Precedential Federal Circuit Opinions

Stoll, J.  The Court vacated and remanded the district court’s award of attorney fees under 35 U.S.C. § 285 because the Court held that it was unclear whether the district court had applied the correct legal standard.  The Court explained that “[i]nstead of determining whether the case was exceptional, it appears that the district court may have focused on whether one discrete portion of the case stood out ‘from other cases, from all the other portions of this case[,] in terms of either the substantive strength of a position [Intellectual Ventures] was advocating or the manner with which [Intellectual Ventures] was litigating.’”  The Court held that Section 285 gives the district court discretion to award attorney fees “in exceptional cases,” and that the district court should have considered whether the case was exceptional in view of a changed opinion of Intellectual Ventures’s expert.

  1. INTELLECTUAL VENTURES I LLC v. TREND MICRO INCORPORATED [OPINION - PRECEDENTIAL] (2019-1122, 12/19/2019) (DYK, TARANTO, and STOLL)  

  2. SYNGENTA CROP PROTECTION, LLC v. WILLOWOOD, LLC [OPINION - PRECEDENTIAL] (2018-1614, 2018-2044, 12/18/2019) (REYNA, TARANTO, and STOLL) 

    Reyna, J.  The Court affirmed-in-part, reversed-in-part, vacated-in-part, and remanded for further proceedings in this appeal and cross-appeal of a district court case involving four patents directed to, among other things, fungicides used in agriculture to control fungal growth on crops.  With respect to the patent issues, the Court concluded that the district court erred by imposing a single-entity requirement on the performance of a patented process under 35 U.S.C. § 271(g).  The Court affirmed the district court’s other decisions on the patent issues.

  3. FOX FACTORY, INC. v. SRAM, LLC [OPINION - PRECEDENTIAL] (2018-2024, 2018-2025, 12/18/2019) (PROST, WALLACH, and HUGHES)  

    Prose, C.J.  The Court vacated and remanded two PTAB IPR decisions that found claims directed to certain bicycle chain rings not unpatentable as obvious under 35 U.S.C. § 103.  The PTAB had found that the cited prior art references disclosed all the limitations of certain challenged patent claims and that a skilled artisan would have been motivated to combine the asserted prior art.  The PTAB nevertheless concluded, based on its analysis of secondary considerations of non-obviousness, that the petitioner had not shown that the challenged claims would have been obvious.  The Court held that the PTAB had “erred in presuming [a] nexus” between the challenged claims and the secondary considerations evidence presented by the patent owner. 

  4. THE CHAMBERLAIN GROUP, INC. v. ONE WORLD TECHNOLOGIES, INC. [OPINION - PRECEDENTIAL] (2018-2112, 12/17/2019) (DYK, REYNA, and HUGHES)   Hughes, J.  The Court affirmed the PTAB’s IPR decision that a patent directed to garage door opener technology was unpatentable as anticipated by the prior art under 35 U.S.C. § 102.  The Court held that the PTAB’s decision on anticipation was supported by substantial evidence.

  5. BLACKBIRD TECH LLC v. HEALTH IN MOTION LLC [OPINION - PRECEDENTIAL] (2018-2393, 12/16/2019) (PROST, WALLACH, and HUGHES) Wallach, J.  The Court affirmed an award of attorney fees under 35 U.S.C. § 285 against Blackbird Technologies where the district court found that Blackbird had, among other things, “unreasonably filed a notice of dismissal, covenant not to sue, and motion to dismiss without first notifying the [defendant’s] counsel, on the same day pretrial submissions were due and shortly before [defendant’s] motion for summary judgment was to be decided.”

  6. AMGEN INC. v. HOSPIRA, INC. [OPINION - PRECEDENTIAL] (2019-1067, 2019-1102, 12/16/2019) (MOORE, BRYSON, and CHEN)   Moore, J.  The Court affirmed on all issues in this appeal and cross-appeal of a district court judgment regarding patents directed to a hormone that regulates red blood cell maturation and production.  The Court explained that “[o]n appeal, Hospira challenges a myriad of issues, including: (1) the district court’s claim construction; (2) the jury instructions regarding the Safe Harbor defense; (3) the jury’s findings regarding the Safe Harbor defense and denial of JMOL on the Safe Harbor issue; (4) the evidentiary rulings regarding Amgen’s damages expert; and (5) the denial of JMOL of noninfringement and invalidity.”  On cross-appeal, “Amgen challenged: (1) the district court’s denial of JMOL of infringement of the ’349 patent; and (2) the denial of its motion for a new trial.”  The Court affirmed the district court’s decision denying the parties’ respective JMOL motions and motions in the alternative for a new trial.

  7. TECHTRONIC INDUSTRIES CO. LTD. v. ITC [OPINION - PRECEDENTIAL] (2018-2191, 12/12/2019) (LOURIE, DYK, and WALLACH)   Lourie, J.  The Court reversed the ITC’s determination of infringement of a patent directed to garage door opener technology on the ground that the ITC incorrectly construed a patent claim term.  Accordingly, the Court vacated the ITC’s remedial orders.