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2017Federal Circuit

Yearbook

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2017Federal Circuit

Yearbook

Patent Law Developmentsin the Federal Circuit

Gale R. PetersonDerrick A. Pizarro

Practising Law InstituteNew York City

#208934

This work is designed to provide practical and useful information on the subject matter covered. However, it is sold with the understanding that neither the publisher nor the author is engaged in rendering legal, accounting, or other professional services. If legal advice or other expert assistance is required, the services of a competent professional should be sought.

Legal Editor: Jacob Metric

Copyright © 2003, 2004, 2005, 2006, 2007, 2008, 2009, 2010, 2011, 2012, 2013, 2014, 2015, 2016, 2017 by Gale R. Peterson and Derrick A. Pizarro. All rights reserved. Printed in the United States of America. No part of this publication may be reproduced, stored in a retrieval system, or transmitted in any form by any means, electronic, mechanical, photocopying, recording, or otherwise, without the prior written permission of the authors and Practising Law Institute.

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About the Authors

GALE R. (PETE) PETERSON has more than thirty-five years of experience in intellectual property litigation, prosecution, licensing, and acquisi-tion. He has served as a court-appointed special master or technical advisor to courts throughout the United States in more than seventy diverse cases covering a wide range of technologies, from communica-tions to pharmaceuticals, both overseeing discovery and deciding claim construction, and, in one case, conducting trial-on-the-merits. He has also served as arbitrator or mediator in more than twenty-five cases, and as an expert witness in some thirty cases. Before beginning his current practice serving as a “neutral” in IP litigation and a consultant in IP litigation and strategy, Mr. Peterson served as senior shareholder in the intellectual property law department of Cox Smith Matthews Incorporated in San Antonio, Texas for more than thirty-five years. He provided litigation and transactional representation to emerging and established technology-based and research-oriented companies in intellectual property, information technology, e-commerce, and related unfair competition law. He represented clients in obtaining and enforcing domestic and international patent, trademark/trade dress, domain name, copyright, and trade secret protection, as well as defending clients charged with infringing those rights. That represen-tation included covenants-not-to-compete and other restrictive cove-nants. Mr. Peterson represented clients in litigation, as well as domestic and international technology acquisition and licensing. Mr. Peterson served as a patent examiner in the U.S. Patent and Trademark Office, including serving as law clerk to the PTO Board of Appeals. He further served as technical advisor to Chief Judge Markey of the U.S. Court of Customs and Patent Appeals, now the U.S. Court of Appeals for the Federal Circuit. He received his J.D., magna cum laude, from the University of Baltimore School of Law in 1975, and he received his LL.M. in Trade Regulation Law (with highest honors) from George Washington University in 1978. Among other positions, he is past president of the Society of International Business Fellows (SIBF), Southwest Chapter, and currently serves on the board of SIBF, is past chairman of the Intellectual Property Law Section of the State Bar of

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2017 FEDERAL CIRCUIT YEARBOOK

Texas, and currently serves in leadership roles for the American Bar Association. He is also a member or past member of the Féderation Internationale des Conseils Propriété Industrielle, the Licensing Exec-utive Society, the American Intellectual Property Law Association, the International Trademark Association, and other professional organiza-tions. He has been selected as a “Texas Super Lawyer” since 2003 by Texas Monthly, was selected for Chambers USA America’s Leading Busi-ness Lawyers 2003–05, and has been featured in The Best Lawyers in America since 1991. Mr. Peterson has taught the Patent Resources Group’s course on Federal Circuit law since 1989.

DERRICK A. PIZARRO advises clients in procuring, enforcing and commercializing intellectual property rights in a variety of industries. Mr. Pizarro has counseled clients ranging from venture-backed startups to mature, publicly traded companies with respect to both transactional and litigation matters. Before founding Pizarro Allen PC, Mr. Pizarro served as a shareholder in the intellectual property law department of Cox Smith Matthews Incorporated in San Antonio, Texas. Mr. Pizarro is licensed to practice before the U.S. Patent and Trademark Office. Mr. Pizarro holds a degree in mechanical engineer ing from the University of Texas at San Antonio and a law degree from Baylor University.

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Table of Chapters

Chapter 1 Utility and Inventions Patentable

Chapter 2 Novelty and Statutory Bars

Chapter 3 Nonobviousness

Chapter 4 Specification and Claims

Chapter 5 Interference and Priority of Invention

Chapter 6 Claim Construction

Chapter 7 Infringement

Chapter 8 Prosecution History Estoppel

Chapter 9 Inequitable Conduct

Chapter 10 Remedies

Chapter 11 PTO Practice and Procedure

Chapter 12 District Court Jurisdiction and Procedure

Chapter 13 Appellate Court Jurisdiction and Practice

Chapter 14 Ownership Agreements and Inventorship

Chapter 15 Design Patents

Chapter 16 Miscellaneous

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About the Authors ....................................................................... vii

Table of Chapters ......................................................................... ix

Table of 2016 Cases ...............................................................xxxix

Preface.............................................................................................. lxi

Chapter 1 Utility and Inventions Patentable ................ 1

§ 1:1 Affinity Labs of Texas, LLC v. DirecTV, LLC .................... 1Claims drawn to streaming regional broadcast signals to cellular telephones located outside the region served by the regional broadcaster held to be drawn to patent-ineligible subject matter.

§ 1:1.1 The Claims at Issue in This Case.................................. 2

§ 1:2 Affinity Labs of Texas, LLC v. Amazon.com Inc................. 3Claims to a method for targeted advertising held drawn to patent-ineligible subject matter.

§ 1:2.1 The Claims at Issue in This Case.................................. 4

§ 1:3 Amdocs (Israel) Ltd. v.Openet Telecom, Inc. (Amdocs II) ...................................... 5Panel majority and dissent clash over “abstract idea” analy-sis: panel majority urges “common law” approach of com-paring subject claims to claims-at-issue in prior cases; dissent urges definition for “abstract idea.”

§ 1:4 BASCOM Global Internet Services, Inc. v.AT&T Mobility LLC........................................................... 12Federal Circuit concludes that claims to “content filtering” on the Internet satisfy the second step of the Alice analysis and constitute patent-eligible subject matter.

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§ 1:4.1 The Claims at Issue in This Case................................14

§ 1:5 Electric Power Group, LLC v. Alstom S.A. .......................14Claims drawn to systems and methods for performing real-time performance of an electric power grid held patent-inel-igible as being drawn to an abstract idea, namely monitor-ing and analyzing data from disparate sources.

§ 1:6 Enfish, LLC v. Microsoft Corp...........................................15A “self-referential” database found not to constitute an abstract idea, and claims to the same held not invalid under section 101.

§ 1:7 FairWarning IP, LLC v. Iatric Systems, Inc. .....................19Claims drawn to a method of detecting improper access of a patient’s protected health information held drawn to pat-ent-ineligible subject matter.


§ 1:8 Genetic Technologies Ltd. v. Merial L.L.C. ......................20Method of detecting a coding region of a person’s genome by amplifying and analyzing a linked non-coding region of that person’s genome held drawn to patent-ineligible subject matter because claims broadly covered, in the Federal Cir-cuit’s view, essentially all applications of the law of linkage disequilibrium to the problem of detecting coding sequences of DNA.


§ 1:9 Intellectual Property Ventures I LLC v.Symantec Corp. ...................................................................22Federal Circuit concludes that (1) claims to methods for screening emails and other data files for unwanted content, (2) claims to methods of routing email messages based on certain criteria, and (3) claims to computer virus screening in telephone networks were all drawn to patent-ineligible subject matter.

§ 1:10 McRO, Inc. v. Bandai Namco Games America Inc. ..........26Claims to automating animating lip synchronization and facial expressions of animated characters held to be patent-eligible and not drawn to an abstract idea.

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§ 1:10.1 The Claims at Issue in This Case................................ 28

§ 1:11 Mortgage Grader, Inc. v.First Choice Loan Services Inc. ......................................... 29Claims drawn to systems and methods for assisting borrow-ers to obtain loans held drawn to patent-ineligible subject matter.

§ 1:12 Rapid Litigation Management Ltd. v.CellzDirect, Inc................................................................... 30Claims drawn to a method of preserving hepatocytes through multiple freeze-thaw cycles were not drawn to a patent-ineligible law of nature.


§ 1:13 In re Smith........................................................................... 32Set of rules for a card game held to constitute patent-ineligi-ble subject matter.

§ 1:14 Synopsys, Inc. v. Mentor Graphics Corp. .......................... 33Claims drawn to translating a functional description of a logic circuit into a hardware component description of a logic circuit, namely a logic circuit design process, held to be drawn to patent-ineligible subject matter.

§ 1:15 TLI Communications LLC v.AV Automotive, LLC .......................................................... 34Method of recording and administering digital images held to constitute patent-ineligible subject matter—Enfish dis-tinguished.


Chapter 2 Novelty and Statutory Bars ........................... 37

§ 2:1 Blue Calypso, LLC v. Groupon, Inc................................... 37Reference disclosing combination of functionalities may anticipate even though not necessarily “arranged as in the claim.”

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§ 2:2 Blue Calypso, LLC v. Groupon, Inc...................................39A report available by hyperlink from a student’s personal webpage does not constitute a “printed publication.”

§ 2:3 Husky Injection Molding Systems Ltd. v.Athena Automation Ltd. .....................................................41PTAB erred in concluding that a reference was not incorpo-rated by reference into a host reference because that refer-ence did not use the same terms as in the host document.

§ 2:4 In re Man Machine Interface Technologies LLC..............43Federal Circuit rejects PTO’s claim construction as being broader than the broadest reasonable construction consis-tent with the specification and reverses an anticipation rejection, but affirms an obviousness rejection.

§ 2:5 Merck & Cie v. Watson Laboratories, Inc..........................46Offer to sell a chemical compound prior to the critical date constituted a commercial offer for sale, even though never consummated.

§ 2:6 Perfect Surgical Techniques, Inc. v.Olympus America, Inc.........................................................48Federal Circuit panel majority: PTAB’s requirement to show “continuous” diligence from prior to the effective date of a reference to the patentee’s filing date held to be too exacting—but strong and persuasive dissent from Judge Schall.

§ 2:7 The Medicines Co. v. Hospira, Inc.....................................51The en banc Federal Circuit concludes that, in the case of a product-by-process claim, to be “on sale” under sec-tion 102(b) a product must be the subject of a commercial sale or offer for sale, and a commercial sale is one that bears the general hallmarks of a sale under section 2-106 of the Uniform Commercial Code. Federal Circuit does not over-turn the “no supplier exception” per se, but offers “work around” for companies or individuals engaging third par-ties to manufacture products, namely (1) ensure title to the product remains with company/individual, and (2) ensure that charges by third party are for manufacturing services. However, if the claimed invention is a method, paying

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another to perform the method may still place the “method” on sale. Federal Circuit potentially opens door to reconsid-ering whether “confidential” transaction may constitute “on sale” activity.

§ 2:8 TransWeb, LLC v. 3M Innovative Properties Co. ............ 62Whether sufficient corroborating evidence exists to support an interested witness’ testimony concerning a prior “in pub-lic use” is evaluated under the rule of reason.

§ 2:9 U.S. Water Services, Inc. v. Novozymes A/S ..................... 65Dispute whether prior art always met claim limitation pre-cluded summary judgment of inherent anticipation.

Chapter 3 Nonobviousness.................................................. 67

§ 3:1 ACCO Brands Corp. v. Fellowes, Inc. ............................... 67Federal Circuit, in reversing PTAB, concludes that adding a thickness sensor in advance of a presence sensor in a paper shredder such that motor does not turn on if the thickness of loaded papers would jam shredder was a predictable result—prior art rendered claims prima facie obvious.

§ 3:2 Allied Erecting and Dismantling Co. v.Genesis Attachments, LLC................................................. 70It is not necessary that the prior art be physically com-binable to render a claimed invention to have been obvious, only that one of ordinary skill in the art would have been motivated to combine the teachings of the prior art.

§ 3:3 Arendi S.A.R.L. v. Apple Inc. ............................................. 73Common sense is considered in assessing obviousness, but: (1) “common sense is typically invoked to provide a known motivation to combine, not to supply a missing claim limita-tion”; (2) “in Perfect Web, the only case Appellees identifies [sic] in which common sense was invoked to supply a limita-tion that was admittedly missing from the prior art, the lim-itation in question was unusually simple and the technology particularly straightforward”; and (3) “our cases repeatedly warn that references to ‘common sense’—whether to supply a motivation to combine or a missing limitation—cannot be used as a wholesale substitute for reasoned analysis and evi-

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dentiary support, especially when dealing with a limitation missing from the prior art references specified.”

§ 3:4 ClassCo, Inc. v. Apple, Inc..................................................76Combination of prior art may lead to a predictable result even though prior art does not expressly disclose all claimed functions.

§ 3:5 In re Cree, Inc. ....................................................................78When only press releases, rather than actual licenses, are of record, evidence of a nexus between licensing and the inven-tion has not been shown.

§ 3:6 In re Efthymiopoulos ..........................................................79It would have been obvious to administer known drug for treatment of influenza by oral inhalation even though prior administration had been through nasal inhalation.


§ 3:7 Nike, Inc. v. Adidas AG.......................................................80Federal Circuit reverses when PTAB, in an IPR, fails to dis-cuss, or even acknowledge, objective considerations.

§ 3:8 Purdue Pharma L.P. v. Epic Pharma, LLC .......................83The rationale of Eibel Process is not applicable where the problem did not need to be solved to arrive at the claimed invention. Process limitation does not limit product claim.

§ 3:9 TriVascular, Inc. v. Samuels................................................87PTAB is not bound by any findings in its initial decision to institute an IPR. PTAB’s decision that one of ordinary skill in the art would not have had either a motivation to com-bine reference teachings or a reasonable likelihood of suc-cess was supported by substantial evidence.

§ 3:10 Unwired Planet, LLC v. Google, Inc..................................91Book on user interface design held to constitute analogous art to system for prioritizing search results for wireless net-work subscribers.

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§ 3:11 In re Urbanski ..................................................................... 93Federal Circuit affirms PTO obvious rejection finding moti-vation to combine the reference teachings and that combi-nation did not result in an inoperable method.

§ 3:12 In re Warsaw Orthopedic, Inc. ........................................... 94Federal Circuit affirms-in-part and reverses-in-part a PTAB decision based on whether substantial evidence sup-ports PTAB’s decision.

§ 3:13 WBIP, LLC v. Kohler Co. .................................................. 97“There is a [rebuttable] presumption of nexus for objective considerations when the patentee shows that the asserted objective evidence is tied to a specific product and that product ‘is the invention disclosed and claimed in the pat-ent.’” That presumption is rebuttable by evidence showing that the evidence on the objective considerations arose from “extraneous factors other than the patented invention.” “While objective evidence of nonobviousness lacks a nexus if it exclusively relates to a feature that was ‘known in the prior art,’ the obviousness inquiry centers on whether ‘the claimed invention as a whole’ would have been obvious.”

§ 3:13.1 The Claims at Issue in This Case.............................. 100

Chapter 4 Specification and Claims .............................. 101

§ 4:1 Advanced Ground Information Systems, Inc. v.Life360, Inc. ...................................................................... 101Specification lacked sufficient description of corresponding algorithms for performing the claimed function.

§ 4:2 Akzo Nobel Coatings, Inc. v. Dow Chemical Co............. 103District court correctly determined that claims were not indefinite where temperature at which certain measure-ments were done was clearly room temperature as reflected in expert declaration and specification.

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§ 4:3 Alfred E. Mann Foundation for Scientific Research v.Cochlear Corp. ..................................................................104Federal Circuit reiterates that failure to sufficiently disclose algorithms (“corresponding structure”) results in invalidity (except, perhaps, algorithms for solving fundamental equa-tions, such as Ohm’s law).

§ 4:4 Bamberg v. Dalvey ............................................................107Specification that says having a melting point below 220° C is “undesirable” fails to provide written description support for claim construed as having a melting point both above and below 220° C.

§ 4:5 Cox Communications, Inc. v.Sprint Communication Co. LP .........................................109The phrase “processing system,” when the claims are read in light of the specification and the prosecution history, does not render the claims invalid for indefiniteness.

§ 4:5.1 The Claims at Issue in This Case..............................111

§ 4:6 ScriptPro LLC v. Innovation Associates, Inc. (ScriptPro II) ........................112A specification’s focus on one particular embodiment or purpose does not limit the described invention where that specification expressly contemplates other embodiments or purposes. Originally filed claims are part of the written description. Not every claim must contain every limitation or achieve every disclosed purpose. Federal Circuit distin-guished Gentry Gallery and ICU Medical.

§ 4:7 UltimatePointer, L.L.C. v. Nintendo Co., Ltd.................114Claims calling for the capability of a claimed apparatus are not indefinite under the rationale of IPLX and similar cases finding claims indefinite because the claims covered two statutory classes of invention.


§ 4:8 Yeda Research and Development Co., Ltd. v.Abbott GmbH & Co. KG ..................................................117Under the doctrine of inherent disclosure, when a specifica-tion describes an invention that has certain undisclosed yet

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inherent properties, that specification serves as adequate written description to support a subsequent patent applica-tion that explicitly recites the invention’s inherent proper-ties.

§ 4:9 Zoltek Corp. v. United States ........................................... 118“The question of who performs steps of a fully described invention, including preparation of a known starting mate-rial, is not a matter of the written description requirement.”

Chapter 5 Interference and Priority of Invention........................................................ 121

§ 5:1 REG Synthetic Fuels, LLC v. Neste Oil Oyj................... 121Emails communicating conception improperly excluded as hearsay.

Chapter 6 Claim Construction......................................... 125

§ 6:1 Advanced Ground Information Systems, Inc. v.Life360, Inc. ..................................................................... 125Term “symbol generator” held to constitute a means-plus-function limitation, namely analogous to “means for gener-ating symbols”—term was coined—although “symbol” and “generator” were known in computer science, combination of those terms was not.

§ 6:2 Avid Technology, Inc. v. Harmonic, Inc. ......................... 127When prosecution history is used solely to support a conclu-sion of patentee disclaimer, the standard for justifying that conclusion is a high one.

§ 6:3 Clare v. Chrysler Group, LLC.......................................... 130Federal Circuit affirms district court’s claim construction and the district court’s grant of summary judgment of non-infringement.

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§ 6:4 David Netzer Consulting Engineer LLC v.Shell Oil Co........................................................................131Although “fractionating” may include both “extraction” and “distillation,” Federal Circuit affirms construction limiting term to “distillation” based on specification.

§ 6:5 D’Agostino v. MasterCard International, Inc...................133PTAB’s construction of a “single-merchant” limitation to include a chain-store was error.


§ 6:6 Dell Inc. v. Acceleron, LLC..............................................134Meaning should be given to all claim terms.

§ 6:7 Eon Corp. IP Holdings LLC v.Silver Spring Networks, Inc. .............................................135If giving a term its “plain and ordinary meaning” does not resolve the parties’ claim construction dispute, the court is obliged to resolve the dispute under O2 Micro.

§ 6:8 GPNE Corp. v. Apple Inc. ................................................140“When a patent ‘repeatedly and consistently’ characterizes a claim term in a particular way, it is proper to construe the claim term in accordance with that characterization.” Claims may be limited by single statement in a summary paragraph of specification. District court does not abuse its discretion, or contravene O2 Micro, by allowing parties to urge claim construction arguments to a jury, if the court has previously resolved parties’ dispute during claim construc-tion (questionable holding).

§ 6:9 Howmedica Osteonics Corp. v. Zimmer, Inc...................142Where a claim calls for a particular result, it is proper to limit claim according to explanation in specification of how that result is achieved.

§ 6:10 Indacon, Inc. v. Facebook, Inc. ........................................145Where a term has no plain or established meaning in the art, the term is limited by the breadth of the disclosure.

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§ 6:11 Liberty Ammunition, Inc. v. United States...................... 146Lucent distinguished: district court erred in using “includ-ing” to essentially nullify the immediately following words “intermediate opposite ends.”

§ 6:12 Massachusetts Institute of Technology v.Shire Pharmaceuticals, Inc. .............................................. 149“[I]n order for prosecution disclaimer to attach, the dis-avowal must be both clear and unmistakable.” Federal Cir-cuit concludes that prosecution disclaimer did not exclude “skin” from the scope of “vascularized organ tissue.”

§ 6:13 Medgraph, Inc. v. Medtronic, Inc. ................................... 150Although “and” may be construed to mean “or,” doing so is reserved to where the specification so requires.

§ 6:14 Multilayer Stretch Cling Film Holdings, Inc. v.Berry Plastics Corp............................................................ 152Using “consisting of” in a Markush group creates a closed group excluding other group members. Markush group does not preclude mixtures of group members when specification plainly contemplates the same—limits presumption of Abbott Labs. v. Baxter Pharm. Prods., Inc. Dependent claim is invalid under section 112(4) where dependent claim adds member to Markush group that was excluded in parent claim.

§ 6:15 Nuance Communications, Inc. v.ABBYY USA Software House, Inc. .................................. 155Party waives more focused construction by asserting “plain” meaning at claim construction stage and waiting until sum-mary judgment to assert more focused meaning.

§ 6:16 Poly-America, L.P. v. API Industries, Inc........................ 158An inventor may disavow claims lacking a particular fea-ture when the specification describes “the present inven-tion” as having that feature. Similarly, an inventor may disavow claims lacking a particular feature when the speci-fication distinguishes or disparages prior art based on the absence of that feature.

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§ 6:17 PPC Broadband, Inc. v. Corning Optical Communications RF, LLC (PPC I) ......160Federal Circuit is bound by decision in Cuozzo that broad-est reasonable interpretation consistent with specification controls and result here would be different if Phillips stan-dard applied.

§ 6:18 PPC Broadband, Inc. v. Corning Optical Communications RF, LLC (PPC II) ....164The broadest reasonable interpretation consistent with the specification does not mean choosing the broadest dictio-nary definition for a term. The broadest reasonable con-struction is not necessarily the one that covers the most embodiments.

§ 6:19 Pride Mobility Products Corp. v. Permobile, Inc. ...........167Federal Circuit concludes PTAB, in an IPR, misconstrued “substantially planar” in one claim, but affirmed finding that all other claims were unpatentable.

§ 6:20 Profectus Technology LLC v.Huawei Technologies Co., Ltd. ........................................169“Mountable” does not include “capable of,” “adapted to,” or “configured to.”

§ 6:21 Ruckus Wireless, Inc. v.Innovative Wireless Solutions, LLC .................................171Term “communications path” held to be limited to wired connections, therefore excluding wireless connections, where it was not shown that “communications path” would have been understood to include a wireless connection, and additionally the specification and embodiments focused on wired connections.

§ 6:22 SimpleAir, Inc. v. Sony Ericsson Mobile Communications AB ....................174“The preference for giving meaning to all terms, however, is not an inflexible rule that supersedes all other principles of claim construction.” “The construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention will be, in the end, the correct

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construction.” Claim terms construed as of “the time of the invention”—Federal Circuit pushes back on attempt to interpret 1996 technology to current technology.

§ 6:23 Trustees of Columbia University in the City of New York v. Symantec Corp............................................. 179Federal Circuit rejects contention that presumption of plain and ordinary meaning “can be overcome in only two cir-cumstances: [when] the patentee has expressly defined a term or has expressly disavowed the full scope of the claim in the specification and the prosecution history.” Rather, Phillips recognized that “a claim term may be clearly rede-fined without an explicit statement of redefinition” and “[e]ven when guidance is not provided in explicit defini-tional format, the specification may define claim terms by implication such that the meaning may be found in or ascer-tained by a reading of the patent documents.” Where pat-ents are not in the same family, there is no rule requiring that claim terms be construed similarly.

§ 6:24 UCB, Inc. v. Yeda Research and Development Co., Ltd...................... 181A narrowing amendment to one claim may impose prosecu-tion history estoppel on other unamended claims.

§ 6:25 In re Varma........................................................................ 183Although “comprising” is an open-ended term, that does not make each limitation or phrase within the claim open-ended.

§ 6:26 WI-LAN, Inc. v. Apple Inc. .............................................. 184Federal Circuit affirms district court’s claim constructions based on specification.

Chapter 7 Infringement ..................................................... 187

§ 7:1 Halo Electronics, Inc. v. Pulse Electronics, Inc. ............. 187“When substantial activities of a sales transaction, including the final formation of a contract for sale encompassing all essential terms as well as the delivery and performance under that sales contract, occur entirely outside the United States, pricing and contracting negotiations in the United

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States alone do not constitute or transform those extraterri-torial activities into a sale within the United States for pur-poses of § 271(a).” “We adopt the reasoning of Transoceanand conclude here that Pulse did not directly infringe the Halo patents under the ‘offer to sell’ provision by offering to sell in the United States the products at issue, because the locations of the contemplated sales were outside the United States—An offer to sell, in order to be an infringement, must be an offer contemplating sale in the United States.”

§ 7:2 High Point SARL v. Sprint Nextel Corp. .........................191Federal Circuit concludes that equitable estoppel bars infringement action where plaintiff’s predecessors-in-inter-est assisted defendants to build a communications network through licenses and unlicensed activity for more than a decade, and suit was filed after more than six years of unli-censed activity.

§ 7:3 Intendis GmbH v. Glenmark Pharmaceuticals Inc., USA..............................194Infringement under the doctrine of equivalents found where ANDA stated that substitute compounds performed same function as claimed compounds.


§ 7:4 Lexmark International, Inc. v. Impression Products, Inc. .................................................196Federal Circuit en banc concludes that Quanta Computerdoes not require a change to the holding in Mallinckrodtand that Kirtsaeng does not require a change to the holding in Jazz Photo. “We hold that, when a patentee sells a pat-ented article under otherwise-proper restrictions on resale and reuse communicated to the buyer at the time of sale, the patentee does not confer authority on the buyer to engage in the prohibited resale or reuse. The patentee does not exhaust its § 271 rights to charge the buyer who engages in those acts—or downstream buyers having knowledge of the restrictions—with infringement.” “We also hold that a for-eign sale of a U.S.-patented article, when made by or with the approval of the U.S. patentee, does not exhaust the pat-entee’s U.S. patent rights in the article sold, even when no reservation of rights accompanies the sale. Loss of U.S. pat-

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ent rights based on a foreign sale remains a matter of express or implied license.”

§ 7:5 Mankes v. Vivid Seats Ltd................................................. 201Because of the “multiyear process of active judicial recon-sideration” of divided infringement, Federal Circuit vacates and remands district court’s judgment on the pleadings, and affirms a denial of attorneys’ fees to the defendant.

§ 7:6 Power Integrations, Inc. v. Fairchild Semiconductor International, Inc. ................... 203Jury instruction incorrectly stated that liability exists even where no inducement actually occurred.

§ 7:7 Unwired Planet, LLC v. Apple Inc. ................................. 205The question of indirect infringement cannot be based solely on the strength of the defendant’s non-infringement asser-tions.

§ 7:8 Warsaw Orthopedic, Inc. v. NuVasive, Inc. ..................... 207A defendant’s unreasonable claim construction may result in a finding of induced infringement.

Chapter 8 Prosecution History Estoppel .................... 211

Chapter 9 Inequitable Conduct ...................................... 213

§ 9:1 Ohio Willow Wood Co. v. Alps South, LLC (OWW II) ............................................. 213Non-disclosed evidence corroborating a witness’s testimony regarding prior “in public use” or “on sale” activity meets materiality standard.

§ 9:2 TransWeb, LLC v. 3M Innovative Properties Co. .......... 219Federal Circuit concludes that the district court did not err in finding “in public use” prior art satisfied the “but-for” materiality standard, and that circumstantial evidence sup-ported the district court’s conclusion that certain individu-als acted with an intent to deceive the PTO. District court properly found that the accused infringer had successfully shown a Walker Process “attempt to monopolize” antitrust

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claim. District court properly awarded treble the accused infringer’s attorneys’ fees incurred in defending the infringement action as antitrust damages.

Chapter 10 Remedies .............................................................227

§ 10:1 Asetek Danmark A/S v. CMI USA Inc. ............................227Federal Circuit remands injunction covering a previously dismissed party to the extent the injunction goes beyond conduct abetting new violations by remaining party.

§ 10:2 Halo Electronics, Inc. v. Pulse Electronics, Inc...............231Federal Circuit remands for reconsideration of enhanced damages after Seagate standard was rejected by Supreme Court. Culpability is measured against the knowledge of the actor at the time of the challenged conduct.

§ 10:3 Harmonic Inc. v. Avid Technology, Inc............................233“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Because of section 314(d), and PTO regula-tions thereunder, Federal Circuit does not have jurisdiction to review PTAB decision to institute IPR on less than all of the grounds asserted in a petition, even if those other grounds are deemed “redundant” and even if the PTAB con-cludes that some claims are patentable in light of the prior art selected in instituting the IPR.

§ 10:4 Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd. ..................................................235Petitioner in an IPR bears the burden of showing both moti-vation to combine reference teachings and a reasonable expectation of success.


§ 10:5 Lumen View Technology LLC v. Findthebest.com, Inc. .......................................................237Federal Circuit agrees with district court’s finding that case was exceptional, but remands for explanation of district court’s award of attorneys’ fees. Deterrence may be a con-sideration whether to award attorneys’ fees, but is not a

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proper consideration when determining the amount of a reasonable attorneys’ fee.

§ 10:6 Luminara Worldwide, LLC v. Liown Electronics Co. Ltd. .............................................. 239Federal Circuit vacates preliminary injunction where there is a substantial question of validity.

§ 10:7 Murata Machinery USA v. Daifuku Co., Ltd................... 241District courts must comply with Rule 52(a)(2) even when denying a motion for a preliminary injunction in conjunc-tion with denying a motion to lift a stay.

§ 10:8 Rosebud LMS Inc. v. Adobe Systems Inc........................ 242As a matter of first impression: constructive knowledge does not satisfy the actual notice requirement of section 154(d); however, actual notice does not require an affirmative act by the applicant giving notice of a published application to an infringer—“actual notice” includes knowledge obtained without an affirmative act of notification.

§ 10:9 Stryker Corp. v. Zimmer, Inc............................................ 245After remand from the Supreme Court, the Federal Circuit affirmed a jury’s finding of willful infringement, but remanded for consideration of whether there should be an award of enhanced damages and/or attorneys’ fees.

§ 10:10 WBIP, LLC v. Kohler Co. ................................................ 246After Halo, timing does matter: litigation-inspired validity defenses do not insulate against enhanced damages after culpable conduct of copying.

§ 10:11 WesternGeco L.L.C. v. ION Geophysical Corp. (WesternGeco III) .................... 248After remand from Supreme Court, Federal Circuit vacates and remands district court’s denial of enhanced damages for willful infringement.

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Chapter 11 PTO Practice and Procedure......................251

§ 11:1 In re Aqua Products, Inc. ..................................................251PTAB did not abuse its discretion in denying motion to amend where the applicant had not shown why new limita-tions defined over the prior art.

§ 11:2 In re CSB-System International, Inc. ...............................253If a patent expires during reexamination, PTAB must use Phillips claim construction standard rather than the BRI standard even though that results in a different standard on appeal.

§ 11:3 Genzyme Therapeutic Products Ltd. v. Biomarin Pharmaceutical Inc. ..........................................254PTAB may rely on references in its final decision not cited in the institutional decision if the parties have been given notice and an opportunity to respond. Federal Circuit expands Ariosa (references disclosing knowledge of skilled artisans) to include references describing in vivo studies.

§ 11:4 HP Inc. v. MPHJ Technology Investments, LLC............258Federal Circuit continues its view that section 314(d) pre-cludes review of the PTAB’s institution decision, including the grounds therefor, as well as whether the PTAB had properly articulated its reasons for concluding an asserted ground of unpatentability was redundant.

§ 11:5 Immersion Corp. v. HTC Corp. .......................................259As a matter of first impression, the Federal Circuit con-cludes that “filed before the patenting” of an earlier applica-tion under section 120 includes when both acts, filing and patenting, occur on the same day.

§ 11:6 In re Magnum Oil Tools International, Ltd. ....................261Federal Circuit rejects PTO’s argument that the burden shifts to patentee to show non-obviousness after PTAB issues institution decision. A party is not required to file a request for rehearing raising concerns about a PTAB deci-sion before appealing to the Federal Circuit. “To satisfy its burden of proving obviousness, a petitioner cannot employ mere conclusory statements. The petitioner must instead

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articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” PTAB does not have authority to enter rejection that petitioner could have made, but did not.

§ 11:7 Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc............................ 265PTAB’s vacatur of its institution decision and termination of proceedings constitute decisions whether to institute IPR and are therefore “final and nonappealable” under sec-tion 314(d)—nothing in the Supreme Court’s Cuozzo opin-ion is to the contrary.

§ 11:8 Merck & CIE v. Gnosis S.p.A........................................... 267Some members of the Federal Circuit, while denying a peti-tion for rehearing en banc, expressed sympathy for the view that the substantial evidence standard was perhaps inappo-site when reviewing appeals in IPR cases, but concluded that the Federal Circuit’s hands were tied by prior Supreme Court and Federal Circuit precedent, as well as a failure of Congress to provide a different standard of review in the AIA.

§ 11:9 Nike, Inc. v. Adidas AG .................................................... 269Federal Circuit confirms conclusion in Proxyconn that bur-den is on patent owner to show patentability of new or sub-stitute claims over the prior art. Federal Circuit accepts PTAB’s “clarification” of Idle Free in MasterImage 3D that the requirement in Idle Free that a patent owner must show that substitute claims are patentable over prior art known to the patent owner is limited to material prior art made of record in the current proceeding pursuant to its duty of can-dor and good faith.

§ 11:10 In re NuVasive, Inc. .......................................................... 274Federal Circuit reverses PTAB where patent owner did not receive adequate notice of or opportunity to address partic-ular reading of reference and consequences in overall obvi-ousness analysis: analogized to a “new ground of rejection.”

§ 11:11 Pfizer, Inc. v. Lee .............................................................. 276A restriction requirement, even if incomplete because it fails to address certain claims (in this case dependent claims),

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nonetheless constitutes “at least one of the notifications under section 132” pursuant to 35 U.S.C. § 154(b)(1)(a). Accordingly, the time period between the original restric-tion requirement and an amended restriction requirement is not counted as PTO delay for purposes of calculating term extensions.

§ 11:12 SAS Institute, Inc. v. ComplementSoft, LLC ..................278PTAB errs by adopting new construction in its final deci-sion. Federal Circuit panel majority continues its view, over Judge Newman’s dissent, that PTAB need not address all grounds raised in the petition in its final decision.

§ 11:13 SAS Institute, Inc. v. ComplementSoft, LLC ..................282Federal Circuit denies petition for rehearing en banc, effec-tively giving approval to the PTAB practice of granting IPR on less than all claims alleged in a petition.

§ 11:14 South Alabama Medical Science Foundation v. Gnosis S.P.A.......................................................................282Federal Circuit denies rehearing en banc in companion case.

§ 11:15 Synopsys, Inc. v. Mentor Graphics Corp..........................283Circuit Judge Newman strongly dissents from conclusion that section 314(d) precludes all appellate review of the institution phase of an IPR.

§ 11:16 Synopsys, Inc. v. Mentor Graphics Corp..........................285PTAB may require expert testimony, but did not do so here.

§ 11:17 Synopsys, Inc. v. Mentor Graphics Corp..........................287As held in Proxyconn and Prolitec, the PTAB may properly place the burden of proving patentability of substitute claims on the patentee for the prior art of record and that is not contrary to section 316(e).

§ 11:18 Synopsys, Inc. v. Mentor Graphics Corp..........................288PTAB is not required to address every claim raised in a peti-tion for IPR.

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§ 11:19 Synopsys, Inc. v. Mentor Graphics Corp. ........................ 290Federal Circuit panel majority: Federal Circuit reviews PTAB decisions in IPRs under the “substantial evidence” standard. Circuit Judge Newman dissents, urging that the “preponderance” standard should control.

§ 11:20 Veritas Technologies LLC v. Veeam Software Corp. ...... 291Federal Circuit vacates and remands PTAB decision deny-ing motion to amend as being arbitrary and capricious.

Chapter 12 District Court Jurisdiction and Procedure ........................................................... 293

§ 12:1 Acorda Therapeutics Inc. v. Mylan Pharmaceuticals Inc............................................... 293As a matter of first impression, Federal Circuit holds that Delaware has specific personal jurisdiction in a patent infringement action under 35 U.S.C. § 271(e)(2) over a generic drug manufacturer that has registered to do busi-ness in Delaware, has filed an ANDA seeking FDA approval to market a generic version of a patented drug, and that intends to market that generic version in Delaware if the FDA grants the ANDA. Circuit Judge O’Malley concurs, but urges (1) Federal Circuit should have decided the issue of general personal jurisdiction, (2) the Delaware court has general personal jurisdiction, and (3) the Delaware court has specific personal jurisdiction, but for reasons other than those relied on by the panel majority.

§ 12:2 Asia Vital Components Co., Ltd. v. Asetek Danmark A/S ......................................................... 297Court has declaratory judgment jurisdiction even though accused products are wrong products.

§ 12:3 Cardpool, Inc. v. Plastic Jungle, Inc. ................................ 300District court properly denies joint motion to vacate earlier judgment which was limited to the claims and grounds decided.

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§ 12:4 Drone Technologies, Inc. v. Parrot S.A............................301Federal Circuit reverses district court’s sanction of striking answer and counterclaims for defendant’s failure to comply with two discovery orders related to the Western District of Pennsylvania’s Local Patent Rule 3.1 dealing with a party’s initial disclosures: Federal Circuit concludes that district court abused its discretion.

§ 12:5 Dynamic 3D Geosolutions LLC v. Schlumberger Ltd. ............................................................304District court did not err in disqualifying in-house counsel and outside law firm, and then dismissing suit without prej-udice.

§ 12:6 Halo Creative & Design Limited v. Comptoir Des Indes, Inc. .................................................306Federal Circuit reverses district court’s dismissal of case involving U.S. design patents, U.S. copyrights, and U.S. common law trademark under doctrine of forum non conve-niens in favor of Federal Court of Canada where the only evidence that Canadian court would provide a proper alter-native forum was a webpage for the court.

§ 12:7 Howmedica Osteonics Corp. v. Zimmer, Inc...................308Failure to allege infringement under the doctrine of equiva-lents in accordance with local court rules may result in an inability to rely on that defense.

§ 12:8 LifeNet Health v. LifeCell Corp. .....................................310Defendant failed to preserve O2 Micro issue by failing to request supplemental claim construction.

§ 12:9 Lyda v. CBS Corp..............................................................312Form 18 does not apply to a claim of joint infringement: dis-trict court properly dismissed complaint under Rule 12(b)(6) that fails to comply with the Twombly/Iqbal plead-ing standard.

§ 12:10 Microsoft Corp. v. GeoTag, Inc. .......................................313Where a declaratory judgment complaint and counter-claims, permissive or compulsive, assert claims “arising under” the patent laws, 28 U.S.C. § 1338(a), a district court

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retains subject matter jurisdiction over counterclaims regardless whether there is a defect in the declaratory judg-ment jurisdiction.

§ 12:11 Murata Machinery USA v. Daifuku Co., Ltd................... 315District courts may use four-factor test, applicable to cov-ered business method (CBM) review under AIA § 18, in deciding whether to stay litigation pending completion of IPRs.

§ 12:12 Nuance Communications, Inc. v. ABBYY USA Software House, Inc. .................................. 317When a party voluntarily narrows case to its best patents, and does not make clear that it reserves a right to trial on remaining patents or claims, district court does not err in entering judgment on patents and claims not tried.

§ 12:13 Polar Electro OY v. Suunto OY ........................................ 320Federal Circuit concludes Delaware district court has per-sonal jurisdiction over Finnish company under the “stream-of-commerce” analysis because the company shipped ninety-four accused products to Delaware retailers.

§ 12:14 Rembrandt Vision Technologies, L.P. v. Johnson & Johnson Vision Care, Inc. ............................... 323Panel majority: district court erred in denying motion for a new trial where post-trial evidence indicated that accused infringer’s expert had testified falsely, even though it was not shown that result would have changed nor that party or its counsel were complicit in the allegedly false testimony. Dissent: panel majority wrong on both counts.

§ 12:15 Romag Fasteners, Inc. v. Fossil, Inc. ............................... 330Federal Circuit confirms that laches remains a legal defense in patent infringement cases.

§ 12:16 In re TC Heartland LLC .................................................. 330Congress’s 2011 amendments to 28 U.S.C. § 1391 did not change the law governing venue in patent infringement suits in a manner that would nullify the Federal Circuit’s holdings in VE Holding. Federal Circuit rejects argument

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that specific personal jurisdiction applies only to the 2% of the accused products that were shipped into Delaware.

§ 12:17 United Construction Products, Inc. v. Tile Tech, Inc. ...................................................................333Trial court did not err in granting default judgment in light of dilatory tactics by the defendant.

§ 12:18 Verinata Health, Inc. v. Ariosa Diagnostics, Inc. .............334Counterclaims in patent suit centered on infringement, and thus clearly fell within arbitration exception.

§ 12:19 Wi-LAN, Inc. v. Apple Inc................................................337Although a district court may “clarify” a prior construction post-verdict when deciding a motion for JMOL, a district court may not substantively revise its claim construction.

Chapter 13 Appellate Court Jurisdiction and Practice.................................................................341

§ 13:1 Agilent Technologies, Inc. v. Waters Technologies Corp................................................341Federal Circuit dismissed appeal in inter partes reexamina-tion because appealing entity, although asserting to be the successor-in-interest to the party requesting reexamination, had not shown that it was the true successor-in-interest and original requestor continued in existence. Privies of a requester do not have standing to appeal in an inter partes reexamination.

§ 13:2 Apple Inc. v. Samsung Electronics Co., Ltd. ...................343Federal Circuit grants en banc review to affirm limited appellate function.

§ 13:3 Ethicon Endo-Surgery, Inc. v. Covidien LP ....................346Section 314(a) does not preclude Federal Circuit from reviewing a challenge to the PTAB’s authority to make a final decision because the same board panel made the deci-sion to institute the IPR. Neither the statute nor the consti-tution precludes the same PTAB panel from making both the decision to institute an IPR and the final decision.

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§ 13:4 Husky Injection Molding Systems Ltd. v. Athena Automation Ltd. ................................................... 348Section 314(d) “no appeal” provision bars Federal Circuit review of PTAB decision declining to apply assignor estop-pel in IPRs.

§ 13:5 In re Lakshmi Arunachalam ............................................. 352Federal Circuit dismisses premature appeal that should have been to the Board.

§ 13:6 In re Rearden LLC ........................................................... 353Where petitioners counterclaimed that plaintiff infringed the very patents over which both parties seek a declaration of ownership, and where the alleged infringing activity was known by petitioners at the time of filing, petitioners’ claims are compulsory counterclaims.

§ 13:7 Shaw Industries Group, Inc. v. Automated Creel Systems, Inc. ........................................ 357Federal Circuit reiterates that it has no jurisdiction to review PTAB’s decision to institute an IPR, including whether suit is barred because of section 315(b). Federal Circuit, in dicta, suggests that there should be no bar under section 315(b) when the earlier suit was voluntarily dis-missed without prejudice.

§ 13:8 Shaw Industries Group, Inc. v. Automated Creel Systems, Inc. ........................................ 359Federal Circuit reiterates that it has no jurisdiction to review PTAB’s decision to institute an IPR, but expresses concern about PTAB’s frequent decisions not to institute an IPR on grounds deemed “redundant.” The estoppel provi-sions of section 315(e) do not apply to grounds proposed in an IPR Petition, but which are not part of the grounds adopted by the PTAB in instituting the IPR.

§ 13:9 SkyHawke Technologies, LLC v. Deca International Corp................................................... 362Party that is successful at PTAB in inter partes reexamina-tion may not appeal to the Federal Circuit requesting a dif-ferent claim construction but same ultimate result.

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§ 13:10 Wi-Fi One, LLC v. Broadcom Corp.................................363Supreme Court opinion in Cuozzo does not allow panel to depart from prior Achates holding that Federal Circuit does not have jurisdiction to review a challenge to an IPR under section 315(b).

Chapter 14 Ownership Agreements and Inventorship .......................................................367

§ 14:1 Diamond Coating Technologies, LLC v. Hyundai Motor America ...................................................367Transferor’s retention of rights to make, use, and sell prod-ucts covered by patent precludes a transfer of all substantial rights. Also, retention of significant control over enforce-ment and litigation activities precludes a transfer of all sub-stantial rights.

§ 14:2 Lismont v. Alexander Binzel Corp....................................368Litigating foreign inventorship dispute does not preclude presumption of laches in the United States where there was a ten-year delay between knowledge of the alleged incorrect inventorship and when suit was filed. Foreign litigation may be a basis for rebutting presumption of laches, but mere initiation of foreign patent litigation and the existence of U.S. patents are not sufficient to notify a defendant that the plaintiff will eventually seek to assert its patent rights in the United States.

§ 14:3 MAG Aerospace Industries, Inc. v. B/E Aerospace, Inc............................................................371Federal Circuit affirms finding of assignor-estoppel when accused infringer hired inventor, even though inventor had minimal interest in accused infringer company.

§ 14:4 TriReme Medical, LLC v. AngioScore, Inc. ....................373Federal Circuit reverses district court’s conclusion that it lacked subject matter jurisdiction under section 256 to cor-rect inventorship based on the assertion that the inventor had assigned any interest in the invention under a consult-ing agreement.

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§ 14:5 Vapor Point LLC v. Moorhead......................................... 377Dismissing state law claims resulted in dismissing affirma-tive defense that “inventors” had an obligation to assign. District court properly decided inventorship issue and dis-missed remainder of case. Circuit Judge O’Malley concurs: assignments must be in writing, discussion of shop-right doctrine, and urges court to overturn Teets (potential exis-tence of implied-in-fact contract to assign patent rights).

Chapter 15 Design Patents .................................................. 381

§ 15:1 Sport Dimension, Inc. v. Coleman Co. ............................ 381Where a design contains both functional and non-functional elements, the scope of the claim must be construed in order to identify the non-functional aspects of the design, but functional elements are not ignored.

Chapter 16 Miscellaneous .................................................... 385

§ 16:1 Amgen Inc. v. Apotex Inc. ................................................ 385Commercial-marketing notice provision of BPCIA is man-datory and enforceable by injunction even though applicant launched statutory process for exchanging information and channeling patent litigation.

§ 16:2 Apple, Inc. v. Ameranth, Inc. ........................................... 389Computer system in which preferred embodiment was for use in restaurants when ordering food held to constitute a CBM patent.

§ 16:2.1 The Claims at Issue in This Case.............................. 391

§ 16:3 Blue Calypso, LLC v. Groupon, Inc................................. 392Patents drawn to a peer-to-peer advertising system using mobile communication devices held to constitute a covered business method because claims called for “subsidizing the qualified subscriber according to the chosen subsidy pro-gram,” and “subsidy” was construed as “financial assistance given by one to another.”

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§ 16:4 Convolve, Inc. v. Compaq Computer Corp. ....................394Amendments made during reexamination do not necessarily compel a conclusion that the scope of the claims has been substantively changed.

§ 16:5 In re Queen’s University at Kingston ...............................395As a case of first impression, Federal Circuit recognizes “patent-agent” privilege.

§ 16:6 Unwired Planet, LLC v. Google Inc.................................398PTAB’s expansion of the statutory definition of “covered business method patent” to include “incidental to a financial activity, or complementary to a financial activity” held to constitute error.

Comprehensive Table of Cases ...........................................401

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A

ACCO Brands Corp. v. Fellowes, Inc., 813 F.3d 1361 (Fed. Cir. 2016) (opinion by Circuit Judge Chen, joined by Circuit Judges Newman and Hughes)................................ 67–69

Acorda Therapeutics Inc. v. Mylan Pharm. Inc., 817 F.3d 755 (Fed. Cir. 2016) (opinion by Circuit Judge Taranto, joined by Circuit Judge Newman, concurring opinion by Circuit Judge O’Malley) .................................................. 293–297

Advanced Ground Info. Sys., Inc. v. Life360, Inc., 830 F.3d 1341 (Fed. Cir. 2016) (opinion by Circuit Judge Wallach, joined by Circuit Judges Moore and Mayer)................... 101–103, 125, 126

Affinity Labs of Tex., LLC v. Amazon.com Inc., 838 F.3d 1266 (Fed. Cir. 2016) (opinion by Circuit Judge Bryson, joined by Chief Judge Prost and Circuit Judge Wallach) ....................... 3–5

Affinity Labs of Tex., LLC v. DirecTV, LLC, 838 F.3d 1253 (Fed. Cir. 2016) (opinion by Circuit Judge Bryson, joined by Chief Judge Prost and Circuit Judge Wallach) ....................... 1–3

Agilent Techs., Inc. v. Waters Techs. Corp., 811 F.3d 1326 (Fed. Cir. 2016) (opinion by Circuit Judge O’Malley, joined by Circuit Judges Moore and Taranto) ................................ 341–343

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Akzo Nobel Coatings, Inc. v. Dow Chem. Co., 811 F.3d 1334 (Fed. Cir. 2016) (opinion by Circuit Judge Lourie, joined by Circuit Judges Reyna and Chen) .....................................103, 104

Alfred E. Mann Found. for Sci. Research v. Cochlear Corp., 841 F.3d 1334 (Fed. Cir. 2016) (opinion by Circuit Judge Hughes, joined by Circuit Judge Chen, concurring-in-part, dissenting-in-partopinion by Circuit Judge Newman).................................104–107

Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC,825 F.3d 1373 (Fed. Cir. 2016) (opinion by Circuit Judge Wallach, joined by Circuit Judges Newman and Dyk).......................................70–73

Amdocs (Isr.) Ltd. v. Openet Telecom, Inc. (Amdocs II), 841 F.3d 1288 (Fed. Cir. 2016) (opinion by Circuit Judge Plager, joined by Circuit Judge Newman, dissenting opinion by Circuit Judge Reyna) .............................................................5–11

Amgen Inc. v. Apotex Inc., 827 F.3d 1052 (Fed. Cir. 2016) (opinion by Circuit Judge Taranto, joined by Circuit Judges Wallach and Bryson)................................385–388

Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229 (Fed. Cir. 2016) (opinion by Circuit Judge Reyna, joined by Circuit Judges Chen and Stoll) ........................389–392

Apple Inc. v. Samsung Elecs. Co., Ltd., 839 F.3d 1034 (Fed. Cir. 2016) (en banc) (opinion by Circuit Judge Moore, joined by Circuit Judges Newman, Lourie, O’Malley, Wallach, Chen, and Stoll, concurring-in-judgment without opinion Circuit Judge Hughes,

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dissenting opinion by Chief Judge Prost, dissenting opinion by Circuit Judge Dyk, dissenting opinion by Circuit Judge Reyna, Circuit Judge Taranto did not participate)...................... 343–345

Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355 (Fed. Cir. 2016) (opinion by Circuit Judge O’Malley, joined by Circuit Judges Moore and Linn) ......................... 73–76

Asetek Danmark A/S v. CMI USA Inc., 842 F.3d 1350 (Fed. Cir. 2016) (opinion by Circuit Judge Taranto, joined by Circuit Judge Newman, dissenting-in-part opinion by Chief Judge Prost) ........... 227–230

Asia Vital Components Co., Ltd. v. Asetek Danmark A/S, 837 F.3d 1249 (Fed. Cir. 2016) (opinion by Chief Judge Prost, joined by Circuit Judges Linn and Taranto) ................... 297–300

Avid Tech., Inc. v. Harmonic, Inc., 812 F.3d 1040 (Fed. Cir. 2016) (opinion by Circuit Judge Taranto, joined by Circuit Judges Reyna and Stoll) ...................... 127–130

B

Bamberg v. Dalvey, 815 F.3d 793 (Fed. Cir. 2016) (opinion by Circuit Judge Hughes, joined by Circuit Judges Moore and Stoll)...................... 107, 108

BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) (opinion by Circuit Judge Chen, joined by Circuit Judge O’Malley, concurring-in-result opinion by Circuit Judge Newman)....................................................... 12–14

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Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331 (Fed. Cir. 2016) (opinion by Circuit Judge Chen, joined by Circuit Judge Reyna, dissenting-in-part opinion by Circuit Judge Schall)............................................ 37–41, 392–394

C

Cardpool, Inc. v. Plastic Jungle, Inc., 817 F.3d 1316 (Fed. Cir. 2016) (opinion by Circuit Judge Newman, joined by Circuit Judges Reyna and Wallach) .................300, 301

Clare v. Chrysler Grp., LLC, 819 F.3d 1323 (Fed. Cir. 2016) (opinion by Circuit Judge Moore, joined by Chief Judge Prost and Circuit Judge Wallach) ....................................................130, 131

ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214 (Fed. Cir. 2016) (opinion by Circuit Judge Stoll, joined by Circuit Judges Bryson and Taranto) ....................76–78

Convolve, Inc. v. Compaq Comput. Corp., 812 F.3d 1313 (Fed. Cir. 2016) (opinion by Circuit Judge Hughes, joined by Circuit Judges Dyk and Taranto).....................394, 395

Cox Commc’ns, Inc. v. Sprint Commc’n Co. LP, 838 F.3d 1224 (Fed. Cir. 2016) (opinion by Chief Judge Prost, joined by Circuit Judge Bryson, concurring in judgment Circuit Judge Newman)............109–111

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D

D’Agostino v. MasterCard Int’l, Inc., 844 F.3d 1945 (Fed. Cir. 2016) (opinion by Circuit Judge Taranto, joined by Circuit Judges Linn and Stoll) ......................... 133, 134

David Netzer Consulting Eng’r LLC v. Shell Oil Co., 824 F.3d 989 (Fed. Cir. 2016) (opinion by Circuit Judge Lourie, joined by Chief Judge Prost and Circuit Judge Taranto)..................................................... 131–133

Dell Inc. v. Acceleron, LLC, 818 F.3d 1293 (Fed. Cir. 2016) (opinion by Circuit Judge Taranto, joined by Circuit Judges Moore and Hughes) ................ 134, 135

Diamond Coating Techs., LLC v. Hyundai Motor Am., 823 F.3d 615 (Fed. Cir. 2016) (opinion by Circuit Judge Wallach, joined by Circuit Judges Bryson and Taranto) ................ 367, 368

Drone Techs., Inc. v. Parrot S.A., 838 F.3d 1283 (Fed. Cir. 2016) (opinion by Circuit Judge Schall, joined by Circuit Judge Clevenger, concurring opinion by Circuit Judge Newman) .............. 301–304

Dynamic 3D Geosolutions LLC v. Schlumberger Ltd., 837 F.3d 1280 (Fed. Cir. 2016) (opinion by Circuit Judge Lourie, joined by Circuit Judge Hughes, concurring opinion by Circuit Judge Wallach)................ 304–306

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E

Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) (opinion by Circuit Judge Taranto, joined by Circuit Judges Bryson and Stoll) .........................14, 15

Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) (opinion by Circuit Judge Hughes, joined by Circuit Judges Moore and Taranto).....................15–19

Eon Corp. IP Holdings LLC v. Silver Spring Networks, Inc., 815 F.3d 1314 (Fed. Cir. 2016) (opinion by Chief Judge Prost, joined by Circuit Judge Hughes, dissenting opinion by Circuit Judge Bryson)...................135–139

Ethicon Endo-Surgery, Inc. v. Covidien LP, 812 F.3d 1023 (Fed. Cir. 2016) (opinion by Circuit Judge Dyk, joined by Circuit Judge Taranto, dissenting opinion by Circuit Judge Newman) ...............346–348

F

FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089 (Fed. Cir. 2016) (opinion by Circuit Judge Stoll, joined by Circuit Judges Lourie and Plager) .......................19, 20

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Table of 2016 Cases

G

Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369 (Fed. Cir. 2016) (opinion by Circuit Judge Dyk, joined by Chief Judge Prost and Circuit Judge Taranto)......................................................... 20–22

Genzyme Therapeutic Prods. Ltd. v. Biomarin Pharm. Inc., 825 F.3d 1360 (Fed. Cir. 2016) (opinion by Circuit Judge Bryson, joined by Circuit Judges Moore and Reyna) ................... 254–258

GPNE Corp. v. Apple Inc., 830 F.3d 1365 (Fed. Cir. 2016) (opinion by Chief Judge Prost, joined by Circuit Judges Taranto and Chen) .................. 140–142

H

Halo Creative & Design Ltd. v. Comptoir Des Indes, Inc., 816 F.3d 1366 (Fed. Cir. 2016) (opinion by Circuit Judge Dyk, joined by Circuit Judges Mayer and Hughes) ................. 306–308

Halo Elecs., Inc. v. Pulse Elecs., Inc., 831 F.3d 1369 (Fed. Cir. 2016) (opinion by Circuit Judge Lourie, joined by Circuit Judges O’Malley and Hughes) ............ 187–191, 231–233

Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356 (Fed. Cir. 2016) (opinion by Circuit Judge Stoll, joined by Circuit Judges Chen and Mayer)..................... 234, 235

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High Point SARL v. Sprint Nextel Corp., 817 F.3d 1325 (Fed. Cir. 2016) (opinion by Circuit Judge Reyna, joined by Circuit Judges Mayer and Chen) .....................................191–194

Howmedica Osteonics Corp. v. Zimmer, Inc., 822 F.3d 1312 (Fed. Cir. 2016) (opinion by Circuit Judge Plager, joined by Circuit Judges O’Malley and Wallach) ............ 142–144, 308–310

HP Inc. v. MPHJ Tech. Invs., LLC, 817 F.3d 1339 (Fed. Cir. 2016) (opinion by Circuit Judge Lourie, joined by Circuit Judges Schall and Hughes)..................................258, 259

Husky Injection Molding Sys. Ltd. v. Athena Automation Ltd., 838 F.3d 1236 (Fed. Cir. 2016) (opinion by Circuit Judge Lourie, joined by Circuit Judge Stoll, concurring-in-part, dissenting-in-part opinion by Circuit Judge Plager) ........................................... 41–43, 348–351

I

Immersion Corp. v. HTC Corp., 826 F.3d 1357 (Fed. Cir. 2016) (opinion by Circuit Judge Taranto, joined by Chief Judge Prost and Circuit Judge Linn)..........................................................259–261

In re Aqua Prods., Inc., 823 F.3d 1369 (Fed. Cir. 2016) (opinion by Circuit Judge Reyna, joined by Chief Judge Prost and Chief District Judge Stark, D. Del., sitting by designation) ......................................................251–253

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Table of 2016 Cases

In re Cree, Inc., 818 F.3d 694 (Fed. Cir. 2016) (opinion by Circuit Judge Bryson, joined by Circuit Judges Chen and Clevenger) .................. 78, 79

In re CSB-Sys. Int’l, Inc., 832 F.3d 1335 (Fed. Cir. 2016) (opinion by Circuit Judge Stoll, joined by Circuit Judges Newman and Moore) .............. 253, 254

In re Efthymiopoulos, 839 F.3d 1375 (Fed. Cir. 2016) (opinion by Chief Judge Prost, joined by Circuit Judge Bryson, dissenting opinion by Circuit Judge Newman) ................... 79, 80

In re Lakshmi Arunachalam, 824 F.3d 987 (Fed. Cir. 2016) (opinion by Circuit Judge Hughes, joined by Circuit Judge Chen and Taranto) .................... 352, 353

In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364 (Fed. Cir. 2016) (opinion by Circuit Judge O’Malley, joined by Circuit Judges Newman and Chen)................. 261–265

In re Man Mach. Interface Techs. LLC, 822 F.3d 1282 (Fed. Cir. 2016) (opinion by Circuit Judge Stoll, joined by Circuit Judges Lourie and O’Malley) .................. 43–45

In re NuVasive, Inc., 841 F.3d 966 (Fed. Cir. 2016) (opinion by Circuit Judge Taranto, joined by Circuit Judges Moore and Wallach) ................ 274–276

In re Queen’s Univ. at Kingston, 820 F.3d 1287 (Fed. Cir. 2016) (opinion by Circuit Judge O’Malley, joined by Circuit Judge Lourie, dissenting opinion by Circuit Judge Reyna).................... 395–398

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In re Rearden LLC, 841 F.3d 1327 (Fed. Cir. 2016) (per curiam) (before a panel of Circuit Judges Moore, Hughes, and Stoll) ......................353–356

In re Smith, 815 F.3d 816 (Fed. Cir. 2016) (opinion by Circuit Judge Stoll, joined by Circuit Judges Moore and Hughes).....................32, 33

In re TC Heartland LLC, 821 F.3d 1338 (Fed. Cir. 2016) (opinion by Circuit Judge Moore, joined by Circuit Judges Linn and Wallach) (on Petition for Writ of Mandamus to the U.S. District Court for the District of Delaware in No. 1:14-cv-00028-LPS, Chief Judge Leonard P. Stark) ........................................330–333

In re Urbanski, 809 F.3d 1237 (Fed. Cir. 2016) (opinion by Circuit Judge Lourie, joined by Circuit Judges Bryson and Chen) ........................93, 94

In re Varma, 816 F.3d 1352 (Fed. Cir. 2016) (opinion by Circuit Judge Taranto, joined by Circuit Judges Wallach and Clevenger) ..........183–185

In re Warsaw Orthopedic, Inc., 832 F.3d 1327 (Fed. Cir. 2016) (opinion by Circuit Judge Wallach, joined by Chief Judge Prost and Circuit Judge Bryson) ..........................................................94–96

Indacon, Inc. v. Facebook, Inc., 824 F.3d 1352 (Fed. Cir. 2016) (opinion by Circuit Judge Stoll, joined by Circuit Judges Newman and Reyna) ...............145, 146

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Table of 2016 Cases

Intellectual Prop. Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016) (opinion by Circuit Judge Dyk, concurring opinion by Circuit Judge Mayer, dissenting-in-part opinion by Circuit Judge Stoll) .............. 22–26

Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359 (Fed. Cir. 2016) (opinion by Circuit Judge O’Malley, joined by Circuit Judges Wallach and Hughes) .............. 235–237

Intendis GmbH v. Glenmark Pharm. Inc., USA, 822 F.3d 1355 (Fed. Cir. 2016) (opinion by Circuit Judge Moore, joined by Chief Judge Prost and Circuit Judge Taranto)..................................................... 194–196

L

Lexmark Int’l, Inc. v. Impression Prods., Inc., 816 F.3d 721 (Fed. Cir. 2016) (en banc) (opinion by Circuit Judge Taranto, joined by Chief Judge Prost and Circuit Judges Newman, Lourie, Moore, O’Malley, Reyna, Wallach, Chen and Stoll, dissenting opinion by Circuit Judge Dyk, joined by Circuit Judge Hughes)..................................... 196–201

Liberty Ammunition, Inc. v. United States, 835 F.3d 1388 (Fed. Cir. 2016) ....................................... 146–149

LifeNet Health v. LifeCell Corp., 837 F.3d 1316 (Fed. Cir. 2016) (opinion by Chief Judge Prost, joined by Circuit Judges Reyna and Chen) ..................... 310, 311

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Lismont v. Alexander Binzel Corp., 813 F.3d 998 (Fed. Cir. 2016) (opinion by Circuit Judge Chen, joined by Circuit Judges Lourie and Reyna) ...................368–371

Lumen View Tech. LLC v. Findthebest.com, Inc., 811 F.3d 479 (Fed. Cir. 2016) (opinion by Circuit Judge Lourie, joined by Circuit Judges Moore and Wallach) ................237–239

Luminara Worldwide, LLC v. Liown Elecs. Co. Ltd., 814 F.3d 1343 (Fed. Cir. 2016) (opinion by Circuit Judge Moore, joined by Circuit Judges O’Malley and Taranto) ............239, 240

Lyda v. CBS Corp., 838 F.3d 1331 (Fed. Cir. 2016) (opinion by Circuit Judge Stoll, joined by Circuit Judges Reyna and Hughes) .................312, 313

M

MAG Aerospace Indus., Inc. v. B/E Aerospace, Inc., 816 F.3d 1374 (Fed. Cir. 2016) (opinion by Chief Judge Prost, joined by Circuit Judges Mayer and Reyna)....................371–373

Mankes v. Vivid Seats Ltd., 822 F.3d 1302 (Fed. Cir. 2016) (opinion by Circuit Judge Taranto, joined by Circuit Judges Schall and Chen)......................201, 202

Mass. Inst. of Tech. v. Shire Pharm., Inc., 839 F.3d 1111 (Fed. Cir. 2016) (opinion by Circuit Judge Stoll, joined by Circuit Judge Chen, concurring opinion by Circuit Judge O’Malley) ..............149–151

l

Table of 2016 Cases

McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016) (opinion by Circuit Judge Reyna, joined by Circuit Judges Taranto and Stoll) ........................ 26–29

Medgraph, Inc. v. Medtronic, Inc., 843 F.3d 942 (Fed. Cir. 2016) (opinion by Circuit Judge Lourie, joined by Circuit Judges Plager and Taranto) ................. 150, 151

Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc., 839 F.3d 1382 (Fed. Cir. 2016) (opinion by Circuit Judge Dyk, joined by Circuit Judges Lourie and Hughes) ................ 265–267

Merck & CIE v. Gnosis S.p.A., 820 F.3d 432 (Fed. Cir. 2016) (per curiam) (order denying rehearing en banc) (concurring opinion by Circuit Judge O’Malley, joined by Circuit Judges Wallach and Stoll, dissenting opinion by Circuit Judge Newman) ............... 267–269

Merck & Cie v. Watson Labs., Inc., 822 F.3d 1347 (Fed. Cir. 2016) (opinion by Circuit Judge Mayer, joined by Circuit Judges Dyk and Hughes)......................... 46–48

Microsoft Corp. v. GeoTag, Inc., 817 F.3d 1305 (Fed. Cir. 2016) (opinion by Circuit Judge Wallach, joined by Circuit Judges Lourie and Stoll)...................... 313–315

Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314 (Fed. Cir. 2016) (opinion by Chief District Judge Stark, D. Del., sitting by designation, joined by Circuit Judges O’Malley and Taranto) ................................ 29, 30

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Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp.,831 F.3d 1350 (Fed. Cir. 2016) (opinion by Circuit Judge Dyk, joined by Circuit Judge Plager, dissenting-in-part opinion by Circuit Judge Taranto) .....152–155

Murata Mach. USA v. Daifuku Co., Ltd., 830 F.3d 1357 (Fed. Cir. 2016) (opinion by Circuit Judge Stoll, joined by Circuit Judges Reyna and Chen) ..................... 241, 242, 315–317

N

Nike, Inc. v. Adidas AG, 812 F.3d 1326 (Fed. Cir. 2016) (opinion by Circuit Judge Chen, joined by Circuit Judges Mayer and Stoll) .......... 80–83, 269–274

Nuance Commc’ns, Inc. v. ABBYY USA Software House, Inc., 813 F.3d 1368 (Fed. Cir. 2016) (opinion by Chief Judge Prost, joined by Circuit Judges Dyk and Chen) ........ 155–157, 317–319

O

Ohio Willow Wood Co. v. Alps S., LLC (OWW II), 813 F.3d 1350 (Fed. Cir. 2016) (opinion by Circuit Judge Bryson, joined by Circuit Judges Dyk and Wallach) ....................213–219

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Table of 2016 Cases

P

Perfect Surgical Techniques, Inc. v. Olympus Am., Inc., 841 F.3d 1004 (Fed. Cir. 2016) (opinion by Circuit Judge Moore, joined by Circuit Judge O’Malley, concurring-in-part, dissenting-in-part opinion by Circuit Judge Schall)............................................................ 48–51

Pfizer, Inc. v. Lee, 811 F.3d 466, 468–69, quoting Pfizer, Inc. v. Lee, No. 12-cv-01131, 2014 U.S. Dist. LEXIS 184554, at *4–5 (E.D. Va. Nov. 6, 2014)....................................... 276–278

Polar Electro OY v. Suunto OY, 829 F.3d 1343 (Fed. Cir. 2016) (opinion by Circuit Judge Lourie, joined by Circuit Judges Newman and Chen)................. 320–323

Poly-Am., L.P. v. API Indus., Inc., 839 F.3d 1131 (Fed. Cir. 2016) (opinion by Circuit Judge Reyna, joined by Chief Judge Prost and Circuit Judge Hughes)..................................................... 158–160

Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 843 F.3d 1315 (Fed. Cir. 2016) ....................................... 203–205

PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC (PPC I), 815 F.3d 734 (Fed. Cir. 2016) (opinion by Circuit Judge Moore, joined by Circuit Judges O’Malley and Wallach) ............ 160–164

PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC (PPC II), 815 F.3d 747 (Fed. Cir. 2016) (opinion by Circuit Judge Moore, joined by Circuit Judges O’Malley and Wallach) ............ 164–167

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Pride Mobility Prods. Corp. v. Permobile, Inc., 818 F.3d 1307 (Fed. Cir. 2016) (opinion by Circuit Judge Taranto, joined by Circuit Judges Reyna and Chen) .....................167–169

Profectus Tech. LLC v. Huawei Techs. Co., Ltd., 823 F.3d 1375 (Fed. Cir. 2016) (opinion by Circuit Judge Reyna, joined by Circuit Judges Moore and Wallach) ................169–171

Purdue Pharma L.P. v. Epic Pharma, LLC, 811 F.3d 1345 (Fed. Cir. 2016) (opinion by Chief Judge Prost, joined by Circuit Judge Reyna and Chief District Judge Stark, D. Del., sitting by designation) ..........................................................83–87

R

Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042 (Fed. Cir. 2016) (opinion by Chief Judge Prost, joined by Circuit Judges Moore and Stoll) ..........................30–32

REG Synthetic Fuels, LLC v. Neste Oil Oyj, 841 F.3d 954 (Fed. Cir. 2016) (opinion by Chief Judge Prost, joined by Circuit Judges Taranto and Chen)...................121–123

Rembrandt Vision Techs., L.P. v. Johnson & Johnson Vision Care, Inc., 818 F.3d 1320 (Fed. Cir. 2016) (opinion by Circuit Judge Stoll, joined by Circuit Judge Moore, dissenting opinion by Circuit Judge Dyk) .......................323–329

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Table of 2016 Cases

Romag Fasteners, Inc. v. Fossil, Inc., 817 F.3d 782 (Fed. Cir. 2016) (opinion by Circuit Judge Dyk, joined by Circuit Judges Wallach and Hughes) ...................... 330

Rosebud LMS Inc. v. Adobe Sys. Inc., 812 F.3d 1070 (Fed. Cir. 2016) (opinion by Circuit Judge Moore, joined by Circuit Judges Hughes and Stoll) .................... 242–245

Ruckus Wireless, Inc. v. Innovative Wireless Sols., LLC, 824 F.3d 999 (Fed. Cir. 2016) (opinion by Circuit Judge Reyna, joined by Chief Judge Prost, dissenting opinion by Chief District Judge Stark, D. Del., sitting by designation)...................................................... 171–173

S

SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 1341 (Fed. Cir. 2016) (opinion by Circuit Judge Stoll, joined by Circuit Judge Chen, concurring-in-part, dissenting-in-part opinion by Circuit Judge Newman)................................................... 278–282

SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 1341 (Fed. Cir. 2016) (denying petition for rehearing en banc) (before Chief Judge Prost, and Circuit Judges Newman, Lourie, Dyk, Moore, Reyna, Wallach, Taranto, Chen, Hughes, and Stoll, Circuit Judge O’Malley did not participate, dissenting opinion by Circuit Judge Newman) ....................... 282

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ScriptPro LLC v. Innovation Assocs., Inc. (ScriptPro II), 833 F.3d 1336 (Fed. Cir. 2016) (opinion by Circuit Judge Moore, joined by Circuit Judges Taranto and Hughes)...............112–114

Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir. 2016) (opinion by Circuit Judge Moore, joined by Circuit Judges Reyna and Wallach, concurring opinion by Circuit Judge Reyna)...................357–362

SimpleAir, Inc. v. Sony Ericsson Mobile Commc’ns AB, 820 F.3d 419 (Fed. Cir. 2016) (opinion by Circuit Judge Wallach, joined by Circuit Judges Moore and Reyna) ...................174–179

SkyHawke Techs., LLC v. Deca Int’l Corp., 828 F.3d 1373 (Fed. Cir. 2016) (opinion by Circuit Judge Hughes, joined by Circuit Judges Taranto and Chen)...................362, 363

S. Ala. Med. Sci. Found. v. Gnosis S.P.A., 818 F.3d 1380 (Fed. Cir. 2016) (per curiam) (order denying petition for rehearing en banc) (opinion concurring in denial of rehearing en banc by Circuit Judge O’Malley, joined by Circuit Judges Wallach and Stoll, dissenting opinion by Circuit Judge Newman) ...............282, 283

Sport Dimension, Inc. v. Coleman Co., 820 F.3d 1316 (Fed. Cir. 2016) (opinion by Circuit Judge Stoll, joined by Circuit Judges Moore and Hughes).................381–383

Stryker Corp. v. Zimmer, Inc., 837 F.3d 1268 (Fed. Cir. 2016) (opinion by Chief Judge Prost, joined by Circuit Judges Newman and Hughes) .............245–247

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Table of 2016 Cases

Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir. 2016) (opinion by Circuit Judge Dyk, joined by Circuit Judge Wallach, dissenting opinion by Circuit Judge Newman) ............... 283–291

Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138 (Fed. Cir. 2016) (opinion by Circuit Judge Chen, joined by Circuit Judges Lourie and Moore) ...................... 33, 34

T

The Meds. Co. v. Hospira, Inc., 827 F.3d 1363 (Fed. Cir. 2016) (en banc) (opinion by Circuit Judge O’Malley, joined by Chief Judge Prost and Circuit Judges Newman, Lourie, Dyk, Moore, Reyna, Wallach, Taranto, Chen, Hughes, and Stoll)....................... 51–62

TLI Commc’ns LLC v. AV Automotive, LLC, 823 F.3d 607 (Fed. Cir. 2016) (opinion by Circuit Judge Hughes, joined by Circuit Judges Dyk and Schall) ........................... 34–36

TransWeb, LLC v. 3M Innovative Props. Co., 812 F.3d 1295 (Fed. Cir. 2016) (opinion by Circuit Judge Hughes, joined by Circuit Judges Wallach and Bryson)................... 62– 64, 219–225

TriReme Med., LLC v. AngioScore, Inc., 812 F.3d 1050 (Fed. Cir. 2016) (opinion by Circuit Judge Dyk, joined by Chief Judge Prost and Circuit Judge Chen).................... 373–376

TriVascular, Inc. v. Samuels, 812 F.3d 1056 (Fed. Cir. 2016) (opinion by Circuit Judge O’Malley, joined by Circuit Judges Moore and Wallach) .................... 87–90

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Trs. of Columbia Univ. in the City of N.Y. v. Symantec Corp., 811 F.3d 1359 (Fed. Cir. 2016) (opinion by Circuit Judge Dyk, joined by Chief Judge Prost and Circuit Judge Hughes) ................179–181

U

UCB, Inc. v. Yeda Research & Dev. Co., Ltd., 837 F.3d 1256 (Fed. Cir. 2016) (opinion by Circuit Judge Newman, joined by Circuit Judges Lourie and Chen) ....................................181, 182

UltimatePointer, L.L.C. v. Nintendo Co., Ltd., 816 F.3d 816 (Fed. Cir. 2016) (opinion by Circuit Judge Lourie, joined by Circuit Judges Dyk and Wallach) ....................................114–117

United Constr. Prods., Inc. v. Tile Tech, Inc., 843 F.3d 1363 (Fed. Cir. 2016) (opinion by Circuit Judge Wallach, joined by Circuit Judges Moore and Stoll) ......................................333, 334

U.S. Water Servs., Inc. v. Novozymes A/S, 843 F.3d 1345 (Fed. Cir. 2016) (opinion by Circuit Judge Wallach, joined by Circuit Judges Hughes and Stoll) ........................................65, 66

Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353 (Fed. Cir. 2016) (opinion by Circuit Judge Moore, joined by Circuit Judges Bryson and Reyna)...................................205–207

Unwired Planet, LLC v. Google Inc., 841 F.3d 1376 (Fed. Cir. 2016) (opinion by Circuit Judge Reyna, joined by Circuit Judges Plager and Hughes) ..................... 91–93, 398, 399

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Table of 2016 Cases

V

Vapor Point LLC v. Moorhead, 832 F.3d 1343 (Fed. Cir. 2016) (per curiam) (for a panel consisting of Circuit Judges O’Malley, Chen, and Stoll, concurring opinion by Circuit Judge O’Malley).............. 377–379

Verinata Health, Inc. v. Ariosa Diagnostics, Inc., 830 F.3d 1335, No. 2015-1970 (Fed. Cir. 2016) ............. 334–337

Veritas Techs. LLC v. Veeam Software Corp., 835 F.3d 1406 (Fed. Cir. 2016) (opinion by Circuit Judge Taranto, joined by Circuit Judges Lourie and O’Malley) .............................. 291, 292

W

Warsaw Orthopedic, Inc. v. NuVasive, Inc., 824 F.3d 1344 (Fed. Cir. 2016) (opinion by Circuit Judge Dyk, joined by Circuit Judge Lourie, concurring opinion by Circuit Judge Reyna) .................. 207–209

WBIP, LLC v. Kohler Co., 829 F.3d 1317 (Fed. Cir. 2016) (opinion by Circuit Judge Moore, joined by Circuit Judges O’Malley and Chen) .................. 97–100, 246, 247

WesternGeco L.L.C. v. ION Geophysical Corp. (WesternGeco III),837 F.3d 1358 (Fed. Cir. 2016) (opinion by Circuit Judge Dyk, joined by Circuit Judge Hughes, dissenting-in-part opinion by Circuit Judge Wallach) .................................................... 248, 249

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Wi-Fi One, LLC v. Broadcom Corp., 837 F.3d 1329 (Fed. Cir. 2016) (opinion by Circuit Judge Bryson, joined by Circuit Judge Dyk, concurring opinion by Circuit Judge Reyna)...................363–365

Wi-LAN, Inc. v. Apple Inc., 811 F.3d 455 (Fed. Cir. 2016) (opinion by Circuit Judge Reyna, joined by Circuit Judges Wallach and Hughes) ..............337–339

Y

Yeda Research & Dev. Co., Ltd. v. Abbott GmbH & Co. KG, 837 F.3d 1341 (Fed. Cir. 2016) (opinion by Circuit Judge Reyna, joined by Circuit Judges Wallach and Hughes) ..............117, 118

Z

Zoltek Corp. v. United States, 815 F.3d 1302 (Fed. Cir. 2016) (opinion by Circuit Judge Newman, joined by Circuit Judges Clevenger and Moore).............118, 119

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Preface

This book contains a synopsis of the Federal Circuit cases relating to patent law decided in 2016. The U.S. Court of Appeals for the Federal Circuit (the CAFC) hears appeals from U.S. district and territorial courts primarily in patent, trademark, and copyright cases, but also in other cases in which the United States or its agencies are a defendant.

The CAFC was established in 1982 for the purpose, among other things, of providing greater uniformity in the application of patent laws by exercising exclusive appellate jurisdiction over all cases involving issues of patent law. The published decisions of the CAFC are therefore controlling precedent on patent issues, and provide a principal source, if not the principal source, for analyzing patent law developments in the United States.

The present book provides a concise review of every patent deci-sion published by the CAFC during 2016, while keeping specialized scientific and legal terminology to a minimum. The case synopses are directed to issues of interest; not every issue considered by the court is discussed. Readers will be able to accurately and efficiently follow all recent patent law developments in the CAFC without being over-whelmed by technical and patent jargon.

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