/22/12 (anticipation, citing Net MoneyIn,
and distinguishing genus-species cases, i.e.,
cases in which anticipation turns on whether
the genus was of such a defined and limited
class that a POS in the art could at once
envisage each member of the genus, citing
Eli Lilly thus, the anticipation question
was whether the number of categories and
components in the prior art reference was so
large that the claimed combination would
not be immediately apparent to a POS in the
art, citing Perricone; see also J. Newman,
dissenting distinguishing Perricone from
the facts, and opining that the claimed
combination would not have been at once
envisaged from the prior art reference, and
stating that an anticipating reference must
show the specific ingredients and direct their
selection such that the specific combination
is deemed to have existed citing Impax
1565
Labs for rule that the specific combination
must be at once envisaged); Vizio, 5/26/10
(no anticipation); Therasense, 1/25/10 (The
way in which the elements are arranged or
combined in the claim must itself be
disclosed, either expressly or inherently, in
an anticipatory reference - citing Net
MoneyIn; rule is not altered by inherency);
Linear Tech., 5/21/09 (no anticipation, citing
Net Moneyin); In re Gleave, 3/26/09 (citing
Net Moneyin); Net Moneyin, 10/20/08
(combining different parts of separate
protocols in the prior art reference was not
anticipation))
Lists and limited genuses in prior art reference

anticipate
- Prior art anticipates even if the relevant disclosure

is part of a long list or is not emphasized; a prior
art reference need only be an enabling disclosure
(Wrigley, 6/22/12 (claimed chewing gum
composition was anticipated by separate listings of
the claimed components in prior art reference
using terms particularly preferred and most
suitable to describe the components; see also J.
Newman, dissenting distinguishing Perricone
from the facts, and opining that the claimed
combination would not have been at once
envisaged from the prior art reference); In re
Gleave, 3/26/09 (prior art listing of 1400
oligonucleotide sense sequences, along with
description of general concepts of antisense
technology, anticipated claimed antisense
inhibitors); Leggett & Platt, 8/21/08; Perricone,
12/20/05)
1566
- List vs. genus of compounds in the prior art
are often treated differently under the case
law the distinction collapses when the
class of compounds within the genus is
limited such that all species can be at once
envisaged (Arcelormittal France, 11/30/12
(reversing denial of JMOL of no anticipation
because the district court improperly relied
on inherency and the at once envisage rule
under In re Petering, where the prior art
reference did not disclose the claimed
aluminum coating or there was not
substantial evidence that aluminum
belonged to a sufficiently definite and
limited class of possible coatings,
distinguishing In re Petering); Wrigley,
6/22/12 (see also J. Newman, dissenting); In
re Gleave, 3/26/09 (rejecting policy
arguments in support of novelty, irrespective
of whether the prior art reference disclosed a
generic statement rather than a long list of
compounds)); See also Pharma Genus-
species
- Process claim anticipated by

intermediate step in the prior art
(Abbott Labs, 11/9/06)
Additional functions, purposes in prior art reference

are not relevant to anticipation
- Additional functions, purposes in the prior art

reference to those claimed are not relevant to
anticipation Exergen (Orion, 5/17/10 (prior art
reference was not distinguishable because could
display wholesale prices in addition to retail prices,
where the disputed proposal limitation did not
specify the type of pricing))
1567
- Different purposes of the prior art and the
claimed invention are not relevant to
anticipation (Leggett & Platt, 8/21/08)
Anticipation vs. obviousness
- Differences between a prior art reference and the claimed

invention, however slight, invoke the question of
obviousness, not anticipation; for anticipation, the
claimed subject matter must be identically disclosed or
described in the prior art, i.e., without any need for
picking, choosing, and combining various disclosures not
directly related to each other by the teachings of the cited
reference In re Arkley (CCPA) (Linear Tech., 5/21/09
(requires that the identical invention be previously
known); Sanofi-Synthelabo, 12/12/08; Net Moneyin,
10/20/08)
- Product not patentable if based on merely a new

use for an existing product (In re Ngai, 5/13/04
(adding new instructions did not render an existing
product newly patentable))
Interpreting the prior art reference
- Interpreting the prior art - anticipation is dependent on

the correct interpretation of a prior art reference (Finisar,
4/18/08 (prior art reference was anticipating based on
rules or guidelines of English grammar, including the
placement of a comma within a sentence or paragraph,
and the doctrine of last antecedent))); See also
INVALIDITY GENERALLY Scope and
interpretation of prior art reference
Accidental/unappreciated prior art
1568
(Abbott Labs, 11/9/06; Schering, 8/1/03)
- See also Inherency
Biotech/Pharma
Biotech
- Deposit required for enabling prior art
- Deposit required for enablement when invention depends

on the use of living materials, such as microorganisms or
cultured cells may be impossible to enable invention
solely by means of a written disclosure In re Wands
(Amgen, 8/3/06)
- Prior art patent was not enabled due to the

patentees failure to adequately describe how to
derive the starting materials, or deposit the cells
(Amgen, 8/3/06)
- Identification and characterization of a prior art nucleotide

sequence does not make it novel the nucleotide sequence of a
gene is its structure, identity, and not a property (In re Crish,
12/21/04)
Pharma
Anticipation by possession
- To anticipate, a prior art reference must place the inventive

compound or composition (or new method of use of an old
compound) in the possession of the public, i.e., one of ordinary
skill (Sanofi-Synthelabo, 12/12/08 (claimed substantially
separated enantiomer was not anticipated by prior art
disclosure of its racemate); Abbott Labs, 10/21/08 (J. Newman
prior art reference failed to describe the claimed drug product
or enable the claimed pharmacokinetic properties); Impax Labs,
1569
10/3/08 (agreeing with the district courts findings of lack of
enablement of a prior art patent, based on weighing the Wands
factors, which would have required undue experimentation to
gain possession of the invention, including identifying the
compound riluzole as a treatment for ALS and devising dosage
parameters); Eli Lilly, 12/26/06)
- Dosage information in the prior art non-enabling where

prior art dosage guidelines are broad and general without
sufficient direction or guidance to prescribe a treatment
regimen (Impax Labs, 10/3/08)
- Showing compositional differences between prior art and

claimed compositions based on a difference in properties;
claimed compositions are otherwise inherent in the prior
art (Aventis Pharma, 5/14/08)); See also Inherency;
and OBVIOUSNESS Unexpected results
Genus-species
- Genus-species - prior genus does not necessarily prevent

patenting of a species (In re Gleave, 3/26/09 (distinguishing
genuses from lists in a prior art reference); Sanofi-Synthelabo,
12/12/08 (district court correctly found that a prior art
references general statements that the disclosed racemates
included their enantiomers did not anticipate the claimed
separated enantiomer); In re Basell, 11/13/08 (obviousness-type
double patenting - later claimed species were not patentably
distinct from earlier patented genuses); Eli Lilly, 12/26/06;
Sanofi-Synthelabo, 12/8/06; Atofina, 3/23/06; Upsher-Smith,
6/17/05)
- Narrow genus (containing definite and limited class of

compounds, limited number of specific preferences)
discloses each species In re Petering, In re Schaumann
(In re Gleave, 3/26/09; Eli Lilly, 12/26/06; Sanofi-
1570
- When prior art reference discloses a class of
compounds, i.e., a genus, a POS in the art should
be able to at once envisage each member of the
class for the individual compounds, i.e., species, to
be enabled In re Petering (CCPA); if the
members cannot be envisioned, the reference does
not disclose the species and the reference is not
enabling (Eli Lilly, 12/26/06; Impax Labs,
11/20/06)
- Unexpected results are necessary for

patentability of a species over a prior art
claimed genus (Takeda, 6/28/07 (J. Dyk,
concurring))
- Prior art disclosing generic formula with single

variable, with preferences disclosed for variable =
limited class of compounds In re Schaumann (Eli
Lilly, 12/26/06; Sanofi-Synthelabo, 12/8/06)
- Pattern of preferences Petering, Schaumann narrow

prior art genus to a narrow class of compounds that
includes claimed species, e.g., to anticipate claimed salt
form of species, prior art must treat as a preferred salt
(Sanofi-Synthelabo, 12/12/08 (district court did not
clearly err in finding that prior art disclosure of racemate
would not have led one of ordinary skill to recognize
either an explicit or inherent disclosure of its
dextrorotatory enantiomer); Sanofi-Synthelabo, 12/8/06)
- Species anticipates a genus (Aventis Pharma, 9/11/07;

Atofina, 3/23/06); See also Chapman, 3/11/09
(nonprecedential claims to a method for making
oxycodone were construed as genus claims anticipated or
rendered obvious by prior art species; see also J. Rader,
dissenting opining that the invention, which discovered
a problem and solution related to making pure
1571
oxycodone, was entitled to patent protection (although
not addressing the majoritys claim construction))
Enantiomers
- Enantiomers prior art disclosure of racemic compound

inherently discloses enantiomer? In re Adamson (Sanofi-
Synthelabo, 12/12/08 (prior art racemate did not anticipate its
separated enantiomer, expressly or inherently, distinguishing
Adamson; prior art patent also not enabling as required undue
experimentation to separate enantiomer from racemate, where
the reference did not teach how to obtain the enantiomer, citing
Forest Labs); Forest Labs, 9/5/07 (prior art reference failed to
enable separation of claimed enantiomer from racemate; prior
art also favored other enantiomer); Sanofi-Synthelabo, 12/8/06)
- Claim to a salt of an enantiomer is not anticipated by a

prior art racemate (Sanofi-Synthelabo, 12/12/08
(distinguishing Adamson and May as addressing
rejections for obviousness, and thus neither case stated or
suggested that a previously unseparated and unknown
enantiomer might be deemed anticipated by the known
racemate); prior art reference must expressly disclose, or
almost disclose, the claimed compound, e.g., HBr salt
anticipates claimed HCl salt when the prior art teaches
both salts are preferred In re May (Sanofi-Synthelabo,
12/8/06)
- Knowledge that enantiomers may be separated is not

anticipation of a specific enantiomer that has not been
separated, identified, and characterized (Sanofi-
Claim covering several compositions (e.g., ranges) anticipated if

the prior art contains one Titanium Metals
1572
(Aventis Pharma, 4/9/12 (applying the rule in affirming
obviousness where the claim was to a composition and not a
perfusion, as suggested by the patentee); King, 8/2/10;
Fresenius, 9/10/09 (claim element written in Markush form was
disclosed by the prior art where one alternative in the Markush
group was in the prior art); Atofina, 3/23/06; Medichem,
12/23/03); See also In re Haase, 10/30/13 (nonprecedential
affirming anticipation of claimed range of ammonium polymers
by the disclosure of one polymer in the prior art reference); In
re POD-NERS, 7/10/09 (nonprecedential applying Titanium
Metals to support the obviousness of claimed yellow beans over
prior art yellow beans, absent a showing of different
properties); Chapman, 3/11/09 (nonprecedential genus
method claims were obvious over prior art species); See also
Ranges
- Species anticipates a genus, and not vice versa

Titanium Metals (Atofina, 3/23/06)
Derivation 35 USC 102(f)
(Creative Compounds, 6/24/11; Intl Rectifier (2), 3/18/04; U.

Rochester, 2/13/04)
- Patentee must have invented the claimed subject matter

35 USC 102(f) (U. Rochester, 2/13/04)
- Derivation to establish derivation, must prove both

prior conception of the invention by another and
communication of that conception to the patentee
Eaton (Creative Compounds, 6/24/11 (affirming SJ of no
invalidity where no genuine issues of material fact
concerning an alleged prior conception, and no record
evidence presented supporting any communication of the
conception or that the alleged communicator actually
knew of the claimed subject matter))
1573
- Prior inventors testimony must be corroborated
testimony in support of a claim of derivation or
priority of invention cannot, standing alone, rise to
the level of C&C proof Price (Creative
Compounds, 6/24/11)
Drawings in the prior art
- Values, dimensions cannot be read into a prior art

drawing when the specification of the prior art reference
does not describe them (Krippelz, 1/27/12 (district
courts finding lack of anticipation based on experts
extrapolating from a drawing in a prior art patent based
on his measurements of the drawing was improper --
must look at the entire reference, stating that the CAFC
has repeatedly cautioned against overreliance on
drawings that are neither expressly to scale nor linked to
quantitative values in the specification - citing
Nystrom); Nystrom, 9/14/05); See also Thomson
Licensing, 6/19/13 (nonprecedential affirming the
ITCs finding of anticipation which was supported by
substantial evidence, including consistent shading in the
figures showing the claimed components were formed on
the same layer, as further supported by expert testimony);
Plasmart, 5/22/12 (nonprecedential anticipation by
drawings applying rule that drawings can be used as
prior art, without referring to the surrounding description,
only if the prior art features are clearly disclosed by the
drawing citing In re Wagner (CCPA) (immaterial
whether the prior patentees showing was accidental or
intentional))
(In re Morsa, 4/5/13 (rejecting the BPAIs enablement analysis,

where although not submitting expert evidence in challenging
1574
the enablement of a cited prior art reference (press release), the
applicant identified specific, concrete reasons why the cited
reference was not enabling, and the BPAI and examiner
improperly failed to address the arguments; also, the proper
comparison is between the disclosure of the prior art reference
and the proposed claimed invention, rather than a comparison
of the disclosures of the prior art reference and application); In
re Antor Media, 7/27/12; In re Montgomery, 5/8/12
(inherency); Bard, 2/10/12 [vacated in part after remanded
on 6/14/12]; In re NTP I, 8/1/11; Billups-Rothenberg, 4/29/11;
Astrazeneca, 11/1/10; Orion, 5/17/10; Verizon, 4/16/10; Iovate
Health Sciences, 11/19/09; Ecolab, 6/9/09; In re Gleave,
3/26/09; Sanofi-Synthelabo, 12/12/08; Abbott Labs, 10/21/08
(J. Newman); Impax Labs, 10/3/08; Finisar, 4/18/08; SRI Intl,
1/8/08; Forest Labs, 9/5/07; In re Omeprazole, 4/23/07 (J.
Newman, dissenting, citing cases); Impax Labs, 11/20/06;
Amgen, 8/3/06; Novo Nordisk, 10/5/05; Rasmusson, 6/27/05;
Arthrocare, 5/10/05; Elan, 10/2/03; Schering, 8/1/03)
Generally
- To anticipate, a prior art reference must not only disclose

all of the limitations of the claimed invention, but must
also be enabling; a reference is enabling when its
disclosures are sufficient to allow one of skill in the art to
make (utility or efficacy need not be shown) the claimed
invention without undue experimentation (In re Antor
Media, 7/27/12 (applicant failed to show that undue
experimentation was required to perform the claimed
invention based on the teaching of prior art reference;
rejecting argument that forward-looking statements (e.g.,
should) in the prior art reference evidenced undue
experimentation); Bard, 2/10/12 [vacated in part after
remanded on 6/14/12]; In re NTP I, 8/1/11 (protocols in
the prior art reference functioned as a guide to teach one
of ordinary skill how to implement the disclosed system
without undue experimentation); Orion, 5/17/10;
1575
Verizon, 4/16/10; Iovate Health Sciences, 11/19/09
(published advertisement in view of the knowledge in the
art at the time enabled the claimed method, even if the
claim required administering an effective amount of the
recited composition); Ecolab, 6/9/09 (the patentees
evidence of undue experimentation required to develop
its own product failed to overcome anticipation where the
patentee presented no evidence that the disputed claim
was not enabled by the prior art process); In re Gleave,
3/26/09 (clarifying that there is no utility requirement for
a prior art reference to be anticipatory, stating that a
thorough reading of the CAFC case law makes clear
that a reference need disclose no independent use or
utility to anticipate a claim under 102; thus, the prior
art reference need only teach one skilled in the art how to
make the claimed invention; also, make and use mean the
same thing for a prior art reference to anticipate a
claimed method); Sanofi-Synthelabo, 12/12/08 (prior art
patent disclosing racemate did not enable the separation
of its enantiomer, as required undue experimentation);
Impax Labs, 10/3/08 (stating that a prior art reference
must enable one of ordinary skill in the art to make the
claimed invention without undue experimentation);
Forest Labs, 9/5/07 (substantially pure drug
compound); Impax Labs, 11/20/06 (the proper issue is
whether the prior art reference describes the claimed
invention sufficiently to enable a POS in the art to carry
out the invention); Amgen, 8/3/06 (stating that a prior
art reference is enabling when its disclosures are
sufficient to allow one of skill in the art to make and
use the claimed invention)); See also Sram, 2/26/10
(nonprecedential)
- Prior art reference need not enable its full

disclosure, but rather only the portions of the
disclosure alleged to anticipate the claimed
invention (In re Antor Media, 7/27/12)
1576
- Enablement of an anticipatory reference may be
demonstrated by a later reference Bristol-Myers
(In re Gleave, 3/26/09 (n.3: distinguishing In re
Wiggins))
- Failures by others to make the claimed invention

based on prior art reference supports
nonenablement of the prior art (Bard, 2/10/12 (no
anticipation was supported by the fact that others
were unable to replicate the work in the prior art
reference) [vacated in part after remanded on
6/14/12]; Forest Labs, 9/5/07)
- Prior art must be enabling and show possession by

one of skill in the art of the claimed invention
(Sanofi-Synthelabo, 12/12/08 (prior art patent did
not enable separation of enantiomer from its
disclosed racemate); Abbott Labs, 10/21/08 (J.
Newman prior art reference failed to describe the
claimed drug product or enable the claimed
pharmacokinetic properties); Impax Labs, 10/3/08
(undue experimentation would have been required
to gain possession of the use of a disclosed
compound to treat ALS); Impax Labs, 11/20/06;
Arthrocare, 5/10/05)
- Prior art must sufficiently describe the claimed invention

to have placed the public in its possession i.e., combine
the description of the invention in the publication with
one skilled in the arts own knowledge - Elan (Iovate
Health Sciences, 11/19/09 (published advertisement
enabled the claimed method of using nutritional
supplements to improve muscle performance, at least
when viewed with the knowledge of one skilled in the
art, as evidenced by other prior art cited in the patent in
suit including teachings of acceptable clinical dosages);
Impax Labs, 10/3/08; SRI Intl, 1/8/08 (specification
confirmed that methods were known in the art); Impax
1577
Labs, 11/20/06); also must be able to make the claimed
invention without undue experimentation (Impax Labs,
10/3/08; Forest Labs, 9/5/07; In re Elsner, 8/16/04)
- Like a patent, a prior art reference is enabling even

if some routine experimentation is required in
order to practice a claimed invention, but such
experimentation must not be undue (Amgen,
8/3/06)
- Undue experimentation (Impax Labs,

10/3/08; Elan, 10/2/03)
- When considering whether or not a

prior art reference requires undue
experimentation, a court examines the
reference from the perspective of a
POS in the art In re Wands (In re
Antor Media, 7/27/12 (no undue
experimentation where the knowledge
of the POS in the art was quite
advanced); Sanofi-Synthelabo,
12/12/08 (district court did not clearly
err in finding undue experimentation
required to separate enantiomer from
prior art racemate); Amgen, 8/3/06)
- In re Wands factors apply

standard of reasonableness
(Sanofi-Synthelabo, 12/12/08;
Impax Labs, 10/3/08 (affirming
the district courts findings that
a prior art patent was not
enabling (and thus
anticipating), based on the
Wands factors); Elan, 10/2/03)
1578
- Expert testimony unnecessary
where the prior art reference
itself provides the needed
evidence of enablement (In re
NTP I, 8/1/11)
- Plant patents non-enabling printed publication of

claimed plant, coupled with foreign sales of the
plant that enable POS in the art to practice asexual
reproduction = possession foreign sales are
analogous to deposit of a biological organism to
satisfy the enablement requirement; difference
between plants and manufactured articles -
LeGrice (In re Elsner, 8/16/04)
Anticipation by prior art vs. enablement of the claimed

invention
- Anticipation by a prior art reference (and that the

reference need be enabling) is determined under a
different standard than enablement of the claimed subject
matter under 112, 1 Novo Nordisk (Astrazeneca,
11/1/10; Verizon, 4/16/10; SRI Intl, 1/8/08 (lower
enablement standard for prior art under 35 USC
102(b))) standard for anticipation - a prior art
reference need not enable one of skill in the art to use
the invention for anticipation under 102 while 112
provides that the specification must enable one skilled in
the art to use the invention, 102 makes no such
requirement as to an anticipatory disclosure; the prior art
reference need not demonstrate utility or proof of
efficacy (e.g., for a method of treating a disease) to be
enabling for anticipation Bristol-Myers Squibb
(Astrazeneca, 11/1/10 (see also J. Bryson, dissenting
prior art reference need not have expressed once-a-day
use of drug product); In re Gleave, 3/26/09 (prior art
reference, along with the skill of an ordinary person in
1579
the art, enabled making the claimed oligonucleotides);
Impax Labs, 11/20/06; Novo Nordisk, 10/5/05;
Rasmusson, 6/27/05); See also Sram, 2/26/10
(nonprecedential ruling that the cited prior art reference
contained an enabling disclosure in the sense of section
102 and stating: It is well-settled that utility or efficacy
need not be demonstrated for a reference to serve as
anticipatory prior art under section 102); See also
ENABLEMENT Enablement of claims vs.
anticipatory prior art
Invention of the prior art need not have been made
- Invention in the prior art (reference) need not have been

made (or performed) to satisfy the enablement
requirement - In re Donohue (In re Antor Media, 7/27/12
(giving as reason for why forward-looking statements
(e.g., should) in a prior art reference did not show
undue experimentation); In re Montgomery, 5/8/12; In re
Gleave, 3/26/09 (disclosure in prior art reference of sense
sequences enabled claimed antisense sequences, despite
not being made, as no actual creation or reduction to
practice is required Schering); Novo Nordisk, 10/5/05;
Elan, 10/2/03; Schering, 8/1/03); See also Respironics,
7/8/11 (nonprecedential did not matter for anticipation
that prior art reference stated aspect of breathing
apparatus was not actually built - citing Verizon); Sram,
2/26/10 (nonprecedential question for anticipation was
not whether the inventor built or could have built an
operative model of the device described in the cited prior
art reference, but whether the reference disclosed each of
the steps of the claimed method Schering)
- Anticipation does not require actual performance

of suggestions in a disclosure; rather, anticipation
only requires that those suggestions be enabled to
one of skill in the art Donahue (In re Antor
1580
Media, 7/27/12; In re Montgomery, 5/8/12 (claim
would still be anticipated by inherency even if the
prior art reference merely proposed the
administration of ramipril for treatment or
prevention of stroke, without actually doing so
citing Schering); SRI Intl, 1/8/08 (prior art
reference and specification had similar, or even
partially identical, disclosures); Impax Labs,
11/20/06 (remanded for a determination whether a
prior art patent enabled a POS in the art to treat
ALS with a compound (riluzole) disclosed in the
prior art patent, without regard to the efficacy of
such treatment); Novo Nordisk, 10/5/05)
- Verb tense or word choice, e.g., in forward-

looking statements (should), in a prior art
reference, taken without an understanding of the
state of the art and the nature of the invention, shed
no light on enablement (In re Antor Media,
7/27/12)
Presumption of enablement for prior art patent or non-

patent publication
- Presumption of enablement for a prior art patent, or non-

patent publication (cited by the PTO as prior art) - the
patentee or applicant therefore must present persuasive
rebuttal evidence (and prove by a preponderance of the
evidence) that the prior art reference does not enable the
claimed invention, to overcome the presumption
Amgen 2003; the BPAI must then thoroughly review all
evidence and applicant argument to determine if the
reference is enabling (In re Morsa, 4/5/13 (CAFCs
decision in Antor cannot be read to require an applicant
to submit affidavits or declarations to challenge the
enablement of prior art references -- When a reference
appears to not be enabling on its face, a challenge may be
1581
lodged without resort to expert assistance.); Energy
Transportation Group, 10/12/12 (citing rule); In re Antor
Media, 7/27/12 (applying the rule to non-patent
publications in a reexamination); Billups-Rothenberg,
4/29/11 (mutations use as a diagnostic tool was
contemplated in prior art patent despite the inventors of
the patent in suits discovery of its greater diagnostic
utility than initially suspected); Sanofi-Synthelabo,
12/12/08 (ruling that [a]ny presumption of enablement
of prior art does not exclude consideration of whether
undue experimentation [determined based on the Wands
factors] would be required to achieve enablement);
Impax Labs, 10/3/08 (patentee rebutted the presumption,
based on the Wands factors; also, the district court does
not need to specifically articulate the burden-shifting
framework, so long as the court correctly placed the
burden of proving non-enablement on the patentee);
Impax Labs, 11/20/06; Amgen, 8/3/06)
- Presumption exists that both claimed and

unclaimed disclosures in a prior art patent are
enabling (In re Antor Media, 7/27/12 (applying
same rationale to why the presumption also applies
to non-patent publications, which is that it would
be overly cumbersome or impossible to impose on
the PTO the burden of showing that prior art is
enabling, and that the examiner need only give
adequate notice under Section 132 of the
anticipation rejection; presumption was not
rebutted); Sanofi-Synthelabo, 12/12/08; Impax
Labs, 11/20/06; Abbott Labs, 6/22/06); See also
Linear Tech., 8/28/08 (nonprecedential citing
Amgen)
Secondary references to show enablement
1582
- Secondary reference(s) used to show that the primary
102(b) reference was enabling the primary reference
must disclose all elements of the claimed invention
(Iovate Health Sciences, 11/19/09 (published
advertisement disclosed all the elements of the claimed
method of using a nutritional supplement, and also was
enabling, at least as supported by other prior art
references described in the patent in suit); In re Elsner,
8/16/04)
Incorporation by reference in prior art reference
- Incorporation by reference provides a method for

integrating material from various documents into a host
document by citing such material in a manner that makes
clear that the material is effectively part of the host
document as if it were explicitly contained therein
Cook Biotech, Advanced Display Systems (Verizon,
4/16/10 (issue raised); CSIRO, 9/19/08; Zenon
- Material incorporated by reference into a prior art

reference is effectively part of the reference as if
explicitly contained therein (Apple, 8/7/13;
CSIRO, 9/19/08 (combination of references
considered if second reference properly
incorporated by reference into the first reference);
Liebel-Flarsheim, 3/22/07); See also PRIORITY
DATES 35 USC 119, 120 Incorporation by
reference
- To incorporate material by reference, a host

document must contain language clearly
identifying the subject matter which is
incorporated and where it is to be found; a mere
reference to another application, or patent, or
publication is not an incorporation of anything
1583
therein In re de Seversky (CCPA) (Callaway,
8/14/09)
- To incorporate material by reference, the

host document must identify with detailed
particularity what specific material it
incorporates and clearly indicate where the
material is found in the various documents
Cook Biotech, Advanced Display Systems
(Apple, 8/7/13 (ITCs anticipation finding of
disputed claim was not supported by
substantial evidence, where an alleged
priority provisional application failed to
incorporate by reference the anticipatory
material from the cited reference, as
required by the claim limitation, instead
only making a passing reference to the cited
reference as a method similar without
affirmatively incorporating any
information); Callaway, 8/14/09 (one prior
art patent incorporated by reference another
prior art patent disclosing the two claim
elements missing from the host patent for
purposes of anticipation, where the host
patent identified with specificity both what
material was being incorporated by
reference (foamable polymeric compositions
suitable for golf ball cover layers) and where
it may be found (the Molitor patent); also
language in the host document (reference is
made to) was sufficient to indicate
incorporation by reference); Kyocera
Wireless, 10/14/08 (vague referencing
practice where separate technical
specifications cross-referenced each other
and were identified as part of the greater
GSM standard was not sufficient for
meeting the legal requirements for
1584
incorporation by reference, for anticipation);
CSIRO, 9/19/08 (footnote citation, without
comment, in a prior art reference to another
reference failed to incorporate the other
prior art by reference for the combination of
the references to anticipate the claims,
although the citation justified combining the
references for obviousness purposes); Zenon
Environmental, 11/7/07); See also
PRIORITY DATES 35 USC 119, 120
Inherency
Inherency in the prior art - generally
- A prior art reference may anticipate when the claim

limitation or limitations not expressly found in that
reference are nonetheless inherent in it (In re
Montgomery, 5/8/12 (anticipation where carrying out
prior art process of administering ramipril to patients
inevitably produced the claimed result of treating or
preventing stroke, even if the claim included an efficacy
requirement; see also J. Lourie, dissenting an invitation
to investigate is not an inherent disclosure, and opining
that [i]n the unpredictable arts, rarely if ever will an
untested proposal necessitating further study and
optimization meet the stringent inevitability requirement
of inherent anticipation); Bettcher Indus., 10/3/11
(inherency not applicable; see also J. Reyna, dissenting);
Crown Packaging, 4/1/11 (reversing SJ of anticipation
where conflicting expert testimony regarding inherency);
King, 8/2/10 (affirming anticipation where the novel
benefits recited in the claimed methods were inherent in
the prior art methods); Verizon, 4/16/10; Exergen,
8/4/09; In re Gleave, 3/26/09 (not addressing inherency
in finding the claimed compounds anticipated by a prior
art reference, as the claims did not require antisense
1585
activity); Cohesive Techs., 10/7/08 (distinguishing
inherency from obviousness); Leggett & Platt, 8/21/08;
In re Omeprazole, 4/23/07 (see also J. Newman,
dissenting)); See also Mytee Products, 9/2/11
(nonprecedential there is no presumption of inherency
for issued patents - the challenger must prove it with
evidence of inherency distinguishing In re Schreiber);
Clearwater Systems, 8/30/10 (nonprecedential district
court erred in finding method claims inherently
anticipated based on the patents description of a prior art
apparatus must compare the claims to a prior art
reference); Sram, 2/26/10 (nonprecedential clear
admission by the patentees expert that claim features
were inherent in a prior art reference); In re Daneshvar,
2/18/10 (nonprecedential rejecting on appeal secondary
reference presented by the PTO describing Velcro
because the reference was not evidence of record); See
also OBVIOUSNESS Unexpected results
- Limitation or the entire invention can be inherent

in the prior art Schering (Perricone, 12/20/05)
- Admissions of inherency unrebutted prior

admissions of inherency in the prior art were
invalidating (In re Omeprazole, 4/23/07)
- Construe claim (for claim scope) before inherency

determination (In re Omeprazole, 4/23/07)
- Expert testimony to prove inherency (Crown

Packaging, 4/1/11 (conflicting testimony precluded
SJ of anticipation); Exergen, 8/4/09 (patentees
expert admitted inherency); In re Omeprazole,
4/23/07)
- Functional claim language the risk of functional

claiming is that the functional limitation may be an
inherent characteristic of the prior art In re
1586
Schreiber (Bettcher Indus., 10/3/11 (J. Reyna,
dissenting claims anticipated where prior art
blades included all the structural features required
by the claims, and which possessed the capability
of satisfying the functional or intended use
limitations relying on In re Schreiber); Leggett
& Platt, 8/21/08 (claim limitation effective to
substantially cure anticipated so long as the prior
art was able to substantially cure, even though
substantially cured not expressly disclosed)); See
also Mytee Products, 9/2/11 (nonprecedential
distinguishing In re Schreiber, and concluding that
the challenger waived inherency argument by
proposing a functional definition (that serve as
liquid extraction nozzles) for a structural
limitation (apertures))
- Prior art need only meet the inherently disclosed

limitation to the extent that the patented method
does (King, 8/2/10 (patent in suit disclosed no
more than the prior art))
- Invitation to experiment is not inherency

(Metabolite Labs, 6/8/04)
- Secret information cannot anticipate (In re

Omeprazole, 4/23/07 (J. Newman, dissenting))
Knowledge of inherency not required at time of the prior

art
- Knowledge of inherency by a POS in the art is not

required at the time of the prior art Schering, Atlas
Powder (In re Montgomery, 5/8/12; Bettcher Indus.,
10/3/11 (J. Reyna, dissenting no recognition in the prior
art of the capability of prior art blades to satisfy the
features of the claimed blades was required); In re Kao,
1587
5/13/11 (claimed method obvious based on express
teaching in the specification of inherent property of drug
product); Crown Packaging, 4/1/11 (prior cases did not
show that inherency requires recognition of the inherent
element, citing Schering); Leggett & Platt, 8/21/08; In re
Omeprazole, 4/23/07 (see also J. Newman, dissenting:
inherency must be known at the time of the prior art);
Abbott Labs, 11/9/06; Perricone, 12/20/05; Prima Tek II,
6/22/05; SmithKline, 4/8/05 [petition for rehearing en
banc was granted for the limited purpose of vacating
the panels original opinion, dated 4/23/04, addressing
the issue of experimental use negation of 102(b)
public use bar; the new panel decision (J. Rader)
relied on anticipation by inherency to invalidate a
claim to PHC hemihydrate; J. Gajarsa concurred, but
concluded that the claim was invalid because it
encompassed unpatentable subject matter under 35
USC 101; J. Newman dissented from the order
declining rehearing en banc on grounds that
inherent anticipation requires that an inventions
existence be known to a POS in the art at the time of
the prior art, stating that [o]nly after a compound is
identified does it become subject to patenting: if its
existence is not reasonably known to persons of skill
in the field, its later discovery cannot be
retrospectively inherently anticipated; Supreme
Court review also was denied, after the Solicitor
General, representing the views of the U.S.
government, recommended that SKBs petition for
cert. be denied, arguing, based on Supreme Court
precedent, that an unknown, unappreciated
characteristic of a prior art product is not
patentable]; Toro, 1/20/04; Schering, 8/1/03); See also
Sram, 2/26/10 (nonprecedential irrelevant that the prior
art reference did not recognize the inherent feature of the
claim); In re POD-NERS, 7/10/09 (nonprecedential a
non-prior art reference in combination with a prior art
reference describing a yellow bean rendered the claimed
1588
yellow bean obvious, if not anticipated by, the prior art
reference, where the non-prior art reference reported that
the claimed bean was similar or even identical to the
prior art bean)
- Inherent limitation need not be appreciated by a

POS in the art before the critical date of a patent
Schering (In re Omeprazole, 4/23/07; Abbott Labs,
11/9/06; Prima Tek II, 6/22/05)
- Inferring the presence in prior art references of the

claimed subject matter was appropriate for authors
of the prior art, even though positive proof of such
presence was unavailable (Pharmastem, 7/9/07
(obviousness; inherency not used))
Necessary result for inherency
- Necessary result of the prior art, not merely probably or

possibly present (Allergan, 5/1/13 (n.1: record did not
establish inherency of the claimed result of method claim
for obviousness determination); In re Montgomery,
5/8/12; Bettcher Indus., 10/3/11 (rejecting the accused
infringers argument that anticipation by inherency
applied even though chamfers in prior art blades were
allegedly capable of serving as the claimed bearing faces
and bearing race; see also J. Reyna, dissenting); Crown
Packaging, 4/1/11; King, 8/2/10; Therasense, 1/25/10;
Exergen, 8/4/09; Leggett & Platt, 8/21/08 (clarifying the
district courts order that a prior art reference disclosed a
claim limitation as a possibility in the sense that an
embodiment is one of the possibilities (or examples)
disclosed by a patent); In re Omeprazole, 4/23/07 (see
also J. Newman, dissenting); Abbott Labs, 11/9/06;
Atofina, 3/23/06; Perricone, 12/20/05; Glaxo, 7/27/04;
Toro, 1/20/04; Akamai, 9/15/03); See also In re
Giuffrida, 7/18/13 (nonprecedential no anticipation
1589
where nothing in the prior art references disclosure of a
large apparatus established that it must necessarily be
portable); Lacks Indus., 11/21/08 (nonprecedential
on sale bar defense)
- Missing characteristic must be necessarily present,

or inherent, in a single anticipating reference -
Schering (Rexnord, 1/23/13 (less than 10 mm
feature in conveyor belt claim not inherent where
not necessarily present in prior art references); In
re Montgomery, 5/8/12; Bettcher Indus., 10/3/11;
King, 8/2/10; Verizon, 4/16/10; Sd-Chemie,
1/30/09 (prior art disclosure of air-permeable films
necessarily disclosed films that are water-vapor-
permeable); Leggett & Platt, 8/21/08 (prior art
patent anticipated by inherency where disclosed
LEDs necessarily satisfied functional claim
limitation); In re Omeprazole, 4/23/07 (see also J.
Newman, dissenting: prior art reference not
enabling, and secret information is not prior art);
Abbott Labs, 11/9/06; Glaxo, 7/27/04)
- Prior art naturally results in claimed element,

invention (King, 8/2/10; In re Omeprazole, 4/23/07
(claim feature (in situ formation of a separating
layer) was the natural result flowing from the
combination of certain ingredients listed in the
prior art; see also J. Newman, dissenting);
Perricone, 12/20/05; SmithKline, 4/8/05)
- More than the presence of an unrecognized

de minimis quantity of claimed substance in
the prior art is required In re Seaborg
(CCPA) (Crown Packaging, 4/1/11)
- Claimed invention inherent by identical or

substantially identical prior art In re Best
(identical or substantially identical), In re
1590
Spada (CCPA) (virtual identity, same) (In re
Mousa, 4/19/12 (nonprecedential claimed
heparin fractions inherent))
Patentability of a known composition, process
- Novelty cannot be established by claiming a known

material, compound by its newly discovered properties or
uses Titanium Metals, GE (S.C.) (King, 8/2/10; In re
Kubin, 4/3/09 (claiming the newly discovered property of
CD48 binding in a known protein receptor did not render
nonobvious the DNA encoding the receptor); In re
Gleave, 3/26/09 (but if discover a new use for the
compound, one can patent the method of use); Abbott
Labs, 11/9/06; In re Crish, 12/21/04); See also Mytee
Products, 9/2/11 (nonprecedential citing rule, and that
the challenger waived inherency argument by proposing
a functional definition for a structural limitation); See
also OBVIOUSNESS Unexpected results
- Anticipating prior art even though relevant

properties unappreciated, unrecognized in the prior
art (Abbott Labs, 11/9/06)
- Identification and characterization of prior art

material does not make the material novel (In re
Crish, 12/21/04)
- Nucleotide sequence of a gene is its

structure, identity, and not a property (In re
Crish, 12/21/04)
- Old composition is not patentable based on

discovery of a new, even if nonobvious, property
or use In re Spada (Tyco Healthcare, 6/22/11
(claimed compositions reciting narrow dosage
range and dosage (and not tied to product efficacy)
1591
encompassed by prior art dosage range held
obvious, even in the absence of disclosure in the
prior art reference of the effectiveness of such
dosages for improving sleep); In re Kubin, 4/3/09
(obviousness); In re Gleave, 3/26/09; In re Crish,
12/21/04; In re Ngai, 5/13/04 (product not
patentable based on merely a new use for an
existing product))
- New use of a known composition may be

patentable as a process In re Spada (Tyco
Healthcare, 6/22/11 (citing rule))
- New uses of known processes (i.e., different purpose

from the prior art) may be patentable rule applicable
only to process claims, not composition claims Bristol-
Myers Squibb (Abbott Labs, 11/9/06)
- Newly discovered results or benefits of known

processes directed to the same purpose are not
patentable, because those results or benefits are
inherent in the known processes Bristol-Myers
Squibb (Allergan, 5/1/13 (n.1: mentioning rule in
the context of obviousness based on inherency of
method using obvious combination drug product;
see also J. Dyk, dissenting); In re Montgomery,
5/8/12; In re Kao, 5/13/11 (claimed method of
food effect increasing bioavailability of
controlled-release oxymorphone was obvious
where was confirmed by the specification as an
inherent property of the drug citing King); King,
8/2/10 (claimed methods reciting the discovery
that administering metaxalone with food increased
the drugs bioavailability were not patentable over
prior art teachings of administering metaxalone
with food for other reasons); In re Omeprazole,
4/23/07); vs. new uses of old products or processes
may be patentable the principles of inherency do
1592
not prohibit patenting of a new use for an old
structure (Perricone, 12/20/05)
Unappreciated properties are inherent
- Realization of a new benefit or characteristic (or

unappreciated property or scientific explanation) does not
render an old invention patentable (King, 8/2/10; In re
Omeprazole, 4/23/07 (see also J. Newman, dissenting);
Perricone, 12/20/05); See also OBVIOUSNESS
Unexpected results
- Discovery of scientific principle explaining why

the prior art works cannot remove the prior art
from the public domain (King, 8/2/10; Perricone,
12/20/05; Upsher-Smith, 6/17/05)
- Inherency of a process claim despite the prior art

disavowing the claim feature and disclosing no
process conditions to form the claim feature; as
long as materials in the prior art inherently result
in the claim feature (In re Omeprazole, 4/23/07)
Prior knowledge or use by others - 102(a)
- Prior knowledge or use by others, corroborated by

documentary evidence (Ormco, 8/30/06)
Printed publication 35 USC 102(a) and 102(b)
Generally
- Printed publication provision is designed to prevent

withdrawal by an inventor of that which was already in
the publics possession (Bruckelmyer, 4/20/06 [petition
for rehearing and rehearing en banc denied; J.
1593
Newman and J. Linn dissented, stating that the CAFC
should maintain a consistent and reliable standard of
what constitutes a printed publication; drawings in
a file history in the Canadian Patent Office were not
laid open to public inspection or accompanied by
routine classification (indexed or cataloged) and a
published abstract, as in In re Wyer)
- Printed publication bar is grounded on the principle

that once an invention is in the public domain, it is no
longer patentable by anyone Hall, Bayer (In re Lister,
9/22/09; SRI Intl, 1/8/08); See also In re Natures
Remedies, 3/12/09 (nonprecedential)
Public accessibility is the key
- Key, touchstone is public accessibility of the reference

In re Hall - consider 4 factors whether a prior art
reference is a printed publication requires a case-by-
case inquiry into the facts and circumstances surrounding
the references disclosure to members of the public
(Voter Verified, 11/5/12 (article posted on public website
was accessible to those interested in electronic voting); In
re NTP I, 8/1/11; Resqnet.com, 2/5/10 (submission of
software manuals to the PTO in an IDS was not an
admission of public accessibility); In re Lister, 9/22/09
(no substantial evidence as to when a manuscript was
publicly accessible at the Copyright Office, or on
Westlaw or Dialog, or whether prior to the critical date,
including any evidence of the general practice of the
Copyright Office, Westlaw, or Dialog with regard to
database updates); Kyocera Wireless, 10/14/08; In re
Omeprazole, 8/20/08 (testimony of a single witness that
he had received a brochure in 1964 did not prove public
accessibility without evidence from the publisher of the
circulation and availability of the brochures in the 1960s
or 1970s); SRI Intl, 1/8/08, see also dissent, J. Moore
1594
(analyzing the 4 factors as to why public accessibility
shown to support SJ of anticipation); Klopfenstein,
8/18/04 (poster presented at conference))
- Public accessibility of prior art reference whether

interested members of the relevant public, who are
ordinarily skilled in the subject matter of the
reference, could obtain the information if they
wanted to (Voter Verified, 11/5/12 (article posted
on public website was accessible despite not being
indexed, where article was searchable on website
visited by those interested in electronic voting); In
re NTP I (BPAIs finding of public accessibility
supported by substantial evidence), 8/1/11;
Duramed, 7/21/11 (n.2: stating (in dicta) that there
was no genuine issue of material fact on the public
availability of an article published in a scientific
journal three years prior); Orion, 5/17/10
(advertisement was a printed publication); Iovate
Health Sciences, 11/19/09 (advertisements
published in magazine were accessible to those
interested in the art of nutritional supplements); In
re Lister, 9/22/09 (must consider all of the facts
and circumstances surrounding the disclosure and
determine whether an interested researcher would
have been sufficiently capable of finding the
reference and examining its contents); Cordis,
3/31/09; Kyocera Wireless, 10/14/08; SRI Intl,
1/8/08; In re Elsner, 8/16/04); See also
Stamps.com, 6/15/11 (nonprecedential holding
reference publicly accessible and prior art based on
several facts, including an expert declaration by
the references author, the reference being
catalogued and listed as available on a universitys
indexed website, and listing the reference in an
IDS for a related patent; see also J. Bryson,
dissenting)
1595
- Disclose each claim limitation, or inherently
(Novo Nordisk, 10/5/05)
- Dissemination and public accessibility are

necessary (Orion, 5/17/10; Iovate Health
Sciences, 11/19/09; Norian, 4/6/04); See
also In re Natures Remedies, 3/12/09
(nonprecedential public accessibility was
also supported by the absence of restrictions
on public dissemination in publication
associated with foreign regulatory filing)
- Actual retrieval of a publication is not

required for public accessibility (In re
Lister, 9/22/09 (distance of travel to
the Copyright Office in D.C. was
irrelevant to public accessibility); SRI
Intl, 1/8/08)
- Prima facie case of accessibility and shift of

burden to show inaccessibility (In re Lister,
9/22/09 (no prima facie case established for
burden to shift to the applicant)); See also
Stamps.com, 6/15/11 (nonprecedential
patentee failed to rebut evidence of prior
publication; see also J. Bryson, dissenting
not the patentees burden on SJ to show
public inaccessibility and that the reference
is not prior art, where the movant has the
burden of proof on invalidity)
- Because of the many ways a reference may be

disseminated to the interested public, public
accessibility has been called the touchstone in
determining whether a reference constitutes a
printed publication bar under 35 USC 102(b)
In re Hall (Voter Verified, 11/5/12; Orion,
5/17/10; Resqnet.com, 2/5/10; In re Lister,
1596
9/22/09; Kyocera Wireless, 10/14/08 (GSM
standard in the form of a collection of eleven
separate technical specifications published at
different times was widely distributed without
restrictions to interested persons before the critical
date, but not a single reference for anticipation);
SRI Intl, 1/8/08 (factual issues as to whether a
non-indexed, non-catalogued reference file on FTP
server was publicly accessible; non-catalogued
thesis in library cases (e.g., Bayer) and indexed
patent application, poster at conference, i.e,
dissemination cases (e.g., Klopfenstein)
examined; see also dissent, J. Moore evidentiary
record in support of summary judgment evinced
public accessibility, which the patentee failed to
rebut with facts)); See also In re Natures
Remedies, 3/12/09 (nonprecedential declaration
by Danish attorney regarding exemption from
disclosure under Danish law failed to rebut prima
facie case of public availability)
- Disseminated or otherwise made available to

interested POSs in the art, who exercising
reasonable diligence can locate and recognize and
comprehend therefrom the essentials of the
claimed invention without need of further research
or experimentation In re Wyer (CCPA) (Voter
Verified, 11/5/12 (indexing was not an absolute
prerequisite for public accessibility of an online
reference); In re NTP I, 8/1/11; In re Lister,
9/22/09 (discussing the library cases involving
cataloging and indexing, and concluding that a
manuscript would be publicly accessible as of the
date included in keyword searchable databases
such as Westlaw and Dialog (as long as supported
by evidence of the date that the disclosure was
publicly posted), citing MPEP,); Cordis, 3/31/09;
Kyocera Wireless, 10/14/08 (public accessibility
1597
shown based on the primary purpose of the
reference); SRI Intl, 1/8/08; Bruckelmyer, 4/20/06
(unpublished foreign application (Canadian) was
publicly accessible when the corresponding issued
patent was indexed and contained sufficient
information to allow a POS in the art to locate the
application (containing figures cancelled from the
issued patent) in the Canadian Patent Office In re
Wyer); See also In re Natures Remedies, 3/12/09
(nonprecedential explicit statements in
declaration as to public accessibility of publication
associated with foreign regulatory filing was
substantial evidence to support BPAIs decision)
- Confidentiality restrictions on publication?

(In re Lister, 9/22/09 (no special
authorization was needed for gaining access
to a manuscript at the Copyright Office,
distinguishing Northern Telecom); Cordis,
3/31/09); See also Public use bar - 35 USC
102(b)
- Binding agreement of confidentiality

may defeat a finding of public
accessibility, where distribution is
made to a limited number of entities;
but such a binding legal obligation is
not essential, e.g., where professional
and behavioral norms entitle a party
to a reasonable expectation that
information will not be copied or
further distributed Klopfenstein
(Cordis, 3/31/09 (inventors
monographs were not prior art
printed publications under Section
102(b) when distributed to a limited
number of entities (including
commercial entities) -- although
1598
without a legal obligation of
confidentiality -- with a reasonable
expectation of confidentiality, and the
monographs were kept confidential))
- Internet and on-line public databases

publicly available as of the date the item was
publicly posted - MPEP (Voter Verified,
11/5/12; In re Lister, 9/22/09)
- Overwhelming number of search

results warrant conclusion that a listed
reference was not publicly accessible?
(In re Lister, 9/22/09 (n.2))
Authenticity
- Authenticity of prior printed publication (In re NTP I,

8/1/11 (rejecting evidence of forensic document
investigator that alleged prior printed publication was not
authentic))
Witness testimony to prove prior publication
- Witness testimony to show prior publication before the

critical date (In re NTP I, 8/1/11 (relying on letter from
librarian that detailed Norwegian librarys procedures for
receiving, date stamping, and cataloguing documents, as
well as on declaration of Swedish patent attorney);
Typeright Keyboard, 7/6/04); See also In re Natures
Remedies, 3/12/09 (nonprecedential prior publication
before the critical date proven in part by declaration
testimony, including explicit statements as to the public
availability of the reference)
1599
Public use bar 35 USC 102(b)
Generally - two-part test
- Public use bar: A person shall be entitled to a patent

unless . . . the invention was . . . in public use . . . in this
country, more than one year prior to the date of the
application for patent in the United States 35 USC
102(b) (Dey, 5/20/13 (reversing and remanding SJ of
invalidity based on a prior public use in clinical trials,
where facts in dispute; see also J. Newman, dissenting
would have reversed SJ without remanding); Leader
Technologies, 5/8/12; Star Scientific, 8/26/11; Orion,
5/17/10; Clock Spring, 3/25/09; Zenith Electronics,
4/16/08)
- Public use has two prongs: 1) ready for patenting

(same as for on sale bar, see below), subject to
experimental use negation; and 2) public use: i) whether
use accessible to the public, or ii) was commercially
exploited (Dey, 5/20/13 (SJ of invalidity was
inappropriate, where clinical trial was not accessible to
the public, but rather was conducted with a reasonable
expectation of confidentiality as to the nature of the drug
formulations being tested; CAFC describing prior public
use based on third-party use when the third party made
no attempt to maintain confidentiality or to deliberately
evade disclosure citing Eolas; see also J. Newman,
dissenting would have reversed SJ without remand,
because facts regarding clinical trial were not disputed);
Leader Technologies, 5/8/12; Clock Spring, 3/25/09; In
re Omeprazole, 8/20/08 (clinical studies of claimed drug
product prior to the critical date were not barring public
uses where not ready for patenting, or reduced to
practice, until after the studies were successfully
completed); American Seating, 1/29/08; Honeywell,
5/25/07; Invitrogen, 10/5/05); See also Pronova
Biopharma, 9/12/13 (nonprecedential citing the above
1600
requirements from Invitrogen; only the second prong,
public use, was disputed, with the CAFC holding that the
invention was put to an invalidating public use when a
predecessor company provided public access to its fish
oil formulation by sending samples to someone highly
skilled in the art without restrictions, along with detailed
information revealing the composition of the formulation,
and the person then tested the samples)
- Public use occurs from any public use of the

claimed invention by a person other than the
inventor who is under no limitation, restriction, or
obligation of secrecy to the inventor Egbert
(S.C.) (Dey, 5/20/13 (distinguishing rule (i.e., to
the inventor) as not applicable to third-party use
cases); Star Scientific, 8/26/11; Clock Spring,
3/25/09 (public use where representatives of other
companies, under no confidentiality obligation,
were present at demonstration); American Seating,
1/29/08; Adenta, 9/19/07; Motionless Keyboard,
5/29/07; Eli Lilly, 12/26/06; Ormco, 8/30/06
(obviousness context); Eolas, 3/2/05; Bernhardt,
10/20/04; Unitherm Food Systems, 7/12/04); See
also Pronova Biopharma, 9/12/13 (nonprecedential
look to the degree of confidentiality surrounding
the use - whether an invention is accessible to the
public or reasonably believed to be freely available
depends, at least in part, on the degree of
confidentiality surrounding its use depends on
the circumstances, and consider the amount of
control the discloser retains over the invention
during the uses in question (including in the
absence of a confidentiality agreement) citing
Dey, Lough, Moleculon Research)
- Compare the claim to the alleged public use

the device, process used in public must
include every limitation, be an embodiment,
1601
of the later claimed invention C&C
evidence required (Leader Technologies,
5/8/12 (jury verdict of anticipation based on
public use and on-sale bars was supported
by substantial evidence, including patentees
admissions, e.g., based on contemporaneous
documents, interrogatory responses, and
deposition and trial testimony, including
witness credibility); Star Scientific, 8/26/11;
Clock Spring, 3/25/09 (process claims
barred by prior public use); Zenith
Electronics, 4/16/08); See also Pronova
Biopharma, 9/12/13 (nonprecedential)
- Public use need not be enabling

the public use itself need not be
enabling or disclose the invention,
but rather must simply determine
whether the public use related to a
device that embodied the invention
(Dey, 5/20/13 (distinguishing
enablement rule in the context of a
drug formulation used in a clinical
trial in which the claimed features
were not revealed to, or could be
discerned by, the public, i.e., they
were not put in possession of the
claimed features citing Konrad);
Zenith Electronics, 4/16/08); See also
Pronova Biopharma, 9/12/13
(nonprecedential also consider the
sophistication of those to whom the
disclosure was made, here noting that
the disclosure was made to one highly
skilled in the art, with the full ability
to know and understand the claimed
formulation and its components, and
1602
fully disclose the invention to others -
citing Dey)
- Public use bar applies to obvious

variants of the demonstrated public
use Netscape (Clock Spring,
3/25/09 (applying filler compound to
cavities would have been obvious, as
was the intended use of the
compound))
- Completed invention is used in public,

without restriction - barring public use
requires public use more than one year
before the patent filing date that employs a
completed invention in public, without
confidentiality restrictions, and without
permitted experimentation (Dey, 5/20/13;
Honeywell, 5/25/07); See also Pronova
Biopharma, 9/12/13 (nonprecedential
rejecting argument that use of a
pharmaceutical formulation cannot occur
until it is used to treat the condition it is
intended to counteract, or at least physically
ingested)
- CAFC considers policies underlying the

statutory bar when determining whether use
was public under section 102(b) (Dey,
5/20/13; Motionless Keyboard, 5/29/07; Eli
Lilly, 12/26/06)
- On sale and public use bars are

based on the same policy
considerations; both stem from the
reluctance to allow an inventor to
remove existing knowledge from
public use Invitrogen, Pfaff (S.C.)
1603
(Dey, 5/20/13; American Seating,
1/29/08; Motionless Keyboard,
5/29/07); See also Pronova
- Factors for analyzing public use include the

nature of the activity that occurred in public,
the public access to and knowledge of the
public use, and whether there was a
confidentiality obligation imposed on
persons who observed the use Bernhardt
(Dey, 5/20/13 (reversing and remanding SJ
of invalidity where factual disputes as to
whether precautions were taken during
clinical trials to exclude members of the
public from obtaining information about
potentially invalidating prior art drug
formulation; see also J. Newman, dissenting
citing additional factors to determine
whether the invention was accessible to the
public citing Allied Colloids)); See also
Pronova Biopharma, 9/12/13
(nonprecedential)
- Classical standard for assessing the public

nature of a use whether the claimed
invention was used for its intended purpose
without limitation or confidentiality
requirements Egbert (S.C.) (Motionless
Keyboard, 5/29/07); See also Pronova
- Expectation of confidentiality if so,

no public use (Dey, 5/20/13 (degree
of confidentiality necessary to avoid a
finding of public use naturally
depends on the circumstances, e.g.,
whether observers are skilled enough
1604
to know and understand the
invention); American Seating, 1/29/08
(prototypes revealed to a limited
number of people who shared a
general understanding of
confidentiality no public use);
Motionless Keyboard, 5/29/07); See
also Pronova Biopharma, 9/12/13
(nonprecedential)
- Invention must be put into use, vs.

visual display of invention, for public
use (Motionless Keyboard, 5/29/07);
See also Pronova Biopharma, 9/12/13
(nonprecedential third person was
provided a certificate of analysis
revealing all the claimed elements
without any confidentiality agreement
or understanding, thus satisfying the
rule that all aspects of the claimed
invention must be disclosed for the
public use bar to apply citing
Motionless Keyboard)
- Invention need not be in public view

for public use (Motionless Keyboard,
5/29/07); See also Pronova
Biopharma, 9/12/13 (nonprecedential
use in public means given to a
member of the public without
restriction, and not whether the third
person makes an open and obvious
use of the invention)
- Invention given to someone for public

use (Motionless Keyboard, 5/29/07);
See also Pronova Biopharma, 9/12/13
(nonprecedential)
1605
- Demonstration of the claimed invention
without a CDA is a public use under
102(b) (Eolas, 3/2/05)
- Effect of CDAs not dispositive of

public use issue (Dey, 5/20/13;
Cordis, 3/31/09 (n.11: comparing the
lack of an express promise of
confidentiality in the printed
publication and public use bar
contexts); American Seating, 1/29/08
(an understanding of confidentiality
can be implied when access to the
invention is limited and controlled by
the inventor); when unnecessary;
focus on how the totality of
circumstances comports with policies
underlying public use bar (Bernhardt,
10/20/04)
- Expiration of CDA prior to critical

date (Motionless Keyboard, 5/29/07)
- No public use if confidential, or an

expectation of secrecy (Dey, 5/20/13 (citing
Invitrogen); Cordis, 3/31/09 (applying same
rule to whether prior art printed
publication); American Seating, 1/29/08;
Motionless Keyboard, 5/29/07; Invitrogen,
10/5/05)
Experimental use negates public use bar
- Experimental use, purpose negates public use bar Pfaff

(S.C.) (Clock Spring, 3/25/09; Honeywell, 5/25/07; Eli
Lilly, 12/26/06); once a prima facie case of public use is
1606
made by the challenger (by C&C evidence), the patentee
must produce convincing evidence of experimental use
to counter the showing (Lisle, 2/11/05); See also
Sensormatic Electronics, 2/17/10 (Order)
(nonprecedential not addressing the experimental use
exception after upholding the district courts conclusion
that the challenger failed to prove public use of the
invention by C&C evidence); See also On sale bar
35 USC 102(b)
- Expermental use, by inventor or other person

under his direction, in order to perfect the
invention, is not public use City of Elizabeth
(S.C.) (American Seating, 1/29/08; Eli Lilly,
12/26/06)
- Experimental use vs. commercial or public use a

bona fide effort to bring the invention to
perfection, or to ascertain whether it will answer
the purpose intended does not constitute a public
use City of Elizabeth (Clock Spring, 3/25/09;
Honeywell, 5/25/07)
- Experimental use only if designed to 1) test

claimed features of the invention, or 2)
determine whether an invention will work
for its intended purpose itself a
requirement of patentability; BUT, there is
no experimental use unless claimed features
or overall workability are being tested for
the purpose of filing a patent application --
which is the only reason the experimental
use negation exists EZ Dock (Clock
Spring, 3/25/09 (no experimental use
negation where the testing was for long-term
performance and acceptance by regulators
and the pipeline industry))
1607
- Testing permitted to determine the
workability of an invention even if the
claims do not expressly set forth the
intended use under examination
- Focus of the test is whether the use was truly

experimental or in fact commercial
- Even use that occurs in the open may not invoke

the statutory bar when undertaken to experiment
on or with the claimed invention (Eli Lilly,
12/26/06)
- Indicia showing negating experimental character

of use: 1) the length of test period, 2) any
confidentiality agreement, 3) any records of
testing, 4) any monitoring and control of the test
results, 5) the number of tests, and 6) the length of
the test period in relation to tests of similar
inventions (Eli Lilly, 12/26/06 (pharma))
- Testing of invention, under NDA

(Motionless Keyboard, 5/29/07)
- Legality of the prior use is not relevant to the prior

public use issue (Clock Spring, 3/25/09 (not
relevant to the public use bar that the inventors
were not legally allowed to perform the claimed
method on a pipeline in commercial operation))
- RTPed? - No experimental use negation to public

use bar when shown that the invention was RTPed
before the experimental use Cargill (Clock
Spring, 3/25/09; In re Omeprazole, 8/20/08); See
also On-sale bar 35 USC 102(b)
1608
Other public use bar-related issues
- Method claims invalid under 102(b) by sale or public

use of product used to practice method (NTP, 8/2/05)
- Public use cannot be undone by subsequent events

(Eolas, 3/2/05)
- Totality of circumstances is no longer the test for

statutory bar disputes, as in Pfaff (S.C.) regarding on
sale bar (Invitrogen, 10/5/05)
On sale bar 35 USC 102(b)
Generally
- On sale bar: A person shall be entitled to a patent

unless . . . the invention was . . . on sale in this country,
more than one year prior to the date of the application for
patent in the United States 35 USC 102(b) (Leader
Technologies, 5/8/12; August Tech., 8/22/11; i4i,
12/22/09 (challenger must show by C&C evidence);
Zenith Electronics, 4/16/08 (addressing public use
bar))
- Offer for sale, sale, or public use, if more than one

year before the patent application was filed, will
bar patenting of the product, even if the sale was
not authorized by the patentee In re Caveney
(Resqnet.com, 2/5/10)
- Claimed invention is on sale under 102(b) if the

invention is sold or offered for sale more than one year
before the application filing date, i.e., the critical date
(Hamilton Beach, 8/14/13 (affirming invalidity based on
commercial offer for sale from the patentees supplier to
the patentee company before the critical date; see also J.
Reyna, dissenting offer for sale was not commercial
1609
and the majority opinion portends grave consequences
for innovation and experimental use); August Tech.,
8/22/11; Delaware Valley, 3/11/10 (affirming SJ of
invalidity based on commercial sales, after concluding
that the district court did not abuse its discretion by
excluding declaration testimony which contradicted
earlier deposition testimony or was not based on personal
knowledge); In re Cygnus Telecomms., 8/19/08; Atlanta
Attachment, 2/21/08; Honeywell, 5/25/07; Cargill,
2/14/07; Plumtree Software, 12/18/06)
- Prior art under the 102(b) on-sale bar is also

prior art for purposes of obviousness under 103,
i.e., if the claimed invention would have been
obvious from the on-sale device in conjunction
with the prior art LaBounty (Dippin Dots,
2/9/07)
- Intent of 102(b) bar is to preclude attempts by the

inventor or assignee to profit from commercial use of an
invention more than one year before the application filing
date D.L. Auld, In re Kollar (Resqnet.com, 2/5/10;
Atlanta Attachment, 2/21/08; Plumtree Software,
12/18/06 (performing patented method))
- Sales or offers made by others and disclosing the

claimed invention implicate the public use
provision of Section 102(b) In re Caveney
(Resqnet.com, 2/5/10 (affirming the district court
that the software product the accused infringer
advertised (offered for sale) lacked an essential
limitation of the claimed method, and thus the
accused infringer failed to show that the entirety of
the claimed invention was known to others
before the critical date))
- Overriding concern of the on-sale bar is an

inventors attempt to commercialize his invention
1610
beyond the statutory term Netscape (Atlanta
Attachment, 2/21/08)
Two-part test
- Two-part test for determining whether there was a sale or

offer for sale before the critical date (i.e., the date one
year before the effective filing date) must show by
C&C evidence that the patented invention was: 1) the
subject of a commercial sale or offer for sale, and 2)
ready for patenting at the time of the sale or offer for
sale (or prior to the critical date) - means proof of RTP
(i.e., shown to work for its intended purpose) or enabling
drawings or description Pfaff (S.C.) (Hamilton Beach,
8/14/13; August Tech., 8/22/11 (offer for sale followed
by conception of the invention prior to the critical date is
an on sale bar; ready for patenting prong need be met
prior to the critical date, but not at the time the alleged
offer for sale is made Robotic Vision); Delaware
Valley, 3/11/10; Trading Techs., 2/25/10; In re Cygnus
Telecomms., 8/19/08; Atlanta Attachment, 2/21/08;
Honeywell, 5/25/07; Cargill, 2/14/07; Plumtree Software,
12/18/06); two requirements for #1 1) commercial offer
for sale, and 2) offer must be for patented invention
(Gemmy Indus., 6/22/06; Enzo Biochem, 9/30/05;
General Motors, 7/28/05; Fort James, 6/22/05; Sparton,
2/28/05; Poly-America, 9/14/04; Unitherm Food
Systems, 7/12/04; Elan, 5/5/04); See also In re Ceccarelli,
- Defendant must prove that both test prongs

occurred before the critical date (August Tech.,
8/22/11 (district court used an incorrect AIPLA
model jury instruction); Honeywell, 5/25/07); See
also Lacks Indus., 11/21/08 (nonprecedential
genuine issues of material fact regarding whether
shown by C&C evidence that the alleged
1611
commercial offers for sale were communicated to
the alleged offerees prior to the critical date)
- Invention cannot be offered for sale until its

conception date, i.e., when the offer for sale
remains open until a later conception prior to the
critical date - Sparton (August Tech., 8/22/11)
Patented invention
- Invention that is the subject matter of the sale or

offer for sale must satisfy each limitation of the
disputed claim(s), and thus must be an
embodiment of the claimed invention (Leader
Technologies, 5/8/12 (affirming jury verdict of
anticipation based on public use and on sale bars
see public use bar); Centillion Data Systems,
1/20/11 (SJ of no anticipation was improper where
factual dispute as to whether prior art system met
claim limitation); i4i, 3/10/10 (alleged prior art did
not practice claim limitation, as supported by the
testimony of the inventors, who also created the
alleged prior art); Resqnet.com, 2/5/10 (affirming
the district court that the software product the
accused infringer advertised (offered for sale)
before the critical date lacked an essential element
of the claimed method); Atlanta Attachment,
2/21/08; Plumtree Software, 12/18/06); See also
Lacks Indus., 11/21/08 (nonprecedential alleged
offers for sale were not shown by C&C evidence
to satisfy each and every limitation of the claimed
method; also, claim limitations may be satisfied
inherently (which may not be established merely
by probabilities or possibilities))
- Patented invention must be fully disclosed

in product for sale (Centillion Data Systems,
1612
1/20/11 (declining to decide issue for the
first time on appeal of whether a commercial
sale results in a Section 102(b) bar if the
seller does not fully publicly disclose the
claimed invention); Gemmy Indus., 6/22/06)
Commercial sale or offer for sale
- Transaction at issue must be a sale in a

commercial law sense Allen Engg (Trading
Techs., 2/25/10 (consulting agreement was not a
commercial software license under which the
claimed software was sold))
- Sale is a contract between parties to give and

to pass rights of property for consideration
which the buyer pays or promises to pay the
seller for the thing bought or sold In re
Caveney (Trading Techs., 2/25/10
(consulting agreement under which a
fabricator made the claimed software for the
inventor was not a sale))
- Inventors can request another entitys

services in developing products
embodying the invention without
triggering the on-sale bar (Trading
Techs., 2/25/10 (the inventors
request to a fabricator to make
software for his own secret, personal
use did not constitute a sale under
Section 102(b))
- No supplier exception to the on-sale

bar Special Devices, Brasseler
(Hamilton Beach, 8/14/13 (did not
matter for the on-sale bar to apply that
1613
the commercial offer for sale was
made by the patentee companys own
supplier, manufacturer to the patentee
company itself; see also J. Reyna,
dissenting an overly-broad
application of the no-supplier-
exception rule would render the
experimental use exception useless
for a significant class of innovators,
most notably small enterprises and
individual inventors who lack in-
house prototyping and fabricating
capabilities, and that for the
experimental use exception to have
continued vitality, the CAFC must
respect the Supreme Courts
requirement in Pfaff for a commercial
offer for sale when deploying the no-
supplier-exception rule))
- Commercial offer for sale made by a

foreign entity that is directed to a U.S.
company at its place of business in the
U.S. may serve as an invalidating
activity In re Caveney (Hamilton
Beach, 8/14/13 (affirming invalidity
based on the on-sale bar where was
undisputed that the patentee
companys foreign supplier directed
its activity to the patentee company
within the U.S.))
- Commercial offer for sale is required the offer

must be sufficiently definite that another party
could make into a binding contract by simple
acceptance, assuming consideration Group One
(Hamilton Beach, 8/14/13 (invalidating offer for
sale occurred upon a foreign suppliers email
1614
response to the patentees purchase order that the
supplier was ready to fulfill the order, which the
patentee could make into an binding contract by
providing its release i.e., acceptance; also ruling
generally that an attempt to sell is sufficient so
long as the above is met; see also J. Reyna,
dissenting no on-sale bar because the purchase
order was placed for purely experimental
purposes); Atlanta Attachment, 2/21/08); the
offeror must be legally bound (i.e., offeror
indicates intent to be bound) if the offer is
accepted (Plumtree Software, 12/18/06 (perform
patented method); Elan, 5/5/04); See also Lacks
Indus., 11/21/08 (nonprecedential conflicting
witness testimony created genuine issues of
material fact regarding whether commercial offers
for sale were made, based on automobile industry
sales practice)
- Whether a definite offer requires looking

closely at the language of the proposal itself
in accordance with the principles of general
contract law (Hamilton Beach, 8/14/13;
Atlanta Attachment, 2/21/08; Enzo
Biochem, 9/30/05)
- Joint R&D agreement experimental vs.

commercial purpose?; agreement created
necessary contractual obligations on the
parties to create binding contract and
constitute commercial offer for sale (Enzo
Biochem, 9/30/05)
- Profit, revenue, or even an actual sale is not

required for a commercial offer for sale
(Hamilton Beach, 8/14/13; In re Cygnus
Telecomms., 8/19/08 (profit not needed for a
sale under Section 102(b), and can even lose
1615
money on a sale and still have on-sale bar);
Atlanta Attachment, 2/21/08 (commercial
offer for sale of prototype where although
not actually delivered was sold based on an
invoice (offer) and payment (acceptance))
- Where future terms left open, not an offer

for sale (Elan, 5/5/04)
- Commercial offer for sale apply the principles of

general contract law - including UCC (Atlanta
Attachment, 2/21/08; General Motors, 7/28/05;
Sparton, 2/28/05)
- Commercial sale or offer for sale necessarily

involves consideration (Plumtree Software,
12/18/06)
- No commercial offer for sale when key

terms of sale are absent Elan (Gemmy
Indus., 6/22/06)
- Sale need not be completed for offer for sale

to trigger on-sale bar (Hamilton Beach,
8/14/13; Cargill, 2/14/07)
- Commercial offer for sale cannot be disguised as a

licensing fee (Elan, 5/5/04)
- License is not a sale, and thus not an offer

for sale - Kollar (Plumtree Software,
12/18/06; Enzo Biochem, 9/30/05)
- License of IP is not a sale of goods - U.C.C.

(Lamle, 1/7/05)
1616
- Offer to license patent does not = on sale
bar; sale of patent rights does not = on sale
bar (Elan, 5/5/04)
Ready for patenting
- Conception and RTP-related information are

relevant to ready for patenting requirement
(August Tech., 8/22/11 (conception of invention is
required for there to be a barring offer for sale);
Fort James, 6/22/05)
- Ready for patenting satisfied by RTP, or

enabling descriptions or drawings of the invention,
prior to the critical date (Hamilton Beach, 8/14/13
(requirement was met by pre-critical date RTP and
detailed drawings and descriptions, and rejecting
argument that some working prototypes did not
work as intended, because fine-tuning of an
invention after the critical date does not mean the
invention was not ready for patenting citing
Weatherchem; see also J. Reyna, dissenting
experimental use exception applied); August
Tech., 8/22/11 (ready for patenting prong need
be met prior to the critical date, and not at the time
of the offer for sale); Trading Techs., 2/25/10; In
re Cygnus Telecomms., 8/19/08 (RTP based on the
inventors sworn admissions of RTP before the
critical date in a declaration to the PTO); Atlanta
Attachment, 2/21/08; Cargill, 2/14/07; Enzo
Biochem, 9/30/05)
- Experimental nature of transaction does not

mean that invention not RTPed (Cargill,
2/14/07)
1617
- No experimental use negation once
invention RTPed (Cargill, 2/14/07)
- Recognition of claim elements (Enzo

Biochem, 9/30/05) vs. sales offer need not
specifically identify all the characteristics of
an invention offered for sale, and parties
need not be aware of the specific
characteristics that make the invention
useful Abbott Labs (Cargill, 2/14/07)
- RTP when the patentee has an embodiment

that meets every limitation and operates for
its intended purpose (In re Cygnus
Telecomms., 8/19/08; In re Omeprazole,
8/20/08 (public use bar); Atlanta
Attachment, 2/21/08; Honeywell, 5/25/07)
- Invention works for its intended

purpose when there is a demonstration
of the workability or utility of the
claimed invention (In re Omeprazole,
8/20/08 (stating that testing is
required in some instances to prove
that the invention works for its
intended purpose); Atlanta
Attachment, 2/21/08 (workability and
utility of the invention was shown
prior to the critical date); Honeywell,
5/25/07)
- Difference between an actual

RTP, i.e., invention works for
its intended purpose, vs. the
patentees effort to RTP, i.e.,
invention still in development,
moving invention towards RTP
1618
- RTP established when knew of utility
of claimed invention at time of sale
Abbott Labs (Cargill, 2/14/07)
- Embodying the patent claims is

distinct from whether the invention
would work on a commercial scale
Allen Engg (In re Cygnus
Telecomms., 8/19/08 (sales can
constitute an invalidating commercial
sale where the invention was
functional and embodied the claims))
- RTP of the invention even

though it may later be refined
or improved, or further testing
is being conducted on the
invention (Atlanta Attachment,
2/21/08)
Experimentation negates invalidity
- Experimentation negates invalidity (City of Elizabeth

(S.C.)) was pre-critical date sale made for
experimentation, rather than attempts to profit from the
invention? (Hamilton Beach, 8/14/13 (see J. Reyna,
dissenting majority erred in affirming invalidity based
on a commercial offer for sale where the sale was for
experimental purposes, referring to the majoritys
evisceration of the experimental-use exception);
Delaware Valley, 3/11/10 (patentee that demonstrates
experimental use may overcome the application of the
on-sale bar EZ Dock); Atlanta Attachment, 2/21/08;
Honeywell, 5/25/07; Dippin Dots, 2/9/07; General
Motors, 7/28/05); See also In re Ceccarelli, 11/19/10
(nonprecedential sale of patented product for
1619
experimental use does not become a commercial sale if
RTPed before the critical date, but rather is determined
at the time of the sale; see also J. Moore, dissenting); See
also Public use bar 35 USC 102(b)
- Commerical offer for sale of the invention en

masse is a commercial offer for sale an offer to
mass produce production models does not square
with experimentation under any standard; it is
commercial exploitation (Atlanta Attachment,
2/21/08)
- Inventors subjective intent to experiment does not

prove experimentation (General Motors, 7/28/05
(the first prong of Pfaff (S.C.) assesses whether the
circumstances surrounding a pre-critical date sale
objectively show that it was primarily made for
experimentation); see also Atlanta Attachment,
2/21/08, J. Prost and J. Dyk, concurring (the
experimental use doctrine would apply if the use or
sale was primarily experimental))
- Invention must exist (i.e., have been conceived) as

of the critical date before offer for sale can be
made (Sparton, 2/28/05)
- Negation doctrine does not require changes to the

claimed invention to substantiate an experimental
use City of Elizabeth (S.C.) (Honeywell, 5/25/07)
- No experimental use negation once invention

RTPed (In re Cygnus Telecomms., 8/19/08;
Cargill, 2/14/07; see also Atlanta Attachment,
2/21/08. J. Prost and J. Dyk, concurring stating
that the above rule is inconsistent with the holding
of Pfaff (S.C.), and that the experimental use
doctrine, i.e., negation to an on-sale bar, relates
1620
only to the first (commercial offer) prong of the
two-part Pfaff test)
- Objective indicia (13) of experimentation control

and customer awareness of testing dispositive of
experimentation vs. commercial sale Allen Engg
(Clock Spring, 3/25/09 (factors applied to public
use bar, stating that the factors explicated [ in
Allen Engg] are equally relevant to an analysis of
experimental use); Atlanta Attachment, 2/21/08;
General Motors, 7/28/05)
- Control over the invention during the

alleged experiment is important, and
sometimes dispositive (Clock Spring,
3/25/09 (lack of control not relied on for
establishing public use, as the use was not
experimental for other reasons); Atlanta
Attachment, 2/21/08 (issue of control was
dispositive where the offeror failed to retain
control over the offerees testing of a
prototype))
- Offerees experimentation with

prototypes was immaterial because
the experimental use exception only
concerns the actions of the inventors
and their agents, and the offeree was
not under the inventors control
(Atlanta Attachment, 2/21/08)
- Testing performed to perfect claimed features, or

to perfect features inherent to the claimed
invention, e.g., durability (Clock Spring, 3/25/09
(applied to public use bar); General Motors,
7/28/05)
1621
- Testing was done to determine that the
invention worked for its intended purpose
experimental use; commercial terms
proposed if, and only if, the tests were
successful (Honeywell, 5/25/07)
- Experimentation conducted to
determine whether the invention
would suit a particular customers
purposes does not fall within the
experimental use exception (Atlanta
Attachment, 2/21/08 (looked to the
offerors actions, rather than the
offerees experiments, in determining
whether the machine was suitable for
the purpose of the invention))
- Sales not experimental when purpose was to

determine the marketability of product and
not to improve it technically; experimental
use exception does not include market
testing where the inventor is attempting to
guage consumer demand for his claimed
invention (Dippin Dots, 2/9/07)
Method claims on sale?
- Method claims invalid under 102(b) by the sale or

public use of a product used to practice the claimed
method (Iovate Health Sciences, 11/19/09 (J. Mayer,
concurring, and also concluding that a magazine
advertisement evidenced that nutritional supplements
used to practice the claimed method were on sale prior to
the critical date); NTP, 8/2/05)
- Meet first prong of Pfaff test under either of two theories:

1) a) commercial offer b) to perform the patented method
1622
before the critical date (even if the performance itself
occurred after the critical date) - Scaltech, or 2) the
patented method was performed before the critical date
for a promise of future compensation In re Kollar
(Plumtree Software, 12/18/06)
- Performing patented method for commercial

purposes before the critical date = sale under
102(b) (Erico Intl, 2/19/08 (at PI stage, no on-sale
bar when no evidence presented that anyone
actually practiced the claimed method by using the
product sold before the critical date); Plumtree
Software, 12/18/06)
- Sale of product made by a claimed process = sale of

process = 102(b) prior art (Delaware Valley, 3/11/10
(affirming SJ of on-sale bar invalidity based on sales of
roses grown by the patented process); Dippin Dots,
2/9/07), because the claimed process commercialized in
the same sense as would occur when there was a sale of a
tangible patented item D.L. Auld, In re Kollar
(Plumtree Software, 12/18/06)
- Exception to the general rule exists where a

patented method is kept secret and remains secret
after a sale of the unpatented product of the
method such a sale prior to the critical date is a
bar if engaged in by the patentee or patent
applicant, but not if engaged in by another In re
Caveney (Resqnet.com, 2/5/10)
- Offer to sell article of manufacture, composition

invalidates method claims when the two are
inseparable (Enzo Biochem, 9/30/05)
- Grant of license to perform patented method In re

Kollar (Plumtree Software, 12/18/06)
1623
- Sale (or license) of a product, apparatus to perform
claimed process question is whether the process has
been carried out, commercialized (Enzo Biochem,
9/30/05 (instructions included for using probe); Poly-
America, 9/14/04)
Prior invention 35 USC 102(g)
Generally priority of invention
- Priority of invention goes to the first party to reduce an

invention to practice unless the other party can show that
it was the first to conceive the invention and that it
exercised reasonable diligence in later reducing that
invention to practice Mycogen (Fox Group, 11/28/12;
Amkor Technology, 8/22/12; Teva, 12/1/11 (prior
inventor needed only to appreciate that its prior stabilized
statin compound was stable and what the components of
the formulation were, and not which the formulations
components was responsible for the stabilization); Streck,
10/20/11 (junior party in a Section 146 action failed to
prove priority of invention based on an alleged prior
actual RTP); Creative Compounds, 6/24/11 (email was
insufficient to establish prior conception of the claimed
subject matter, where not supported by explanatory
testimony and the email did not reveal how to make the
claimed compound); Z4 Technologies, 11/16/07); See
also Stamps.com, 6/15/11 (nonprecedential patentee
failed to swear behind reference based on a prior
conception, where insufficient corroboration)
- Accused infringer bears the burden of

demonstrating by C&C evidence that the alleged
prior invention constituted an actual RTP of the
claimed invention (Fox Group, 11/28/12; Streck,
10/20/11 (distinguished from the preponderance of
the evidence standard applied in a Section 146
1624
action with respect to an interference count); Z4
- Alleged prior invention is not the language

of the claim, but the subject matter thereby
defined Dow (Fox Group, 11/28/12; Teva,
12/1/11 (rejecting argument that the prior
inventor had to conceive of its drug in the
same words in which the patentee later
chose to claim it))
- Actual RTP inventor must prove that he:

1) constructed an embodiment or performed
a process that met all the claim limitations,
and 2) determined that the invention would
work for its intended purpose Cooper v.
Goldfarb (Fox Group, 11/28/12; Teva,
12/1/11; Streck, 10/20/11 (prior actual RTP
was not proven in a Section 146 action
where testing failed to show that the
invention worked for its intended purpose);
Z4 Technologies, 11/16/07 (accused
infringer failed to show that alleged prior
invention worked for its intended purpose;
damaging email)); See also
INTERFERENCES/PRIOR INVENTION
Priority of invention
- Inventor need not understand

precisely why his invention works in
order to achieve an actual RTP
Parker (CCPA) (Teva, 12/1/11)
- Testing testing required to

demonstrate RTP in some instances
because without such testing there
cannot be sufficient certainty that the
invention will work for its intended
1625
purpose (Streck, 10/20/11 (testing was
required for RTP); Z4 Technologies,
11/16/07)
- Diligence merely asserting diligence is not

enough, but rather a party must account for the
entire period during which diligence is required
Gould (CCPA) (Creative Compounds, 6/24/11
(accused infringers bald assertion that the alleged
prior inventor was diligent during the 18 months
between conception and RTP failed to raise a
genuine issue of material fact as to diligence)); See
also INTERFERENCES/PRIOR INVENTION
- 102(g)(2) prior invention [a] person shall be

entitled to a patent unless before such persons
invention thereof, the invention was made in this country
by another inventor who had not abandoned, suppressed,
or concealed it (Fox Group, 11/28/12 (affirming SJ of
invalidity of claims based on a prior RTP that was not
abandoned, suppressed, or concealed; also stating that
there is no requirement to RTP the prior invention
repeatedly; see also J. OMalley, dissenting would have
reversed SJ and remanded because there were genuine
material fact issues regarding abandonment, suppression,
or concealment, where the alleged prior inventor failed to
publicly disclose how to make or commercialize for
reverse engineering purposes the claimed product
stating that [t]he majoritys approach cannot be the
law); Amkor Technology, 8/22/12 (foreign-made
invention is made in this country under Section
102(g)(2) if communicated fully to the U.S. orally or in
writing (sufficient to establish conception the content
of the domestic disclosure must be specific enough to
encompass the complete and operative invention, and
the inventors oral testimony to this extent is a question
of proof) citing Scott and the legislative history of
AIPA); Streck, 10/20/11 (priority of invention in Section
1626
146 action); Creative Compounds, 6/24/11; Solvay,
10/13/10 (another inventor requires another to have
conceived of the invention); Martek Biosciences, 9/3/09;
Z4 Technologies, 11/16/07; Apotex, 11/16/07 (district
court); Aventis Pharma, 9/11/07 (relying on
103/102(g) prior art); Flex-Rest, 7/13/06; Invitrogen,
11/18/05); See also Ceats, 4/26/13 (nonprecedential
district courts jury instruction on prior invention was
correct; see also J. Schall, dissenting in part on the jurys
verdict of anticipation , based on claim construction of
term set in one of the asserted patents); Stamps.com,
- Rules governing the determination of priority of

invention are regularly applied in cases involving
the question of prior inventorship under Section
102(g)(2) (Solvay, 10/13/10)
Burden of proof, production
- Clear and convincing evidence to prove prior invention

(Fox Group, 11/28/12; Amkor Technology, 8/22/12
(prior invention (conception) was not established by
overlapping time ranges of possible dates, and
distinguishing Oka rule applied in the interference
context))
- Shift in burden of production - if prior invention

has been established, the burden shifts to the
patentee to produce sufficient evidence to create a
genuine issue of material fact as to whether the
prior inventor abandoned, suppressed, or
concealed the invention; then, the accused
infringer must rebut the patentees evidence of
abandonment, suppression, or concealment (Fox
Group, 11/28/12; Flex-Rest, 7/13/06)
1627
- Exception to the C&C evidence standard - preponderance
of the evidence standard applied when common claimed
subject matter between co-pending patents and the junior
party bears the burden of raising the issue, or the parties
must otherwise agree there is common claimed subject
matter - Environ (Creative Compounds, 6/24/11
(applying C&C evidence standard to proving invalidity
under Section 102(g) where the challenger (and junior
party) failed to assert common claimed subject matter
between its patent and the challenged patent -- holding
that an accused infringer cannot obtain the benefit of the
lower burden of proof applied in an interference
proceeding simply by alleging, as a defense to
infringement, that the asserted patent is invalid based
upon a co-pending patent unless common claimed subject
matter is first identified and an adjudication of priority is
sought distinguishing Environ and SlipTrack))
Conception and reduction to practice
- Conception defines the legally operative moment of

invention under 102(g); conception/RTP require more
than unrecognized, unappreciated, accidental creation
conception requires that inventor appreciate (which need
not be conclusive or unassailable) that which he has
invented (Teva, 12/1/11 (To establish prior invention,
the party asserting it must prove that it appreciated what
it had made. The prior inventor does not need to know
everything about how or why its invention worked. Nor
must it conceive of its invention using the same words as
the patentee would later use to claim it citing Dow,
Mycogen Plant Sciences, and Invitrogen); Creative
Compounds, 6/24/11 (email unsupported by testimony on
SJ failed to raise genuine issue of material fact as to
conception for proving prior invention); Solvay, 10/13/10
(distinguishing appreciation cases where there was no
prior conception to support Section 102(g)(2) invalidity);
1628
Aventis Pharma, 9/11/07); ALSO, requires objective
corroboration of the inventors subjective beliefs both
must be shown by C&C evidence for invalidity under
102(g) (Martek Biosciences, 9/3/09 (stringent standard
for corroboration; alleged prior inventors abandoned
patent application was insufficient to corroborate prior
inventors testimony); Invitrogen, 11/18/05); See also
INVENTORSHIP Conception
- Conception occurs when the inventor has a

specific, settled idea, a particular solution to the
problem at hand Creative Compounds,
Burroughs Wellcome (Teva, 12/1/11)
- Appreciation that the prior invention was made

(Fox Group, 11/28/12 (appreciation was based on
objective evidence of corroboration); Teva,
12/1/11 (AstraZeneca had to appreciate that the
[stabilized statin] compound it asserted as its
invention was stable and what the components of
this formulation were . . . However, AstraZeneca
did not need to appreciate which component was
responsible for the stabilization distinguishing
Invitrogen))
- Originality (required by Section 102(f)) is inherent

to the notion of conception the definition and test
of conception, which speaks to the formation of an
idea in the mind of the inventor, necessitates that
the conception of an invention be an original idea
of the inventor (Solvay, 10/13/10 (accused
infringer was not another inventor under Section
102(g)(2) where the infringer merely reproduced in
the U.S. a chemical process conceived and reduced
to practice in Russia))
- Alleged prior inventor must provide independent

corroborating evidence in addition to his own
1629
statements and documents (Fox Group, 11/28/12;
Martek Biosciences, 9/3/09); See also
INVENTORSHIP Corroboration required
- Abandoned patent application alone (or

notebook page), although evidence of
conception, are insufficient to corroborate
testimony that an alleged prior inventor
reduced the invention to practice (Martek
Biosciences, 9/3/09 (citing cases))
- Post hoc replication of experiments cited in

abandoned patent application does not
corroborate prior invention, RTP (Martek
Biosciences, 9/3/09)
- Simultaneous conception/RTP (Invitrogen, 11/18/05)
Abandonment, suppression, concealment
- Abandonment, suppression, concealment two types: 1)

intentional suppression or concealment of the invention,
and 2) suppression or concealment are inferred based on
the prior inventors unreasonable delay in making the
invention publicly known, e.g., by filing a patent
application, describing the invention in a published (prior
art) document, or commercializing the invention (Fox
Group, 11/28/12 (no abandonment, suppression, or
concealment of prior invention of the claimed product,
despite the lack of publication of the process for making
it or repeating its RTP; see also J. OMalley, dissenting);
Aventis Pharma, 9/11/07 (extensive ongoing R&D and
concurrent ongoing prosecution); Flex-Rest, 7/13/06 (6-
months not an unreasonable delay); Eolas, 3/2/04)
- Intentional suppression
1630
- Intentional suppression occurs when an
inventor designedly, and with the view of
applying it indefinitely and exclusively for
his own profit, withholds his invention from
the public (Fox Group, 11/28/12 (J.
OMalley, dissenting-in-part the patentee
presented direct evidence of intentional
suppression to create a genuine issue to
avoid SJ of invalidity); Flex-Rest, 7/13/06)
- Intentional suppression requires more than

the passage of time; requires evidence that
the inventor intentionally delayed filing to
prolong the period during which the
invention is maintained in secret; that device
is kept secret during that time, by itself, is
not intentional suppression or concealment
- Inference of suppression or concealment
- Each case must be decided based on

particular set of facts no particular length
of delay is per se unreasonable (Flex-Rest,
7/13/06)
- Prior art publication of a claimed product

(vs. a claimed process) need not be enabling
(Fox Group, 11/28/12 (claimed product and
its features (SiC material with low defect
densities) were publicly disclosed; see also
J. OMalley, dissenting the alleged prior
inventor failed to satisfy burden of rebutting
the patentees evidence of suppression or
concealment))
1631
- Mere delay, without more, is not sufficient
to establish suppression or concealment
- What constitutes a reasonable time for

drafting a patent application will vary
with the technology and the particular
set of facts involved in each case
- Delay between the first RTP and public

disclosure excused if inventor continued to
refine, perfect, or improve the invention
this does not abandon the original invention
(Eolas, 3/2/05)
Printed matter
- Printed matter and the claimed product or process must

be functionally related to produce a new and unobvious
product or process and thus not be anticipated
(Astrazeneca, 11/1/10 (affirming invalidity of kit claims,
stating: Our decision in Ngai foreclosed the argument
that simply adding new instructions to a known product
creates the functional relationship necessary to
distinguish the product from the prior art); King, 8/2/10
(applying the In re Ngai rule to method claims, where
recited instruction in an informing step was the only
novel difference from the prior art, which otherwise
taught the claimed treatment method - the rationale
behind the rule is preventing the indefinite patenting of
known products by the simple inclusion of novel, yet
functionally unrelated limitations); In re Ngai, 5/13/04
(patentee entitled to method claims, but not product
claims by merely attaching a new set of instructions to a
known product, where the same product with (different)
instructions was in the prior art)); See also
1632
OBVIOUSNESS Other obviousness issues Printed
matter
- Relevant inquiry is whether the additional

instructional limitation has a new and unobvious
functional relationship with the known method
(Astrazeneca, 11/1/10; King, 8/2/10)
Validity - generally
- Validity of a product-by-process claim the focus in on

the product and not the process of making it (Greenliant
Systems, 8/22/12; Amgen, 9/15/09); Compare to
INFRINGEMENT Product-by-process claims
- Long-standing rule that an old product is not

patentable even if it is made by a new process
(Greenliant Systems, 8/22/12; Amgen, 9/15/09)
- Scripps CAFC 1991 (process steps are not

limitations) vs. Atlantic Thermoplastics CAFC
1992 (process steps are limitations) (Abbott Labs,
5/18/09 (en banc) (adopting the Atlantic
Thermoplastics rule for determining infringement);
Smithkline Beecham, 2/24/06, see below); See also
INFRINGEMENT Product-by-process claims
- Product-by-process claims in which the product is

defined at least in part in terms of the method or process
by which it is made; regardless of how broadly or
narrowly construed, such claims are directed to the
ultimate product, not the underlying process SmithKline
(Greenliant Systems, 8/22/12; Amgen, 9/15/09; In re
Nuijten, 9/20/07 (determining whether the claimed
invention was a process under 101)); See also In re
Pond, 1/18/12 (nonprecedential product-by-process
1633
claim does not add a patentable distinction when the
claimed product is the same as the cited arts product In
re Thorpe); See also INFRINGEMENT Product-by-
process claims
- Once a product is fully disclosed in the prior art,

future claims to the same (old) product are
precluded, even if the claimed product is made by
a new process does not matter whether the
claims are construed broadly (product made by any
process) or narrowly (product made by the recited
process) (Greenliant Systems, 8/22/12; Amgen,
9/15/09 (citing cases); Smithkline Beecham,
2/24/06 (the CAFC made clear that it was not
holding that a claim to a product is never limited
by process limitations; the court also took no
position on whether a product-by-process claim is
construed with reference to process steps; See also
J. Newman, dissenting for anticipation, the prior
art must contain all limitations of a claim; process
limitations in product claims are claim limitations,
which serve to define and distinguish the
invention; under Phillips (en banc), claims are
construed in light of the specification claims
reflect the invention set forth in the specification)
[On 6/22/06, Smithklines petition for rehearing
and rehearing en banc was denied J. Newman
and J. Gajarsa dissented, distinguishing Scripps
from Atlantic Thermoplastics, stating that
Scripps accommodates the situation where the
product is novel and complex and cannot be
described other than by the way it was made,
while Atlantic Thermoplastics deals with a
product whose production requires use of a
certain process, whether or not the product is
novel; J. Rader, joined also by J. Gajarsa, also
dissented, stating that [w]hether all the words
in a product-by-process claim are limiting is a
1634
question that patent attorneys, trial courts, and
apparently this court, still cannot confidently
answer and that the CAFCs product-by-
process claim law contains an apparent
conflict and that trial courts should not be
forced to choose between Scripps and Atlantic
Thermoplastics, nor given the option of ignoring
claim language altogether.])
- Claimed product produced by the recited process may be

patentable if different from the prior art product
(Greenliant Systems, 8/22/12 (patentability based on
structural or functional differences in the claimed product
over the prior art resulting from the process); Amgen,
9/15/09 (recombinant EPO which was the product of
expressing the EPO gene in mammalian cells was not
anticipated by prior art EPO purified from urine, where
the patentee showed that the claimed EPO was new
because was structurally and functionally different from
prior art EPO); Smithkline Beecham, 2/24/06 (issue was
not addressed by the CAFC, as held that appellant
waived argument))
- A new product may be patented by reciting source

or process limitations so long as the product is new
and unobvious Wabash (S.C.) (Greenliant
Systems, 8/22/12; Amgen, 9/15/09 (claimed EPO
purified from mammalian cells grown in culture
was a new product claimed with reference to its
source and thus not anticipated by prior art EPO
purified from urine; citing cases))
Purpose of product-by-process claims
- Purpose of a product-by-process claim is to claim an

otherwise patentable product that resists definition by
other than the process by which the product is made In
1635
re Thorpe (this was the case in Scripps) (Amgen, 9/15/09
(the process limitation embodies the difficult-to-
describe distinctions that render the product patentable);
Smithkline Beecham, 2/24/06)
- Necessity rule rejected by the PTO claims

need only meet the definiteness requirement of
Section 112 (Smithkline Beecham, 2/24/06)
Ranges
- Overlap between claimed ranges and prior art ranges

(Clearvalue, 2/17/12; Perricone, 12/20/05); See also
OBVIOUSNESS . . . .Ranges
- Genus anticipates species? Atofina (Osram

Sylvania, 12/13/12 (whether species limitation of
less than 0.5 torr was anticipated by prior art genus
disclosure of approximately 1 torr or less
revealed clear disputed material issues of fact
requiring reversal of SJ of anticipation, including
that the challenger failed to rebut the testimony of
the patentees expert regarding the importance of
the claimed pressure to the invention, or how a
POS in the art would understand the prior art
reference, or how a POS in the art would
understand the relative size of a genus or species in
a particular technology, which is of critical
importance to the anticipation inquiry applying
Atofina to ClearValue); Clearvalue, 2/17/12
(distinguishing Atofina in which the narrow
claimed range that fell within a broad prior art
genus range was described as critical))
- Slight overlap(s) in ranges is not anticipation

(Clearvalue, 2/17/12 (claimed range of 50 ppm or
less was anticipated by prior art range of 150 ppm
1636
or less, distinguishing Atofina in which the claimed
narrow temperature range that fell within a broad
prior art range was described in the patent and PH
as critical in that temperatures outside the range
were taught to work differently or not work at all,
and therefore the considerable difference
between the claimed and prior art ranges precluded
anticipation); Atofina, 3/23/06); See also In re
Haase, 10/30/13 (nonprecedential when
overlapping ranges, the prior art reference must
describe the claimed range with sufficient
specificity to anticipate the limitation of the claim
a broad prior art disclosure that encompasses a
narrower claimed range is sometimes not enough
for anticipation Atofina)
- Ranges in the prior art are not a specific disclosure of

endpoints (Atofina, 3/23/06)
Teaching away is inapplicable to anticipation
(In re Montgomery, 5/8/12 (n.11); Clearvalue, 2/17/12 (district

court erred in holding that expert testimony regarding a prior art
reference teaching away from the invention was substantial
evidence of lack of anticipation); Krippelz, 1/27/12; Billups-
Rothenberg, 4/29/11; Therasense, 1/25/10 (claim limitation was
contemplated by the prior art reference, despite not being
preferred) [vacated on 4/26/10, and reinstated by
Therasense, 5/25/11 (en banc)]; Leggett & Platt, 8/21/08;
Impax Labs, 11/20/06; Xerox, 6/8/06 (teaches away was a
reason for lack of anticipation); Seachange Intl, 6/29/05;
Rasmusson, 6/27/05; Upsher-Smith, 6/17/05)
- A reference is no less anticipatory if, after disclosing the

invention, the reference then disparages it the claims
need only read on something in the prior art reference
(Krippelz, 1/27/12 (opinions of an expert are not a
1637
substitute for the actual prior art disclosure); Billups-
Rothenberg, 4/29/11 (anticipation by prior art patent
despite qualifying the utility of disclosure using may);
Therasense, 1/25/10 [vacated on 4/26/10, and
reinstated by Therasense, 5/25/11 (en banc)]; Impax
Labs, 11/20/06)
That which infringes if later, anticipates if earlier
- [T]hat which would literally infringe if later in time

anticipates if earlier than the date of invention
Schering, Lewmar Marine (Teva, 12/1/11 (applying rule
implicitly where the defendant conceded infringement for
the limited purpose of its SJ motion, and the patentee
alleged infringement in the complaint, and the alleged
infringing drug product was RTPed before conception of
the claimed invention); Classen, 8/31/11 (rejecting
argument where anticipation not proven); Astrazeneca,
11/1/10 (rejecting the accused infringers argument
where the prior art reference expressed a different
teaching than the proposed drug product label; see also J.
Bryson, dissenting); Intl Seaway Trading, 12/17/09
(applying to design patents the well-established rule that
the same test must be used for both infringement and
anticipation, except for product-by-process claims
(n.4))); Iovate Health Sciences, 11/19/09 (published prior
art advertisements teaching of enhancing muscle
strength by nutritional supplements anticipated claimed
method since the patentee relied on the accused
infringers advertising claims of enhancing muscle
strength to support infringement by the accused
products); Amgen, 9/15/09 (axiom does not apply to
product-by-process claims, explaining why that which
anticipates if earlier does not necessarily infringe if later
and that which infringes if later does not necessarily
anticipate if earlier); Ecolab, 6/9/09 (applying this
well-established law where clear that one would
1638
infringe the disputed method claim if they practiced the
prior art method); Poweroasis, 4/11/08 (patentee
conceded anticipation unless entitled to the benefit of an
earlier application filing date); Upsher-Smith, 6/17/05;
SmithKline, 4/8/05; Lisle, 2/11/05); See also Boesen,
12/15/11 (nonprecedential applying rule)
- Anticipation cannot be proved by merely

establishing that one practices the prior art
mere proof that the prior art is identical, in all
material respects, to an allegedly infringing
product cannot constitute C&C evidence of
invalidity; anticipation requires showing that each
element of the claim at issue, properly construed,
is found in a single prior art reference (Teva,
12/1/11 (defendants burden was met for purposes
of SJ based on the plaintiffs allegation, forming
the sole basis for the complaint, that the asserted
prior art/accused product infringed Evans
Cooling); Verizon, 4/16/10; Praxair, 9/29/08 (jury
properly rejected arguments, and the testimony of
the accused infringers expert, that a prior art
reference anticipated the claimed capillary
feature because the reference disclosed a sintered
filter similar to both the filter described in the
patent in suit and the filter which the jury found
infringing); Zenith Electronics, 4/16/08
(analogizing to rule in Tate Access Floors that
noninfringement cannot be proved by comparing
an accused product to the prior art (i.e., the
practices the prior art defense to infringement)))
- Where a patent is granted in a field of invention

abundant with prior art, a patentee will sometimes
find it difficult to establish that his patent is broad
enough to cover an accused product, yet narrow
enough to avoid the prior art Augustine Med.
(Old Reliable Wholesale, 3/16/11 (patentees non-
1639
anticipation argument was reasonable despite the
patentee facing significant challenges in its efforts
to establish that the patent was not anticipated by
the prior art (VT-2) product, but was nonetheless
infringed by the VT-1 product))
D. OBVIOUSNESS
On April 30, 2007, the U.S. Supreme Court, in KSR Intl v.

Teleflex Inc., rejected a rigid application of the CAFCs teaching,
suggestion, or motivation (TSM) test, under which a patent claim is
proved obvious when the prior art, the nature of the problem
addressed by the invention, or the knowledge of a person of ordinary
skill (POS) in the art reveals some motivation or suggestion to
combine or modify prior art teachings (See discussion of KSR below
in Combining prior art/teaching, suggestion, or motivation to
combine, modify prior art).
(Ohio Willow Wood, 11/15/13 (affirming obviousness of dependent

claims based on the predictable use of well-known prior art features
according to their established functions, and rejecting weak evidence
of secondary considerations); Randall Mfg., 10/30/13 (vacating the
BPAIs determination of nonobviousness in inter partes reexam as
infected by prejudicial error, where the BPAI ignored background
knowledge in the bulkhead design art in the form of additional prior
art references, while focusing on only four cited prior art references
for finding no motivation to combine; referring to KSRs rejection of a
blinkered focus on individual documents); In re Biedermann,
10/18/13; Broadcom, 10/7/13; Meadwestvaco, 9/26/13 (vacating and
remanding SJ of nonobviousness where the district court erred by
resolving material issues of fact based on evidence from the
challenger in favor of the patentee, and because obviousness (and
evidence of secondary considerations), like other grounds of
invalidity, must be argued on a claim by claim basis; see also n. 5:
noting the merits of using transitional term consisting essentially of
for nonobviousness); Rambus, 9/24/13 (vacating and remanding BPAI
decision that was based on new reasons for combining the prior art
1640
references, absent adequate notice to the appellant, and the BPAI
erred in its analysis of the objective evidence); High Point Design,
9/11/13 (obviousness of design patent); St. Jude Medical, 9/11/13 (no
motivation to combine prior art references which taught substitutes to
achieve the same objective and not use together to achieve the
positioning benefit of the claimed invention, stating that even under
an expansive and flexible obviousness analysis, the court must
guard against hindsight bias and ex post reasoning citing KSR
(S.C.)); Leo Pharm., 8/12/13 (reversing the BPAIs determination of
obviousness where it incorrectly weighed the objective indicia of
nonobviousness, and the prior art taught away (multiple examples),
and there was no motivation to combine or modify (old) prior art to
arrive at the invention, and the invention was first recognizing and
then solving the problem of storage stability when combining two
drug components in one formulation); Apple, 8/7/13 (ITC failed to
consider compelling evidence of secondary considerations (copying,
industry praise, commercial success) in determining obviousness);
Cheese Systems, 8/6/13; Plantronics, 7/31/13 (reversing SJ where the
district court failed to properly consider secondary considerations as
part of the obviousness determination); Teva, 7/26/13 (affirming
nonobviousness based on teaching away and secondary
considerations); In re Adler, 7/18/13 (affirming the BPAI that claimed
imaging method was obvious as a predictable variation of a
combination of prior art references citing KSR (S.C.)); Smith &
Nephew, 7/9/13 (reversing the BPAIs judgment of nonobviousness
despite the high burden for overcoming substantial evidence standard
of review for the BPAIs factual findings); Novo Nordisk, 6/18/13
(affirming obviousness of drug combination therapy where not
rebutted by an unexpected synergistic result; see also J. Newman,
dissenting synergistic combination of the two drugs was
nonobvious, where the combination was eight-fold more effective
than the additive properties, and was a life-saving treatment for
diabetics previously untreatable, and the inventors pursued the
combination despite the advice of other experts that they were wasting
their time and money); Alexsam, 5/20/13; Allergan, 5/1/13 (evidence
of nonobviousness that separate drugs could be administered at a
lower daily dose in a combination drug product while maintaining the
same efficacy was relevant to method claims directed to the above
1641
feature, but not to claims to the combination drug product where there
was a clear motivation in the prior art to combine the drugs into a
single composition for achieving better patient compliance); Bayer,
4/16/13 (reversing the district courts SJ that claims were not invalid
for obviousness, where the cited prior art references taught all of the
claim limitations and provided express motivation to combine the
teachings to derive the claimed oral contraceptive with a reasonable
expectation of success) [On 8/12/13, the CAFC denied Bayers
petition for en banc rehearing; Judge Reyna dissented without
opinion from the denial of the petition]; Power Integrations, 3/26/13
(considering secondary considerations as part of the obviousness
analysis, finding that the record was replete with testimony and other
evidence demonstrating that the patented technology was far less
obvious than the prior art reference on its face suggested); Synqor,
3/13/13 (nonobviousness was supported by multiple secondary
considerations); Rexnord, 1/23/13 (reversing the BPAIs
determination of nonobviousness and reinstating the examiners
decision of obviousness in an inter partes reexamination where the
less than 10 mm spacing feature of conveyor belt claims was
obvious based on the prior art teaching that spacing between modules
should be limited against small objects and to prevent pinching of
fingers); Soverain Software, 1/22/13 (reversing the district courts
determination that the patents in suit were nonobvious after the court
removed obviousness from the jurys consideration, where the
accused infringer presented C&C evidence by expert testimony that
adapting internet technology to prior art processes was obvious) [On
6/13/13, the CAFC granted rehearing for the purpose of clarifying
the status of claims 34 and 35 of the 314 patent; On 9/4/13, in a
per curiam opinion, the CAFC determined that the dependent
claim 35 also was obvious over the same prior art citing KSR
(S.C.)]; C.W. Zumbiel, 12/27/12 (affirming the BPAIs conclusion of
obviousness with respect to can dispenser carton claims, and
nonobviousness with respect to other claims as supported by
substantial evidence; see also J. Prost, dissenting would not give the
BPAI deference, in that it failed to apply KSR (S.C.) in concluding
nonobviousness and that a common sense application of the
obviousness doctrine should filter out low quality patents such as this
one . . . This case is about a paper carton and that contrary to KSR
1642
(S.C.), overemphasis on the importance of teachings of prior art
insulated the BPAIs analysis from pragmatic and common sense
considerations that are so essential to the obviousness inquiry);
Astrazeneca, 12/14/12 (affirming that pharmaceutical compound
claim was not obvious, rejecting a challenge based on obvious to try
where obvious to try was negated by the general skepticism
concerning pyrimidine-based statins, also that other pharmaceutical
companies had abandoned the general structure, and evidence that the
prior art taught a preference for a lipophilic, rather than hydrophilic,
substitution)); Osram Sylvania, 12/13/12 (reversing where genuine
issues of material fact, including competing expert testimony,
precluded finding anticipation and obviousness on SJ, and the district
court erred by not considering objective indicia of nonobviousness);
Pregis, 12/6/12; Arcelormittal France, 11/30/12 (reversing denial of
JMOL of nonobviousness and remanding for a new trial based on the
CAFCs new claim construction where the district courts claim
construction error prevented the jury from properly considering the
patentees evidence of commercial success to rebut prima facie case);
Transocean, 11/15/12 (reversing grant of JMOL of obviousness,
where prima facie case of obviousness was rebutted when weighed
against evidence of 7 objective factors supporting nonobviousness);
Norgren, 11/14/12 (affirming obviousness based on motivation to
modify prior art connector with a hinge from a prior art reference to
solve loose parts problem, where the ITCs determination of
obviousness, including its assessment of secondary considerations,
and finding that the prior art connector was both four-sided and
generally rectangular was supported by substantial evidence,
including evidence that four sides were essential to the connectors
functionality, notwithstanding the existence of other indents, cutouts,
protrusions, and other non-functional structural elements; see also J.
Moore dissenting the prior art device had sixteen sides, and thus was
not four-sided as claimed (and as the ALJ found), stating that [i]t
defies logic and the whole clamp must be four-sided and generally
rectangular, not just a portion of the clamp, and that obviousness
must be based on the precise claim language and be ever vigilant not
to strip away patent rights by eliminating claim limitations based on
expert testimony); Voter Verified, 11/5/12 (affirming obviousness of
computerized voting method claim over single online reference based
1643
on expert testimony where no contrary evidence presented); Pozen,
9/28/12 (affirming that combination of prior art drugs in a single
tablet was not obvious based on the scope of the prior art references
for which there was no motivation to combine, where the added
benefits from combining the drugs was not obvious); Outside the Box
Innovations, 9/21/12 (expert testimony was improperly excluded
under Eleventh Circuit law and FRE 702); In re Droge, 9/21/12
(methods for recombining DNA using modified integrases held
obvious because a POS in the art would have had a reasonable
expectation of success in combining prior art references, and where
another reference rebutted the inventors declaration of no reasonable
expectation of success); K-Tec, 9/6/12 (claims held not obviousness
where the cited prior art was non-analogous); Santarus, 9/4/12 (some
asserted claims held obvious where no teaching away; see also J.
Newman, dissenting prior art taught away from non-enteric coated
PPI of invention); In re Applied Materials, 8/29/12 (affirming the
BPAIs decision based on overlapping ranges (of result-effective
variables), where invention arrived at by routine optimization and the
applicant failed to show unexpected results or prove commercial
success; see also J. Newman, dissenting secondary considerations
probative of nonobviousness); Woods, 8/28/12; Amkor Technology,
8/22/12 (no motivation or reason to remove fused lead from prior art
reference (or that common sense would have led the POS in the art to
remove the fused lead based on a known problem, design need, or
market pressure) to arrive at the claimed invention citing KSR
(S.C.)); Meyer, 8/15/12 (proper for expert to rely in expert report on
common sense for motivation to combine prior art, where the
technology was easily understandable; see also J. Dyk, concurring
case is wasteful litigation and an example of what is wrong with
our patent system); Kinetic Concepts, 8/13/12 (reversing JMOL of
obviousness after determining that the jurys explicit and implicit
factual findings with respect to the Graham (S.C.) factors were
supported by substantial evidence, including that substantial evidence,
e.g., expert testimony, supported the jurys implied factual findings --
the CAFC assumed these findings in light of the verdict -- that none
of the prior art references disclosed the treatment of wounds using
negative pressure, or provided any reason to combine the references;
see also J. Dyk, concurring disagreeing with the majoritys narrow
1644
construction of critical term healing but agreeing that no motivation
to combine the prior art references); Alcon Research, 8/8/12
(pharmaceutical method of use claims held obvious where recited
drug concentration ranges overlapped with prior art drug
concentrations, while other claims reciting a specific concentration
(0.1% w/v) were held nonobvious where the prior art taught using
substantially lower concentrations (up to 0.01% w/v)); In re Antor
Media, 7/27/12 (no nexus was shown for licensing as a secondary
consideration); Sciele Pharma, 7/2/12 (vacating PI where motivation
to combine prior art references previously considered by the PTO, and
cancelled claims considered unpatentable over the prior art were
mistakenly issued; applying several KSR (S.C.) rules regarding
predictability and motivation to combine prior art references); In re
Mouttet, 6/26/12 (combining multiple references does not require an
actual physical substitution of elements; also, no teaching away);
Wrigley, 6/22/12 (obviousness not overcome where no nexus shown
between evidence of secondary considerations (unexpected results,
commercial success, and copying) and the claimed chewing gum
composition; see also J. Newman, dissenting the advantageous
properties of the claimed combination were not predicted or suggested
or even hinted in any reference); Mintz, 5/30/12 (record evidence was
required to support the district courts common sense basis for
concluding obviousness based on obvious to try; the district court
also used improper hindsight; and objective indicia of nonobviousness
is independent evidence of nonobviousness); In re Hyon, 5/24/12
(affirming the BPAI based on a motivation to combine two prior art
references, where the BPAI correctly followed Wesslau (CCPA) by
selecting an element emphasized by one of the references as
responsible for improved properties, while also considering the
reference as a whole for a full appreciation of what the reference
suggested to a POS in the art; see also J. Newman, dissenting the
BPAI used improper hindsight and the invention to select prior art
elements); Apple, 5/14/12 (obviousness of design patents see
DESIGN PATENTS); Otsuka, 5/7/12 (affirming the district court that
the claimed compound was not structurally obvious over the
defendants asserted prior art lead compounds; also, the defendants
obviousness case was a poster child for impermissible hindsight
reasoning); In re Cyclobenzaprine, 4/16/12 (reversing and holding
1645
composition and method claims containing a therapeutically
effective limitation nonobvious, where the district court failed to
consider the lack of a known pharmacokinetic and pharmacodynamic
relationship for the claimed drug formulation and thus legally erred by
relying on bioequivalence in concluding obviousness); Aventis
Pharma, 4/9/12 (affirming obviousness based on the Titanium Metals
rule that a claim covering several compositions is anticipated if one of
them is in the prior art); MySpace, 3/2/12 (affirming the district
courts SJ of invalidity of the claims based on anticipation or
obviousness, despite the district court not making specific findings on
each of the Graham factors); Bard, 2/10/12 [vacated in part after
remanded on 6/14/12]; Mettler-Toledo, 2/8/12 (affirming jurys
obviousness verdict, where no teaching away); Celsis In Vitro, 1/9/12
(no clear error in granting PI where the patentee through expert
testimony showed nonobviousness; see also J. Gajarsa, dissenting
the majority applied pre-KSR (S.C.) obviousness standard, and
arguing that [r]epeating known steps to obtain a desired result is not
inventive); In re Construction Equipment Co., 12/8/11 (affirming
obviousness of reexamined patent that had been previously finally
adjudged valid by a district court and affirmed by the CAFC); Star
Scientific, 8/26/11 (no C&C evidence of obviousness based on
motivation to combine from speculative and tentative disclosure of
may and might in prior art reference); Unigene Labs, 8/25/11
(pharmaceutical formulation was not an obvious solution to the design
need and market demand for a formulation that was bioequivalent to
and treated the same symptoms as the reference formulation);
Genetics Institute, 8/23/11 (structural obviousness not shown for
interference-in-fact in Section 291 action); August Tech., 8/22/11
(jurys fact findings of nonbviousness were supported by substantial
evidence, including expert testimony, even assuming the patentees
device was on sale under Section 102(b)); In re NTP I, 8/1/11
(BPAI improperly relied on hindsight reasoning); Retractable Techs.,
7/8/11 (jury verdict of nonobviousness was supported by substantial
evidence, including expert testimony of a lack of motivation to
combine the prior art references and secondary considerations); Tyco
Healthcare, 6/22/11 (claimed composition reciting narrow dosage
range encompassed by prior art dosage range for same use held
obvious); Spectralytics, 6/13/11 (prior art machines taught away from
1646
the claimed machine, based on expert testimony, and alleged finite
change was not predictable); In re Klein, 6/6/11 (reversing the BPAIs
judgment of obviousness after concluding that the five prior art art
references the BPAI relied on were non-analogous art); Allergan,
5/19/11 (rejecting obvious to try argument with respect to the
claimed formulation combining two prior art products; see also J.
Dyk, dissenting a POS in the art would have found the combination
of the two commercially successful products obvious to try); Hynix,
5/13/11 (disincentives for combining prior art references are relevant
to the obviousness inquiry); In re Kao, 5/13/11 (evidence of secondary
considerations requires a nexus to the merits of the claimed invention
not in the prior art); Innovention Toys, 3/21/11; In re Katz Patent
Litigation, 2/18/11; Tokai, 1/31/11 (affirming SJ of obviousness
where motivation to combine prior art was found in the nature of the
problem to be solved, the need for safer utility lighters; see also J.
Newman, dissenting, relying on the ingenious [child-proof] safety
design of the claimed utility lighter that did not result from direct
combination of the prior art, and that at least genuine issues of
material fact existed); In re Glatt, 1/5/11 (prima facie case of
obviousness not made by the BPAI where not supported by substantial
evidence); Western Union, 12/7/10 (claimed invention was obvious
where was common sense for a POS in the art to combine well-known
prior art elements, and use the internet, with the prior art system to
obtain a predictable result in the claimed money transfer methods);
Daiichi Sankyo, 9/9/10 (affirming structural nonobviousness, where
no motivation to select or modify the chosen lead compounds, where
other prior art compounds were more potent); Spine Solutions, 9/9/10
(affirming jury verdict of nonobviousness supported by substantial
evidence that not obvious for a POS in the art to combine the two
cited references); Green Edge, 9/7/10; Eli Lilly, 9/1/10 (raloxifene
HCl not obvious for treating and preventing postmenopausal
osteoporosis, in view of bioavailability concerns with the drug taught
in the prior art); Martin, 8/20/10 (bundle breaking machine was
obvious where the alleged efficiencies (a threshold throughput or
commercial speed) compared to the prior art machines were
unclaimed); Transocean, 8/18/10 (reversing grant of SJ of
obviousness where the district court failed to consider secondary
considerations; also, reversing grant of SJ of nonobviousness for
1647
failure to view facts in the light most favorable to the nonmoving
party (cited in Meadwestvaco, 9/26/13)); King, 8/2/10; Wyers,
7/22/10 (reversing denial of JMOL of obviousness where motivation
to combine prior art references to make the claimed lock with
adjustable sleeves and an external seal was based on common sense);
TriMed, 6/9/10; Dow Jones, 5/28/10 (method of making websites was
obvious over prior art patent in view of general knowledge in the
field); Vizio, 5/26/10 (prior art failed to meet all claim elements);
Honeywell, 5/25/10 (prior art references did not disclose claim
element as properly construed as requiring the passing of perceptible
red light; see also J. Mayer, dissenting invention was obvious based
on KSR (S.C.) whether or not the claim required perceptible red light);
Rolls-Royce, 5/5/10 (nexus established to secondary considerations);
Hearing Components, 4/1/10; Power-One, 3/30/10 (affirming jury
verdict of nonobviousness based on expert testimony and secondary
considerations); Pressure Products, 3/24/10; i4i, 3/10/10 (accused
infringer waived right to challenge the jurys implicit factual findings
by not filing a pre-verdict JMOL motion on obviousness); Media
Techs., 3/1/10 (affirming SJ of obviousness of the claimed trading
card having an attached piece of memorabilia; see also J. Rader,
dissenting referring to the majoritys bias against non-technical
arts in [r]elying on wholly irrelevant prior art and ignoring
significant objective indicia of non-obviousness); Comaper, 3/1/10
(granting new trial based on inconsistent jury verdicts on
obviousness); In re Chapman, 2/24/10 (vacating and remanding the
BPAIs decision of obviousness where the sole question on appeal
was the accuracy of the BPAIs description of the primary prior art
reference); Crocs, 2/24/10 (reversing the ITCs holding of
obviousness, where the prior art taught away from the claimed
footwear combining a foam strap riveted to a foam base with direct
contact, and several secondary considerations); Therasense, 1/25/10
(rejecting argument based on long-felt but unsolved need where the
claims were broader than (i.e., not commensurate with) the evidence);
Therasense, 1/25/10 (rejecting the patentees contention of entitlement
to a presumption of a nexus where the commercial success of the
product embodying the claimed invention also was due to a second
(prior art) patent) [vacated on 4/26/10, and reinstated by
Therasense, 5/25/11 (en banc)]; Source Search, 12/7/09 (genuine
1648
issues of material fact barred SJ, without resolution of which the
district court should not have reached the legal conclusion that a POS
in the art would have known to combine the prior art references to
achieved the claimed system); Perfect Web, 12/2/09 (holding method
for managing bulk email distribution obvious based on common
sense and obvious to try where the method and its final step simply
recited repeating a known procedure recited in the other steps until
success was achieved); Fresenius, 9/10/09 (reversing the district
courts grant of JMOL where the jurys implicit fact findings
(including a motivation to combine the prior art) underlying the
verdict were supported by substantial evidence, including expert and
other witness testimony and exhibits); Bayer Schering, 8/5/09
(affirming district court that claimed drug formulation was obvious as
obvious to try; see also J. Newman, dissenting); Depuy Spine,
6/1/09 (rejecting the ensnarement of prior art defense to DOE
infringement based on obviousness); Altana Pharma, 5/14/09 (PI
denied where a substantial question of obviousness of the claimed
compound was shown); Procter & Gamble, 5/13/09 (pharmaceutical
compound which was a positional isomer of a prior art compound was
held not obvious, where the field of art (bisphosphonates) was
unpredictable); Ritchie, 4/24/09 (glass sexual device made of standard
borosilicate glass (used in Pyrex), having well-known properties, was
obvious; contrasting the sexual device with a medical device, which
requires testing for safety and efficacy and FDA approval before it
can be sold); In re Kubin, 4/3/09 (claimed gene (i.e., sequenced DNA
molecule) encoding a known receptor protein was obvious based on
conventional cloning and sequencing methodologies known to POSs
in the art); Monolithic Power Systems, 3/5/09 (affirming jury verdict
of obviousness based on substantial evidence and motivation to
combine embodiments of a prior art patent, as skilled circuit designers
would routinely mix and match claim elements well known in the
art); Rothman, 2/13/09 (affirming jury verdict of obviousness of
nursing tank top, which combined existing tank top and existing
nursing bra, as in very predictable art); Ball Aerosol, 2/9/09
(reversing the denial of motion for SJ of obviousness based on
obvious to try); Sd-Chemie, 1/30/09 (vacating SJ of obviousness
where fact issues regarding a difference between the claimed
desiccant container and a prior art patent, and unexpected results);
1649
Boston Scientific Scimed, 1/15/09 (reversing jury verdict of
nonobviousness, emphasizing that the CAFC is the ultimate decision
maker on the question of obviousness); Sundance, 12/24/08 (patent
held obvious despite excluding (patent law) experts testimony
regarding obviousness); Ricoh, 12/23/08 (overlapping ranges);
Rentrop, 12/18/08 (ruling (in dicta) that jury instruction was
consistent with KSR (S.C.)); Sanofi-Synthelabo, 12/12/08
(nonobviousness, based on unpredictability, of substantially separated
enantiomer over prior art disclosure of its racemate); In re DBC,
11/3/08; Abbott Labs, 10/21/08 (three-way split decision on
obviousness defense to the grant of a PI J. Newman, concluding a
likelihood of success for showing nonobviousness based on the KSR
standards to support the grant of PI, J. Archer, concurring in the grant
of the PI, but not with J. Newmans obviousness ruling, and J.
Gajarsa, dissenting); In re Tzipori, 10/15/08 (nonprecedential
encouraging the BPAI to explore the flexible approach to
obviousness after KSR (S.C.) and to provide its reasoning in writing);
Asyst Techs., 10/10/08 (affirming JMOL of obviousness based on
KSR (S.C.) and admissions by the patentees expert, where the jurys
pre-KSR verdict of nonobviousness was not supported by substantial
evidence); CSIRO, 9/19/08 (district courts SJ of nonbviousness based
on too rigid of an analysis of the prior art in light of KSR (S.C.);
addressing obviousness based on the nature of the problem to be
solved by the invention as providing the motivation for combining
prior art references); In re Omeprazole, 8/20/08; Voda, 8/18/08; Eisai,
7/21/08; Muniauction, 7/14/08; Scanner Techs., 6/19/08; Ortho-
McNeil, 3/31/08; Agrizap, 3/28/08 (reversing denial of motion for
JMOL as to obviousness, despite giving deference to the jurys fact
findings, citing KSR (S.C.); Erico Intl, 2/19/08 (substantial question
of obviousness established to vacate PI); Innogenetics, 1/17/08 (expert
testimony, report excluded for failure to explain motivation to
combine prior art); Cordis, 1/7/08 (jury instruction regarding
obviousness was proper under KSRs (S.C.) holding that TSM test not
to be applied rigidly); In re Translogic Technology, 10/12/07;
Verizon, 9/26/07 (jury instructions; see also dissent, C.J. Michel);
Daiichi Sankyo, 9/12/07; Aventis Pharma, 9/11/07; Forest Labs,
9/5/07; In re Sullivan, 8/29/07; In re Trans Texas Holdings, 8/22/07;
In re Icon Health and Fitness, 8/1/07; Astrazeneca, 7/23/07
1650
(obviousness-type double patenting; cites KSR (S.C.)); Pharmastem,
7/9/07; Takeda, 6/28/07; Leapfrog Enterprises, 5/9/07; Syngenta
Seeds, 5/3/07 (nonprecedential); SUPREME COURTS DECISION
IN KSR V. TELEFLEX, 4/30/07; In re Omeprazole, 4/23/07; Pfizer,
3/22/07 [Order denying Pfizers petition for rehearing and
rehearing en banc, 5/21/07 J. Newman and J. Lourie (both
having advanced degrees in chemistry, pharma) and J. Rader
dissented in the denial of the petition, concluding that Pfizer had
shown unexpected and superior results for the claimed besylate
salt, and cited the rule that patentability shall not be negatived
by the manner in which the invention was made 35 USC 103; J.
Newman - the panels application of the obvious-to-try standard is
in direct conflict with the law that patentability shall not be
negated by the manner in which the invention is made 35 USC
103; with biological and medicinal products, small changes can
produce large differences; J. Lourie rather than giving
deference to the district courts fact findings, under the clearly
erroneous standard, the panel substituted its own findings; both
physical and therapeutic properties of the claimed compound
must be considered when determining unexpected properties, or
results; any useful and unexpected property is eligible for
overcoming a prima facie obviousness determination In re
Papesch (a compound and all of its properties are inseparable;
they are one and the same thing); the commercialization of
pharmaceutical compounds may depend on their possessing
unexpected properties; the claimed invention was unexpected, and
not the result of routine experimentation or verification of the
salts characteristics, as the panel determined patentability
shall not be negatived by the manner in which the invention was
made 35 USC 103; holding an inventors expectations of
success against the objective unexpectedness of the properties of
the compound unfairly suggests that an inventor should try only
that which he doubts will work . . . inventors generally are
optimistic about what they choose to experiment with, but that
does not necessarily suggest obviousness; J. Rader the obvious
to try standard has limited application in pharmaceutical cases
with unpredictable pharmaceutical inventions, the CAFC employs
a reasonable expectation of success analysis; both therapeutic and
1651
physical properties of a pharmaceutical must be considered in
assessing unexpected properties, or advantages; most
pharmaceutical inventions are discovered through a routine
screening protocol or through an established trial and error
process patentability shall not be negatived by the manner in
which the invention was made 35 USC 103; the panels decision
calls into question countless pharmaceutical patents, which in
turn could have a profoundly negative effect on investments into
the design and development of new life-saving pharmaceuticals];
Dippin Dots, 2/9/07; Sanofi-Synthelabo, 12/8/06; *Dystar, 10/3/06;
*Alza, 9/6/06; *Ormco, 8/30/06; Abbott Labs, 6/22/06; Old Town
Canoe, 5/9/06; *In re Kahn, 3/22/06; Kao, 3/21/06; Medichem, 2/3/06
( 291 action; interference-in-fact); In re Johnston, 1/30/06; *Cross
Medical Prods., 9/30/05; Princeton Biochemicals, 6/9/05; Harris,
5/25/05; Syntex, 5/18/05; Group One, 5/16/05; Merck, 1/28/05; Iron
Grip Barbell, 12/14/04; Alza, 12/10/04; In re Fulton, 12/2/04; Cardiac
Pacemakers, 8/31/04; Bigio, 8/24/04; Metabolite Labs, 6/8/04; Knoll,
5/19/04; Ruiz, 1/29/04; National Steel Car, 1/29/04; Golight, 1/20/04;
CFMT, 11/12/03; Velander, 11/5/03; State Contracting, 10/7/03;
Medical Instr., 9/22/03; Akamai, 9/15/03; Torpharm, 7/23/03)
Generally - Obviousness 35 USC 103(a)
- Under section 103(a), a claimed invention is unpatentable

if the differences between it and the prior art are such that
the subject matter as a whole would have been obvious at
the time the invention was made to a person having
ordinary skill in the pertinent art 35 USC 103(a),
Graham v. John Deere (S.C.); KSR (S.C.) (Ohio Willow
Wood, 11/15/13; Randall Mfg., 10/30/13;
Meadwestvaco, 9/26/13; Leo Pharm., 8/12/13; Cheese
Systems, 8/6/13; Teva, 7/26/13; Bayer, 4/16/13; C.W.
Zumbiel, 12/27/12; Osram Sylvania, 12/13/12;
Transocean, 11/15/12; Pozen, 9/28/12; Outside the Box
Innovations, 9/21/12; K-Tec, 9/6/12; Santarus, 9/4/12;
Kinetic Concepts, 8/13/12; Alcon Research, 8/8/12; In re
Antor Media, 7/27/12; Sciele Pharma, 7/2/12; Mintz,
1652
5/30/12; Otsuka, 5/7/12; In re Cyclobenzaprine, 4/16/12;
Aventis Pharma, 4/9/12; Bard, 2/10/12 [vacated in part
after remanded on 6/14/12]; Celsis In Vitro, 1/9/12;
Star Scientific, 8/26/11; Unigene Labs, 8/25/11;
Retractable Techs., 7/8/11; In re Klein, 6/6/11; In re Kao,
5/13/11; Innovention Toys, 3/21/11; Tokai, 1/31/11; In re
Glatt, 1/5/11; Daiichi Sankyo, 9/9/10; Green Edge,
9/7/10; Eli Lilly, 9/1/10; Martin, 8/20/10; Transocean,
8/18/10; King, 8/2/10; Wyers, 7/22/10; TriMed, 6/9/10;
Dow Jones, 5/28/10; Honeywell, 5/25/10; Power-One,
3/30/10; Media Techs., 3/1/10; Bayer Schering, 8/5/09;
Procter & Gamble, 5/13/09; Ball Aerosol, 2/9/09;
Sundance, 12/24/08 (n.3); Sanofi-Synthelabo, 12/12/08
(stating that the determination is made with respect to
the subject matter as a whole, not separate pieces of the
claim KSR (S.C.)); In re DBC, 11/3/08; Muniauction,
7/14/08; In re Translogic Technology, 10/12/07;
Pharmastem, 7/9/07; Takeda, 6/28/07; Pfizer, 3/22/07;
*Dystar, 10/3/06; *Alza, 9/6/06; Ormco, 8/30/06; *In re
Kahn, 3/22/06); See also Ortho-McNeil, 8/26/09
(nonprecedential Each case must be decided in its
particular context, including the characteristics of the
science and technology, the nature of the choices
available to one skilled in the art, the specificity of the
prior art, and the predictability of the results in the area
of interest Abbott Labs)
- Correct analysis is whether would have been

obvious to the hypothetical POS in the art (Cheese
Systems, 8/6/13; Novo Nordisk, 6/18/13 (J.
Newman, dissenting patentability is determined
not from the position of the inventor, but from the
knowledge of the POS in the art citing Standard
Oil) Norgren, 11/14/12 (not relevant to
obviousness that the invention was not obvious to
the patentees expert personally who had not
considered it))
1653
- Inventions typically are new combinations of existing
principles or features Ruiz; inventions in most, if not
all instances rely upon building blocks long since
uncovered, and claimed discoveries almost of necessity
will be combinations of what, in some sense, is already
known KSR (S.C.) (In re Construction Equipment Co.,
12/8/11 (J. Newman, dissenting))
- Obviousness requires that a POS in the art would have

selected and combined prior art references, elements in
the normal course of research and development to yield
the claimed invention (Unigene Labs, 8/25/11
(pharmaceutical formulation was not obvious where a
POS in the art would not have selected and combined the
prior art references to arrive at the claimed formulation))
- Predictability is the touchstone of obviousness (Ohio

Willow Wood, 11/15/13; Novo Nordisk, 6/18/13 (J.
Newman, dissenting stating that [f]or questions of
biological synergism, predictability is notoriously
difficult citing In re Luvisi (CCPA)); Woods, 8/28/12
(stating that at bottom, the obviousness analysis is a
common sense test, and whether a POS in the art would
have found the invention a predictable and achievable
variation or combination of the prior art KSR (S.C.));
Alcon Research, 8/8/12 (motivation to adapt prior art
drug for human use where guinea pig models used in the
prior art were predictive of efficacy in humans); Otsuka,
5/7/12 (obviousness-type double patenting); Depuy
Spine, 6/1/09)
- A central principle in this inquiry is that a court

must ask whether the improvement is more than a
predictable use of prior art elements according to
their established functions KSR (S.C.) (Ohio
Willow Wood, 11/15/13 (features in dependent
claims were well-known in the prior art and
involved the exercise of routine skill); Soverain
1654
Software, 9/4/13 (subject matter of dependent
claim with additional known element was obvious
over same prior art as for the independent claim);
Pozen, 9/28/12 (prior art references failed to
disclose that the claimed combination drug therapy
had any added benefits over any of the components
given individually citing Crocs); Sciele Pharma,
7/2/12 (invention obvious to avoid PI); In re
Mouttet, 6/26/12 (where a patent claims a structure
already known in the prior art that is altered by the
mere substitution of one element for another
known in the field, the combination must do more
than yield a predictable result KSR (S.C.)); Celsis
In Vitro, 1/9/12 (affirming grant of PI based on a
likelihood of success on nonobviousness, where
the claimed invention is in an art well-known for
its unpredictability; also relying on the district
courts finding that the accused infringers experts
did not predict the results of the claimed method at
the time of the invention, nor did they show that
other scientists had; see also J. Gajarsa, dissenting
the claimed method is an obvious repeating of
well-known steps to obtain the desired result);
Tokai, 1/31/11 (affirming SJ of obviousness where
claimed utility lighter having safety feature was
predictable based on other prior art lighters having
the safety feature; see also J. Newman, dissenting);
Western Union, 12/7/10 (claimed money transfer
methods were obvious); Rolls-Royce, 5/5/10;
Crocs, 2/24/10 (the claimed foam shoe (and its
passive restraint system) yielded more than
predictable results, even if the shoe was a
combination of known elements according to their
established functions); Depuy Spine, 6/1/09;
Sanofi-Synthelabo, 12/12/08 (separated
enantiomer with its superior properties was
unpredictable over prior art racemate);
Muniauction, 7/14/08 (ruling that it would have
1655
been obvious to a POS in the art to modify a prior
art system to incorporate conventional, i.e., well
known, web browser functionality)); See also
Stone Strong, 10/17/11 (nonprecedential
predictable combination of prior art elements to
address a known problem); Cimline, 3/2/11
(nonprecedential predictable combination of
prior art elements)
- Obviousness protects the public at large, not a particular

infringer thus, no estoppel from asserting invalidity
because one tried to patent substantially the same thing
Haughey (S.C.) the challengers patent application
should be treated no differently than an application by a
third party (Wyers, 7/22/10)
- Failure to cite the same prior art in ones own

patent application to similar technology does not
defeat an argument of obviousness based on the
prior art the relevant inquiry is what the
hypothetical POS in the art would have gleaned
from the references (Wyers, 7/22/10)
General rule of obviousness legal conclusion, based on Graham

v. John Deere (S.C.) factual factors (4)
- Obviousness analysis, which is a Q of law, begins with

several basic factual inquiries under Graham (S.C.): 1)
the scope and content of the prior art; 2) the differences
between the prior art and the claimed invention; 3) the
level of ordinary skill in the pertinent art; and 4)
secondary considerations (which guard against slipping
into the use of hindsight and to resist the temptation to
read into the prior art the teachings of the invention at
issue) (Ohio Willow Wood, 11/15/13; Randall Mfg.,
10/30/13; In re Biedermann, 10/18/13; Broadcom,
10/7/13; Meadwestvaco, 9/26/13; Leo Pharm., 8/12/13;
1656
Cheese Systems, 8/6/13; Plantronics, 7/31/13 (motivation
to combine requirement focuses heavily on the first and
third Graham factors Alza; also emphasizing the fourth
factor where the district court failed to guard against the
use of hindsight by considering objective evidence of
nonobviousness); Teva, 7/26/13; Soverain Software,
1/22/13; C.W. Zumbiel, 12/27/12; Astrazeneca, 12/14/12;
Osram Sylvania, 12/13/12 (the CAFC has emphatically
rejected any formal burden-shifting framework in
evaluating the four Graham factors, citing the district
courts failure to consider evidence of secondary
considerations); Pregis, 12/6/12 (expert testimony on the
ultimate legal conclusion of obviousness is unnecessary
since appropriately left to the district court and CAFC);
Transocean, 11/15/12; Pozen, 9/28/12; Outside the Box
Innovations, 9/21/12 (the factual inquiries promote
uniformity and fairness, for [w]hat is obvious is not a
question upon which there is likely to be uniformity of
thought in every given factual context Graham
(S.C.)); In re Applied Materials, 8/29/12; Woods,
8/28/12; Kinetic Concepts, 8/13/12 (determining which
of the jurys explicit and implicit factual findings
regarding the Graham (S.C.) factors were supported by
substantial evidence, stating that courts must consider
all of the Graham factors prior to reaching a conclusion
with respect to obviousness, followed by the CAFC
examining the ultimate legal conclusion of obviousness
de novo to determine whether correct in light of the
jurys findings); Alcon Research, 8/8/12; Whitserve,
8/7/12; In re Antor Media, 7/27/12; Sciele Pharma,
7/2/12; Mintz, 5/30/12 (addressing Graham factors and
concluding that district court used improper hindsight);
Otsuka, 5/7/12; In re Cyclobenzaprine, 4/16/12; Aventis
Pharma, 4/9/12; MySpace, 3/2/12 (although preferable,
district courts need not enumerate each of the Graham
factors when making an obviousness determination,
where the record establishes that the evidence was
properly before and considered by the court in making
1657
factual findings, and adequately supports the courts
judgment); Bard, 2/10/12 (district courts exhaustive
findings showed the substantial evidence of
nonobviousness in support of the jurys verdict) [vacated
in part after remanded on 6/14/12]; Celsis In Vitro,
1/9/12; Star Scientific, 8/26/11; Unigene Labs, 8/25/11;
Retractable Techs., 7/8/11 (substantial evidence
supported jurys presumed findings on factual issues
underlying nonobviousness verdict, and thus the CAFC
could not conclude claim was obvious despite fact that
figures in the cited prior art references showed
interchangeable mechanisms between the references); In
re Klein, 6/6/11; Innovention Toys, 3/21/11 (remanding
where the district court failed to consider the scope and
content of the prior art, and differences from the claimed
invention, based on KSR (S.C.), after erring in not finding
that a reference was analogous art); Tokai, 1/31/11
(affirming SJ of obviousness after thoroughly examining
the Graham factors; see also J. Newman, dissenting);
Western Union, 12/7/10; Daiichi Sankyo, 9/9/10; Green
Edge, 9/7/10 (remanding for the jury to decide whether
differences between the prior art and claimed invention);
Eli Lilly, 9/1/10; Martin, 8/20/10; Transocean, 8/18/10;
Wyers, 7/22/10; TriMed, 6/9/10; Power-One, 3/30/10
(limited scope of the prior art, significant differences
between the invention and the prior art, and the relevant
secondary considerations supported nonobviousness);
Media Techs., 3/1/10 (analyzing the obviousness of the
claimed trading card with attached piece of memorabilia
under the Graham factors; see also J. Rader, dissenting);
In re Chapman, 2/24/10; Crocs, 2/24/10 (the patented
shoe was not simply a combination of elements found in
the prior art, but rather an important part of the
combination (a foam strap riveted to a foam base with
direct contact) was not in the prior art); Source Search,
12/7/09 (stating #3 above as the characteristics and
understanding of an individual of ordinary skill in the
relevant field of art at the time of invention); Perfect
1658
Web, 12/2/09; Bayer Schering, 8/5/09; Depuy Spine,
6/1/09 (as applied to the ensnarement of prior art defense
to DOE infringement); Altana Pharma, 5/14/09; Procter
& Gamble, 5/13/09; Ball Aerosol, 2/9/09; Sanofi-
Synthelabo, 12/12/08 (secondary considerations might
be utilized to give light to the circumstances surrounding
the origin of the subject matter sought to be patented
Graham (S.C.)); Eisai, 7/21/08; Scanner Techs., 6/19/08;
Daiichi Sankyo, 9/12/07; Pharmastem, 7/9/07; Takeda,
6/28/07 (citing KSR (S.C.)); Pfizer, 3/22/07; **Dystar,
10/3/06; **Alza, 9/6/06; **In re Kahn, 3/22/06;
Medichem, 2/3/06; Princeton Biochemicals, 6/9/05;
Syntex, 5/18/05; Merck, 1/28/05; Iron Grip Barbell,
12/14/04; Metabolite Labs, 6/8/04); See also Cimline,
3/2/11 (nonprecedential addressing Graham factors in
concluding obviousness); In re Tzipori, 10/15/08
(nonprecedential obvious when the difference between
the prior art and the claimed invention is so slight as to
be necessarily obvious); See also Secondary
considerations
- Obviousness based on the claim as written the

asserted limitation must be in the claim, and not
imported from the specification (In re Kao, 5/13/11
(the patentees alleged purpose for including a
hydrophobic material in the claimed formulation
was irrelevant where the alleged purpose was not a
claim limitation; also, rejecting argument requiring
importation of limitation where nothing in the
claim required that the dosage be adjusted in
response to the informing step))
- While an analysis of obviousness always depends

on evidence that supports the required Graham
(S.C.) factual findings, it also may include recourse
to logic, judgment, and common sense available to
the POS in the art that do not necessarily require
explication in any reference or expert opinion
1659
(Outside the Box Innovations, 9/21/12; Meyer,
8/15/12 (expert report was sufficient in which the
expert relied on common sense for the motivation
to combine the prior art, where the technology was
easily understandable); Mintz, 5/30/12 (record
evidence was lacking to support the district courts
common sense basis for obviousness, i.e., record
support showing knowledge so basic that it
certainly lies within the skill set of an ordinary
artisan); Unigene Labs, 8/25/11 (a POS in the art
at the time of the invention interprets the prior art
using common sense and appropriate perspective
KSR (S.C.)); Western Union, 12/7/10 (combining
well-known prior art elements with the prior art
system would have been common sense for the
POS in the art); Wyers, 7/22/10 (finding
motivation to combine references based on
common sense, in lieu of expert testimony, where
the technology related to locks and was not
complex); Perfect Web, 12/2/09 (common sense to
add a repeating step at the end of the claimed
method where the other recited steps were known
prior art)); See also In re Nouvel, 8/29/12
(nonprecedential remanding the BPAIs
common sense basis for rejecting the claims as a
new ground for rejection; also applying Mintz rule
that common sense rejections require explicit
and clear reasoning based on some rational
underpinning why common sense compels a
finding of obviousness; see also J. Bryson,
dissenting); Stone Strong, 10/17/11
(nonprecedential relying on common sense to
combine prior art devices into a single device,
especially where expert testimony not needed for
simple mechanical technology citing Wyers);
Odom, 5/4/11 (nonprecedential district court did
not err in concluding common sense variation
and trivial change for a POS in the art over the
1660
prior art patent); Cimline, 3/2/11 (nonprecedential
relying on common sense); See also Motivation
to combine, modify may be implicit in the prior
art
- The ultimate judgment of obviousness is a legal

determination KSR (S.C.) - once having decided the
factual inquiries underlying obviousness (e.g.,
ascertained the differences between the prior art and the
patent claims, as construed, and considered any objective
indicia as part of the obviousness determination), the
court then turns to the legal question of whether it would
have been obvious to one of ordinary skill in the art to
combine or modify the prior art to arrive at the claimed
invention (Leo Pharm., 8/12/13 (question of law where
no unresolved issues of fact by the BPAI); Plantronics,
7/31/13; Tokai, 1/31/11 (affirming SJ of obviousness; see
also J. Newman, dissenting); i4i, 3/10/10 (the CAFCs
review was limited to the correctness of the district
courts legal conclusion of nonobviousness, where the
challenger failed to file a pre-verdict JMOL motion,
citing Kinetic Concepts); Kinetic Concepts, 2/2/09
(district court did not err by failing to conduct its own
obviousness analysis (based on the Graham (S.C.)
factors) where the jurys verdict was supported by
substantial evidence of nonobviousness and the accused
infringer failed to establish that the asserted claims were
obvious as a matter of law); Muniauction, 7/14/08
(modification of prior art system to incorporate web
browser was an obvious combination of two well known
prior art elements to a POS in the art))
- Obviousness is determined as a matter of law when

the factual inquiries underlying the obviousness
determination are not in material dispute, and the
obviousness of the claim is apparent in light of the
factors KSR (S.C.) (Plantronics, 7/31/13; Tokai,
1/31/11 (affirming SJ of obviousness; see also J.
1661
Newman, dissenting); Boston Scientific Scimed,
1/15/09 (reversing jury verdict of nonobviousness,
as obviousness is ultimately a Q of law that the
CAFC reviews de novo, stating: We are free to
override the jurys legal conclusion on the ultimate
question of obviousness); Sundance, 12/24/08
(reversing the district courts grant of JMOL of
nonobviousness, despite excluding (patent law)
experts testimony regarding obviousness))
- Where the content of the prior art, the scope

of the patent claim, and the level of ordinary
skill in the art are not in material dispute,
and the obviousness of the claim is apparent
in light of these factors, summary judgment
(or JMOL) is appropriate KSR (S.C.)
(Plantronics, 7/31/13; Tokai, 1/31/11
(affirming SJ of obviousness; see also J.
Newman, dissenting); Martin, 8/20/10
(affirming JMOL (after a hung jury) where
the scope of the claim was not limited to the
alleged advantages, efficiencies as compared
to the prior art); Wyers, 7/22/10 (applying
common sense and stating that motivation to
combine may be addressed on SJ or JMOL
in appropriate circumstances KSR (S.C.));
TriMed, 6/9/10; Media Techs., 3/1/10; Ball
Aerosol, 2/9/09; Boston Scientific Scimed,
1/15/09); See also Odom, 5/4/11
(nonprecedential affirming SJ where only
an insignificant advance over the prior art
patent by putting groups of tools on a single
toolbar); Tokyo Keiso, 1/9/09
(nonprecedential affirming SJ of
obviousness, stating: The ultimate
judgment of obviousness is a legal
determination. Where the content of the
prior art, the scope of the patent claim, and
1662
the level of ordinary skill in the art are not in
material dispute, and the obviousness of the
claim is apparent in light of these factors,
summary judgment is appropriate KSR
(S.C.))
Scope and content of the prior art
- Scope and content of the prior art when claim

limitations are found in a combination of prior art
references, must determine: 1) what the prior art
teaches, 2) whether it teaches away from the
claimed invention, and 3) whether it motivates a
combination of teachings from different references
In re Fulton (Cheese Systems, 8/6/13 (citing
Dystar); Pozen, 9/28/12 (affirming the district
courts judgment that the scope of the prior art
references did not motivate their combination to
arrive at the claimed combination drug tablet);
Celsis In Vitro, 1/9/12 (prior art taught away, and
the art was a crowded field for many years and yet
there was not one reference to the claimed multi-
cryopreservation; see also J. Gajarsa, dissenting);
Sundance, 12/24/08 (reversing JMOL of
nonobviousness, which was based on the district
courts misunderstanding of a reference as not
within the scope of the relevant (truck) art);
*Dystar, 10/3/06; In re Fulton, 12/2/04); See also
Purdue Pharma, 6/3/10 (nonprecedential prior art
reference need not disclose the invention as a
preferred embodiment for obviousness); Ortho-
McNeil, 8/26/09 (nonprecedential Inventions in
most instances rely upon building blocks long
since uncovered, and combine elements that are in
some sense already known KSR (S.C.));
Andersen, 11/19/08 (nonprecedential genuine
issue of material fact existed as to the scope and
1663
content of the prior art, in particular whether
electromagnetic-shielding mesh would have been
part of the field of invention searched by an insect
screen designer and whether such an alternative
use would have been obvious); See also In re
Arora, 3/10/10 (nonprecedential rejecting the
patentees argument that the cited prior art
reference should be understood as limited to a
narrow teaching, where the reference also taught a
broad principle and provided an example of that
principle, ruling that it is well-settled . . . that a
prior art reference must be considered for all that it
teaches to those of ordinary skill in the art, not just
the embodiments disclosed therein In re Inland
Steel, In re Fritch); Alloc, 2/18/10
(nonprecedential nine and twelve prior art
references, respectively, were more than
sufficient to support the jurys finding of
obviousness of the two patents-in-suit); In re
Mettke, 6/25/09 (nonprecedential? [designated as
nonprecedential on the CAFC website, but
treated as precedential in the F.3d reporter and
Western Union, 12/7/10] BPAIs finding was
supported by substantial evidence, including the
specification, that the asserted prior art references
were within the field of the invention or were
analogous art)
- Determining the relevant art for invalidity

(Verizon, 4/16/10); See also Analogous
art
- Proof of obviousness does not require that

every claim element be present in the prior
art (Celsis In Vitro, 1/9/12 (J. Gajarsa,
dissenting))
1664
- What a prior art reference discloses or
teaches is determined from the perspective
of one of ordinary skill in the art (Sundance,
12/24/08 (n.3; rejecting testimony of patent
law expert relating to validity, as not
qualified to testify from perspective of POS
in the art))
- Prior art reference as a whole considered

(Smith & Nephew, 7/9/13 (BPAI erred by
not reading the prior art reference for all that
it taught, other than the drawings); Genetics
Institute, 8/23/11)
- Claims are part of a prior art disclosure

(Therasense, 1/25/10 (see also J. Linn,
dissenting in part) [vacated on 4/26/10, and
reinstated by Therasense, 5/25/11 (en
banc)])
- Factors relevant: field of the specific

invention, the subject matter of the
references, the extent to which they are in
the same or related fields of technology, the
nature of the advance made by the applicant,
and the maturity and congestion in the field
(In re Johnston, 1/30/06)
Level of ordinary skill in the art
- Level of ordinary skill in the art important to

determine correctly the level of skill directly
affects the obviousness determination; generally
easier to establish obviousness under a higher level
of ordinary skill in the art (Kinetic Concepts,
8/13/12 (assuming that the jury adopted a lower
level of skill based on verdict that obviousness was
1665
not shown); Unigene Labs, 8/25/11 (POS in the art
did not include the co-inventor); *Innovention
Toys, 3/21/11 (district court erred in basing its
obviousness analysis on a low level of skill in the
art, i.e. a layperson, where both the record and the
courts fact finding supported a higher level of
skill in the art; also addressing the situations where
the district courts failure to make a correct finding
on the level of skill does not constitute reversible
error, i.e., where it does not affect the ultimate
conclusion under Section 103); Tokai, 1/31/11
(assuming, without deciding, the district courts
chosen level of skill in the art in affirming SJ of
obviousness, where the conclusion would have
been the same with respect to a greater level of
skill in the art); Eli Lilly, 9/1/10 (record did not
allow the CAFC to conflate Lilly scientists with
POSs in the art, where the Lilly scientists had
both knowledge and credentials superior to the
ordinary artisan); Media Techs., 3/1/10 (accepting
the defendants expert testimony relating to the
level of ordinary skill in the art - that a trading card
designer of ordinary skill routinely used the
concepts found in other card industries for trading
cards; see also J. Rader, dissenting the
defendants experts declaration on SJ was
conclusory and lacked any convincing reference to
the actual record); Perfect Web, 12/2/09 (low level
of skill was required for appreciating the value of
repeating known email delivery methods); Ball
Aerosol, 2/9/09 (because technology was simple
and easily understandable, the level of ordinary
skill was that of an ordinary layman of average
intelligence); *Daiichi Sankyo, 9/12/07 (high level
of skill - specialists in drug and ear treatments, and
thus prior art reference directed to specialists in ear
treatments rendered patent invalid for
obviousness); *Dystar, 10/3/06); See also In re
1666
Giuffrida, 7/18/13 (nonprecedential BPAI - level
of skill in the art may be determined based on the
prior art itself reflecting an appropriate level and
the need for testimony is not shown citing
Okajima); Byrne, 11/18/11 (nonprecedential
vacating the grant of SJ and remanding where the
district court failed to determine the level of
ordinary skill before excluding the inventors
testimony as expert testimony citing Innovention
Toys); Duramed, 3/25/11 (nonprecedential
district court committed reversible error by failing
to determine the level of skill in the art prior to
granting SJ of nonobviousness a finding of a
higher level of skill could have altered the ruling
because, in general, an invention may be more
obvious to one of higher skill than to one of lower
skill; also, an expert (with extraordinary skill) can
testify regarding the knowledge of a POS in the
art); In re Vaidyanathan, 5/19/10 (nonprecedential
the BPAI need not explicitly define the level of
skill in the art, but must nonetheless explain why
the POS in the art would conclude obviousness;
also, the absence of findings on the level of skill is
not reversible error when the prior art itself reflects
an appropriate level); In re Tzipori, 10/15/08
(nonprecedential stating that the level of skill in
the art is important to the obviousness analysis
because a more skilled artisan will have more
general knowledge on which to rely in combining
teachings from multiple references citing
Dystar)
- Factors (which are not exhaustive but

merely a guide) to consider in determining
the level of ordinary skill in the art include:
1) the educational level of the inventor; 2)
the type of problems encountered in the art;
3) any prior art solutions to those problems;
1667
4) the rapidity with which innovations are
made; 5) the sophistication of the
technology; and 6) the educational level of
active workers in the field (Mintz, 5/30/12
(district court erred by including only
knitting, and omitting the meat encasement
art from the level of ordinary skill in the
art); Daiichi Sankyo, 9/12/07 (pharma
compound training in developing
compounds, formulations required))
- Credentials of inventors, as well as

others working in the same field as
the inventors, are relevant to
determine the level of ordinary skill
(Daiichi Sankyo, 9/12/07)
- Person of exceptional skill in the art

should not be disqualified because he
or she is not ordinary enough, since a
POS in the art is a theoretical
construct and is not descriptive of
some particular individual Endress
+ Hauser (Norgren, 11/14/12
(rejecting the patentees argument that
the accused infringers expert was not
an appropriate expert because he was
not familiar with the relevant industry
and was overly-qualified))
Combining prior art/teaching, suggestion, or motivation to

combine, modify prior art
KSR v. Teleflex (S.C.)
In KSR v. Teleflex, the U.S. Supreme Court granted KSRs petition

for writ of certiorari on June 26, 2006, regarding the question: Whether a
claimed invention can be obvious, and therefore unpatentable under 35
1668
U.S.C. 103(a), without proof of some teaching, suggestion, or motivation
to modify or combine the prior art in the manner claimed? Oral arguments
were heard in November 2006.
On April 30, 2007, a unanimous Court (by Justice Kennedy) reversed

the CAFC, holding that the CAFC by using the teaching, suggestion, or
motivation (TSM) test answered the obviousness question in a narrow, rigid
manner that is inconsistent with Section 103 and the expansive and flexible
approach used in Supreme Court precedent (i.e., Graham v. John Deere).
[A]s progress beginning from higher levels of achievement is expected in
the normal course, the results of ordinary innovation are not the subject of
exclusive rights under the patent laws. Were it otherwise patents might
stifle, rather than promote, the progress of useful arts . . . . Application of the
bar [on patents claiming obvious subject matter] must not be confined within
a test or formulation too constrained to serve its purpose.
The Court held that the factors provided in Graham v. John Deere
(S.C. 1966) (see above General rule of obviousness . . .) continue to define
the broad inquiry that controls when determining obviousness under Section
103.
As a preliminary matter, the Court noted that the CAFC had since the
CAFCs KSR decision elaborated a broader conception of the TSM test
than the CAFC had applied in the present case (citing the CAFCs decisions
in Dystar and Alza v. Mylan, in which the CAFC stated that the TSM test is
in actuality quite flexible and not only permits, but requires, consideration
of common knowledge and common sense (Dystar), and that a motivation
may be found implicitly in the prior art and the TSM test is not a rigid test
that requires an actual teaching to combine . . . (Alza v. Mylan)). The
Supreme Court seemed to approve of these later CAFC decisions, stating
that the extent to which they may describe an analysis more consistent with
our earlier precedents and our discussion here is a matter for the Court of
Appeals to consider in its future cases.
The Supreme Court in KSR referred to the need for caution in granting
a patent based on the combination of elements found in the prior art,
particularly when the combination is a predictable variation over the prior
art [t]he combination of familiar elements according to known methods is
1669
likely to be obvious when it does no more than yield predictable results.
(The Court then discussed its prior cases, Adams, Andersons-Black Rock,
and Sakraida, all of which were decided after Graham v. John Deere, to
illustrate this point.)
Consistent with the CAFCs TSM test, the Court recognized the
importance of identifying a reason that would have prompted the POS in
the art to combine the elements in the way claimed by the patent, and that
this obviousness analysis should be made explicit, i.e., there must be some
articulated reasoning with some rational underpinning to support
obviousness. However, based on the Courts precedent, the analysis need
not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.
According to the Court, the TSM test is inconsistent with the Courts
precedent, and the obviousness analysis cannot be confined by the
overemphasis on the importance of published articles and the explicit
content of issued patents, since there may be little published in many fields
of art Granting patent protection to advances that would occur in the
ordinary course without real innovation retards progress and may, in the case
of patents combining previously known elements, deprive prior inventions
of their value or utility.
What matters is the objective reach of the claim (i.e., not what the
patentee considered obvious). One of the ways to prove obviousness is to
look at a known problem at the time of the invention for which there was an
obvious solution encompassed by the patent claims. Specifically, a court
should not look only to the problem the patentee was trying to solve, but
rather any need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining
the elements in the manner claimed. Furthermore, the POS in the art
attempting to solve a problem will be led not only to those elements of prior
art designed to solve the same problem Common sense teaches . . . that
familiar items may have obvious uses beyond their primary purposes, and in
many cases a person of ordinary skill will be able to fit the teachings of
multiple patents together like pieces of a puzzle. (emphasis added) (See
also discussions below regarding hindsight bias and obvious to try)
1670
Two requirements for combining prior art
- Combining prior art references, demonstrate by C&C

evidence, two requirements: 1) that the prior art would
have motivated those of ordinary skill in the art to make
the claimed invention, i.e., a motivation to combine, or
modify the prior art references is needed), and 2) that
based on the prior art those of ordinary skill would have
had a reasonable expectation of success in doing so
(Broadcom, 10/7/13; Allergan, 5/1/13; Bayer, 4/16/13
(obviousness requires showing that a POS in the art at the
time of invention would have selected and combined the
prior art elements citing Unigene Labs); Astrazeneca,
12/14/12; Osram Sylvania, 12/13/12; Pozen, 9/28/12
(obviousness of the claimed combination drug tablet not
proven by C&C evidence); ActiveVideo Networks,
8/24/12 (district court properly rejected expert testimony
in pre-verdict JMOL as conclusory and factually
unsupported, and fraught with hindsight bias); Kinetic
Concepts, 8/13/12; In re Cyclobenzaprine, 4/16/12 (no
reasonable expectation that experimenting with the prior
art would succeed in being therapeutically effective as
required for the claimed extended-release formulation);
Procter & Gamble, 5/13/09; In re Kubin, 4/3/09 (prior art
provided a motivation to isolate the claimed gene
encoding a known protein receptor important to the
immune response, along with a reasonable expectation of
success); Pharmastem, 7/9/07; Pfizer, 3/22/07; *Dystar,
10/3/06; *Alza, 9/6/06; Abbott Labs, 6/22/06; Medichem,
2/3/06); See also Duramed, 3/25/11 (nonprecedential
must consider the prior art as a whole, rather than the
references in isolation in determining obviousness, i.e.,
whether the prior art as a whole provided a reason to
combine and a reasonable expectation of success)
1671
- Patent challenger must show by C&C evidence
that a POS in the art would have had a reason to
attempt to make the composition or device, or
carry out the claimed process, and would have had
a reasonable expectation in doing so KSR (S.C.)
(a combination of elements must do more than
yield a predictable result) (Pharmastem, 7/9/07)
- Knowledge of a problem and motivation to solve it

are entirely different from a motivation to combine
particular references to reach the particular
claimed invention (In re Cyclobenzaprine, 4/16/12
(where there might have been a desire for an
extended-release formulation, there was no
evidence that skilled artisans would have known
how to achieve it citing Cardiac Pacemakers for
the rule that recognition of a need does not render
obvious the achievement that meets that need, and
similarly that recognition of an unsolved problem
does not render the solution obvious); In re
Omeprazole, 8/20/08 (drug formulation was not
obvious even if the problem relating to the
interaction between the drug core and enteric
coating was recognized in the prior art, as it would
not have been obvious to try applying the water-
soluble subcoating of the invention because
multiple paths for solving the problem could
have been taken by a POS in the art who
recognized the stability problem); Innogenetics,
1/17/08 (method of genotyping not obvious simply
because the prior art taught that different
genotypes respond differently to therapy))
- One particular improbable combination of

prior art references does not show that the
entire body of prior art does not render the
patent obvious (Rothman, 2/13/09)
1672
- Prior art references need not be physically
combinable - well-established that obviousness
based on the teachings of multiple references does
not require an actual, physical substitution of
elements the references need not be physically
combinable; rather, the test for obviousness is what
the combined teachings of the references would
have suggested to a POS in the art In re Etter (en
banc), In re Sneed, In re Keller (CCPA) (In re
Mouttet, 6/26/12)
- FDA approval may be relevant to the obviousness

inquiry Knoll Pharm.; but there is no patent law
requirement that the POS in the art be motivated to
develop the claimed invention based on a rationale
that forms the basis for FDA approval (Allergan,
5/1/13 (district court erred in concluding that a
POS in the art would not be motivated to develop a
fixed combination product to increase patient
compliance because the FDA did not consider that
particular motivation when evaluating drug
applications))
Motivation to combine, modify may be implicit in the prior

art
Generally flexible, expansive nature of obviousness,

but reason needed
- Determining obviousness requires considering whether

two or more pieces of prior art could be combined, or a
single piece of prior art could be modified, to produce the
claimed invention analysis typically invokes the TSM
test, flexibly and expansively applied (St. Jude Medical,
9/11/13 (still must guard against hindsight bias and ex
post reasoning); Osram Sylvania, 12/13/12; Norgren,
11/14/12; Kinetic Concepts, 8/13/12; In re
Cyclobenzaprine, 4/16/12 (overall analysis must be
1673
expansive and flexible); Rolls-Royce, 5/5/10
(nonobvious); Comaper, 3/1/10 (distinguishing
anticipation from obviousness, addressing obviousness
based on modifying a single piece of prior art, i.e., in
which not every claim element is present))
- Flexible nature of the obviousness inquiry after KSR

(S.C.) the motivation to combine, modify prior art
references (e.g., teaching, suggestion, or motivation
(TSM)) - need not be stated expressly, but can come from
any number of sources (Randall Mfg., 10/30/13;
Plantronics, 7/31/13; Allergan, 5/1/13 (motivation to
combine may be found in many different places and
forms, and cannot be limited to those reasons the FDA
considers in approving drug applications); Kinetic
Concepts, 8/13/12; Sciele Pharma, 7/2/12 (an expansive
and flexible approach KSR (S.C.)); Unigene Labs,
8/25/11; Wyers, 7/22/10 (relying on common sense to
combine prior art references); Rolls-Royce, 5/5/10
(motivation can be found within the knowledge of an
ordinarily skilled artisan); Comaper, 3/1/10 (flexibly
applied, the TSM test remains an important tool in an
obviousness analysis); *Perfect Web, 12/2/09 (relying on
common sense and obvious to try and the flexible
nature of determining obviousness under KSR (S.C.));
Procter & Gamble, 5/13/09; Rothman, 2/13/09 (jurys
verdict of obviousness could have been based on witness
testimony regarding the market demand for the claimed
nursing tank top and motivation to combine the existing
art); Ball Aerosol, 2/9/09 (opining that the district court
misconstrued KSR (S.C.)); Rentrop, 12/18/08 (jury
instruction consistent with KSR (S.C.)); CSIRO, 9/19/08;
Eisai, 7/21/08 (In keeping with the flexible nature of the
obviousness inquiry, the requisite motivation can come
from any number of sources and need not necessarily be
explicit in the art, citing KSR); Ortho-McNeil, 3/31/08
(TSM and obviousness does not require written prior art,
which would unduly confine the use of knowledge and
1674
creativity within the grasp of an ordinarily skilled artisan
KSR (S.C.)); In re Translogic Technology, 10/12/07;
Aventis Pharma, 9/11/07), AND may be implicit, in prior
art references - Dystar (Wyers, 7/22/10; Perfect Web,
12/2/09; Erico Intl, 2/19/08 (implicit motivation to
combine prior art, based on the references themselves
and/or the inventors testimony regarding common cable
installation practices prior to the filing date, to vacate PI
citing KSR (S.C.) and Dystar (referring to an implicit,
indeed common-sensical, motivation to combine the two
references); Pfizer, 3/22/07; Dippin Dots, 2/9/07;
**Dystar, 10/3/06; **Alza, 9/6/06; *Ormco, 8/30/06;
**In re Kahn, 3/22/06; Medichem, 2/3/06; In re Johnston,
1/30/06; *Cross Medical Prods., 9/30/05 (district court);
Princeton Biochemicals, 6/9/05; Merck, 1/28/05; In re
Fulton, 12/2/04; Cardiac Pacemakers, 8/31/04;
Metabolite Labs, 6/8/04; Ruiz, 1/29/04; National Steel
Car, 1/29/04; Medical Instr., 9/22/03; Akamai, 9/15/03);
See also Lucky Litter, 10/6/10 (nonprecedential claim
obvious based on prior art reference and the general
knowledge of those of ordinary skill in the art of
switches); In re Tzipori, 10/15/08 (nonprecedential
Different situations require different approaches to the
issue of obviousness; the Supreme Court takes an
expansive and flexible approach to obviousness as
long as the reasons for concluding obviousness are made
explicit - KSR (S.C.); citing examples of reasons that the
BPAI could have given for concluding obviousness)
- KSR (S.C.) expanded the sources of information

for a properly flexible obviousness inquiry to
include market forces; design incentives; the
interrelated teachings of multiple patents; any
need or problem known in the field of endeavor at
the time of invention and addressed by the patent;
and the background knowledge, creativity, and
common sense of the person of ordinary skill
(Randall Mfg., 10/30/13 (vacating the BPAIs
1675
determination of nonobviousness in inter partes
reexam based on four prior art references, where
the BPAI focused only on the references and
ignored other prior art references showing the
background knowledge of the POS in the art which
could easily explain why a POS in the art would
have been motivated to combine the four
references to arrive at the claimed invention;
referring to KSRs rejection of a blinkered focus
on individual documents); Plantronics, 7/31/13
(motivation to combine may be found explicitly or
implicitly in any of the above sources citing
Perfect Web); Norgren, 11/14/12 (addition of
hinge to a prior art connector was a common sense
solution, since hinges were a common mechanical
component that a POS in the art would have
known to solve a loose parts problem, and where
the patentees expert testified that there were a
finite number of solutions to the loose parts
problem); Unigene Labs, 8/25/11 (pharmaceutical
formulation was not obvious); Tokai, 1/31/11
(obvious based on problem known in the art);
Perfect Web, 12/2/09)
- Motivation to combine is inextricably linked to the

level of ordinary skill; if, as is usually the case, no
prior art reference contains an express suggestion
to combine references, then the level of ordinary
skill in the art will often predetermine whether an
implicit suggestion exists; persons of varying
degrees of skill not only possess varying bases of
knowledge, they also possess varying levels of
imagination and ingenuity in the relevant field,
particularly with respect to problem-solving
abilities, i.e., a person with high level of skill need
not be explicitly told something by a prior art
reference in order to draw ideas from own
knowledge (Randall Mfg., 10/30/13 (KSRs
1676
expansive and flexible approach to obviousness
is consistent with pre-KSR decisions
acknowledging that the inquiry not only permits,
but requires, consideration of common knowledge
and common sense citing Dystar); *Dystar,
10/3/06)
- Obviousness determination is not the result of a

rigid formula (i.e., TSM test) dissociated from the
consideration of the facts of a case (Randall Mfg.,
10/30/13; Western Union, 12/7/10 (citing Perfect
Web as support for obviousness of electronic
money transfer method); Perfect Web, 12/2/09;
Rentrop, 12/18/08; CSIRO, 9/19/08; Ortho-
McNeil, 3/31/08 (flexible TSM test prevents
hindsight and focuses on evidence before the time
of invention); Innogenetics, 1/17/08 (excluded
expert report lacked explanation, reasons for
combining prior art references to make the claimed
method); In re Translogic Technology, 10/12/07;
Aventis Pharma, 9/11/07 (making purified
compound from prior art mixture in which
compound was active ingredient held obvious);
Leapfrog Enterprises, 5/9/07)
- KSR (S.C.) set aside any rigid application of

the TSM test and ensured use of customary
knowledge as an ingredient in the
obviousness determination; the Supreme
Court advised that common sense would
extend the use of customary knowledge in
the obviousness equation: A person of
ordinary skill is also a person of ordinary
creativity, not a automaton (Randall Mfg.,
10/30/13; C.W. Zumbiel, 12/27/12 (J. Prost,
dissenting); Norgren, 11/14/12; Kinetic
Concepts, 8/13/12 (expert testimony was
needed, where the technology was not the
1677
type where common sense would provide
the motivation to combine the references);
Unigene Labs, 8/25/11; Western Union,
12/7/10 (improved money transfer method
obvious based on common sense to combine
well-known prior art elements with the prior
art system and use the internet); Transocean,
8/18/10 (rejecting the patentees argument
that would have turned the POS in the art
into an automaton that can only add pieces
of prior art); King, 8/2/10; Wyers, 7/22/10;
Perfect Web, 12/2/09; Rothman, 2/13/09;
Rentrop, 12/18/08 (jury instruction
consistent with KSR (S.C.)); CSIRO,
9/19/08; In re Translogic Technology,
(nonprecedential applying latter rule
above); In re Bayne, 6/5/13 (nonprecedential
skilled artisan would have known to
modify the prior art method by reversing the
order of transactions, citing rule); Stone
Strong, 10/17/11 (nonprecedential relying
on common sense to combine prior art
references); Cimline, 3/2/11
(nonprecedential relying on common sense
and creativity of POS in the art); In re POD-
NERS, 7/10/09 (nonprecedential to reject
the BPAIs obviousness ruling regarding the
claimed yellow bean and plant (despite the
BPAI not explaining its holding in detail)
would have been to deny the BPAI the very
recourse to common sense warned against
in KSR (S.C.)); Andersen, 11/19/08
(nonprecedential common sense might not
have made the invention obvious where the
manufacturer of the prior art material did not
itself use the material to make the claimed
insect screens)
1678
- Obviousness analysis need not seek
out precise teachings directed to the
specific subject matter of the
challenged claim, for a court can take
account of the inferences and creative
steps that a person of ordinary skill in
the art would employ KSR (S.C.)
(Randall Mfg., 10/30/13; Sciele
Pharma, 7/2/12; Perfect Web, 12/2/09
(relying on common sense of the POS
in the art, despite the claimed method
step not being disclosed in the prior
art); Ritchie, 4/24/09; Rothman,
2/13/09; Ball Aerosol, 2/9/09 (ruling
that the district court misconstrued
KSR (S.C.) in not granting SJ of
obviousness, where the district court
failed to take account of the
inferences and creative steps, or even
routine steps that an inventor would
employ); CSIRO, 9/19/08 (applying
KSR (S.C.) rule that familiar items
may have obvious uses beyond their
primary purposes); Scanner Techs.,
6/19/08 (concluding that one skilled
in the art would understand the claim
element not identified in the prior
art)); See also In re Gleizer, 12/15/09
(nonprecedential POS in the art
would have considered prior art
reference relied on by the PTO to be
related to the same subject matter as
the claims); In re POD-NERS,
7/10/09 (nonprecedential claimed
yellow bean and plant were obvious
over prior art beans where the
inventor followed normal and well-
1679
established agricultural methods and
techniques for reproducing, and
hopefully improving, the beans from
exisiting beans, and did not devise or
apply new or unexpected techniques
in reproducing the beans); In re
Tzipori, 10/15/08 (nonprecedential
prior art used for one purpose can be
used later for another purpose)
- KSR (S.C.) concluded that there is no

necessary inconsistency between the idea
underlying the TSM test and the Graham
(S.C.) analysis, and the test can provide
helpful insight to the obviousness inquiry
(Procter & Gamble, 5/13/09; Rentrop,
12/18/08; Cordis, 1/7/08; Takeda, 6/28/07)
- KSR (S.C.) counsels against applying the

TSM test as a rigid and mandatory formula
(Randall Mfg., 10/30/13; Norgren, 11/14/12;
Perfect Web, 12/2/09; Procter & Gamble,
5/13/09; Rentrop, 12/18/08; CSIRO,
9/19/08; Ortho-McNeil, 3/31/08 (flexible
TSM test is to be applied); Innogenetics,
1/17/08 (recognized rule, but expert report
entirely deficient to show motivation to
combine prior art references); Cordis, 1/7/08
(as long as not applied as a rigid and
mandatory formula, the TSM test can
provide helpful insight to an obviousness
inquiry - Takeda)); ALTHOUGH it remains
necessary to show some articulated
reasoning with some rational underpinning
to support the legal conclusion of
obviousness (In re Biedermann, 10/18/13
(vacating and remanding where the BPAI
made a new ground of rejection, stating that
1680
the articulated reasoning and factual
underpinnings of an examiners rejection are
essential elements of any stated ground of
rejection to which applicants are entitled to
notice and a fair opportunity to respond);
Plantronics, 7/31/13 (district court failed to
provide reasoning for motivation to combine
based on common sense); ActiveVideo
Networks, 8/24/12 (affirming the rejection
of expert testimony on the motivation to
combine references); Kinetic Concepts,
8/13/12; TriMed, 6/9/10 (district court failed
to articulate reasons for obviousness);
Hearing Components, 4/1/10 (substantial
evidence supported nonobviousness where
the challengers experts testimony to the
jury was rather sparse, and lacking in
specific details while the patentees expert
described particular reasons why no
motivation to combine); Perfect Web,
12/2/09; Rentrop, 12/18/08; Innogenetics,
1/17/08 (deficient expert testimony)), BUT
such reasoning need not seek out precise,
and explicit, teachings directed to the
specific subject matter of the challenged
claim, for a court can take account of the
inferences and creative steps that a POS in
the art would employ; also consider whether
a POS in the art would have solved a design
need by pursuing known options within his
or her technical grasp KSR (S.C.), In re
Kahn (Randall Mfg., 10/30/13; Perfect Web,
12/2/09; In re Translogic Technology,
10/12/07 (selected option was well-known);
Aventis Pharma, 9/11/07 (word implicit
not used); See also In re Giuffrida, 7/18/13
(nonprecedential the BPAIs obviousness
rejection is upheld when its path may
1681
reasonably be discerned, even if its
conclusions were cryptic, but supported by
the record citing In re Huston); Metso
Minerals, 5/14/13 (nonprecedential
evidence established a clear motivation and
reason to combine the prior art references
to ensure that higher-capacity screeners
complied with road permit requirements);
Stone Strong, 10/17/11 (nonprecedential
obviousness based on design need and
known options in the art); In re
Schwemberger, 10/13/10 (nonprecedential
The Supreme Court [in KSR] has cautioned
that although it may be valuable to identify a
particular reason to combine two references,
the obviousness analysis is not limited to
this inquiry.); In re POD-NERS, 7/10/09
(nonprecedential obviousness affirmed
despite the BPAI not explaining its holding
in detail, as the BPAI was allowed to use
common sense, under KSR (S.C.)); In re
Baggett, 6/16/09 (nonprecedential
affirming obviousness based on combining
prior art references where articulated
reasoning provided by the BPAI); Black &
Decker, 1/7/08 (nonprecedential -- TSM test
remains good law, only a rigid application of
that test is problematic))
- While rejecting a rigid application of

the TSM test in an obviousness
inquiry, the Supreme Court in KSR
acknowledged the importance of
identifying a reason that would have
prompted a POS in the relevant field
to combine the elements in the way
the claimed invention does (Randall
Mfg., 10/30/13 (the CAFC has
1682
emphasized the importance of a
factual foundation to support a partys
claim about what a POS in the art
would have known); In re
Biedermann, 10/18/13 (to facilitate
review, this analysis should be made
explicit KSR (S.C.), In re Kahn);
Plantronics, 7/31/13 (relying on
common sense must be supported by
the record); ActiveVideo Networks,
8/24/12; Kinetic Concepts, 8/13/12
(challenger offered no evidence
establishing a reason to combine the
prior art references, while the patentee
offered substantial evidence that a
POS in the art had no reason to
combine the references to arrive at the
claimed invention); Genetics Institute,
8/23/11; In re Kao, 5/13/11 (BPAI
failed to provide substantial evidence
of a correlation between different
dissolution methods used in the claim
and prior art, instead relying on
conclusory reasoning and its own
conjecture in assessing the weight of
the evidence); Transocean, 8/18/10
(reason to combine came directly
from one of two relied on prior art
references); TriMed, 6/9/10; Perfect
Web, 12/2/09; Lucent, 9/11/09 (jury
could have reasonably concluded that
there was no sufficient reason to
modify the prior art); Fresenius,
9/10/09 (remains appropriate for a
post-KSR court to determine whether
the prior art provided a reason to
combine); Ecolab, 6/9/09 (invention
obvious where there was an apparent
1683
reason in the prior art to combine
known elements as claimed); Procter
& Gamble, 5/13/09 (pharmaceutical
compound was held not obvious
where there was no reason given in
the unpredictable prior art to modify a
known compound to make the
claimed compound); Monolithic
Power Systems, 3/5/09 (rejecting
argument that experts articulated no
reasons for motivation to combine,
who opined that skilled circuit
designers would routinely mix and
match the claim elements conceded
to be well known in the art); Ball
Aerosol, 2/9/09 (reason should be
made explicit KSR(S.C.)); Rentrop,
12/18/08; CSIRO, 9/19/08; Eisai,
7/21/08; Ortho-McNeil, 3/31/08 (no
reason or motivation to make claimed
compound in unpredictable art); In re
Translogic Technology, 10/12/07
(BPAI based decision on sound
reasoning); See also Bennett Marine,
9/19/13 (nonprecedential showing
that the claim elements exist
independently in the prior art is not
enough for obviousness need
motivation to combine citing KSR
(S.C.) and Power-One); Metso
Minerals, 5/14/13 (nonprecedential);
Harris, 1/17/13 (nonprecedential); In
re Vaidyanathan, 5/19/10
(nonprecedential vacating and
remanding after the PTO failed to
provide explanation and reasoning for
combining prior art references); In re
Tzipori, 10/15/08 (nonprecedential
1684
stating that the BPAIs elaboration of
its reasoning for concluding
obviousness would have been helpful
to the CAFCs review)
- Common sense has long been

recognized to inform the analysis of
obviousness if explained with
sufficient reasoning In re Zurko, In
re Lee, In re Bozek (CCPA) (Randall
Mfg., 10/30/13 (in recognizing the
role of common knowledge and
common sense for determining
obviousness, the CAFC also has
emphasized the importance of a
factual foundation to support a partys
claim about what a POS in the art
would have known citing Mintz and
Perfect Web; vacating the BPAIs
determination of nonobviousness in
inter partes reexam, where extensive
references of record showed a
familiar, even favored, approach to
bulkhead storage, and stating that
perhaps the most reliable form of
evidence to provide the factual
foundation is documentary evidence
consisting of prior art in the subject
area); Plantronics, 7/31/13 (necessary
reasoning was absent from the district
courts finding of obviousness based
on common sense citing Mintz rule;
the district court also failed to guard
against the use of hindsight by
considering objective evidence of
commercial success and copying in
determining obviousness); Smith &
Nephew, 7/9/13 (patent confirmed
1685
what common sense suggested as to
what a POS in the art could do in
view of the prior art); Mintz, 5/30/12
(record evidence was needed to
support common sense basis for
obviousness); TriMed, 6/9/10 (district
court failed to provide reasoning, with
the CAFC stating: Merely saying
that an invention is a logical,
commonsense solution to a known
problem does not make it so);
Perfect Web, 12/2/09 (discussing the
use of common sense by patent
examiners)); See also In re Nouvel,
8/29/12 (nonprecedential stating
rule that there must be an articulated
rational reason why it would be
common sense for a POS in the art
to modify prior art, and remanding the
BPAIs common sense basis for
rejection as a new ground for
rejection; also citing BPAI cases in
which it regularly reverses
obviousness rejections when an
examiners common sense
reasoning is insufficiently supported
by a rational underpinning; see also J.
Bryson, dissenting); Plasmart, 5/22/12
(nonprecedential obvious based on a
common sense alternative design
choice); In re Vaidyanathan, 5/19/10
(nonprecedential citing insufficient
elaboration of the examiners or the
BPAIs reasoning in the record, and
the need (for meaningful appellate
review) for the examiner to at least
explain the logic or common sense
that leads the examiner to believe the
1686
claim would have been obvious
Perfect Web)
- Use of common sense does not

require a specific hint or
suggestion in a particular
reference, only a reasoned
explanation that avoids
conclusory generalizations
Dystar, In re Kahn (Perfect
Web, 12/2/09)
- Supreme Court in KSR (S.C.)

instructed that factfinders may
use common sense in addition
to record evidence (Randall
Mfg., 10/30/13; Norgren,
11/14/12; Mintz, 5/30/12
(record evidence of common
sense is needed to support
obviousness); Western Union,
12/7/10; Perfect Web, 12/2/09);
See also Stone Strong, 10/17/11
(nonprecedential invention
obvious based on common
sense); Cimline, 3/2/11
(nonprecedential)
KSR rules of obviousness applied
- Combining familiar elements according to known

methods is likely to be obvious when it does no
more than yield predictable results KSR (S.C.)
(Randall Mfg., 10/30/13 (claimed bulkhead design
was obvious based on the combination of the cited
prior art references, in view of the background
prior art references showing the state of the art);
1687
Norgren, 11/14/12 (claimed hinged connector was
a combination of known elements with no more
than expected results KSR (S.C.)); In re Mouttet,
6/26/12 (where a patent claims a structure already
known in the prior art that is altered by the mere
substitution of one element for another known in
the field, the combination must do more than yield
a predictable result KSR (S.C.)); Western Union,
12/7/10 (claimed money transfer method obvious);
Dow Jones, 5/28/10; Fresenius, 9/10/09 (jurys
implicit findings that the prior art suggested
combining a hemodialysis machine with a touch
screen, and that ordinarily skilled artisans would
have known how to make the combination, were
supported by substantial evidence); Callaway,
8/14/09 (claimed golf ball nonobvious based on
the jurys implicit finding that hardness limitation
was not in the prior art); Ecolab, 6/9/09
(combination of prior art references rendered the
claimed invention obvious where the disputed at
least 50 psi pressure limitation for spraying
antimicrobial solutions onto meat was disclosed in
a prior art patent and the patentees expert
admitted its advantages were known in the art);
Depuy Spine, 6/1/09; Sanofi-Synthelabo, 12/12/08
(distinguishing KSR rule, where the claimed
separated enantiomer was unpredictable); CSIRO,
9/19/08 (KSR(S.C.)-like case where all the
elements combined in the claimed invention were
known in the prior art); Agrizap, 3/28/08
(textbook case of the above rule, where the
recited type of switch used to complete an
electrical circuit was well known in the art; and
concluding obviousness, though fully cognizant
of the hindsight bias that often plagues
determinations of obviousness); In re Trans Texas
Holdings, 8/22/07; In re Icon Health and Fitness,
8/1/07; Pharmastem, 7/9/07; Leapfrog Enterprises,
1688
5/9/07); See also In re Bayne, 6/5/13
(nonprecedential affirming motivation to
combine claim elements from the prior art, stating
that appellant ignored the fundamental principle
that a Section 103 rejection can be, and often is,
based on [t]he combination of familiar elements
found in different prior art references KSR
(S.C.)); Inventio AG, 11/27/12 (nonprecedential
reversing the denial of JMOL of obviousness,
concluding that replacing an older card reader in a
prior art articles elevator destination dispatching
system with the modern RFID transmitter was
obvious, since was well within the abilities of a
POS in the art also citing Leapfrog and Western
Union); In re Conte, 11/15/11 (nonprecedential
need unpredictability when substitute one prior art
element for another); In re Clark, 5/20/11
(nonprecedential equipping prior art system with
FM transmitter was obvious); In re Gleizer,
12/15/09 (nonprecedential obvious combination);
Ortho-McNeil, 8/26/09 (nonprecedential
vacating SJ of invalidity for obviousness based on
expert testimony that the claimed drug
composition was not predictable); In re Bryan,
3/31/09 (nonprecedential color coding game
cards was obvious); Pivonka, 2/19/09
(nonprecedential BPAI; unrebutted expert
testimony was substantial evidence of obviousness
of collapsible pet carrier, the structural benefits of
which and how to build the carrier were readily
apparent to the POS in the art); In re Tzipori,
10/15/08 (nonprecedential all elements of
monoclonal antibody claims were prior art and
obvious based on a motivation to combine)
- Element of combination provided added

benefit to increase marketability (Leapfrog
Enterprises, 5/9/07)
1689
- Element of combination would not have
been uniquely challenging or difficult for a
POS in the art KSR (S.C.) (Tokai, 1/31/11
(claimed utility lighter was obvious even if
it required some variation in the selection or
arrangement of particular prior art
components; see also J. Newman,
dissenting); Western Union, 12/7/10;
Leapfrog Enterprises, 5/9/07)
- The predictable result discussed in KSR

(S.C.) refers not only to the expectation that
prior art elements are capable of being
physically combined, but also that the
combination would have worked for its
intended purpose KSR (S.C.) (Depuy
Spine, 6/1/09 (the prior art taught away, as
combining the prior art references may have
caused the claimed rigid spinal screw to
fail)); See also In re Chevalier, 1/7/13
(nonprecedential the obviousness inquiry
does not ask whether references could be
physically combined but whether the
claimed invention is rendered obvious by the
teachings of the prior art as a whole citing
In re Etter, In re Keller (CCPA)); In re
Conte, 11/15/11 (nonprecedential not
necessary that inventions of prior art
references be physically combinable to
render obvious the claimed invention In re
Sneed)
- Combination of old elements performing the same

function as in the prior art, and producing the
expected result the predictable use of prior art
elements according to their established functions
is likely to be within the grasp of one of ordinary
1690
skill in the art, and thus obvious KSR (S.C.),
Sakraida (S.C.) (Soverain Software, 9/4/13
(dependent claim with additional known element
was obvious over the same prior art as for the
independent claim); Smith & Nephew, 7/9/13
(applying rule to claimed bone plate system, where
the prior art taught achieving compression, which
was the primary intended function of the claimed
system); Norgren, 11/14/12 (claimed hinged
connector was a combination of known elements
with no more than expected results KSR (S.C.));
Wrigley, 6/22/12 (cooling effect of the claimed
chewing gum composition by combining prior art
components was not unexpected the patentee
needed to demonstrate that the results were
unexpected to a significant degree beyond what
was already known about the effect of combining
the prior art components citing Crocs and Ex
parte NutraSweet); Western Union, 12/7/10
(money transfer method combined well-known
prior art elements); Wyers, 7/22/10 (obvious to
combine prior art external seal used on padlocks
with prior art barbell-shaped hitch pin lock);
TriMed, 6/9/10 (disputed factual issues required
reversal of SJ of invalidity); Dow Jones, 5/28/10;
Depuy Spine, 6/1/09 (ruling that the opposite
conclusion would follow if the prior art indicated
that the invention would not have worked for its
intended purpose or otherwise taught away from
the invention); Monolithic Power Systems, 3/5/09
(motivation to combine known elements in the
claimed manner where inverter circuit designers
would routinely mix and match the claim
elements conceded to be well known in the art);
Rothman, 2/13/09 (claimed nursing tank top fell
into a very predictable field and was obvious
where combined existing tank top with existing
nursing bra); Sundance, 12/24/08 (claimed cover
1691
for truck trailer was such an obvious combination,
like the obvious combination in KSR)); See also In
re Chevalier, 1/7/13 (nonprecedential affirming
the BPAIs finding of a motivation to modify prior
art reference by combining with another prior art
reference to produce a predictable result, as based
on substantial evidence, where the obviousness
inquiry required a finding that the claimed
combination of known elements was obvious to a
POS in the art); In re Breiner, 5/10/12
(nonprecedential wireless computer-related
invention obvious based on combination of
references); Odom, 5/4/11 (nonprecedential); In re
Schwemberger, 10/13/10 (nonprecedential); In re
Lackey, 4/9/10 (nonprecedential); In re Bryan,
3/31/09 (nonprecedential adding a third deck of
game cards to the claimed board game was
obvious where the prior art taught using two
decks); Friskit, 1/12/09 (nonprecedential
characterizing the claimed invention (which
integrated prior art media search-and-playback
capabilities into a streaming media system to
create an on-demand, digital media service) as the
glue to put existing technologies together into a
single application failed to show nonobviousness,
based on KSR (S.C.))
- Fitting together teachings of the prior art like

pieces of a puzzle the POS in the art in many
cases will be able to fit the teachings of multiple
patents together like pieces of a puzzle KSR
(S.C.) (Comaper, 3/1/10; Perfect Web, 12/2/09;
Sundance, 12/24/08 (obvious combination of prior
art references to arrive at claimed truck cover));
See also Astrazeneca, 10/30/13 (nonprecedential
applying rule)
1692
- Implementing a predictable variation bars
patentability if a POS in the art can implement a
predictable variation, Section 103 likely bars its
patentability KSR (S.C.) (In re Adler, 7/18/13
(claimed imaging method obvious as a predictable
variation of a combination of prior art references);
Sciele Pharma, 7/2/12 (the patentees enablement
arguments during prosecution based on the prior
art supported obviousness over the prior art);
Tokai, 1/31/11 (intended position of the finger and
thumb when using the claimed utility lighter was a
predictable variation on the prior art; see also J.
Newman, dissenting unreasonable to trivialize
an improvement by its relative simplicity);
Ritchie, 4/24/09 (substituting a standard type of
glass, with well-known properties, for the glass
normally used in a sexual device was obvious, as
was not a venture into the unknown); Ball
Aerosol, 2/9/09 (district court erred in deciding no
motivation to combine the prior art); Boston
Scientific Scimed, 1/15/09 (ruling there was a
motivation to combine two embodiments in a
single patent to arrive at the claimed multiple-
coated stent, stating: Combining two
embodiments disclosed adjacent to each other in a
prior art patent does not require a leap of
inventiveness)); See also Odom, 5/4/11
(nonprecedential); In re Schwemberger, 10/13/10
(nonprecedential)
- Combination or modification of prior art prompted

by design incentives or other market forces in
the prior art, and a POS in the art can implement a
predictable variation KSR (S.C.) (Unigene Labs,
8/25/11; Tokai, 1/31/11; Dow Jones, 5/28/10;
Perfect Web, 12/2/09; Ritchie, 4/24/09; Rothman,
2/13/09 (witness testimony regarding market
demand in the late 1990s for the claimed nursing
1693
tank top supported obviousness); Ball Aerosol,
2/9/09; Muniauction, 7/14/08 (public speech
suggested the effects of demands known to the
design community or present in the marketplace
(KSR (S.C.)), which rendered the claimed
combination obvious)); See also Metso Minerals,
5/14/13 (nonprecedential); Cimline, 3/2/11
(nonprecedential); Siemens, 3/9/10
(nonprecedential substantial evidence supporting
a jury verdict of obviousness included expert
testimony regarding the design incentives for
solving known problems with prior art sensors); In
re Gleizer, 12/15/09 (nonprecedential); Friskit,
1/12/09 (nonprecedential ruling that the claimed
invention was a trivial change from the prior art,
where server control of a media player was
plainly the alternative to a client-controlled server,
and also citing KSR (S.C.) cautioning against
rewarding obvious variations precipitated by
design incentives and other market forces);
Tokyo Keiso, 1/9/09 (nonprecedential motivation
to combine prior art reference in the same field of
endeavor with prior art admitted in the
specification); Lexion Medical, 8/28/08
(nonprecedential invention obvious where was a
predictable variation or improvement of the prior
art that was well within the skill and ordinary
creativity of a skilled artisan)
- Market demand is a legitimate consideration

in determining obviousness KSR (S.C.)
(Hynix, 5/13/11 (the district courts
consideration of economic disincentives
for the claimed combination was proper,
since lowering cost is a ubiquitous market
demand, and the fact that the combination
was expected to increase cost had some
1694
bearing on the obviousness of the
combination))
- When a work is available in one field of

endeavor, design incentives and other
market forces can prompt variations of it,
either in the same field or a different one
KSR (S.C.) (Tokai, 1/31/11 (claimed utility
lighter was obvious where added safety
feature was used in prior art cigarette
lighters); Ritchie, 4/24/09; Muniauction,
7/14/08 (claim to a specific type of
electronic auction using a web browser was
obvious over prior art electronic auctions
generally using a browser)); See also Tokyo
Keiso, 1/9/09 (nonprecedential); Andersen,
11/19/08 (nonprecedential genuine issues
of material fact existed as to whether prior
art electromagnetic-shielding mesh would
have been part of the field of the invention
searched by an insect screen designer and
whether such an alternative use would have
been obvious, despite KSRs (S.C.) teaching
that common sense might make alternative
uses of familiar items obvious)
- Combining modern electronics with an otherwise

unpatentable invention the routine addition of
modern electronics to an otherwise unpatentable
invention typically creates a prima facie case of
obviousness Leapfrog, KSR (S.C.) (Soverain
Software, 1/22/13 (using internet browser and the
routine incorporation of internet technology into
existing processes was obvious as commonplace
citing Western Union and Muniauction); Western
Union, 12/7/10 (combining internet use with prior
art system was obvious); Muniauction, 7/14/08
(combining prior art system with web browser
1695
technology was commonplace at the time of
filing the application, citing Leapfrog)); See also
Cimline, 3/2/11 (nonprecedential automating
mechanical technology was obvious)
- Combination applying commonly available

modern electronics to older mechanical
devices of prior art is obvious KSR (S.C.)
(Western Union, 12/7/10; Source Search,
12/7/09 (rejecting the patent challengers
argument that the patent in suit disclosed
nothing more than a computerized version of
the cited bricks and mortar prior art,
distinguishing Leapfrog); Leapfrog
Enterprises, 5/9/07); See also In re Mettke,
6/25/09 (nonprecedential? [designated as
nonprecedential on the CAFC website,
but treated as precedential in the F.3d
reporter and Western Union, 12/7/10]
obvious to add Internet access to a prior art
kiosk that included a fax machine)
- Common sense of those skilled in the art

demonstrates why some combinations would have
been obvious where others would not KSR (S.C.)
(Ohio Willow Wood, 11/15/13 (features in
dependent claims were well known in the prior
art); Mintz, 5/30/12 (record evidence of common
sense is needed to support obviousness); Western
Union, 12/7/10; Source Search, 12/7/09 (vacating
SJ where factual disputes as to whether the
patented advances were a common sense
application of the prior art to the problem
addressed by the invention); *Perfect Web,
12/2/09 (citing Leapfrog); Leapfrog Enterprises,
5/9/07); See also In re Gleizer, 12/15/09
(nonprecedential adding an escrow account to
the cited prior art would have been common sense
1696
and reasonably obvious to one of ordinary skill in
designing a system for transaction of goods using
electronic funds)
- Development of the prior art which is the

quintessence of ordinary skill or ordinary
skill and common sense rather than
patentable innovation KSR (S.C.) (In re
Kubin, 4/3/09 (claimed gene encoding a
known protein was obvious where cloning
and sequencing techniques were well known
in the prior art); Ricoh, 12/23/08 (the mere
understanding that a prior art process was
useful in a faster but overlapping speed
range failed to rebut prima facie case))
- Granting patent protection to

advances that would occur in the
ordinary course without real
innovation retards progress KSR
(S.C.) (Procter & Gamble, 5/13/09
(citing rule); Pharmastem, 7/9/07)
- Obvious variants of prior art references are

themselves part of the public domain KSR (S.C.),
Dystar (In re Translogic Technology, 10/12/07);
See also Kimberly-Clark, 6/1/11 (nonprecedential
applying rule)
- Prior art solving the same problem as the invention

renders the invention obvious (Tokai, 1/31/11
(claimed utility lighter having safety feature was
obvious over prior art cigarette lighters having
safety feature); Source Search, 12/7/09 (factual
issues barred SJ where the POS in the art may not
have even recognized the problem addressed by
the filtering feature of the claimed invention in
1996, at the dawn of the internet era and adding
1697
that even if the problem was apparent to one of
ordinary skill, a solution may not have been a
straightforward step); Ball Aerosol, 2/9/09 (both
the prior art and claimed invention solved the
scorching problem caused by hot candles);
Agrizap, 3/28/08); See also Andersen, 11/19/08
(nonprecedential genuine issue of material fact
existed as to whether prior art electromagnetic-
shielding screen solving the same problem as the
invention (being highly transparent) rendered the
invention (a highly transparent insect screen)
obvious)
- Once a technique is used to improve one

device, and a POS in the art would
recognize that it would improve similar
devices in the same way, using the technique
is obvious unless its actual application is
beyond his or her skill KSR (S.C.) (In re
Katz Patent Litigation, 2/18/11; Tokai,
1/31/11 (claimed utility lighter was obvious
even if it required some variation in the
selection or arrangement of particular prior
art components; see also J. Newman,
dissenting); Fresenius, 9/10/09 (use of touch
screen in a hemodialysis machine was
obvious where already used in other medical
devices, and the ordinarily skilled artisan
would have been able to make the
combination); Ecolab, 6/9/09 (combining a
known technique for sanitizing meat using
high pressure spraying with the claimed
antimicrobial agent was obvious); Ritchie,
4/24/09 (rule described the case to a tee in
which a sexual device that substituted a type
of glass having well-known properties for
the commonly used glass was obvious);
Asyst Techs., 10/10/08 (obvious to replace
1698
an information bus of the prior art with a
multiplexer where they were well-known as
two alternative means for connecting
transducer stations, and was not suggested
that the multiplexer in the claimed system
operated in other than its conventional
manner, and the replacement and choice
between the two devices was familiar to a
POS in the art, citing KSR and the testimony
of the patentees expert); In re Sullivan,
8/29/07 (biotech; antibody fragments)); See
also In re Breiner, 5/10/12 (nonprecedential
wireless computer-related invention
obvious); In re Schwemberger, 10/13/10
(nonprecedential)
- Simple substitution of one known element for

another is obvious KSR (S.C.) (Wrigley, 6/22/12
(claimed chewing gum composition held obvious
where all that was required to obtain the
combination was to substitute one well-known
cooling agent for another; see also J. Newman,
dissenting); Ritchie, 4/24/09 (substituting standard
borosilicate glass having well-known properties
for ordinary glass in a sexual device was obvious;
also citing other substitution cases in which the
invention was held obvious, including the
venerable case of Hotchkiss (S.C.), cited
approvingly in KSR (S.C.)); Sd-Chemie, 1/30/09
(vacating SJ of obviousness based on a simple
substitution where there was another difference
between the claimed desiccant and the prior art
patent); Asyst Techs., 10/10/08 (replacing an
information bus of the prior art with a multiplexer
was obvious where both well-known as alternative
means for connecting transducer stations)); See
also In re Chevalier, 1/7/13 (nonprecedential
obvious combination of references where one prior
1699
art deflector was substituted for another prior art
deflector and produced a predictable result, stating
rule from KSR (S.C.) that when a patent claims a
structure already known in the prior art that is
altered by the mere substitution of one element for
another known in the field, the combination must
do more than yield a predictable result)
Expert testimony needed?
- Expert testimony needed (or not) - also, must rebut

(Allergan, 5/19/11; Perfect Web, 12/2/09 (expert
testimony supported obviousness, even though was
unnecessary in view of the low level of skill in the
art); Monolithic Power Systems, 3/5/09 (patentee
did not cross-examine the opponents expert, and
its own expert did not testify regarding the prior
arts teaching of a claim element); **Alza, 9/6/06;
Princeton Biochemicals, 6/9/05; Golight, 1/20/04);
See also Cimline, 3/2/11 (nonprecedential expert
testimony not needed for easily understandable
technology); Pivonka, 2/19/09 (nonprecedential
BPAI; unrebutted expert testimony was substantial
evidence of obviousness of collapsible pet carrier,
which combined prior art and POS in the art would
have been readily able to make); See also Other
obviousness issues Expert testimony (e.g., expert
report) to prove (non)obviousness; DISTRICT
COURT PRACTICE AND PROCEDURE
Expert testimony . . .
- Expert testimony was substantial evidence

(Group One, 5/16/05); See also Pivonka,
2/19/09 (nonprecedential BPAI)
- Expert opinions not always needed where

the technology is easily understandable
1700
(Wyers, 7/22/10; Perfect Web, 12/2/09
(delivery of emails)); See also In re Bayne,
6/5/13 (nonprecedential PTAB did not err
by relying on its common sense in making
the obviousness determination when the
prior art references and the invention were
easily understandable citing Wyers); Stone
invention obvious based on common sense
to combine prior art features into a single
claimed feature, especially where expert
testimony was not needed, citing Wyers);
Cimline, 3/2/11 (nonprecedential citing
Perfect Web); See also DISTRICT COURT
PRACTICE AND PROCEDURE Expert
testimony unnecessary for simple
technology
- No invariable requirement that a prior art

reference be accompanied by expert
testimony (Allergan, 5/19/11 (citing Wyers
for the rule that expert testimony is not
required when the references and the
invention are easily understandable, but that
the district court did not abuse its discretion
in requiring expert testimony supporting
technical references relied on to establish
obviousness in post-trial filings, where the
references although admitted into evidence
were not supported by expert testimony or
otherwise relied on at trial))
Motivation implicit from the content of the prior art, nature

of the problem addressed, or common knowledge
- Motivation need not be expressly provided in the prior

art, but may be implicit from the prior art as a whole,
1701
appear in: 1) content, statements in the prior art, the prior
art as a whole, 2) nature of the problem addressed, solved
by the invention, or 3) common knowledge, the
knowledge of one of ordinary skill in the art (Dow Jones,
5/28/10 (method of making websites obvious where
combined prior art elements and was predictable in view
of the general knowledge in the art); *Perfect Web,
12/2/09 (courts should avoid overemphasis on the
importance of published articles and the explicit content
of issued patents KSR (S.C.)); CSIRO, 9/19/08
(focusing on the nature of the problem solved by the
invention as the motivation for combining prior art
references relating to solutions for addressing the same or
similar problems, citing Cross Medical Prods.); In re
Translogic Technology, 10/12/07; Pfizer, 3/22/07 (nature
of the problems encountered with prior art formulation
provided motivation to combine); Dippin Dots, 2/9/07;
**Dystar, 10/3/06; **Alza, 9/6/06; Ormco, 8/30/06;
Abbott Labs, 6/22/06; **In re Kahn, 3/22/06; Medichem,
2/3/06; In re Johnston, 1/30/06; Cross Medical Prods.,
9/30/05; Princeton Biochemicals, 6/9/05); See also In re
Stauffer, 7/24/08 (nonprecedential the suggestion to
combine may come from the prior art, as filtered through
the knowledge of one skilled in the art; KSR (S.C.) not
cited)
- Teaching, suggestion, or motivation (TSM) test

the court asks whether a POS in the art,
possessed with the understandings and knowledge
reflected in the prior art, and motivated by the
general problem facing the inventor, would have
been led to make the combination recited in the
claims In re Kahn, Cross Medical Prods.
(CSIRO, 9/19/08; Dippin Dots, 2/9/07; Optivus
Tech., 11/16/06; **Dystar, 10/3/06; **Alza,
9/6/06)
1702
- Recognition of a need (unsolved problem)
does not render obvious the solution that
meets the need (problem) (Cardiac
Pacemakers, 8/31/04)
- Suggestion in the prior art of desirability of

combination the particular combination
need not be preferred, the most desirable
combination (In re Fulton, 12/2/04)
- Test is a flexible one which may find motivation to

combine in the knowledge of one skilled in the art
or in the nature of the problem to be solved Alza
v. Mylan (Perfect Web, 12/2/09; Ball Aerosol,
2/9/09; Dippin Dots, 2/9/07)
- Test is in actuality quite flexible and not only

permits, but requires, consideration of common
knowledge and common sense Dystar (cited by
KSR (S.C.) that the CAFCs formulation of the
TSM test in Dystar would be more consistent with
the Supreme Courts restatement of the TSM test)
(Western Union, 12/7/10; Perfect Web, 12/2/09;
Ball Aerosol, 2/9/09; Ortho-McNeil, 3/31/08
(flexible TSM test is to be applied); In re
Translogic Technology, 10/12/07)
- Test for an implicit showing what the combined

teachings, knowledge of one of ordinary skill in
the art, and the nature of the problem to be solved
as a whole would have suggested to those of
ordinary skill in the art In re Kahn (Perfect Web,
12/2/09; Dippin Dots, 2/9/07; *Alza, 9/6/06;
Ormco, 8/30/06)
Content, statements in the prior art
1703
- Expressly stated in reference or within
the knowledge of POS in the art,
which must be supported by tangible
teachings of reference materials; not
derived by hindsight from knowledge
of invention itself (Cardiac
Pacemakers, 8/31/04)
- Located in prior art reference(s)

itself, or can be implicit in the
knowledge of one of ordinary
skill (Perfect Web, 12/2/09;
Abbott Labs, 10/21/08 (J.
Gajarsa, dissenting, stating that
a given claim limitation [here,
pharmacokinetic conditions]
may be obvious over the prior
art even if no single reference
had specifically disclosed that
limitation); **Dystar, 10/3/06;
**Alza, 9/6/06; **In re Kahn,
3/22/06; National Steel Car,
1/29/04); See also In re Tzipori,
10/15/08 (nonprecedential -
citation in one prior art
reference to another reference
may provide a justification for
combining the references for
obviousness purposes)
- Explicit teaching that identifies and

selects elements from different
sources and states that they should be
combined in the same way as in the
invention at issue, is rarely found in
the prior art (Dystar, 10/3/06; In re
Johnston, 1/30/06)
1704
- Prior art containing conflicting
teachings or simultaneous
advantages/disadvantages does not
obviate motivation to combine prior
art must be considered as a whole for
what it teaches (Medichem, 2/3/06)
- Prior art patent disclosing multiple

embodiments having a certain benefit
does not render less obvious one of
those embodiments Merck, In re
Corkill (Boston Scientific Scimed,
1/15/09 (ruling that the prior art
patent need not have recognized the
additional benefit of one embodiment
to have rendered the claimed medical
device (stent) obvious))
Nature of the problem solved by the inventor
- Motivation to modify prior art

references to arrive at the claimed
invention need not be the same
motivation that the patentee had
KSR (S.C.) (Alcon Research, 8/8/12
(prior art provided motivation to use
drug in humans for antihistaminic
efficacy in eyes, despite the patentees
motivation (as also claimed) being to
stabilize mast cells in eyes citing In
re Kahn and other cases))
- Any need or problem known in the

field of endeavor at the time of
invention and addressed by the patent
can provide a reason for combining
the elements in the manner claimed
1705
this includes, but is not limited to, the
problem motivating the patentee -
KSR (S.C.) (Bayer, 4/16/13 (obvious
based on prior art references to solve
problem with contraceptive regimen
by shortening the pill-free period, and
references even disclosed the
solution); Norgren, 11/14/12 (ITC
properly found claims obvious based
on evidence of known problems and
an obvious solution, and thus
rejecting the patentees argument
(relying on Innogenetics) that the
problem listed in the patent was
insufficient motivation, based on the
rule from KSR (S.C.) that claims may
be proved obvious where there
existed at the time of invention a
known problem for which there was
an obvious solution encompassed by
the patents claims); Tokai, 1/31/11
(affirming SJ of obviousness where
there was a motivation to combine
prior art references based on the need
for safer utility lighters; see also J.
Newman, dissenting); Wyers, 7/22/10
(obvious where the existence of
different aperture sizes in trailer hitch
receivers was a known problem
addressed by the invention); Perfect
Web, 12/2/09; Abbott Labs, 10/21/08
(J. Newman knowledge of the goal
[here, addressing the problem of
producing extended release
formulations having the FDA-
required pharmacokinetic properties]
does not render its achievement
obvious; see also J. Gajarsa,
1706
dissenting); *CSIRO, 9/19/08; In re
Omeprazole, 8/20/08 (problem or
need not recognized by the prior art -
drug formulation was not obvious
where the prior art failed to disclose
or suggest any problem relating to the
interaction between the drug core and
enteric coating as to provide
motivation for adding a subcoating
between the two, and thus a POS in
the art would have had no reason to
modify the prior art by adding the
subcoating of the invention); Eisai,
7/21/08; In re Icon Health and Fitness,
8/1/07); See also Astrazeneca,
10/30/13 (nonprecedential using
nebulizers for administering
budesonide would have been an
obvious way to overcome the problem
of finding an effective delivery
mechanism to treat young patients,
applying KSR (S.C.) rule); Thomson
Licensing, 6/19/13 (nonprecedential
a POS in the art would have had
reason to combine the two prior art
references which along with the
invention shared the common goal of
providing spacer elements that did not
disturb the orientation or alignment of
liquid crystal molecules); Stone
invention held obvious where all
claim limitations were in the prior art
references, and solved a known
problem in the art - Wyers)
- Evidence particularly relevant

with simpler mechanical
1707
technologies (Tokai, 1/31/11
(also relying on the simplicity
and availability of the
components making up the
claimed utility lighter)); See
also Stone Strong, 10/17/11
(nonprecedential only limited
number of possible techniques
to align blocks)
- Determining the relevant art for the

purpose of addressing patent
invalidity, must consider the nature of
the problem confronting the inventor
(Bancorp, 3/1/04)
- Found in the nature of problem to be

solved (Dippin Dots, 2/9/07),
especially when prior art references
address the problem to be solved
(Tokai, 1/31/11; CSIRO, 9/19/08
(prior art addressed the same or at
least similar problem); Group One,
5/16/05; Ruiz, 1/29/04; Akamai,
9/15/03)
- One skilled in the art would

naturally look to the prior art
addressing the same problem,
and solutions to that problem,
as the patented invention
(Tokai, 1/31/11; CSIRO,
9/19/08; In re Icon Health and
Fitness, 8/1/07)
- No motivation to combine prior

art references not relating to the
problem described in the patent,
1708
and prior art references that
address different problems may
not, depending on the art and
circumstances, support an
inference that the skilled artisan
would consult (to combine)
both of them simultaneously
(Broadcom, 10/7/13 (no
motivation to modify prior art
reference which accomplished
its objective and provided no
suggestion to broaden that
objective - citing Kinetic
Concepts))
- General, not the specific, problem

solved by the invention is considered
(Alcon Research, 8/8/12; CSIRO,
9/19/08 (citing Cross Medical Prods.
for the rule that the POS in the art
need not see the identical problem
addressed in a prior art reference to be
motivated to apply its teachings);
Abbott Labs, 6/22/06; *In re Kahn,
3/22/06)
- Prior art need not address the same

problem as the claimed invention to
be relevant prior art; common sense
teaches that familiar items may have
obvious uses beyond their primary
purposes, and in many cases, a POS in
the art will be able to fit the teachings
of multiple patents together like
pieces of a puzzle KSR (S.C.)
(Comaper, 3/1/10; Perfect Web,
12/2/09; CSIRO, 9/19/08 (prior art
addressing the same or quite similar
1709
problem presented material fact issues
regarding a motivation to combine the
references); In re Translogic
Technology, 10/12/07
- Progress in crowded arts vs.

pioneering invention progress made
in crowded arts, usually made in small
increments, is as important as it is in
arts at the pioneer stage In re Meng
(CCPA) (Outside the Box
Innovations, 9/21/12 (district court
improperly excluded expert testimony
of nonobviousness, stating that small
differences in crowded fields may
produce a nonobvious advance and
commensurate commercial success,
which is better understood by artisans
in the field, than by judges))
- Invention can often be the recognition

of a problem itself Cardiac
Pacemakers (Leo Pharm., 8/12/13
(finding nonobviousness of
pharmaceutical composition where
the prior art either discouraged
combining the claimed components in
a single formulation, or attempted
combining them without recognizing
or solving the storage stability
problems associated with the
combination); Apple, 8/7/13 (J.
Reyna, concurring-in-part and
dissenting-in-part the Apple
inventors, not the prior art inventors,
identified the problem of achieving a
multitouch transparent screen))
1710
Knowledge of one of ordinary skill
- Suggestion test not only permits, but

requires, consideration of common
knowledge and common sense
(Randall Mfg., 10/30/13 (reversing
the BPAI because it ignored
background prior art references which
could explain why to combine the
four prior art references it focused on
for concluding nonobviousness
citing the above rule and Dystar and
referring to KSRs rejection of a
blinkered focus on individual
documents); Western Union,
12/7/10; Perfect Web, 12/2/09; Erico
Intl, 2/19/08 (common knowledge
before the filing date, based on the
inventors testimony, established a
substantial question of obviousness to
vacate PI); In re Translogic
Technology, 10/12/07 (relying in part
on knowledge of POS in the electrical
arts for obviousness); Leapfrog
Enterprises, 5/9/07; Dystar, 10/3/06)
- Expert testimony relied on to show

knowledge generally available to a
POS in the art at the time of invention
(Alza, 9/6/06)
- Knowledge of one of ordinary skill

that certain references are of special
importance in a particular field
(Perfect Web, 12/2/09; Akamai,
9/15/03)
1711
- Knowledge of one of ordinary skill
can be shown in non-prior art
disclosures (Cross Medical Prods.,
9/30/05; National Steel Car, 1/29/04)
- POS (with level of skill in the art)

supports obviousness whether POS
possessed knowledge and motivation
to combine, modify the prior art
(Perfect Web, 12/2/09 (obviousness in
view of low level of skill in the art);
Leapfrog Enterprises, 5/9/07; *Dystar,
10/3/06; Abbott Labs, 6/22/06; *In re
Kahn, 3/22/06); See also In re Sutton,
obviousness based on knowledge of
POS in the art as shown by teaching
references showing the state of the
art)
- Invention obvious when improves,

makes the prior art cheaper, faster,
easier, more efficient, more
convenient, etc. there exists an
implicit motivation to combine
references (i.e., within the common
knowledge of ordinary artisans in the
field, not that of an inventor) (Source
Search, 12/7/09 (factual issues
prevented the conclusion that a POS
in the art would have found the
claimed invention easy, obvious,
routine, or within the grasp of a
common sense application of prior
art); Ritchie, 4/24/09 (substituting a
standard type of smooth glass for
another glass type normally used in a
sexual device was obvious even
1712
though the substituted glass made the
device more lubricious, or slippery);
Asyst Techs., 10/10/08 (prior art
publications evidenced that a system
like the claimed system would be
improved by using the claimed
multiplexer); **Dystar, 10/3/06); See
also In re Stauffer, 7/24/08
(nonprecedential)
- Enhancing commercial
opportunities (e.g.,
manufacturing and marketing)
is obvious (Ritchie, 4/24/09;
Pfizer, 3/22/07)
- [M]ere application of a
known technique to a
piece of prior art ready
for improvement KSR
(S.C.) (Western Union,
12/7/10; Sundance,
12/24/08 (the benefit of
replacing a one-piece
truck cover in prior art
reference with a
segmented cover in
another reference was
inescapably obvious to
a cover designer of
ordinary skill))
Avoidance of hindsight - motivation to combine prevents

hindsight bias
- Motivation to combine serves to prevent hindsight bias

(St. Jude Medical, 9/11/13 (even under an expansive and
1713
flexible analysis, the court must guard against hindsight
bias and ex post reasoning KSR (S.C.)); Outside the
Box Innovations, 9/21/12 (district courts use of
hindsight bias was improper, stating that an obviousness
determination is made not after observing what the
inventor actually did, but in light of the state of the art
before the invention was made); Kinetic Concepts,
8/13/12 (hindsight provided the only reason to combine
prior art references); Mintz, 5/30/12 (district court used
improper hindsight (i.e., used the invention to define the
problem that the inventor solved), and failed to consider
objective indicia as independent evidence of
nonobviousness; also stating that objective consideration
of simple technology is often the most difficult); In re
Hyon, 5/24/12 (see J. Newman, dissenting the BPAI
used improper hindsight and the invention to select prior
art elements); Otsuka, 5/7/12 (claimed compound held
nonobvious where there was no motivation to select and
modify prior art lead compounds argued by the
defendants; also, the defendants reliance on the
plaintiffs own development efforts was improper
hindsight, stating that the inventors own path never leads
to a conclusion of obviousness, which is hindsight what
matters is the path that the POS in the art would have
followed as evidenced by the pertinent prior art); In re
Cyclobenzaprine, 4/16/12 (improper use of hindsight
analysis where the district court and defendants relied on
a co-inventors testimony to retrace the inventors steps
obviousness must be assessed at the time the invention
was made); Celsis In Vitro, 1/9/12 (prior art reference did
not disclose the accused infringers experts hindsight
theories); In re Construction Equipment Co., 12/8/11 (J.
Newman, dissenting improper use of the template of
the new device with the guidance of the patentee citing
In re Fritch); Star Scientific, 8/26/11 (obviousness with
no hindsight is the goal); Genetics Institute, 8/23/11; In
re NTP I, 8/1/11 (reversing obviousness rejection based
on a combination of references where the BPAI
1714
improperly relied on hindsight reasoning to piece
together elements to arrive at the claimed invention);
Tokai, 1/31/11 (J. Newman, dissenting It is improper
to take concepts from other devices and change them in
light of the now-known template of the patented device,
without some direction in the prior art that would render
it obvious to do so.); Sanofi-Synthelabo, 12/12/08
(claimed enantiomer only obvious with hindsight
knowledge of its highly desirable properties); Abbott
Labs, 10/21/08 (J. Newman); Muniauction, 7/14/08
(holding claimed combination obvious, while
recognizing obligation to guard against any hindsight
bias); Ortho-McNeil, 3/31/08 (a flexible TSM test
remains the primary guarantor against a non-statutory
hindsight analysis, i.e., section 103 requires that the
subject matter as whole would have been obvious at the
time the invention was made); Innogenetics, 1/17/08
(must be careful not to allow hindsight reconstruction of
prior art references - need explanation as to how or why
prior art references would be combined to produce the
claimed invention); Optivus Tech., 11/16/06; **Dystar,
10/3/06; **Alza, 9/6/06; **In re Kahn, 3/22/06;
Medichem, 2/3/06; *Princeton Biochemicals, 6/9/05;
Syntex, 5/18/05; Ruiz, 1/29/04; Golight, 1/20/04) [In
KSR v. Teleflex, the U.S. Supreme Court disapproved
of treating as a rule the avoidance of hindsight,
stating that although a factfinder should be aware, of
course, of the distortion caused by hindsight bias and
must be cautious of arguments reliant on ex post
reasoning, . . . . [r]igid preventative rules that deny
factfinders recourse to common sense, however, are
neither necessary under our caselaw nor consistent
with it.]; See also In re Sutton, 11/20/12
(nonprecedential affirming motivation to combine prior
art references where no hindsight was used because the
BPAI made specific factual findings from the explicit
teachings in the prior art, and did not use the invention
as a roadmap to cobble together disparate prior art
1715
references for an obviousness combination); MEMS
Tech. Berhad, 6/3/11 (nonprecedential declining the
accused infringers invitation to reconstruct the claimed
invention with hindsight using . . . disparate prior art
documents); In re Vaidyanathan, 5/19/10
(nonprecedential Obviousness is determined as a
matter of foresight, not hindsight . . . KSR did not free the
PTOs examination process from explaining its
reasoning)
- Obviousness cannot be based on the hindsight

combination of components selectively culled
from the prior art to fit the parameters of the
patented invention ATD (Cheese Systems, 8/6/13
(the avoidance of even a hint of hindsight))
- Application of hindsight is inappropriate where the

prior art does not suggest the unexpected
properties and advantages of the claimed invention
Graham (S.C.), KSR (S.C.) (Sanofi-Synthelabo,
12/12/08)
- Expert testimony prevents judicial hindsight

(Outside the Box Innovations, 9/21/12 (stating that
although advances in technology may in
retrospect appear obvious to a judge, stimulated by
advocacy, it is relevant that the advance eluded
persons in the field and that [t]he foil to judicial
hindsight is the testimony of persons experienced
in the field of the invention))
- Must explain, articulate reasons for selection of

the prior art and motivation to combine references
(Plantronics, 7/31/13 (district court failed to
provide reasons for finding motivation to combine
prior art based on common sense, and also failed to
consider objective evidence of nonobviousness, to
guard against the use of hindsight); Mintz, 5/30/12;
1716
In re Construction Equipment Co., 12/8/11 (J.
Newman, dissenting the majority adopted a
prohibited hindsight analysis, without articulating
a rational underpinning for combining the
references in such a way to achieve the claimed
machine, as required by KSR (S.C.): We are
offered no rationale for the combination now
deemed obvious, other than the patentees
achievement.); Perfect Web, 12/2/09; Ball
Aerosol, 2/9/09 (district court confused that the
analysis of reasons must be explicit with other
KSR (S.C.) rule that prior art motivation need not
be explicit); Voda, 8/18/08 (challenger made only
unsupported perfunctory arguments for
obviousness); Eisai, 7/21/08; Muniauction, 7/14/08
(explaining that claimed combination was obvious
based in part on the effects of demands known to
the design community or present in the
marketplace under KSR (S.C.)); Ortho-McNeil,
3/31/08 (cannot discount the inventors insights,
willingness to confront and overcome obstacles,
and even serendipity, at the time of the invention);
Innogenetics, 1/17/08 (excluded expert report
failed to explain the motivation to combine listed
prior art references to reach the claimed method);
Sanofi-Synthelabo, 12/8/06) otherwise theres
danger of hindsight (Innogenetics, 1/17/08; **In re
Kahn, 3/22/06) [Although disapproving of the
hindsight bias rule, the Supreme Court in
KSR v. Teleflex, consistent with the CAFCs
TSM test, recognized the importance of
identifying a reason that would have
prompted the POS in the art to combine the
elements in the way claimed by the patent, and
that this obviousness analysis should be made
explicit, i.e., there must be some articulated
reasoning with some rational underpinning to
support obviousness.]; See also In re
1717
Vaidyanathan, 5/19/10 (nonprecedential KSR
did not free the PTOs examination process from
explaining its reasoning)
- Insufficient to merely identify each element

in the prior art to establish unpatentability of
the combined subject matter as a whole;
instead, a party alleging obviousness must
articulate the reasons one of ordinary skill
in the art would have been motivated to
select the references and combine (or
modify) them to render the claimed
invention obvious In re Kahn, Abbott Labs
(Perfect Web, 12/2/09; Innogenetics,
1/17/08; Eli Lilly, 12/26/06; Sanofi-
Synthelabo, 12/8/06); See also In re Mettke,
nonprecedential on the CAFC website,
but treated as precedential in the F.3d
despite concluding (prima facie)
obviousness where the BPAI explained the
reasons why the POS in the art would have
been motivated to modify prior art
references in light of the teaching of another
prior art reference, the appellant was correct
that the selective hindsight combination of
references that show various elements of the
claim generally does not suffice to establish
obviousness citing KSR (S.C.): [A]
patent composed of several elements is not
proved obvious merely by demonstrating
that each of its elements was, independently,
known in the prior art)
- Risk, danger of hindsight bias,

reconstruction (Amgen, 9/15/09 (experts
statement was one of hindsight, not of
1718
reasonable expectation of success at the time
of invention); Innogenetics, 1/17/08; **In re
Kahn, 3/22/06; Iron Grip Barbell, 12/14/04;
Ruiz, 1/29/04)
- Danger of hindsight bias is the reason for

secondary considerations (Leo Pharm.,
8/12/13 (the BPAI erred by using hindsight
to find motivation to combine, stating that
the objective indicia of nonobviousness
highlighted that the BPAIs analysis relied
on hindsight); Apple, 8/7/13 (J. Reyna,
concurring the ITC succumbed to the bias
of hindsight by ignoring the significant
objective evidence); Cheese Systems,
8/6/13; Plantronics, 7/31/13 (district court
failed to consider secondary considerations
of commercial success and copying); Mintz,
5/30/12); also the reason for, when the
obviousness analysis involves a
combination, why there needs to be a
suggestion, motivation or teaching of the
combination to those skilled in the art (Iron
Grip Barbell, 12/14/04) [flexible TSM
based on KSR (S.C.)]
- Objective indicia are relevant, e.g., the

commercial response to the invention is a
useful control against hindsight evaluation
of obviousness (Plantronics, 7/31/13; Mintz,
5/30/12; Alza, 9/6/06; In re Kahn, 3/22/06;
In re Johnston, 1/30/06)
- Teaching, suggestion or motivation to 1) select,

and 2) combine references to produce the claimed
invention is necessary; prevents hindsight bias
(Ortho-McNeil, 3/31/08 (flexible TSM test is to
be applied); Innogenetics, 1/17/08; Dippin Dots,
1719
2/9/07; Optivus Tech., 11/16/06; **Alza, 9/6/06;
Abbott Labs, 6/22/06; **In re Kahn, 3/22/06; *In
re Johnston, 1/30/06)
- Flexible approach to the TSM test prevents

hindsight and focuses on evidence before the
time of invention, without unduly
constraining the breadth of knowledge
available to one of ordinary skill in the art
during the obviousness analysis (Ortho-
McNeil, 3/31/08 (TSM test, flexibly
applied, merely assures that the obviousness
test proceeds on the basis of evidence
teachings, suggestions (a tellingly broad
term), or motivations (an equally broad
term) that arise before the time of
invention as [section 103] requires); In re
Translogic Technology, 10/12/07)
Reasonable expectation of success
- Reasonable expectation of success required for

obviousness (Broadcom, 10/7/13 (need plausible
rationale as to why the prior art references would have
worked together citing Power-One); Leo Pharm.,
8/12/13 (no predictability or reasonable expectation of
success of therapeutic effectiveness based on the many
choices available in the prior art); Allergan, 5/1/13 (need
reasonable expectation of success for developing the
claimed invention, and not the commercial embodiment,
rejecting as clear error the district courts reliance on the
patentees particularized and irrelevant difficulties in
formulating the commercial product); In re Droge,
9/21/12; Alcon Research, 8/8/12 (citing expert testimony
of no reasonable expectation of success where the prior
art taught using ten times less the amount of drug as
recited in the claimed method of use); In re Hyon,
1720
5/24/12 (see J. Newman, dissenting reasonable
expectation of success must be found in, and at the time
of, the prior art, and that the inventors were ultimately
successful is irrelevant); In re Cyclobenzaprine, 4/16/12
(no reasonable expectation of a POS in the art
successfully meeting the claimed therapeutically
effective limitation); Unigene Labs, 8/25/11
(pharmaceutical formulation was not obvious where
would not have been expected based on the prior art to
perform properly for pharmaceutical use); Eli Lilly,
9/1/10 (claimed drug use was not obvious where there
was no evidence that would supply any common sense
reason to a POS in the art to reject the bioavailability
concerns with the drug disclosed in the published art and
arrive at the invention); Wyers, 7/22/10 (prior art
provided a reasonable expectation of success);
Therasense, 1/25/10 (rejecting for the same reasons the
patentees arguments for no enablement and no
reasonable expectation of success for the cited prior art)
5/25/11 (en banc)]; Amgen, 9/15/09 (no obviousness-
type double patenting without a reasonable expectation of
success); Bayer Schering, 8/5/09 (reasonable expectation
that the claimed drug tablet would perform similarly to a
closely related drug studied in the prior art); Ecolab,
6/9/09 (in addition to there being an apparent reason in
the prior art to combine known elements as claimed, the
POS in the art also would have known how to make the
claimed combination); Procter & Gamble, 5/13/09 (no
reasonable expectation of success from the prior art in
synthesizing and testing the claimed compound, citing
Pharmastem); In re Kubin, 4/3/09 (the skilled artisan
would have had a resoundingly reasonable expectation
of success in deriving the claimed DNA molecule
encoding a known protein receptor in light of the prior art
teachings); Sanofi-Synthelabo, 12/12/08 (POS in the art
would not have reasonably expected to obtain the
separated enantiomer from its prior art racemate);
1721
Pharmastem, 7/9/07; Takeda, 6/28/07 (no reasonable
expectation of success found based on the prior art);
Pfizer, 3/22/07; Alza, 9/6/06; Medichem, 2/3/06;
Velander, 11/5/03); See also In re Gardner, 11/14/11
(nonprecedential - declining to apply rule that claims not
prima facie obvious where combination or modification
of prior art would change the principle of operation of the
prior art invention, In re Ratti (CCPA), where was not
established that combining the cited prior art would not
work or was beyond the capabilities of a POS in the art);
Stone Strong, 10/17/11 (nonprecedential reasonable
expectation of success to combine two prior art devices
into a single device, where there were few possible
solutions and involved simple mechanical technology);
Eli Lilly, 7/29/11 (nonprecedential no reasonable
expectation of success in arriving at claimed drug
method); Kimberly-Clark, 6/1/11 (nonprecedential
claimed invention nonobvious (for avoiding PI) where
resulted from the unexpected difficulties encountered
when attempting to solve problems with folding
refastenable training pants); Duramed, 3/25/11
(nonprecedential prior art reference proposing a
theoretical, untested solution to problem provided a
reasonable expectation of success there is no
requirement that a prior art teaching be scientifically
tested or guarantee success before providing a reason to
combine citing Pharmastem and Alza); Syngenta
Seeds, 5/3/07 (nonprecedential)
- Personal expectations are not conclusive of an

ordinarily skilled artisans reasonable expectations
Standard Oil (Amgen, 9/15/09 (inventors
personal expectations that the invention would
work as claimed did not persuade the court that an
ordinarily skilled artisan would have reasonably
expected such results))
1722
- A reasonable expectation of success, not absolute
predictability of success, supports a conclusion of
obviousness (In re Droge, 9/21/12; In re Kao,
5/13/11 (the patentees experts concerns
regarding the enablement of a prior art reference
fell short of establishing non-enablement, citing
rule and that there was no evidence showing that
the reference failed to provide a reasonable
expectation of obtaining the plasma levels of the
drug suggested by the reference and required by
the claims); Bayer Schering, 8/5/09; Procter &
Gamble, 5/13/09; In re Kubin, 4/3/09;
Pharmastem, 7/9/07; Pfizer, 3/22/07 (pharma); Eli
Lilly, 12/26/06 (pharma)); See also Duramed,
3/25/11 (nonprecedential theoretical, untested
teaching in the prior art provided a reasonable
expectation of success to render invention obvious)
- Obviousness cannot be avoided simply by a

showing of some degree of unpredictability
in the art so long as there was a reasonable
probability of success Pfizer (Allergan,
5/1/13 (reasonable expectation of success in
formulating the claimed fixed combination
drug product, despite unpredictability in the
drug formulation arts); Procter & Gamble,
5/13/09)
- Reasonable expectation of forming

invention and working for intended purpose
(Broadcom, 10/7/13 (no reasonable
expectation of success in modifying prior art
reference supported by expert testimony);
Pfizer, 3/22/07 (pharmaceutical salt))
- Routine, predictable experimentation renders an

invention obvious - Pfizer (Ecolab, 6/9/09 (n.2);
Procter & Gamble, 5/13/09 (no credible evidence
1723
that a structural modification to a prior art
compound to make the claimed compound was
routine); Ritchie, 4/24/09 (sexual device was
obvious where successful results of
experimentation with different standard grade of
glass was predictable); Pfizer, 3/22/07); See also
Purdue Pharma, 6/3/10 (nonprecedential only
routine experimentation was required)
- Work of the skillful mechanic, not that of an

inventor Sakraida (S.C.) (Ecolab, 6/9/09 (n.2);
Ritchie, 4/24/09 (substituting standard borosilicate
glass, with well-known properties, for ordinary
glass in a sexual device was not a venture into the
unknown); Sundance, 12/24/08 (modifying truck
cover according to the prior art was obvious))
- [P]roduct not of innovation but of ordinary

skill and common sense KSR (S.C.)
(Wrigley, 6/22/12 (claimed chewing gum
composition containing two known prior art
components held obvious; see also J.
Newman, dissenting); Martin, 8/20/10
(bundle breaking machine obvious where
only two ways (bottom vs. top) to achieve
the invention); Perfect Web, 12/2/09; In re
Kubin, 4/3/09 (claimed gene was the
product of ordinary skill where the encoded
protein and techniques for cloning and
sequencing the gene were known in the prior
art)); See also Metso Minerals, 5/14/13
(nonprecedential); Inventio AG, 11/27/12
(nonprecedential replacement of an older
component in an elevator system with a
modern one also was obvious to try and had
a reasonable expectation of success); In re
POD-NERS, 7/10/09 (nonprecedential one
of ordinary skill in the art seeking to
1724
reproduce and improve existing yellow
beans to make the claimed yellow beans
would have done what the inventor did)
- When an obvious modification (e.g.,

trying a limited number of possible
solutions to the problem) leads to the
anticipated success, the invention is
likely the product not of innovation
but of ordinary skill and common
sense, and thus is obvious KSR
(S.C.) (Norgren, 11/14/12; Perfect
Web, 12/2/09 (final step of the
claimed method was one of only a
few solutions to the problem
addressed by the invention); Procter
& Gamble, 5/13/09); See also Stone
relying on rule where only limited
number of ways to align blocks using
prior art features); See also Inventio
AG, 11/27/12 (nonprecedential
invention obvious where the known
options within the POS in the arts
technical grasp were among the
number of identified, predictable
solutions)
- Modest, routine, everyday, incremental

improvements of an existing product or
process that confer commercial value but do
not involve sufficient inventiveness to merit
patent protection (Ritchie, 4/24/09
(commercially successful sexual device was
obvious where merely improved a known
device by substituting a standard type of
glass for ordinary glass))
1725
- Certainty or guarantee of success is not required
In re OFarrell (In re Kubin, 4/3/09;
*Pharmastem, 7/9/07 (OFarrell provides useful
guidance for determining whether the expectation
of success is enough to render an invention
obvious); Pfizer, 3/22/07 (pharma)); ALSO,
general guidance is not enough must provide
direction as to which of many choices is likely to
be successful In re OFarrell (Pharmastem,
7/9/07; Pfizer, 3/22/07 (pharma); Alza, 9/6/06
(pharma); Medichem, 2/3/06)
Obvious to try when a finite number of identified,

predictable solutions in the prior art
- Obvious to try might show obviousness (Leo

Pharm., 8/12/13 (breadth of choices and numerous
combinations in the prior art indicated the claimed
invention was not obvious to try citing Rolls
Royce; also, only the inventors first recognized the
storage stability problem they solved with the
claimed invention); Novo Nordisk, 6/18/13 (see
also J. Newman, dissenting the majority
misapplied the obvious to try criterion for
obviousness (in the context of synergistic drug
combinations)); Astrazeneca, 12/14/12 (rejecting
challenge to pharmaceutical compound claim
based on obvious to try, where obvious to try was
negated by the general skepticism concerning
pyrimidine-based statins, the fact that other
pharmaceutical companies had abandoned the
general structure, and evidence that the prior art
taught a preference for a lipophilic, rather than
hydrophilic, substitution); Wrigley, 6/22/12
(claimed invention held obvious based on obvious
to try, where the claimed combination of known
chewing gum components was the product not of
1726
innovation but of ordinary skill and common
sense KSR (S.C.)); In re Cyclobenzaprine,
4/16/12 (not obvious to try making a
therapeutically effective, extended-release
formulation, based on In re OFarrell errors
below); Unigene Labs, 8/25/11; Allergan, 5/19/11
(claimed formulation combining two prior art
products was not obvious to try, in light of the
district courts factual findings that the claimed
solution would not have been an anticipated
success to one of ordinary skill in view of
roadblocks, citing Rolls Royce; see also J. Dyk,
dissenting combination would have been obvious
to try); Rolls-Royce, 5/5/10 (not obvious to try
where prior art disclosed a broad selection of
choices available for further investigation); Crocs,
2/24/10 (finding that an ordinary artisan would
not have been motivated even to try, let alone
make, [the] inventive combination of the claimed
foam shoes); Comaper, 3/1/10; Perfect Web,
12/2/09 (including final step in claimed method for
managing bulk email distribution of repeating the
prior known steps until success was achieved was
obvious to try); Bayer Schering, 8/5/09 (claimed
drug tablet was a viable known option based on
the prior art, and was obvious to try where there
were only two known options in the prior art;
see also J. Newman, dissenting); In re Kubin,
4/3/09 (claimed DNA molecule encoding a known
protein receptor was obvious because obvious to
try where the prior art also taught detailed
methods for cloning and isolating the gene; also
describing the two classes of situations, as
addressed in In re OFarrell, where obvious to
try is erroneously equated with obviousness, see
below, neither of which applied here)); Ball
Aerosol, 2/9/09 (claimed invention was obvious
to try based on options in the prior art); Rentrop,
1727
12/18/08 (challenged jury instruction did not
impermissibly prohibit an obvious to try inquiry,
under KSR (S.C.), when read in context correctly
stated that the test for obviousness is not whether
it would be obvious to try to solve the problem that
the invention solves but that the instruction also
did not imply that a showing that the specific
combination of elements was obvious to try is
insufficient to find obviousness)); Pfizer, 3/22/07
(pharma)) TWO KINDS OF ERROR (i.e., when
an invention would not be obvious to try): 1) to
vary all parameters or try each of numerous
possible choices until one possibly arrived at a
successful result, where the prior art gave either no
indication of which parameters were critical or no
direction as to which of many possible choices is
likely to be successful [KSR (S.C.) equivalent
finite number of identified solutions], or 2)
exploring a promising field of experimentation,
where the prior art (is vague and) gave only
general guidance as to the particular form of the
claimed invention or how to achieve it [KSR (S.C.)
equivalent that the identified solutions be
predictable] In re OFarrell (Leo Pharm.,
8/12/13 (claimed drug composition was not
obvious to try citing In re Cyclobenzaprine);
Apple, 8/7/13 (J. Reyna, dissenting prior art
references lacked satisfactory guidance as to how
to achieve multitouch transparent screens); In re
Cyclobenzaprine, 4/16/12 (the defendants obvious
to try argument failed under both errors above and
was like merely throwing metaphorical darts at a
board in hopes of arriving at a successful result,
and which thus amounted to a hindsight claim of
obviousness, and skilled artisans would not have
had a reason to select the route that produced the
claimed invention In re Kubin, In re OFarrell,
Ortho-McNeil); Unigene Labs, 8/25/11
1728
(pharmaceutical formulation was not obvious to
try, addressing both types of error above); Perfect
Web, 12/2/09 (invention was obvious to try);
Bayer Schering, 8/5/09 (identifying the above KSR
(S.C.) equivalents, and finding that the two
OFarrell exceptions did not apply to the obvious
to try claimed drug tablet); Procter & Gamble,
5/13/09 (citing rules in support of the
nonobviousness of a claimed compound where the
prior art failed to motivate a POS in the art to
modify a known positional isomer; and citing In re
Kubin for the rule that, in such cases as 1) above,
courts should not succumb to hindsight claims of
obviousness); In re Kubin, 4/3/09; Pharmastem,
7/9/07 (obvious to try not mentioned, but
invention was held obvious under OFarrell);
Pfizer, 3/22/07 (pharma); Medichem, 2/3/06) [In
KSR v. Teleflex, the U.S. Supreme Court
disagreed with the CAFCs rule that a patent
claim cannot be proved obvious merely by
showing that the claimed combination of
elements would have been obvious to try,
stating that [w]hen there is a design need or
market pressure to solve a problem and there
are a finite number of identified, predictable
solutions, a person of ordinary skill has good
reason to pursue the known options within his
or her technical grasp. If this leads to the
anticipated success, it is likely the product not
of innovation but of ordinary skill and common
sense. In that instance the fact that a
combination was obvious to try might show that
it was obvious under 103.]; See also
Astrazeneca, 10/30/13 (nonprecedential applying
obvious to try rule above from KSR (S.C.) for
affirming obviousness, where there was no clear
error in factual finding of a reasonable expectation
of success for once-daily treatment of children
1729
with nebulized budesonide); Hoffmann-La Roche,
10/11/12 (nonprecedential obvious to try where
there were a finite number of predictable solutions
to arrive at the claimed monthly use of drug; and
the district court did not clearly err finding that
while uncertainties remained in the art, the field
was trending towards intermittent and once-
monthly dosing of 150 mg; see also J. Newman,
dissenting); Eli Lilly, 7/29/11 (nonprecedential
drug method was not obvious to try); Chapman,
3/11/09 (nonprecedential J. Rader, dissenting
distinguishing KSR (S.C.) rule where the inventor
discovered the cause of the problem solved by the
invention, which was not known in the prior art,
and thus was the product of innovation and not
ordinary skill and common sense)
- KSR (S.C.) held it was error to conclude that

a patent claim cannot be proved obvious
merely by showing that the combination of
elements was obvious to try (In re Kubin,
4/3/09; Rentrop, 12/18/08)
- Finite number of identified, predictable

solutions in the prior art?
- KSR posits a situation with a finite,

and in the context of the art, small or
easily traversed, number of options
that (when the result is expected)
would convince an ordinarily skilled
artisan of obviousness (Leo Pharm.,
8/12/13 (no finite number of options
in the prior art); Wrigley, 6/22/12; In
re Cyclobenzaprine, 4/16/12 (standard
not met); Unigene Labs, 8/25/11;
Spectralytics, 6/13/11 (n.2: rejecting
obvious to try argument based on a
1730
finite number of predictable places to
mount the workpiece fixture, which
ignored the expert testimony that the
cutting tool was not a predictable
place to mount the fixture); Allergan,
5/19/11; In re Kao, 5/13/11 (citing
rule for the BPAIs consideration
upon remand); Martin, 8/20/10
(bundle breaking machine obvious
where only two ways (bottom vs. top)
to achieve the invention); Media
Techs., 3/1/10 (rejecting the
patentees argument regarding an
infinite number of identified and
unpredictable solutions in the prior
art, where the claims related to the
content only, and not the presentation,
of trading cards, and content solutions
were significantly limited by the
theme and physical confines of the
card, and thus the finite number of
available solutions were predictable;
see also J. Rader, dissenting); Perfect
Web, 12/2/09 (obvious to try where
there were only three predictable
solutions for solving the problem of
mass email distribution); Bayer
Schering, 8/5/09 (obvious to try based
on the prior art where there were only
two known options in the prior art
for the claimed drug formulation); In
re Kubin, 4/3/09 ([g]ranting patent
protection to advances that would
occur in the ordinary course without
real innovation retards progress
KSR (S.C.)); Ball Aerosol, 2/9/09
(limited number of options in the
prior art to solve the scorching
1731
problem made the claimed candle
holder obvious); Abbott Labs,
10/21/08 (J. Newman drug
formulation was not obvious to try
under KSR (S.C.)); Eisai, 7/21/08
(rule not necessarily true in
unpredictable arts, such as the
chemical arts, including where there
was no motivation to modify a lead
compound by removing lipophilicity-
conferring fluorinated substituent as
an identifiable, predictable
solution); Muniauction, 7/14/08
(referring to the above trend
regarding obvious to try from KSR
(S.C.)); Ortho-McNeil, 3/31/08 (the
prior art, with several unpredictable
alternatives for making the claimed
compound, was not the easily
traversed, small and finite number of
alternatives that KSR suggested might
support an inference of
obviousness)); See also Metso
Minerals, 5/14/13 (nonprecedential);
Plasmart, 5/22/12 (nonprecedential
reversing, where claims were
unpatentable as obvious in view of a
finite number of identified,
predictable solutions to a known
problem)
- Prior art, rather than identifying

predictable solutions to
problem, disclosed a broad
selection of compounds any
one of which could have been
selected as a lead compound for
further investigation; the lead
1732
compound selected (which was
also the closest prior art
compound) also exhibited
negative properties that would
have taught away from the
claimed invention (Takeda,
6/28/07 (pharma, distinguishing
KSR (S.C.) and Pfizer))
- Unpredictable arts (e.g., the

chemical arts) KSRs focus on
identified, predictable
solutions may present a
difficult hurdle because
potential solutions are less
likely to be genuinely
predictable (Otsuka, 5/7/12
(obviousness-type double
patenting); Procter & Gamble,
5/13/09 (claimed positional
isomer of prior art compound
was unpredictable, and thus the
challenger failed to clear the
hurdle where there was
insufficient motivation for a
POS in the art to synthesize and
test the claimed compound); In
re Kubin, 4/3/09 (applying KSR
(S.C.) to biotechnology,
because not limited to the
predictable arts); Abbott Labs,
10/21/08 (J. Newman claimed
drug formulation, including the
recited pharmacokinetic
properties, was not predictable
based on the prior art, stating:
Each case must be decided in
its particular context, including
1733
the characteristics of the
science or technology, its state
of advance, the nature of the
known choices, the specificity
or generality of the prior art,
and the predictability of results
in the area of interest; see also
J. Gajarsa, dissenting); Eisai,
7/21/08); See also Ortho-
McNeil, 8/26/09
(nonprecedential relying on
the above rule from Abbott
Labs in vacating SJ of
invalidity for obviousness
based on material fact issues, -
expert testimony that the
claimed drug combination
tablet was not obvious to try or
predictable, despite a prior art
example disclosing the two
drugs in the same composition
with two other drugs; see also
J. Mayer, dissenting:
characterizing the prior art as
clearly and unequivocally
teaching that the two analgesics
in the claimed tablet could be
combined (while the other two
drugs were removed) for
effective pain relief, and that
the claimed invention was thus
the epitome of obviousness)
- POS in the art must have a good

reason to pursue the known options
within his or her technical grasp
(Rolls-Royce, 5/5/10 (claimed
1734
invention would not have been an
option at all))
- KSRs statement regarding a finite

solutions in the prior art relies on
several assumptions about the prior
art landscape: 1) KSR assumes a
starting reference point or points in
the art, prior to the time of invention,
from which a skilled artisan might
identify a problem and pursue
potential solutions; 2) KSR
presupposes that the record up to the
time of the invention would give
some reasons, available within the
knowledge of one of skill in the art, to
make particular modifications to
achieve the claimed compound; and
3) KSR presumes that the record
before the time of the invention would
supply some reasons for narrowing
the prior art universe to a finite
solutions (Eisai, 7/21/08 (applying
the assumptions as the basis for the
rule that a prima facie case of
obviousness for a chemical compound
in general, begins with the reasoned
identification of a lead compound))
- Striking a balance between obvious to try

not being the standard for determining
obviousness vs. absolute predictability of
success not required for obviousness (Pfizer,
3/22/07 (pharma))
1735
- Testing how far does the need for testing
go toward supporting nonobviousness?;
decisions on obviousness must be narrowly
tailored to the facts of the individual case -
Dystar (Leo Pharm., 8/12/13 (relying on rule
from Abbott Labs that KSR did not create a
presumption that all experimentation in
fields where there is already a background
of useful knowledge is obvious to try,
without considering the nature of the science
or technology, where the prior art the BPAI
relied on was published decades before the
claimed invention, and only the invention
recognized the storage stability problem to
be solved, which evinced it was not obvious
to try; also, too much testing was required,
stating: Without a reasonable expectation
of success or clues pointing to the most
promising combinations, an artisan could
have spent years experimenting without
success.) Sanofi-Synthelabo, 12/12/08
(separation of claimed enantiomer was not
reasonably expected from prior art racemate,
stating that the determination of
obviousness is dependent on the facts of
each case); Abbott Labs, 10/21/08 (J.
Newman Each case must be decided in its
particular context . . .); Pfizer, 3/22/07
(pharma))
Prior art
- Admissions in the specification regarding the prior art are

binding on the patentee for purposes of a later inquiry
into obviousness (Smith & Nephew, 7/9/13 (citing
Pharmastem); Pharmastem, 7/9/07)
1736
- POS in the art is a hypothetical person who is presumed
to be aware of all pertinent prior art Custom
Accessories (Takeda, 6/28/07 (pharma, prosecution
histories))
- Prior art in the obviousness context includes the material

identified in Sections 102(a) and (b) (August Tech.,
8/22/11 (Section 102(b) offer for sale); Ormco,
8/30/06)
- Art that is not accessible to the public is generally

not recognized as prior art public use under
section 102, e.g., no steps taken to conceal
(Ormco, 8/30/06)
- Reference must be considered for everything that it

teaches, not simply the described invention or a preferred
embodiment one of ordinary skill in the art is not an
automation KSR (S.C.) (In re Applied Materials,
8/29/12)
- Prior art reference may be read for all that it

teaches, including uses beyond its primary purpose
(In re Mouttet, 6/26/12)
- Prior art is broader than the references sought to be

combined (Dystar, 10/3/06)
- Teaching references knowledge of a POS in the art (In

re Sutton, 11/20/12 (nonprecedential obviousness based
on motivation to combine prior art references, in light of
the teachings of additional references showing the state
of the art))
Analogous art
1737
(K-Tec, 9/6/12 (no obviousness based on non-analogous art);
Mintz, 5/30/12 (knitting references analogous to meat
encasement art); In re Klein, 6/6/11 (reversing the BPAI where
none of the five prior art references relied on for obviousness
were analogous art); Innovention Toys, 3/21/11; Tokai, 1/31/11
(parties agreed that cigarette lighters and utility lighters are
analogous arts); Wyers, 7/22/10; Comaper, 3/1/10; In re Icon
Health and Fitness, 8/1/07; In re Kahn, 3/22/06; Princeton
Biochemicals, 6/9/05; Bigio, 8/24/04; State Contracting,
10/7/03); See also Function Media, 3/7/13 (nonprecedential
prior art reference related to computer system for managing the
transaction flow of various goods and services was analogous
art despite not specifically relating to electronic advertising,
because a POS in the art could find the reference reasonably
pertinent to the problem the inventors set out to solve); Inventio
AG, 11/27/12 (nonprecedential); In re Breiner, 5/10/12
(nonprecedential prior art application was analogous art
where the applicants specification delineated a broad field of
endeavor that included the references art of market analysis);
In re Lackey, 4/9/10 (nonprecedential test); In re Mettke,
6/25/09 (nonprecedential? [designated as nonprecedential on
the CAFC website, but treated as precedential in the F.3d
reporter and Western Union, 12/7/10] asserted prior art
references were within the field of the invention or were
analogous art in view of disclosure described in the
specification as related to the claimed invention); Andersen,
11/19/08 (nonprecedential not expressly applying the
analogous art rule, but rather KSRs (S.C.) rule as to whether
common sense might make alternative uses of familiar items
obvious in either the same or related fields of invention)
- Reference qualifies as prior art for an obviousness

determination under Section 103 only when it is
analogous to the claimed invention (In re Klein, 6/6/11)
- Analogous art is that which is relevant to a

consideration of obviousness Wang Labs (In re
1738
Klein, 6/6/11; Innovention Toys, 3/21/11;
Comaper, 3/1/10)
- Analogous art test precedes the TSM test

protects against hindsight (In re Kahn, 3/22/06)
- Analogous vs. same art (Dystar, 10/3/06)
- Two separate tests for analogous art (i.e., determining

whether the prior art is appropriate for the obviousness
analysis): 1) whether the prior art is from the same field
of endeavor, regardless of the problem addressed, and 2)
if not, whether the prior art is reasonably pertinent to
the problem addressed by the invention, based on the
judgment of a POS in the art (K-Tec, 9/6/12; In re Klein,
6/6/11 (prior art references were non-analogous art where
an inventor considering the problem of the claimed
invention using a movable divider to prepare different
ratios of solution would not have been motivated to
consult the references not disclosing a movable divider or
the ability to prepare different ratios); Innovention Toys,
3/21/11; Wyers, 7/22/10 (analogous prior art, based on
KSR (S.C.) which directs courts to construe the scope of
analogous art broadly); Comaper, 3/1/10 (cited prior art
references related to the same field of endeavor as the
patent); Abbott Labs, 6/22/06 (cites In re Kahn); In re
Kahn, 3/22/06; Princeton Biochemicals, 6/9/05; Bigio,
8/24/04); Andersen, 11/19/08 (nonprecedential genuine
issues of material fact existed to overcome SJ of
obviousness)
- KSR (S.C.) directs courts to construe the scope of

analogous art broadly stating that familiar items
may have obvious uses beyond their primary
purposes, and a person of ordinary skill often will
be able to fit the teachings of multiple patents
together like pieces of a puzzle (Wyers, 7/22/10
(prior art padlocks were directed to the same
1739
problem the inventor was trying to solve, namely
preventing the ingress of contaminants into the
locking mechanism))
- Support with evidence (e.g., expert testimony,

examiners conclusions) show that a POS in the
art would look to related fields to solve the
problem of the invention (Princeton Biochemicals,
6/9/05); See also Andersen, 11/19/08
(nonprecedential examiners conclusions
supported nonobviousness)
- Reasonably pertinent prior art prior art is analogous art

if reasonably pertinent to the problem addressed by the
patented invention (K-Tec, 9/6/12 (no genuine issue of
material fact was raised that prior art references were
reasonably pertinent to the invention); In re Klein, 6/6/11
(n.1: PTO on appeal improperly broadened the problem
addressed by the claimed invention from what the BPAI
had relied on citing Chenery (S.C.)); Innovention Toys,
3/21/11 (district court erred in finding that reference
disclosing electronic, laser-based strategy game was not
reasonably pertinent to the problem facing an inventor of
a new physical, laser-based strategy game); Wyers,
7/22/10; Verizon, 4/16/10 (the relevant art also included
the Internet, along with telephony and wireless
communications); In re Icon Health and Fitness, 8/1/07);
See also Function Media, 3/7/13 (nonprecedential prior
art reference related to computer system for managing
the flow of goods and services was reasonably pertinent
to the problem addressed by the inventors managing the
flow of electronic advertising transactions)
- Prior art reference is reasonably pertinent, even if

from a different field, if it is one which would
receive the inventors attention in considering his
problem In re Clay, Paulsen (K-Tec, 9/6/12; In
re Klein, 6/6/11; Innovention Toys, 3/21/11
1740
(analogous art where the prior art reference and
claimed invention were directed to the same
purpose and goal, and thus the same problem of
game design, citing Clay for rule that [i]f a
reference disclosure has the same purpose as the
claimed invention, the reference relates to the same
problem, and that fact supports use of that
reference in an obviousness rejection); In re Icon
Health and Fitness, 8/1/07 (gas spring limitation
may come from any area in the prior art describing
springs, etc., citing KSR (S.C.) familiar items
may have obvious uses beyond their primary
purposes)); See also Andersen, 11/19/08
(nonprecedential genuine issue of material fact
raised as to whether prior art electromagnetic-
shielding mesh would have been part of the field
of invention searched by an insect screen designer
and whether such an alternative use would have
been obvious, and thus rejecting the district courts
SJ of obviousness based on KSRs (S.C.) teaching
that common sense might make alternative uses of
familiar items obvious)
- Reference disclosure having same purpose as the

claimed invention, relates to the same problem,
which supports use of the reference in an
obviousness rejection In re Clay (In re Klein,
6/6/11 (prior art references were non-analogous art
where each had a different purpose than the
claimed invention to separate solid objects using
dividers and none showed a partitioned container
adapted to receive water or contain it long enough
to achieve the claimed invention))
- Reference directed to a different purpose

than the claimed invention, the inventor
would have less motivation to consider it
In re Clay (In re Klein, 6/6/11)
1741
Teaching away
(Leo Pharm., 8/12/13 (nonobviousness shown in part by fact

that the prior art discouraged combining drug components in a
single formulation because of stability problems, but taught
instead that patients apply them at separate times; and the prior
art taught away from using the claimed solvent over the prior
art solvents which produced surprisingly successful results);
Teva, 7/26/13 (district court did not clearly err in finding that
the prior art taught a preference for higher molecular weight
copolymer-1, and thus taught away from the claimed lower
molecular weight copolymer-1); Allergan, 5/1/13 (no teaching
away where the district court did not consider the effect of the
teachings on the clear motivation to combine provided by one
prior art reference and not finding that the prior art as a whole
taught away from the claimed invention); Bayer, 4/16/13
(rejecting teaching away argument where the prior art did not
teach the claimed low dose, contraceptive regimen as the
preferred combination citing In re Fulton); C.W. Zumbiel,
12/27/12 (prior art reference taught away from the claimed
position of a finger-flap in carton); Pregis, 12/6/12 (no teaching
away by preferred embodiment); Norgren, 11/14/12 (no
teaching away); Pozen, 9/28/12 (claimed drug combination was
discouraged in the prior art references); Santarus, 9/4/12; In re
Applied Materials, 8/29/12; Kinetic Concepts, 8/13/12
(references taught away where they explained that the use of
negative pressure on or surrounding a wound was dangerous to
the patient); In re Mouttet, 6/26/12 (prior art reference did not
teach away where taught the claimed invention as an inferior
alternative); In re Hyon, 5/24/12 (no teaching away); Otsuka,
5/7/12 (teaching away, based on failure); Mettler-Toledo,
2/8/12 (no teaching away); Celsis In Vitro, 1/9/12 (prior art
taught away from the claimed method of multi-cryopreserving
hepatocytes using a prior art method; see also J. Gajarsa,
dissenting the claimed method merely repeated a known prior
art step); Star Scientific, 8/26/11 (prior art patent taught away
1742
from using 20 mM citric acid as an absorption enhancing agent
or stabilizing agent in the claimed formulation); Tyco
Healthcare, 6/22/11 (specialized prior art references failed to
teach away from using lower dosages of temazepam for
improving sleep); Spectralytics, 6/13/11 (prior art machines
taught away from the claimed machine, as supported by expert
testimony); Allergan, 5/19/11 (prior art reference taught away
from the claimed combination based on a required heating
step); Hynix, 5/13/11 (disincentives for combining prior art
references were relevant to nonobviousness); In re Katz Patent
Litigation, 2/18/11 (no teaching away); Rolls-Royce, 5/5/10; In
re Chapman, 2/24/10 (no teaching away by prior art reference
that specifically disclosed a preference for the disputed hinge
cysteine element, and also while it did not explicitly teach
another claim element, it did not teach away from the element);
Crocs, 2/24/10 (the record showed that the prior art actually
discouraged and taught away from the use of foam straps with
the claimed foam footwear); Lucent, 9/11/09 (prior art
reference appeared to teach away from combining a slower
system with another prior art system); Bayer Schering, 8/5/09
(concluding that the parties teaching away arguments instead
present[ed] the options available to the POS in the art, and
thus rendered the invention obvious to try); Depuy Spine,
6/1/09 (prior art reference taught away from a rigid spinal
screw); In re Kubin, 4/3/09 (no teaching away from combining
prior art references teaching with another reference); Cordis,
3/31/09 (describing claimed features as potentially harmful);
Sd-Chemie, 1/30/09 (no teaching away based on context of
prior art patent); Ricoh, 12/23/08 (no teaching away from
claimed overlapping range); Sanofi-Synthelabo, 12/12/08
(district court did not clearly err in finding that the prior art
taught away from using sulfuric acid with an enantiomer to
make the claimed bisulfate salt); In re Sullivan, 8/29/07; In re
Trans Texas Holdings, 8/22/07; In re Icon Health and Fitness,
8/1/07; Eli Lilly, 12/26/06; Optivus Tech., 11/16/06; *Dystar,
10/3/06; Ormco, 8/30/06; *In re Kahn, 3/22/06; Medichem,
2/3/06; Syntex, 5/18/05; Alza, 12/10/04; In re Fulton, 12/2/04;
National Steel Car, 1/29/04); See also In re Eaton, 11/22/13
1743
(nonprecedential not teaching away case, but relying on the
rationale from Leo Pharm. in concluding nonobviousness of
adjusting or combining synergistic concentrations of the prior
art components to arrive at the recited composition of the
claimed method); Fluor Tec, 12/11/12 (nonprecedential
finding that adding an expander to the prior art configuration
was not simply a design choice that one would employ and
citing rule from Depuy Spine that [a]n inference of
nonobviousness is especially strong where the prior arts
teachings undermine the very reason being proffered as to why
a person of ordinary skill would have combined the known
elements); Lingamfelter, 8/9/12 (nonprecedential no
teaching away where nothing in reference expressly suggested
that side wall openings must be avoided; also, no teaching away
from combination of references where one references function
was not a claim limitation, stating: A traffic sign that signals
the direction to Times Square should not affect a driver who is
not going to New York.); In re Pepperball Techs., 3/7/12
(nonprecedential no teaching away based on discouraging or
problems with the claimed invention); In re Yufa, 2/8/12
(nonprecedential no teaching away, where the prior art
reference did not specifically address the obviousness issue in
dispute); Mitsubishi Chemical, 8/2/11 (nonprecedential prior
art taught away from using ethanol to dissolve drug); Ortho-
McNeil, 8/26/09 (nonprecedential expert testimony failed to
create a material issue of fact as to whether the prior art taught
away from the claimed ratio, where the expert failed to opine on
one of the options for modifying the prior art); Tokyo Keiso,
1/9/09 (nonprecedential rejecting argument where the claim
scope was broader than the alleged teaching away); Andersen,
11/19/08 (nonprecedential evidence of teaching away
overcame SJ of obviousness); Syngenta Seeds, 5/3/07
(nonprecedential - no teaching away)
- Obviousness determined in view of all facts, so no rule

that a single reference that teaches away will mandate a
finding of nonobviousness (Allergan, 5/1/13 (rejecting
teaching away where the district court did not find that
1744
the prior art as a whole taught away from the claimed
invention); Medichem, 2/3/06)
- Prior art reference teaches away when a POS in the art,

upon reading the reference, would be discouraged from
following the path set out in the reference, or would be
led in a direction divergent from the path taken by the
applicant In re Kahn (Norgren, 11/14/12 (no teaching
away); Pozen, 9/28/12; In re Applied Materials, 8/29/12
(dismissing teaching away argument where the BPAI had
a different interpretation of prior art reference, which was
supported by substantial evidence); Kinetic Concepts,
8/13/12 (references taught away by explaining that the
claimed method was dangerous); In re Mouttet, 6/26/12
(no teaching away by teaching of inferior alternative
citing In re Gurley); Unigene Labs, 8/25/11 (teaching
away where prior art patents in combination taught that
over fifty examples, including the claimed element citric
acid, yielded discouraging test results, and thus a POS in
the art would have considered using citric acid as
undesirable in the claimed formulation); Tyco
Healthcare, 6/22/11 (rejecting the patentees teaching
away arguments based on prior art reference, which were
inconsistent with teaching away arguments based on
other prior art references); Spectralytics, 6/13/11
(teaching away from the claimed machine where all the
prior art machines achieved the same result in a different
way); Allergan, 5/19/11 (teaching away supported by
expert testimony); In re Katz Patent Litigation, 2/18/11;
Eli Lilly, 9/1/10 (published bioavailability concerns with
drug discouraged use); Crocs, 2/24/10 (the patented
footwear employed a foam strap despite the prior art
warnings against using foam straps); Depuy Spine,
6/1/09; In re Kubin, 4/3/09 (no teaching away when
reference was viewed in combination with another
related reference); Ricoh, 12/23/08; In re Icon Health and
Fitness, 8/1/07 (no teaching away when claim broad
enough to read on the prior art); Eli Lilly, 12/26/06
1745
(chemical compounds); Optivus Tech., 11/16/06; Ormco,
8/30/06; In re Kahn, 3/22/06); See also In re Haase,
10/30/13 (nonprecedential no teaching away from using
a higher molecular weight compound where the reference
taught that a lower molecular weight compound is
usually used); Harris, 1/17/13 (nonprecedential
teaching away where the prior art presentation both
encouraged and discouraged use of spread spectrum);
Fluor Tec, 12/11/12 (nonprecedential affirming the
BPAIs conclusion of nonobviousness where substantial
evidence of no motivation to modify prior art
configuration); In re Pepperball Techs., 3/7/12
(nonprecedential no teaching away); In re Gardner,
11/14/11 (nonprecedential affirming no teaching
away); MEMS Tech. Berhad, 6/3/11 (nonprecedential
prior art reference teaching device as sealed in an
airtight condition taught away from incorporating an
aperture); Friskit, 1/12/09 (nonprecedential market
forces allegedly discouraging the claimed invention was
not teaching away, where the claimed invention did not
present any technical challenge to a POS in the art once
market forces created a demand for the claimed
invention); Tokyo Keiso, 1/9/09 (nonprecedential
rejecting teaching away argument with respect to prior
art reference based on an earlier reference by the same
author, stating that a court need not rely on separate
references to reach a conclusion that the subject matter of
asserted claims would have been obvious based on the
plain disclosure of a single reference); Andersen,
11/19/08 (nonprecedential genuine issues of material
fact existed as to whether prior art electromagnetic-
shielding mesh lacked the durability, transparency, and
pricing preferred by an insect screen manufacturer
designing a reduced visibility insect screen, such that the
manufacturer would have been discouraged from using
the mesh in an insect screen; regarding pricing, the
CAFC stating that it was not unreasonable to suggest
that a significant difference in cost could discourage an
1746
insect screen designer from using the more expensive
mesh)
- Reference teaches away when it suggests that the

line of development flowing from the references
disclosure is unlikely to be productive of the result
sought by the applicant Medichem (Santarus,
9/4/12 (references taught away from claims
directed to conventional tablet dosage forms which
were non-enteric coated, while did not teach away
from claims construed to cover powder non-enteric
coated formulations; see also J. Newman,
dissenting prior art references taught away from
all non-enteric coated formulation claims))
- Combination more likely to be nonobvious when

the prior art teaches away from the combination
(Hynix, 5/13/11 ((economic) disincentives for
combining prior art references are relevant to
nonobviousness); In re Chapman, 2/24/10 (no
teaching away where the prior art reference
disclosed the disputed attachment point as a
preference, despite also teaching other possible
attachment points); Crocs, 2/24/10 (prior art taught
away from the combination of a foam strap and a
foam base in footwear, and its resulting passive
restraint system for keeping the footwear in
proper position on the wearers foot); Depuy
Spine, 6/1/09 (combination of prior art taught
away from the claimed rigid spinal screw); In re
Icon Health and Fitness, 8/1/07 (citing KSR (S.C.))
- Reference can distinguish prior art in order

to show the novelty of an invention without
teaching away from combining the prior art
with the invention disclosed in the reference
(In re Katz Patent Litigation, 2/18/11 (citing
Ricoh))
1747
- Whether other prior art teachings can
motivate a POS in the art to ignore another
references teaching away? (Depuy Spine,
6/1/09 (rejecting argument where other cited
prior art also taught away from the claimed
rigid spinal screw))
- Look at the whole prior art reference for teaching

away (Tyco Healthcare, 6/22/11 (prior art
references taught or suggested the claimed
composition and dosage range, or supported
obviousness based on the primary prior art
reference teaching a broader dosage range for the
same use, even though other parts of the references
allegedly taught away))
- Combination in prior art need not be for the reason

in the application (In re Fulton, 12/2/04)
- Teaching away does not require that the prior art

forsaw the specific invention that was later made,
and warned against taking that path (Spectralytics,
6/13/11 (jury could find, based on the expert
testimony, that prior art machines taught away
from the claimed machine because they achieved
the same result in a different way))
- Disclosure in the prior art of a general preference

for an alternative invention, design is not teaching
away (Bayer, 4/16/13 (no teaching away of the
claimed low-dose contraceptive regimen, despite
preference for a high-dose regimen - citing In re
Fulton); Pregis, 12/6/12 (citing In re Fulton); In re
Mouttet, 6/26/12 (citing In re Fulton); In re Katz
Patent Litigation, 2/18/11; Eli Lilly, 9/1/10
(preference in a prior art reference for another
drug, along with other evidence, supported
1748
nonobviousness of the claimed drug use); Depuy
Spine, 6/1/09 (prior art reference taught away from
other than the disclosed spinal screw); In re Fulton,
12/2/04); See also In re Haase, 10/30/13
(nonprecedential); Stamps.com, 6/15/11
(nonprecedential alleged teaching away in
reference was desecribed as an alternative
embodiment that was optional, while another
embodiment supported obviousness)
- Lack of an explicit teaching is not teaching away

(Tyco Healthcare, 6/22/11 (prior art reference
teaching effectiveness of higher dosages did not
teach away from using lower dosages); In re
Chapman, 2/24/10 (while teaching attachment of a
polymer to a single antibody fragment, but not
explicitly teaching using the polymer as a bridge
between two antibody fragments, the prior art
reference did not teach away from doing so)); See
also In re Haase, 10/30/13 (nonprecedential
rejecting teaching away argument that prior art
reference in cited combination of references did
not disclose claim feature, stating that a prior art
references mere silence about a particular feature
does not tend to teach away from it, especially if it
is disclosed elsewhere in the prior art citing
Syntex)
- Embodiment described as inferior, or not a

preferred embodiment, is not teaching away; the
prior art must criticize, discredit or otherwise
discourage the claimed solution (Santarus, 9/4/12
(reference describing a formulation as second
best was not clear discouragement and teaching
away); In re Mouttet, 6/26/12 (no teaching away
where the prior art reference did not teach that the
claimed invention was unlikely to work, as
opposed to being inferior, using electrical circuitry
1749
rather than optical circuitry); Crocs, 2/24/10
(concluding that a foam strap riveted to a foam
base in the claimed footwear was not simply
somewhat inferior, but rather the prior art
showed that foam was an unsuitable material for
shoe straps); Depuy Spine, 6/1/09; Cordis, 3/31/09
(teaching away where prior art patents taught that
features of the claimed stent connectors were
potentially harmful); Ricoh, 12/23/08 (citing In
re Fulton); In re Fulton, 12/2/04)
- Inoperability, utility of invention
- Reference teaches away from a claimed

combination when using the reference in
that combination would produce an
inoperative result (In re Mouttet, 6/26/12
(prior art reference did not teach that the
claimed combination was unlikely to work);
Hynix, 5/13/11 (how well a combination is
expected to work (i.e., will it be beneficial
or detrimental?) is relevant to obviousness);
Depuy Spine, 6/1/09 (prior art taught away
from a rigid spinal screw because the
reference warned that rigidity might cause
failure, stating that [a]n inference of
nonobviousness is especially strong where
the prior arts teachings undermine the very
reason being proffered as to why a person of
ordinary skill would have combined the
known elements, citing Icon); but cannot
ignore the modifications that one skilled in
the art would make to a device borrowed
from the prior art, e.g., sizing the prior art
components appropriately for the claimed
invention (In re Icon Health and Fitness,
8/1/07 (no teaching away))
1750
- Reference must teach or suggest that
disclosure will be inoperative (In re Mouttet,
6/26/12 (no teaching away); National Steel
Car, 1/29/04)
- Teaching needs to relate to a

deficiency in the utility of the
invention itself, e.g., that the
invention would not work, to teach
away (In re Trans Texas Holdings,
8/22/07)
Patentability not negatived by the manner in which the invention

was made
- Patentability shall not be negatived by the manner in

which the invention was made 35 USC 103 (Otsuka,
5/7/12 (fact that claimed compound was developed in
only a few months did not evidence obviousness, where
the prior art failed to provide motivation to make the
claimed compound); Rothman, 2/13/09 (distinguishing
rule where the inventive process showed the
predictability and expectations in the nursing garment
art); Pharmastem, 7/9/07; see J. Newman, dissenting,
citing rule); Pfizer, 3/22/07); See also MEMS Tech.
Berhad, 6/3/11 (nonprecedential rejecting obviousness
argument based on the way the inventor arrived at the
invention)
- Manner in which invention is discovered, whether

by insight or experiment, does not by itself affect
patentability 35 USC 103(a) (Patentability
shall not be negatived by the manner in which the
invention was made.) (Perdue Pharma, 2/1/06)
- Reference to routine testing or routine

experimentation in a decision regarding
1751
obviousness is disfavored, and not of consequence
to the last sentence of section 103 (Pfizer, 3/22/07)
- Verify vs. discover (i.e., discovery of

invention vs. simply verifying its
characteristics, properties) where theres a
motivation or suggestion to make a new
compound, and a reasonable expectation of
success, and its routine in the art to verify
characteristics, properties of the invention =
work of skilled artisan, not an inventor, and
thus obvious; vs. trial and error procedures
employed to discover a new compound,
where the prior art provided no motivation
or suggestion to make the new compound
nor a reasonable expectation of success =
non-obvious (Pfizer, 3/22/07 (besylate salt
was obvious); see also Sanofi-Synthelabo,
12/12/08 (no clear error by the district court
in distinguishing the facts of Pfizer; the
claimed bisulfate salt form of compound
was unpredictable based on a much larger
number of candidates than in Pfizer))
- Time, money and effort required are

not determinative of whether
routine experimentation (Pfizer,
3/22/07)
- Providing proof of what was already known

in the prior art is not patentable; scientific
confirmation (via experimentation) of what
was already believed to be true may be a
valuable contribution, but does not give rise
to a patentable invention; good science and
useful contributions do not necessarily result
in patentability; inventors merely using
routine research methods to prove what was
1752
already believed to be the case (e.g., that
fetal blood contains large numbers of stem
cells) KSR (S.C.), Pfizer (verifying
properties of new compound through testing
is not patentable) (Pharmastem, 7/9/07; see
also dissent, J. Newman: It is often far
easier to recognize the problem than to find
and demonstrate the solution. The patent law
recognizes that advances of great power may
be based as much on persistent and skilled
investigation as on a flash of creative genius,
for both serve to transcend that which was
previously achieved . . . My colleagues go
too far in limiting the patent system to the
serendipitous and the unexpected . . . The
courts approach reflects misperception of
the scientific process as well as the patent
purpose.); See also In re Tzipori, 10/15/08
(nonprecedential prima facie case of
obviousness of monoclonal antibodies to
subunit of Shiga-like toxin II was not
rebutted, citing Pharmastem for rule that
[g]ood science and useful contributions do
not necessarily result in patentability)
Prima facie case of obviousness and rebuttal thereof
(Novo Nordisk, 6/18/13 (synergy of drug combination was

expected; see also J. Newman, dissenting); Arcelormittal
France, 11/30/12 (remanding for a new trial based on new claim
construction to consider question of commercial success to
rebut prima facie case); Transocean, 11/15/12 (reversing grant
of JMOL of obviousness, where prima facie case of
obviousness (based on the first three Graham (S.C.) factors)
was rebutted when weighed against evidence of 7 objective
factors supporting nonobviousness (based on the fourth
Graham (S.C.) factor) the CAFC has rarely held that
1753
objective evidence is sufficient to overcome a prima facie case
of obviousness, but here precisely the sort of case where the
objective evidence established that an invention appearing to
have been obvious in light of the prior art was not citing
Stratoflex); In re Mouttet, 6/26/12 (examiners designation of
prior art reference as the base reference was irrelevant for
determining whether the claimed invention was obvious over a
combination of references); In re Kao, 5/13/11; In re Glatt,
1/5/11 (BPAI made improper prima facie case of obviousness
where the prior art reference failed to teach the claimed
shielding feature); Transocean, 8/18/10; Procter & Gamble,
5/13/09 (any prima facie case was rebutted by unexpected
results of the claimed compound); In re DBC, 11/3/08 (reexam
rejecting the patentees argument that the BPAI failed to
establish a prima facie case based on a substantial new question
of patentability, where the newly cited prior art reference was
not cumulative); Muniauction, 7/14/08 (prima facie case not
rebutted by secondary considerations); In re Sullivan, 8/29/07;
**In re Kahn, 3/22/06; Kao, 3/21/06; In re Kumar, 8/15/05;
Harris, 5/25/05); See also Metso Minerals, 5/14/13
(nonprecedential secondary considerations did not overcome
prima facie case based on combining prior art); See also
Secondary considerations; Teaching away
- Once BPAI makes prima facie case of obviousness,

burden shifts to the applicant to rebut prima facie case
the examiners decision then made on entirety of the
evidence (In re Mouttet, 6/26/12; In re Kao, 5/13/11; In
re Sullivan, 8/29/07 (BPAI improperly failed to consider
rebuttal evidence (expert declarations); In re Kumar,
8/15/05)
- BPAI need only establish motivation to combine

by a preponderance of the evidence to make prima
facie case (Rambus, 9/24/13 (the BPAI legally
erred by placing the BOP on the applicant to show
nonobviousness); *In re Kahn, 3/22/06)
1754
- PTO bears the initial burden of presenting a prima
facie case of unpatentability; once prima facie case
made, the burden shifts to the applicant to produce
evidence and/or argument supporting patentability;
rebuttal evidence is merely a showing of facts
supporting the opposite conclusion (In re Kao,
5/13/11; In re Sullivan, 8/29/07)
- BPAI must consider rebuttal evidence -

when an applicant puts forth rebuttal
evidence, the BPAI must consider that
evidence (In re Sullivan, 8/29/07 (expert
declarations))
- Statement of intended use in claim -

while a statement of intended use may
not render a known composition
patentable (see ANTICIPATION
Inherency), whether the claimed
composition would have been obvious
depends on consideration of rebuttal
evidence (In re Sullivan, 8/29/07)
- Examiners designation of prior art references as

primary or secondary is merely a matter of
presentation with no legal significance (In re
Mouttet, 6/26/12 (although there may be some
cases in which relevant factual determinations
inhere in the examiners characterization of prior
art references, the examiners designation of a
prior art reference as the base reference was
irrelevant, as it did not mean that the reference
disclosed the controlling principle of operation that
any prior art combination had to preserve))
- Rebuttal evidence dissolves the prima facie holding and

requires the examiner to consider all evidence anew; the
entirety of the evidence must be reviewed in order to
1755
determine whether the claimed invention as a whole
would have been obvious to POS in the field
(Transocean, 11/15/12 (jury was entitled to weigh all
evidence regarding obviousness anew, despite the
CAFCs prior ruling of a prima facie case based on the
cited prior art); In re Kao, 5/13/11; In re Kumar, 8/15/05)
- Examples of rebuttal evidence unexpected results, the

prior art teaches away, objective evidence, i.e., secondary
considerations (e.g., commercial success, long-felt but
unresolved need in the art), prior art does not enable
claimed invention (Arcelormittal France, 11/30/12
(remanding for consideration of commercial success
evidence after modifying claim construction to include
the patentees commercial embodiment); Transocean,
11/15/12 (reversing grant of JMOL of obviousness where
prima facie case rebutted by 7 objective factors); In re
Sullivan, 8/29/07 (expert declarations teaching away,
unexpected results, long-felt need); In re Kumar, 8/15/05)
- Actual evidence of secondary considerations must

be submitted (e.g., long-felt need, passage of time
not enough for obviousness) (In re Kahn, 3/22/06)
- Enablement - prior art must enable the claimed

invention, not just invention of the prior art (In re
Kumar, 8/15/05)
Unexpected results
- Closest prior art must be compared for

unexpected results (Takeda, 6/28/07 (n. 3);
Pfizer, 3/22/07; Abbott Labs, 6/22/06; Kao,
3/21/06), and the embodiment compared
must be different enough from the prior art
(Harris, 5/25/05); See also In re Haase,
10/30/13 (nonprecedential no rebuttal
1756
based on unexpected results where the
applicant compared the claimed invention
with the results of only one of the two prior
art references cited in combination)
- Difference in kind and not merely in

degree from the prior art must be shown (In
re Applied Materials, 8/29/12; Harris,
5/25/05; Iron Grip Barbell, 12/14/04)
- Evidence as a whole showing of

superior results must be sufficiently
unexpected to rebut prima facie case
(Novo Nordisk, 6/18/13 (unexpected
synergy to overcome prima facie case
was not shown where synergy of the
combination drug therapy was
expected based on the synergy
suggested for the closest prior art drug
combinations; see also J. Newman,
dissenting drug combination was
eight-fold more effective than the
additive properties); Wrigley, 6/22/12
(synergistic effect of combining two
prior art components was not
unexpected based on the prior art);
Sanofi-Synthelabo, 12/12/08 (highly
desirable and unexpected properties
of the claimed enantiomer supported
nonobviousness, as in Forest Labs
as compared to Aventis in which the
claimed isomers potency was
precisely what one would expect:
The determination of obviousness is
dependent on the facts of each case);
Pfizer, 3/22/07 (pharma)); See also
Tokyo Keiso, 1/9/09 (nonprecedential
no evidence that preferred plastic
1757
recited in dependent species claim had
unexpected results compared to
Teflon in prior art reference, citing
Pfizer)
- Compound need not excel over

a prior art compound in all
properties to be patentable?;
whether a superior property
need be demonstrated
throughout the entire claim
scope in order to show
nonobviousness? In re Chupp
(Novo Nordisk, 6/18/13 (J.
Newman, dissenting citing
Chupp rule for why the
unexpected synergy of the
claimed drug combination
showed nonobviousness);
Aventis Pharma, 5/14/08 (n.10
distinguishing rule from the
question of deceptive intent for
IC relative to claim scope))
- Superior results must also be

unexpected; thus, compare to
what properties would have
been expected by the skilled
artisan (Novo Nordisk, 6/18/13
(synergy of the claimed drug
combination was expected and
predictable based on the prior
art see also J. Newman,
dissenting drug combination
synergy was unpredictable);
Pfizer, 3/22/07 (pharma))
1758
- Unexpectedly superior
properties shown over the prior
art compound (Procter &
Gamble, 5/13/09 (positional
isomer); Sanofi-Synthelabo,
12/12/08 (enantiomer); Ortho-
McNeil, 3/31/08 (powerful
unexpected results shown for
the claimed compound);
Takeda, 6/28/07 (pharma))
- Invention not unexpected (Novo

Nordisk, 6/18/13; Wrigley, 6/22/12;
Pfizer, 3/22/07; Syntex, 5/18/05)
- No hard and fast rule for determining

whether evidence of unexpected
results is sufficient to rebut a prima
facie case (Kao, 3/21/06)
- Evidence of unexpected results, properties

must be commensurate with the scope of the
claims (Genetics Institute, 8/23/11 (absolute
identity of scope is not required evidence
of unexpected results is rejected when
plainly disproportionate to the scope of the
claim); In re Kao, 5/13/11; Muniauction,
7/14/08 (the requisite nexus must be shown
between the evidence of secondary
considerations (here, praise for the
invention) and the scope of the claims; thus
concluding that the evidence lacked the
requisite nexus where it related to only one
of two main embodiments within the claim
scope); Aventis Pharma, 5/14/08 (use of
different clinically relevant doses in half-
life comparisons of prior art and claimed
compositions for overcoming an anticipation
1759
rejection, as distinguished from an
obviousness rejection, was found to be
inequitable conduct where neither the claims
nor the specification were limited to a
specific indication, but rather the claimed
compositions could be used at several
different doses for several different
indications; also citing In re Chupp in n.10,
which the patentee cited for the proposition
that a compound need not excel over a prior
art compound in all properties to be
patentable)); See also In re Haase, 10/30/13
(nonprecedential no evidence presented
that the tested compounds included the
claimed polymer having the recited
molecular weight)
- Unexpected results must be

commensurate with the scope of
claimed range (Harris, 5/25/05
(ranges))
- Unexpected uses, properties, results cannot

be ignored In re Papesch (CCPA) (From
the standpoint of patent law, a compound
and all of its properties are inseparable; they
are one and the same thing . . . . There is no
basis in law for ignoring any property in
making such a comparison.) (Genetics
Institute, 8/23/11 (every unexpected
property of claimed compound need not be
known by the filing date for showing
nonobviousness; see also J. Dyk, dissenting
unexpected properties in support of
nonobviousness must be known at the time
of invention, i.e., the filing date, if not
disclosed in the specification: By ruling
that a patentee can have a monopoly on the
1760
later-discovered properties of a structure
merely by claiming the structure itself, the
majoritys decision would discourage others
from investing in future research into that
very structure); Sanofi-Synthelabo,
12/12/08 (highly desireable, unexpected
properties supported nonobviousness, citing
Papesch and Sullivan); In re Sullivan,
8/29/07); See also Secondary
considerations Unexpected results
- Statement of intended use in claim vs.

whether the subject matter of the
claim possesses an unexpected use,
property, which must be considered
(In re Sullivan, 8/29/07 (unexpected
properties are part of claimed
composition))
- Properties of a compound are inherent

in its composition and, therefore, a
difference in property could
successfully demonstrate a difference
in composition; thus, can show
compositional differences by
providing evidence of a difference in
property (Aventis Pharma, 5/14/08
(half-life comparisons did not show
compositional differences when
different experimental conditions
(dosages) were used for comparative
testing of the prior art and claimed
compositions))
Ranges
1761
- Claimed ranges encompassed by or
overlapping with prior art ranges
(Santarus, 9/4/12 (some claimed
ranges held obvious, while claims
reciting narrower ranges, smaller
amounts than the prior art held
nonobvious); In re Applied Materials,
8/29/12 (claims held obvious based on
overlapping ranges for combination of
multiple variables); Genetics Institute,
8/23/11 (see also J. Dyk, dissenting);
Tyco Healthcare, 6/22/11 (claimed
composition reciting dosage range
encompassed by prior art range for
same use held obvious, including
rejecting the patentees silly
argument that the prior art range of
5-15 mg did not disclose all
dosages between 5 and 15 mg); In re
Kao, 5/13/11; Lazare Kaplan,
12/22/10; Ricoh, 12/23/08; Ormco,
8/30/06; Medichem, 2/3/06 ( 291
action; interference-in-fact); Harris,
5/25/05; Iron Grip Barbell, 12/14/04);
See also In re Haase, 10/30/13
(nonprecedential when range of
overlapping values between the
claims and prior art, even a slight
overlap in range establishes a prima
facie case of obviousness citing In
re Peterson, In re Geisler; rebuttal
evidence comes in many forms, but
common sense principles guide its
persuasiveness)
- Even if the modification

produces a great improvement
over the prior art, the invention
1762
may still not be patentable; the
claimed range must produce a
new and unexpected result
which is different in kind, not
merely in degree, from the prior
art results (In re Applied
Materials, 8/29/12
(unpredictable or unexpected
results were not shown for the
claimed combination of result-
effective variables, stating that
[e]vidence that the variables
interacted in an unpredictable
or unexpected way could render
the combination nonobvious;
see also J. Newman,
dissenting); Iron Grip Barbell,
12/14/04)
- Rebuttable presumption of
obviousness - rebutted if the
prior art: 1) taught away from
the claimed range or value, or
2) if the claimed range or value
produces new and unexpected
results relative to the prior art
(Tyco Healthcare, 6/22/11
(presumption not rebutted
where the above two factors
were not shown for the claimed
dosage range citing Iron Grip
Barbell); Ricoh, 12/23/08
(rejecting rebuttal argument
where the alleged teaching
away was unrelated to the
claimed method, and the
patentee argued that the
claimed range is (as opposed
1763
to, produces) a new and
unexpected result); Ormco,
8/30/06); See also In re Haase,
rebuttal evidence failed to
overcome prima facie case;
rejecting teaching away
arguments); ALSO, when the
prior art discloses a range
encompassing the narrower
claimed range or value, the
narrower range or value may be
obvious; not per se obvious, but
there is rebuttable presumption
of obviousness (Genetics
Institute, 8/23/11 (narrow range
was not selected from broader
prior art range, discussing In re
Peterson; see also J. Dyk,
dissenting); Tyco Healthcare,
6/22/11; Iron Grip Barbell,
12/14/04); See also Ortho-
McNeil, 8/26/09
(nonprecedential prima facie
case not rebutted where there
was no perceptible difference in
synergy between the claimed
and prior art drug weight ratios,
citing Iron Grip Barbell,
Ormco and In re Woodruff);
Tokyo Keiso, 1/9/09
(nonprecedential citing In re
Woodruff regarding claiming a
subset of a prior art range)
- Criticality of claimed range shown?

(In re Applied Materials, 8/29/12
(claims obvious where criticality was
1764
not shown); In re Kao, 5/13/11
(applicant must show that the claimed
range is critical, i.e., achieves
unexpected results relative to the prior
art range In re Woodruff); Iron Grip
Barbell, 12/14/04)
- Routine optimization is obvious;

optimization of ranges or (result-
effective) variables is obvious
flows from the normal desire of
scientists or artisans to improve on
what is already generally known In
re Peterson (In re Applied Materials,
8/29/12 (applying rule to when the
prior art discloses result-effective
variables: rule is limited to cases in
which the optimized variable is a
result-effective variable
ordinarily within the skill of the art
In re Antonie, In re Boesch, In re
Aller); Ricoh, 12/23/08 (ruling that
the mere understanding that the prior
art invention worked in a faster but
overlapping speed range was not an
unexpected result, as the development
of the prior art is the quintessence of
ordinary skill or ordinary skill and
common sense rather than patentable
innovation, citing KSR (S.C.)); Abbott
Labs, 10/21/08 (J. Gajarsa,
dissenting); Pfizer, 3/22/07); See also
In re Haase, 10/30/13
(nonprecedential affirming prima
facie case of obviousness where
motivation to optimize and skilled
artisans would have been led to the
claimed range based on its overlap
1765
with the endpoint in the prior art
reference, citing rule and In re
Applied Materials); In re Gardner,
11/14/11 (nonprecedential optimum
speeds in dependent claims obvious,
citing CCPA cases)
- Result-effective variable
where relationship between the
variable and the result of a
modification in the prior art a
recognition in the prior art that
a property is affected by the
variable is sufficient to find the
variable result-effective (In re
Applied Materials, 8/29/12)
- Unexpected results must be

commensurate with the scope of
claimed range (Genetics Institute,
8/23/11; Harris, 5/25/05)
Secondary considerations
(Ohio Willow Wood, 11/15/13 (no nexus where the alleged

objective evidence applied equally to the prior art device);
Broadcom, 10/7/13; Meadwestvaco, 9/26/13 (obviousness (and
evidence of secondary considerations) is analyzed on a claim by
claim basis); Rambus, 9/24/13 (vacating and remanding where
the BPAI erred in its analysis of the objective evidence); High
Point Design, 9/11/13 (secondary considerations must also be
considered in determining the obviousness of a design patent);
Leo Pharm., 8/12/13 (reversing the BPAIs obviousness
determination where it incorrectly weighed the objective indicia
of nonobviousness); Apple, 8/7/13 (ITC failed to consider
objective indicia in determining obviousness; see also J. Reyna,
concurring); Cheese Systems, 8/6/13; Plantronics, 7/31/13
1766
(district court failed to consider objective evidence of
nonobviousness before determining the invention was obvious,
in finding motivation to combine based on common sense
without providing reasoning the district courts failure to
consider secondary considerations was fatal in the case,
stating that common sense may not be so apparent in view of
objective evidence of nonobviousness, particularly when all
reasonable inferences were drawn in favor of the patentee on
SJ); Teva, 7/26/13 (presumed nexus unrebutted where
commercial drug product and claimed invention were
coextensive); Allergan, 5/1/13; Bayer, 4/16/13 (rejecting
evidence of unexpected results, expert skepticism, industry
praise, and copying by others as legally insufficient); Power
Integrations, 3/26/13 (despite the prior art reference on its face
suggesting the claimed invention, the CAFC held the invention
nonobvious based on unexpected results, commercial success);
Synqor, 3/13/13 (nexus shown); Soverain Software, 1/22/13 (no
nexus between the alleged commercial success of the patentees
software product and the patents in suit); Osram Sylvania,
12/13/12 (reversing SJ of obviousness where the district court
failed to consider evidence of secondary considerations, stating
that the CAFC has emphatically rejected any formal burden-
shifting framework in evaluating the four Graham factors);
Pregis, 12/6/12; Arcelormittal France, 11/30/12 (district courts
erroneous claim construction of term hot-rolled steel sheet
required a new trial on obviousness where the jury was not
allowed to consider the patentees evidence of commercial
success); Transocean, 11/15/12 (reversing grant of JMOL of
obviousness, where prima facie case of obviousness was
rebutted when weighed against evidence of 7 objective factors
supporting nonobviousness); Norgren, 11/14/12 (affirming the
ITCs rejection of evidence of a number of secondary
considerations as lacking support in the record); Outside the
Box Innovations, 9/21/12 (vacating and remanding to consider
evidence of marketing and commercial success of tool carry
case in crowded field of art); Santarus, 9/4/12 (giving deference
to the district courts findings of fact and holding that the
patentees objective evidence was insufficient to overcome
1767
obviousness); In re Applied Materials, 8/29/12 (no nexus was
shown for commercial success; see also J. Newman, dissenting
secondary considerations were probative of nonobviousness);
Kinetic Concepts, 8/13/12 (more than substantial [and
unrebutted] evidence supported the jurys findings of various
objective indicia (commercial success, long-felt need, copying,
unexpected and superior results, wide spread acceptance in the
field, and initial skepticism; the objective indicia provided an
unbiased indication regarding the credibility of competing
expert evidence)); Alcon Research, 8/8/12 (nexus between
commercial success and the claimed method of use, where the
commercial drug product contained the claimed concentration
(0.1% w/v) of drug); In re Antor Media, 7/27/12 (no nexus
shown between licensing and the claimed invention); Wrigley,
6/22/12 (no nexus established, and there was no improper
formal burden-shifting to the patentee citing In re
Cyclobenzaprine (n.5) see below; see also J. Newman,
dissenting); Mintz, 5/30/12 (objective indicia as independent
evidence of nonobviousness); In re Cyclobenzaprine, 4/16/12
(evidence of secondary considerations is always included in the
obviousness analysis as part of all the evidence under Graham
(S.C.) no formal burden-shifting to the patentee occurs); Star
Scientific, 8/26/11 (nonobviousness supported by many
secondary considerations); Retractable Techs., 7/8/11 (jury
verdict of nonobviousness was supported by expert testimony
regarding the accused infringers internal studies on the
impracticability of the claimed syringes); Tyco Healthcare,
6/22/11 (alleged unexpected results, skepticism by experts, and
commercial success did not overcome prima facie obviousness
of claimed drug composition where recited dosage was
encompassed by a prior art dosage range for the same use);
Spectralytics, 6/13/11 (jury could have considered substantial
evidence of commercial success and copying in rendering
verdict of nonobviousness); In re Kao, 5/13/11 (no nexus to the
merits of the claimed invention, where feature was in the prior
art); Old Reliable Wholesale, 3/16/11 (relevance of commercial
success of the infringing product to nonobviousness); Tokai,
1/31/11 (no nexus for commercial success); In re Glatt, 1/5/11
1768
(reversing the BPAIs obviousness holding, where improperly
rejected evidence of commercial success); Western Union,
12/7/10 (no nexus established for commercial success, where
the alleged success was based on prior art elements rather than
the claimed invention; also rejecting evidence of investments
made as not related to the patentable features of the invention);
Martin, 8/20/10 (patentee failed to overcome strong case of
obviousness; also, simultaneous, independent invention relied
on as secondary evidence of obviousness); Transocean, 8/18/10
(district court failed to consider secondary considerations
before granting SJ of obviousness); King, 8/2/10 (no nexus
shown); Wyers, 7/22/10 (secondary considerations were
insufficient to support the jury verdict of nonobviousness,
where no nexus established and copying not shown); Dow
Jones, 5/28/10 (evidence discounted as weak); Rolls-Royce,
5/5/10 (supported nonobviousness); Hearing Components,
4/1/10 (jury verdict of nonobviousness also supported by
secondary considerations); Power-One, 3/30/10 (affirming
nonobviousness based on industry recognition and praise, and
copying of the claimed invention); Pressure Products, 3/24/10;
Media Techs., 3/1/10 (rejecting evidence of secondary
considerations (long felt but unsolved need and failure of
others, initial skepticism, commercial success, unexpected
results, and industry recognition; see also J. Rader, dissenting);
Crocs, 2/24/10 (commercial success, industry praise, and
copying of the invention by others supported nonobviousness);
Therasense, 1/25/10 (rejecting evidence of commercial success,
where insufficient nexus was shown) [vacated on 4/26/10, and
reinstated by Therasense, 5/25/11 (en banc)]; Therasense,
1/25/10 (rejecting long-felt but unsolved need argument where
the claims were not limited to glucose sensors that prevented
the prior art short-fill problem); Perfect Web, 12/2/09
(nonobviousness argument based on a long felt, unmet need
was rejected on SJ where no detailed evidence, but only
unsupported contentions were presented); Fresenius, 9/10/09
(jurys implicit factual findings that objective evidence was
insufficient to overcome the challengers showing of
obviousness were supported by substantial evidence); Depuy
1769
Spine, 6/1/09 (copying and failure by others supported
nonobviousness); Procter & Gamble, 5/13/09; Ritchie, 4/24/09
(glass sexual device made of standard borosilicate glass was
obvious despite commercial success); Rothman, 2/13/09
(affirming obviousness, and stating regarding secondary
considerations that this factual component of the obviousness
calculus is uniquely within the province of the jury and seeing
no reason to disturb the jurys determination that this
important factual evidence did not outweigh its assessment of
obviousness in light of the prior art); Sd-Chemie, 1/30/09
(remand necessary in part to consider evidence of unexpected
results); Boston Scientific Scimed, 1/15/09 (weak secondary
considerations did not overcome a strong prima facie case);
Sundance, 12/24/08 (failed to overcome strong prima facie
case); In re DBC, 11/3/08 (evidence of commercial success
rejected where no nexus was proven); Asyst Techs., 10/10/08
(unpersuasive where not linked to the features of the claimed
invention not disclosed in the prior art); CSIRO, 9/19/08;
Muniauction, 7/14/08 (requisite nexus to claims not proven);
Ortho-McNeil, 3/31/08 (powerful unexpected results shown
for the claimed compound); Agrizap, 3/28/08; Pharmastem,
7/9/07; Leapfrog Enterprises, 5/9/07; Pfizer, 3/22/07; Dippin
Dots, 2/9/07; Eli Lilly, 12/26/06; **Dystar, 10/3/06; Ormco,
8/30/06; Amgen, 8/3/06; Iron Grip Barbell, 12/14/04;
Metabolite Labs, 6/8/04; Knoll, 5/19/04; Ruiz, 1/29/04;
Akamai, 9/15/03); See also Metso Minerals, 5/14/13
(nonprecedential); Lingamfelter, 8/9/12 (nonprecedential
rejecting evidence of economic success where no nexus was
shown to the claimed invention, and the success depended on
large-scale advertising); B-K Lighting, 4/28/10
(nonprecedential); In re Mettke, 6/25/09 (nonprecedential?
[designated as nonprecedential on the CAFC website, but
treated as precedential in the F.3d reporter and Western
Union, 12/7/10] the number of citations (93) of the original
patent as prior art in later patents, and argument that the patent
thus was a technology leader, failed to rebut prima facie case
with respect to reissue claims); Andersen, 11/19/08
(nonprecedential evidence of secondary considerations went
1770
against obviousness based on the primary obviousness factors,
including evidence of long-felt need, failure of others,
unexpected results, copying by the accused infringers, and
praise by others)
Secondary considerations are always considered
- Secondary indicia of nonobviousness, such as

commercial success, long-felt need, or failure of others
are also relevant might give light to the circumstances
surrounding the origin of the subject matter sought to be
patented also guard against hindsight bias - Graham
(S.C.), KSR (S.C.) (Leo Pharm., 8/12/13; Cheese
Systems, 8/6/13 (citing Power Integrations); Plantronics,
7/31/13; Power Integrations, 3/26/13 (hindsight bias
often overlooks that the genius of invention is often a
combination of known elements which in hindsight
seems preordained - McGinley); Transocean, 11/15/12
(district courts analysis of commercial success was
clouded by its view that the asserted claims would have
been obvious based on a foreign patent office rejection,
stating that [t]his is precisely the sort of hindsight bias
that evaluation of objective evidence is intended to
avoid.); Outside the Box Innovations, 9/21/12; Kinetic
Concepts, 8/13/12; Mintz, 5/30/12 (powerful tools for
avoiding subconscious reliance on hindsight, and reflect
the contemporary view of the invention by competitors
and the marketplace: Obviousness requires a court to
walk a tightrope blindfolded (to avoid hindsight) an
enterprise best pursued with the safety net of objective
evidence); In re Cyclobenzaprine, 4/16/12; In re Glatt,
1/5/11 (n.1: objective evidence can be used to rebut a
prima facie case of obviousness); Martin, 8/20/10;
Procter & Gamble, 5/13/09; CSIRO, 9/19/08; Dippin
Dots, 2/9/07)
1771
- Objective considerations reflect the contemporary
view of the invention by competitors and the
marketplace (Kinetic Concepts, 8/13/12;
Spectralytics, 6/13/11)
- Objective criteria of nonobviousness must always be

considered as part of the obviousness determination
constitutes independent evidence of nonobviousness (and
not just cumulative or confirmatory or an afterthought),
and can be quite instructive in the obviousness inquiry,
and enables the court to avert the trap of hindsight
(Broadcom, 10/7/13; Leo Pharm., 8/12/13 (BPAI failed
to consider objective indicia as part of analysis of the
obviousness of a patent in an inter partes reexam
(contrasting with prima facie case and rebuttal for a
patent application)); Apple, 8/7/13 (the ultimate
conclusion of obviousness is a legal conclusion to be
reached after weighing all the evidence on both sides,
i.e., the first three Graham (S.C.) factors vs. the fourth
factor, secondary considerations; see also J. Reyna,
concurring stating that objective evidence of
nonobviousness is objective indicia of innovation, and is
strong, if not the best, evidence of innovation, i.e., the
manner is which the industry and the marketplace
responded to the disclosure in a patent and that an
inventor is entitled to full and equal consideration of all
evidence before a conclusion regarding obviousness is
reached; the ITC succumbed to the bias of hindsight as
the record bears significant objective evidence that
Apples patent was innovative); Cheese Systems,
8/6/13; Plantronics, 7/31/13 (district court failed to
consider evidence of objective indicia before determining
obviousness based on common sense); In re Morsa,
4/5/13 (BPAI must always consider objective factors, but
here no supporting evidence was provided); Power
Integrations, 3/26/13; Osram Sylvania, 12/13/12
(remanding where the district court failed to consider
evidence); Transocean, 11/15/12 (decision maker must be
1772
able to consider all four Graham (S.C.) factors in
determining obviousness, and thus was not error for the
district court to allow the jury to weigh the strength of the
prima facie case (determined in an earlier appeal)
together with the objective evidence to reach a
conclusion on the ultimate question of obviousness);
Wrigley, 6/22/12 (n.5: no improper formal burden
shifting to the patentee, citing In re Cyclobenzaprine; see
also J. Newman, dissenting); Mintz, 5/30/12; In re
Cyclobenzaprine, 4/16/12 (evidence is always included in
the obviousness analysis as part of all the evidence under
Graham (S.C.) there is no formal burden shifting to the
patentee (despite the CAFCs prima facie and
rebuttal cases), distinguishing district court litigation
from patent office practice where prima facie case of
obviousness and rebuttal is rightfully applied (n.7)); Star
Scientific, 8/26/11; Spectralytics, 6/13/11; Martin,
8/20/10; Transocean, 8/18/10 (district court failed to
consider evidence of secondary considerations); TriMed,
6/9/10 (reversing SJ of obviousness where the district
court failed to consider secondary considerations);
Transocean, 8/18/10; Rolls-Royce, 5/5/10; Pressure
Products, 3/24/10; Crocs, 2/24/10; Procter & Gamble,
5/13/09; Rothman, 2/13/09; Sd-Chemie, 1/30/09
(remand necessary when the district court erred in failing
to consider evidence of secondary considerations);
CSIRO, 9/19/08 (independent evidence of
nonobviousness, along with primary considerations of
obviousness); Ortho-McNeil, 3/31/08 (not just
cumulative or confirmatory part of the obviousness
analysis, but also independent evidence of
nonobviousness); Pfizer, 3/22/07; Iron Grip Barbell,
12/14/04; Knoll, 5/19/04); See also Hoffmann-La Roche,
10/11/12 (nonprecedential patentee failed to detail its
secondary considerations position in PI brief, instead
incorporating by reference from SJ brief District
judges are not archaeologists; see also J. Newman,
1773
dissenting district court approved of incorporation
practice)
- Factors may often establish that an invention

appearing to have been obvious in light of the prior
art was not Stratoflex (Rambus, 9/24/13; Apple,
8/7/13; Transocean, 11/15/12; Kinetic Concepts,
8/13/12; Mintz, 5/30/12; Crocs, 2/24/10)
- Factors may often be the most probative and

cogent evidence of nonobviousness of record, and
enables the court to avert the trap of hindsight
Stratoflex, Crocs (Rambus, 9/24/13; Leo Pharm.,
8/12/13 (objective factors were crucial to avert
the trap of hindsight when reviewing, what
otherwise seemed like, a combination of known
elements); Apple, 8/7/13 (see also J. Reyna,
dissenting); Plantronics, 7/31/13; Transocean,
11/15/12; Outside the Box Innovations, 9/21/12
(vacating and remanding to consider evidence of
commercial success); Kinetic Concepts, 8/13/12;
Mintz, 5/30/12; Crocs, 2/24/10 (enables the court
to avert the trap of hindsight, also citing J. Learned
Hand); Procter & Gamble, 5/13/09)
- Evidence of secondary considerations does not

always overcome a strong prima facie showing of
obviousness; although secondary considerations
must be considered, they do not necessarily control
the obviousness conclusion (Ohio Willow Wood,
11/15/13 (evidence of secondary indicia may be
inadequate where the claimed invention represents
no more than the predictable use of prior art
elements according to established functions
citing Westen Union); Plantronics, 7/31/13
(rejecting the district courts application of prima
facie rule, stating rule instead that objective factors
must always be considered as part of obviousness,
1774
i.e., before the determination is made);
Arcelormittal France, 11/30/12 (not a case in
which the prima facie case was so strong that, as a
matter of law, it would overcome the patentees
commercial success evidence); Wrigley, 6/22/12
(see J. Newman, dissenting earlier precedent
controls rule (citing Wyers, below)); Tyco
Healthcare, 6/22/11 (evidence (as a whole) of
commercial success of drug product failed to
overcome strong prima facie case of obviousness);
In re Kao, 5/13/11; Tokai, 1/31/11 (claimed lighter
obvious even assuming nexus); Western Union,
12/7/10 (weak evidence of commercial success
failed to overcome prima facie case of
obviousness); Transocean, 8/18/10 (case-by-case
determination); Wyers, 7/22/10 (secondary
considerations were inadequate as a matter of law
where the inventions represented no more than
the predictable use of prior art elements according
to their established functions KSR (S.C.)) ;
Media Techs., 3/1/10 (even if the required nexus
was shown, a highly successful product alone
would not overcome the strong showing of
obviousness); Perfect Web, 12/2/09 (rejecting
evidence of long felt, but unmet need); Rothman,
2/13/09 (evidence of industry willingness to
license, commercial success, customer and
industry praise, and copying failed to show
nonobviousness, stating that a strong prima facie
showing may stand even in the face of
considerable evidence of secondary
considerations); Ball Aerosol, 2/9/09 (minimal
evidence of commercial success failed to
overcome the clear indication of obviousness
based on the prior art); Sd-Chemie, 1/30/09;
Boston Scientific Scimed, 1/15/09 (evidence failed
to overcome strong prima facie case); In re DBC,
11/3/08 (evidence failed to overcome strong prima
1775
facie case); Asyst Techs., 10/10/08 (secondary
consideration evidence rejected); CSIRO, 9/19/08
(explanations for failure of others enough to
counter secondary consideration?); Muniauction,
7/14/08 (evidence of secondary considerations was
too attenutated to overcome strong case of
prima facie obviousness); Agrizap, 3/28/08
(objective evidence of nonobviousness was
insufficient to overcome the overwhelming
strength of the challengers prima facie case of
obviousness, citing Leapfrog Enterprises); Erico
Intl, 2/19/08 (PI vacated, even assuming the
accuracy of the district courts secondary
consideration analysis, as was reasonable to infer
that the claim was vulnerable based on
obviousness); Leapfrog Enterprises, 5/9/07 (given
the strength of the prima facie obviousness
showing, evidence of secondary considerations
(even substantial evidence of commercial success,
praise, and long-felt need) was inadequate to
overcome final conclusion of obviousness); Pfizer,
3/22/07); See also Stone Strong, 10/17/11
(nonprecedential alleged evidence of copying
was insufficient); Odom, 5/4/11 (nonprecedential
weak secondary considerations did not overcome
obviousness where the invention was no more than
the predictable use of prior art elements according
to their established functions under KSR (S.C.));
In re Mettke, 6/25/09 (nonprecedential?
[designated as nonprecedential on the CAFC
website, but treated as precedential in the F.3d
affirming obviousness [t]aking all of the evidence
in its entirety including objective evidence);
Friskit, 1/12/09 (nonprecedential evidence of
commercial success, copying, and long-felt need
failed to overcome a strong showing of
obviousness); Tokyo Keiso, 1/9/09
1776
(nonprecedential evidence of secondary
considerations failed to raise a genuine issue of
material fact sufficient to overcome the strong
showing of obviousness)
- Strong showing of obviousness was not

overcome by alleged unexpectedly superior
results (Pfizer, 3/22/07 (pharmaceutical salt
selected from a limited number of possible
known salts in the prior art))
Nexus required - generally
- Objective evidence of nonobviousness must be

reasonably commensurate with the scope of the claims
which the evidence is offered to support In re Grasselli
(Rambus, 9/24/13 (evidence need not be shown for all
embodiments citing cases); Meadwestvaco, 9/26/13
(district court erred in granting SJ of nonobviousness,
where evidence of secondary considerations involved
only fragrance-specific uses, while the claims at issue
were not fragrance-specific); Wrigley, 6/22/12 (nexus
evidence failed to show market success was due to
broadly claimed combination of two known chewing
gum components; see also J. Newman, dissenting
nexus was shown by the accused infringers internal
documents); In re Kao, 5/13/11; In re Glatt, 1/5/11
(evidence of commercial success of a single embodiment
of the claim is relevant to nonobviousness); Western
Union, 12/7/10 (no nexus); Therasense, 1/25/10
(rejecting evidence and argument of long-felt but
unsolved need, where the claims were not limited to
glucose sensors that prevented the prior art short-fill
problem); In re DBC, 11/3/08 (commercialized juice fell
within the scope of the claims, based on declarants
personal knowledge of the contents of the juice and the
product label); Asyst Techs., 10/10/08)
1777
- Need not test every embodiment within the scope
of the claims if an applicant demonstrates that an
embodiment has an unexpected result and provides
an adequate basis to support the conclusion that
other embodiments falling within the claim will
behave in the same manner, this will generally
establish that the evidence is commensurate with
the scope of the claims In re Greenfield (CCPA),
In re Cescon (CCPA) (In re Kao, 5/13/11 (BPAI
improperly discounted evidence of unexpected
results and commercial success as not
commensurate in scope with the claims where the
evidence regarded only one commercial drug
product))
- Need evidence of only one commercially

successful embodiment within the scope of the
claims (Arcelormittal France, 11/30/12 (applying
rule to specific set of facts see discussion below);
In re Kao, 5/13/11 (BPAIs refusal to credit the
applicants evidence of commercial success
because it was not proven across the entire claimed
range of dissolution rates was improper); In re
Glatt, 1/5/11 (rejecting the PTOs position that the
applicant needed to provide evidence of
commercial success of multiple claim
embodiments for the evidence to be commensurate
in scope with the claim, ruling that an applicant
need not sell every conceivable embodiment of
the claims in order to rely upon evidence of
commercial success In re DBC); In re DBC,
11/3/08)
- Nexus is required between the merits of the claimed

invention and the evidence of secondary considerations
for the evidence to be given substantial weight in the
obviousness decision (Ohio Willow Wood, 11/15/13 (no
1778
nexus where the objective evidence applied equally to the
prior art device); Rambus, 9/24/13 (BPAI erred in finding
no nexus between the claimed dual-edge data transfer
functionality and evidence of long-felt need, industry
praise, and commercial success (via licensing)); Synqor,
3/13/13 (nexus shown based on expert testimony for
several different types of objective evidence, including
copying, skepticism, and commercial success);
Transocean, 11/15/12 (nexus shown for multiple
objective factors); Alcon Research, 8/8/12; In re Antor
Media, 7/27/12 (no nexus shown to licensing); Wrigley,
6/22/12 (no nexus established; see also J. Newman,
dissenting strong evidence of a nexus); In re
Cyclobenzaprine, 4/16/12 (n.6); In re Kao, 5/13/11 (no
nexus); Tokai, 1/31/11 (no nexus); Western Union,
12/7/10 (no nexus); King, 8/2/10; Wyers, 7/22/10;
Hearing Components, 4/1/10; Power-One, 3/30/10
(industry praise was linked to the patented invention);
Crocs, 2/24/10 (nexus was found between the claimed
foam footwear and their commercial success);
Therasense, 1/25/10 (patentee failed to show that the
commercial success of the marketed product was due to
the claimed lack of a protective membrane over the
sensor electrode) [vacated on 4/26/10, and reinstated
by Therasense, 5/25/11 (en banc)]; In re DBC, 11/3/08
(no nexus proven to substantial sales of embodiment of
claimed juice); Asyst Techs., 10/10/08; Muniauction,
7/14/08); See also Metso Minerals, 5/14/13
(nonprecedential rejecting evidence of unexpected
results of enabling dramatically higher product output,
where the cause of the result, widening of the central
conveyor, was not part of the limitations of the claimed
invention); Inventio AG, 11/27/12 (nonprecedential
patentee failed to link sales or praise directly to the
patented feature as opposed to elevator destination
dispatching more generally); In re Gardner, 11/14/11
(nonprecedential no nexus); Stamps.com, 6/15/11
(nonprecedential no nexus shown); In re Tzipori,
1779
10/15/08 (nonprecedential alleged praise for the
invention was divorced from the actual claims of the
application)
- Commercial success or other secondary

considerations may presumptively be attributed to
the patented invention only where the marketed
product embodies the claimed features, and is
coextensive with them Ormco (Teva, 7/26/13
(district court did not clearly err in presuming
nexus where the commercial drug product and the
claimed invention were coextensive); Therasense,
1/25/10 (no presumption where the marketed
product also met all the limitations of a second
patent) [vacated on 4/26/10, and reinstated by
Therasense, 5/25/11 (en banc)]; Asyst Techs.,
10/10/08; Muniauction, 7/14/08)
- No nexus to the merits of the claimed invention

where the offered secondary consideration actually
results from something other than what is both
claimed and novel in the claim (In re Kao, 5/13/11
(instructing the BPAI upon remand to determine
whether there was a nexus between the unexpected
in vivo concentration profile of the applicants
commercial drug product and some aspect of the
claim not already in the prior art, such as the
claimed range of dissolution rates as against other
unclaimed prior art dissolution rates))
- Link to claimed features must not be in the prior

art (Rambus, 9/24/13 (obviousness inquiry centers
on whether the invention as a whole would have
been obvious, where at least some of the evidence
of commercial success was not limited to the prior
art dual-edge functionality, but rather pertained to
the overall patented memory device architecture
citing Ormco); Alcon Research, 8/8/12; In re Kao,
1780
5/13/11; Tokai, 1/31/11; Western Union, 12/7/10
(citing Ormco); Therasense, 1/25/10 (the marketed
products commercial success was due to features
already present in a prior art patent, stating the rule
that the asserted commercial success of the
product must be due to the merits of the claimed
invention beyond what was readily available in the
prior art J.T. Eaton & Co.) [vacated on
4/26/10, and reinstated by Therasense, 5/25/11
(en banc)]; Asyst Techs., 10/10/08; Ormco,
8/30/06); See also In re Tzipori, 10/15/08
(nonprecedential alleged long-felt but unmet
need for treating disease was taught in the primary
prior art reference); See also Commerical
success
- Scope of the claims there must be a nexus

between the evidence of secondary considerations
and the scope of the claims; consistent with the
long-established rule that claims which are broad
enough to read on obvious subject matter are
unpatentable even though they also read on
nonobvious subject matter (Allergan, 5/1/13 (J.
Dyk, dissenting, n.1); Arcelormittal France,
11/30/12 (rule was not applicable where not a
situation in which the claims described distinct
alternative embodiments of the invention, and
where the obviousness of one embodiment would
invalidate the entire claim; rather, the claim was
limited to hot-rolled steel sheet which included
an embodiment having an additional cold-rolling
step, the commercial success of which was to be
considered when evaluating obviousness);
Muniauction, 7/14/08 (no nexus to the scope of the
claims where the evidence of secondary
considerations (praise for the invention) was
specific to only one of two main embodiments
within the claim scope))
1781
- Commercial success of an embodiment with
additional unclaimed features is to be
considered when evaluating the obviousness
of a claim, provided that the embodiments
success has a sufficient nexus to the claimed
and novel features of the invention
(Arcelormittal France, 11/30/12 (citing as
support several cases for rule that a patentee
need not show that all possible embodiments
within the claims were successfully
commercialized in order to rely on the
success in the marketplace of the
embodiment that was commercialized))
Commercial success
- Commercial success nexus required between the merits

of the claimed invention and evidence of commercial
success (Broadcom, 10/7/13 (nexus shown, including that
the claimed technological advance was critical in solving
the demand for a more efficient, low costing microchip);
Leo Pharm., 8/12/13; Apple, 8/7/13 (ITC failed to
consider evidence; n.4: evidence of industry copying of
the patented multitouch functionality and industry praise
for this feature were strong evidence of nexus);
Plantronics, 7/31/13; Power Integrations, 3/26/13
(witnesses uniformly attributed the overwhelming
success of the patented products to the patented features);
Soverain Software, 1/22/13 (no nexus to overcome
obviousness of software patents); Pregis, 12/6/12
(conflicting evidence of nexus supported jury verdict of
obviousness); Transocean, 11/15/12 (commercial success
and nexus were shown, including that the claimed dual-
activity drilling rigs commanded a market premium over
single-activity rigs, and were expressly required by some
customers for improved efficiency, and had become the
1782
industry standard); Norgren, 11/14/12 (affirming the
ITCs finding that no nexus was shown citing Wrigley);
In re Applied Materials, 8/29/12 (no nexus shown where
success was due to commercial factor unrelated to the
quality of the claimed invention, and no sales data were
presented to show the patentees portion of market share
the patentee failed to show significant market share
relative to all competing pads based on the merits of the
claimed invention); Alcon Research, 8/8/12 (nexus found
between the commercial success and the claimed method
of use, where the commercial drug product contained the
claimed concentration (0.1% w/v) of drug); Wrigley,
6/22/12 (no nexus was established between the success
and the combination of two prior art components in the
claimed chewing gum composition, where other factors
contributed to the commercial success, including
marketing, packaging, and other components);
Spectralytics, 6/13/11 (argument of no nexus rebutted by
evidence that the infringing machine was the reason why
the defendants product was better than then-competing
products, and the defendant described the infringing
machine as superior and advanced technology); In re
Kao, 5/13/11; Tokai, 1/31/11 (no nexus established
between automatic safety feature (which distinguished
the claimed lighter from the prior art) and commercial
success); In re Glatt, 1/5/11; Western Union, 12/7/10 (no
nexus); Martin, 8/20/10 (no nexus where commercial
success was due to pre-existing market share in the
market for a related machine, which gave the patentee a
huge advantage in selling other products); Transocean,
8/18/10 (dual activity rigs commanded a higher licensing
premium than standard rigs); King, 8/2/10 (no nexus
shown between claim feature and sales of drug); Wyers,
7/22/10 (no nexus established by the infringers sales of
the accused product alone, where no direct nexus to the
claimed sleeve feature was shown); Rolls-Royce, 5/5/10
(nexus was shown between jet engine sales and the
invented fan blade design; market share exceeded 50
1783
percent); Hearing Components, 4/1/10 (nexus shown by
the fact that licensing fee for a covered product was cut
in half upon patent expiration); Media Techs., 3/1/10;
Crocs, 2/24/10 (nexus found); Therasense, 1/25/10 (no
nexus) [vacated on 4/26/10, and reinstated by
Therasense, 5/25/11 (en banc)]; In re DBC, 11/3/08;
Asyst Techs., 10/10/08; Cordis, 1/7/08 (evidence of
commercial success excluded from the jury as having
limited probative value under FRE 403); Ormco, 8/30/06;
Syntex, 5/18/05; Merck, 1/28/05; Iron Grip Barbell,
12/14/04); See also Metso Minerals, 5/14/13
(nonprecedential the patentee presented no evidence of
a nexus); Lingamfelter, 8/9/12 (nonprecedential no
nexus shown); In re Transaction Holdings, 4/23/12
(nonprecedential other factors, e.g., marketing and
advertising); In re Pepperball Techs., 3/7/12
(nonprecedential no nexus proven where evidence of
commercial success related to sales of other than the
claimed invention); In re Mettke, 6/25/09
(nonprecedential? [designated as nonprecedential on
the CAFC website, but treated as precedential in the
F.3d reporter and Western Union, 12/7/10] evidence
of obviousness was not rebutted by commercial success,
despite presumed nexus where the commercially
successful device was the claimed invention itself);
Friskit, 1/12/09 (nonprecedential evidence failed to
show that the success of the accused products was
attributable to the aspect of the claimed subject matter the
patentee contended was nonobvious)
- Nexus may be inferred when the patentee shows

both that there is commercial success, and that the
thing (product or method) that is commercially
successful is the invention disclosed and claimed
in the patent (Tokai, 1/31/11 (J. Newman,
dissenting); In re Glatt, 1/5/11 (evidence of
commercial success must be considered so long as
what was sold is within the claim scope citing In
1784
re DBC); Media Techs., 3/1/10; Crocs, 2/24/10;
Therasense, 1/25/10 (no inference or presumption
where the marketed product also was covered by a
second patent) [vacated on 4/26/10, and
reinstated by Therasense, 5/25/11 (en banc)];
Ormco, 8/30/06 (raises rebuttable presumption);
Iron Grip Barbell, 12/14/04); See also In re
Mettke, 6/25/09 (nonprecedential? [designated as
nonprecedential on the CAFC website, but
treated as precedential in the F.3d reporter and
Western Union, 12/7/10] when the
commercially successful device is the claimed
invention itself, there is a presumption of nexus
Demaco)
- Prima facie case of nexus is made when the

patentee shows both that there is commercial
success, and that the product that is
commercially successful is the invention
disclosed and claimed in the patent; once the
patentee demonstrates a prima facie nexus,
the burden of coming forward with evidence
in rebuttal shifts to the challenger In re
GPAC, Demaco (Media Techs., 3/1/10 (no
benefit of nexus presumption where the
patentee failed to show that unclaimed
factors, including innovative marketing and
packaging, were the cause of the claimed
trading cards commercial success); Crocs,
2/24/10 (the record disclosed little or no
evidence to rebut a prima facie case of
nexus))
- Affirmative evidence of nexus needed

when evidence of commercial success
is a license, because cheaper to take a
license than to defend an infringement
suit (In re Antor Media, 7/27/12 (no
1785
nexus was shown, i.e., no evidence
showing that the licensing program
was successful either because of the
merits of the claimed invention or
because they were entered into as
business decisions to avoid litigation,
because of prior business
relationships, or for other economic
reasons citing Iron Grip Barbell);
Iron Grip Barbell, 12/14/04)
- No nexus found (Pregis, 12/6/12; In re

Antor Media, 7/27/12 (licenses); In re
Kao, 5/13/11; Tokai, 1/31/11;
Western Union, 12/7/10; Media
Techs., 3/1/10; Therasense, 1/25/10
[vacated on 4/26/10, and reinstated
by Therasense, 5/25/11 (en banc)];
In re DBC, 11/3/08; Merck, 1/28/05;
Ruiz, 1/29/04)
- Unclaimed or non-novel features of

product - presumption rebutted if
commercial success is due to an
unclaimed feature of the device, or if
the feature that creates the
commercial success was known in the
prior art (Arcelormittal France,
11/30/12 (to demonstrate nexus, a
comparison was required between
cold-rolled steel produced by the
patented process and cold-rolled steel
produced by alternative (prior art)
processes to see if the former
achieved material commercial success
over and above the latter); In re Kao,
5/13/11; Tokai, 1/31/11 (no nexus,
citing prior art rule); Western Union,
1786
12/7/10 (commercial success was due
to features present in prior art
formless money transfer systems);
Media Techs., 3/1/10 (concluding that
whatever commercial success was
enjoyed by the claimed trading cards
came from celebrity, not invention);
Therasense, 1/25/10 (marketed
product also was covered by a prior
art patent) [vacated on 4/26/10, and
reinstated by Therasense, 5/25/11
(en banc)]; Asyst Techs., 10/10/08
(no evidence that the success of the
patents commercial embodiment was
attributable to the substitution of a
multiplexer for the prior art bus,
which was the only material
difference between the prior art and
the claimed invention); Ormco,
8/30/06)
- Changes to process in patent

from the prior art that do not
improve the prior arts
commercial appeal the
asserted commercial success of
the product must be due to the
merits of the claimed invention
beyond what was readily
available in the prior art J.T.
Eaton (In re Kao, 5/13/11
(BPAI instructed on remand to
determine whether the
commercial success of the
embodying product resulted
from the merits of the claimed
invention, i.e., the claimed
dissolution range, as opposed to
1787
the prior art in which the
unexpected in vivo drug
concentration would be
observed in any oxymorphone
controlled release formulation);
Tokai, 1/31/11 (applying rule);
Therasense, 1/25/10 (quoting
rule from J.T. Eaton) [vacated
on 4/26/10, and reinstated by
Therasense, 5/25/11 (en
banc)]; Asyst Techs., 10/10/08
(patentees failure to link the
commercial success of
commercial embodiments of
the invention to the claimed
features of the invention that
were not disclosed in the prior
art undermined the probative
force of the evidence pertaining
to the success of the patentees
and the accused infringers
products); Dippin Dots,
2/9/07)
- Proof needed that sales were the direct result of the

unique characteristics of the claimed invention, as
opposed to other economic and commercial factors
unrelated to the quality of the patented subject
matter (Pregis, 12/6/12 (expert testimony regarding
factors unrelated to the claimed elements which
determined commercial success in the air-pillow
packaging industry); In re Kao, 5/13/11 (success
cannot result from the prior art or other extrinsic
factors); Western Union, 12/7/10 (success due to
marketing and brand recognition); Dow Jones,
5/28/10 (district court found that revenues from the
patent were achieved through the use of coercive
licensing agreements having more to do with
1788
avoiding the costs of litigation than with the
novelty of the patent); Crocs, 2/24/10 (challengers
failed to rebut the evidence of commercial success,
where they failed to make a convincing case that
market forces unrelated to the inventiveness of the
patent were the likely cause of the success);
Ritchie, 4/24/09; In re DBC, 11/3/08 (no evidence
that the driving force behind substantial sales was
the claimed combination, rather than the increased
popularity of mangosteen fruit or the effectiveness
of the marketing efforts employed)); See also In re
other reasons for commercial success, e.g.,
marketing, advertising)
- Commercial success of a product can have

many causes unrelated to patentable
inventiveness, e.g., success not due to the
invention itself but to skillful marketing of
the product embodying the invention
(Ritchie, 4/24/09); See also Lingamfelter,
8/9/12 (nonprecedential success due to
large-scale advertising)
- Overall sales are not the most probative

evidence of commercial success, but
whether those sales represent a substantial
quantity in the market In re Applied
Materials (Novo Nordisk, 6/18/13 (n.5))
- Invention not appearing in the market soon

after becoming obvious despite its
commercial value is some evidence that
the invention is not obvious (Ritchie,
4/24/09)
- Nexus and failure of others required?; commercial

success does not overcome obviousness when
1789
market entry was barred (Procter & Gamble,
5/13/09 (n.2: commercial success given little
weight where the only alternative drug was the
subject of a pending application not available to
the public, citing Merck); Merck, 1/28/05 (market
entry legally barred by a blocking patent))
[rehearing en banc and Supreme Court review
denied; J. Lourie, C.J. Michel and J. Newman
dissented from the order denying rehearing en
banc, stating: Success is success]
- Failure of others needed? (Syntex, 5/18/05;

Merck, 1/28/05)
- Market entry legally barred by another

patent (Syntex, 5/18/05; Merck, 1/28/05)
- Market acceptance and licenses to invention (Star

Scientific, 8/26/11)
- FDA approval relevant in evaluating the

objective indicia of nonobviousness Knoll
Pharm. (Leo Pharm., 8/12/13 (FDA approval
highlighted that the claimed drug composition was
truly storage stable, which was not achieved by the
prior art))
Copying
- Copying a product embodying a patented invention can

show nonobviousness Iron Grip Barbell (Apple, 8/7/13
(ITC failed to consider evidence; see also J. Reyna,
concurring); Plantronics, 7/31/13; Bayer, 4/16/13
(rejecting evidence, citing rule from Purdue Pharma (see
below) that evidence of copying in the ANDA context is
not probative of nonobviousness because a showing of
bioequivalence is required for FDA approval); Power
1790
Integrations, 3/26/13 (accused infringer copied the
patented products by reverse engineering them, plus
evidence of a corporate culture of copying not limited
to the patent); Synqor, 3/13/13 (supported by expert
testimony); Pregis, 12/6/12 (features copied not shown to
be claimed in patent); Transocean, 11/15/12 (evidence
showed copying where the accused infringer was aware
of the patentees patents and its drillships embodying the
patents while the infringer designed its accused rig, and
incorporated the claimed dual-activity feature because it
believed the patents were invalid over the prior art, and
internal documents tied its copying to the novel dual-
activity feature); Wrigley, 6/22/12 (no nexus was shown
between the alleged copying and that the claimed
combination of two components led to the copying));
Harris, 1/17/13 (nonprecedential)
- Copying is only equivocal evidence of nonobviousness in

the absence of more compelling objective indicia of other
secondary considerations Ecolochem (Tokai, 1/31/11
(see also J. Newman, dissenting n.1: internal
documentation of unsuccessful attempts to design around
the claimed utility lighter was evidence of copying);
Martin, 8/20/10)
- Copying is another form of flattering praise for inventive

features (Apple, 8/7/13 (J. Reyna, concurring citing
Crocs); Kinetic Concepts, 8/13/12 (shown by internal
documents and marketing materials, in which the accused
products were compared to the commercial embodiment
of the patents); Crocs, 2/24/10 (supported
nonobviousness)); See also Purdue Pharma, 6/3/10
(nonprecedential copying is not compelling secondary
evidence in the ANDA context where bioequivalency is
required)
- Copying requires replication of a specific product,

rather than only arguably falling within the scope of the
1791
patent claim (Tokai, 1/31/11 (stipulation of infringement,
taken alone, does not prove copying); Wyers, 7/22/10
(stating that otherwise, every infringement suit would
automatically confirm the nonobviousness of the patent
Iron Grip Barbell); Iron Grip Barbell, 12/14/04); See
also Metso Minerals, 5/14/13 (nonprecedential copying
was not established where the products were far from
identical, citing rule that copying requires evidence of
efforts to replicate a specific product citing Wyers);
Friskit, 1/12/09 (nonprecedential ruling that copying by
the accused infringer has limited probative value in the
absence of failed development efforts by the infringer, or
of more compelling objective indicia of other secondary
considerations; the patentee also failed to show that the
copied technology fell within the scope of the asserted
claims)
- Replication may be demonstrated through internal

company documents, direct evidence such as
disassembling a patented prototype, photographing
its features, and using the photograph as a
blueprint to build a replica (Transocean, 11/15/12
(copying shown by internal documents); Wyers,
7/22/10 (no such evidence of copying shown))
- Replication also demonstrated by access to

the patented product combined with
substantial similarity to the product (Wyers,
7/22/10); See also Stone Strong, 10/17/11
(nonprecedential noting material
differences between the patented and
accused products)
- Copying from patent (Honeywell, 5/25/10 (J. Mayer,

dissenting assuming obviousness, the governments
actions were unrelated to its review of the patentees
application, pursuant to the Invention Secrecy Act);
Power-One, 3/30/10 (contemporaneous reaction to patent
1792
by launching own infringing product); Depuy Spine,
6/1/09 (accused infringer suddenly changed direction
in its development of a spinal screw after the patent
issued, copying the compression member limitation))
Failure of others
- Failure of others (Plantronics, 7/31/13; Allergan, 5/1/13

(failure of others to obtain FDA approval as relevant
objective indicia of nonobviousness citing Knoll
Pharm.); Mintz, 5/30/12; In re Cyclobenzaprine, 4/16/12
(evidence of another companys failure to develop a
therapeutically effective, extended-release formulation
strongly supported nonobviousness, stating that [w]hile
absolute certainty is not necessary to establish a
reasonable expectation of success, there can be little
better evidence negating an expectation of success than
actual reports of failure Boehringer); Star Scientific,
8/26/11 (decades of unsuccessful attempts); Retractable
Techs., 7/8/11 (expert testimony supported
nonobviousness); Martin, 8/20/10 (alleged failure of
others was unclaimed); Media Techs., 3/1/10 (rejecting
the patentees argument); Boston Scientific Scimed,
1/15/09; CSIRO, 9/19/08; Eli Lilly, 12/26/06; **Dystar,
10/3/06; Knoll, 5/19/04)
- Evidence that others were going in different ways

is strong evidence that the inventors way would
not have been obvious Panduit (In re
Cyclobenzaprine, 4/16/12)
- Explanations for failed attempts enough to counter

the evidence of failure of others? (Boston
Scientific Scimed, 1/15/09 (rebutting evidence
presented that failure was due to the difficulty in
finding a suitable drug, not to the inability to make
the claimed stent); CSIRO, 9/19/08 (fact issues
1793
were raised by the accused infringer who offered
evidence explaining why those, including IBM,
seeking to devise high-speed wireless LANs in the
early 1990s did not succeed, because of market
considerations including expense and the state of
the art of silicon process development))
- Failure of others or long-felt need without either,

the mere passage of time without the claimed
invention is not evidence of nonobviousness (Iron
Grip Barbell, 12/14/04)
- Failed attempts vs. calculated business judgment to

abandon new product line (**Dystar, 10/3/06)
Praise by others
- Praise by others (Apple, 8/7/13 (ITC failed to consider

evidence; see also J. Reyna, concurring effusive praise
relating to the patented invention); Bayer, 4/16/13
(evidence fell short of industry praise); Transocean,
11/15/12 (industry praise for the unexpected increase in
drilling efficiency made possible by the claimed dual-
activity drilling technology supported the jurys
determination of nonobviousness); Kinetic Concepts,
8/13/12 (invention changed the way surgery is done, and
the challengers expert admitted the invention was a
paradigm shift in wound healing); Alcon Research,
8/8/12; Mintz, 5/30/12 (including by the accused
infringer); Star Scientific, 8/26/11; Martin, 8/20/10
(praise not linked to the claimed breaker invention where
the patentee already had market share in the related
stacker market); Transocean, 8/18/10 (district court failed
to consider evidence of industry praise for the claimed
dual activity rig); Rolls-Royce, 5/5/10; Power-One,
3/30/10 (industry praise, including by the accused
infringer (that the infringing product was an
1794
advancement in the industry), was linked to the patented
invention); Media Techs., 3/1/10 (see J. Rader,
dissenting); Crocs, 2/24/10 (substantial industry praise
for the claimed invention and the products covered by the
claimed invention); Asyst Techs., 10/10/08 (evidence
rejected); Muniauction, 7/14/08 (no nexus between an
award for the invention and the scope of the claims);
Pharmastem, 7/9/07); See also In re Gardner, 11/14/11
(nonprecedential rejecting evidence of citation of the
applicants related patents by a number of later patents,
where no nexus to the claims on appeal); In re Mettke,
nonprecedential on the CAFC website, but treated as
precedential in the F.3d reporter and Western Union,
12/7/10] prima facie case with respect to reissue claims
was not rebutted by the number of citations (93) to the
original patent as prior art in later patents, while
draw[ing] no generalization about the significance of
citations or whether the number of citations is a metric
of patent quality and thus of innovation)
- Industry acclaim, e.g., awards (Power-One,

3/30/10; Eli Lilly, 12/26/06)
- Praise for the inventors work based on an

inventive contribution vs. praise for the inventors
proof of something already suspected based on the
prior art (Pharmastem, 7/9/07 (inventors proof,
through laboratory work, that fetal blood contains
large numbers of stem cells, held not inventive; see
also J. Newman, dissenting: It is often far easier
to recognize the problem than to find and
demonstrate the solution. The patent law
recognizes that advances of great power may be
based as much on persistent and skilled
investigation as on the flash of creative genius, . . .
My colleagues go too far in limiting the patent
system to the serendipitous and the unexpected . . .
1795
The courts approach reflects misperception of the
scientific process as well as the patent purpose.))
- Industry praise of invention rendered obvious by

prior art (Bayer, 4/16/13 (stating that industry
praise of what was clearly rendered obvious by
published references is not a persuasive secondary
consideration))
- Surprise by others, unaware of prior art

references, was not evidence of
nonobviousness (Pharmastem, 7/9/07)
Licensing
- Licensing industry willingness to license (Rambus,

9/24/13 (nexus existed between the claimed invention
and commercial success via substantial licensing fees
paid); Soverain Software, 1/22/13 (licenses to patents
were taken to avoid litigation, and thus there was no
nexus to the patentees commercial software product);
Transocean, 11/15/12 (licensing of dual-activity drilling
patents supported the jurys finding of nonobviousness
where the royalties paid under the licenses exceeded
litigation costs, and some licenses were with companies
under no apparent threat of litigation, and thus a
reasonable jury could have found that the licenses
reflected the value of the claimed invention and were not
solely attributable to litigation); In re Antor Media,
7/27/12 (no nexus shown); Star Scientific, 8/26/11
(supported nonobviousness); Rothman, 2/13/09 (failed to
overcome strong prima facie case); Iron Grip Barbell,
12/14/04); See also Harris, 1/17/13 (nonprecedential
successful licensing program showed the patented
inventions commercial success)
1796
Long-felt, but unmet, need
- Long-felt, but unmet, need (Broadcom, 10/7/13 (jurys

findings were also supported by the patentees own failed
attempts); Leo Pharm., 8/12/13 (recognizing and solving
storage stability problem of combining drug components
in one formulation took a decade since the relevant prior
art); Allergan, 5/1/13 (rejecting the district courts
entirely conclusory finding of a need for the claimed
combination drug product); Transocean, 11/15/12 (dual-
activity technology satisfied a long-felt need for greater
drilling efficiency in deepwater drilling, as supported by
inventor and expert testimony); In re Cyclobenzaprine,
4/16/12 (long-felt need for a therapeutically effective,
extended-release formulation based on poor patient
compliance with immediate release product; related to
failure of others); Celsis In Vitro, 1/9/12 (the accused
infringers reference at the PI stage of the case to market
need, properly linked to the claimed invention, was
actually probative of long felt need); Star Scientific,
8/26/11 (substantial, long-felt need in the industry for
better tobacco curing methods); Martin, 8/20/10 (need for
breaking three bundles simultaneously was met by prior
art machines that could break more than one bundle at a
time; also, no long-felt need was unsolved where there
were only minimal differences between the prior art and
claimed invention); Rolls-Royce, 5/5/10; Media Techs.,
3/1/10 (rejecting the patentees overbroad long felt but
unsolved need, and its overly narrow definition of
success, stating that the patentee cannot have it both
ways); Therasense, 1/25/10 (rejecting argument where
the evidence was not commensurate in scope with the
claims); *Perfect Web, 12/2/09 (rejected where no
supporting data or other evidence was presented to
explain how long the need was felt or when the problem
first arose, or that the patent met such need); Procter &
Gamble, 5/13/09; Asyst Techs., 10/10/08 (evidence
rejected); Eli Lilly, 12/26/06; Amgen, 8/3/06; In re Kahn,
1797
(nonprecedential evidence was rejected as
inconclusive); In re Pepperball Techs., 3/7/12
(nonprecedential the patentee failed to prove a specific
need, and that was long-felt); In re Gough, 12/9/11
(nonprecedential rejecting conclusory statements in
declaration as evidence of a long-felt need); In re
Gardner, 11/14/11 (nonprecedential no evidence that
the claimed invention actually satisfied the alleged long-
felt need citing In re Cavanaugh (CCPA)); Friskit,
1/12/09 (nonprecedential claimed invention must have
overcome technical challenges in the prior art, vs.
economic and commercial factors for why invention not
made earlier)
- Long-felt, but unmet, need is assessed as of the

filing date of the challenged patent Monarch
(Perfect Web, 12/2/09; Procter & Gamble, 5/13/09
(only competing drug was not produced until 10
years after the filing date))
- Passage of time not enough for nonobviousness

(Tokai, 1/31/11 (J. Newman, dissenting the
continuing need for a child-safe utility lighter
weighed against the obviousness of the successful
device); In re Kahn, 3/22/06; Iron Grip Barbell,
12/14/04); See also Tokyo Keiso, 1/9/09
(nonprecedential district court did not err in
finding that a few years for a company to expand
on the prior art was not surprising in a niche
market)
Skepticism
- Skepticism generally (Allergan, 5/1/13 (potential for

obtaining FDA approval for drug product relevant to
skepticism regarding its efficacy); Bayer, 4/16/13
1798
(rejecting evidence of expert skepticism because the
FDAs request for clinical studies to show the efficacy
benefits of contraceptive regimen did not indicate that the
FDA would have been surprised by the results, but rather
only that the FDA was performing its normal duty to
ensure safety and efficacy of drugs by requiring actual
data to corroborate statements in an NDA citing Dow
Jones for rule that evidence of expert skepticism must
directly address whether there was actual skepticism
concerning the invention); Synqor, 3/13/13 (shown by
expert testimony); Transocean, 11/15/12 (skepticism by
the inventors, industry experts, and the patentees
customers of the claimed dual-activity drilling feature
due to fears of clashing supported nonobviousness);
Santarus, 9/4/12 (J. Newman, dissenting inventor
proceeded contrary to the accepted wisdom, which is
strong evidence of nonobviousness); Kinetic Concepts,
8/13/12 (substantial evidence of skepticism); Celsis In
Vitro, 1/9/12; Tyco Healthcare, 6/22/11 (documentary
evidence of alleged skepticism by experts rejected);
Transocean, 8/18/10 (district court failed to consider
evidence of industry skepticism); Dow Jones, 5/28/10
(evidence did not show actual skepticism); Pressure
Products, 3/24/10 (skepticism of experts that invention
would work supported nonobviousness); Media Techs.,
3/1/10 (not supported by the record; see also J. Rader,
dissenting)); See also Astrazeneca, 10/30/13
(nonprecedential evidence of the number and types of
clinical studies conducted showed corporate prudence
based on the patentees own misgivings, not industry
skepticism about the efficacy of once-daily budesonide
treatment in children); Harris, 1/17/13 (nonprecedential
that patented approach was rejected by other experts
supported nonobviousness)
- Market force skepticism lacks the requisite nexus to the

claimed invention (Muniauction, 7/14/08 (skepticism by
1799
large investment banks)); See also Friskit, 1/12/09
(nonprecedential citing case)
Unexpected results
- Unexpected results useful to show that the improved

properties provided by the claimed compositions are
much greater than would have been predicted In re
Soni (Leo Pharm., 8/12/13 (extensive experimental
evidence of unexpected results contradicted the BPAIs
obviousness finding the test results were a strong
indication that the patents combination of known
elements yielded more than just predictable results
citing In re Soni); Allergan, 5/1/13 (evidence of
unexpected results that two-a-day combination drug
product was as effective as administering the drugs
separately three times per day did not overcome clear
motivation to combine in the prior art to combine the
drugs to make the claimed formulation to achieve better
patient compliance; but the evidence was relevant to the
nonobviousness of method claims directed to the two-a-
day administration); Bayer, 4/16/13 (rejecting evidence
as being a matter of common sense based on experts
admission); Power Integrations, 3/26/13 (unexpected
results from removing a component in the prior art
reference);Transocean, 11/15/12 (claimed dual-activity
drilling technology produced unexpected efficiency gains
which garnered praise in the drilling industry); Wrigley,
6/22/12 (synergistic effect from combining two prior art
components had already been discovered in the prior art;
see also J. Newman, dissenting - the advantageous
properties of the claimed combination were not predicted
or suggested or even hinted in any reference); Star
Scientific, 8/26/11; Genetics Institute, 8/23/11
(unexpected results, properties need not be known by the
filing date; see also J. Dyk, dissenting); Tyco Healthcare,
6/22/11 (evidence rejected, including where the
1800
patentees expert failed to interpret the prior art
references over which unexpected results were alleged);
In re Kao, 5/13/11; Pressure Products, 3/24/10 (invention
not thought to work); Media Techs., 3/1/10 (rejecting the
patentees argument that a POS in the art would not have
predicted commercial success, stating that commercial
success is a separate inquiry from unexpected results;
Gemtron, 7/20/09 (expert testimony provided substantial
evidence of unexpected results of the claimed refrigerator
shelf); Sd-Chemie, 1/30/09; Asyst Techs., 10/10/08
(battery life savings were not unexpected where the
advantages and disadvantages of using a multiplexer
were well understood at the time of the application);
Ortho-McNeil, 3/31/08 (powerful unexpected results
shown for the claimed compound); Eli Lilly, 12/26/06);
See also Hoffmann-La Roche, 10/11/12 (nonprecedential
district court did not clearly err in rejecting patentees
evidence of unexpected results in motion for PI); In re
Shoner, 8/10/09 (nonprecedential declaration
describing tests to show superior results failed to
overcome a prima facie case of obviousness where it
described tests conducted using tire liners designed in
accordance with the inventors earlier patent); Chapman,
3/11/09 (nonprecedential J. Rader, dissenting
invention was patentable where the inventor
unexpectedly discovered the source of, and solved the
problem related to making pure oxycodone); See also
Prima facie case of obviousness and rebuttal thereof
Unexpected results
- Unexpected results must arise from combining

prior art elements (Media Techs., 3/1/10 (rejecting
argument that commercial success was an
unexpected result))
- Conclusory statements in the specification cannot

constitute evidence of unexpected results in the
absence of factual support In re Soni, In re
1801
DeBlauwe (Tyco Healthcare, 6/22/11 (rejecting the
specifications description of the inventors
experimental results as unexpected); Gemtron,
7/20/09 (specification did not contradict expert
testimony regarding unexpected results, but instead
its context made clear that the claimed refrigerator
shelf alone could support food loading); Sd-
Chemie, 1/30/09 (finding that the patent provided
specific evidence pertaining to the allegedly
unexpected advantages of the claimed invention
beyond the mere declaration that the results were
surprising))
- Unexpected results need not be fully known at

time of the application; evidence developed after
the patent grant can be used during litigation; not
improper to obtain additional support consistent
with the patented invention; but the specification
must in some way recognize unexpected results
and advantages of the invention (Genetics
Institute, 8/23/11 (citing Knoll; see also J. Dyk,
dissenting); Knoll, 5/19/04; CFMT, 11/12/03)
- Objective evidence required (CFMT, 11/12/03)
- Unexpected results must be shown to be

unexpected compared to the closest prior art (Novo
Nordisk, 6/18/13 (synergy of the claimed drug
combination was expected, not unexpected, based
on the closest prior art drug combinations);
Takeda, 6/28/07 (n. 3); Pfizer, 3/22/07; Abbott
Labs, 6/22/06; Kao, 3/21/06)
Other obviousness issues
Anticipation is the epitome of obviousness
1802
(Cohesive Techs., 10/7/08; MercExchange, 3/16/05); See also
In re Daneshvar, 2/18/10 (nonprecedential BPAIs error on
anticipation undermined its obviousness determination which
was based entirely on its anticipation ruling)
- Tests for anticipation and obviousness are different, and

require different elements of proof (Cohesive Techs.,
10/7/08 (ruling that the district courts directed verdict of
no anticipation was improper, and only allowing the jury
to consider obviousness))
- While commonly understood that prior art references that

anticipate a claim will usually render that claim obvious,
it is not necessarily true that a verdict of nonobviousness
forecloses anticipation, as the tests for anticipation and
obviousness are different (Cohesive Techs., 10/7/08
(expressly disagreeing with the dissents claim (J. Mayer)
that every anticipated claim is obvious and providing
examples, reasons for why our precedent has rejected
reliance on the legal homily that anticipation is the
epitome of obviousness - Mendenhall))
Apparatus teaches obvious methods of using
(Dow, 9/5/03); See also In re Bryan, 3/31/09 (nonprecedential

distinguishing methods or processes for playing the claimed
board game from the unpatentable board game)
Biotech
- Genetic inventions - lax nonobviousness standards for genetic

inventions because of In re Deuel (CAFC 1995) (In re Kubin,
4/3/09 (rejecting the In re Deuel approach, ruling that [i]nsofar
as Deuel implies the obviousness inquiry cannot consider that
the combination of the claims constituent elements was
obvious to try, the Supreme Court in KSR unambiguously
1803
discredited that holding); In re Fisher, 9/7/05, J. Rader,
dissenting); See also Reasonable expectation of success and
Obvious to try
- Product vs. process of making the product In re Ochai

(Torpharm, 7/23/03)
Pharma
Obviousness generally
- Chemical compounds - obviousness generally (In

re Cyclobenzaprine, 4/16/12 (claimed
therapeutically effective, extended-release
formulation held nonobvious contains an
excellent discussion of pharmacokinetics); Sanofi-
Synthelabo, 12/12/08 (enantiomers and salts);
Pfizer, 3/22/07 (pharmaceutical salt) [See other
OBVIOUSNESS sections; see also discussion of
the Order denying Pfizers petition for
rehearing en banc, in Pfizer v. Apotex, 3/22/07,
which is found in the master list of
OBVIOUSNESS cases, above]
- For chemical compounds, the structure of

the compound and its properties are
inseparable considerations in the
obviousness determination In re Sullivan,
In re Papesch (CCPA) (a chemical
compound and its properties are inseparable)
(Sanofi-Synthelabo, 12/12/08); See also
Prima facie case of obviousness and
rebuttal thereof Unexpected results
- Bioequivalence between immediate and

extended-release formulations to prove
obviousness? (In re Cyclobenzaprine,
4/16/12 (not applicable to facts of case,
1804
including where therapeutic effectiveness
was a claim limitation and the drug lacked a
known PK/PD relationship))
Purified isomers, stereoisomers from prior art mixtures
- Enantiomers patentability of enantiomers and

their salts over prior art racemate In re Adamson
(Sanofi-Synthelabo, 12/12/08 (substantially
separated enantiomer with its superior properties
was unpredictable and nonobvious for the same
reasons as in Forest Labs); Forest Labs, 9/5/07
(claimed enantiomer was nonobvious, based on
showing of unexpected benefits, and the prior art
was nonenabling, failing to teach how to separate
the enantiomer from the racemic mixture); Sanofi-
- Failure of the inventors and others to resolve

racemate based on the prior art and skill in
the art without undue experimentation
supported nonobviousness of the claimed
enantiomer (Forest Labs, 9/5/07)
- Stereoisomers generally
- Explicit teaching in the prior art is

unnecessary requiring an explicit teaching
to purify a claimed stereoisomer from a
prior art mixture in which it is the active
ingredient is precisely the sort of rigid
application of the TSM test criticized by
KSR (S.C.) (Aventis Pharma, 9/11/07)
Genus-species
- Genus-species see ANTICIPATION Pharma
1805
- Obviousness of species claim is dispositive
of obviousness of broader genus claim
(Aventis Pharma, 9/11/07)
Prima facie obviousness of structurally similar compounds,

and rebuttal thereof
- Ultimate obviousness determination is made in the

context of the Graham (S.C.) factors, with the
challenger having the ultimate burden of proving
invalidity by C&C evidence Pfizer (Otsuka,
5/7/12; Daiichi Sankyo, 9/9/10; Procter & Gamble,
5/13/09 (claimed positional isomer of a prior art
compound was not obvious where the art (of
bisphosphonates) was unpredictable); Sanofi-
Synthelabo, 12/12/08 (too much evidence of the
unpredictable and unusual properties of the
claimed enantiomer for the challenger to
overcome))
- For a chemical compound, a prima facie case of

obviousness requires structural similarity between
the claimed and prior art compounds, where the
prior art, as proved by combining references or
otherwise, also gives reason or motivation to make
the claimed compound In re Dillon (en banc), In
re Papesch (CCPA) (Otsuka, 5/7/12; Genetics
Institute, 8/23/11 (no structural obviousness shown
between DNA molecules encoding truncated
Factor VIII protein, where no reason was given for
modification; see also J. Dyk, dissenting); Daiichi
Sankyo, 9/9/10 (no motivation to select and
modify the chosen lead compounds, where other
prior art compounds not selected were more
potent); Altana Pharma, 5/14/09 (there was
motivation to combine prior art references to
1806
substitute a methoxy for a methyl group on the
pyridine ring of a prior art compound to make the
claimed compound); Procter & Gamble, 5/13/09
(there was no motivation from an unpredictable art
to make the claimed positional isomer of a prior art
compound); Sanofi-Synthelabo, 12/12/08
(establishing prima facie case shifts the burden to
the patentee of coming forward with evidence of
nonobviousness, which evidence may take
various forms, as relevant in the particular case);
Eisai, 7/21/08 (the prior art provided no motivation
to modify the lead compound selected to make
the claimed compound); Ortho-McNeil, 3/31/08
(no reason or motivation provided by prior art
references); Aventis Pharma, 9/11/07; Takeda,
6/28/07 (stating that [o]ur case law concerning
prima facie obviousness of structurally similar
compounds is well-established and that the test
is consistent with the legal principles enunciated
in KSR [S.C.]); Eli Lilly, 12/26/06)
- After KSR (S.C.), in determining the

patentability of new chemical compounds, it
remains necessary to identify some reason
that would have led a chemist to modify a
known compound in a particular manner to
establish prima facie obviousness of a new
claimed compound (Otsuka, 5/7/12;
Genetics Institute, 8/23/11 (prior art gave no
reason to modify DNA molecule encoding
truncated Factor VIII protein to make the
longer claimed DNA molecule; see also J.
Dyk, dissenting); Altana Pharma, 5/14/09;
Procter & Gamble, 5/13/09 (no reason given
in an unpredictable art to modify a known
positional isomer of the claimed compound);
Eisai, 7/21/08; Ortho-McNeil, 3/31/08 (no
reason to select route to make the claimed
1807
compound among several unpredictable
alternatives); Aventis Pharma, 9/11/07;
Takeda, 6/28/07)
- Such reasoning or motivation need

not be based on precise, and explicit,
teachings in the prior art of the
claimed compound, but can come
from any number of sources (Daiichi
Sankyo, 9/9/10; Altana Pharma,
5/14/09; Procter & Gamble, 5/13/09;
Eisai, 7/21/08), OR that the claimed
compound will have a particular
utility; it is sufficient to show that the
claimed and prior art compounds
possess a sufficiently close
(structural) relationship to create a
(rebuttable) expectation in light of the
totality of the prior art that the prior
art and claimed compounds will have
similar properties (Altana Pharma,
5/14/09; Procter & Gamble, 5/13/09
(stating the same rule as Eisai, and
that the prima facie case may be
shown by adequate support in the
prior art for the change in structure
In re Grabiak); Eisai, 7/21/08
(stating: In keeping with the flexible
nature of the obviousness inquiry
[under KSR (S.C.)], the requisite
motivation can come from any
number of sources and need not
necessarily be explicit in the art);
ALSO, the presumed expectation can
be rebutted by showing that the
claimed compound has unexpected
properties In re Dillon, In re Wilder
(CCPA) (Procter & Gamble, 5/13/09
1808
(unexpected results shown in addition
to no prima facie case); Aventis
Pharma, 9/11/07 (expectation not
rebutted)); See also Unexpected
results
- Utility disclosed for prior art

compounds? (Ortho-McNeil,
3/31/08 (IC case; no motivation
to make the claimed
compounds where the prior art
references disclosed limited
utility for disclosed
compounds))
- Prima facie case requires, in addition to

structural similarity between the claimed
and prior art compound(s), a showing of
adequate support in the prior art for the
change in structure In re Grabiak (Otsuka,
5/7/12; Genetics Institute, 8/23/11; Daiichi
Sankyo, 9/9/10 (no support in the prior art to
replace a strongly preferred lipophilic group
with a hydrophilic group (prior art taught
away, and change was based on hindsight),
citing similar facts in Eisai); Procter &
Gamble, 5/13/09 (no support in the prior art
to modify a bisphosphonate compound to
make its claimed positional isomer, where
the prior art was unpredictable from one
compound to the next); Eisai, 7/21/08 (no
support in the prior art to modify the
selected lead compound); Ortho-McNeil,
3/31/08 (no motivation to make the claimed
compound where there was no reason to
select (among several unpredictable
alternatives) the exact route that produced
the claimed compound as an intermediate;
1809
also, there was no motivation to stop at the
intermediate and test for properties far
afield from the purpose of the development
(diabetes vs. epilepsy)); Aventis Pharma,
9/11/07; Takeda, 6/28/07)
- Generalization should be avoided

insofar as specific chemical structures
are alleged to be prima facie obvious
one from the other In re Grabiak
(Genetics Institute, 8/23/11; Takeda,
6/28/07 (prior art as a whole
considered in determining there was
no prima facie case))
- Structural modification of prior art

compound(s) routine? (Procter &
Gamble, 5/13/09 (no credible
evidence (expert testimony) was
provided that the structural
modification in the claimed
compound from the prior art
compound would have been carried
out as part of routine testing))
- Purified form of prior art mixture similar

analysis as above applied; explicit teaching
that ingredient should be concentrated or
purified is not required; purified form may
be patentable (thus rebutting the prima facie
case) for reasons including that was not
known that the claimed compound is present
in (or an active ingredient of) the mixture, or
the purified compound shows unexpected
properties, results; the purification method
also can be patentable (Aventis Pharma,
9/11/07)
1810
- Ordinarily, one expects a concentrated
or purified ingredient to retain the
same properties it exhibited in a
mixture, and for those properties to be
amplified when the ingredient is
concentrated or purified; isolation of
interesting compounds is a mainstay
of the chemists art, and if it is known
how to perform such an isolation,
doing so is likely the product not of
innovation but of ordinary skill and
common sense KSR (S.C.) (Sanofi-
Synthelabo, 12/12/08 (separated
enantiomer was patentable over its
prior art racemate for reasons
including that it unexpectedly
exhibited the rare property of
absolute stereoselectivity (in which
the claimed enantiomer provided all
of the antiplatelet activity and none of
the adverse neurotoxicity), and
separation using methods known in
the prior art was not reasonably
expected or enabling, as required
undue experimentation); Aventis
Pharma, 9/11/07 (specification taught
that stereoisomers can be separated
using conventional methods))
Structural similarity
- Adjacent homologs patentability of a

chemical compound does not depend only
on structural similarity; relevant properties
of a compound are also considered in the
obviousness determination; unexpected and
significant properties of claimed compounds
1811
may lead to nonobviousness In re Lalu, In
re Grabiak (Eli Lilly, 12/26/06)
- Homologs are presumptively obvious

over known compounds (In re Basell,
11/13/08 (later claimed homolog
ethylene was obvious over propylene
to render later claims unpatentable for
double patenting))
- Rebutting the presumed expectation

that structurally similar compounds
have similar properties, by pointing
out differences between the claimed
compound and homolog In re
Wilder (CCPA) (Takeda, 6/28/07
(presumption rebutted))
- Selecting a lead compound (or lead

compounds) in the prior art is there C&C
evidence of a motivation in the prior art for
a POS in the art (medicinal chemist) to
select and then modify a lead compound in
a way to achieve the claimed compound?
- Post-KSR, a prima facie case of

obviousness for a chemical compound
still, in general, begins with the
reasoned identification of a lead
compound (Otsuka, 5/7/12 (select
potent lead compounds to modify);
Unigene Labs, 8/25/11 (functional
and pharmaceutical properties of a
lead formulation in the prior art can
be more relevant than structure to
patented formulations the term
reference composition is thus more
appropriate than the term lead
1812
compound for a composition that the
infringer deliberately imitates);
Daiichi Sankyo, 9/9/10 (there was no
C&C evidence of a reason to select
the chosen lead compounds over more
potent prior art compounds); Altana
Pharma, 5/14/09; Procter & Gamble,
5/13/09 (not addressing selection of
lead compound question, since the
evidence showed no motivation to
modify the alleged lead compound to
make the claimed compound);
Takeda, 12/8/08 (attorney fees
awarded under the Hatch-Waxman
Act where the challenger failed to
provide any reason in its Paragraph
IV certification letter to identify a
prior art compound as the lead
compound, and thus did not make out
a prima facie case of obviousness
based on structural similarity between
the prior art and claimed compounds);
Eisai, 7/21/08 (no motivation to
modify the selected lead compound
only to drop the very feature, the
fluorinated substituent, that gave . . .
[the] advantageous property [of
lipophilicity]))
- Selecting a prior art compound as the

lead compound the prior art
would have motivated the POS in the
art (medicinal chemist) to select and
then modify the prior art lead
compound in a particular way to
arrive at the claimed compound, also
with a reasonable expectation that the
new compound would have similar or
1813
improved properties compared with
the old the motivation to select and
modify a lead compound need not be
explicit in the art (Otsuka, 5/7/12 (no
motivation to select and modify
structurally similar prior art
compounds as lead compounds to
make the claimed compound); Daiichi
Sankyo, 9/9/10 (there was no
motivation to select and modify the
chosen lead compounds, where other
prior art compounds were more
potent); Altana Pharma, 5/14/09;
Procter & Gamble, 5/13/09 (no
motivation); Sanofi-Synthelabo,
12/12/08 (no motivation to select and
modify a prior art racemate to obtain
its enantiomer, except in hindsight
based on knowing its superior
unexpected properties); Takeda,
12/8/08; Eisai, 7/21/08), OR did the
prior art teach away from selecting
the prior art compound as a lead
compound? - Yamanouchi (Ortho-
McNeil, 3/31/08 (no motivation for
experts selected prior art compound);
Takeda, 6/28/07 (taught away); Eli
Lilly, 12/26/06)
- Lead compound a compound

in the prior art that would be
most promising to modify in
order to improve upon its
activity and obtain a compound
with better activity; a lead
compound is a natural choice
for further development efforts
1814
Takeda, Altana (Otsuka,
5/7/12)
- Selecting the lead compound(s)

need to have useful properties
for motivation to select -
proving a reason to select a
compound as a lead compound
depends on not just structural
similarity, but also knowledge
in the art of the functional
properties and limitations of the
prior art compounds (e.g.,
activity and potency, adverse
effects such as toxicity) must
avoid hindsight bias, and rather
look at the state of the art at the
time the invention was made
(Otsuka, 5/7/12 (other more
potent prior art compounds
would have been viable lead
compounds, rather than the
prior art compounds the
defendants selected as lead
compounds; for another prior
art compound argued to be a
lead compound, the reference
failed to identify the
antipsychotic properties of the
claimed drug; another prior art
compound taught away from
the claimed drug, where the
prior art reference described
that the compound caused
severe side effects at low doses
and was found to be a failure);
Daiichi Sankyo, 9/9/10
(rejecting the selection of the
1815
closest prior art compounds
as lead compounds over more
potent compounds, stating: [I]t
is the possession of promising
useful properties in a lead
compound that motivates a
chemist to make structurally
similar compounds . . . Potent
and promising activity in the
prior art trumps mere structural
relationships))
- Expert testimony to support a

prior art compound being a lead
compound (Otsuka, 5/7/12
(expert testimony supporting
that defendants selected lead
compounds would not have
been lead compounds); Altana
Pharma, 5/14/09 (district
courts reliance on the
challengers expert over the
patentees was not clearly
erroneous); Takeda, 6/28/07)
- Need not necessarily select a

single lead compound, under
KSRs flexible obviousness
inquiry (Daiichi Sankyo, 9/9/10
(district court properly
permitted the selection of
multiple lead compounds);
Altana Pharma, 5/14/09
(district courts finding was not
clearly erroneous (in the PI
context) that a number of the
more potent compounds in a
prior art patent could have been
1816
selected as lead compounds,
including one compound that
was a natural choice for further
development, stating that to
the extent that Altana suggests
that the prior art must point to
only a single lead compound
for further development efforts,
that restrictive view of the lead
compound test would present a
rigid test similar to the [TSM]
test that the Supreme Court
explicitly rejected in KSR);
Eisai, 7/21/08 (noting the
district court did not rigidly
limit the obviousness
arguments by forcing the
selection of a single lead
compound))
- Patentees also selecting the

lead compound for further
development (Altana Pharma,
5/14/09)
- Relevance of prior art

compound(s) to the patent
examiner in determining a lead
compound (Altana Pharma,
5/14/09 (selection of lead
compound(s) from a prior art
patent was supported by the
examiners reliance on the
compounds during prosecution
in assessing patentability))
- Structural similarity = an established

structural relationship between a prior art
1817
compound and the claimed compound; close
or established structural relationships may
provide the requisite motivation or
suggestion to modify known compounds to
obtain new compounds; a known compound
may suggest its homolog, analog, or isomer
because such compounds often have similar
properties; however, must show that the
prior art would have suggested making the
specific molecular modifications necessary
to achieve the claimed invention In re
Deuel, In re Jones, Dillon, Grabiak, In re
Lalu (Otsuka, 5/7/12; Genetics Institute,
8/23/11 (no structural obviousness of DNA
sequences; see also J. Dyk, dissenting);
Procter & Gamble, 5/13/09 (no suggestion
provided by an unpredictable art to make the
claimed positional isomer of a known
compound); Sanofi-Synthelabo, 12/12/08
(separating the claimed substantially
separated enantiomer from its prior art
racemate was only obvious in hindsight once
its superior unexpected properties were
discovered); Aventis Pharma, 9/11/07;
Takeda, 6/28/07)
Patentability of a prior art composition based on the

discovery of a new use or property
- Patentability of a prior art composition based on

the discovery of a new use or property (Tyco
Healthcare, 6/22/11 (citing rule against
patentability)); See also Other obviousness issues
Inherency vs. obviousness; ANTICIPATION
Inherency Patentability of a known
composition, process
Patentability of combination formulation
1818
- Combination formulation patentable? (Novo
Nordisk, 6/18/13 (combination drug therapy was
obvious where alleged synergy was expected from
the prior art; see also J. Newman, dissenting);
Allergan, 5/1/13 (evidence of nonobviousness that
separate drugs could be administered at a lower
daily dose in a combination drug product while
maintaining the same efficacy was relevant to
method claims directed to the above feature, but
not to claims to the combination drug product
where there was a clear motivation in the prior art
to combine the drugs into a single composition for
achieving better patient compliance))
- Combination of prior art drugs in single

tablet patentable (Pozen, 9/28/12 (agreeing
with the district court that the prior art
would not have provided a POS in the art
with motivation to combine two prior art
drugs (sumatriptan and naproxen) in order to
benefit from longer lasting efficacy as
compared to when either agent is taken
alone))
- Combination formulation two ingredients

might be therapeutically effective when used
separately as part of an overall treatment
regimen, yet be incompatible or ineffective
when combined in a single solution
(Allergan, 5/19/11 (fact alone that two prior
art formulations were routinely prescribed
together did not establish that it would have
been obvious to combine the two in a single
formulation))
FDA submissions
1819
- FDA submission - evidence of reasonable
expectation of success, that invention would work
for intended purpose (Pfizer, 3/22/07)
In vitro data predictive of in vivo conditions?
- In vitro data predictive of in vivo conditions?

(Bayer Schering, 8/5/09 (in vitro dissolution data
in the prior art was not predictive of in vivo
conditions, where the claimed micronized, acid-
sensitive, unprotected drug tablet was found to
absorb in vivo, but degrade (isomerize) in vitro;
see also J. Newman, dissenting (not addressing the
data correlation issue relied on by the majority and
the district court); Abbott Labs, 10/21/08 (J.
Newman in vitro data was not predictive))
- In vitro data as the basis for safety in humans

(Alcon Research, 8/8/12 (rejecting the patentees
argument of no reasonable expectation of success
by the prior art which did not teach the drug was
safe for the human eye, where the patent in suit
relied only on in vitro data))
BPAI
(In re Watts, 1/15/04)
- BPAI must properly weigh prior art used in the

examiners rejection Lee, Young (In re Fulton, 12/2/04)
Claim-by-claim basis, dependent claims, broader/narrower claims
- Obviousness must be evaluated on claim-by-claim basis

Dystar (Meadwestvaco, 9/26/13 (evidence of secondary
considerations involved only fragrance-specific uses, but
the claims at issue were not fragrance-specific); Allergan,
5/19/11 (not evaluating obviousness on a claim-by-claim
1820
basis where the accused infringer stipulated to
infringement of all asserted claims of the related patents,
and thus the CAFC examined only the narrowest of the
claims, which were least vulnerable to the accused
infringers validity challenge); Aventis Pharma, 9/11/07
(dependent claims obvious where added limitations also
appeared almost verbatim in related prior art patents));
See also Harris, 1/17/13 (nonprecedential rejecting
obviousness arguments where the accused infringer
failed to prove by C&C evidence that additional
limitations in dependent claims were in the prior art)
- Dependent claims cannot be obvious if they depend from

a nonobvious claim Fritch (Comaper, 3/1/10 (granting
new trial based on inconsistent jury verdicts); Callaway,
8/14/09 (A broader independent claim cannot be
nonobvious where a dependent claim stemming from that
independent claim is invalid for obviousness); Ortho-
McNeil, 3/31/08 (dependent method of use claims are not
obvious when depend from a nonobvious compound
claim)); See also Astrazeneca, 10/30/13 (nonprecedential
n.2: broader claims are necessarily invalid where
narrower claims have been found to be obvious citing
Ormco)
103/ 102(g) prior art
(Aventis Pharma, 9/11/07)
- Enablement of prior art generally - See

ANTICIPATION Enablement of prior art
- Obviousness of a claimed apparatus or method the cited

prior art as a whole must enable one skilled in the art to
1821
make and use an apparatus or method Beckman
Instruments (In re Kao, 5/13/11 (the patentees experts
concerns that a prior art reference did not enable the
disclosed formulation fell short of establishing that the
reference was non-enabling); Martin, 8/20/10 (prior art
must teach a POS in the art to make an apparatus that
works for its intended purpose Beckman (supplemented
by expert testimony, if needed)); Therasense, 1/25/10
(prior art was enabling for claimed membraneless sensor)
5/25/11 (en banc)])
- Non-enablement does not preclude a finding of

obviousness (Amgen, 8/3/06 citing Amgen II)
- Individual prior art reference need not work, be

enabled, since it qualifies as prior art for whatever
is disclosed therein Amgen (In re Antor Media,
7/27/12 (applying rule in affirming obviousness
based on a combination of references, without
separately deciding the issue of enablement of one
of the references where the patentee failed to raise
in its appeal brief lack of enablement as it related
to obviousness, even though having done so as
related to anticipation); Allergan, 5/19/11; Martin,
8/20/10 (district court properly rejected argument
that a prior art machine did not work for its
intended purpose); Therasense, 1/25/10 [vacated
on 4/26/10, and reinstated by Therasense,
5/25/11 (en banc)]); See also Metso Minerals,
5/14/13 (nonprecedential a prior art reference
need not be fully functional to qualify as prior art
a prior art reference need not work and may even
be inoperative citing Martin); In re Clark,
5/20/11 (nonprecedential applying rule that
absent an obvious error on the face of the
reference, a reference is prior art for what it
discloses, even if the commercial system that the
1822
reference describes operated differently than
disclosed in the reference In re Garfinkel
(CCPA)); Duramed, 3/25/11 (nonprecedential no
requirement that a prior art teaching be
scientifically tested or guarantee success before
providing a reason to combine need only a
reasonable expectation of success); Purdue
Pharma, 6/3/10 (nonprecedential applying rule)
- Even if a reference discloses an inoperative

device, it is prior art for all that it teaches
Beckman (Martin, 8/20/10)
- Presumption exists that claimed and unclaimed

disclosures in prior art patent are enabled (Abbott Labs,
6/22/06); See also In re Tzipori, 10/15/08
(nonprecedential claims in prior art patent were
presumed enabled for obviousness, citing Amgen); See
also ANTICIPATION Enablement of prior art
- Prior art argued as enabling the invention also supports

obviousness (Sciele Pharma, 7/2/12 (rejecting the
distinction between enablement and obviousness, and
relying on the patentees arguments during prosecution
that the prior art references enabled the claimed invention
to support obviousness for vacating PI))
Expert testimony (e.g., expert report) to prove (non)obviousness
(Alexsam, 5/20/13 (expert testimony was needed to prove

obviousness of complex technology and motivation to combine
prior art references that were not easily understandable without
expert testimony); Synqor, 3/13/13 (battle of experts in
affirming lack of anticipation and nonobviousness, including
evidence supporting multiple secondary considerations);
Soverain Software, 1/22/13 (expert opinion on the ultimate
legal question of obviousness was unnecessary in order for the
1823
jury to decide the obviousness issue citing Nutrition 21 and
Avia Group); Osram Sylvania, 12/13/12 (reversing SJ of
obviousness, based on expert testimony and admissions
regarding unpredictability of the prior art); Pregis, 12/6/12
(expert testimony of motivation to combine the prior art);
Norgren, 11/14/12 (patentees experts admission during
deposition that there was only one difference between the
claimed invention and a prior art connector was substantial
evidence of obviousness); Outside the Box Innovations, 9/21/12
(district court abused discretion by excluding experts
testimony because he was not a lawyer); ActiveVideo
Networks, 8/24/12 (affirming the rejection of expert testimony
as conclusory and failing to explain reasons for combining the
prior art references); Meyer, 8/15/12 (expert testimony not
needed for prior art reference where the technology is easily
understandable); Kinetic Concepts, 8/13/12 (in a battle of
experts, the CAFC inferring from verdict that obviousness was
not shown by C&C evidence that the jury found the patentees
experts to be more credible and persuasive); Alcon Research,
8/8/12 (citing expert testimony supporting no reasonable
expectation of success); In re Cyclobenzaprine, 4/16/12 (need
for expert testimony relating to pharmacokinetics for proving
obviousness of pharmaceutical formulation); Celsis In Vitro,
1/9/12 (district courts weighing of expert credibility favored
nonobviousness at PI stage of case; also relying on the district
courts finding that the accused infringers experts did not
predict the results of the claimed method at the time of the
invention, nor did they show that other scientists had, as well as
the fact that [n]ot one of [the accused infringers] experts
testified to actually performing the claimed process or
documenting their alleged understanding before the time of the
invention, despite having the financial, scientific, and
professional incentive to do so; see also J. Gajarsa,
dissenting); Spectralytics, 6/13/11 (expert testimony regarding
teaching away from the claimed machine by a prior art machine
supported the jurys verdict of nonobviousness); Allergan,
5/19/11 (CAFC rejecting obviousness argument not supported
by expert testimony but instead only by attorney argument;
1824
also, the district court did not abuse its discretion in refusing to
consider in post-trial filings prior art references admitted into
evidence but not supported by expert testimony or otherwise
relied on at trial ); Wyers, 7/22/10 (not always necessary to
prove a motivation to combine prior art and, even if present,
will not necessarily create a genuine issue of material fact
KSR (S.C.)); Honeywell, 5/25/10 (the patentees unrebutted
expert testimony supported nonobviousness; see also J. Mayer,
dissenting); Hearing Components, 4/1/10 (expert testimony was
substantial evidence of nonobviousness); Power-One, 3/30/10
(affirming jury verdict of nonobviousness where the jury
credited the testimony of one partys expert over the other);
Comaper, 3/1/10 (lengthy expert testimony regarding prior art
devices supported obviousness); Therasense, 1/25/10 (patentee
failed to present any expert testimony to rebut expert testimony
of a motivation to combine the prior art) [vacated on 4/26/10,
and reinstated by Therasense, 5/25/11 (en banc)]; Perfect
Web, 12/2/09 (where the level of skill in the art was low, no
expert opinion was required to appreciate the potential value of
the invention to persons of such low skill); Amgen, 9/15/09
(expert testimony supported no reasonable expectation of
success for obviousness-type double patenting); Lucent,
9/11/09 (battle of the experts regarding a prior art reference
which was reasonably concluded by the jury and held not to
render software method claim obvious); Fresenius, 9/10/09
(substantial evidence in the form of expert testimony supported
jurys verdict of obviousness); Gemtron, 7/20/09 (expert
testimony regarding unexpected results of the claimed
refrigerator shelf was not contradicted by the specification);
Depuy Spine, 6/1/09 (the patentees experts admission was
insufficient to render a hypothetical claim obvious); Altana
Pharma, 5/14/09 (raised substantial question of obviousness to
deny PI); Procter & Gamble, 5/13/09 (proving the
unpredictability of bisphosphonate prior art); Cordis, 3/31/09
(uncontradicted expert testimony, including that the prior art
patents taught away from the claimed stent, supported the jurys
verdict of nonobviousness); Monolithic Power Systems, 3/5/09
(unrebutted expert testimony of obviousness); Rothman,
1825
2/13/09 (what expert thought of, or not, at the time of invention
has little relevance to whether invention would have been
obvious to a hypothetical POS in the art with knowledge of the
relevant prior art Amazon.com); Kinetic Concepts, 2/2/09
(affirming jury verdict of nonobviousness based on expert
testimony regarding the scope and content of the prior art);
Sd-Chemie, 1/30/09 (unrebutted expert testimony on SJ that
prior art reference necessarily disclosed claim limitation);
Sanofi-Synthelabo, 12/12/08 (battle of experts before finding
claimed enantiomer and its bisulfate salt nonobvious); Asyst
Techs., 10/10/08 (obviousness supported by admissions of the
patentees expert); CSIRO, 9/19/08 (emphasizing the
limitation-by-limitation analysis of each of the (independent
and dependent) claims compared to the prior art by the accused
infringers expert as the reason for disputed issues of material
fact and vacating SJ of nonobviousness; also because of
admissions by the patentees experts); Muniauction, 7/14/08
(patentees experts admission on cross examination that the
prior art disclosed the disputed claim step as construed by the
district court in part led to the CAFCs reversal of the district
courts obviousness judgment); Scanner Techs., 6/19/08
(obviousness established based on experts ultimate conclusion
and knowledge of the POS in the art regarding the prior art);
Innogenetics, 1/17/08 (vague and conclusory expert report
excluded because was insufficient to support jury finding of
obviousness; report lacked the necessary articulated reasoning
with some rational underpinning to support the legal conclusion
of obviousness In re Kahn, KSR (S.C.); expert is not the only
source for evidence of obviousness); Daiichi Sankyo, 9/12/07
(pharma); Pharmastem, 7/9/07; *Takeda, 6/28/07 (pharma);
Syntex, 5/18/05); See also Bennett Marine, 9/19/13
(nonprecedential accused infringers expert testimony, alone,
that each of the claim elements was present in the prior art was
not sufficient to prove obviousness citing rules from KSR
(S.C.) and Power-One); Allergan, 1/28/13 (nonprecedential
the district court for a number of reasons gave no weight to the
defendants expert regarding obviousness where the experts
credibility was flawed, and the court did not err by not
1826
reviewing the prior art independently of credible expert
testimony in a complex pharma case); Duramed, 3/25/11
(nonprecedential a person of extraordinary skill (i.e., an
expert) may opine on the knowledge of the hypothetical person
of ordinary skill; also, the experts testimony was not
conclusory, since he compared all of the claim elements with
the prior art); Applera, 3/25/10 (nonprecedential credibility of
one expert over another); Ortho-McNeil, 8/26/09
(nonprecedential vacating the district courts SJ of invalidity
based on uncontroverted expert testimony that the claimed
two-drug combination was not predictable and thus not
obvious to try despite the prior art disclosing the two drugs
together in a four-drug combination); Pivonka, 2/19/09
(nonprecedential patent claims to collapsible pet carrier in
interference were obvious based on unrebutted expert
testimony); Syngenta Seeds, 5/3/07 (nonprecedential; jury)
- Experts opinion on the legal conclusion of obviousness

in neither necessary nor controlling Avia Group
(Soverain Software, 1/22/13 (improper for the district
court to have removed obviousness from the jurys
consideration when there was expert examination and
cross-examination on obviousness by both parties))
Inconsistency between views of different examiners
(Syntex, 5/18/05)
Inherency vs. obviousness
- Obviousness is not subsumed by inherency (Cohesive

Techs., 10/7/08; Aventis Pharma, 5/14/08)
- Proof of inherent anticipation is not the same as

proof of obviousness thus, does not follow that
every technically anticipated invention would have
1827
been obvious (Cohesive Techs., 10/7/08); See also
In re POD-NERS, 7/10/09 (nonprecedential
relying on a non-prior art reference to interpret a
prior art reference for obviousness)
- Discovery of an inherent property of a prior art

product (or process) does not make the product (or
process) patentable (Allergan, 5/1/13 (noting that
the challenger did not argue that the claimed
method of being able to reduce the daily dose of a
certain drug in a combination product, while
maintaining efficacy, was an inherent result of the
obvious combination product; see also n.1, and J.
Dyk , dissenting in part); Santarus, 9/4/12 (claimed
serum levels were inherent in the prior art and did
not render nonobvious an otherwise obvious
formulation citing In re Kao); Alcon Research,
8/8/12 (claim limitation of stabilizing
conjunctival mast cells other than restricting the
claims to certain drug concentrations did not
impose any additional requirement, because the
patent itself defined mast cell stabilization as a
property that was necessarily present at the
claimed concentrations citing In re Kubin); In re
Kao, 5/13/11 (obviousness of claimed process
based on the specification, which confirmed that
the claimed food effect was an inherent property
of oxymorphone itself, present both in controlled
release and immediate release formulations of the
drug); In re Kubin, 4/3/09 (claimed DNA molecule
encoding a known protein receptor was not
rendered nonobvious by the recited feature of
CD48 binding where such binding was a property
necessarily present in the receptor, citing cases));
See also ANTICIPATION Inherency
Patentability of a known composition, process
1828
Inventors concessions of obviousness
- Inventors concessions as evidence of obviousness

(CSIRO, 9/19/08 (admissions that claimed means-plus-
function elements were well-known in the prior art,
despite the alleged lack of corresponding structures in the
prior art references, supported obviousness); Erico Intl,
2/19/08 (inventors testimony regarding common cable
installation practices prior to the filing date showed the
reasonableness of combining the prior art references to
produce the claimed invention, for vacating PI);
Princeton Biochemicals, 6/9/05)
Printed matter
- Printed matter a new and unobvious functional

relationship between the printed matter and the structural
elements of the claimed invention is necessary for
nonobviousness In re Ngai (In re Morsa, 4/5/13 (n.3:
not addressing Ngai issue); In re Kao, 5/13/11 (informing
step reciting the unknown correlation between renal
impairment and bioavailability did not confer
patentability absent a functional relationship between the
informing and administering steps, where there was no
claim requirement that the dosage be adjusted in response
to the informing step following King (anticipation case)
as not limited to the anticipation context); See also In re
Xiao, 10/12/11 (nonprecedential affirming the BPAI
that claimed wild-card position labels on combination
lock constituted printed matter that could not be used to
distinguish the prior art, where the labels lacked a
functional relationship with the claimed lock, the
function of which turned solely on the physical alignment
of tumbler rings); In re Bryan, 3/31/09 (nonprecedential
different printed matter on game cards and board game
was not functionally related to the claimed structure, and
1829
the claimed game apparatus was not otherwise
structurally different from the prior art)
- Product not patentable when only add a new

instruction sheet to the product (In re Kao, 5/13/11
(informing step did not render claimed method
patentable); In re Ngai, 5/13/04 (claimed product
anticipated, stating that the printed matter in no
way depends on the kit, and the kit does not
depend on the printed matter); See also
ANTICIPATION Printed matter
- Printed matter cannot impart patentability to the

extent it is useful and intelligible only to the
human mind In re Lowry (In re Bryan, 3/31/09
(nonprecedential)); See also In re Xiao, 10/12/11
(nonprecedential alternative formulation for
expressing the functional relationship standard)
Product vs. process of making product
(Torpharm, 7/23/03 (citing In re Ochai))
- Method for making a product is not relevant to the

patentability of the claimed product (In re Kubin, 4/3/09
(difference in method of cloning and isolating a
polynucleotide was not relevant to the patentability of the
polynucleotide))
Process of making product of process public > 1 year before

filing date
(Torpharm, 7/23/03)
1830
Ranges
- Ranges within prior art ranges, overlapping ranges In

re Peterson (Santarus, 9/4/12; In re Applied Materials,
8/29/12 (affirming the BPAIs decision of obviousness
based on overlapping ranges citing In re Peterson);
Alcon Research, 8/8/12 (claim invalid where the prior art
discloses a portion of the claimed range); In re Kao,
5/13/11 (remanding for the BPAI to determine whether
overlapping dissolution ranges between the claimed and
prior art formulations based on any correlation of the
ranges measured by different dissolution methods);
Ricoh, 12/23/08; Daiichi Sankyo, 9/12/07 (n. 4); Pfizer,
3/22/07; Medichem, 2/3/06 ( 291 action; interference-
in-fact under two-way test); See also Prima facie case of
obviousness and rebuttal thereof - Unexpected results -
Ranges)
- Claims are (rebuttably) presumed obvious when

the only difference from the prior art is an
overlapping range (Ricoh, 12/23/08)
Simultaneous, independent invention as (secondary) evidence of

obviousness
(Martin, 8/20/10 (relying on a competitors bundle breaking

machine made shortly after the invention date as evidence of
obviousness); Syntex, 5/18/05 (contemporaneous teachings of
the invention))
- Independently made, simultaneous inventions, made

within a comparatively short space of time are persuasive
evidence that the claimed apparatus was the product only
of ordinary mechanical or engineering skill Concrete
Applicances (S.C.) (Martin, 8/20/10 (adding that because
of interference practice under Section 135, simultaneous
inventions by two or more inventors working
1831
independently may or may not be an indication of
obviousness when considered in light of all the
circumstances))
- In some rare instances, the secondary

consideration of simultaneous invention might also
supply indicia of obviousness Ecolochem
(Martin, 8/20/10)
- Though not determinative of statutory

obviousness, simultaneous invention is strong
evidence of what constitutes the level of ordinary
skill in the art Ecolochem (Martin, 8/20/10
(district court correctly relied on simultaneous
invention where other similar machines were used
shortly before the invention date))
Terminal disclaimer
- Filing of terminal disclaimer is not an admission that a

later-filed invention is obvious (Motionless Keyboard,
5/29/07)
E. INDEFINITENESS
(Ibormeith IP, 10/22/13 (inadequate algorithm was disclosed for term

computational means); TecSec, 10/2/13; Meadwestvaco, 9/26/13;
3M Innovative, 8/6/13 (rejecting argument that term ribbon was
indefinite without limiting the term to a specified width); Teva,
7/26/13 (claims held indefinite in view of inconsistent statements
made during prosecution which were unable to be reconciled by the
PH or specification or expert testimony); Biosig Instruments, 4/26/13
(reversing the district courts decision of indefiniteness for term
spaced relationship where term was definite to a skilled artisan
based on intrinsic evidence (the claim language (including functional
language), specification and figures, and an expert (inventor)
1832
declaration with testing results submitted during reexam), as well as
extrinsic evidence; the district courts objections to the lack of
disclosure in the specification to support claim scope related to
whether there was adequate written description and enablement, and
not claim definiteness; see also J. Schall, concurring would have
applied a more limited analysis, not relying on the functional claim
language of EMG removal to determine the definiteness of the
spaced relationship limitation, which issue was not before the court
on appeal); Function Media, 2/13/13 (no corresponding structure,
algorithm for computer-implemented means-plus-function claim term
means for transmitting); Deere, 12/4/12 (affirming that relative
claim terms substantially planar and easily washed off were not
indefinite); ePlus, 11/21/12 (computer-implemented means-plus-
function system claims held indefinite where there was no
corresponding structure, algorithm disclosed for means for
processing limitation); Noah Systems, 4/9/12 (computer-
implemented means-plus-function claims reciting multiple identifiable
functions were held indefinite where some of the functions were not
supported by an algorithm in the specification, and expert testimony
could not be relied on where no algorithm was disclosed); Ergo
Licensing, 3/26/12 (computer-implemented claims were held
indefinite where no corresponding structure for the claimed control
means by disclosure of an unknown structure control device in the
specification -- and even if the control device was treated as a
general purpose computer, the claims were still indefinite because
there was no disclosure in the specification of an algorithm; see also J.
Newman, dissenting); HTC, 1/30/12; Dealertrack, 1/20/12 (computer-
implemented means-plus-function claims held invalid as indefinite
where no corresponding structure, algorithm was disclosed for
function added in dependent claims); Typhoon Touch, 11/4/11
(reversing invalidity judgment where the specification sufficiently
described in prose an algorithm corresponding to the claimed function
to be implemented by a computer programmer); IGT, 10/6/11 (term
predefined had a plain and ordinary meaning and thus was not
insolubly ambiguous ); In re Aoyama, 8/29/11 (means-plus-function
claims held indefinite where insufficient algorithm structure disclosed
in the specification); Star Scientific, 8/26/11 (claim term controlled
environment not insolubly ambiguous, based on the understanding of
1833
a POS in the art; see also J. Dyk, dissenting); Inventio, 6/15/11
(means-plus-function claims); Wellman, 4/29/11 (claims not
indefinite, where person skilled in the art at the time of filing would
have consulted well-known industry standards for sample conditions
and testing parameters for measuring the claimed temperature term);
Rembrandt, 4/18/11 (genuine dispute whether means plus function
claims were invalid based on sufficiency of algorithm disclosure, and
improperly claiming an apparatus and method in the same claim); In
re Katz Patent Litigation, 2/18/11 (computer-based mean-plus-
function claims reciting specific function performed by a special
purpose computer held indefinite in the absence of an algorithm in the
specification, while claims reciting functions achieved by a disclosed
general purpose computer were not); Spansion, 12/21/10; Green Edge,
9/7/10 (term(s) relating to appearance (looks like) are not
necessarily indefinite if sufficiently defined in the specification -
Oakley); Funai, 9/1/10 (awkward claim language was not indefinite
claim terms are construed based on their purpose, implementing their
meaning as manifested in the specification and PH J. Learned
Hand); Telcordia Techs., 7/6/10 (means-plus-function claims not
indefinite; see also J. Prost, dissenting claims were invalid where no
clear link between the claimed function and the corresponding
structure); Haemonetics, 6/2/10 (remanding JMOL of no
indefiniteness in view of new CC); Honeywell, 5/25/10 (claim term
(local color display) was not indefinite based on a term
(perceptible) used in the district courts definition of the term which
was not in the claim); Hearing Components, 4/1/10 (word of degree
readily in readily installed and replaced by a user held not
indefinite); Power-One, 3/30/10 (term POL regulator was not
indefinite, based on the intrinsic evidence showing that such
regulators are well known devices whose features are understood by
those of ordinary skill in the power system art); Enzo Biochem,
3/26/10 (term not interfering substantially held not indefinite, based
on a dependent claim, specification and PH) [en banc review denied
on 5/26/10; J. Plager, dissenting on the question of indefiniteness,
comparing CAFC precedent to PTO policy on claim definiteness,
i.e., pre-issuance vs. post-issuance missed opportunity to support
the PTO in requiring more clarity in claim drafting]; Trading
Techs., 2/25/10; Source Search, 12/7/09 (claims were not indefinite
1834
for containing a subjective element); Ultimax Cement, 12/3/09
(directing the district court to enter SJ that claim formula and claim
covering over 5000 different compounds was not indefinite); Amgen,
9/15/09; In re Skvorecz, 9/3/09 (addressing the clarity and precision
requirement in the MPEP for compliance with the definiteness
requirement during examination); Blackboard, 7/27/09 (computer-
implemented means-plus-function claim held indefinite); Cordis,
3/31/09 (rejecting argument that claim as construed by the district
court was indefinite); Kinetic Concepts, 2/2/09; Net Moneyin,
10/20/08 (computer-implemented, means-plus-function claims were
indefinite where no corresponding structure disclosed); Technology
Licensing, 10/10/08 (means-plus-function claims were definite where
a black box shown in the specification was adequate corresponding
structure, as supported by inventor testimony); Praxair, 9/29/08
(indefiniteness is a matter of claim construction); Star Scientific,
8/25/08 (word of degree (anaerobic condition) not indefinite);
Finisar, 4/18/08 (computer-implemented means-plus-function claim);
MEC, 4/1/08 (claims not indefinite for mixing distinct classes of
patentable subject matter); Aristocrat Techs., 3/28/08 (computer-
implemented means-plus-function claim held indefinite); Halliburton,
1/25/08; Allvoice Computing, 10/12/07; In re Nuijten, 9/20/07;
Young, 6/27/07 (near); Biomedino, 6/18/07; Aero Products,
10/2/06; Xerox, 6/8/06; Energizer Holdings, 1/25/06; IPXL Holdings,
11/21/05; Marley Mouldings, 8/8/05; Datamize, 8/5/05; Home Depot,
6/16/05; SmithKline, 4/8/05; Howmedica, 3/28/05; Glaxo, 7/27/04;
Metabolite Labs, 6/8/04; Bancorp, 3/1/04; Novo, 12/5/03; Utah
Products, 12/4/03; Geneva, 11/21/03; Medical Instr., 9/22/03;
Honeywell, 8/26/03; BJ Services, 8/6/03; Intellectual Property Devel.,
7/21/03)
Definiteness requirement 35 USC 112, second paragraph
- The specification shall conclude with one or more

claims particularly pointing out and distinctly claiming
the subject matter which the applicant regards as his
invention 35 USC 112, second paragraph
1835
Generally
- The definiteness requirement is set forth in 35 USC

112, 2: The specification shall conclude with one or
more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards
as his invention. (Teva, 7/26/13; Biosig Instruments,
4/26/13; Function Media, 2/13/13; Typhoon Touch,
11/4/11; Wellman, 4/29/11; In re Katz Patent Litigation,
2/18/11; Hearing Components, 4/1/10; Power-One,
3/30/10; Trading Techs., 2/25/10; Ultimax Cement,
12/3/09; Amgen, 9/15/09; Praxair, 9/29/08; Star
Scientific, 8/25/08; MEC, 4/1/08; Halliburton, 1/25/08;
Allvoice Computing, 10/12/07); See also Juxtacomm-
Texas Software, 9/30/13 (nonprecedential affirming (in
one paragraph of two paragraph opinion) SJ of invalidity
based on Section 112, second paragraph (indefiniteness),
stating that [t]he language of the claims controls their
construction, and the invention set forth in the claims is
not what the patentee regarded as his invention.
quoting Allen Engg)
- Indefiniteness requires a determination whether

those skilled in the art would understand what is
claimed Enzo Biochem (Wellman, 4/29/11;
Spansion, 12/21/10 (definiteness was supported by
both the intrinsic and extrinsic (expert testimony)
evidence))
- A claim is considered indefinite if it does not

reasonably apprise those skilled in the art of its
scope IPXL Holdings (Biosig Instruments,
4/26/13; Spansion, 12/21/10 (claim was as precise
as needed for definiteness); Hearing Components,
4/1/10; Trading Techs., 2/25/10; Ultimax Cement,
12/3/09; Amgen, 9/15/09; Praxair, 9/29/08
(referring to the public notice function of the
specification and claims); MEC, 4/1/08)
1836
- Absolute clarity is not required to find claim term
definite the CAFC does not impose a lofty
standard in indefiniteness cases Medical Instr.
(Biosig Instruments, 4/26/13 (claims need not be
plain on their face to avoid indefiniteness); Star
Scientific, 8/26/11; Wellman, 4/29/11 (exacting
standard for proving invalidity); Haemonetics,
6/2/10 (exacting standard for proving claim
invalid); In re Skvorecz, 9/3/09 (citing the MPEP
for rules that 1) the focus during examination is
whether the claim meets the threshold
requirements of clarity and precision, not
whether more suitable language or modes of
expression are available, and 2) Some latitude in
the manner of expression and the aptness of terms
should be permitted even though the claim
language is not as precise as the examiner might
desire); Finisar, 4/18/08 (means-plus-function
claim elements indefinite where vague and without
the necessary corresponding structure in the
specification)); See also Accentra, 1/4/13
(nonprecedential applying rule)
- Statutory requirement of particularity and

distinctness in claims is met only when the claims
clearly distinguish what is claimed from what went
before in the art and clearly circumscribe what is
foreclosed from future enterprise United Carbon
(S.C.) (Wellman, 4/29/11; Spansion, 12/21/10;
Trading Techs., 2/25/10; Source Search, 12/7/09
(citing rule with insolubly ambiguous
requirement for indefiniteness); Halliburton,
1/25/08); See also In re Hartman, 3/8/13
(nonpredecential affirming indefiniteness
rejections against pro se applicant based on rule,
where (method) claims were not written correctly,
1837
e.g., were written in narrative form, and not in
accordance with statutory requirements)
Claim not amenable to construction or insolubly ambiguous is

indefinite
- Only claims not amenable to construction or insolubly

ambiguous are invalid as indefinite (3M Innovative,
8/6/13 (rejecting argument for indefiniteness of term
ribbon in the absence of a width limitation, because the
ordinary usage of the term as supported by the patent
meant a strip of film); Teva, 7/26/13; Biosig
Instruments, 4/26/13 (term spaced relationship was not
insolubly ambiguous where a skilled artisan would find
the boundaries of the claim in the intrinsic evidence (the
claim language (including functional language in
whereby clause), the specification and figures), which
disclosed inherent parameters to define the term); Deere,
12/4/12 (relative claim terms were not indefinite); IGT,
10/6/11 (term predefined had a plain and ordinary
meaning and thus was not insolubly ambiguous based on
the patentees statements during the PH regarding the
term that did not rise to the level of a disclaimer or
lexicography); Star Scientific, 8/26/11; CBT Flint
Partners, 8/10/11 (claim not indefinite where error was
correctable based on the specification); Wellman, 4/29/11
(claims need not be plain of their face but must only
be amenable to construction); Haemonetics, 6/2/10;
Honeywell, 5/25/10; Hearing Components, 4/1/10;
Power-One, 3/30/10 (term POL regulator was not
indefinite where such regulators were well known in the
power system art); Trading Techs., 2/25/10 (term as
construed by the district court, and as understood by the
infringers expert, was not indefinite where an artisan of
ordinary skill would not find the term insolubly
ambiguous); Source Search, 12/7/09; Ultimax Cement,
12/3/09 (claim to a formula containing over 5000
1838
possible combinations was not necessarily ambiguous if
it sufficiently notifies the public of the scope of the
claims); Kinetic Concepts, 2/2/09 (not shown that a POS
in the art would be unable to ascertain the meaning of the
disputed term); Praxair, 9/29/08 (disputed claim term
(port body) was adequately explained by the
specification, and thus definite); Star Scientific, 8/25/08;
U. Texas, 7/24/08 (n.4); MEC, 4/1/08; Halliburton,
1/25/08 (claims indefinite; patentee proposed insolubly
ambiguous, three-part definition for term fragile gel);
and no narrowing construction can be properly adopted
(Praxair, 9/29/08; U. Texas, 7/24/08 (n.4); MEC, 4/1/08);
HOWEVER, the definiteness requirement does not
require absolute clarity (Star Scientific, 8/26/11;
Wellman, 4/29/11 (claims need not be plain on their
face); Trading Techs., 2/25/10; Source Search, 12/7/09;
Praxair, 9/29/08 (holding that the disputed claim term
(port body) was adequately explained by the
specification and thus definite despite the specification
not being a model of clarity); In re Nuijten, 9/20/07
(n.3, whether claim covers a process or a machine);
Young, 6/27/07; Central Admixture Pharmacy Services,
4/3/07; Aero Products, 10/2/06; Xerox, 6/8/06; Energizer
Holdings, 1/25/06; Invitrogen, 10/5/05; Marley
Mouldings, 8/8/05; Datamize, 8/5/05; Bancorp, 3/1/04;
Novo, 12/5/03; Honeywell, 8/26/03); See also Accentra,
1/4/13 (nonprecedential reversing on indefiniteness
which the district court based on an incorrect claim
construction); Purechoice, 6/1/09 (nonprecedential
claim terms added during reexamination (not appearing
in the specification) were identical in meaning and also
insolubly ambiguous based on the limited construction of
another claim term); Fargo Electronics, 6/27/08
(nonprecedential claims containing an error held
indefinite because absent correction (and which claims
were not correctable under Novo Indus.), the claims
could not be construed); See also CORRECTION OF
PATENTS Correction by the district court
1839
- Merely claiming broadly does not render a claim
insolubly ambiguous, nor does it prevent the public
from understanding the scope of the patent, i.e.,
breadth is not indefiniteness In re Gardner
(Biosig Instruments, 4/26/13 (the district courts
objections were relevant to written description and
enablement, and not claim definiteness where
inherent parameters were set forth in the intrinsic
evidence for determining boundaries of claim);
Ultimax Cement, 12/3/09)
- Adequate guidance, general guideline(s) and

description only need be provided by the
specification for definiteness (Deere, 12/4/12
(relative terms were supported by the
specification); Wellman, 4/29/11 (well-known
industry standards need not be repeated in the
patent); Power-One, 3/30/10 (terms near and
adapted to were definite based on the
specification, including the figures); Enzo
Biochem, 3/26/10 (specification provided
examples and criteria for selecting the claimed
linkage groups); Amgen, 9/15/09; In re Skvorecz,
9/3/09 (citing requirements in MPEP); Halliburton,
1/25/08 (figures failed to distinguish invention
from the prior art; cites cases where claims
definite); Young, 6/27/07; Xerox, 6/8/06)
- Depends on whether one skilled in the art

would understand what is claimed, i.e., the
bounds of the claim based on the claim
language in light of specification (and PH),
at the time of filing Miles Labs, Exxon
Research (Typhoon Touch, 11/4/11; IGT,
10/6/11; Star Scientific, 8/26/11 (term
controlled environment fell within the
bounds of ordinary skill in the art, where
1840
tobacco curing variables were well known in
the tobacco industry; see also J. Dyk,
dissenting); Wellman, 4/29/11 (inventor
need not explain every detail because the
patent is read by those skilled in the art);
Spansion, 12/21/10 (claims definite where
the specification described both the problem
and solution for relieving mechanical stress
by adding a compliant layer); Funai, 9/1/10
(ungainly, awkward claim was not indefinite
where would have been understood by one
skilled in the art based on the specification
and PH); Haemonetics, 6/2/10; Hearing
Components, 4/1/10; Power-One, 3/30/10;
Enzo Biochem, 3/26/10; Source Search,
12/7/09; Ultimax Cement, 12/3/09; Amgen,
9/15/09 (claim definiteness was supported
by expert testimony that an ordinarily skilled
artisan who possessed prior art EPO or the
teachings in the specification would have
knowingly been within the scope of the
claimed human EPO without knowing its
actual amino acid sequence length; also,
source limitations in product-by-process
claims that gave EPO novel structural
features over prior art EPO did not render
the claims indefinite, stating that the
process limitation [in a product-by-process
claim] embodies the difficult-to-describe
distinctions that render the product
patentable and thus to call the process
limitation indefinite in this situation would
defeat one of the purposes of product-by-
process claims, namely permitting product-
by-process claims reciting new products
lacking physical description); In re
Skvorecz, 9/3/09 (citing MPEP); Kinetic
Concepts, 2/2/09 (inventor declaration
1841
testimony supported definiteness); Praxair,
9/29/08; Halliburton, 1/25/08 (indefinite
when skilled artisan could not discern the
boundaries of the claims based on the claim
language, specification, PH, and the
artisans knowledge of the relevant art area);
Allvoice Computing, 10/12/07 (means plus
function claims); Young, 6/27/07; Energizer
Holdings, 1/25/06; Invitrogen, 10/5/05;
Marley Mouldings, 8/8/05; Howmedica,
3/28/05); See also Dow Chemical, 1/24/12
(nonprecedential noting expert testimony
regarding what one of ordinary skill in the
art would know from reading the claims and
patent citing Exxon Research)
- For definiteness, the boundaries of the

claim, as construed by the court, must
be discernible to a skilled artisan
based on the language of the claim,
the specification, and the PH, as well
as the artisans knowledge of the
relevant field of art Halliburton
(Teva, 7/26/13 (claims held indefinite
where two prosecution statements
directly contradicted each other and
rendered the ambiguity insoluble, and
the specification did not resolve the
ambiguity); Wellman, 4/29/11 (claims
definite where a discernable boundary
between amorphous and crystalline
PET material); Funai, 9/1/10; Power-
One, 3/30/10 (term POL regulator
was not indefinite where such
regulators were well known devices
whose locations and functions relative
to other components in a power
system were understood by those of
1842
ordinary skill in the art)); See also
Ernie Ball, 1/24/13 (nonprecedential
CAFC sua sponte holding the claims
indefinite (Section 112 invalidity was
asserted only generally) where scope
not discernible in light of the intrinsic
evidence)
- Plain language of the claim

controls (IGT, 10/6/11 (term
predefined was not insolubly
ambiguous where term has a
well-known definition))
- Claim definiteness is analyzed not in

a vacuum, but always in light of the
teachings of the prior art and of the
particular disclosure as interpreted by
the POS in the art Energizer
Holdings (Ultimax Cement, 12/3/09
(obvious claim error was correctable
during litigation))
- Even if a claim terms definition can

be reduced to words (i.e., can be
construed), the claim is still indefinite
if a POS in the art cannot translate the
definition into meaningfully precise
claim scope (Meadwestvaco, 9/26/13
(n.8: district courts reliance on
proposition the claims were amenable
to construction because the parties
had stipulated to their meaning was
not an accurate statement of law on
indefiniteness, based on the above
rule - citing Halliburton); Biosig
Instruments, 4/26/13; Honeywell,
5/25/10 (the district courts use of the
1843
term perceptible in the definition of
the disputed claim term local color
display was not indefinite); Kinetic
Concepts, 2/2/09; Halliburton,
1/25/08 (patentee proposed a three-
part definition for term fragile gel)
- Level of skill of the POS in the art

determined first before reviewing
the bounds of the claim in light of the
specification, must first determine the
level of skill assigned to a POS in the
art essential to administering the
definiteness test (Allvoice
Computing, 10/12/07 (level of skill
ascertained in other software patent
cases was relevant; expert testimony
also determinative; accused infringer
did not dispute definition))
- POS in the art is also a person

or ordinary creativity, not an
automaton KSR (S.C.)
(Source Search, 12/7/09
(concluding that a skilled
artisan would know what a
standard item is, since the
CAFC measures indefiniteness
according to the objective
measure that recognizes
artisans of ordinary skill are not
mindless automatons KSR
(S.C.)); Allvoice Computing,
10/12/07 (once an
understanding of the proper
parameters of a claim, an
artisan of ordinary skill would
understand the bounds of the
1844
claim when read in light of the
specification))
- Software cases algorithms in

the specification need only
disclose adequate defining
structure to render the bounds
of the claim understandable to
one of ordinary skill (Allvoice
Computing, 10/12/07)
- Detailed description must convey that

the patentee invented what is claimed,
and give notice to the public of the
limits of the invention (Biosig
Instruments, 4/26/13 (citing
Halliburton); Halliburton, 1/25/08;
Glaxo, 7/27/04)
- When claims lack clarity to ascertain

scope, look to the written description
and PH, and also extrinsic evidence
(e.g., expert testimony) (Spansion,
12/21/10; Allvoice Computing,
10/12/07 (expert testimony);
Datamize, 8/5/05)
- Extrinsic evidence for whether

claim would have been
understandable to one skilled in
the art may be used when
given the appropriate weight by
the trial court (Spansion,
12/21/10 (experts admission
that he was able to conduct a
noninfringement analysis based
on the specification supported
definiteness); Allvoice
1845
Computing, 10/12/07
(uncontradicted expert
declaration testimony was
determinative); Datamize,
8/5/05; Bancorp, 3/1/04)
- PH also considered (Biosig

Instruments, 4/26/13 (relying
on expert declaration submitted
during reexam); Enzo Biochem,
3/26/10; Allvoice Computing,
10/12/07 (district court erred by
holding indefiniteness based on
narrow claim construction,
which was based on too narrow
of an interpretation of the PH);
Datamize, 8/5/05; Howmedica,
3/28/05)
- PH of one patent is
relevant to scope of
common term in second
patent stemming from
same parent application -
Microsoft (Datamize,
8/5/05)
Prior art effect when determining definiteness
- Prior art effect when determining definiteness -

intrinsic evidence provided guidance on the
meaning of disputed claim term, vs. use of vague
claim language to overcome prior art, when
nothing in the specification or prosecution history
indicates scope of claim, e.g., Amgen v. Chugai
(about) (Biosig Instruments, 4/26/13
(distinguishing and rejecting argument based on
1846
Halliburton that claims were indefinite, where the
claim language provided inherent parameters via
functional language and the skilled artisan could
determine through tests the boundaries of the term
spaced relationship); Halliburton, 1/25/08
(fragile gel); Young, 6/27/07 (term about not
insolubly ambiguous))
- Claims unclear and thus indefinite,

especially when close prior art Amgen v.
Chugai (Halliburton, 1/25/08 (figures failed
to distinguish the claimed fragile gel from
the prior art); Young, 6/27/07)
- Evaluation of a claims definiteness includes

whether the patent expressly or at least
clearly differentiates itself from specific
prior art an important consideration
because a POS in the art in attempting to
define a claim term is likely to conclude that
the definition does not encompass that
which is expressly distinguished as prior art
(Deere, 12/4/12 (relative term substantially
planar adequately distinguished the claimed
rotary mower from prior art); Spansion,
12/21/10 (PH clearly differentiated claimed
from unclaimed movement to render claim
definite); Halliburton, 1/25/08 (rejecting the
patentees argument that whether the prior
art is covered by the claim as construed is
properly addressed in validity challenges
such as anticipation and obviousness))
- Claim also can be definite and yet

read on the prior art (Halliburton,
1/25/08)
1847
- Figures provided a standard for measuring
the meaning of disputed claim term (Power-
One, 3/30/10 (near); Young, 6/27/07
(near))
Claim not indefinite because difficult to construe
- Claim not indefinite merely because it is difficult

to construe if the claim can be construed with
reasonable effort, not indefinite (Star Scientific,
8/26/11; Wellman, 4/29/11 (adding that the CAFC
protect[s] the inventive contribution of patentees,
even when the drafting of their patents has been
less than ideal - Exxon); Honeywell, 5/25/10;
Power-One, 3/30/10; Trading Techs., 2/25/10
(claim not indefinite where the district courts
construction correctly set objective boundaries by
distinguishing the invention from prior art
systems); Source Search, 12/7/09; Kinetic
Concepts, 2/2/09; Praxair, 9/29/08; Star Scientific,
8/25/08; Halliburton, 1/25/08 (exacting standard
for proving indefiniteness because of the difficult
task that claim construction often poses, over
which expert witnesses, trial courts, and even the
judges of this court may disagree); Aero Products,
10/2/06; Xerox, 6/8/06; Energizer Holdings,
1/25/06; Bancorp, 3/1/04); See also Dow
Chemical, 1/24/12 (nonprecedential claims were
not indefinite where one of ordinary skill in the art
would know what measurement units to use -
citing Exxon Research)
- Claims can be no more precise than the

knowledge in the field permits, particularly
in fields of new and evolving technology
Hybritech (Pharmastem, 7/9/07 (dissent, J.
Newman))
1848
- Claim not indefinite because task may be
formidable and the conclusion (like claim
construction) is one over which reasonable
persons will disagree (Biosig Instruments,
4/26/13; Star Scientific, 8/26/11; Wellman,
4/29/11; Haemonetics, 6/2/10; Honeywell,
5/25/10; Power-One, 3/30/10; Source
Search, 12/7/09; Kinetic Concepts, 2/2/09;
Praxair, 9/29/08; U. Texas, 7/24/08 (n.4);
Halliburton, 1/25/08; Aero Products,
10/2/06; Xerox, 6/8/06); See also Dow
Chemical, 1/24/12 (nonprecedential)
- Claims where the same term at different

portions of the claim has a different meaning
depending on the context of the terms use
are not indefinite (MEC, 4/1/08); See also
CLAIM CONSTRUCTION Claim term
meaning is the same for all claims, related
patents
- Definiteness of claim terms depends on

whether those terms can be given any
reasonable meaning (Spansion, 12/21/10
(interpreting term movable in terms of
appreciable relief of mechanical stress was
as precise as needed for claim definiteness);
Power-One, 3/30/10 (terms near and
adapted to used in the district courts
construction of the claim term regulator
when taken in context of the entire patent
provided a sufficiently reasonable meaning
to one skilled in the art and thus adequately
defined the scope of the claims); Ultimax
Cement, 12/3/09 (citing Young); Young,
6/27/07); See also Purechoice, 6/1/09
(nonprecedential claim having terms
1849
requiring different meanings could not be
read on the preferred embodiment, and thus
was indefinite)
- Reduction of the meaning of a claim

term into words is not dispositive of
whether the term is definite; and if
reasonable efforts at claim
construction result in a definition that
does not provide sufficient
particularity and clarity to inform
skilled artisans of the bounds of the
claim, the claim is insolubly
ambiguous and invalid for
indefiniteness Halliburton (3M
Innovative, 8/6/13 (rejecting
argument for indefiniteness of term
ribbon without including width
limitation, because ordinary usage of
the term comported with its use in the
patent as meaning simply a strip of
film - citing Star Scientific); Biosig
Instruments, 4/26/13 (claim not
indefinite citing rule from Star
Scientific); Star Scientific, 8/25/08)
General principles of claim construction apply
- General principles of claim construction

apply - Phillips (en banc) consider
primarily the intrinsic evidence the claim
language, specification, and the PH (Biosig
Instruments, 4/26/13; Wellman, 4/29/11;
Spansion, 12/21/10; Power-One, 3/30/10;
Enzo Biochem, 3/26/10 (considering
dependent claims, specification and PH to
determine definiteness of term not
1850
interfering substantially); In re Skvorecz,
9/3/09 (citing MPEP); Praxair, 9/29/08
(extrinsic evidence in the form of expert
testimony supporting indefiniteness was
rejected because indefiniteness is a legal
rather than a factual question); Allvoice
Computing, 10/12/07; Young, 6/27/07) -
claim term considered in context of claim
(Enzo Biochem, 3/26/10 (consulting
dependent claim to determine definiteness of
term not interfering substantially in
independent claim); Allvoice Computing,
10/12/07; Energizer Holdings, 1/25/06;
Datamize, 8/5/05); See also Fargo
Electronics, 6/27/08 (nonprecedential the
district did not err by conducting a claim
construction analysis under Novo Indus.,
rather than standard principles of claim
construction, where the disputed claims
contained an error)
- Indefiniteness is a matter of claim

construction (Cordis, 3/31/09
(district courts construction of
wherein clause did not render claim
indefinite); Praxair, 9/29/08)
- Indefiniteness is inextricably
intertwined with claim construction
(Energizer Holdings, 1/25/06)
- Similar to claim construction, courts

may consider certain extrinsic
evidence in resolving disputes
regarding indefiniteness Exxon
(Biosig Instruments, 4/26/13)
1851
Claims with scienter requirement
- Claims requiring persons to have foreknowledge of

certain facts when practicing invention (Datamize,
8/5/05)
- Claim containing a term that is completely

dependent on a persons subjective opinion does
not suffice for definiteness (Enzo Biochem,
3/26/10; Source Search, 12/7/09 (stating the
Datamize rule, but rejecting the accused infringers
argument that the district courts construction of
the term goods or services as meaning
standard goods or services introduced a
subjective element rendering the claim indefinite);
Halliburton, 1/25/08 (citing Datamize))
Close calls of indefiniteness during litigation favor the patentee
(Bancorp, 3/1/04)
Lack of antecedent basis
- Antecedent basis rule of patent drafting (In re

Skvorecz, 9/3/09 (reversing the BPAIs rejection subject
to making on remand the BPAIs suggested amendment
of the separation to a separation); Energizer
Holdings, 1/25/06)
- Antecedent basis can be present by implication

(Halliburton, 1/25/08 (citing Energizer Holdings);
Energizer Holdings, 1/25/06)
- Well-settled rule that claims are not necessarily invalid

for lack of antecedent basis Energizer Holdings (In re
Skvorecz, 9/3/09 (citing the MPEP and holding that the
1852
disputed term did not require further antecedent basis,
for a person skilled in the field of the invention would
understand the claim when viewed in the context of the
specification); MEC, 4/1/08 (cited in support of holding
that claim was not indefinite where term had different
meaning from its antecedent))
- Claim without antecedent basis, whether has

reasonably ascertainable meaning, must be decided
in context (In re Skvorecz, 9/3/09; Halliburton,
1/25/08 (citing Energizer Holdings); Energizer
Holdings, 1/25/06)
Means-plus-function claims - 112, 6
- Claims are indefinite if there is no, or insufficient,

structure in the specification corresponding to the means-
plus-function limitation in the claims, as understood by
one skilled in the art (expert testimony) prevents pure
functional claiming C&C evidence required - Budde
(Ibormeith IP, 10/22/13 (affirming indefiniteness where
inadequate algorithm was disclosed corresponding to
computational means); TecSec, 10/2/13 (sufficient
corresponding structure in detailed software examples for
fourteen computer-implemented means-plus-function
limitations); Function Media, 2/13/13; ePlus, 11/21/12
(reversing the district court and holding computer-
implemented system claims indefinite where no
sufficient structure disclosed for means for processing
limitation, which was used to generate multiple purchase
orders but the specification did not explain what structure
or algorithm should be used to generate the purchase
orders); Noah Systems, 4/9/12 (claims indefinite where
less than all functions recited in a computer-
implemented, multiple-function claim were supported by
an algorithm treated like cases where no algorithm was
disclosed, rather than cases where insufficient algorithm
1853
was disclosed); Ergo Licensing, 3/26/12 (Section 112, 6
requires corresponding structure described in the
specification and equivalents thereof and not any device
capable of performing the function; see also J. Newman,
dissenting The courts foray into patent draftsmanship,
finding standard presentations now to be fatally deficient,
adds grievous unreliability to duly granted patents . . .The
courts new position simply taints thousands of
heretofore innocent patents, adding a further infusion of
unreliability to the patent grant.); HTC, 1/30/12;
Dealertrack, 1/20/12 (claims invalid where corresponding
structure, algorithm was not disclosed for additional
tracking function recited in dependent claims);
Typhoon Touch, 11/4/11; In re Aoyama, 8/29/11 (claims
held indefinite where flowchart in figure and description
were insufficient structure of algorithm; see also J.
Newman, dissenting); Inventio, 6/15/11 (remanding after
reversing the district courts claim construction of alleged
means limitations) [on 9/16/11, J. OMalley
dissented, without opinion, from the denial of petition
for rehearing en banc]; In re Katz Patent Litigation,
2/18/11 (computer-based claims held indefinite, applying
cases); Blackboard, 7/27/09 (claims held indefinite where
the specification did not describe the structure or process
that the access control manager used to perform the
recited function, but rather was simply an abstraction
describing the function, which was performed by some
undefined component of the system, and thus was
essentially a black box that performs the recited
function); Net Moneyin, 10/20/08 (bank computer
was not sufficient corresponding structure for a
component of the computer); Technology Licensing,
10/10/08 (black box in the specification was sufficient
corresponding structure, even though the details of its
inner circuitry were not disclosed); Finisar, 4/18/08
(claims indefinite when the specification failed to
disclose a specific algorithm as the corresponding
structure for computer-implemented means-plus-function
1854
claim elements Medical Instr., WMS Gaming);
Aristocrat Techs., 3/28/08 (claims indefinite when the
specification failed to disclose a specific algorithm as the
corresponding structure for computer-implemented
means-plus-function claim elements Medical Instr.,
WMS Gaming); Halliburton, 1/25/08 (citing Biomedino;
also n.7); Allvoice Computing, 10/12/07); quid pro quo
for the convenience of using 112, 6 (Biomedino,
6/18/07); See also Creative Integrated Sys., 6/3/13
(nonprecedential); Lighting Ballast Control, 1/2/13
(nonprecedential claims invalid as indefinite where
there was no corresponding structure in the specification
for term voltage source means) [en banc review was
granted on 3/15/13, and the opinion was vacated and
the appeal reinstated]; Aerotel, 7/26/11
(nonprecedential reversing the district courts invalidity
ruling where corresponding structure was disclosed in the
patent); Brown, 5/7/10 (nonprecedential affirming
indefiniteness of computer-implemented means claims
where no algorithm disclosed in the specification);
Encyclopaedia Britannica, 12/4/09 (nonprecedential
claims indefinite for not disclosing algorithm);
Southwestern Bell, 5/27/08 (nonprecedential claim
indefinite because no corresponding structure in the
specification linked to the claimed function); Aristocrat
Techs., 2/22/08 (nonprecedential; addressing issue of
whether corresponding structure for parent means plus
function clause can be provided by structures
corresponding to subsidiary means plus function
limitations); See also CLAIM CONSTRUCTION
Means-plus-function claims - 112, 6
- If the specification does not contain an adequate

disclosure of the structure that corresponds to the
claimed function, the patentee will have failed to
particularly point out and distinctly claim the
invention as required by Section 112, second
paragraph In re Donaldson (en banc) (Ibormeith
1855
IP, 10/22/13 (structure or algorithm must be
sufficiently defined to render the bounds of the
claim understandable to the implementer); Noah
Systems, 4/9/12; Ergo Licensing, 3/26/12 (see also
J. Newman, dissenting); In re Aoyama, 8/29/11;
Blackboard, 7/27/09)
- Inquiry is whether one skilled in the art would

understand the specification to disclose a structure
associated with the corresponding function in the
claim, and not simply whether that person would
be capable of implementing a structure Atmel,
Medical Instr. (ePlus, 11/21/12; Noah Systems,
4/9/12; Ergo Licensing, 3/26/12 (see also J.
Newman, dissenting); HTC, 1/30/12 (transceiver
and processor were implicitly disclosed based on
the reference in the specification to cellular
phones, as understood by a POS in the art in view
of expert testimony); Rembrandt, 4/18/11 (genuine
dispute raised by expert testimony about whether a
skilled artisan based on the specification would
have known the algorithm necessary to accomplish
the claimed outcomes); In re Katz Patent
Litigation, 2/18/11; Telcordia Techs., 7/6/10;
Blackboard, 7/27/09 (rejecting argument that an
ordinarily skilled artisan would know how to
design a program to perform the recited function,
as conflating the definiteness and enablement
requirements); Technology Licensing, 10/10/08
(black box supported by inventor testimony was
sufficient structure); Aristocrat Techs., 3/28/08
(disclosure of only a general purpose computer as
the corresponding structure (without also
disclosing a specific algorithm for performing the
recited function) amounts to pure functional
claiming); Biomedino, 6/18/07); See also Creative
Integrated Sys., 6/3/13 (nonprecedential claims
not indefinite); Lighting Ballast Control, 1/2/13
1856
(nonprecedential rejecting expert testimony as
insufficient where there was no corresponding
structure for term voltage source means) [en
banc review was granted on 3/15/13, and the
opinion was vacated and the appeal reinstated];
Aerotel, 7/26/11 (nonprecedential corresponding
structure disclosed to one of ordinary skill);
Stamps.com, 6/15/11 (nonprecedential claims
indefinite where no disclosure of actual algorithms
necessary to perform the claimed function, as
construed ask whether a skilled artisan would
have understood the specification to encompass the
necessary program and could have implemented
the program, and not simply whether he could
have written the program)
- Bare statement in the specification that

known techniques or methods can be used
does not disclose structure to conclude
otherwise would vitiate the language of
112, 6, requiring corresponding structure,
material, or acts described in the
specification (Aristocrat Techs., 3/28/08
(patents disclosure of a general purpose,
programmable microprocessor with
appropriate programming and various
embodiments of the outcome of the claimed
functions, was not a sufficient disclosure of
structure; the corresponding structure
required in the specification for a computer-
implemented means-plus-function term is a
specific algorithm for performing the
claimed function Harris, WMS Gaming);
Biomedino, 6/18/07)
- Computer-implemented function
corresponding structure must be more than
simply a general purpose computer or
1857
microprocessor to avoid purely functional
claiming, (when dealing with a special
purpose computer-implemented means-plus-
function limitation) must disclose the
algorithm for performing the claimed
function describe a means for achieving a
particular outcome, and not merely the
outcome itself - WMS Gaming, Aristocrat
Techs., Blackboard (Ibormeith IP, 10/22/13
(algorithm and data (in two figures and a
table) inadequately defined the structure for
computational means (i.e., a sequence of
computational steps to follow), stating that a
description of an algorithm that places no
limitations on how values are calculated,
combined, or weighted is insufficient to
make the bounds of the claim
understandable distinguishing the
algorithms in WMS Gaming and Typhoon
Touch); TecSec, 10/2/13 (defendants failed
to show by C&C evidence the lack of
corresponding structure for fourteen
computer-implemented means-plus-function
limitations, where the specification
disclosed the specific software products and
(in detailed examples, rather than black
boxes) how to use those products to
implement the claimed functions, and stating
that [s]hort of providing source code, it is
difficult to envision a more detailed
disclosure and that the CAFC does not
impose a lofty standard in indefiniteness
cases); Function Media, 2/13/13
(specification failed to describe how the
disclosed software performed the
transmission function in means for
transmitting limitation- simply disclosing
software is not enough Noah Systems);
1858
ePlus, 11/21/12 (no structure or algorithm
disclosed for generating purchase orders,
which underlied the means for processing
limitation); Noah Systems, 4/9/12 (simply
disclosing software is not enough - Finisar);
Ergo Licensing, 3/26/12 (narrow
exception in Katz (where disclosure of a
general purpose computer without an
algorithm is proper when the recited
function(s) can be achieved by any general
purpose computer without special
programming) was inapplicable where the
claimed function of controlling the
adjusting means required special
programming in order to control the
adjusting means); HTC, 1/30/12 (waiver of
argument on appeal where the accused
infringer failed to challenge the patentees
position in the district court that the
specification sufficiently disclosed an
algorithm, instead focusing on the lack of
hardware; the details of the computer
hardware are not required, distinguishing
from an enablement inquiry); Dealertrack,
1/20/12; Typhoon Touch, 11/4/11 (reversing
the district courts invalidity judgment
where the specification adequately described
in words an algorithm, based on the broad
meaning of an algorithm as encompassing a
series of instructions for the computer to
follow citing CCPA cases, and Finisar
for the rule that the patent need only disclose
sufficient structure for a person of skill in
the field to provide an operative software
program for the specified function); In re
Aoyama, 8/29/11 (claims held indefinite
where flowchart in figure and corresponding
description were insufficient structure; see
1859
also J. Newman, dissenting); Rembrandt,
4/18/11 (genuine dispute of material fact,
based on expert testimony, as to whether
specification adequately disclosed
algorithm); In re Katz Patent Litigation,
2/18/11 (rule applies only when claiming
specific function performed by a special
purpose computer, and not when claiming
functions achieved by any general purpose
computer without special programming);
Blackboard, 7/27/09 (claims indefinite
where the specification did not describe how
the access control manager performed the
recited function); Net Moneyin, 10/20/08
(claims indefinite because no algorithm
disclosed for performing function of claimed
means, which was a component of disclosed
bank computer); Finisar, 4/18/08 (must
disclose enough of an algorithm to
provide the necessary corresponding
(disclosure of algorithm as the
corresponding structure is required); See
also Stamps.com, 6/15/11 (nonprecedential
claims indefinite where there was no
disclosure of the actual algorithms necessary
to perform the claimed function, as
construed); Brown, 5/7/10 (nonprecedential
claims indefinite where no algorithm
disclosed for portable processing means
element); Encyclopaedia Britannica, 12/4/09
(nonprecedential claims indefinite);
Aristocrat Techs., 2/22/08 (nonprecedential -
WMS Gaming does not require that a
particular algorithm be identified if the
selection of the algorithm or group of
algorithms needed to perform the function in
question would be readily apparent to a
1860
[POS] in the art.); See also CLAIM
CONSTRUCTION Means-plus-function
claims - 112, 6
- Amount of detail included in the

specification depends on the subject
matter described and its role in the
invention as a whole, in view of the
existing knowledge in the field of the
invention (Ergo Licensing, 3/26/12 (J.
Newman, dissenting); Typhoon
Touch, 11/4/11 (four-step descriptive
algorithm in words was sufficient
structure for claimed cross-
referencing function, where there was
no evidence that a programmer of
ordinary skill in the field would not
understand how to implement this
function, and it was undisputed that
the steps are carried out by known
computer-implemented operations,
and were readily implemented by
persons of skill in computer
programming))
- Algorithm (to be implemented by the

programmer) step-by-step procedure
for accomplishing a given result,
which may be expressed in any
understandable terms including as a
mathematical formula, in prose, or as
a flow chart, or in any other manner
that provides sufficient structure vs.
source code or mathematical
algorithm are not required - Typhoon
Touch (TecSec, 10/2/13; Function
Media, 2/13/13 (insufficient structure
in flow charts, where transmission
1861
function was shown only by lines);
ePlus, 11/21/12 (distinguishing
Typhoon Touch where no algorithm at
all was disclosed for means for
processing limitation, including that
black box in flow chart that
represented the purchase order
generating function did not disclose
corresponding structure); Noah
3/26/12)
- Rule not applicable when claiming

functions achieved by any general
purpose computer without special
programming (Noah Systems, 4/9/12
(claims indefinite because special
programming was required, thus Katz
rule did not apply); Ergo Licensing,
3/26/12 (narrow exception in Katz
was not applicable where the claimed
function required a general purpose
computer with special programming;
see also J. Newman, dissenting the
majority misread Katz); In re Katz
Patent Litigation, 2/18/11 (claimed
functions of processing,
receiving, and storing were
coextensive with the disclosed general
purpose processor))
- Indefiniteness analysis does not turn

on the name of the structure that does
the processing, e.g., bank computer
(In re Katz Patent Litigation, 2/18/11)
- Interpretation of what is disclosed in the

specification must be made in light of the
1862
knowledge of one skilled in the art; thus, the
corresponding structure of the means-plus-function
limitation must be disclosed in the specification
such that one skilled in the art will know and
understand what structure corresponds to the
function in the claim - and not simply whether one
skilled in the art would know what structures to
use to accomplish the claimed function, or would
be capable of implementing that structure Atmel
(Function Media, 2/13/13 (that one skilled in the
art could devise some method to perform the
function not the proper inquiry as to indefiniteness,
but rather goes to enablement); ePlus, 11/21/12
(system claims were indefinite where, because of
no disclosure of structure or algorithm
corresponding to means for processing
limitation, the patentee had in effect claimed
everything under the sun that generated purchase
orders, and thus rejecting argument that the
specification need only disclose those aspects of
the claimed invention that do not exist in the prior
art); Noah Systems, 4/9/12; Ergo Licensing,
3/26/12; HTC, 1/30/12 (disclosure of a mobile
phone implicitly disclosed a transceiver and a
processor, as understood by a POS in the art);
Typhoon Touch, 11/4/11; In re Katz Patent
Litigation, 2/18/11; Telcordia Techs., 7/6/10
(controllers circuit shown in the figures as a
black box was sufficient structure to define the
claim terms for an ordinarily skilled artisan; see
also J. Prost, dissenting); Blackboard, 7/27/09 (A
patentee cannot avoid providing specificity as to
structure simply because someone of ordinary skill
in the art would be able to devise a means to
perform the claimed function. To allow that form
of claiming under Section 112, paragraph 6, would
allow the patentee to claim all possible means of
achieving a function - Atmel); Technology
1863
Licensing, 10/10/08; Lucent Techs., 9/25/08
(priority at issue); Finisar, 4/18/08 (simply reciting
software is not enough for corresponding
(distinguishing the enablement requirement from
the corresponding structure requirement of
Section 112, sixth paragraph; the point of the latter
requirement is that the scope of patent claims be
limited to the disclosed structure and its
equivalents, as to avoid pure functional claiming);
Allvoice Computing, 10/12/07; Biomedino,
6/18/07); See also Lighting Ballast Control, 1/2/13
(nonprecedential expert testimony could not be
used to supplant the total absence of structure from
the specification, or to show that a POS in the art
might be able to carry out the claimed function)
[en banc review was granted on 3/15/13, and the
opinion was vacated and the appeal reinstated];
Encyclopaedia Britannica, 12/4/09
(nonprecedential rejecting multiple arguments,
including argument that an algorithm need not be
disclosed so long as the computer function being
performed is well known); Aristocrat Techs.,
2/22/08 (nonprecedential; the law does not require
that structure be explicitly identified as long as a
POS in the art would understand what structure is
identified in the specification; remanded for
determination by a POS in the art)
- Clear link between the means clause and

the structure in the specification is required,
or a means-plus-function claim is invalid as
indefinite - Atmel (Noah Systems, 4/9/12;
Ergo Licensing, 3/26/12; In re Aoyama,
8/29/11; Telcordia Techs., 7/6/10 (claims
not invalid where the challenger failed to
show that an ordinary artisan would not
understand the link between the controller
1864
and the claimed monitoring function; see
also J. Prost, dissenting no clear link, and
thus claims were invalid); Biomedino,
6/18/07; Home Depot, 6/16/05; Utah
Products, 12/4/03); See also Aerotel,
- Testimony of one skilled in the art (e.g.,

expert) cannot supplant the total absence of
structure from the specification (Function
Media, 2/13/13; Noah Systems, 4/9/12
(district court properly refused to allow
expert testimony or other evidence regarding
what one skilled in the art would understand
from the specification before granting SJ of
invalidity, and stating that the reason for the
prohibition is that the specification itself
must adequately disclose the corresponding
structure); Biomedino, 6/18/07); See also
Lighting Ballast Control, 1/2/13
(nonprecedential applying rule) [en banc
review was granted on 3/15/13, and the
opinion was vacated and the appeal
reinstated]
- Not a high bar the specification need only recite

some structure corresponding to the claimed means
to readily ascertain what the claim means Atmel
(Ergo Licensing, 3/26/12 (J. Newman, dissenting);
Typhoon Touch, 11/4/11; In re Aoyama, 8/29/11
(flowchart in figure was insufficient structure of
algorithm); Telcordia Techs., 7/6/10 (same as
Technology Licensing); Technology Licensing,
10/10/08 (black box with no details of its inner
circuitry was sufficient structure); Finisar, 4/18/08
(CAFC does not impose a lofty standard in
indefiniteness cases; with computer-implemented
means-plus-function claim elements, the patent
1865
need only disclose enough of an algorithm to
provide the necessary corresponding structure
under section 112, 6); Aristocrat Techs., 3/28/08
(patentee required to have at least disclosed the
algorithm (and not a highly detailed description of
the algorithm) that transformed a general purpose
computer to a special purpose computer
programmed to perform the disclosed algorithm,
citing WMS Gaming); Allvoice Computing,
10/12/07; Biomedino, 6/18/07)
- Specification need not disclose details of

structures well known in the art (Ibormeith
IP, 10/22/13 (structure or algorithm need not
be so particularized as to eliminate the need
for implementation choices by a skilled
artisan); Function Media, 2/13/13; Ergo
Licensing, 3/26/12 (claims indefinite where
the disclosed control device was not a
known structure and thus was not adequate
corresponding structure for the claimed
control means; see also J. Newman,
dissenting citing cases in which a single
term (e.g., controller) provided adequate
corresponding structure for the claimed
means-plus-function limitation, as would be
understood by persons skilled in the art);
HTC, 1/30/12 (disagreeing with the accused
infringer that details of a processor and
transceiver in the disclosed mobile phone
needed to be disclosed); Typhoon Touch,
11/4/11; Telcordia Techs., 7/6/10 (same as
Technology Licensing, as supported by the
patentees experts testimony); Technology
Licensing, 10/10/08 (details of inner
circuitry of disclosed black box were not
needed where there was inventor testimony
that technology to perform the claimed
1866
function was available and known to a POS
in the art at the relevant time, and the
challengers expert failed to rebut);
Biomedino, 6/18/07)
- Specification must include all structure that

actually performs the recited function
Default Proof Credit Card System (Noah
Systems, 4/9/12; Telcordia Techs., 7/6/10)
Methods, tests and standards for measuring a claim feature,

words of degree
(Meadwestvaco, 9/26/13 (accused infringers waived

indefiniteness issue relating in part to testing standards in the
patent for claim term by failing to pursue the issue at trial after
being denied SJ); Biosig Instruments, 4/26/13 (scope of claim
term was definite because (based on expert (inventor) testimony
submitted during reexam) a skilled artisan could apply a test
using standard equipment and determine the claimed spaced
relationship as pertaining to the function (also recited in the
claim language) of substantially removing EMG signals);
Wellman, 4/29/11 (claims not indefinite as construed based on
the specification limiting the claimed temperature measurement
to those occurring on a sample of amorphous PET material, as
well as based on well-known industry standards at the time of
filing for measuring the term, distinguishing Honeywell);
Hearing Components, 4/1/10 (term readily installed held not
indefinite); Enzo Biochem, 3/26/10 (linkage group not
interfering substantially with hybridization held not indefinite
based on testing and properties described in the specification
which could be used to measure the degree to which a linkage
group interferes with hybridization); Kinetic Concepts, 2/2/09
(distinguishing Honeywell where one particular method taught
in the specification); Star Scientific, 8/25/08 (word of degree
(anaerobic) was definite); Osram GMBH, 10/31/07 (claim
construction); Invitrogen, 11/18/05 (claim construction);
1867
Marley Mouldings, 8/8/05; Datamize, 8/5/05; Chimie, 4/11/05;
Honeywell, 8/26/03); See also Words of approximation and
degree, relative terms; CLAIM CONSTRUCTION
Methods for measuring claim term
- Ambiguous claim terms not improper to limit a relative

claim term (e.g., dust-free) to the only disclosure (test
for measuring) on the subject in the patent; reconcile
ambiguous term with inventors disclosure regarding test
for measuring claim term (Green Edge, 9/7/10 (term
looks like is not necessarily indefinite, if sufficiently
defined in the specification); Star Scientific, 8/25/08;
Chimie, 4/11/05)
- Methods taught in the specification for measuring claim

term
- Claims including a numeric limitation without

disclosing which of multiple methods of
measurement should be used (Halliburton, 1/25/08
(citing Honeywell)); See also Accentra, 1/4/13
(nonprecedential claims were not indefinite
despite multiple ways to measure the claimed
stapler handle travel distance, where was not
shown that choosing one or the other method
rendered the claims indefinite, because any minor
differences could be accounted for by the claims
use of the term about which in context does
not give rise to indefiniteness)
- Claim term definite where the specification

discloses one particular method, despite multiple
methods being available to measure claim term
(Kinetic Concepts, 2/2/09 (term reduction in
bacterial density in the wound by at least 50%
held not indefinite, distinguishing Honeywell))
1868
- Experimentation required to determine claim scope
claims not necessarily indefinite Exxon (Biosig
Instruments, 4/26/13 ([O]bjections relating to the mere
fact that there may be some need for experimentation to
determine the scope of the claims carry little weight.);
Enzo Biochem, 3/26/10); See also Dow Chemical,
1/24/12 (nonprecedential claims definite despite
multiple ways to measure slope value of claim term
which was previously unknown in the art (based on the
patentees internal documents), where (based on expert
testimony) one of ordinary skill in the art would know
the best way, stating that the mere fact that the slope
may be measured in more than one way did not render
the claims invalid citing Enzo Biochem and Exxon)
- Claims not indefinite when relevant values can be

calculated or measured (Biosig Instruments,
4/26/13 (case analogous to Star Scientific because
values associated with the respective terms could
be determined by a POS in the art); Marley
Mouldings, 8/8/05)
- Claim term needs objective standard in claim or

specification (undefined standard no good); scope of
claim term (e.g., aesthetically pleasing) cannot depend
solely on subjective opinion of an individual (Hearing
Components, 4/1/10 (applying Datamize rule in holding
term readily installed definite); Enzo Biochem, 3/26/10
(rejecting Datamize argument for indefiniteness);
Halliburton, 1/25/08 (citing Datamize); Datamize,
8/5/05); See also Ernie Ball, 1/24/13 (nonprecedential
claims held indefinite where the specification provided
no objective standard for drawing a non-sinusoidal line
between various points for purposes of determining
infringement)
- Words of degree the specification must provide some

standard for measuring that degree to be definite (Biosig
1869
Instruments, 4/26/13; Hearing Components, 4/1/10 (clear
example of readily installed given in the specification,
as well as discussed in the context of prior art); Enzo
Biochem, 3/26/10 (term not interfering substantially
held not indefinite based on the claim language and
specification); Star Scientific, 8/25/08 (term anaerobic
condition was definite based on standard in the
specification and other claim language)); See also
Words of approximation and degree, relative terms
Notice function of claims, functional language, claims covering

both apparatus and method
- Claims must be written in a way to give notice of legal

protection afforded by the patent (Haemonetics, 6/2/10;
Halliburton, 1/25/08; Young, 6/27/07; Home Depot,
6/16/05)
- Claims define the scope of patent protection -

Johnson & Johnston (en banc) (Datamize, 8/5/05)
- Claim must reasonably apprise those skilled in the

art of its scope, or is considered indefinite
(Spansion, 12/21/10; Hearing Components, 4/1/10;
Praxair, 9/29/08; MEC, 4/1/08; Halliburton,
1/25/08; Young, 6/27/07; IPXL Holdings,
11/21/05)
- Claim indefinite when covers two separate

statutory classes, e.g., apparatus and method
of using apparatus, because unclear as to
when direct infringement occurs (Biosig
Instruments, 4/26/13 (rejecting argument
where apparatus claims with functional
limitations describing the capability of
substantially removing EMG signals were
definite); HTC, 1/30/12 (claims were not
1870
indefinite when properly construed, since
recited method steps did not modify the
claimed mobile phone apparatus, but rather
the recited network in which the apparatus
operated relying on MEC, which also
related to a preamble-within-a-preamble
format); Rembrandt, 4/18/11 (apparatus
claim indefinite which also contained a
method step, despite apparent error in the
claim omitting apparatus language from the
method step); In re Katz Patent Litigation,
2/18/11 (claims held indefinite that claimed
both an apparatus and a method of use, in
which wherein clause was directed to user
actions, not system capabilities citing
IPXL Holdings); MEC, 4/1/08 (apparatus
and method claims not indefinite for
impermissibly mixing classes of subject
matter, citing IPXL Holdings); IPXL
Holdings, 11/21/05 (holding indefinite a
claim covering both an apparatus and a
method of using that apparatus, based on the
lack of clarity as to when the mixed subject
matter claim would be infringed, i.e.,
whether when one created the system, or
rather when the user actually practiced the
method step))
- A single patent may include claims

directed to one or more of the classes
of patentable subject matter, but no
single claim may cover more than one
subject matter class IPXL Holdings
(MEC, 4/1/08)
- Claim must place a limit on the scope of

what invented beyond the prior art?; when a
limitation is ambiguous as to the presence of
1871
absence of an upper bound, a definiteness
inquiry is warranted (Halliburton, 1/25/08
(without identifying the degree of fragility
of the invention, the patentees proposed
definition of term fragile gel would also
cover all future improvements of the gels
fragility))
- Purpose of definiteness requirement is to

ensure that the claims delineate the scope of
the invention using language that adequately
notifies the public of the patentees right to
exclude (Ultimax Cement, 12/3/09;
Predicate Logic, 10/9/08 (highlighting the
importance of clear claim drafting by both
the applicant and examiner (i.e., in
examiners amendments): Careful and
straightforward claim drafting by
prosecuting attorneys and agents and
rigorous application by examiners of the
statutory standard [of Section 112, second
paragraph] serves an important public notice
function. Here, the public notice function
was not well served.); Praxair, 9/29/08;
Halliburton, 1/25/08; Young, 6/27/07)
- Test for indefiniteness does not

depend on the potential infringers
ability to ascertain the nature of its
own accused product to determine
infringement, but instead on whether
the claim delineates to a skilled
artisan the bounds of the invention
(Meadwestvaco, 9/26/13 (n.9: the
accused infringers surprise that its
design-around failed did not render
claim indefinite citing SmithKline);
Spansion, 12/21/10; Star Scientific,
1872
8/25/08 (ruling that definiteness does
not require that a potential infringer
be able to determine if a process
infringes before practicing the
claimed process); Invitrogen, 10/5/05;
SmithKline,
4/8/05)
- Difficulty or complexity of the

infringement analysis does not
necessarily speak to whether a claim
is definite or not Datamize
(Spansion, 12/21/10 (that determining
infringement required an expert using
detailed computer simulations alone
did not indicate that the claims were
indefinite))
- Functional language, definition of term
- Functional claim language, definition of

term defining term by what it does rather
than what it is In re Swinehart (CCPA)
(MEC, 4/1/08 (apparatus claim not
indefinite for using functional language);
Halliburton, 1/25/08 (referencing the U.S.
Supreme Courts identifying the dangers of
using only functional claim limitations to
distinguish the claimed invention from the
prior art))
- (Apparatus) claims are not necessarily

indefinite for using functional
language Halliburton (Biosig
Instruments, 4/26/13 (functional claim
language provided inherent
parameters and rendered term spaced
relationship definite to skilled
1873
artisans); MEC, 4/1/08 (apparatus
claims not indefinite; [i]ndeed,
functional language in a means-plus-
function format is explicitly
authorized by statute 35 USC 112,
6; also, 112, 6 may apply
despite the lack of means for
language when the claim uses
functional language but recites
insufficient structure))
- Although nothing intrinsically wrong

with using functional language in
claims, in some instances, using
functional language can fail to
provide a clear-cut indication of the
scope of subject matter embraced by
the claim and thus can be indefinite
In re Swinehart (CCPA) (MEC,
4/1/08 (claim to a pipelined processor
not indefinite where possessed the
recited structure and was capable of
performing the recited functions);
Halliburton, 1/25/08 (contrasting
functional limitations, which
effectively purport to cover any and
all means so long as they perform the
recited functions, from means-plus-
function limitations, which are limited
to corresponding structure in the
specification and equivalents thereof))
- Claim limitation defined in purely

functional terms the task of
determining whether that limitation is
sufficiently definite is difficult and
highly dependent on context from the
specification and the knowledge of
1874
the POS in the art (Biosig
Instruments, 4/26/13; Enzo Biochem,
3/26/10 (term not interfering
substantially held definite based on
guidance in the specification);
Halliburton, 1/25/08 (asking patent
examiners to demand that applicants
resolve ambiguity in claims (reciting
functional limitations) during
prosecution rather than attempting to
resolve the ambiguity in litigation;
also proposing ways for a patent
drafter to resolve ambiguities of a
functional limitation, such as by using
a quantitative metric (e.g., numeric
limitation as to a physical property)
rather than a qualitative functional
feature, or by providing a formula for
calculating a property along with
examples that meet the claim
limitation and examples that do not;
patent drafter also could have
provided more specifics, examples to
show the scope of the invention to
avoid indefiniteness problems))
- Proposed construction is likely indefinite

when requires an artisan to make a separate
infringement determination for every set of
circumstances in which a claimed
composition may be used, and when such
determinations are likely to result in
differing outcomes (sometimes infringing
and sometimes not) (Halliburton, 1/25/08)
Purpose of the invention considered
1875
- Claims interpreted based on purpose of invention - e.g.,
provide tight fit (Howmedica, 3/28/05)
Words cannot be eliminated from a claim to satisfy the

definiteness requirement
(Haemonetics, 6/2/10; Datamize, 8/5/05)
Words of approximation and degree, relative terms
(Biosig Instruments, 4/26/13; Deere, 12/4/12 (relative terms

substantially planar and easily washed off were not
indefinite in view of other claim language, the specification,
and statements made and the prior art distinguished during
prosecution); Hearing Components, 4/1/10 (word of degree
readily in readily installed and replaced by a user held not
indefinite); Power-One, 3/30/10 (terms adapted to and near
were not facially vague or subjective, in light of the guidance
provided by the specification, including the figures); Young,
6/27/07 (near was akin to approximately and thus was
definite); BJ Services, 8/6/03); See also Accentra, 1/4/13
(nonprecedential use of the term near did not render claims
indefinite citing Young and Power-One; construing term
consistent with its ordinary meaning as at or in the vicinity
of)
- CAFC had repeatedly confirmed that relative terms such

as substantially do not render patent claims so unclear
as to prevent a POS in the art from ascertaining the scope
of the claim (Deere, 12/4/12)
- Terms of degree guidance as to measuring a term of

degree can come from the intrinsic record or from the
knowledge of a POS in the art Verve (Biosig
Instruments, 4/26/13 (citing Verve rule); Deere, 12/4/12
(prior art distinguished assisted a POS in the art as to the
1876
meaning of term substantially planar; also, that mowers
which could be easily cleaned were known in the prior
art provided a standard for measuring the scope of term
easily washed off citing Hearing Components);
Power-One, 3/30/10)
F. ENABLEMENT
(Teva, 7/26/13; Wyeth, 6/26/13 (affirming SJ for nonenablement

where no genuine dispute that practicing broad scope method claims
to using rapamycin for treating or preventing restenosis, at the time
of filing, would require excessive, more than routine, undue
experimentation, where the specification disclosed only one
rapamycin species and was silent about how to structurally modify
the species, and practicing the full scope of the claims would require
synthesizing and screening each of at least tens of thousands of
compounds); Cephalon, 2/14/13 (accused infringer failed to meet its
BOP by C&C evidence, which applied throughout the litigation, for
proving lack of enablement; the district court erred by shifting the
burden of proof from the accused infringer to the patentee to rebut a
prima facie case of lack of enablement, stating that there is no formal
burden- shifting framework when addressing enablement);
Transocean, 11/15/12 (substantial evidence that undue
experimentation not required supported jury verdict of enablement);
Edwards Lifesciences, 11/13/12 (affirming that substantial evidence
supported jury verdict of enablement of the claimed prosthetic valve
where testing in pigs and procedures described in the specification for
implanting the valve enabled human use); Magsil, 8/14/12 (open
claim language (at least) was not enabled due to undue breadth);
Streck, 1/10/12 (enablement based on the specification and patent
incorporated by reference describing that reticulocyte species worked
in the same way in the claimed hematology control enabling
disclosure in the patent for use of one species was equally enabling
with respect to the other species); Boston Scientific, 6/7/11 (see J.
Gajarsa, concurring-in-part would have held some claims invalid for
lack of enablement, rather than WD as the panel held, because the
enablement analysis would have been simpler and more
1877
appropriate); Green Edge, 9/7/10 (jury question); Eli Lilly, 9/1/10
(rejecting argument that if the claimed drug use was not obvious, then
the claims were not enabled, where the specification described more
than the prior art); Transocean, 8/18/10 (fact issues regarding undue
experimentation precluded SJ of lack of enablement); Alza, 4/26/10
(affirming lack of enablement for claim construed to cover both
osmotic and non-osmotic (i.e., tablets and capsules) oral dosage forms
with ascending release rates, where the non-osmotic form required
undue experimentation); Janssen, 9/25/09 (drug patent was non-
enabling where no utility of the drug for treating Alzheimers disease
was described; see also J. Gajarsa, dissenting); Martek Biosciences,
9/3/09 (dependent claims encompassing only 22 species were
enabled); Epistar, 5/22/09 (rejecting argument that broad claim scope
not enabled); Ortho-McNeil, 3/31/08 (pharma); Sitrick, 2/1/08;
Monsanto, 10/4/07 (biotech); Automotive Techs., 9/6/07; Ormco,
8/24/07; Frazer, 8/20/07 (biotech; priority granted to earlier filed
foreign application); Liebel-Flarsheim, 3/22/07; Monsanto, 8/16/06
(biotech); Liquid Dynamics, 6/1/06; Falkner, 5/26/06 (biotech); Old
Town Canoe, 5/9/06; Invitrogen, 11/18/05 (biotech); Callicrate,
10/31/05; Novo Nordisk, 10/5/05 (biotech); Lizardtech, 10/4/05; In re
Fisher, 9/7/05 (biotech); Warner-Lambert, 8/11/05 (pharma);
Northpoint, 6/28/05; Rasmusson, 6/27/05 (pharma); Koito Mfg.,
8/23/04; Chiron, 3/30/04 (biotech); CFMT, 11/12/03; AK Steel,
9/23/03)
Enablement requirement 35 USC 112, first paragraph
- The specification shall contain a written description of

the invention, and of the manner and process of
making and using it, in such full, clear, concise, and
exact terms as to enable any person skilled in the art
to which it pertains, or with which it is most nearly
connected, to make and use the same, and shall set
forth the best mode contemplated by the inventor of
carrying out his invention. 35 USC 112, first
paragraph
1878
Generally
- Enablement requirement of 35 USC 112, first

paragraph, is satisfied when one skilled in the art, after
reading the specification, could practice the claimed
invention without undue experimentation AK Steel
(Cephalon, 2/14/13; Transocean, 11/15/12; Transocean,
8/18/10; Sitrick, 2/1/08)
- Specification must provide sufficient teaching such that

one skilled in the art could make and use the full scope of
the claimed invention without undue experimentation
In re Wright, AK Steel, In re Wands (Teva, 7/26/13
(district court did not err in weighing conflicting expert
testimony and concluding that using calibration methods
discussed by the patentees expert would not require
undue experimentation); Wyeth, 6/26/13 (affirming SJ of
lack of enablement see above); Magsil, 8/14/12; Streck,
1/10/12; Alza, 4/26/10; Martek Biosciences, 9/3/09;
Ortho-McNeil, 3/31/08 (anticonvulsively effective
amount was enabled, as would not require undue
experimentation to determine based on the specifications
teachings); Sitrick, 2/1/08 (enabling the full scope of
each claim is part of the quid pro quo of the patent
bargain: The scope of the claims must be less than or
equal to the scope of the enablement to ensure that the
public knowledge is enriched by the patent specification
to a degree as least commensurate with the scope of the
claims); Monsanto, 10/4/07 (broad scope of plant
cells not enabled); Automotive Techs., 9/6/07; Ormco,
8/24/07; Liebel-Flarsheim, 3/22/07; Liquid Dynamics,
6/1/06; Lizardtech, 10/4/05; Warner-Lambert, 8/11/05);
See also Convolve, 7/1/13 (nonprecedential
determining whether undue experimentation is necessary
requires the weighing of many factual considerations -
Cephalon); See also Undue breadth full scope of the
claim not enabled; and Undue experimentation
1879
- Enablement serves the dual function of ensuring
adequate disclosure of the claimed invention and
of preventing claims broader than the disclosed
invention thus, the patentee chooses broad claim
language at the peril of losing any claim that
cannot be enabled across its full scope of coverage
(Magsil, 8/14/12); See also Undue breadth full
scope of the claim not enabled
- Applicant is not required to describe in the

specification every conceivable and possible future
embodiment of his invention Cordis (Epistar,
5/22/09)
- Enablement is determined as of the effective filing

date (Wyeth, 6/26/13; Magsil, 8/14/12; Green
Edge, 9/7/10 (district court improperly considered
enablement and whether undue experimentation
required at the time of its decision)); See also
Convolve, 7/1/13 (nonprecedential affirming
lack of enablement due to undue breadth based on
the inventors fatal testimony that he was unable
to fully implement his broad method claim on disk
drives until nine years after the effective filing
date, and only after applying alleged trade secrets
was he able to solve the earlier problems)
- Enablement is determined from the vantage point

of one skilled in the art AK Steel (Wyeth,
6/26/13; Eli Lilly, 9/1/10 (accused infringer
improperly conflated the knowledge of Lilly
scientists with the knowledge of one of ordinary
skill); Sitrick, 2/1/08)
- Level of skill in the art adequacy of

disclosure is judged from perspective of one
of ordinary skill in the art thus, the higher
the level of skill, the easier to show
1880
enablement (Monsanto, 8/16/06; Falkner,
5/26/06)
- Routine knowledge need not be included in the

specification (Streck, 1/10/12; Liebel-Flarsheim,
3/22/07; Falkner, 5/26/06; Lizardtech, 10/4/05;
Chiron, 3/30/04)
- Patent need not teach, and preferably omits,

what is well known in the art Spectra-
Physics (Streck, 1/10/12; Epistar, 5/22/09;
Falkner, 5/26/06); See also Eli Lilly, 7/29/11
(nonprecedential drug dosages known in
the art)
- Rule that a specification need not

disclose what is well known in the art
is merely a rule of supplementation,
but not a substitute for a basic
enabling disclosure Genentech
(Streck, 1/10/12; Alza, 4/26/10;
Automotive Techs., 9/6/07)
- Production details unnecessary, or whats

known in the art (Koito Mfg., 8/23/04)
- Scope of enablement is that which is disclosed in

the specification plus the scope of what would be
known to one of ordinary skill in the art without
undue experimentation (Invitrogen, 11/18/05); See
also In re Hillis, 5/21/12 (nonprecedential lack of
enablement where applications merely described
the well-known science of optical physics and
suggested potential applications, but failed to
describe how to create the claimed optical
component and structure, or perform the claimed
method distinguishing Marzocchi rule)
1881
- Enablement analysis begins with the
disclosure in the specification (Sitrick,
2/1/08)
- Specification, not the knowledge of one

skilled in the art, must supply the novel
aspects of an invention to constitute
adequate enablement; although the
knowledge of one skilled in the art is
relevant, the novel aspect of an invention
must be enabled in the patent Genentech
(Automotive Techs., 9/6/07 (specification
and PH described the invention as a new
field and breakthrough)); See also In re
Hillis, 5/21/12 (nonprecedential applying
rule)
- Specification teaching away - when

specification teaches away from an
embodiment within scope of the claims
suggests that a significant amount of
experimentation is necessary to practice full
scope of invention (Liebel-Flarsheim,
3/22/07)
- Specification must provide reasonable detail

sufficient to enable claimed invention, vs.
providing only a starting point, a direction for
further research on using the claimed invention
Genentech (Automotive Techs., 9/6/07)
- Inadequacy of description of embodiment

was highlighted by comparison with
extensive description of how to make and
use a second embodiment (Automotive
Techs., 9/6/07)
1882
- Specification need only enable any mode of
making and using the invention Johns Hopkins
(Edwards Lifesciences, 11/13/12 (testing of the
claimed valve prosthesis in pigs along with
procedures described in the specification for
implanting the valve enabled human use, despite
the need for further development prior to being
used in humans); Invitrogen, 11/18/05)
Biotech/Pharma
Biotech
- Deposit of biological material
- Deposit required for enablement when the

invention depends on the use of living materials,
such as microorganisms or cultured cells may be
impossible to enable the invention solely by means
of a written disclosure In re Wands (Amgen,
8/3/06)
- Biological deposits of viral strains that can

be obtained to make the invention supported
enablement (Monsanto, 8/16/06)
- DNA
- Genus-species whether the exact DNA sequence

of most species of a claimed genus must be
dislosed in the specification to satisfy the
enablement requirement where the level of skill
in the art is low and there is little publicly available
information about the DNA vs. where the subject
matter is well-known and well-documented
(Monsanto, 8/16/06)
- Later arising technology
1883
- Specification cannot enable later arising
technology; the enablement requirement does not
extend to technology that arises after the time of
filing, i.e., one cannot enable nonexistent
technology (Chiron, 3/30/04)
- Nascent technology
- Nascent, unpredictable technology must be

enabled with a specific and useful teaching, vs.
nonenabling if merely proposes an unproved
hypothesis or guess - Rasmusson (Frazer, 8/20/07
(priority granted to earlier filed foreign
application); Chiron, 3/30/04 (chimeric and
humanized antibodies))
- Plant biotech
- Claimed gene construed to function in any plant

cell, including both dicots and monocots, not
enabled, when transformation of monocots not
enabled at the time of the filing date of the patent;
undue experimentation would be required In re
Vaeck, In re Goodman, Plant Genetic Systems
(Monsanto, 10/4/07)
Biotech/Pharma
- Animal testing enabling human use In re Brana, Scott,

MPEP 2164.02 (enablement requirement may be met by
animal tests or in vitro data) (Edwards Lifesciences,
11/13/12 (testing of claimed valve prosthesis in pigs
enabled human use, where pigs were a standard
experimental animal for heart valve research citing
cases and the Wands factors))
1884
- Utility and enablement
- Utility requirement 35 USC 101 is incorporated

into the enablement requirement thus, if no
utility, then no enablement of how to use the
invention - Rasmusson (Eli Lilly, 9/1/10; Janssen,
9/25/09 (treatment method claims were invalid for
lack of enablement where no utility of the drug
was shown in the patent for treatment of
Alzheimers disease; see also J. Gajarsa,
dissenting); In re Fisher, 9/7/05 (ESTs)); See also
Mitsubishi Chemical, 8/2/11 (nonprecedential
human trials are not required for a therapeutic
invention to be patentable Janssen); Eli Lilly,
7/29/11 (nonprecedential predictive statements in
the specification were proper where shown to be
correct based on later-filed data; also stating that
when priority is not at issue, generally an applicant
may provide data obtained either before or after
the application was filed); See also Enablement of
claims vs. anticipatory prior art; Utility
requirement 35 USC 101
- Initiation of a clinical trial has a significant

impact on the PTOs utility inquiry MPEP
(In re Montgomery, 5/8/12 (citing Eli Lilly
as basis for anticipation by inherency based
on a prior art reference that disclosed an
enabling process for administering a drug to
treat or prevent stroke, without disclosing
actual results from the administration for
this purpose; see also n.15 the case did not
address utility); Eli Lilly, 9/1/10
(enablement (utility) was supported by the
patents description of the details of a
human clinical study, which was ongoing at
the time the application was filed a POS in
the art could have relied on the disclosure of
1885
the human trials to conclude that the claimed
invention was useful)); See also Eli Lilly,
7/29/11 (nonprecedential utility shown
based on human trials being approved, citing
MPEP)
Pharma
- Patenting of pharmaceuticals generally
- Specification must contain substantiating evidence,

unless a POS in the art would accept allegations as
obviously correct (Rasmusson, 6/27/05)
- Effective amount (Ortho-McNeil, 3/31/08

(anticonvulsively effective amount was enabled, as
would not require undue experimentation to determine
based on the specifications teachings, including citation
of reference regarding dosage))
Background section of patent can provide enablement
- Background section of a patent can provide enabling

disclosure, even if disparaging remarks about the prior art
(Callicrate, 10/31/05)
Claiming priority to an earlier application
(Frazer, 8/20/07 (foreign application); Rasmusson, 6/27/05;

Chiron, 3/30/04); See also PRIORITY DATES 35 USC
119, 120
- Complexities of the science involved do not negate a

prior applications disclosure (Frazer, 8/20/07 (foreign
application; biotech))
1886
- Prior application must enable one of ordinary skill in the
art to practice the full scope of the claimed invention In
re Wright (Chiron, 3/30/04)
Commercial embodiment not required
- Commercial embodiment is not required, absent claim

limitation need only enable the claimed invention
(Teva, 7/26/13 (post-filing calibration struggles could
have been due to regulatory and scale-up issues, rather
than to correct faulty measurements citing Edwards);
Edwards Lifesciences, 11/13/12 (specification and
animal testing enabled the claimed valve prosthesis for
human use despite the need for further development
before use in humans); Transocean, 8/18/10 (irrelevant
whether the enabling disclosure would provide the most
efficient transfer, where the district court erred in
requiring the patentee to enable the most efficient
commercial embodiment, rather than the claims -
CFMT); Princo, 4/20/09 (patent misuse case) [vacated
on 10/13/09, and reinstated in part in Princo, 8/30/10
(en banc)]; Ormco, 8/24/07 (D.J. OMalley, dissenting);
CFMT, 11/12/03); See also Convolve, 7/1/13
(nonprecedential attorney argument alone that a certain
aspect of claimed broad method found to be critical was a
mere commercial requirement could not preclude SJ of
nonenablement distinguishing CFMT)
- Inventors attempt and failure to enable invention

in a commercial product that purports to be an
embodiment of the patented invention is strong
evidence that the specification lacks enablement
(Transocean, 8/18/10 (need only enable the
claimed invention); Ormco, 8/24/07)
1887
- Technology disclosed in a patent typically needs to
be further developed before a viable commercial
embodiment is possible; the efforts required to
commercialize an invention disclosed by a patent
can be considerable (Edwards Lifesciences,
11/13/12 (specification and testing in pigs enabled
human use of medical device despite the need for
further development before use in humans, stating:
Continuing development is often contemplated
and necessary, while early filing is often
essential.); Princo, 4/20/09 (citing CFMT for the
rule that issuance of a patent does not require an
inventor to meet lofty standards for success in the
commercial marketplace) [vacated on 10/13/09,
and reinstated in part in Princo, 8/30/10 (en
banc)])
- Scope of invention if a claim includes a specific

limitation, the specification must enable it (Ormco,
8/24/07; CFMT, 11/12/03)
Construe claims first
(Ormco, 8/24/07 (claims with narrow scope nonenabled);

Chiron, 3/30/04)
Enablement of claims vs. anticipatory prior art
- Enablement of claimed subject matter determined by

different standard than enablement of anticipatory prior
art how to use prong of Section 112 incorporates the
utility requirement of Section 101, that the specification
disclose a practical utility for the invention; for a
pharmaceutical, need to show substantiating evidence,
unless POS in the art would accept allegations as
obviously correct; measure of proof needed for
1888
enablement more than mere plausibility needed
otherwise, applicant could obtain patent on an invention
based on little more than a respectable guess as to the
likelihood of success so need to support claims with
data, show that method actually works (Astrazeneca,
11/1/10 (see also J. Bryson, dissenting); Impax Labs,
11/20/06; Novo Nordisk, 10/5/05; Rasmusson, 6/27/05);
See also ANTICIPATION Enablement of prior art
Enablement and written description are separate requirements
- Enablement and WD are separate requirements (Ariad,

3/22/10 (en banc); Invitrogen, 11/18/05; Lizardtech,
10/4/05; Chiron, 3/30/04); See also WRITTEN
DESCRIPTION
Evidence before the filing date to demonstrate enablement
- Reliance on scientific evidence (e.g., articles) before the

filing date to demonstrate enablement (Falkner, 5/26/06;
Rasmusson, 6/27/05)
- Given the ready accessibility of publications in

professional journals, the POS in the art would
clearly have possessed the knowledge needed for
enablement; and the absence of incorporation by
reference is not problematic (Falkner, 5/26/06)
Improvement patents
- Improvement patents do not mean the original patent is

not enabling (CFMT, 11/12/03)
1889
- Reference incorporated by reference supporting
enablement (Streck, 1/10/12 (incorporated reference
described that species worked in the same way))
Later-arising technology
- Specification cannot enable later arising technology; the

enablement requirement does not extend to technology
that arises after the time of filing, i.e., one cannot enable
nonexistent technology (Chiron, 3/30/04 (chimeric and
humanized antibodies))
Nascent technology
- Nascent technology must be enabled with a specific

and useful teaching (Chiron, 3/30/04)
Undue breadth full scope of the claim not enabled
(Wyeth, 6/26/13 (affirming nonenablement of claimed method

to using rapamycin for restenosis, where practicing the full
scope of the claims would require synthesizing and screening
each of at least tens of thousands of compounds, which was
undue experimentation); Magsil, 8/14/12 (open claim language
(at least) was not enabled due to undue breadth); Alcon
Research, 8/8/12 (not an enablement case, where the court
rejected the patentees claim construction argument that
inoperable concentrations up to 0.001% w/v were not covered
by a dependent claim reciting a concentration range of 0.0001-
5% w/v, which claim depended from an independent claim
reciting administering a therapeutically effective amount of
the drug, stating: This in not how patent law works. When you
claim a concentration range of 0.0001-5% w/v (as claim 2), you
cant simply disavow the invalid portion and keep the valid
portion of the claim. If everything up to 0.001% w/v is
1890
admittedly not enabled, then the entire claim is invalid.);
Streck, 1/10/12; Alza, 4/26/10 (claim construed to cover both
osmotic and non-osmotic drug forms was not enabled for non-
osmotic form); Epistar, 5/22/09 (rejecting argument that claim
scope including certain prior art material was not enabled);
Sitrick, 2/1/08 (because claims broad enough to cover both
movies and video games, both embodiments must be enabled);
Monsanto, 10/4/07; Automotive Techs., 9/6/07 (Disclosure of
only mechanical side impact sensors does not permit one skilled
in the art to make and use the invention as broadly as it was
claimed, which includes electronic side impact sensors);
Liebel-Flarsheim, 3/22/07; Lizardtech, 10/4/05; Chiron,
3/30/04; AK Steel, 9/23/03); See also Convolve, 7/1/13
(nonprecedential affirming lack of enablement based on
undue breadth, where the distric court did not err in finding that
long seeks were critical to the fundamental workings of disk
drives, i.e., physical systems recited in broad method claims);
Eli Lilly, 7/29/11 (nonprecedential no undue scope problem
for drug method claim)
- Full scope of the claimed invention must be enabled;

need reasonable enablement of the scope of the range
AK Steel (Magsil, 8/14/12 (open claim language was not
enabled, where the full scope of the claims reciting a
resistance change of at least 10% (up to infinity) was
not enabled as of the patents effective filing date by the
specification disclosing only enough information to
achieve an 11.8% resistance change); Automotive Techs.,
9/6/07 (Claims must be enabled to correspond to their
scope.); Liebel-Flarsheim, 3/22/07); See also In re
Speas, 4/9/08 (nonprecedential broad claim reciting
any and all devices and systems was nearly limitless
and thus required for enablement a commensurately
broad description encompassing how to utilize the
invention to create any and all such devices and
systems)
1891
- Knowledge of a POS in the art is no substitute for
an adequate enabling disclosure i.e., the
specification, not the knowledge of those skilled in
the art, must supply the novel aspects of the
invention to satisfy the enablement requirement
(Streck, 1/10/12; Alza, 4/26/10 (the patentee could
not simply rely on the knowledge of a POS in the
art to serve as a substitute for missing information
in the specification); Automotive Techs., 9/6/07)
- Single enabling embodiment, or one mode of

practicing the invention, not adequate to support
generic claim (Monsanto, 10/4/07 (dicots did not
enable monocots); Automotive Techs., 9/6/07
(means-plus-function claim); Liebel-Flarsheim,
3/22/07; Lizardtech, 10/4/05)
- Broad claim enabled by disclosure of a

single embodiment where the invention
pertains to an art with predictable results -
claim is not invalid for lack of enablement
because the claim reads on another
embodiment of the invention which is
inadequately disclosed - Spectra-Physics
(Epistar, 5/22/09)
- Whether embodiment within the

scope of the invention is just another
known species of the claimed genus,
or is a distinctly different
embodiment compared with the well-
enabled embodiment(s) fully
discussed in the specification (Streck,
1/10/12 (distinguishing Automotive
Techs., where unrebutted evidence
that reticulocyte species worked in the
same way in the claimed hematology
1892
control and were indistinguishable);
Automotive Techs., 9/6/07)
- Functional language in claim was too broad and thus not

enabled (Monsanto, 10/4/07 (transformation of plant
cells))
- Open-ended claims are not inherently improper, as they

may be supported if there is an inherent, albeit not
precisely known, upper limit and the specification
enables one of skill in the art to recognize, or approach
that limit - Scripps (Andersen, 1/26/07)
- Broad claim construction resulted in claims being held

non-enabled beware of what one asks for Liebel-
Flarsheim (Magsil, 8/14/12 (open claim language (at
least 10%) was not enabled; comparing language to use
of the open-ended term comprising); Alza, 4/26/10;
Sitrick, 2/1/08 (patentee convinced the district court to
deny the defendants request that the claims be limited to
video games); Automotive Techs., 9/6/07; Liebel-
Flarsheim, 3/22/07); See also Convolve, 7/1/13
(nonprecedential undue breadth doctrine ensures that
the patent system preserves necessary incentives for
follow-on or improvement inventions - Magsil);
Medegen, 11/20/08 (nonprecedential dissenting judge
(D.J. Walker) suggesting that claim term plug without
elastomeric limitation was non-enabled); Pharmaceutical
Resources, 10/26/07 (nonprecedential)
Undue experimentation
(Teva, 7/26/13 (district court did not err in relying on expert

testimony that no undue experimentation in selecting
calibration methods); Wyeth, 6/26/13 (synthesizing and
screening each of at least tens of thousands of compound
candidates within the claim scope required undue
1893
experimentation, where the specification disclosed only a
starting point for further iterative research in an unpredictable
and poorly understood field); Cephalon, 2/14/13 (challenger
failed to satisfy the burden of showing by (expert) testimony or
documentary evidence the amount of experimentation needed
for formulating agents to be co-administered to achieve the
claimed effervescent reaction citing Moba); Transocean,
11/15/12 (that undue experimentation was not required was
supported by substantial evidence, including evidence and
testimony that the required modifications to the existing pipe
handling equipment such as disclosed in the specification
would not have required undue experimentation (including the
accused infringers experts agreement that it would be a trivial
modification that would not take a lot of time or engineering
effort), and where only the computerized optimization of the
invention took the most time to complete); Edwards
Lifesciences, 11/13/12 (no undue experimentation required for
claimed valve prosthesis where testing in pigs and procedures
described in the patent for implanting the valve enabled human
use, despite the need for further development before use in
humans, listing (but not addressing) the Wands factors); In re
Antor Media, 7/27/12 (prior art reference did not require undue
experimentation); Streck, 1/10/12; Boston Scientific, 6/7/11 (J.
Gajarsa, concurring-in-part applying the Wands factors);
Transocean, 8/18/10 (reversing SJ of lack of enablement where
factual issues regarding undue experimentation); Alza, 4/26/10;
Martek Biosciences, 9/3/09 (no evidence presented that undue
experimentation was required to practice dependent claims
encompassing only 22 species); Muniauction, 7/14/08 (n.3:
balancing enablement and nonobviousness); Ortho-McNeil,
3/31/08 (no undue experimentation required based on the
specification and clinical trials); Sitrick, 2/1/08; Monsanto,
10/4/07; Automotive Techs., 9/6/07; Ormco, 8/24/07; Liebel-
Flarsheim, 3/22/07; Monsanto, 8/16/06; Liquid Dynamics,
6/1/06; Falkner, 5/26/06; Old Town Canoe, 5/9/06 (expert not
able to carry out claimed invention); Warner-Lambert, 8/11/05;
Northpoint, 6/28/05; Chiron, 3/30/04)
1894
Generally In re Wands factors
- Fact that some experimentation may be necessary

to produce the invention does not render patent
invalid for lack of enablement (Wyeth, 6/26/13;
Cephalon, 2/14/13 (challenger failed to explain
why multiple embodiments of coupled agents
disclosed in the specification failed to enable co-
administering the agents separately to achieve the
claimed effervescent reaction); Edwards
Lifesciences, 11/13/12 (enablement despite further
development needed before human use of the
claimed valve prosthesis listing the Wands
factors); Streck, 1/10/12; Alza, 4/26/10 (lack of
enablement where too much experimentation was
required, not routine); Monsanto, 8/16/06); See
also Eli Lilly, 7/29/11 (nonprecedential)
- What is relevant depends on the facts, and

although experimentation must not be
undue, a reasonable amount of routine
experimentation required to practice a
claimed invention does not violate the
enablement requirement Enzo Biochem
(Wyeth, 6/26/13; Cephalon, 2/14/13)
- Question of undue experimentation is a

matter of degree the amount of
experimentation must not be unduly
extensive Chiron (Wyeth, 6/26/13;
Cephalon, 2/14/13 (reversing the district
courts non-enablement determination,
where the record did not show the
experimentation needed to practice the
claimed invention was unduly extensive,
including that a clinicians involvement
being required for determining the effective
amounts of agents to be co-administered did
1895
not itself constitute undue experimentation
citing Ortho-McNeil))
- Focus is not merely quantitative, since

a considerable amount of
experimentation is permissible, if it is
merely routine, or if the specification
provides a reasonable amount of
guidance PPG Indus.; permissible
experimentation is not without bounds
AK Steel (Wyeth, 6/26/13;
Cephalon, 2/14/13 (experimentation
was undue where the specification
offered no guidance or predictions
about particular substitutions that
might preserve the effects observed in
the single disclosed compound
species))
- Extensive experimentation is not

unduly extensive where the
experiments involve repetition of
known or commonly used techniques
citing Johns Hopkins (Wyeth,
6/26/13; Cephalon, 2/14/13)
- In re Wands factors considered - illustrative, not

mandatory (and thus a court need not review all of
the factors to find a disclosure enabling): 1) the
quantity of experimentation necessary, 2) the
amount of direction or guidance presented, 3) the
presence or absence of working examples, 4) the
nature of the invention, 5) the state of the prior art,
6) the relative skill of those in the art, 7) the
predictability or unpredictability of the art, and 8)
the breadth of the claims (Cephalon, 2/14/13 (n.11:
district courts cursory consideration of the factors,
even if accurate, was not dispositive, where the
1896
record lacked evidence of undue experimentation);
Edwards Lifesciences, 11/13/12 (listing, but not
addressing, the Wands factors in affirming jury
verdict of enablement); Streck, 1/10/12; Alza,
4/26/10 (no enablement of broad claims, based on
the Wands factors); Martek Biosciences, 9/3/09
(Whether undue experimentation is needed is not
a single, simple factual determination, but rather is
a conclusion reached by weighing many factual
considerations In re Wands; applying Wands
factors); Automotive Techs., 9/6/07 (district court
applied Wands factors); Liebel-Flarsheim, 3/22/07;
Falkner, 5/26/06; Warner-Lambert, 8/11/05;
Chiron, 3/30/04); See also In re Hillis, 5/21/12
(nonprecedential need only apply the relevant
Wands factors); Eli Lilly, 7/29/11 (nonprecedential
claimed drug method enabling in view of Wands
factors); Pharmaceutical Resources, 10/26/07
(nonprecedential - broad claims to pharmaceutical
composition not enabled based on Wands factors -
unpredictability in the art (supported by intrinsic
and extrinsic evidence), breadth of the claim,
quantity of experimentation required, and amount
of guidance provided in the specification)
Inventors failed attempts to practice the invention
- Inventors failed attempts to practice the invention

are relevant to non-enablement, undue
experimentation (Ormco, 8/24/07; Liebel-
Flarsheim, 3/22/07; Novo Nordisk, 10/5/05; AK
Steel, 9/23/03); See also Convolve, 7/1/13
(nonprecedential affirming lack of enablement
where the inventor was unable to practice the full
scope of a broad method claim until nine years
after the effective filing date)
1897
Testimonial evidence regarding undue experimentation
- Inventor testimony (Streck, 1/10/12; Automotive

Techs., 9/6/07 (supported nonenablement); Ormco,
8/24/07 (testimony supported nonenablement);
Liebel-Flarsheim, 3/22/07); See also Convolve,
7/1/13 (nonprecedential inventors concessions
were fatal to claims); Pharmaceutical Resources,
- Employees of the patentee (Alza, 4/26/10

(testimony regarding difficulties in creating a non-
osmotic dosage form supported lack of
enablement))
- Expert declarations, testimony to show undue

experimentation, or absence thereof (Cephalon,
2/14/13 (CAFC rejecting expert testimony of
undue experimentation which was factually
unsupported, including ipse dixit statements that
co-adminstration of agents would be difficult
and complicated, which was not enough to
constitute C&C evidence); In re Antor Media,
7/27/12 (rejecting testimony that prior art reference
required undue experimentation); Streck, 1/10/12
(failure to produce adequate evidence of undue
experimentation for jury determination, where
conclusory testimony and expert admission that
never involved in developing the claimed
hematology controls; also, testimony by the
patentees expert, when taken in context,
established that no undue experimentation was
necessary once the teachings of the patents-in-suit
were known); Martek Biosciences, 9/3/09 (no
expert testimony presented of undue
experimentation regarding additional species
limitations in dependent claims); Sitrick, 2/1/08
(expert testimony explained why one skilled in the
1898
art would not be able to apply the specifications
teachings regarding video games to movies);
Automotive Techs., 9/6/07; Old Town Canoe,
5/9/06; Warner-Lambert, 8/11/05); See also
Pharmaceutical Resources, 10/26/07
(nonprecedential)
- No undue experimention required to make

the claimed invention? expert must
provide details of why experimentation not
undue, e.g., testing needed to adapt existing
technology to the invention (Automotive
Techs., 9/6/07)
Expert testimony
- Expert testimony expert witness need not

testify that experimentation is undue, but
instead only need factual showing (sufficient
to justify the jurys conclusion) on highly
factual issue of whether more than routine
experimentation was needed to make the
invention work (Northpoint, 6/28/05, see
also dissent the test for undue
experimentation is not merely quantitative,
since a considerable amount of
experimentation is permissible; expert
testimony must suggest that the amount of
experimentation would be considered
excessive or not routine to a POS in the art)
Utility requirement 35 USC 101
- Utility requirement 35 USC 101 is incorporated into

the enablement requirement thus, if no credible
practical utility disclosed, then there is no enablement of
1899
how to use the invention - Rasmusson (Eli Lilly, 9/1/10;
Janssen, 9/25/09 (claimed treatment method was not
enabled where no utility of the drug was shown in the
specification for treating Alzheimers disease; see also J.
Gajarsa, dissenting the district court conducted an
erroneous legal analysis and failed to make the necessary
factual findings before holding the treatment claims
invalid for lack of enablement); In re Fisher, 9/7/05); See
also UTILITY 35 USC 101
- Utility requirement prevents mere ideas, or

hypothetical possibilities, from being patented
consistent with the statutory requirement that the
inventor enable an invention rather than merely
proposing an unproved hypothesis - Rasmusson
(Janssen, 9/25/09)
- Utility requirement prevents the patenting of a

mere research proposal or an invention that is
simply an object of research Brenner ( S.C.) (a
patent is not a hunting license) has the potential
of giving priority to the wrong party, i.e., not the
party who demonstrated that the method actually
worked (Janssen, 9/25/09 (no utility where the
specification, when read in the light of those
skilled in the art, did no more than state a
hypothesis and propose testing to determine the
accuracy of that hypothesis))
G. WRITTEN DESCRIPTION
(Synthes USA, 10/29/13 (affirming jury verdict of invalidity based on

a lack of WD for added and broadly construed claim term plurality of
openings as supported by substantial evidence, including the
challengers expert and fact witness testimony that peripheral grooves
disclosed in the patent did not adequately support the term openings
which included the accused internal slots; see also J. Taranto,
1900
dissenting invalidity based on lack of WD was not proven by C&C
evidence, where the challenger failed to establish the importance of
the openings/grooves difference); Bayer Cropscience, 9/3/13
(addressing when a functional genus claim may be supported by
functional description when coupled with a known or disclosed
correlation between function and structure (in the context of claim
construction)); Trading Techs., 8/30/13 (the CAFCs rulings on claim
construction in a prior case involving related patents did not govern
the WD inquiry in the present case where the claims and issues were
different; comparing and contrasting claim construction with the WD
requirement); In re Bimeda Research, 7/25/13 (affirming invalidity in
reexam based on lack of WD because the inventors were not in
possession of the claimed subject matter excluding only a specific
anti-infective, but not the use of other anti-infectives or antibiotics,
where the specification disclosed only a formulation that excludes all
anti-infectives and antibiotics; see also C.J. Rader, concurring the
majority failed to wrestle with the fact that the claims and patent
focused on negative claiming, which showed the weakness of using
possession as the framework in WD cases); Novozymes, 7/22/13
(district court correctly granted JMOL of invalidity based on lack of
adequate WD where the parent application provided only generalized
guidance and, while providing formal textual support for each
individual limitation recited in the later filed claims, nowhere
described the actual functioning, thermostable alpha-amylase variants
that those limitations together defined, whereas the later-filed claims
(each taken as an integrated whole rather than as a collection of
limitations) narrowly recited specific alpha-amylase variants
resulting from mutating a particular parent enzyme at a single amino
acid position to yield distinctive functional properties; also comparing
and distinguishing a number of WD cases; see also J. Rader,
dissenting substantial evidence supported the jury verdict of
validity, which deserves significant deference, and writing to ask the
court to give full attention to the WD rules it has created, and also
stating that a separate WD requirement and the vague notion of
possession it embodies still troubles him citing his dissent in
Ariad (en banc)); Energy Transportation Group, 10/12/12 (jury
verdict of adequate WD was supported by substantial evidence,
including inventor testimony and admissions by the defendants
1901
experts); Pozen, 9/28/12 (affirming finding of adequate WD support
based on what was understandable in the specification to a POS in the
art, despite no in haec verba disclosure); Santarus, 9/4/12 (applying
rules relating to WD support for negative claim limitations; see also J.
Newman, dissenting the majority made a new rule requiring that the
specification provide a reason for excluding the element); Bard,
2/10/12 (adequate WD support for claims not limited to a specific
wall thickness, where the patent did not mandate a wall thickness
within the stated range for the claimed invention) [vacated in part
after remanded on 6/14/12]; Streck, 1/10/12 (affirming SJ where the
claims and specification, in light of well-known prior art, provided
adequate WD of both types of reticulocyte species to support genus
claim to a hematology control); Atlantic Research, 10/6/11 (finding
lack of WD where an embodiment covered by added reissue patent
claims was not disclosed in the specification, where the patentee kept
the embodiment as a trade secret and stating that the patentee cannot
now have it both ways by reaching back and relying on the
disclosures in the [original] patent to claim an invention he was
purposely shielding from the public); Harari, 9/1/11 (lack of WD
support for copied claim in interference); Boston Scientific, 6/7/11
(claimed genus of compounds used with drug-eluting stents for
inhibiting restenosis was not supported by an adequate WD for
multiple reasons, including lack of any disclosed species or common
structural features, as well as lack of support for a structure-function
relationship; see also J. Gajarsa, concurring-in-part would have held
the first group of patents invalid for lack of enablement (rather than
WD) as the appropriate tool for invalidating claims that are broader
than their disclosure and is simpler in that the patents need to
disclose where the rapamycin molecule should be modified to obtain a
suitable analog with the desired efficacy in stents); Hynix, 5/13/11
(genus claim supported by single species); Billups-Rothenberg,
4/29/11 (claims invalid where genetic mutations detected in the
claimed genetic test were unknown); Crown Packaging, 4/1/11
(reversing the district courts SJ of lack of WD,where there was
possession of the broad claimed invention in view of the original
claims and specification; see also J. Dyk, dissenting specification
described narrower invention); Centocor, 2/23/11 (broad claim
covering fully-human antibody was not supported by adequate WD);
1902
In re Katz Patent Litigation, 2/18/11; Laryngeal Mask, 9/21/10
(genuine dispute of material fact as to whether adequate WD based on
one of ordinary skill reading the specification); Spine Solutions,
9/9/10 (specification described the claimed single anchor as
necessarily being adapted to enter a groove, although a groove was
not expressly disclosed); Goeddel, 9/7/10 (reversing the BPAIs
priority determination in an interference where a Japanese application
did not show possession of the subject matter of the counts, and thus
was not a constructive RTP); Eli Lilly, 9/1/10 (affirming district court
finding (as not clearly erroneous) that claims to drug having certain
particle size, as construed broadly, were invalid based on lack of WD
where their scope was not supported by the specification); Honeywell,
5/25/10 (reversing the district courts finding of inadequate WD
support for claims added after the filing date because other description
in the specification did not limit the invention to the embodiment
shown in the figures; see also J. Mayer, dissenting there was no WD
support for the added claims, including which were inoperative based
on the disclosure of the original application); Anascape, 4/13/10 (no
WD support in parent patent for claims in CIP patent; see also J.
Gajarsa, concurring, stating (consistent with his concurring opinion in
Ariad (en banc)) that the preferred use of the WD requirement is in
the priority context only); Yorkey I, 4/7/10; Yorkey II, 4/7/10; Ariad,
3/22/10 (en banc) (reaffirming that Section 112, first paragraph,
contains a WD requirement (i.e., Lilly WD for original claims, as well
as WD for newly added or amended claims for purposes of
determining priority) separate from an enablement requirement; see
also J. Newman, additional views; J. Gajarsa, concurring; J. Rader,
joined by J. Linn, dissenting in part; and J. Linn, joined by J. Rader,
dissenting in part); Trading Techs., 2/25/10 (priority); Koninklijke
Philips, 1/5/10 (not addressing whether the disputed application
satisfied the WD requirement, and noting for the district court (in n.2)
that the CAFC recently heard arguments en banc in Ariad v. Lilly); In
re Skvorecz, 9/3/09; Hyatt, 8/11/09 (an applicant is obligated to
respond to a WD rejection, and must explain to the PTO where in the
specification support for each claim limitation can be found In re
Alton) [vacated]; Agilent Techs., 6/4/09 (lack of adequate WD for a
copied claim in an interference); Revolution Eyewear, 4/29/09
(reissue claim was supported by an adequate WD in the original
1903
specification); Ariad, 4/3/09 (biotech patent invalid) [vacated on
8/21/09, and petition for rehearing en banc granted, for which the
parties were requested to brief the following issues, which were
decided in Ariad, 3/22/10 (en banc): 1) Whether Section 112, first
paragraph, contains a written description requirement separate
from an enablement requirement? [Yes], and 2) If a separate
written description requirement is set forth in the statute, what is
the scope and purpose of the requirement? [To describe the
original claims, as well as any newly added or amended claims for
purposes of determining priority]; Cordis, 3/31/09 (expert
testimony supported jurys finding that provisional application
provided adequate WD support for stent claims limitations); ICU
Medical, 3/13/09; In re Alonso, 10/30/08 (biotech patent invalid);
Technology Licensing, 10/10/08; Lucent Techs., 9/25/08 (priority and
date of invention); CSIRO, 9/19/08 (new matter prohibition);
Carnegie Mellon U., 9/8/08 (biotech patent invalid); Yingbin-Nature,
7/31/08 (ITC; distinguishing Purdue Pharma based in part on
different standard of review applied); Poweroasis, 4/11/08
(anticipation where no WD support in earlier application); Hyatt,
6/28/07; Monsanto, 8/16/06 (biotech); In re Falkner, 5/26/06
(biotech); Kao, 3/21/06 (pharma); Invitrogen, 11/18/05 (biotech);
Lizardtech, 10/4/05 [request for rehearing en banc denied;
concurring opinion issued by J. Lourie, J. Michel and J. Newman,
emphasizing that WD and enablement are separate requirements,
and that the WD requirement is not limited to policing new
matter violations; stating also that limitations cannot be read into
claims, but this rule has limits see below; dissenting opinion
issued by J. Rader and J. Gajarsa, highlighting the tension
between the Lilly WD requirement vs. Phillips claim construction
analysis (that claims can be broader than the disclosed
embodiments, unless both are co-extensive); the dissent also
stating that there exist no standards for drafting a patent
specification to comply with the Lilly WD requirement]; Pandrol,
9/19/05; Capon, 8/12/05 (biotech); Space Systems/Loral, 4/20/05;
Bilstad, 10/7/04; In re Wallach, 8/11/04 (biotech); Intirtool, 5/10/04;
Chiron, 3/30/04 (biotech); U. Rochester, 2/13/04 (pharma) [petition
for rehearing en banc denied, 7/2/04; J. Newman dissented,
arguing that the full court should decide the question of whether
1904
the WD and enablement requirements are separate; J. Lourie and
J. Dyk concurred, arguing that Section 112 contains separate WD
and enablement requirements, applicable to both priority and
validity disputes, but J. Dyk wrote that WD standards applicable
to all technologies are needed; J. Rader, J. Gajarsa and J. Linn
dissented, arguing that there is no basis in the patent law for the
new WD validity requirement, under U. of Cal. v. Lilly; the
dissent also argued that there are not separate WD and
enablement requirements, that 112, 1, requires only that the
specification be enabling and that the WD requirement is
applicable only to policing priority of later claimed subject
matter]; Noelle, 1/20/04 (biotech); Curtis, 1/6/04; Chen, 10/22/03;
Cordis, 8/12/03; Moba, 4/1/03); See also Energizer Holdings, 4/21/08
(nonprecedential J. Linn, concurring with J. Schalls conclusion of
invalidity, but based on indefiniteness and not lack of WD, consistent
with J. Linns view that enablement and WD are not separate
requirements of Section 112, first paragraph)
Written description requirement 35 USC 112, first paragraph
- The specification shall contain a written description of

the invention, and of the manner and process of making
and using it, in such full, clear, concise, and exact terms
as to enable any person skilled in the art to which it
pertains, or with which it is most nearly connected, to
make and use the same, and shall set forth the best mode
contemplated by the inventor of carrying out his
invention. 35 USC 112, first paragraph
Generally
Purpose of the written description requirement
- Purpose of the WD requirement is to prevent an applicant

from later asserting that he invented that which he did not
Amgen (Agilent Techs., 6/4/09; Revolution Eyewear,
4/29/09)
1905
- Purpose of the WD requirement is to ensure that the
scope of the right to exclude, as set forth in the claims,
does not overreach the scope of the inventors
contribution to the field of art as described in the
specification U. Rochester, Reiffen (Trading Techs.,
8/30/13; Atlantic Research, 10/6/11 (lack of WD where
added reissue patent claims covered embodiment not
disclosed in the specification, stating that the patentee
used the reissue process to impermissibly obtain claims
unsupported by the written description); Centocor,
2/23/11 (claims to fully human antibodies were beyond
the scope of the disclosure); In re Katz Patent Litigation,
2/18/11; Ariad, 3/22/10 (en banc); In re Skvorecz, 9/3/09
(the description of the invention provides the foundation
for the scope and content of the claims); ICU Medical,
3/13/09)
- Claim is not necessarily invalid for lack of WD

just because it is broader than the disclosure,
specific examples - Bilstad (Martek Biosciences,
9/3/09 (citing cases))
Express support not required
- Express support is not required the disclosure as

originally filed does not have to provide in haec verba
support for the claimed subject matter at issue (Pozen,
9/28/12 (district court did not clearly err in finding WD
support based on the disclosure of several dosage forms
of the claimed combination drug product, and where a
POS in the art would know that the pharmaceutical
dosages are administered to a patient in containers or
packages with labeling and inserts with dosage
instructions, none of which were new or unpredictable
the specification described the invention in such a way
that it was understandable to a POS in the art - Ariad);
Ariad, 3/22/10 (en banc); Martek Biosciences, 9/3/09;
1906
ICU Medical, 3/13/09; Technology Licensing, 10/10/08;
Yingbin-Nature, 7/31/08 (added generic term clearance
described what was already disclosed in the original
application, and thus was not new matter))
Possession of the invention
- Possession of the invention the disclosure of the

application must convey with reasonable clarity, or
reasonably convey (or describe the invention in sufficient
detail) to those skilled in the art that, as of the filing date
sought, the inventor invented the claimed invention, i.e.,
was in possession of the [claimed] invention Vas-Cath;
the specification must clearly allow POSs in the art to
recognize that the inventor invented what is claimed -
Ariad (Synthes USA, 10/29/13 (affirming jury verdict of
lack of WD, which was based on substantial evidence
(expert and fact testimony) of no possession of any type
of plurality of openings on plate, including the accused
slots, where the patent disclosed only grooves); Trading
Techs., 8/30/13; In re Bimeda Research, 7/25/13
(inventor not in possession of specific claimed
embodiment filed during reexam see above; see also
C.J. Rader, concurring); Novozymes, 7/22/13 (affirming
invalidity based on a lack of adequate WD, by [t]aking
the claims as a whole rather than as the sum of their
individual limitations, where nothing in the parent
application indicated that the patentee possessed the
particular later-claimed species; see also C.J. Rader,
dissenting stating that the vague notion of possession
. . . still troubles him citing his dissent in Ariad (en
banc)); Synqor, 3/13/13 (sufficient evidence supported
the jurys factual finding of adequate support in earlier
filed application); Energy Transportation Group,
10/12/12 (substantial evidence of possession and WD
support based on inventor testimony regarding the
Abstract and experts admissions regarding a POS in the
arts understanding of the invention); Pozen, 9/28/12
1907
(claimed subject matter was described in such a way that
it was understandable to a POS in the art); Bard, 2/10/12
(claims not limited to a specific range of wall thicknesses
were supported by an adequate WD, even though the
patent taught that grafts falling outside this range had
been found to be marginal or clinically unacceptable
where the patent did not mandate a wall thickness within
the range for the claimed invention) [vacated in part
after remanded on 6/14/12]; Streck, 1/10/12; Atlantic
Research, 10/6/11; Boston Scientific, 6/7/11 (noWD
support for claimed genus of macrocyclic lactone analogs
of rapamycin in a drug-eluting stent, where term only
mentioned in a listing of experiments which was
followed by experimental delivery methods using only
rapamycin); Hynix, 5/13/11; Billups-Rothenberg,
4/29/11; Crown Packaging, 4/1/11; Centocor, 2/23/11
(only a few sentences in the specification mentioning
human antibodies or human variable regions did not
show possession of fully human antibodies); In re Katz
Patent Litigation, 2/18/11 (no WD support in parent
patent for priority); Laryngeal Mask, 9/21/10; Spine
Solutions, 9/9/10 (POS in the art would understand patent
to necessarily describe claim limitation, citing Ariad (en
banc)); Goeddel, 9/7/10 (alleged constructive RTP by
Japanese application failed to show possession of the
subject matter of the interference counts, citing Ariad (en
banc)); Eli Lilly, 9/1/10 (citing Ariad (en banc));
Honeywell, 5/25/10 (split decision); Yorkey I, 4/7/10 (the
BPAIs WD finding with respect to an application claim
was supported by substantial evidence, where the
language in the claim limitation provided an adequate
WD of the limitation as properly construed by the BPAI);
Yorkey II, 4/7/10; Ariad, 3/22/10 (en banc) (inventors
did not possess genus method claims where they did not
sufficiently disclose molecules capable of performing the
claimed methods, as they did not satisfy the inventors
obligation to disclose the technologic knowledge upon
which the patent is based - Capon); Trading Techs.,
1908
2/25/10; Martek Biosciences, 9/3/09; In re Skvorecz,
9/3/09; Agilent Techs., 6/4/09 (claim features (bubble
formation and closed chamber) each found in separate
different embodiments only did not show possession of
the claimed method (bubble mixing in a closed chamber);
whether a claim feature is inextricably wedded to the
wrong embodiment?); Revolution Eyewear, 4/29/09
(reissue claim); Cordis, 3/31/09 (must show that
inventor(s) had invented each feature that is included as
a claim limitation New Realhead); ICU Medical,
3/13/09 (description only of medical valves with spikes
did not show possession of generic claim covering valves
with and without spikes); In re Alonso, 10/30/08;
Technology Licensing, 10/10/08; Carnegie Mellon U.,
9/8/08; Yingbin-Nature, 7/31/08 (introducing generic
term clearance to later application and claims, where
the original application described various features, and
their importance, corresponding to the added generic
term, was not new matter); Poweroasis, 4/11/08 (no
possession in the original application of broad
construction given to term customer interface based on
the disclosure of a later-filed CIP, stating that the
invention is, for purposes of the WD requirement,
whatever is now claimed (as construed based on the
patent)); Hyatt, 6/28/07; Monsanto, 8/16/06; Falkner,
5/26/06); See also Energizer Holdings, 4/21/08
(nonprecedential J. Schall finding that what was
claimed was not what was described in the specification)
- Possession as shown in the disclosure is the

more complete formulation, since the hallmark of
WD is disclosure (Novozymes, 7/22/13; Pozen,
9/28/12; Streck, 1/10/12; Atlantic Research,
10/6/11; Boston Scientific, 6/7/11; Crown
Packaging, 4/1/11 (see also J. Dyk, dissenting);
Ariad, 3/22/10 (en banc))
1909
- An ipsis verbis disclosure of a claimed
genus is not per se sufficient to meet the
WD requirement Enzo Biochem (Boston
Scientific, 6/7/11 (single express mention in
the specification of the claimed genus of
macrocyclic lactone analogs of rapamycin in
a drug-eluting stent did not satisfy the WD
requirement))
- Test requires an objective inquiry into the four

corners of the specification from the perspective of
a POS in the art (Novozymes, 7/22/13 (hindsight
approach to the specification for the recited claim
limitations was improper, and instead viewing it
from the proper vantage point of one with no
foreknowledge of the specific claimed alpha-
amylase variants); Streck, 1/10/12; Boston
Scientific, 6/7/11 (four corners of the specification
directly contradicted information that the patentee
alleged was well-known to a POS in the art at
the effective filing date); Crown Packaging,
4/1/11; Centocor, 2/23/11; In re Katz Patent
Litigation, 2/18/11; Laryngeal Mask, 9/21/10)
based on that inquiry, the specification must
describe an invention understandable to the skilled
artisan and show that the inventor actually
invented the invention claimed (Goeddel, 9/7/10
(no actual invention shown, but rather only
allowed a POS in the art to envision the subject
matter of the interference counts); Ariad, 3/22/10
(en banc))
- Patentee in some circumstances may rely on

information that is well-known in the art for
purposes of meeting the WD requirement
Falko-Gunter Falkner (Streck, 1/10/12
(affirming adequate WD support based on
the language in the patents, coupled with
1910
the well-known use of true reticulocytes in
the prior art); Boston Scientific, 6/7/11)
- No possession of invention where the

four corners of the specification
directly contradict information that
the patentee alleges is well-known to
a POS in the art at the effective filing
date Boston Scientific (Streck,
1/10/12)
- Test for WD has never been whether the

patent includes a description of the steps that
may be used to prove infringement (Eli
Lilly, 9/1/10 (noting that the district courts
decision pre-Ariad (en banc) appeared to
have been premised on a misunderstanding
of the test for WD))
- Applicant may employ such descriptive means as

words, structures, figures, diagrams, formulas, etc.
that fully set forth the claimed invention
Lockwood (In re Skvorecz, 9/3/09 (the full
structure of the claimed device was shown in all of
the drawings considered as a whole))
- Mere wish or plan for obtaining the claimed

invention is not adequate WD Eli Lilly, Ariad (en
banc), U. Rochester (Novozymes, 7/22/13; Boston
Scientific, 6/7/11; Centocor, 2/23/11 (specification
at best described a plan for making fully human
antibodies and then identified those that satisfy the
claim limitations))
- As of the filing date sought when the WD

analysis occurs Vas-Cath (Hynix, 5/13/11 (The
law must be applied to each invention at the time it
enters the patent process); Ariad, 3/22/10 (en
1911
banc) (later publications and that skilled workers
actually practiced the inventors teaching soon
after the filing date were not relevant to whether
adequate WD support))
- Invention is, for purposes of the WD requirement,

whatever is now claimed Vas-Cath (Spine
Solutions, 9/9/10 (limitation recited single anchor
. . . adapted to enter a groove rather than inserting
an anchor in a groove, and thus the patent need not
have expressly disclosed a groove); ICU Medical,
3/13/09; Poweroasis, 4/11/08)
- Logical predicate of possession is completeness

of invention (Falkner, 5/26/06)
- Missing descriptive matter must necessarily be

present in the earlier application such that one
skilled in the art would recognize such a disclosure
Tronzo; requires that the WD actually or
inherently disclose the claim element (Research
Corp., 12/8/10 (whether entitlement to priority of
earlier application); Spine Solutions, 9/9/10 (POS
in the art would understand that the limitation
single anchor . . . adapted to enter a groove was
necessarily described in the specification, although
not expressly disclosing a groove); Agilent
Techs., 6/4/09 (admission by partys own expert
disproved inherency); ICU Medical, 3/13/09
(citing Poweroasis); Poweroasis, 4/11/08 (expert
testimony that missing matter was well known at
the time of earlier application failed to show WD
support in the earlier application))
- Inherency the very essence of inherency is

that one of ordinary skill in the art would
recognize that a reference unavoidably
teaches the property in question; inherency
1912
may not be established by probabilities or
possibilities In re Oelrich (Agilent Techs.,
6/4/09)
- Rigorous, but not exhaustive, requirement need

not spell out every detail of the invention in the
specification, but only enough to convince a POS
in the art that the inventor possessed the invention
LizardTech (In re Alonso, 10/30/08); See also
Stored Value Solutions, 12/10/12 (nonprecedential
distinguishing LizardTech where none of the
embodiments in the specification disclosed all of
the required claim elements together)
Actual reduction to practice not required for written

description
- Actual reduction to practice (e.g., working example) is

not required for an adequate WD constructive RTP
(that in a definite way identifies the claimed invention) is
an established method of disclosure U. Rochester
(Streck, 1/10/12; Centocor, 2/23/11; Ariad, 3/22/10 (en
banc) (constructive RTP that in a definite way identifies
the claimed invention can satisfy the WD requirement);
Falkner, 5/26/06)
- Specification must demonstrate constructive

possession that one skilled in the art can
visualize or recognize the claimed invention
based on the specifications disclosure Eli Lilly
(Centocor, 2/23/11 (no constructive possession of
claimed fully human antibody or human variable
regions))
- Constructive vs. working examples constructive

examples must still describe the claimed subject
matter in terms that the applicant was in possession
1913
of the claimed invention, including all of the
elements and limitations U. Rochester (Ariad,
3/22/10 (en banc) (inadequate WD where the
specification hypothesized three classes of
molecules potentially capable for use in the
claimed genus methods))
- Prophetic examples can be sufficient to

satisfy the WD requirement (Ariad, 3/22/10
(en banc) (inadequate WD support for using
the described molecules in the claimed
methods from disclosure that was not an
example, but rather a mere mention of a
desired outcome for the molecules))
- Pfaff (S.C.) invention refers to a concept that is

complete, rather than merely one that is
substantially complete; although actual RTP is best
evidence that invention is complete, proof of actual
RTP is not necessary in every case; the logical
predicate of possession is completeness
(Falkner, 5/26/06)
No particular form of disclosure is required
- No particular form of disclosure required - satisfying the

WD requirement does not require any particular form of
disclosure to describe the subject matter claimed, but the
description must clearly allow POSs in the art to
recognize that the inventor actually invented what is
claimed In re Alton (Novozymes, 7/22/13; Centocor,
2/23/11; Ariad, 3/22/10 (en banc); Martek Biosciences,
9/3/09 (priority shown by expert testimony); In re
Skvorecz, 9/3/09; Carnegie Mellon U., 9/8/08)
- Examples are not required to satisfy the WD

requirement LizardTech (Boston Scientific,
1914
6/7/11; Centocor, 2/23/11; Ariad, 3/22/10 (en
banc); Falkner, 5/26/06)
- Lack of any disclosure of examples may be

considered when determining whether the
claimed invention is adequately described
(Boston Scientific, 6/7/11)
- No length requirement exists for a disclosure to

adequately describe an invention adequacy of WD
depends on its content in relation to the particular
invention, not its length (Falkner, 5/26/06)
Original claims are part of the specification
- Original claims are part of the specification and in many

cases will satisfy the WD requirement Ariad (en banc)
(Crown Packaging, 4/1/11); See also Later claimed
subject matter . . .
- Exception for certain claims - such as claims to a

functionally defined genus, which will not satisfy
the WD requirement without a disclosure showing
that the applicant had invented species sufficient to
support the claim Ariad (en banc) (Crown
Packaging, 4/1/11 (original claims were examined
along with the specification in determining that
there was adequate WD, where the claims were not
broad genus claims or functional claims simply
describing the desired result of saving metal in
cans))
Obvious variants of disclosure is not written description
- Obvious variants of what disclosed is not WD -

entitlement to a filing date does not extend to subject
1915
matter which is not disclosed, but would be obvious over
what is disclosed Lockwood, Lilly (Research Corp.,
12/8/10 (whether entitlement to priority of earlier
application); Goeddel, 9/7/10 (no WD in a prior Japanese
applications disclosure of a precursor protein and
DNA,which merely allowed a POS in the art to
envision the mature form of the protein recited in the
interference counts, citing obvious variant cases);
Ariad, 3/22/10 (en banc) (a description that merely
renders the invention obvious does not satisfy the
requirement); ICU Medical, 3/13/09 (claims covering
valves not requiring a spike were not supported even
though would have been obvious that the disclosed
preslit seal could be used without a spike); Lucent
Techs., 9/25/08; Poweroasis, 4/11/08 (Obviousness
simply is not enough; the subject matter must be
disclosed to establish possession)); See also In re Meyer
Manufacturing, 12/17/10 (nonprecedential whether
sufficient WD in a parent application and obviousness of
claims over the parent disclosure are different analyses)
Fact-based inquiry assess written description on a case-

by-case basis
- Fact-based inquiry the inquiry is a factual one and must

be assessed on a case-by-case basis; the fact-based
inquiry will depend on the nature of the claimed
invention, and the knowledge of one skilled in the art at
the time of the invention (Synthes USA, 10/29/13
(predictability is a factual issue judged on a case-by-case
basis); Boston Scientific, 6/7/11 (although some species
of the vast genus of claimed macrocyclic lactone
analogs recited in the claimed drug-eluting stent were
known in the art, still no WD support where the inventor
was obligated to disclose species of the claimed analogs
because the art of using drug-eluting stents to inhibit
restenosis was unpredictable and existing knowledge was
1916
scant citing Ariad (en banc)) ; Ariad, 3/22/10 (en banc)
(finding that the state of the art at the time of filing was
primitive and uncertain, leaving Ariad with an
insufficient supply of prior art knowledge with which to
fill the gaping holes in its disclosure); In re Skvorecz,
9/3/09; Carnegie Mellon U., 9/8/08 (such knowledge may
change as time progresses); Yingbin-Nature, 7/31/08)
- Form and presentation of the description can vary

with the nature of the invention (In re Skvorecz,
9/3/09)
- Satisfying the WD requirement will necessarily

vary depending on the context the level of detail
required to satisfy the WD requirement varies
depending on the nature and scope of the claims
and on the complexity and predictability of the
relevant technology Capon, Ariad (Synthes
USA, 10/29/13 (affirming jury verdict of lack of
WD based on substantial evidence where the
added broadened term plurality of openings
(which included the accused internal slots) was not
adequately supported in the patent, which
disclosed only peripheral grooves, where the jury
was free to conclude that the shape and location of
the slots used in the accused device would not
have been predictable from the disclosed grooves;
see also J. Taranto, dissenting the accused
infringer failed to establish the importance of the
openings/grooves difference); Ariad, 3/22/10 (en
banc))
- Each patented advance has a novel

relationship with the state of the art from
which it emerges (Boston Scientific, 6/7/11;
Ariad, 3/22/10 (en banc))
1917
- Product claim with structural limitations as
opposed to method steps a patentee need only
describe the product as claimed, and need not
describe (in the claim) an unclaimed method of
making the claimed product - Amgen (Crown
Packaging, 4/1/11 (district court erred by requiring
a product claim to include a negative process
limitation))
Negative claim limitation
- Support for a negative claim limitation WD support

provided by the specification describing disadvantages of
the excluded subject matter; disclaimer is not needed
(Santarus, 9/4/12 (addressing rules for WD support for a
negative claim limitation, citing the MPEP that claims
may state the exclusion of alternatives))
- Negative claim limitations are adequately

supported when the specification describes a
reason to exclude the relevant limitation; such WD
support need not rise to the level of disclaimer (In
re Bimeda Research, 7/25/13 (C.J. Rader,
concurring the majority failed to wrestle with the
fact that the claims and patent focused on negative
claiming); Santarus, 9/4/12 (see also J. Newman,
dissenting the majority made a new rule
requiring a reason in the specification for
excluding the element))
Biotech/Pharma
Generally
- Basic research cannot be patented? the patent law is

directed to the useful Arts, i.e., inventions with a
1918
practical use Brenner v. Manson (S.C.) (Ariad, 3/22/10
(en banc))
- Patents are not awarded for academic theories, no

matter how groundbreaking or necessary to the
later patentable inventions of others a patent is
not a hunting license, [or] a reward for the search,
but compensation for its successful conclusion
Ariad (en banc), U. Rochester; requiring a WD of
the invention limits patent protection to those who
actually perform the difficult work of invention
that is, conceive of the complete and final
invention with all its claimed limitations and
disclose the fruits of that effort to the public
(Bayer Cropscience, 9/3/13 (disclosure of only a
single gene species encoding an enzyme having
the functional property, along with disclosing a
growth test for discovering other enzyme
species, was at best a road map for others to
complete the claimed invention as construed by the
patentee to cover a broad functional genus citing
Novozymes); Novozymes, 7/22/13 (affirming lack
of adequate WD support for later-filed species
claims in application filed before confirming
predictions by actually making and testing
individual alpha-amylase variants, or at least
identifying subclasses of variants that could be
expected to possess the claimed properties case
was analogous to U. Rochester); Billups-
Rothenberg, 4/29/11 (claimed genetic test which
detected mutations held invalid where the patent
disclosed neither the gene sequence nor any
specific mutations within the gene, and was merely
a research plan); Ariad, 3/22/10 (en banc))
- WD requirement exists to ensure that

inventors do not attempt to preempt the
future before it has arrived Fiers (Boston
1919
Scientific, 6/7/11 (The patent laws do not
reward an inventors invitation to other
researchers to discover which of the
thousands of macrocyclic lactone analogs of
rapamycin could conceivably work in a
drug-eluting stent); Billups-Rothenberg,
4/29/11 (lack of WD where the DNA
mutation sequences detected in the claimed
genetic test were unknown in the art, as in
Lilly and Fiers))
- Specifications role is to teach both what the invention is

(WD) and how to make and use it (enablement) (U.
Rochester, 2/13/04)
- Nature and scope of the invention - descriptive text

needed to meet the WD requirement varies with the
nature and scope of the invention at issue, and with the
scientific and technologic knowledge already in
existence; the WD requirement must take cognizance of
the scientific facts, including the complexity and
predictability of the relevant technology (Streck, 1/10/12;
Boston Scientific, 6/7/11 (no WD support for claimed
genus of macrocyclic lactone analogs in a drug-eluting
stent where the minor structural changes to rapamycin
needed to create analogs were unpredictable); Billups-
Rothenberg, 4/29/11; Goeddel, 9/7/10 (Precedent in
evolving science is attuned to the state of the science, but
remains bound by the requirement of showing that the
inventor actually invented the invention claimed
Bradford, Fiers); Ariad, 3/22/10 (en banc); Carnegie
Mellon U., 9/8/08; Falkner, 5/26/06; Capon, 8/12/05);
See also Written description requirement varies with the
nature and scope of the invention
- Possession of specific subject matter as of the filing

date is required (Goeddel, 9/7/10 (POS in the arts ability
to envision the mature form of the protein and its DNA
1920
from its precursor DNA and protein was not enough for
possession); Carnegie Mellon U., 9/8/08 (no possession
of the claimed genus where the specification described
only one species of bacteria); Falkner, 5/26/06; Chiron,
3/30/04)
- One cannot describe what one has not conceived

Fiers (U. Rochester, 2/13/04)
- Showing of possession is ancillary to the

statutory mandate that the specification describe
the invention (Ariad, 3/22/10 (en banc); Falkner,
5/26/06; U. Rochester, 2/13/04)
- Proof of RTP absent an adequate description in the

specification of what is RTPed does not serve to
describe or identify the invention for purposes of the WD
requirement Enzo Biochem (In re Alonso, 10/30/08
(single monoclonal antibody RTPed was not
representative of the densely populated genus; thus, U.
Rochester (where no compound was RTPed) not
distinguished))
- Unpredictable fields of science - well-recognized that it

is appropriate to recognize the variability in the science
in determining the scope of coverage to which the
inventor is entitled - look to the examples (Boston
Scientific, 6/7/11 (unpredictable state of the art of drug-
eluting stents for inhibiting restenosis was shown by the
patentees arguments for nonobviousness (in opposition
to a summary judgment motion for obviousness) that the
art was highly unpredictable); Ariad, 3/22/10 (en banc);
Capon, 8/12/05)
Functional description alone does not satisfy the written

description requirement
1921
- Describing the invention in terms of function only is
insufficient a description of what a material does, rather
than what it is, usually does not suffice - must (also)
describe the detailed identity of the invention (Boston
Scientific, 6/7/11(patent lacked information suggesting
how a POS in the art would select the claimed
macrocyclic triene analogs having the recited highly
specific performance requirements); Ariad, 3/22/10 (en
banc) (problem is particularly acute in the biological
arts); Carnegie Mellon U., 9/8/08 (functional description
and claimed genus describing function (to produce DNA
polymerase) provided inadequate WD support); U.
Rochester, 2/13/04)
- Claims to a method of using a pharmaceutical

compound must be supported by a WD of the
compound, either by an actual or constructive
RTP; functional description of what the compound
does is insufficient for satisfying the WD
requirement (Ariad, 3/22/10 (en banc) (description
of the compound(s) is needed for both process and
composition claims, and does not matter that
method claims do not recite term corresponding to
the compounds, citing U. Rochester); U.
Rochester, 2/13/04)
- Earlier patent application that describes later-

claimed genetic material only by a statement of
function or result may be insufficient to meet the
WD requirement Eli Lilly (Noelle, 1/20/04)
Functional description requires a structure-function

relationship
- Functional description or claim language satisfies

the WD requirement if there is a structure-function
relationship known to the POS in the art U.
1922
Rochester, Enzo Biochem see also PTO Written
Description Guidelines (Bayer Cropscience, 9/3/13
(addressing in the context of claim construction,
where the patentees proposed broad functional
construction of term would have rendered the
claim invalid for lack of WD citing several WD
cases); Boston Scientific, 6/7/11 (correlation not
established between the structural features of
rapamycin and its mechanism of action
corresponding to its function, for supporting
claims to a genus of rapamycin analogs used with
drug-eluting stents, where the patentees expert
testimony directly conflicted with the lack of any
favorable disclosure in the specification of a
structure-function relationship); Billups-
Rothenberg, 4/29/11 (patent localizing mutation
detected in the claimed genetic test to a 300 base
pair region on a chromosome was too imprecise to
constitute structural features); In re Alonso,
10/30/08 (n.10: rejecting argument that there is a
well-known correlation between human antibody
structure and antibody function, where the
specification failed to disclose any structure for the
claimed genus of antibodies, and thus there was no
structure to correlate to the function of the claimed
antibodies, i.e., binding to neurofibrosarcoma);
Invitrogen, 11/18/05; Wallach, 8/11/04
(knowledge of the complete amino acid (AA)
sequence of a protein = knowledge of all DNA
sequences encoding the AA sequence, because all
have the function of encoding the AA sequence))
- Structure must be disclosed in the

specification to show adequate WD support
based on a structure-function relationship
(Boston Scientific, 6/7/11; In re Alonso,
10/30/08 (n.10, citing Noelle and the failure
1923
to describe human CD40CR antigen to
support a human antibody claim))
Biotech vs. chemical (pharma) inventions
- Novel compound vs. novel combination of known

elements the test for WD is the same whether the claim
is to a novel compound or a novel combination of known
elements the test is the same whether the claim element
is essential or auxiliary to the invention Aro Mfg. (S.C.)
(Boston Scientific, 6/7/11 (basing rule on the CAFCs
holding in Carnegie Mellon that the courts precedent on
WD regarding generic claims is applicable to both
inventions claiming novel genera of chemical and
biological compounds as well as inventions claiming
combinations of prior art compounds with other
elements))
- Adequate WD of a DNA molecule (under Lilly) requires

a precise definition, such as by structure, formula,
chemical name, or physical properties, not a mere wish or
plan for obtaining the claimed chemical invention this
requirement also applies as well to chemical inventions
(Boston Scientific, 6/7/11; Billups-Rothenberg, 4/29/11;
Carnegie Mellon U., 9/8/08 (citing U. Rochester, stating
that nothing in Eli Lilly indicates that its holding was
limited to inventions involving novel DNA sequences);
U. Rochester, 2/13/04)
- Claim support for biotech vs. pharmaceutical

inventions (U. Rochester, 2/13/04)
DNA and proteins
- DNA molecules description of DNA requires a precise

definition, such as by structure, formula, chemical name,
1924
or physical properties, not a mere wish or plan for
obtaining the claimed chemical invention Eli Lilly,
Fiers (Billups-Rothenberg, 4/29/11; Carnegie Mellon U.,
9/8/08 (claims to recombinant plasmids and methods for
making DNA polymerase from any bacterial gene were
not adequately supported by a WD describing coding
sequences from only a single bacterial species, E. coli);
Noelle, 1/20/04)
- For inventions pertaining to DNA, a patent must

provide sufficiently detailed, relevant identifying
characteristics, i.e., complete or partial structure,
other physical and/or chemical properties,
functional characteristics when coupled with a
known or disclosed correlation between function
and structure, or some combination of such
characteristics Enzo Biochem (Monsanto,
8/16/06)
- Statements in the specification describing the

functional characteristics of a DNA molecule or
methods of its isolation do not adequately describe
a particular claimed DNA sequence; instead, an
adequate WD of DNA requires more than a mere
statement that it is part of the invention and
reference to a potential method for isolating it;
what is required is a description of the DNA itself
Eli Lilly, Fiers (Billups-Rothenberg, 4/29/11;
Noelle, 1/20/04)
- DNA sequence already known - Section 112 does

not impose a per se rule requiring the specification
to recite the nucleotide sequence of claimed DNA,
when the sequence is already known in the field
(Carnegie Mellon U., 9/8/08 (distinguishing
Capon); Monsanto, 8/16/06; Falkner, 5/26/06
(BPAI); Capon, 8/12/05 (BPAI), cites Lilly, Fiers,
Enzo Biochem, Amgen, Noelle, and U. Rochester)
1925
- Eli Lilly does not set forth a per se rule that
an adequate written description of an
invention involving a biological
macromolecule (e.g., DNA sequence) must
contain a recitation of structure known in the
prior art; when accessible literature sources
clearly provide, as of the filing date, genes
and their nucleotide sequences, satisfaction
of the WD requirement does not require
either the recitation or incorporation by
reference (where permitted) of such genes
and sequences (Falkner, 5/26/06)
- Neither a specific DNA sequence nor a

biological deposit is required to meet the
written description requirement if the
biological material is known and readily
available to the public Enzo Biochem
(Monsanto, 8/16/06)
- Claims to proteins, DNA molecules encoding same

possession of an isolated protein does not = knowledge,
possession of the proteins amino acid (AA) sequence;
but if know the AA sequence, then have possession of the
genus of DNA molecules encoding the AA sequence (vs.
no possession if dont know the AA sequence) (Wallach,
8/11/04)
- Monoclonal antibodies disclosure of a fully

characterized antigen, either by its structure, formula,
chemical name, or physical properties, or by depositing
the protein in a public depository, provides adequate
support for claiming an antibody by its binding affinity to
that described antigen (Centocor, 2/23/11 (distinguishing
Noelle and an antibody example in the PTOs WD
guidelines (which presumes that the applicant is
disclosing a novel protein and then claims both the
1926
protein and an antibody that binds to it), where fully
disclosing the known human TNF-alpha protein did not
provide adequate WD for any antibody that binds to
human TNF-alpha)); Noelle, 1/20/04 (earlier application
that failed to disclose the structural elements of human
CD40CR antigen or antibody did not provide sufficient
support for later claims to human and genus forms of
CD40CR antibody; statement that antibody binds to
human antigen also was insufficient support))
- Rule applies only to disclosure of newly

characterized antigens where creation of the
claimed antibodies is routine (Centocor, 2/23/11
(claimed fully human antibody was not possible at
the time of filing using routine, conventional
technology))
Deposit of biological material
- Deposit of a biological material reference in the

specification to a deposit in a public depository, which
makes its contents accessible, constitutes an adequate
written description Enzo Biochem (In re Alonso,
10/30/08 (deposits of single species did not adequately
support genus claim); Monsanto, 8/16/06)
Chemical and biological genus (and species) claims
- Chemical genus claims a WD of an invention involving

a chemical genus, like a description of a chemical
species, requires a precise definition, such as by
structure, formula, or chemical name of the claimed
subject matter sufficient to distinguish it from other
materials Eli Lilly (Boston Scientific, 6/7/11 (claimed
sub-genus of rapamycin triene analogs was not supported
by the disclosure of a genus of rapamycin analogs, where
1927
the specification lacked blaze marks indicating the sub-
genus to be of special interest))
- Rules for adequate WD regarding generic claims

are applicable to both inventions claiming novel
genera of chemical and biological compounds as
well as inventions claiming combinations of prior
art compounds with other elements Carnegie
Mellon (Boston Scientific, 6/7/11 (relying on rule
for concluding a lack of WD for the claimed
combination of a genus of compounds (where a
few species were known in the prior art) and drug-
eluting stents, and similarly holding that the test
for WD is the same whether the claim is to a novel
compound or a novel combination of known
elements))
- Chemical sub-genus and species claims WD

requirement is not satisfied by describing a large
genus of compounds, in the absence of blaze
marks as to what compounds might be of special
interest Fujikawa, In re Ruschig (Novozymes,
7/22/13 (affirming the invalidity of species claim
which was not adequately supported by genus
description in the specification addressing and
distinguishing numerous WD genus-species cases);
Boston Scientific, 6/7/11)
- Generic claims to biological subject matter whether

genus claim(s) (i.e., encompass two or more disclosed
embodiments within its scope) are supported by a
sufficient number of species? (Boston Scientific, 6/7/11
(lack of WD where the patents disclosed no species of
the claimed genus and sub-genus); Ariad, 3/22/10 (en
banc) (noting that the problem is especially acute with
genus claims that use functional language to define the
boundaries of a claimed genus))
1928
- Eli Lilly WD a claimed genus (e.g., of cDNAs)
must be supported by a description of a
representative number of species falling within the
scope of the genus, or by a description of structural
features common to the members of the genus
(which features constitute a substantial portion of
the genus) so that one of skill in the art can
visualize or recognize the members of the genus
Ariad (en banc) (Bayer Cropscience, 9/3/13;
Boston Scientific, 6/7/11 (comparing the case to
Carnegie Mellon, in that the specification did not
disclose any species of the claimed genus of
macrocyclic lactone analogs for use in the claimed
drug-eluting stents -- and that while a small
number of the analogs were known in the prior art,
the claims covered tens of thousands of possible
analogs); Hynix, 5/13/11 (non-biotech/pharma
case, where the accused infringer did not argue
that the disclosure of a multiplexed bus was not
representative of the genus of buses that
encompassed both the multiplexed bus and the
non-multiplexed bus); Billups-Rothenberg, 4/29/11
(eventual discovery of only one mutation species
within the claimed genus was not adequate WD of
the genus); Ariad, 3/22/10 (en banc) (genus
method claims were not supported by sufficient
disclosure); In re Alonso, 10/30/08 (claimed genus
of monoclonal antibodies was not adequately
supported by the disclosure of a single species of
monoclonal antibody, where no structure was
disclosed and the above requirements otherwise
were not met); Carnegie Mellon U., 9/8/08 (single
species of bacterial gene from E. coli did not
adequately support generic claims defining coding
sequences by function (encoding DNA polymerase
I) and encompassing coding sequences from any
bacterial species))
1929
- Genus can be described by disclosing: 1) a
representative number of species in that
genus; or 2) its relevant identifying
characteristics, such as complete or partial
structure, other physical and/or chemical
properties, functional characteristics when
coupled with a known or disclosed
correlation between function and structure,
or some combination of such characteristics
Enzo Biochem (Bayer Cropscience, 9/3/13
(that the requirements above were not met
was a reason for the CAFC to reject the
patentees proposed construction of claim as
a broad functional genus claim); Boston
Scientific, 6/7/11; Billups-Rothenberg,
4/29/11; Ariad, 3/22/10 (en banc); In re
Alonso, 10/30/08 (specification taught
nothing about the structure, epitope
characterization, binding affinity,
specificity, or pharmacological properties
common to the large family of monoclonal
antibodies implicated by the claimed
method; claims also provided only a sparse
description of antibody structure))
- To satisfy the WD requirement for a claimed

genus, the specification must describe the
claimed invention in such a way that a POS
in the art would understand that the genus
that is being claimed has been invented, not
just a species of the genus Eli Lilly, PTO
WD Guidelines (Intervet, 8/4/10 (applying
rule to construing claims as genus claims
where supported in the specification by
species sufficient to constitute the genus);
Ariad, 3/22/10 (en banc); In re Alonso,
10/30/08; Carnegie Mellon U., 9/8/08)
1930
- To satisfy the WD requirement for a
chemical or biotech genus, more than
a statement of the genus is normally
required; the inventor must show
possession, as described in the
application, of sufficient species to
show that the inventor invented and
disclosed the totality of the genus
(Boston Scientific, 6/7/11 (an ipsis
verbis disclosure of a claimed genus
[r]apamycin (sirolimus) structural
analogs (macrocyclic lactones) was
not per se sufficient to meet the WD
requirement); Ariad, 3/22/10 (en
banc) (appearance of mere indistinct
words in the specification or claim,
even an original claim, usually does
not suffice); In re Alonso, 10/30/08;
Carnegie Mellon U., 9/8/08)
- Number of species that must be disclosed to

describe a genus claim? no bright line rule
- the number necessarily changes with each
invention, and with progress in a field
(Boston Scientific, 6/7/11; Ariad, 3/22/10
(en banc))
- Generic inventions which are adequately

supported, those that are merely a wish or
plan (Fiers), and those in between (Noelle) the
facts of the specific case must be evaluated, and
the scope issue must be determined claim-by-claim
(Streck, 1/10/12 (affirming adequate WD of two
reticulocyte species to support genus claim to
hematology control); Centocor, 2/23/11 (fact that a
fully human antibody could be made using
disclosed phage display technology did not suffice
to show that the inventors possessed a fully human
1931
antibody; a mere wish or plan for obtaining the
claimed invention is not adequate WD Lilly the
actual inventive work for producing a human
variable region was left for subsequent inventors to
complete); Ariad, 3/22/10 (en banc) (genus method
claims were not adequately supported by a vague
functional description and an invitation or wish or
plan for further research on hypothetical
compounds for use in the claimed method); Capon,
8/12/05)
- Claims to research plans impose costs on

downstream research, discouraging later
invention the goal is to get the right
balance, and the WD requirement does so by
giving the incentive to actual invention
rather than attempt[s] to preempt the future
before it has arrived Fiers (Boston
Scientific, 6/7/11; Ariad, 3/22/10 (en banc))
- Support for generic claims (to biological subject

matter) depends on a variety of factors: 1) the
existing knowledge in the field; 2) the extent and
content of the prior art; 3) the maturity of the
science or technology; and 4) the predictability of
the aspect at issue, and other considerations
appropriate to the subject matter (Boston
Scientific, 6/7/11; Centocor, 2/23/11 (making the
claimed fully human antibody would not have
been routine given the state of human antibody
technology at the time of filing); Ariad, 3/22/10
(en banc) (broadly claimed gene regulation method
was not supported by an adequate WD where the
invention was made in a new and unpredictable
field where the existing knowledge and prior art
were scant); Carnegie Mellon U., 9/8/08
(distinguishing the facts of Capon); Capon,
8/12/05)
1932
- Predictability of other species a statement
of function and species (in a parent
application) does not support a genus claim
(in a later application) when other species
are not predictable from the species
disclosed (In re Alonso, 10/30/08 (citing
Noelle in affirming the rejection of a genus
claim to monoclonal antibodies where
scientific articles confirmed that the
antibodies required to perform the claimed
method varied substantially in their
composition); Noelle, 1/20/04 (mouse
CD40CR antigen and antibody in parent
application did not adequately support later
genus and human monoclonal antibody
claims))
- Operability - unnecessary that every permutation

within a generally operable invention be effective
in order to obtain a generic claim, provided that the
effect is sufficiently demonstrated to characterize a
generic invention (Centocor, 2/23/11 (n.3: that the
human B lymphocyte method disclosed in the
specification for making a fully human antibody
was never used successfully supported lack of
WD); Capon, 8/12/05)
PTO Written Description Guidelines
- PTO Written Description Guidelines adopted by the

CAFC - see Enzo Biochem, U. Rochester (Centocor,
2/23/11 (distinguishing rule that an antibody can be
supported by disclosure of its corresponding antigen -
Noelle); Carnegie Mellon U., 9/8/08 (relied on for
holding that genus claims were not supported by a
1933
sufficient number of species in the specification);
Invitrogen, 11/18/05)
Gentry Gallery, Tronzo, Lizardtech specification too narrow for

claim breadth
(Synthes USA, 10/29/13; Crown Packaging, 4/1/11 (WD

supported claims to improving metal usage in cans without also
addressing other disclosed prior art problem, distinguishing
Tronzo and LizardTech in which the specification
unambiguously limited the scope of the invention; see also J.
Dyk, dissenting WD support was only for claims addressing
prior art problems together, not separately as claimed); Ariad,
3/22/10 (en banc) (prophetic teaching of using described class
of molecules in the claimed genus methods could not bear the
weight of the vast scope of the claims); ICU Medical, 3/13/09
(disclosure of spiked valves only did not adequately support
broader claims not requiring spiked feature, citing and
comparing the facts to Lizardtech); Carnegie Mellon U., 9/8/08;
Poweroasis, 4/11/08 (citing Tronzo, where the original
application failed to provide adequate WD support for broad
claim construction in a later-filed CIP); Lizardtech, 10/4/05;
Cordis, 8/12/03); See also Shimano, 4/29/13 (nonprecedential
affirming the BPAI that amending claim during reexam had the
effect of broadening the claim to cover structures not described
in the specification, the relevant disclosure of which was very
detailed and which explicitly identified the reason for and
function of the narrower original claim scope)
- CAFC did not announce a new essential element test in

Gentry Gallery, but rather expounded on the rule that a
broad claim is invalid when the entirety of the
specification clearly indicates that the invention is of a
much narrower scope (Bard, 2/10/12 (claims not limited
to a specific wall thickness were supported by adequate
WD where the patent did not mandate a wall thickness
within the stated range for the claimed invention, vs. a
1934
specific average internodal distance was a requirement of
the claimed invention, where the patent stated that it
must fall within a specific narrow range of values)
[vacated in part after remanded on 6/14/12]; Carnegie
Mellon U., 9/8/08)
- Purpose of the WD requirement is to ensure that the

scope of the right to exclude, as set forth in the claims,
does not overreach the scope of the inventors
contribution to the field of art as described in the
specification U. Rochester (Ariad, 3/22/10 (en banc);
ICU Medical, 3/13/09)
- Each and every claim need not cover all the

inventive components, or address all of the
problems in the prior art, as described in the
specification (Crown Packaging, 4/1/11 (relying on
Revolution Eyewear to find WD support for claims
addressing only one of two prior art problems
described in the specification; see also J. Dyk,
dissenting WD support was only for claims
addressing both prior art problems together);
Revolution Eyewear, 4/29/09 (claim addressing
only one of two problems described with prior art
eyeglass frames was valid, while rejecting the
argument that if problems addressed by the
invention are related, then a claim addressing only
one of the problems is invalid for lack of sufficient
WD, stating: Inventors can frame their claims to
address one problem or several, and the written
description requirement will be satisfied as to each
claim as long as the description conveys that the
inventor was in possession of the invention recited
in that claim)); See also CLAIM
CONSTRUCTION - Unclaimed features are not
limiting
1935
Later claimed subject matter In re Ruschig, genus-species; New
matter prohibition under 35 USC 132
- Broadening of claims is proper while broadening

claims during prosecution to capture a competitors
products is not improper, the written description must
support the broadened claims Liebel-Flarsheim
(Synthes USA, 10/29/13)
- Priority to earlier application the test to determine if an

application is to receive the benefit of an earlier
application is whether a POS in the art would recognize
that the applicant possessed what is claimed in the later
filed application as of the filing date of the earlier filed
application (Novozymes, 7/22/13; Synqor, 3/13/13;
Hynix, 5/13/11; Trading Techs., 2/25/10 (jurys verdict
of adequate WD support in provisional application was
supported by expert testimony); Martek Biosciences,
9/3/09 (priority established by expert testimony); Agilent
Techs., 6/4/09; ICU Medical, 3/13/09 (later filed
spikeless claims were invalid based on lack of WD
where the claims were not filed with the original
application); Poweroasis, 4/11/08; Chiron, 3/30/04;
Noelle, 1/20/04; Curtis, 1/6/04; Chen, 10/22/03)
- Obtaining the benefit of the filing date of a parent

application the claims of the later-filed
application must be supported by the WD in the
parent in sufficient detail that one skilled in the
art can clearly conclude that the inventor invented
the claimed invention as of the filing date sought
Lockwood (Novozymes, 7/22/13 (citing
Anascape); Anascape, 4/13/10 (no WD support in
the parent for claims in CIP patent))
- Later claiming genus when parent application

describes single species only (Hynix, 5/13/11
(genus claim was supported by a single species,
1936
and distinguishing ICU Medical based in part on
expert and inventor testimony); Trading Techs.,
2/25/10 (later claimed single action of a user
input device was supported by description in
provisional application of a single click of a
computer mouse in light of expert testimony and
the undisputed knowledge of those skilled in the
art); ICU Medical, 3/13/09 (description of spiked
feature only in the specification did not support
later added broader claim not requiring feature);
Baldwin Graphic Systems, 1/15/08 (reissue claims
interpreted to cover species only); Bilstad, 10/7/04;
Noelle, 1/20/04; Curtis, 1/6/04); See also
Biotech/Pharma
- No categorical rule that a species cannot

suffice to claim the genus (Hynix, 5/13/11)
- No special rule for supporting a genus

by the disclosure of a species; so long
as disclosure of the species is
sufficient to convey to one skilled in
the art that the inventor possessed the
subject matter of the genus, the genus
will be supported by an adequate WD
Ariad (en banc) (Hynix, 5/13/11)
- Whether genus is supported depends

on the state of the art and the nature
and breadth of the genus (Hynix,
5/13/11 (adequate WD support for
genus consisting of only two species,
a multiplexed and a non-multiplexed
bus, and the challenger failed to argue
that a POS in the art would not have
understood that the patentee
possessed a non-multiplexed bus))
1937
- Satisfying the WD requirement for a
claimed genus - the specification must
describe the claimed invention in such a way
that a POS in the art would understand that
the genus that is being claimed has been
invented, not just a species of the genus
Eli Lilly, PTO WD Guidelines (Hynix,
5/13/11; Crown Packaging, 4/1/11
(addressing WD support in original genus
claims and specification); Trading Techs.,
2/25/10 (the patents-in-suit were entitled to
claim priority to a provisional application
where disclosure of a species in the
provisional application provided sufficient
WD support for a later filed claim directed
to a very similar and understandable
genus); In re Alonso, 10/30/08; Carnegie
Mellon U., 9/8/08)
- Must identify or describe compound (Chen,

10/22/03)
- Possession of specific subject matter as of filing

date required (Chiron, 3/30/04)
- Predictability of later claimed genus from earlier

species (Curtis, 1/6/04)
- Specification need not describe in exact terms, or

contain precisely the same words (i.e., in haec
verba support) as later claimed (Martek
Biosciences, 9/3/09; ICU Medical, 3/13/09;
Technology Licensing, 10/10/08; Poweroasis,
4/11/08; Koito Mfg., 8/23/04)
New matter prohibition
1938
- New matter 35 USC 132 provides that [n]o
amendment shall introduce new matter into the disclosure
of the invention (Ariad, 3/22/10 (en banc) (referring to
the new matter prohibition under Section 132 as an
examiners instruction and which provides no statutory
penalty for a breach (unlike Section 282 does for
violating Section 112)); Harari, 4/19/10 (rejecting the
BPAIs argument that a continuation applicant should
have filed a new inventors declaration, referring to an
also-filed preliminary amendment, stating that [f]or the
Board to require that an applicant file a new inventors
declaration in order to prove that the application contains
no new matter and thus does not require a new inventors
declaration is circular and unreasonable); CSIRO,
9/19/08 (extensively discusses the new matter
prohibition; see also J. Lourie, concurring reasonable to
conclude that the introduction of new matter invalidated
the patent); Baldwin Graphic Systems, 1/15/08 (citing In
re Ruschig); Chiron, 3/30/04; Chen, 10/22/03)
- Patent Act prevents an applicant from adding new

subject matter during prosecution (CSIRO, 9/19/08
(new matter not added when viewing the
application as a whole, including a figure and
experts admission that a broader scope was
possible based on the figure); Baldwin Graphic
Systems, 1/15/08 (amendment during reissue
prosecution of heat-sealed sleeve in the
specification to sealed sleeve introduced
impermissible new matter; thus, claims to sealed
sleeve invalid if construed to encompass more
than heat-sealed sleeve)); See also In re Reiffin
Family Trust, 7/27/09 (nonprecedential
exception in the limited circumstance in which
the application incorporates material from an
earlier application in a chain of co-pending
applications; exception does not apply when the
chain has been broken by patent issuance, i.e., the
1939
failure to maintain continuity of disclosure of the
material becomes uncorrectable upon patent
issuance, citing Dart Indus. (D.C. Cir.))
- Validity challenge based on new matter

the PTOs allowance of the amendment(s)
is entitled to an especially weighty
presumption of correctness in a subsequent
validity challenge based on the alleged
introduction of new matter Brooktree
(CSIRO, 9/19/08)
- WD requirement prevents the addition of new

matter to claims; requires sufficient information to
show that the inventor possessed the invention at
the time of the original application; the possession
test requires assessment from the viewpoint of one
skilled in the art; need not describe exactly the
subject matter claimed (Trading Techs., 2/25/10
(undisputed that one of ordinary skill in the art
would have known from the earlier disclosed
single click of a computer mouse about other
forms of the later claimed single action of a user
input device such as double-click or pressing a
key); Agilent Techs., 6/4/09 (applicant in an
interference did not possess the subject matter of a
claim copied from the opposing patent); CSIRO,
9/19/08 (CAFC affirmed the district courts
finding that patent was not invalid for adding new
matter where the amendments to the specification
and claims were supported by the original
disclosure, and the description of the invention
which was allegedly broadened in scope was to
useful embodiments of the invention, and not as
limitations to the invention as a whole); Pandrol,
9/19/05)
1940
- Testimony and publications of the inventors
to show possession of broader scope
(CSIRO, 9/19/08)
- WD requirement not limited to policing new

matter violations (Ariad, 3/22/10 (en banc);
Lizardtech, 1/5/06 (concurring opinion
accompanying denial of request for en banc
review))
Original claims provide written description support
- Original claims provide WD support - originally filed

claim can provide the requisite WD to satisfy 112
but, the claim and specification must still be an adequate
and enabling description of the full scope of the claimed
subject matter (Crown Packaging, 4/1/11 (adding that
certain claims, such as claims to a functionally defined
genus, will not satisfy the WD requirement without a
disclosure showing that the applicant had invented
species sufficient to support the claim citing Ariad (en
banc); original claims, including the dependent claims,
here showed that the applicants had in mind the broad
invention as claimed); Ariad, 3/22/10 (en banc) (original
claim language contributes to the description, and in
certain cases satisfies it); Lizardtech, 10/4/05 (rejecting
argument that Section 112 requires only that each
individual step in a claimed process be described
adequately))
Genus-species
- Genus-species - WD support for added genus claim when

only a species is disclosed; the general rule is that a
species provides sufficient WD support for a later filed
claim to a genus, EXCEPT when the field of art is
1941
unpredictable (In re Curtis) the disclosure of additional
species is necessary to adequately show possession of the
entire genus; must consider the understanding of a POS
in the art and whether the WD would reasonably convey
possession of later claimed subject matter at the time of
filing (Synthes USA, 10/29/13 (jury inferred that in the
field of intervertebral implants, the patents disclosure of
peripheral grooves did not adequately show possession of
the entire genus of possible openings to support the later-
added broadened term plurality of openings -- citing
Bilstad); Trading Techs., 2/25/10; Bilstad, 10/7/04)
- Statement of function and species (in parent

application) does not support genus claim (in later
application) when other species are not predictable
from the species disclosed (Noelle, 1/20/04
(biotech, antibodies))
- When single embodiment supports a generic claim

(expansive claim language) only when the
specification shows possession of the claimed
subject matter and would enable a POS in the art to
practice the full scope of the claimed invention;
claims should describe only what was invented
(Lizardtech, 10/4/05)
Teaching function of the written description quid pro quo
- WD requirement serves a teaching function, as a quid pro

quo between the inventors and the public, in which the
public is given a meaningful disclosure in exchange for
being excluded from practicing the invention for a
limited period of time (Ariad, 3/22/10 (en banc); ICU
Medical, 3/13/09; In re Alonso, 10/30/08; Carnegie
Mellon U., 9/8/08; U. Rochester, 2/13/04)
1942
Nature and scope of the invention determines adequate written
description
- What is an adequate WD depends on the context of the

claimed invention and state of the knowledge Capon
(Boston Scientific, 6/7/11; Ariad, 3/22/10 (en banc))
- Descriptive text needed to meet the WD requirement

varies with the nature and scope of the invention at issue,
the complexity of the technology, and with the scientific
and technologic knowledge already in existence; the WD
requirement must take cognizance of the scientific facts
(Synthes USA, 10/29/13; Streck, 1/10/12; Boston
Scientific, 6/7/11 (same as Ariad (en banc)); Ariad,
3/22/10 (en banc) (invention was made in a new and
unpredictable field where the existing knowledge and
prior art were scant); Carnegie Mellon U., 9/8/08;
Falkner, 5/26/06; Capon, 8/12/05)
- Applicants disclosure obligation varies according

to the art to which the invention pertains (In re
Skvorecz, 9/3/09 (person skilled in the mechanical
arts would understand the specification including
the drawings as showing the required claim
features))
- Claimed step so straightforward that detailed

description in the specification was unnecessary
(Kao, 3/21/06)
- Knowledge may change as time progresses In re

Wallach (Ariad, 3/22/10 (en banc); Carnegie
Mellon U., 9/8/08)
- Unpredictable fields of science - well-recognized that it

is appropriate to recognize the variability in the science
in determining the scope of coverage to which the
1943
inventor is entitled - look to the examples (Capon,
8/12/05)
Written description and enablement are separate requirements -

Vas-Cath
(Crown Packaging, 4/1/11 (challengers undue scope arguments

related to enablement (which was not argued), rather than WD);
Anascape, 4/13/10 (See J. Gajarsa, concurring, repeating from
his concurring opinion in Ariad (en banc) that the preferred use
of the WD requirement is in the priority context only, leaving
only the enablement requirement for invalidating claims that
extend beyond what the patent actually discloses to a POS in
the art); Ariad, 3/22/10 (en banc); Ariad, 4/3/09 (see also J.
Linn, concurring opining that WD is not a separate
requirement of Section 112, as the patent need only be enabling
for the full scope of the claims) [vacated on 8/21/09, and
petition for rehearing en banc granted, for which the
parties were requested to brief the following issues, which
were decided in Ariad, 3/22/10 (en banc): 1) Whether
Section 112, first paragraph, contains a written description
requirement separate from an enablement requirement?
[Yes], and 2) If a separate written description requirement
is set forth in the statute, what is the scope and purpose of
the requirement? [To describe the original claims (i.e., Lilly
doctrine), as well as any amended or newly added claims for
purposes of determining priority]; In re Alonso, 10/30/08;
Carnegie Mellon U., 9/8/08; Yingbin-Nature, 7/31/08;
Lizardtech, 10/4/05 (see also concurring opinion issued 1/5/06
with order denying request for rehearing en banc, addressed
above); Chiron, 3/30/04; U. Rochester, 2/13/04; Curtis, 1/6/04);
See also ENABLEMENT
- Enablement (make and use full scope of invention

without undue experimentation) and WD (inventor had
possession of full scope of claimed invention) usually
rise and fall together (Crown Packaging, 4/1/11
1944
(invalidity argument based on undue breadth related to
enablement, rather than WD); Ariad, 3/22/10 (en banc);
In re Alonso, 10/30/08 (distinguishing rule where genus
invention enabled but not adequately described);
Lizardtech, 10/4/05)
- Describing how to make and use the invention

across the full breadth of the claim is ordinarily
sufficient to demonstrate that the inventor
possesses the full scope of the invention, and vice
versa LizardTech (In re Alonso, 10/30/08 (n.6))
- Specifications role is to teach both what invention is

(WD) and how to make and use it (enablement) (U.
Rochester, 2/13/04)
- Discrete legal requirements served by the WD and

enablement requirements; an invention may be
enabled even though it has not been described U.
Rochester (Ariad, 3/22/10 (en banc); In re Alonso,
10/30/08)
- Claims are not necessarily limited to preferred

embodiments, but if there are no other
embodiments, and no other disclosure, then they
may be so limited; merely calling an embodiment
preferred, when there are no others, does not
entitle one to claims broader than the disclosure
(Lizardtech, 1/5/06 (concurring opinion
accompanying denial of request for en banc
review))
- WD requirement that specification set forth enough

detail to allow a POS in the art to understand what is
claimed, and to recognize that the inventor actually
invented, and was in possession of, the claimed subject
matter at the time of filing (Monsanto, 8/16/06; U.
Rochester, 2/13/04)
1945
Drawings
- Drawings alone may provide an adequate WD of an

invention, under proper circumstances Vas-Cath,
Cooper Cameron (In re Skvorecz, 9/3/09 (drawings as a
whole showed the full structure of the claimed device);
Revolution Eyewear, 4/29/09 (figure supported new
broader claim added in reissue application))
- Drawings not limiting claim scope (Crown Packaging,

4/1/11)
- Drawings may not be relied on to show particular sizes if

the specification is completely silent on the issue (Go
Medical Indus., 10/27/06)
- Incorporation by reference (Sandisk, 10/9/12 (applied to

disclosure-dedication rule under DOE); Harari, 9/1/11;
Allergan, 5/19/11 (stating (in the context of an argument
that the accused infringer could argue obviousness in
post-trial filings based on prior art references
incorporated by reference in the patents in suit, but which
were not relied on during trial or supported by expert
testimony) that incorporation by reference of references
in patents means . . . that they are treated as if set forth
in their entirety in the patents); Cook Biotech, 8/18/06
(particularity requirement for incorporation by reference,
as relating to claim breadth); See also Adang, 10/25/07
(nonprecedential - failure to incorporate application by
reference, for purposes of showing WD support)); See
also PRIORITY DATES 35 USC 119, 120
Incorporation by reference; and CLAIM
CONSTRUCTION Incorporation by reference
1946
Expert and inventor testimony
- Expert testimony to prove case understanding of one of

ordinary skill reading the specification (Novozymes,
7/22/13 (rejecting the patentees expert testimony that a
parent applications generalized genus teaching provided
adequate support for a later-claimed species); Energy
Transportation Group, 10/12/12 (substantial evidence
based on experts admissions that inventor in possession
of adaptive filter for hearing aid); Harari, 9/1/11 (expert
testimony supported lack of WD); Boston Scientific,
6/7/11 (lack of WD where the disclosure in the
specification regarding the state of the art of drug-eluting
stents directly contradicted the patentees expert
testimony); Hynix, 5/13/11 (adequate WD for genus
claim based on disclosure of a single species was
supported by both expert and inventor testimony);
Centocor, 2/23/11 (antibody claims were invalid for lack
of WD where only the accused infringer had an expert,
while the patentee relied only on the specification and
inventor testimony); Research Corp., 12/8/10 (rejecting
expert testimony as old and relating to claims not in
dispute); Laryngeal Mask, 9/21/10 (expert testimony as
to one of ordinary skill reading the specification,
including the summary of the invention, raised genuine
factual dispute precluding SJ of invalidity based on lack
of WD); Yorkey II, 4/7/10 (battle of experts in an
interference, in which the BPAI properly found one
partys experts testimony more credible than the
others); Ariad, 3/22/10 (en banc) (expert testimony
failed to show adequate WD support for biotech genus
method claims); Martek Biosciences, 9/3/09 (jurys
verdict of priority was supported by expert testimony as
to how an ordinarily skilled artisan would understand the
text of the priority application); Agilent Techs., 6/4/09
(admissions by partys own expert evidenced a lack of
1947
adequate WD by inherency); Cordis, 3/31/09
(uncontradicted expert testimony supported jurys finding
that stent claims were entitled to priority of provisional
applications filing date); Poweroasis, 4/11/08 (experts
conclusory declaration testimony failed to show
possession of invention in an earlier filed application to
avoid SJ of invalidity based on anticipating prior art);
Space Systems/Loral, 4/20/05)
- Possession of the invention must be shown by the

WD in the specification U. Rochester (Boston
Scientific, 6/7/11; Eli Lilly, 9/1/10 (district courts
finding of lack of WD was not clearly erroneous in
view of concession regarding the patents
disclosure by the patentees expert); Ariad, 3/22/10
(en banc) (n.3: experts general conclusion of
possession of the invention was devoid of any
factual content upon which the jury could have
relied as substantial evidence when considering the
specification))
- Expert testimony, additional evidence not necessary, as

the patent can be invalid for lack of WD based solely on
the face of the specification (Boston Scientific, 6/7/11
(patent can prove its own invalidity U. Rochester);
Centocor, 2/23/11 (no WD support for broad claim
covering fully human antibody, citing U. Rochester); U.
Rochester, 2/13/04)
- Inventor testimony (Energy Transportation Group,

10/12/12 (relying on inventor testimony that the Abstract
explicitly disclosed adaptive hearing aid); Streck, 1/10/12
(adequate WD despite the inventors testimony of the
difficulty of using a certain reticulocyte species in the
claimed hematology control, where the testimony, when
taken in context, related to the commercial practicalities
of using the species on a large scale, and thus reflected
1948
his personal preference for using another species in the
claimed invention))
H. BEST MODE
(Ateliers, 5/21/13 (reversing the district courts judgment of invalidity

based on a best mode violation; see also J. Prost, dissenting); In re
Cyclobenzaprine, 4/16/12 (affirming a best mode ruling where the
evidence supported a finding that the patents enable a POS in the art
to practice the inventors preferred dew points, distinguishing Bayer);
Atlantic Research, 10/6/11 (after finding added reissue patent claims
invalid for lack of WD, the CAFC declined to address best mode
violation where the patentee kept as a trade secret the accused
embodiment covered by the claims but not disclosed in the written
description); Star Scientific, 8/26/11 (no best mode violation where
the alleged best mode was developed after the priority date of
provisional application); Wellman, 4/29/11; Green Edge, 9/7/10;
Ajinomoto, 3/8/10; Pfizer, 3/7/08; Allvoice Computing, 10/12/07; Go
Medical Indus., 10/27/06 (priority); Liquid Dynamics, 6/1/06; Old
Town Canoe, 5/9/06; Cardiac Pacemakers, 8/31/04; High Concrete
Structures, 7/29/04); See also Anvik, 3/22/13 (nonprecedential the
question whether the best mode has been satisfied is highly factual)
Best mode requirement 35 USC 112, first paragraph
- The specification shall contain a written description of the

invention, and of the manner and process of making and using
it, in such full, clear, concise, and exact terms as to enable any
person skilled in the art to which it pertains, or with which it is
most nearly connected, to make and use the same, and shall set
forth the best mode contemplated by the inventor of
carrying out his invention. 35 USC 112, first paragraph
Generally
1949
- 35 USC 112, 1, provides that the specification shall set
forth the best mode contemplated by the inventor of carrying
out his invention; this requirement ensures that a patent
applicant discloses the preferred embodiment of his invention
Teleflex - the sufficiency of the disclosure of the best mode is
determined as of the filing date In re Glass (CCPA) (Ateliers,
5/21/13; In re Cyclobenzaprine, 4/16/12; Wellman, 4/29/11
(best mode violation arises if any inventor fails to disclose the
best mode known to him or her); Green Edge, 9/7/10;
Ajinomoto, 3/8/10; Pfizer, 3/7/08 (typically, the best mode
issue concerns the applicants failure to disclose a preferred
embodiment, but not always); Allvoice Computing, 10/12/07);
See also Joy, 11/8/12 (nonprecedential n.2: At its heart, the
best mode requirement is concerned with preventing inventors
from concealing the best mode of their invention while being
rewarded with the right to exclude others from making or using
it. - Teleflex)
- Best mode also requires inventors to disclose aspects of

making or using the claimed invention when the
undisclosed matter materially affects the properties of the
claimed invention Bayer (Ajinomoto, 3/8/10; Pfizer,
3/7/08 (knowledge of preference for COX-2 selectivity
was not necessary for determining preferred dosage
ranges))
- Supplier/trade name information required for a

proprietary product used in the preferred
embodiment to satisfy the best mode requirement
U.S. Gypsum (Green Edge, 9/7/10)
- Best mode requirement does not demand disclosure of

every preference an inventor possesses as of the filing
date Bayer (Ajinomoto, 3/8/10; Pfizer, 3/7/08 (CAFC
needed not resolve the difficult issue of whether the
best mode requirement with respect to generic compound
claims required disclosure of the patentees preference
for COX-2 selectivity))
1950
- Best mode violation requires that: 1) (at least one) inventor
knew of a best or better mode than that disclosed at the time the
application was filed (subjective inquiry, focusing on the
inventors state of mind, i.e., the inventors own personal
preferences), and 2) the inventor (intentionally) concealed the
best or better mode ask whether the inventor provided a
sufficient, enabling disclosure to allow one of ordinary skill in
the art to practice the best mode (or, in other words, has the
inventor concealed his preferred mode from the public? -
Chemcast) (objective inquiry, depending on the scope of the
claimed invention and the level of skill in the relevant art) -
Bayer (Ateliers, 5/21/13 (no best mode violation where best
mode was disclosed as a preferred embodiment and there was
no intentional concealment; see also J. Prost, dissenting the
inventors did not adequately disclose the best mode (using an
odd number of grooves), despite disclosing a preferred
embodiment with three grooves, buried among other inoperable
embodiments); Star Scientific, 8/26/11; Wellman, 4/29/11 (best
mode violation where at least one inventor failed to disclose his
best mode at the time of filing, despite evidence of an evolving
recipe and potentially the absence of any best mode; also, best
mode was concealed where the patents were found to lead
away from using the preferred component); Green Edge,
9/7/10 (reversing and remanding SJ of invalidity based on best
mode violation where the most preferred colorants for the
claimed colorant of the claimed synthetic mulch disclosed in
the specification were mis-identified as VISICHROME by
Futura Coatings, rather than by the correct product code
24009, which happened because the supplier Futura provided
the incorrect information to the patentee shortly before the
filing date); Ajinomoto, 3/8/10; Pfizer, 3/7/08; Allvoice
Computing, 10/12/07; Go Medical Indus., 10/27/06; Liquid
Dynamics, 6/1/06; Old Town Canoe, 5/9/06; High Concrete
Structures, 7/29/04 (intention concealment required)); See also
Anvik, 3/22/13 (nonprecedential reversing SJ of invalidity
based on best mode violation and remanding for trial where
disputed issues of material fact regarding the inventors
1951
concealment of best mode, including where the inventor
submitted a declaration explaining his responses, admissions
made during his deposition; also, the inventors credibility was
for the fact finder, and not for the court on SJ); Joy, 11/8/12
(nonprecedential no concealment where preferred, non-
disclosed mode was well-known substitute in the art; see also
n.2); Taltech, 5/22/08 (nonprecedential the inventor possessed
a best mode at the time of filing, as the inventor believed the
bonding element to be an integral part of the invention and
because the inventor had experimented with many adhesives
but preferred and contemplated only using the one not
disclosed)
- Whether at the time of filing, applicant had a best mode

of practicing the invention (subjective determination),
and whether the best mode was disclosed in sufficient
detail to allow a skilled artisan to practice it without
undue experimentation (objective determination)
(Wellman, 4/29/11; Green Edge, 9/7/10; Pfizer, 3/7/08;
Old Town Canoe, 5/9/06)
- Best mode may be represented by a preferred

range of conditions or group of ingredients, rather
than a working embodiment (Wellman, 4/29/11
(best mode concealed by identifying preferred
concentration ranges and particle sizes for certain
ingredients that excluded those in the best mode))
- Need not identify which disclosed mode is the best

mode In re Bosy, Randomex (Ateliers, 5/21/13
(no best mode violation where the inventors
disclosed as their preferred embodiment using
three grooves, despite not pointing out that an odd
number of grooves was the best mode; see also J.
Prost, dissenting); Wellman, 4/29/11); See also
Joy, 11/8/12 (nonprecedential n.2: a POS in the
art would not need to be reminded of well-known,
1952
non-disclosed substitutes to practice the best mode
of the invention)
- Intentional concealment of the best mode is required

High Concrete Structures, In re Gay (Ateliers, 5/21/13
(violation requires intentional concealment, rejecting
argument that the CAFCs earlier precedential decisions
requiring intentional concealment have been superseded
by conflicting panel decisions (n.3); see also J. Prost,
dissenting recent cases, including Wellman and High
Concrete Structures, conflict with the CAFCs earlier
precedent that intent is not required for a best mode
violation -- citing cases stating that concealment can be
intentional or accidental, and that the concealment
inquiry is objective); Wellman, 4/29/11(best mode
violation where a co-inventor intended to conceal an
ingredient of the preferred PET resin by choosing to
maintain it as a trade secret))
- Innocent or inadvertent failure of disclosure does

not of itself invalidate the patent (Ateliers, 5/21/13
(district court erred in law, in stating that
concealment occurred although the preferred
embodiment was disclosed, and that any omission
need not be intentional to invalidate the patent on
best mode grounds - citing Wellman for above
rule))
Best mode violation measured by the claims
- Inventor knew of and concealed (intentionally) a better mode

obligation relates to the invention described and claimed
measured by the claims thus, a threshold step is to define the
invention by construing the claims (Wellman, 4/29/11 (citing
rule from Ajinomoto, and adding that claim terms need only be
construed to the extent necessary to resolve the controversy
Vivid Techs.; the CAFC declined to construe the claims first,
1953
because the district court ruled only on the claims which the
parties agreed covered the alleged best mode ); Ajinomoto,
3/8/10 (a threshold step in a best mode inquiry is to define the
invention by construing the claims; the claimed methods of
making L-lysine by cultivating genetically engineered bacteria
required for satisfying the best mode requirement the inventors
to disclose their preferred bacterial host strains); Pfizer, 3/7/08;
Allvoice Computing, 10/12/07; Old Town Canoe, 5/9/06;
Cardiac Pacemakers, 8/31/04)
- Claim by claim basis - best mode inquiry is undertaken

on a claim by claim basis (Wellman, 4/29/11; Pfizer,
3/7/08 (best mode issue with respect to generic
compound claims needed not be resolved when claims
specific to the preferred compound were not invalid
based on best mode))
- Invention in the best mode inquiry is the invention as

defined by the claims (Wellman, 4/29/11; Ajinomoto,
3/8/10 (rejecting the patentees arguments that the ITC
made legal errors in defining the scope of its claimed
methods and the scope of the best mode requirement,
ruling that the invention is the invention claimed and
not innovative aspects or inventive features of the
invention -- terms that appear nowhere in the CAFCs
best mode case law); Pfizer, 3/7/08)
- Best mode requirement, like infringement, applies

to the invention claimed, with all its limitations,
not just the novel ones (Ajinomoto, 3/8/10
(rejecting the patentees argument that the claimed
methods for producing L-lysine by cultivating a
bacterium having novel mutations included only
the novel mutations for purposes of satisifying the
best mode requirement))
- Focus of the best mode inquiry remains on the

claimed invention rather than the patentees
1954
commercial product (Wellman, 4/29/11 (patentees
commercial PET resin was within the scope of the
claims invalidated by the district court))
- Only the claimed invention is subject to the best mode

requirement (Wellman, 4/29/11; Ajinomoto, 3/8/10;
Allvoice Computing, 10/12/07 (alleged best mode, i.e., a
method to perform unclaimed functions, fell outside
scope of the claimed invention))
- Subject matter outside the scope of the claims falls

outside the best mode requirement Allvoice
Computing (Wellman, 4/29/11; Ajinomoto, 3/8/10)
Information that is routine, readily known to a POS in the art is

not a best mode violation
- Best mode requirement is not violated by an unintentional

omission of information that would be readily known to persons
in the field of invention (In re Cyclobenzaprine, 4/16/12; Liquid
Dynamics, 6/1/06; High Concrete Structures, 7/29/04); See also
Anvik, 3/22/13 (nonprecedential reversing grant of SJ of
invalidity based on best mode violation and remanding in part
based on expert testimony that alternative modes to the alleged
best mode concealed by the inventor were well known in the
prior art); Joy, 11/8/12 (nonprecedential no violation where
non-disclosed mode was a well-known substitute in the art; see
also n.2)
- Disclosure of routine details unnecessary (In re

Cyclobenzaprine, 4/16/12; Liquid Dynamics, 6/1/06)
- Known ways of performing a known operation cannot be

deemed intentionally concealed absent evidence of intent to
deliberately withhold the information (Liquid Dynamics,
6/1/06; High Concrete Structures, 7/29/04)
1955
Biotech
- Best mode requirement cannot be satisfied by the deposit of a

non-preferred strain (Ajinomoto, 3/8/10)
- Features of the deposited strain to be disclosed in the

specification (Ajinomoto, 3/8/10 (specification did not disclose
that the deposited strain contained a certain genetic variant))
I. UTILITY 35 USC 101
Utility requirement 35 USC 101
- Whoever invents or discovers any new and useful

process, machine, manufacture, or composition of matter,
or any new and useful improvement thereof, may obtain
a patent therefor, subject to the conditions and
requirements of this title. 35 USC 101
Generally
- Specific and substantial utility needed the invention

must have a specific and substantial utility Brenner v.
Manson (S.C.) (Janssen, 9/25/09 (basis for lack of
enablement); In re Fisher, 9/7/05)
- Patent law has always been directed to the useful

Arts (U.S. Const., art. I, section 8, clause 8),
meaning inventions with a practical use Brenner
v. Manson (S.C.) - patents are not awarded for
academic theories, no matter how groundbreaking
or necessary to the later patentable inventions of
others (Ariad, 3/22/10 (en banc) (reaffirming the
Lilly WD doctrine))
- Patent cannot be a hunting license to gain further

information Brenner (S.C.) (Ariad, 3/22/10 (en banc)
1956
(applying rule for support for WD requirement separate
from enablement requirement); Janssen, 9/25/09; In re
Fisher, 9/7/05); See also ENABLEMENT Utility
Biotech/Pharma
Biotech
- Claimed ESTs (at least when claims also cover the full
length gene) do not have specific and substantial utility
since they do not correlate to an underlying gene of
known function; claimed ESTs amount to a hunting
license to gain further information about underlying
genes and proteins encoded by the genes (In re Fisher,
9/7/05)
Pharma
- Use of in vitro and in vivo (animal) data, results to show

utility of pharmaceutical compounds Cross v. Iizuka, In
re Krimmel (CCPA) (Janssen, 9/25/09 (no utility of drug
for treating Alzheimers disease was shown in the
absence of in vitro or in vivo data, and thus treatment
method claims were invalid for lack of enablement); In re
Fisher, 9/7/05); See also ENABLEMENT Utility
- Claimed new methods of treatment typically are

supported by test results; however, human trials
are not required In re Brana (Janssen, 9/25/09)
- Utility established by analytical reasoning?, i.e., in

the absence of testing results MPEP (arguments
or reasoning may be used to establish an
inventions therapeutic utility) (Janssen, 9/25/09
(rejecting the patentees argument where alleged
1957
insights gained from prior art teachings in the
patent were nowhere described in the
specification))
Commercial success may support utility of the invention
(In re Fisher, 9/7/05)
J. INOPERABILITY
- Party alleging inoperability must show that each disclosed

embodiment in the patents was impossible or not enabled
(Cordis, 1/7/08 (claim construction, as related to inoperability))
- Utility requirement (CFMT, 11/12/03)
K. INVENTORSHIP
Conception
(Dawson, 3/25/13 (affirming the BPAIs holding as supported

by substantial evidence and no error of law that sole conception
was not established where the junior party failed to meet its
burden of proof on conception; see also J. Reyna, dissenting
prior sole conception was shown); Preston, 7/10/12 (invention
necessarily requires at least some definite understanding of
what has been invented, rejecting that an uncorroborated little
more than a vague idea was enough for conception, even
assuming that a broader view of the term conceive applied
under state law in an assignment provision of an employment
agreement); Bard, 2/10/12 (an alleged joint inventor did not
contribute to the conception of the recited internodal distances
in the claimed vascular grafts in a significant way; see also J.
Newman, dissenting the record from a prior interference
revealed that the alleged co-inventor first conceived the
invention before communicating with the named inventor who
1958
first reduced the invention to practice and, at a minimum,
should be a joint inventor) [vacated in part after remanded
on 6/14/12]; Falana, 1/23/12 (conception of a chemical
compound for joint inventorship); Creative Compounds,
6/24/11 (accused infringer failed to prove prior conception and
diligence for invalidating patent under Section 102(g));
Spansion, 12/21/10 (earlier conception shown to overcome
Section 102(e) prior art patents); Solvay, 10/13/10 (prior
conception by another inventor is required for prior invention
defense under Section 102(g)(2)); Advanced Magnetic
Closures, 6/11/10 (holding patent unenforceable for IC based
on falsely claimed inventorship); Vanderbilt U., 4/7/10
(conception for joint invention); *U. of Pittsburgh, 7/23/09
(misjoinder was proven by a completed conception of adipose
(fat)-derived stem cells before the contributions made by the
misjoined inventors); Shum, 8/24/07; Brand, 5/14/07; Stern,
1/17/06; Invitrogen, 11/18/05; Gemstar, 9/16/04; Wallach,
8/11/04; Eli Lilly, 7/20/04; Cyanamid, 9/3/03; BJ Services,
8/6/03); See also Tavory, 10/27/08 (nonprecedential
summarizing the law of conception in the context of correction
of inventorship); See also ANTICIPATION Prior invention
35 USC 102(g); INTERFERENCES/PRIOR INVENTION
Generally
- Conception is the touchstone of inventorship; each

joint inventor must prove, must generally contribute to
the conception of the invention Burroughs Wellcome
(Bard, 2/10/12 [vacated in part after remanded on
6/14/12]; U. of Pittsburgh, 7/23/09; Shum, 8/24/07;
Stern, 1/17/06); See also Weaver, 3/7/12
(nonprecedential); Tavory, 10/27/08 (nonprecedential)
- Conception is the formation in the mind of the

inventor, of a definite and permanent idea of a
complete and operative invention, as it is hereafter
to be applied in practice Burroughs Wellcome
1959
(Dawson, 3/25/13 (contemporaneous documents
did not evidence sole conception of topical eye
treatment method where they disclosed only a
possibility or potential use of five alternative
delivery vehicles including the one ultimately
used, and recommended continued work; also
distinguishing conception from obviousness; see
also J. Reyna, dissenting); Creative Compounds,
6/24/11 (failure to prove prior invention under
Section 102(g)); Spansion, 12/21/10; Solvay,
10/13/10 (prior conception required for Section
102(g)(2) invalidity, and thus rejecting the accused
infringers challenge where the infringer did not
have a definite and permanent idea of its own
capable of being reduced to practice); U. of
Pittsburgh, 7/23/09 (conception was complete once
the co-inventors had the required definite and
permanent idea of the cells inventive qualities,
and had in fact observed them); Shum, 8/24/07;
Invitrogen, 11/18/05); See also Tavory, 10/27/08
(nonprecedential stating that no individual co-
inventor need have a definite and permanent idea
of the complete and operative invention so long
as all of the co-inventors collectively satisfy that
requirement - 116, Gemstar, Burroughs
Wellcome)
- Determinative inquiry is not whether the

inventors disclosure was phrased certainly
or tentatively, but whether the idea
expressed therein was sufficiently
developed to support conception of the
subject matter In re Jolley (Spansion,
12/21/10; U. of Pittsburgh, 7/23/09
(scientific certainty was not required for a
complete conception of the claimed stem
cells))
1960
- Idea is sufficiently definite for conception
when the inventor has a specific, settled
idea, a particular solution to the problem at
hand, not just a general goal or research plan
he hopes to pursue Burroughs Wellcome
(Dawson, 3/25/13 (idea to develop a product
that was like another product did not show
conception citing Creative Compounds
rule that speculation that one method should
be the same as another method does not
show conception; see also J. Reyna,
dissenting prior sole conception was
shown, where the drug concentrations used
in both were the same); Creative
Compounds, 6/24/11; Spansion, 12/21/10)
- Idea is sufficiently definite and permanent

for conception if it provides one skilled in
the art with enough guidance to understand
the invention (Dawson, 3/25/13 (J. Reyna,
dissenting prior sole conception was
shown); Solvay, 10/13/10; U. of Pittsburgh,
7/23/09 (lab notebooks sufficiently
described and enabled those skilled in the art
to isolate the claimed stem cells from fat
tissue, and thus be in possession of the
invention)); that is, when the inventor has a
specific, settled idea, a particular solution to
the problem at hand, not just a general goal
or research plan he hopes to pursue; the
inventor must be able to describe his
invention with particularity - Burroughs
Wellcome; this requires both 1) the idea of
the inventions structure, and 2) possession
of an operative method of making it
Amgen v. Chugai (Invitrogen, 11/18/05)
1961
- Inventor need not know that his invention
will work for conception to be complete; he
need only show that he had the complete
mental picture and could describe it with
particularity; the discovery that the
invention actually works is part of its RTP -
Price (Dawson, 3/25/13 (rejecting argument
that claims and conception did not require
efficacy for treating eye infection, where
dosage amounts and efficacy were yet to be
determined, distinguishing cases; see also J.
Reyna, dissenting interference count did
not require an actual eye infection for
conception, but rather only a dose effective
to treat or prevent an infection); U. of
Pittsburgh, 7/23/09 (conception of the
claimed isolated adipose (fat)-derived stem
cells was complete before other (misjoined)
named co-inventors confirmed their
properties and differences from prior art
stem cells))
- Conception inquiry asks whether the

inventor possessed an operative
method of making the invention
Invitrogen (Dawson, 3/25/13
(affirming the BPAIs rejection of
evidence of sole conception,
addressing the critical difference
between conceiving a way to make an
idea operative and knowing that a
completed invention will work for its
intended purpose))
- Conception does not require perfection, as

conception is complete when the idea is so clearly
defined in the inventors mind that only ordinary
skill would be necessary to reduce the invention to
1962
practice, without extensive research or
experimentation Burroughs Wellcome (Dawson,
3/25/13 (too much work still needed for complete
conception; see also J. Reyna, dissenting prior
sole conception was complete, and only RTP was
needed); Spansion, 12/21/10; Solvay, 10/13/10;
Brand, 5/14/07; Stern, 1/17/06); See also Tavory,
10/27/08 (nonprecedential stating that RTP by
definition is merely the exercise of ordinary skill)
- Distinguishing conception from the idea of the

invention (Symantec, 4/11/08 n.11)
- Distinguishing conception from obviousness

Burroughs Wellcome (Dawson, 3/25/13 (partys
argument during an EPO proceeding that a
document showed the lack of novelty or inventive
step of an eye treatment invention did not show
that the document also evidenced conception of the
invention))
- Joint invention each inventor must contribute to

the joint arrival at a definite and permanent idea of
the invention as it will be used in practice Price
(U. of Pittsburgh, 7/23/09)
- Conception/RTP require more than unrecognized,

unappreciated, accidental creation conception requires
that the inventor appreciate (which need not be
conclusive or unassailable) that which he has invented;
requires objective corroboration of inventors subjective
beliefs (Bard, 2/10/12 [vacated in part after remanded
on 6/14/12]; Solvay, 10/13/10 (distinguishing
appreciation cases where no conception); Henkel,
5/11/07; Invitrogen, 11/18/05)
- Direct or circumstantial evidence (Eli Lilly, 7/8/04)
1963
- Simultaneous conception/RTP (Invitrogen, 11/18/05);
See also Tavory, 10/27/08 (nonprecedential J.
Newman, concurring, disputing the majoritys general
rule that inventors are not required to have known how
to reduce their conceived inventions to practice to
establish conception, stating rather that courts have often
held that conception and RTP go hand in hand, i.e., on
the facts of the case, there is no conception without RTP;
ALSO ruling that the Pfaff (S.C.) rule -- that RTP, if
proven, also establishes conception -- involves RTP of
the entire invention)
Biotech
- Scientific certainty is not required knowledge

(for conception) in the context of a possessed,
isolated biological construct does not mean proof
to a scientific certainty that the construct is exactly
what a scientist believes it is; conception requires
only a definite and permanent idea of the operative
invention, which necessarily turns on the
inventors ability to describe his invention; proof
that the invention works to a scientific certainty is
RTP (U. of Pittsburgh, 7/23/09 (immaterial for
conception that the co-inventors knowledge
regarding the inventive qualities of the claimed
stem cells, which they had in fact observed, was
not scientifically certain))
Pharma
- Conception requires identification of the specific

chemical structure of the compound (Falana,
1/23/12; Vanderbilt U., 4/7/10)
1964
- Conception of chemical compound Amgen v.
Chugai must be able to define and distinguish
the compound from other compounds, and
describe how to obtain it (Falana, 1/23/12 (case
was simply the application of the well-known
principle that conception of a compound requires
knowledge of both the chemical structure of the
compound and an operative method of making it);
Creative Compounds, 6/24/11; Invitrogen,
11/18/05; Wallach, 8/11/04)
- Conception requires (1) the idea of the

structure of the claimed chemical
compound(s), and (2) possession of an
operative method of making it #2 not
raised when the method of making the
compound with conventional techniques is a
matter of routine knowledge among those
skilled in the art, and thus the compound is
deemed to have been conceived when it was
described - Oka v. Youssefyeh (Falana,
1/23/12 (alleged co-inventors discovery of
the synthesis method for making the novel
genus of claimed compounds was a
sufficient contribution to the conception,
stating that where the method requires more
than the exercise of ordinary skill, the
discovery of that method is as much a
contribution to the compound as the
discovery of the compound itself citing
Oka); Creative Compounds, 6/24/11 (email
that speculated about the method of making
the claimed compound failed to show
possession of an operative method of
making it, and there was no expert testimony
on SJ to show the method was within the
knowledge of those skilled in the art))
1965
- Genus vs. species of compounds
inventor of genus of compounds does
not necessarily have a right to claim
inventorship of all species within that
genus which are discovered in the
future (Falana, 1/23/12 (affirming
joint inventorship where the claimed
compounds were not limited to the
patentees later discovered species))
- Joint-inventorship each co-inventor must

contribute to the conception - does not require that
each co-inventor have an independent conception
of the final compound for a chemical invention
(Vanderbilt U., 4/7/10 (Falana, 1/23/12; district
court misapplied the CAFC precedent on joint
inventorship to require that each co-inventor have
an independent conception of the final compound
for a chemical invention))
Corroboration required
(Dawson, 3/25/13; Preston, 7/10/12 (former employees

testimony not enough to corroborate claim of invention prior to
working for employer); Cordance, 9/23/11; Spansion, 12/21/10
(corroborating a prior conception to swear behind a Section
102(e) reference); U. of Pittsburgh, 7/23/09 (lab notebooks,
which enabled the claimed invention, proved conception):
Procter & Gamble, 5/13/09 (alleged prior conception of a
pharmaceutical compound based on a lab notebook entry to
antedate a prior art reference was not corroborated); Henkel,
3/18/09 (priority based on prior actual RTP); Symantec,
4/11/08; Henkel, 5/11/07; Stern, 1/17/06; Gemstar, 9/16/04;
Linear Technology, 6/17/04; Cyanamid, 9/3/03; BJ Services,
8/6/03); See also Tavory, 10/27/08 (nonprecedential); See also
INTERFERENCES/PRIOR INVENTION
1966
- Inventor must prove his conception by corroborating
evidence, preferably by showing contemporaneous
disclosure(s) that would enable one skilled in the art to
make the invention Burroughs Wellcome (Dawson,
3/25/13; U. of Pittsburgh, 7/23/09)
- Corroborating evidence is taken as a whole

conception of an entire invention need not be
reflected in a single source Price (Spansion,
12/21/10 (inventors testimony of prior conception
was corroborated by non-inventor testimony and
engineering notebook entries); U. of Pittsburgh,
7/23/09)
- Inventors oral testimony regarding conception

must be corroborated by evidence which shows
that the inventor disclosed to others his completed
thought expressed in such clear terms as to enable
those skilled in the art to make the invention
Coleman (Spansion, 12/21/10)
- Rule of reason analysis applied - corroboration for an

alleged co-inventors testimony is evaluated under a rule
of reason analysis evaluates all pertinent evidence to
make a sound determination of the credibility of the
inventors story Gemstar; independent evidence
required; the most reliable evidence are records made
contemporaneously with the inventive process; other
evidence of corroboration is circumstantial evidence of
an independent nature; and oral testimony from someone
other than the alleged inventor (and other than another
co-inventor) - Gemstar (Martek Biosciences, 9/3/09
(alleged prior inventors testimony was insufficiently
corroborated to invalidate patent under Section 102(g));
U. of Pittsburgh, 7/23/09 (evidence of claimed subject
matter known at the time of the invention to scientists in
the field showed corroboration under the rule of
reason); Symantec, 4/11/08 (day planner recording
1967
phone call between an inventor and the alleged co-
inventor failed to establish the alleged co-inventors
contribution to the idea of the invention); Henkel,
5/11/07; Gemstar, 9/16/04 (rule of reason analysis
defined); Linear Technology, 6/17/04); See also Weaver,
3/7/12 (nonprecedential alleged co-inventor failed to
support his testimony with legally sufficient
corroborating evidence that he contributed to the
conception of the invention); Tavory, 10/27/08
(nonprecedential no mention of rule of reason
analysis)
- Corroborating evidence must be considered in

context, make necessary credibility determinations,
and assign appropriate probative weight to the
evidence to determine whether C&C evidence
supports a co-inventorship claim Ethicon (U. of
Pittsburgh, 7/23/09 (district court properly
considered knowledge of the skilled artisan at the
time of conception as corroborating evidence));
See also Weaver, 3/7/12 (nonprecedential the
presence or not of legally sufficient corroboration
of co-inventorship can be decided on SJ, despite
the purpose of the corroboration requirement being
to allay credibility concerns)
- Alleged co-inventors credibility is not

enough (Gemstar, 9/16/04)
- Claimed attribute is merely an obvious property of

a greater discovery at issue evidence need not
always expressly show possession of the invention
to corroborate conception, and a court may
properly weigh evidence that the claimed attribute
is merely an obvious property of a greater
discovery at issue Burroughs Wellcome (U. of
Pittsburgh, 7/23/09 (additional features recited in
1968
dependent claims were obvious properties of the
main invention))
- Extent of a named inventors contribution is

irrelevant to the corroboration determination -
evidence calling into question the contribution of a
named inventor, who may have lacked technical
expertise, is irrelevant to whether the alleged co-
inventor made a contribution (Symantec, 4/11/08
(distinguishing Ethicon (holding that a sole
inventors lack of technical expertise corroborated
anothers claim of co-inventorship) where the
named inventor was not the sole inventor))
- Types of evidence - physical, documentary or

circumstantial evidence, or reliable testimony from
uninterested parties (U. of Pittsburgh, 7/23/09
(corroboration from lab notebooks (which enabled the
invention), invention disclosure, and contemporaneous
letters and article relating to the invention); Symantec,
4/11/08; Henkel, 5/11/07; Checkpoint Systems, 6/20/05);
See also Weaver, 3/7/12 (nonprecedential undated
photograph, testimony by an uninterested party without
personal knowledge of the alleged co-inventors
contribution, and testimony by other alleged co-inventors
failed to corroborate, stating that the testimony of one co-
inventor cannot be used to help corroborate the testimony
of another Medichem); Tavory, 10/27/08
(nonprecedential the alleged co-inventor failed to
corroborate alleged conception with a contemporaneous
enabling disclosure, or witness testimony evidencing
enabling contemporaneous information, stating that
evidence of corroboration must establish that the

IP Law Outline - 12-1-13

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CAFC IP Law 12/1/2013

I. APPELLATE/DISTRICT COURT JURISDICTION/REVIEW ........................... 32

A. APPELLATE/DISTRICT COURT JURISDICTION

Subject matter jurisdiction - generally

Subject matter jurisdiction general principles

Court must have subject matter jurisdiction

- Subject matter jurisdiction is a threshold

- CAFC always has jurisdiction over a case to

- A court in the first instance must determine

- Basis for the district courts judgment must

- CAFC has inherent jurisdiction to determine

- Threshold question of CAFCs appellate

- CAFC jurisdiction after a settlement

- Unasserted, or withdrawn patent claims

- Supreme Courts original exclusive jurisdiction

Burden is on the party asserting jurisdiction

- Burden - party seeking to exercise jurisdiction in

Federal courts have limited jurisdiction

- Federal courts are not courts of general

- District courts possess only the power

- Eleventh Amendment immunity

- Justiciable claim it must be a real and

- Under Article III, courts are not

CAFCs and district courts arising under

Generally standards, tests

- 28 USC 1331 and 1338(a) (district court

- A final decision, as defined by the

- District courts proper exercise of

[On 10/5/12, the U.S. Supreme Court

- Substantial question of patent law -

- Christianson (S.C.) two-part test a

- Alternative theories claim supported

- State law claim - federalism concerns

- Strong federal interest in

Defenses, counterclaims do not arise

[***the AIA amended Section 1338 on

- [Old law] Defenses, counterclaims a case

Subject matter jurisdiction vs. decision on

- Subject matter jurisdiction does not fail

- Limited and narrow exception to the

Well-pleaded complaint rule

- Well-pleaded complaint rule when the

Examples subject matter jurisdiction?

- Breach of contract (e.g., patent

- Presence of patent in litigation does

- Res judicata effect of a prior CAFC

- State court (e.g., breach of contract)

- Unjust enrichment claim patent law

- Declaratory judgment action the CAFC

- Jurisdiction over a DJ action exists

Transfer of appeal from regional circuit

- Transfer of case from regional circuit to the

Statutory limitations to jurisdiction

- Critical to distinguish between a statutory

Covenant not to sue

On 1/9/13, the U.S. Supreme Court in Already v. Nike

- Covenant not to sue eliminates case or controversy

- Exception in Hatch-Waxman cases see

- Whether a covenant not to sue will divest

- When the patentee gives a covenant not to

Dismissal on jurisdictional grounds

- Dismissal on jurisdictional grounds appropriate?

- Discovery relating to jurisdiction