Precedential and Key Federal Circuit Opinions

1.  CYTIVA BIOPROCESS R&D AB v. JSR CORP. [OPINION] (2023-2074, 12/4/2024) (Prost, Taranto, Hughes)

Prost, J. The Court affirmed the PTAB’s IPR determination that certain composition claims are unpatentable and reversed its determination that certain process claims are not unpatentable. The patent claims were generally directed to chromatography matrices and processes for isolating target compounds using those matrices. In affirming the PTAB’s unpatentability determinations, the Court held that the PTAB did not err by not performing the two-part lead-compound analysis, which first asks whether a skilled artisan would have selected the asserted prior art compounds as lead compounds, or starting points, for further development efforts, and second asks whether the prior art would have supplied a skilled artisan with a reason or motivation to modify a lead compound to make the claimed compound with a reasonable expectation of success. The Court explained that a lead-compound analysis is not required where the prior art references expressly suggest the proposed modification. Thus, the PTAB’s reliance on an obvious-to-try obviousness rationale was proper. The Court held that the PTAB erred, however, in finding the process claims not unpatentable, where the process claims are nearly identical and contain no relevant substantive distinction from the composition claims found to be unpatentable.  

2.  MIRROR WORLDS TECHNOLOGIES, LLC v. META PLATFORMS, INC. [OPINION] (2022-1600, 12/4/2024) (Prost, Taranto, Stark)

Taranto, J. The Court affirmed the district court’s grant of summary judgment of non-infringement and dismissed the cross-appeal regarding patent ineligibility. The Court found that the district court did not abuse its discretion in excluding unauthenticated screenshots from third-party websites and expert testimony relying on them. The Court affirmed the grant of summary judgment of non-infringement based on the record, agreed with the district court’s claim construction, and found that unsupported expert opinion that is nothing more than mere speculation did not create a genuine dispute of fact. Because the Court upheld the non-infringement determination of the district court and the patents at issue expired more than six years ago, the Court did not reach the cross appeal on invalidity.

3.  GALDERMA LABORATORIES, L.P. v. LUPIN INC. [OPINION] (2024-1664, 12/6/2024) (Moore, Linn, Prost)

Moore, J. The Court affirmed the district court’s non-infringement finding. The Court concluded that the district court did not clearly err in crediting one expert witness over another, did not impose structural claim limitations, and did not clearly err in its findings that the record evidence of bioequivalence was insufficient on its own to prove infringement under the doctrine of equivalents.

4.  PS PRODUCTS INC. v. PANTHER TRADING CO. INC. [OPINION] (2023-1665, 12/6/2024) (Moore, Stoll, Cunningham)

Moore, J. The Court affirmed the district court’s order granting deterrence sanctions to prevent the repeated filing of meritless lawsuits. The Court held that the district court can impose sanctions under its inherent power in addition to awarding attorney fees and costs under § 285. Nor did the district court clearly err when it inferred bad faith from a history of filing meritless lawsuits. Finally, the district court did not abuse its discretion by imposing sanctions under its inherent power.

5.  DDR HOLDINGS, LLC v. PRICELINE.COM LLC [OPINION] (2023-1176, 12/8/2024) (Chen, Mayer, Cunningham)

Chen, J. The Court affirmed the district court’s final judgment non-infringement. For claim construction, a deletion made by the patent drafter between the provisional application and the patent specification indicated the applicant intended to exclude the deleted term from the claim scope. The Court rejected collateral estoppel arguments as both forfeited and inapplicable because the previous proceeding before the PTAB was under a different claim construction standard.

6.  CROWN PACKAGING TECHNOLOGY, INC. v. BELVAC PRODUCTION MACHINERY, INC. [OPINION] (2022-2299, 12/10/2024) (Dyk, Hughes, Cunningham)

Dyk, J. The Court reversed the district court’s summary judgment finding patents not anticipated under pre-AIA 35 U.S.C. § 102(b) and its denial of summary judgment of invalidity. A letter offered as evidence of a prior offer for sale in this country that provided a “quotation” and was both directed to a specific company in the United States and signed by a corporate representative was held to be sufficient to support the invalidity determination. The Court explained that the labelling of the proposed offer as a “quotation” is not controlling, where the “quotation” had the hallmarks of an offer for sale, e.g., provided a detailed description of the product, listed an actual price for that product, detailed payment terms and delivery terms, and made representations regarding performance and cancellation. Nor was a term of written acceptance determinative; a communication taken as a whole may still be a commercial offer for sale even with an express written acceptance term. Additionally, even if the offer was made from outside the United States, an offer directed to a United States entity at its United States place of business is an offer “made in this country” as required for pre-AIA § 102(b).

7.  PALO ALTO NETWORKS, INC. v. CENTRIPETAL NETWORKS, LLC [OPINION]  (2023-1635, 12/16/2024) (Dyk, Stoll, Stark)

Stoll, J. The Court vacated and remanded the PTAB’s IPR decision that the challenged patent claim was not unpatentable as obvious. The Court held that the PTAB had not provided a basis for its holding that a person of ordinary skill in the art would not have been motivated to combine the prior art cited by the Petitioner. The Court explained that the PTAB failed to address whether a person of ordinary skill in the art would have been motivated to combine the prior art as proposed by the petitioner, and did not address the Petitioner’s evidence regarding the motivation to combine.

8.  CLOUDOFCHANGE, LLC v. NCR CORPORATION [OPINION] (2023-1111, 12/18/2024) (Dyk, Reyna, Stoll)

Stoll, J. The Court reversed the district court’s denial of judgment as a matter of law of non-infringement and vacated the jury verdict. The Court explained that, for vicarious infringement liability, a company that does not direct its customers to perform the allegedly infringing fuctions, nor do its customers act as its agents, is not vicariously liable for the actions of its customers. Here, the company did not direct or control its customers to subscribe to its web-based point of sale system, download its app on their point of sale terminals, or put its system into use by initiating action at the point of sale terminals to cause its software to modify its point of sale terminals. Rather, the customers take these actions of their own accord. The Court held that as a matter of law that the company does not direct or control its customers’ use of the claimed system, nor do its customers act as the company’s agents.  The Court explained that the district court erred by focusing its direction or control analysis on one element of the system, because the appropriate question is whether the company directed or controlled its customer’s actions in putting the entire claimed system to service to build or edit point of sale systems.