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2018Federal Circuit

Yearbook

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2018Federal Circuit

Yearbook

Patent Law Developmentsin the Federal Circuit

Gale R. PetersonDerrick A. Pizarro

Practising Law InstituteNew York City

#239483

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, 2018 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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2018 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 2017 Cases ............................................................. xxxvii

Preface............................................................................................. lvii

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

§ 1:1 Cleveland Clinic Foundation, Cleveland Heartlab, Inc. v.True Health Diagnostics LLC.............................................. 1Claims to methods for testing myeloperoxidase (MPO) in a body sample held drawn to patent-ineligible subject matter. Where claims “are substantially similar and linked to the same” law of nature, analyzing representative claims is proper. Section 101 issues may be resolved at the pleading stage before formal claim construction: “we have repeatedly affirmed § 101 rejections at the motion to dismiss stage, before claim construction or significant discovery has com-menced.”

§ 1:2 Credit Acceptance Corp. v. Westlake Services .................... 4Claims to a system and method for providing financing to a customer to purchase a product selected from an inventory of products held drawn to patent-ineligible subject matter.

§ 1:3 Intellectual Ventures I LLC v. Capital One Financial Corp.................................................. 6Claims to a system and method of editing XML documents held to be drawn to an abstract idea.

§ 1:4 Intellectual Ventures I LLC v. Erie Indemnity Co. ............ 7Claims drawn to a database search facility using descriptive terms and associated tags held drawn to patent-ineligible subject matter.

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§ 1:5 Mentor Graphics Corp. v. EVE-USA, Inc. ..........................9Claims calling for a “machine-readable medium” including “carrier waves” held drawn to patent-ineligible subject mat-ter under Nuijten.

§ 1:6 RecogniCorp, LLC v. Nintendo Co., Ltd. .........................10Claims drawn to a method and apparatus for building a composite facial image using constituent parts held drawn to abstract idea of encoding and decoding image data.

§ 1:6.1 The Claims at Issue in This Case................................11

§ 1:7 Return Mail, Inc. v. United States Postal Service ..............12Claims to a system for returning undeliverable mail items held drawn to patent-ineligible subject matter.

§ 1:8 Secured Mail Solutions LLC v. Universal Wilde, Inc........15District court properly granted motion to dismiss on the ground that the seven asserted patents, drawn to use of an identifier (bar code) on the outside of a “mail object,” were drawn to patent-ineligible subject matter.


§ 1:9 Smart Systems Innovations, LLC v. Chicago Transit Authority ...................................................17Divided Federal Circuit concludes that a method of validat-ing entry into a transit system using a bankcard terminal was drawn to patent-ineligible subject matter.


§ 1:10 Thales Visionix, Inc. v. United States .................................19Claims to an inertial tracking system held to be drawn to patent-eligible subject matter analogous to the claims in Diehr. “That a mathematical equation is required to com-plete the claimed method and system does not doom the claims to abstraction.”


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§ 1:11 Two-Way Media Ltd. v. Comcast Cable Communications, LLC ....................................................... 22Federal Circuit affirms district court’s conclusion that claims drawn to a system for streaming audio/visual data over a communications system like the internet were drawn to an abstract idea; that is, patent-ineligible subject matter.

§ 1:11.1 The Claims at Issue in This Case................................ 24

§ 1:12 Visual Memory LLC v. NVIDIA Corp............................... 25Claims to an improvement to computer memory systems held not drawn to an abstract idea.


Chapter 2 Novelty and Statutory Bars ........................... 29

§ 2:1 Amgen Inc. v. Sanofi, Aventisub LLC................................ 29Federal Circuit concludes that district court’s application of Dynamic Drinkware to “published patent applications” under section 102(e)(1) was proper.

§ 2:2 In re Chudik ........................................................................ 31Prior art that must be modified is not anticipatory. “Arranged to engage” in an apparatus claim does not neces-sarily require actual engagement but requires “capable of” engaging.

§ 2:3 Eli Lilly and Co. v. Los Angeles Biomedical ResearchInstitute at Harbor-UCLA Medical Center ....................... 38Federal Circuit concludes that reference did not anticipate because it did not, expressly or inherently, disclose dosage rate.

§ 2:4 EmeraChem Holdings, LLC v. Volkswagen Group of America, Inc. ................................................................... 39Federal Circuit concludes that inventor declaration without corroborating evidence alone is not always sufficient to overcome section 102(e) prior art. “A naked assertion by an inventor that he and a co-inventor are the true inventors of the passages cited” held not sufficient under facts of the case. Despite prior case law (particularly CCPA), Federal

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Circuit seems to move law under section 102(e), directed to showing prior disclosure subject matter was not “by another,” closer to case law under section 102(g), directed to showing prior inventorship.

§ 2:5 Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc..........................................42AIA did not change the statutory meaning of “on sale” regarding a contract of sale prior to the critical date. Agree-ment contracting for the sale of the claimed invention con-tingent on regulatory approval remains a commercial sale. Although price and certain product specifications in con-tract were not publicized, the contractual “transaction” was publicized. Invention may be “ready for patenting” prior to FDA approval.

§ 2:6 Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd......................................................................48Rule from Kennametal that prior art disclosing genus may anticipate claimed species if species is “at once envisaged” by a POSITA does not apply when claim limitation is miss-ing in prior art.

§ 2:7 Southwire Co. v. Cerro Wire LLC .....................................49Federal Circuit concludes that PTAB erred by relying on inherency, but nevertheless affirms finding of unpatentabil-ity. Federal Circuit reiterates CCPA 1977 holding in In re Best that “where ‘all process limitations . . . are expressly disclosed by [the prior art reference], except for the func-tionally expressed [limitation at issue],’ the PTO can require an applicant ‘to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.’”


§ 2:8 Wasica Finance GmbH v. Continental Automotive Systems, Inc. ........................................................................53“Anticipation requires that a single reference ‘describe the claimed invention with sufficient precision and detail to establish that the subject matter existed in the prior art.’ * * * For this reason, it has long been understood that ambiguous references do not, as a matter of law, anticipate a claim.”

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Chapter 3 Nonobviousness.................................................. 57

§ 3:1 Arctic Cat Inc. v. Bombardier Recreational Products Inc. ....................................................................... 57Jury verdict finding nonobviousness may be based on sub-stantial evidence even though (1) prior art meets all claim limitations, and (2) there is a motivation to combine, where there are also reasons not to combine, albeit falling short of “teaching away.” Federal Circuit issues “tome” on obvious-ness. Appellate court function is to determine whether sub-stantial evidence supports the jury’s verdict—not to relitigate the issue.

§ 3:2 Bayer Pharma AG v. Watson Laboratories, Inc................. 61Although district court may make credibility determina-tions when analyzing competing expert testimony, district court errs when it ignores prior art and motivation to com-bine reference teachings. “When there are only two possible formulations, and both are known in the art at the time, the fact that there may be reasons a skilled artisan would prefer one over the other does not amount to a teaching away from the lesser preferred but still workable option.”

§ 3:3 In re Ethicon, Inc................................................................ 63Even if a prior art reference does not disclose a problem with a component, one of ordinary skill in the art may find it to have been obvious to employ other known components for their known and expected properties and the reason to combine would come from the normal desire to improve upon what is already known.

§ 3:4 Honeywell International Inc. v. Mexichem AmancoHoldings S.A. de C.V. ......................................................... 66“What is important regarding properties that may be inher-ent, but unknown, is whether they are unexpected. All prop-erties of a composition are inherent in that composition, but unexpected properties may cause what may appear to be an obvious composition to be nonobvious.” “The standard [for obviousness] is not whether the patent owner can persua-sively show that one of ordinary skill would have expected failure. Rather, the burden is on the Examiner to show that one of ordinary skill would have had a motivation to com-

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bine the references with a reasonable expectation of suc-cess.” “A further point regarding so-called ‘routine testing’ is that § 103 provides that ‘[p]atentability shall not be negated by the manner in which the invention was made.’ * * * That provision was enacted to ensure that routine experimentation does not necessarily preclude patentabil-ity.”

§ 3:5 Intercontinental Great Brands LLC v. Kellogg North America Co. ................................................70Federal Circuit panel majority: district court did not err in considering objective factors after finding that the chal-lenger had made a prima facie case for obviousness. Circuit Judge Reyna, dissenting-in-part: step of finding prima facie obviousness should be eliminated. The “enhanced burden” one faces when relying on prior art previously considered by the PTO does not raise the level of proof beyond “clear and convincing,” but is simply a statement of practical trial reality.

§ 3:6 Meiresonne v. Google, Inc. .................................................75Prior art describing descriptive text as “cursory” does not teach away from combining text descriptions with a rollover window.

§ 3:7 Merck Sharp & Dohme Corp. v. Hospira, Inc...................77Circuit Judge Newman, in dissent, urges that it is time to “remedy” the Graham analysis—namely that the objective factors should be considered together with the first three Graham factors rather than first determining whether a prima facie case of obviousness had been shown.

§ 3:8 Millennium Pharmaceuticals, Inc. v. Sandoz Inc...............79Federal Circuit reverses district court’s finding of obvious-ness when prior art did not teach or suggest claimed new compound and did not teach or suggest any method for making the new compound and did not teach or suggest that new compound would have the resulting properties. Although claimed compound was the “natural result” of freeze-drying a known compound with a known bulking agent, claimed compound would not have been obvious.

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§ 3:9 In re Van Os......................................................................... 82Federal Circuit vacates and remands PTAB decision con-cluding, without explanation, that it would be “intuitive” to combine references.

Chapter 4 Specification and Claims ................................ 85

§ 4:1 Amgen Inc. v. Sanofi, Aventisub LLC................................ 85As a matter of first impression, the Federal Circuit holds that evidence showing the state of the art subsequent to the priority date is not relevant to written description, but evi-dence showing that a claimed genus does not disclose a rep-resentative number of species may include evidence of species that fall within the claimed genus and such evidence may postdate the priority date.

§ 4:2 BASF Corp. v. Johnson Matthey Inc.................................. 89The law of indefiniteness does not preclude defining a par-ticular claim term by its function. Claim calling for “effec-tive to catalyze” is not indefinite.


§ 4:3 Cisco Systems, Inc. v. Cirrex Systems, LLC ...................... 92Claims added during reexamination are not “original claims” and must find written description support in the specification.

§ 4:4 Mentor Graphics Corp. v. EVE-USA, Inc. ........................ 93Term “near” did not render claims indefinite where specifi-cation explains that “near” means displayed in a manner that physically associates two items.

§ 4:5 Mentor Graphics Corp. v. EVE-USA, Inc. ........................ 95“Original claims are part of the original specification and in many cases will satisfy the written description require-ment.”

§ 4:6 One-E-Way, Inc. v. United States International TradeCommission ......................................................................... 96Claim term “virtually free from interference” when con-strued in light of specification did not render claims indefi-

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nite despite the lack of a technical definition. Panel majority rejects argument that “virtually free from interference” in asserted claims must be distinguished from “free from inter-ference” in non-asserted claims, but even if required, differ-ence is analogous to “free from defects” versus “substantially free from defects.”

§ 4:7 Presidio Components, Inc. v. American Technical Ceramics Corp.....................................................................99Claims drawn to “capable of being determined by measure-ment” held not indefinite where measurement methodology was well-known in the art, although not peer-reviewed.

§ 4:8 Rivera v. United States International Trade Commission .......................................................................101Federal Circuit affirms ITC’s conclusion that claims broadly drawn to “a container * * * adapted to hold brewing material” lacks written description support.

§ 4:9 Sonix Technology Co., Ltd. v. Publications International,Ltd......................................................................................105Federal Circuit concludes that “visually negligible” does not render claims indefinite.

Chapter 5 Interference and Priority of Invention .............................................................109

§ 5:1 Board of Trustees of the Leland Stanford Junior University v. Chinese University of Hong Kong ..............109In determining whether patent-in-interference provides written description support for later added claims PTAB must determine whether POSITA would have concluded that inventors were in possession of the later claimed inven-tion as of the relevant filing date.

§ 5:2 Storer v. Clark....................................................................113Federal Circuit agrees with PTAB that prior provisional application did not provide enabling support for interfering subject matter.

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Chapter 6 Claim Construction......................................... 115

§ 6:1 Arista Networks, Inc. v. United States International Trade Commission ............................................................ 115Specification “trumps” grammatical construction of claim language.

§ 6:2 Aylus Networks, Inc. v. Apple Inc. ................................... 116As an issue of first impression, statements made by a patent owner during an IPR proceeding can be relied upon to sup-port a finding of prosecution disclaimer.

§ 6:3 Georgetown Rail Equipment Co. v. Holland L.P............ 118Federal Circuit agrees with district court that “mounted on a vehicle for movement along the railroad track” in claim preamble was not a structural limitation.

§ 6:4 Los Angeles Biomedical Research Institute at Harbor-UCLA Medical Center v. Eli Lilly and Co. ................................................................ 121PTAB errs in concluding that claims would have been obvi-ous based on an overbroad BRI claim construction.

§ 6:5 MasterMine Software, Inc. v. Microsoft Corp................. 123Using functional language in an apparatus claim does not necessarily mean that the claim improperly covers both an apparatus and method. Functional language described capabilities of a system rather than user actions.

§ 6:5.1 The Claims at Issue in This Case.............................. 124

§ 6:6 MPHJ Technology Investments, LLC v. Ricoh Americas Corp. ....................................................... 125Statements in provisional application that are omitted in regular application may impact claim construction.

§ 6:7 Shire Development, LLC v. Watson Pharmaceuticals, Inc............................................ 126The phrase “consisting of” in a Markush claim “creates a very strong presumption that that claim element is ‘closed’ and therefore ‘exclude[s] any elements, steps, or ingredients not specified in the claim.’”

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§ 6:8 Skky, Inc. v. MindGeek, S.A.R.L......................................128Phrase “wireless device means” did not invoke section 112(6) because the phrase recites sufficient structure.

§ 6:9 In re Smith International, Inc. ..........................................130Broadest reasonable interpretation means an interpretation consistent with the specification.

§ 6:10 Technology Properties Ltd LLC v. Huawei Technologies Co., Ltd. ........................................132Prosecution history disclaimer is based on what the appli-cant argued to the PTO, not simply on what was necessary to avoid the prior art.

Chapter 7 Infringement......................................................135

§ 7:1 Centillion Data Systems, LLC v. Qwest CommunicationsInternational, Inc...............................................................135Federal Circuit expands rationale of Centillion to encom-pass third-party data processing.

§ 7:2 Cleveland Clinic Foundation, Cleveland Heartlab, Inc. v. True Health Diagnostics LLC ..........................................137“The mere knowledge of possible infringement by others does not amount to inducement; specific intent and action to induce infringement must be proven.”

§ 7:3 Cleveland Clinic Foundation, Cleveland Heartlab, Inc. v.True Health Diagnostics LLC ..........................................139“[C]ontributory infringement occurs if a party sells, or offers to sell, a material or apparatus for use in practicing a patented process, and that ‘material or apparatus’ is mate-rial to practicing the invention, it has no substantial non-infringing uses, and it is known by the party ‘to be especially made or especially adapted for use in an infringement of such patent.’” “[A] party that provides a service, but no ‘material or apparatus,’ cannot be liable for contributory infringement.”

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§ 7:4 Cleveland Clinic Foundation, Cleveland Heartlab, Inc. v. True Health Diagnostics LLC.......................................... 140Complaint adjudged as failing to adequately assert indirect infringement of claims to a method for treating a patient that has cardiovascular disease.

§ 7:5 Core Wireless Licensing S.A.R.L. v. Apple Inc. .............. 141Accused product does not infringe where it does not have “corresponding structure.”

§ 7:6 Eli Lilly and Co. v. Teva Parenteral Medicines, Inc........ 143Liability for inducing infringement found, despite that no one actor performed all method steps, direct infringement was attributable to physicians and the defendant pharma-ceutical companies induced that infringement.

§ 7:7 Intellectual Ventures I LLC v. Motorola Mobility LLC .................................................... 145Per Centillion and NTP, in connection with claims con-strued as “system comprising [certain elements]” claims, “to use a system, a person must control (even if indirectly) and benefit from each claimed component.”

§ 7:8 Jang v. Boston Scientific Corp. ......................................... 148When using a hypothetical claim analysis, hypothetical claim must be broader than the original claim—not broader in some respects and narrower in other respects. Whether hypothetical claim “ensnares” the prior art is a question of law for the court.

§ 7:9 Metalcraft of Mayville, Inc. v. The Toro Co. ................... 153Federal Circuit concludes that patentee had shown a likeli-hood of success on the issue of infringement where the defendant’s proposed claim construction was not supported by the claims or specification.

§ 7:10 Mylan Institutional LLC v. Aurobindo Pharma Ltd........ 155As a matter of “clarifying” prior opinions, Federal Circuit reasons that the “insubstantial differences test” rather than the “function-way-result” analysis is more appropriate when considering equivalence in pharmaceutical/chemical cases.

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§ 7:11 Sanofi v. Watson Laboratories, Inc...................................161Intent to induce infringement may be found despite that there are “non-infringing uses.”

§ 7:12 Travel Sentry, Inc. v. Tropp ..............................................163Federal Circuit issues comprehensive opinion on joint infringement in reversing district court’s grant of summary judgment of non-infringement. Federal Circuit concludes that MOU with TSA, under which TSA used master keys to unlock luggage for inspection, satisfied Akamai V prongs.

§ 7:12.1 The Claims at Issue in This Case..............................167

Chapter 8 Prosecution History Estoppel ....................169

Chapter 9 Inequitable Conduct ......................................171

§ 9:1 Intercontinental Great Brands LLC v. Kellogg North America Co. ..............................................171Federal Circuit concluded that the defendant failed to show the “intent” element in the course of asserting that knowl-edge of an alleged “misprint” in a prior art article should be inferred.

§ 9:2 Regeneron Pharmaceuticals, Inc. v. Merus N.V. .............174Trial misconduct may result in an adverse inference of intent to deceive for purposes of inequitable conduct where litigation misconduct is sufficiently tied to patent prosecu-tion.

Chapter 10 Remedies .............................................................181

§ 10:1 AIA America, Inc. v. Avid Radiopharmaceuticals ............181As a matter of first impression, the Federal Circuit holds that the Seventh Amendment right to a jury trial does not apply to requests for attorney’s fees under section 285. In deciding whether to award attorney’s fees under section 285, an equitable remedy, the district court is not foreclosed from making additional findings about a party’s state of

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mind, intent, and culpability not precluded by a jury ver-dict.

§ 10:2 Arctic Cat Inc. v. Bombardier Recreational Products Inc. ..................................................................... 184Resolving a split among district courts regarding burdens of production and proof, Federal Circuit holds that “an alleged infringer who challenges the patentee’s compliance with § 287 bears an initial burden of production to articu-late the products it believes are unmarked “patented arti-cles” subject to § 287. * * * Once the alleged infringer meets its burden of production, however, the patentee bears the burden to prove the products identified do not practice the patented invention.”

§ 10:3 Checkpoint Systems, Inc. v. All-Tag Security S.A. .......... 187Federal Circuit reverses district court’s finding of “excep-tional” case status, and reverses award of attorney’s fees. “Motivation to implement the statutory patent right by bringing suit based on a reasonable belief in infringement is not an improper motive.”

§ 10:4 Genband US LLC v. Metaswitch Networks Corp........... 189The irreparable-injury component requires “some causal nexus” between the infringing features and sales lost to the patentee. In context of multiple purchasers, multiple fea-tures, Federal Circuit explains “drive demand” as articu-lated in Apple I, Apple II, Apple III and Apple IV—“under the causation approach suitable for a multi-feature, multi-purchaser context, the patentee may be able to make the causal connection between infringement and the relevant lost sales through evidence of various kinds, e.g., that the infringing features significantly increased the product’s desirability, that soundly supports an inference of causation of a significant number of purchasers’ decisions.” Federal Circuit vacates and remands denial of permanent injunc-tion where it was unclear whether district court had applied a too stringent “causal nexus” requirement.

§ 10:5 Mentor Graphics Corp. v. EVE-USA, Inc. ...................... 193Apportionment is an important component of both reason-able royalty and lost profits damages. Satisfaction of the Panduit factors satisfies principles of apportionment.

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§ 10:6 Mentor Graphics Corp. v. EVE-USA, Inc. ......................196There is no “rigid rule” requiring a patentee to seek a pre-liminary injunction before seeking enhanced damages.

§ 10:7 Presidio Components, Inc. v. American Technical Ceramics Corp...................................................................197Federal Circuit affirms district court’s decision to decline awarding enhanced damages despite a jury verdict of will-ful infringement. District court, in deciding whether to award enhanced damages, is not required to discuss Readfactors.

§ 10:8 Presidio Components, Inc. v. American Technical Ceramics Corp...................................................................199“The correct inquiry under Panduit is whether a non-infringing alternative would be acceptable compared to the patent owner’s product, not whether it is a substitute for the infringing product.”

§ 10:9 Presidio Components, Inc. v. American Technical Ceramics Corp...................................................................201When claims are amended during reexamination, the ques-tion of intervening rights depends on the scope of the origi-nal and amended claims, not the patentee’s intent in amending the claims.

§ 10:10 Presidio Components, Inc. v. American Technical Ceramics Corp...................................................................204District court has discretion to consider whether evidence, other than lost profits, may support a finding of irreparable injury.

§ 10:11 Promega Corp. v. Life Technologies Corp. (Promega III) .....................................................................205A party may waive a right to receive lost profits damages by submitting a single damages theory based on worldwide sales when potential damages are only available for sales in the United States.

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§ 10:12 Rembrandt Wireless Technologies, LP v. Samsung Electronics Co., Ltd. ......................................... 209Disclaimer does not serve to retroactively dissolve the sec-tion 287(a) marking requirement for a patentee to collect pre-notice damages. Federal Circuit remands “novel” issue whether marking statute should be applied on a claim-by-claim or patent-by-patent basis.

Chapter 11 PTO Practice and Procedure ..................... 213

§ 11:1 In re Affinity Labs of Texas, LLC..................................... 213The estoppel provisions of pre-AIA section 317(b) apply on a claim-by-claim basis regardless of whether reexamination has been instituted or not.

§ 11:2 In re Affinity Labs of Texas, LLC..................................... 216Companion case: Pre-AIA section 317(b) did not prohibit PTO maintaining inter partes reexamination despite that underlying district court litigation was settled because a dis-missal without prejudice did not invoke estoppel provision.

§ 11:3 Aqua Products, Inc. v. Matal ............................................ 218After en banc consideration of whether the petitioner or patent owner has the burden of showing amended or substi-tute claims are patentable for over a year, the Federal Cir-cuit concludes—basically—nothing.

§ 11:4 CRFD Research, Inc. v. Matal ......................................... 225Federal Circuit, in three companion cases, affirms the PTAB’s conclusion that the challenged claims in two of the cases were unpatentable, and reverses the PTAB’s conclu-sion in the third case that the challenged claims had not been shown to be unpatentable.

§ 11:5 EmeraChem Holdings, LLC v. Volkswagen Group ofAmerica, Inc. ..................................................................... 227Broad general statements of obviousness that include a ref-erence, among others, do not provide adequate notice and an opportunity to respond where detailed claim charts and institution decision do not identify reference as disclosing certain subject matter.

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§ 11:6 Fairchild (Taiwan) Corp. v. Power Integrations, Inc. ......229The Federal Circuit’s prior affirmance of a jury’s obvious-ness determination, and a reversal and remand on infringe-ment invokes the bar of section 317(b) (pre-AIA).

§ 11:7 Homeland Housewares, LLC v. Whirlpool Corp. ...........232Federal Circuit reverses PTAB’s conclusion that challenged claims were not unpatentable where the PTAB had failed to construe “settling speed.”

§ 11:8 HTC Corp. v. Cellular Communications Equipment, LLC...............................................................234Petitioner failed to meet burden of persuasion to show claims were anticipated or obvious.

§ 11:9 Icon Health and Fitness, Inc. v. Strava, Inc. ....................236PTAB is not precluded from relying on expert declarations even though such declarations may contain legal conclu-sions (e.g., “would have been obvious”). When the PTAB and examiner rely on attorney argument, the PTO has not made the requisite factual findings or provided the neces-sary explanation to support the decision.

§ 11:10 Idemitsu Kosan Co., Ltd. v. SFC Co., Ltd.......................239Petitioner in an IPR has the burden of establishing unpat-entability but is not required to rebut mere attorney argu-ment with expert testimony.

§ 11:11 IPCom GmbH & Co. v. HTC Corp. ................................240PTAB errs by failing to identify “corresponding structure” to a means-plus-function limitation before deciding obvi-ousness.

§ 11:12 Microsoft Corp. v. Biscotti, Inc.........................................241Over a strenuous dissent by Circuit Judge Newman, the Federal Circuit panel majority concludes that Microsoft failed to show during IPR that the challenged claims were unpatentable.

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§ 11:13 Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd. .................................................................. 243Federal Circuit concludes that prior art “primitive” thermo-stat does not teach away from claimed “system controller” when claims are given their broadest reasonable interpreta-tion. Judge Dyk “comments” on (1) relationship between joinder provision of section 315(c) and exception to the time bar in section 315(b), and (2) PTO practice of using expanded PTAB panels to decide issues after a three-judge panel decides an issue contrary to the PTO’s views.

§ 11:14 Novartis AG v. Noven Pharmaceuticals Inc..................... 245Because petitioner in an IPR proved unpatentability by a preponderance of the evidence standard, rather than by clear and convincing evidence, PTAB may properly reach a different conclusion than a district court based on the same evidence.

§ 11:15 Novartis AG v. Torrent Pharmaceuticals Ltd. ................. 246Declining to institute an IPR on a ground that includes a particular reference does not necessarily preclude the PTAB from later relying on that reference in its final written deci-sion to show motivation to combine.

§ 11:16 Organik Kimya AS v. Rohm and Haas Co........................ 249Federal Circuit affirms PTAB’s claim construction and PTAB’s conclusion that claims were patentable over the prior art.

§ 11:17 Outdry Technologies Corp. v. Geox S.P.A. ...................... 250Federal Circuit affirms PTAB’s construction of “directly pressing” under the BRI standard and affirms PTAB’s find-ing of obviousness.

§ 11:18 Owens Corning v. Fast Felt Corp..................................... 252Federal Circuit reverses PTAB’s conclusion that claims were nonobvious over prior art.

§ 11:18.1 The Claims at Issue in This Case.............................. 254

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§ 11:19 PersonalWeb Technologies, LLC v. Apple, Inc...............254PTAB decision that does not sufficiently explain and sup-port conclusions that (1) prior art disclosed all of the claim limitations/elements, and (2) motivation to combine prior art teachings and reasonably expected success, is inade-quate.

§ 11:20 Rovalma, S.A. v. Böhler-Edelstahl GmbH & Co. KG ...............................................................................256Federal Circuit remands to PTAB when PTAB decision is inadequate to determine whether substantial evidence sup-ports PTAB obviousness decision. Federal Circuit limits Magnum Tools and does not necessarily preclude PTAB from (1) adopting petitioner’s claim construction in institu-tion decision, and (2) then changing the claim construction to that urged by the patent owner in the PTAB’s final writ-ten decision but remands the issue for clarification.

§ 11:21 Soft Gel Technologies, Inc. v. Jarrow Formulas, Inc.......260Federal Circuit concludes that substantial evidence sup-ported the PTAB’s findings regarding the prior art.

§ 11:22 In re Stepan Co..................................................................261PTAB errs by failing to fully explain its decision. Asserting “routine optimization” alone is insufficient.

§ 11:22.1 The Claims at Issue in This Case..............................263

§ 11:23 Ultratec, Inc. v. CaptionCall, LLC ...................................264Federal Circuit vacates PTAB decision where PTAB failed to consider alleged inconsistent testimony by an expert wit-ness in district court litigation yet repeatedly relied on that witness’s testimony before the PTAB, and where the PTAB further failed to explain its decisions.

§ 11:24 Vicor Corp. v. SynQor, Inc................................................268Federal Circuit vacates-in-part two separate PTAB deci-sions, in two separate inter partes reexaminations, delivered by the same PTAB panel, regarding two separate, but related patents, where decisions on “identical issues” were inconsistent.

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Chapter 12 District Court Jurisdiction and Procedure ........................................................... 273

§ 12:1 AdjustaCam, LLC v. Newegg, Inc. .................................. 273District court errs in declining to award attorney’s fees by (1) failing to follow Federal Circuit mandate of reconsider-ing earlier denial after Octane Fitness, and (2) basing its decision on “a clearly erroneous assessment of the evi-dence.”

§ 12:2 Allied Mineral Products, Inc. v. OSMI, Inc..................... 276Filing suit in Mexico to enforce a Mexican patent does not give rise to declaratory judgment jurisdiction in the United States involving unrelated entities (albeit the manufacturer of the accused products).

§ 12:3 ArcelorMittal v. AK Steel Corp. ....................................... 278Federal Circuit panel majority concluded that covenant-not-to-sue, under facts of case, did not moot controversy.

§ 12:4 Bayer CropScience AG v. Dow AgroSciences LLC ........ 281Federal Circuit affirms district court’s award of attorney’s fees finding case was exceptional.

§ 12:5 Comcast IP Holdings I LLC v. Sprint Communications Co. ............................................. 282Federal Circuit: “We may affirm the jury’s findings on infringement if substantial evidence appears in the record supporting the jury’s verdict, and if correction of errors in claim construction would not have changed the verdict, given the evidence presented.”

§ 12:6 In re Cray Inc. ................................................................... 283Federal Circuit explains that “regular and established place of business” in section 1400(b) requires “(1) there must be a physical place in the district; (2) it must be a regular and established place of business; and (3) it must be the place of the defendant.”

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§ 12:7 Evans v. Building Materials Corp. of America.................289District court did not err in denying motion to compel arbi-tration where assertion that claims in complaint were cov-ered by arbitration clause was “wholly groundless.”

§ 12:8 First Data Corp. v. Inselberg ............................................291District courts lack subject matter jurisdiction where patent claims, raised in a counterclaim, are frivolous.

§ 12:9 Inventor Holdings, LLC v. Bed Bath & Beyond, Inc. .....293Federal Circuit affirms award of attorney’s fees for failure to dismiss action following the Supreme Court’s decision in Alice.

§ 12:10 Lifetime Industries, Inc. v. Trim-Lok, Inc. ......................294Federal Circuit concludes that complaint alleging where the alleged infringement occurred, when it occurred, who per-formed the allegedly infringing act, plus other facts was suf-ficient to meet the Iqbal/Twombly standard.

§ 12:11 Mentor Graphics Corp. v. EVE-USA, Inc. ......................299Claim preclusion does not bar allegations of infringement for conduct occuring after a prior final judgment.

§ 12:12 In re Micron Technology, Inc. ..........................................301Federal Circuit rejects “change of law” analysis relevant to “waiving” venue defense and adopts “discretionary frame-work”—the “Dietz framework.”

§ 12:13 NantKwest, Inc. v. Matal ..................................................307Federal Circuit sua sponte orders rehearing en banc in NantKwest regarding an award of PTO expenses in section 145 proceedings. Panel: section 145’s “[a]ll expenses of the proceedings” provision authorizes an award of USPTO’s attorney’s fees.

§ 12:14 New World International, Inc. v. Ford Global Technologies, LLC.......................................310Federal Circuit issues tutorial on personal jurisdiction in context of cease-and-desist letters and an exclusive licensee doing business in the forum state.

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§ 12:15 NexLearn, LLC v. Allen Interactions, Inc. ...................... 314Contacts with forum predating issuance of patent-in-suit held not relevant for establishing specific jurisdiction for patent infringement claim. Existence of website alone held insufficient to establish minimum contacts with forum.

§ 12:16 Nichia Corp. v. Everlight Americas, Inc. ......................... 316District court did not err in declining to issue a permanent injunction where there was no showing of irreparable harm that could not be addressed through damages.

§ 12:17 NobelBiz, Inc. v. Global Connect, L.L.C......................... 318Federal Circuit splits in denying petition for rehearing en banc regarding clarification of O2 Micro.

§ 12:18 NOVA Chemicals Corp. (Canada) v. Dow Chemical Co. ............................................................ 319District court in deciding whether case “stood out” did not err in comparing case to patent cases in general.

§ 12:19 Phil-Insul Corp. v. Airlite Plastics Co............................... 321A Federal Circuit Rule 36 judgment provides basis for asserting collateral estoppel in subsequent case unless Rule 36 judgment affirmed judgment of trial court on two issues, either of which could independently support the result.

§ 12:20 Prism Technologies LLC v. Sprint Spectrum L.P. .......... 326District court did not err in admitting a settlement agree-ment in a related case.

§ 12:21 Romag Fasteners, Inc. v. Fossil, Inc. ............................... 329In view of Octane, Lanham Act held to have the same stan-dard for recovering attorney’s fees as the Patent Act.

§ 12:22 Rothschild Connected Devices Innovations, LLC v.Guardian Protective Services, Inc. ................................... 331Federal Circuit reverses district court’s determination that case was not “exceptional” for purposes of awarding attor-ney’s fees. Strong case for an award of attorney’s fees where questionable actions are brought against multiple defen-dants. It is error to conflate Rule 11 with section 285: “Whether a party avoids or engages in sanctionable conduct

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under Rule 11(b) ‘is not the appropriate benchmark’; indeed, ‘a district court may award fees in the rare case in which a party’s unreasonable conduct—while not necessar-ily independently sanctionable—is nonetheless so “excep-tional” as to justify an award of fees.’”

§ 12:23 Tinnus Enterprises, LLC v. Telebrands Corp. ................334Federal Circuit affirms grant of a preliminary injunction despite PTAB’s institution decision in a post-grant review that all claims were more likely than not invalid based on the same arguments considered by the district court.

§ 12:24 TVIIM, LLC v. McAfee, Inc.............................................336Failing to seek construction of terms alleged to have an “ordinary meaning” results in waiver.

§ 12:25 University of Utah v. Max-Planck-Gesellschaft ZurFoerderung Der Wissenschaften E.V. .............................337District court was within its discretion in declining to award attorney’s fees even though suit lacked substantive support. District court (D. Mass.) characterized case thus: “although Utah may have been asking for pie in the sky, that does not differentiate this case from most patent cases.”

§ 12:26 Waymo LLC v. Uber Technologies, Inc. .........................339District court did not err in refusing to compel arbitration where moving party was not a party to an arbitration agree-ment and principles of equitable estoppel did not apply.

§ 12:27 Xilinx, Inc. v. Papst Licensing GmbH & Co. KG.............342Northern District of California has personal jurisdiction for a declaratory judgment action against a German Non-Prac-ticing Entity (NPE) based on the NPE’s litigious business model and that the NPE previously had filed suits in that district.

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Chapter 13 Appellate Court Jurisdiction and Practice ................................................................ 345

§ 13:1 Amgen Inc. v. Hospira, Inc............................................... 345Federal Circuit concludes that it lacks jurisdiction over dis-trict court’s order under the collateral order doctrine of a district court’s order denying Amgen’s motion to compel discovery from Hospira under the BPCIA, and that Amgen fails, alternatively, to satisfy the prerequisites for manda-mus. “The reasonableness requirement of paragraph (l)(3)(A) does not preclude a sponsor from listing a patent for which an applicant has not provided information under paragraph (l)(2)(A).”

§ 13:2 In re AT&T Intellectual Property II, L.P. ....................... 350Federal Circuit’s authority to review PTAB’s decision to institute inter partes reexamination is limited by section 312(c) (eff. Sept. 16, 2011)—limits Federal Circuit review to a determination under section 312(a), namely whether “the information presented in the request shows that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request”—section 312(c) (eff. Sept. 16, 2011) only restricts Federal Circuit review of a determination under section 312(a).

§ 13:3 Bosch Automotive Service Solutions, LLC v. Matal........ 352Federal Circuit vacates and remands PTAB’s denial of pat-ent owner’s “contingent” motion to amend based on its “direction” in Aqua Products. Federal Circuit “signals” but does not decide whether PTAB may consider “indefinite-ness” (or other section 112 basis) when considering pro-posed amended claims (a footnote “signal” suggests the answer is yes).

§ 13:4 Credit Acceptance Corp. v. Westlake Services ................ 355Federal Circuit has jurisdiction to review PTAB decision finding no estoppel under section 325(e)(1). Estoppel of sec-tion 325(e)(1) does not apply in a subsequent proceeding to claims which the PTAB declined to institute review.

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§ 13:5 Halo Electronics, Inc. v. Pulse Electronics, Inc...............358Federal Circuit dismisses appeal for violation of final judg-ment rule.

§ 13:6 Medicines Co. v. Mylan, Inc. ............................................359Federal Circuit, viewing claim construction as “purely” a question of law, adopts a claim construction based on spec-ification that had not been adopted by the district court, and, apparently, not advocated by either party.

§ 13:7 Personal Audio, LLC v. Electronic Frontier Foundation.........................................................................361Despite Consumer Watchdog, public interest organization may participate in appeal brought by patent owner who has Article III standing.

§ 13:8 Phigenix, Inc. v. ImmunoGen, Inc. ..................................362A party may petition for an IPR before the PTO, and yet lack Article III standing to appeal to the Federal Circuit.

§ 13:9 Preston v. Nagel.................................................................36428 U.S.C. § 1447(d) bars review of district court’s decision to remand—Federal Circuit declines to create exception under Osborn and the AIA.

§ 13:10 Return Mail, Inc. v. United States Postal Service ............366Federal Circuit has appellate jurisdiction to review PTAB decision regarding party standing—distinguishes Cuozzoand Achates.

§ 13:11 Walker v. Health International Corp................................370Federal Circuit awards sanctions for frivolous appeal—both as filed and as argued.

§ 13:12 Waymo LLC v. Uber Technologies, Inc. .........................372Federal Circuit dismisses appeal from magistrate judge’s orders compelling discovery of “Stroz Report” alleged to be subject to attorney-client and work product privileges as failing to demonstrate entitlement to a writ of mandamus.

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Chapter 14 Ownership Agreements and Inventorship....................................................... 377

§ 14:1 Cumberland Pharmaceuticals Inc. v. Mylan Institutional LLC................................................... 377Suggestions from individuals at FDA to perform further research to support inclusion of a particular agent in a pharmaceutical formulation does not constitute conception of an invention in which that agent is removed—or in deri-vation.

§ 14:2 NFC Technology, LLC v. Matal ...................................... 380Federal Circuit reverses PTAB’s conclusion that earlier con-ception was not sufficiently corroborated: Federal Circuit “ducks” the question whether “inurement” (as observed in interference practice) is required when attempting to ante-date a reference.

Chapter 15 Design Patents .................................................. 383

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

§ 16:1 Amgen Inc. v. Sandoz, Inc. (Amgen III) .......................... 385After remand from the Supreme Court, the Federal Circuit holds that the BPCIA preempts state law remedies for an applicant’s failure to comply with section 262(l)(2)(A).

§ 16:2 Cascades Projection LLC v. Epson America, Inc............ 389Federal Circuit denies initial en banc consideration of whether IPR violates the Constitution.

§ 16:3 Secure Axcess, LLC v. PNC Bank National Association ......................................................................... 391“It is the claims, in the traditional patent law sense, prop-erly understood in light of the written description, that identifies a CBM patent.” “The statutory definition of a CBM patent requires that the patent have a claim that con-tains, however phrased, a financial activity element.”

Comprehensive Table of Cases ........................................... 397

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Table of 2017 Cases

A

AdjustaCam, LLC v. Newegg, Inc., 861 F.3d 1353 (Fed. Cir. 2017) (opinion by Circuit Judge Reyna, joined by Circuit Judges Mayer and Hughes) ................................. 273–275

AIA Am., Inc. v. Avid Radiopharm., 866 F.3d 1369 (Fed. Cir. 2017) (opinion by Circuit Judge Hughes, joined by Circuit Judges Newman and Lourie) .............. 181–184

Allied Mineral Prods., Inc. v. OSMI, Inc., 870 F.3d 1337 (Fed. Cir. 2017) (opinion by Circuit Judge Moore, joined by Circuit Judges Reyna and Stoll) ...................................... 276–278

Amgen Inc. v. Hospira, Inc., 866 F.3d 1355 (Fed. Cir. 2017) (opinion by Circuit Judge Dyk, joined by Circuit Judges Bryson and Chen).................................... 345–349

Amgen Inc. v. Sandoz, Inc. (Amgen III), 877 F.3d 1315 (Fed. Cir. 2017) (opinion by Circuit Judge Lourie, joined by Circuit Judges Newman and Chen) ................................ 385–389

Amgen Inc. v. Sanofi, Aventisub LLC, 872 F.3d 1367 (Fed. Cir. 2017) (opinion by Chief Judge Prost, joined by Circuit Judges Taranto and Hughes)....................... 29–31, 85–89

Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc) (opinion filed by Circuit Judge O’Malley, joined by Circuit Judges Newman, Lourie, Moore, and Wallach,

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and in which Circuit Judges Dyk and Reyna concur in result,opinion filed by Circuit Judge Moore, joined by Circuit Judges Newman and O’Malley, opinion filed by Circuit Judges Reyna, joined by Circuit Judge Dyk, and in which Chief Judge Prost and Circuit Judges Taranto, Chen and Hughes join in part, opinion filed by Circuit Judge Taranto, joined by Chief Judge Prost and Circuit Judges Chen and Hughes, dissenting from the judgment, and in which Circuit Judges Dyk and Reyna join in part in other respects, opinion dissenting from judgment filed by Circuit Judge Hughes, joined by Circuit Judge Chen) (Circuit Judge Stoll did not participate) ..........................218–225

ArcelorMittal v. AK Steel Corp., 856 F.3d 1365 (Fed. Cir. 2017) (opinion by Circuit Judge Hughes, joined by Circuit Judge Moore, dissenting opinion byCircuit Judge Wallach) ....................................................278–280

Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350 (Fed. Cir. 2017) (opinion by Circuit Judge Moore, joined by Circuit Judges Plager and Stoll) .......................... 57–60, 184–186

Arista Networks, Inc. v. U.S. Int’l Trade Comm’n, 873 F.3d 1354 (Fed. Cir. 2017) (opinion by Circuit Judge Reyna, joined by Circuit Judges Schall and Wallach) .................................115–116

Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353 (Fed. Cir. 2017) (opinion by Circuit Judge Stoll, joined by Circuit Judges Moore and Linn) .....................................116–117

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Table of 2017 Cases

B

BASF Corp. v. Johnson Matthey Inc., 875 F.3d 1360 (Fed. Cir. 2017) (opinion by Circuit Judge Taranto, joined by Circuit Judges Lourie and O’Malley) .................................. 89–92

Bayer CropScience AG v. Dow AgroSciences LLC, 851 F.3d 1302 (Fed. Cir. 2017) (opinion by Circuit Judge Stoll, joined by Circuit Judges Newman and Chen) ................................ 281–282

Bayer Pharma AG v. Watson Labs., Inc., 874 F.3d 1316 (Fed. Cir. 2017) (opinion by Circuit Judge Moore, joined by Circuit Judges Lourie and O’Malley) .................................. 61–63

Bd. of Trs. of the Leland Stanford Jr. Univ. v. Chinese Univ. of Hong Kong, 860 F.3d 1367 (Fed. Cir. 2017) (opinion by Circuit Judge O’Malley, joined by Circuit Judges Reyna and Chen) ..................................... 109–112

Bosch Auto. Serv. Sols., LLC v. Matal, 878 F.3d 1027 (Fed. Cir. 2017) (opinion by Circuit Judge Chen, joined by Circuit Judges Newman and Hughes)............................. 353–355

C

Cascades Projection LLC v. Epson Am., Inc., 864 F.3d 1309 (Fed. Cir. 2017) (per curiam) (for an en banc court consisting of Chief Judge Prost, and Circuit Judges Newman, Lourie, Dyk, Moore, O’Malley, Reyna, Wallach, Taranto, Chen, Hughes and Stoll, Circuit Judge Newman concurring in denial,

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Circuit Judge Dyk concurring in denial, joined byChief Judge Prost and Circuit Judge Hughes, Circuit Judge O’Malley dissenting from denial, Circuit Judge Reyna dissenting from denial) ..................389–391

Checkpoint Sys. v. All-Tag Sec. S.A., 858 F.3d 1371 (Fed. Cir. 2017) (opinion by Circuit Judge Newman, joined by Circuit Judges Lourie and Moore) ..................................187–188

Cisco Sys., Inc. v. Cirrex Sys., LLC, 856 F.3d 997 (Fed. Cir. 2017) (opinion by Circuit Judge Chen, joined by Chief Judge Prost and Circuit Judge Wallach)....................92–93

Cleveland Clinic Found., Cleveland Heartlab, Inc. v. True Health Diagnostics LLC, 859 F.3d 1352 (Fed. Cir. 2017) (opinion by Circuit Judge Reyna, joined by Circuit Judges Lourie and Wallach) ........................ 1–4, 137–141

Comcast IP Holdings I LLC v. Sprint Commc’ns Co., L.P., 850 F.3d 1302 (Fed. Cir. 2017) (opinion by Circuit Judge Chen, joined by Circuit Judges O’Malley and Reyna) ...............................282–283

Core Wireless Licensing S.A.R.L. v. Apple Inc., 853 F.3d 1360 (Fed. Cir. 2017) (opinion by Circuit Judge Bryson, joined by Circuit Judges O’Malley and Wallach) ............................141–142

Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044 (Fed. Cir. 2017) (opinion by Circuit Judge Dyk, joined by Circuit Judge Reyna, dissenting-in-part opinion by Circuit Judge Mayer) ............................................... 4–5, 355–357

CRFD Research, Inc. v. Matal, 876 F.3d 1330 (Fed. Cir. 2017) (opinion by Circuit Judge O’Malley, joined by Circuit Judges Newman and Mayer) ...............................225–227

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Cumberland Pharm. Inc. v. Mylan Institutional LLC, 846 F.3d 1213 (Fed. Cir. 2017) (opinion by Circuit Judge Taranto, joined by Circuit Judges Moore and Reyna) ................................... 379–382

E

Eli Lilly & Co. v. L.A. Biomedical Research Inst. at Harbor-UCLA Med. Ctr., 849 F.3d 1073 (Fed. Cir. 2017) (opinion by Circuit Judge Bryson, joined by Circuit Judges Newman and Moore) .................................. 38–39

Eli Lilly & Co. v. Teva Parenteral Meds., Inc., 845 F.3d 1357 (Fed. Cir. 2017) (opinion by Chief Judge Prost, joined by Circuit Judges Newman and Dyk)................................... 143–145

EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc., 859 F.3d 1341 (Fed. Cir. 2017) (opinion by Circuit Judge Moore, joined by Circuit Judges Clevenger and Chen) .................. 39–42, 227–229

Evans v. Bldg. Materials Corp. of Am., 858 F.3d 1377 (Fed. Cir. 2017) (opinion by Circuit Judge Taranto, joined by Circuit Judges Reyna and Linn) ...................................... 289–291

F

Fairchild (Taiwan) Corp. v. Power Integrations, Inc., 854 F.3d 1364 (Fed. Cir. 2017) (opinion by Circuit Judge Reyna, joined by Circuit Judges Lourie and Moore) .................................. 229–232

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First Data Corp. v. Inselberg, 870 F.3d 1367 (Fed. Cir. 2017) (opinion by Circuit Judge O’Malley, joined by Circuit Judges Newman and Stoll) ..................................291–293

G

Genband US LLC v. Metaswitch Networks Corp., 861 F.3d 1378 (Fed. Cir. 2017) (opinion by Circuit Judge Taranto, joined by Circuit Judges Lourie and Chen) ....................................189–193

Georgetown Rail Equip. Co. v. Holland L.P., 867 F.3d 1229 (Fed. Cir. 2017) (opinion by Circuit Judge Wallach, joined by Circuit Judges Reyna and Schall) ....................................118–120

H

Halo Elecs., Inc. v. Pulse Elecs., Inc., 857 F.3d 1347 (Fed. Cir. 2017) (opinion by Circuit Judge Lourie, joined by Circuit Judges Moore and Hughes).................................358–359

Helsinn Healthcare S.A. v. Teva Pharm. USA, Inc., 855 F.3d 1356 (Fed. Cir. 2017) (opinion by Circuit Judge Dyk, joined by Circuit Judges Mayer and O’Malley)...................................42–48

Homeland Housewares, LLC v. Whirlpool Corp., 865 F.3d 1372 (Fed. Cir. 2017) (opinion by Circuit Judge Dyk, joined by Chief Judge Prost, dissenting opinion by Circuit Judge Newman) ...................................................232–234

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Honeywell Int’l Inc. v. Mexichem Amanco Holdings S.A. de C.V.,865 F.3d 1348 (Fed. Cir. 2017) (opinion by Circuit Judge Lourie, joined by Circuit Judge Reyna, dissenting-in-part Circuit Judge Wallach.......................................................... 66–70

HTC Corp. v. Cellular Commc’ns Equip., LLC, 877 F.3d 1361 (Fed. Cir. 2017) (opinion by Circuit Judge Reyna, joined by Circuit Judges Dyk and Taranto) .................................... 234–236

I

Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034 (Fed. Cir. 2017) (opinion by Circuit Judge Wallach, joined by Circuit Judge Reyna, concurring-in-part, dissenting-in-part opinion by Circuit Judge O’Malley) .................................................. 236–238

Idemitsu Kosan Co. v. SFC Co., 870 F.3d 1376 (Fed. Cir. 2017) (opinion by Circuit Judge O’Malley, joined by Chief Judge Prost and Circuit Judge Chen).................... 239–240

In re Affinity Labs of Tex., LLC, 856 F.3d 883 (Fed. Cir. 2017) (opinion by Circuit Judge Chen, joined by Circuit Judges Taranto and Stoll) .................................... 213, 216

In re Affinity Labs of Tex., LLC, 856 F.3d 902 (Fed. Cir. 2017) (opinion by Circuit Judge Chen, joined by Circuit Judges Taranto and Stoll) .................................... 216–216

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In re AT&T Intellectual Prop. II, L.P., 856 F.3d 991 (Fed. Cir. 2017) (opinion by Circuit Judge Reyna, joined by Circuit Judges Dyk and Mayer) .......................................350–352

In re Chudik, 851 F.3d 1365 (Fed. Cir. 2017) (opinion by Circuit Judge Reyna, joined by Circuit Judges Dyk and Stoll) ..............................31–38

In re Ethicon, Inc., 844 F.3d 1344 (Fed. Cir. 2017) (opinion by Circuit Judge Lourie, joined by Circuit Judge Dyk, dissenting opinion by Circuit Judge Newman) .......................................................63–66

In re Micron Tech., Inc., 875 F.3d 1091 (Fed. Cir. 2017) (opinion by Circuit Judge Taranto, joined by Circuit Judges Chen and Hughes) (on Petition for Writ of Mandamus to the United States District Court for the District of Massachusetts in No. 1:16-cv-11249-WGY, Judge William G. Young) .................................................301–306

In re Smith Int’l, Inc., 871 F.3d 1375 (Fed. Cir. 2017) (opinion by Circuit Judge Lourie, joined by Circuit Judges Reyna and Hughes) .................................130–132

In re Stepan Co., 868 F.3d 1342 (Fed. Cir. 2017) (opinion by Circuit Judge Moore, joined by Circuit Judge O’Malley, dissenting opinion by Circuit Judge Lourie).......................................................261–264

In re Van Os, 844 F.3d 1359 (Fed. Cir. 2017) (opinion by Circuit Judge Moore, joined by Circuit Judge Wallach, concurring-in-part, dissenting-in-part opinion by Circuit Judge Newman) .......82–83

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Table of 2017 Cases

Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332 (Fed. Cir. 2017) (opinion by Chief Judge Prost, joined by Circuit Judges Wallach and Chen) ..........................................6–7

Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315 (Fed. Cir. 2017) (opinion by Chief Judge Prost, joined by Circuit Judges Wallach and Chen) ..........................................7–9

Intellectual Ventures I LLC v. Motorola Mobility LLC, 870 F.3d 1320 (Fed. Cir. 2017) (opinion by Circuit Judge Dyk, joined by Circuit Judge Taranto, concurring-in-part, dissenting-in-part opinion by Circuit Judge Newman)................................................... 145–148

Intercontinental Great Brands LLC v. Kellogg N. Am. Co., 869 F.3d 1336 (Fed. Cir. 2017) (opinion by Circuit Judge Taranto, joined by Chief Judge Prost, dissenting-in-part Circuit Judge Reyna) ........................................... 70–74, 171–173

Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372 (Fed. Cir. 2017) (opinion by Circuit Judge Chen, joined by Circuit Judges Wallach and Stoll) ................................... 293–294

IPCom GmbH & Co. v. HTC Corp., 861 F.3d 1362 (Fed. Cir. 2017) (opinion by Circuit Judge Chen, joined by Chief Judge Prost and Circuit Judge Clevenger) ............ 240–241

J

Jang v. Bos. Sci. Corp., 872 F.3d 1275 (Fed. Cir. 2017) (opinion by Circuit Judge Chen, joined by Chief Judge Prost and Circuit Judge O’Malley).............. 148–153

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L

L.A. Biomedical Research Inst. at Harbor-UCLA Med. Ctr. v. Eli Lilly & Co., 849 F.3d 1049 (Fed. Cir. 2017) (opinion by Circuit Judge Bryson, joined by Circuit Judge Moore, concurring-in-part, dissenting-in-part opinion by Circuit Judge Newman) ...................................................121–123

Lifetime Indus., Inc. v. Trim-Lok, Inc., 869 F.3d 1372 (Fed. Cir. 2017) (opinion by Circuit Judge Lourie, joined by Circuit Judges Moore and O’Malley) ..............................294–299

M

MasterMine Software, Inc. v. Microsoft Corp., 874 F.3d 1307 (Fed. Cir. 2017) (opinion by Circuit Judge Stoll, joined by Circuit Judges Newman and O’Malley)...........................123–125

Meds. Co. v. Mylan, Inc., 853 F.3d 1296 (Fed. Cir. 2017) (opinion by Circuit Judge Dyk, joined by Circuit Judges Wallach and Hughes) ..............................359–361

Meiresonne v. Google, Inc., 849 F.3d 1379 (Fed. Cir. 2017) (opinion by Circuit Judge Moore, joined by Chief Judge Prost and Circuit Judge Lourie)......................75–76

Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275 (Fed. Cir. 2017) (opinion by Circuit Judge Moore, joined by Circuit Judges Lourie and Chen) ............................. 9–10, 93–95,.......................................................................... 193–197, 299–301

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Table of 2017 Cases

Merck Sharp & Dohme Corp. v. Hospira, Inc., 874 F.3d 724 (Fed. Cir. 2017) (opinion by Circuit Judge Lourie, joined by Circuit Judge Hughes, dissenting opinion by Circuit Judge Newman)....................................................... 77–78

Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358 (Fed. Cir. 2017) (opinion by Circuit Judge Moore, joined by Circuit Judges Hughes and Stoll) .................................... 153–154

Microsoft Corp. v. Biscotti, Inc., 878 F.3d 1052 (Fed. Cir. 2017) (opinion by Circuit Judge O’Malley, joined by Circuit Judge Reyna, dissenting opinion by Circuit Judge Newman)................................................... 241–242

Millennium Pharm., Inc. v. Sandoz Inc., 862 F.3d 1356 (Fed. Cir. 2017) (opinion by Circuit Judge Newman, joined by Circuit Judges Mayer and O’Malley)................................... 79–81

MPHJ Tech. Invs., LLC v. Ricoh Am. Corp., 847 F.3d 1363 (Fed. Cir. 2017) (opinion by Circuit Judge Newman, joined by Circuit Judge Lourie, concurring-in-part, dissenting-in-part opinion by Circuit Judge O’Malley) .................................................. 125–126

Mylan Institutional LLC v. Aurobindo Pharma Ltd., 857 F.3d 858 (Fed. Cir. 2017) (opinion by Circuit Judge Lourie, joined by Circuit Judges Moore and Reyna) ................................... 155–161

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N

NantKwest, Inc. v. Matal, 860 F.3d 1352 (Fed. Cir. 2017) (per curiam)(opinion by Chief Judge Prost, joined by Circuit Judge Dyk, dissenting opinion by Circuit Judge Stoll) ..........................................................307–310

New World Int’l, Inc. v. Ford Glob. Techs., LLC, 859 F.3d 1032 (Fed. Cir. 2017) (opinion by Circuit Judge Bryson, joined by Chief Judge Prost and Circuit Judge Wallach)................310–314

NexLearn, LLC v. Allen Interactions, Inc., 859 F.3d 1371 (Fed. Cir. 2017) (opinion by Circuit Judge Moore, joined by Circuit Judges Schall and Hughes)..................................314–316

NFC Tech., LLC v. Matal, 871 F.3d 1367 (Fed. Cir. 2017) (opinion by Circuit Judge Lourie, joined by Circuit Judges Newman and Hughes) .....................................377

Nichia Corp. v. Everlight Ams., Inc., 855 F.3d 1328 (Fed. Cir. 2017) (opinion by Circuit Judge Stoll, joined by Circuit Judges Reyna and Hughes) .................................316–317

Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 851 F.3d 1270 (Fed. Cir. 2017) (opinion by Circuit Judge Moore, joined by Circuit Judges Lourie and Taranto) ....................................48–49

Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013 (Fed. Cir. 2017) (per curiam) (panel consisting of Circuit Judges Dyk, Reyna, and Wallach, concurring opinion by Circuit Judge Dyk, joined by Circuit Judge Wallach) ....................................243–245

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Table of 2017 Cases

NobelBiz, Inc. v. Glob. Connect, L.L.C., 876 F.3d 1326 (Fed. Cir. 2017) (per curiam) (opinion dissenting from denial of petition for rehearing en banc by Circuit Judge O’Malley, joined by Circuit Judges Newman and Reyna) ............................... 318–319

NOVA Chems. Corp. (Can.) v. Dow Chem. Co., 856 F.3d 1012 (Fed. Cir. 2017) (opinion by Chief Judge Prost, joined by Circuit Judges Dyk and Hughes)..................................... 319–321

Novartis AG v. Noven Pharm. Inc., 853 F.3d 1289 (Fed. Cir. 2017) (opinion by Circuit Judge Wallach, joined by Chief Judge Prost and Circuit Judge Stoll) ..................... 245–246

Novartis AG v. Torrent Pharm. Ltd., 853 F.3d 1316 (Fed. Cir. 2017) (opinion by Circuit Judge Chen, joined by Circuit Judges Taranto and Stoll) .................................... 246–248

O

One-E-Way, Inc. v. U.S. Int’l Trade Comm’n, 859 F.3d 1059 (Fed. Cir. 2017) (opinion by Circuit Judge Stoll, joined by Circuit Judge Wallach, dissenting opinion by Chief Judge Prost) ............................................................... 96–99

Organik Kimya AS v. Rohm & Haas Co., 873 F.3d 887 (Fed. Cir. 2017) (opinion by Circuit Judge Newman, joined by Chief Judge Prost and Circuit Judge Taranto)................ 249–250

Outdry Techs. Corp. v. Geox S.P.A., 859 F.3d 1364 (Fed. Cir. 2017) (opinion by Circuit Judge Moore, joined by Circuit Judges Dyk and Reyna) ....................................... 250–252

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Owens Corning v. Fast Felt Corp., 873 F.3d 896 (Fed. Cir. 2017) (opinion by Circuit Judge Taranto, joined by Circuit Judges Newman and Dyk)...................................252–254

P

Pers. Audio, LLC v. Elec. Frontier Found., 867 F.3d 1246 (Fed. Cir. 2017) (opinion by Circuit Judge Newman, joined by Circuit Judges Clevenger and O’Malley).........................361–362

PersonalWeb Techs., LLC v. Apple, Inc., 848 F.3d 987 (Fed. Cir. 2017) (opinion by Circuit Judge Taranto, joined by Circuit Judges Chen and Stoll) ........................................254–255

Phigenix, Inc. v. ImmunoGen, Inc., 845 F.3d 1168 (Fed. Cir. 2017) (opinion by Circuit Judge Wallach, joined by Circuit Judges Dyk and Hughes).....................................362–364

Phil-Insul Corp. v. Airlite Plastics Co., 854 F.3d 1044 (Fed. Cir. 2017) (opinion by Circuit Judge O’Malley, joined by Circuit Judges Bryson and Wallach)................................322–325

Presidio Components, Inc. v. Am. Tech. Ceramics Corp., 875 F.3d 1369 (Fed. Cir. 2017) (opinion by Circuit Judge Dyk, joined by Circuit Judges Moore and Taranto) .................. 99–101, 199–204

Preston v. Nagel, 857 F.3d 1382 (Fed. Cir. 2017) (opinion by Circuit Judge Hughes, joined by Circuit Judges Dyk and Taranto).....................................364–366

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Table of 2017 Cases

Prism Techs. LLC v. Sprint Spectrum L.P., 849 F.3d 1360 (Fed. Cir. 2017) (opinion by Circuit Judge Taranto, joined by Circuit Judges Linn and Chen) ....................................... 326–329

Promega Corp. v. Life Techs. Corp. (Promega III), 875 F.3d 651 (Fed. Cir. 2017) (opinion by Circuit Judge Chen, joined by Chief Judge Prost and Circuit Judge Mayer) .................. 205–209

R

RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322 (Fed. Cir. 2017) (opinion by Circuit Judge Reyna, joined by Circuit Judges Lourie and Stoll).......................................... 10–12

Regeneron Pharm., Inc. v. Merus N.V., 864 F.3d 1343 (Fed. Cir. 2017) (opinion by Chief Judge Prost, joined by Circuit Judge Wallach, dissenting opinion by Circuit Judge Newman)................................................... 174–180

Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., 853 F.3d 1370 (Fed. Cir. 2017) (opinion by Circuit Judge Stoll, joined by Circuit Judges Taranto and Chen) .................................. 209–211

Return Mail, Inc. v. U.S. Postal Serv., 868 F.3d 1350 (Fed. Cir. 2017) (opinion by Chief Judge Prost, joined by Circuit Judge Wallach, dissenting opinion by Circuit Judge Newman)....................................... 12–14, 366–370

Rivera v. U.S. Int’l Trade Comm’n, 857 F.3d 1315 (Fed. Cir. 2017) (opinion by Circuit Judge Linn, joined by Circuit Judges Reyna and Chen) ..................................... 101–105

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Romag Fasteners, Inc. v. Fossil, Inc., 866 F.3d 1330 (Fed. Cir. 2017) (opinion by Circuit Judge Dyk, joined by Circuit Judge Hughes, concurring-in-part, dissenting-in-part opinion by Circuit Judge Newman) ...................................................329–331

Rothschild Connected Devices Innovations, LLC v. Guardian Protective Servs., Inc., 858 F.3d 1383 (Fed. Cir. 2017) (opinion by Circuit Judge Wallach, joined by Chief Judge Prost, concurring opinion by Circuit Judge Mayer) .......................................................331–333

Rovalma, S.A. v. Böhler-Edelstahl GmbH & Co. KG, 856 F.3d 1019 (Fed. Cir. 2017) (opinion by Circuit Judge Taranto, joined by Circuit Judges Wallach and Stoll)....................................256–259

S

Sanofi v. Watson Labs., Inc., 875 F.3d 636 (Fed. Cir. 2017) (opinion by Circuit Judge Taranto, joined by Chief Judge Prost and Circuit Judge Wallach) ....................................................161–163

Secure Axcess, LLC v. PNC Bank Nat’l Ass’n, 848 F.3d 1370 (Fed. Cir. 2017) (opinion by Circuit Judge Plager, joined by Circuit Judge Taranto, dissenting opinion by Circuit Judge Lourie).......................................................391–395

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Table of 2017 Cases

Secure Axcess, LLC v. PNC Bank Nat’l Ass’n, 848 F.3d 1370 (Fed. Cir. 2017), cert. granted and judgment vacated by PNC Bank Nat’l Ass’n v. Secure Axcess, LLC, 138 S. Ct. 1982 (2018) (opinion by Circuit Judge Plager, joined by Circuit Judge Taranto, dissenting opinion by Circuit Judge Lourie) .............................................................. 391

Secure Axcess, LLC v. PNC Bank Nat’l Ass’n, 859 F.3d 998, 1012 (Fed. Cir. 2017) (per curiam) (Plager, J., concurring in denial of petition for panel rehearing)....................................................................... 395

Secured Mail Sols. LLC v. Universal Wilde, Inc., 873 F.3d 905 (Fed. Cir. 2017) (opinion by Circuit Judge Reyna, joined by Chief Judge Prost and Circuit Judge Clevenger) ................ 15–17

Shire Dev., LLC v. Watson Pharm., Inc., 848 F.3d 981 (Fed. Cir. 2017) (opinion by Circuit Judge Hughes, joined by Chief Judge Prost and Circuit Judge Taranto)................ 126–128

Skky, Inc. v. MindGeek, S.A.R.L., 859 F.3d 1014 (Fed. Cir. 2017) (opinion by Circuit Judge Lourie, joined by Circuit Judges Reyna and Wallach)................................. 128–130

Smart Sys. Innovations, LLC v. Chi. Transit Auth., 873 F.3d 1364 (Fed. Cir. 2017) (opinion by Circuit Judge Wallach, joined by Circuit Judge Reyna, concurring-in-part, dissenting-in-part opinion by Circuit Judge Linn).............. 17–19

Soft Gel Techs., Inc. v. Jarrow Formulas, Inc., 864 F.3d 1334 (Fed. Cir. 2017) (opinion by Circuit Judge Bryson, joined by Chief Judge Prost and Circuit Judge Hughes) ................ 260–261

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Sonix Tech. Co. v. Publ’ns Int’l, Ltd., 844 F.3d 1370 (Fed. Cir. 2017) (opinion by Circuit Judge Lourie, joined by Circuit Judges O’Malley and Taranto) ............................105–108

Southwire Co. v. Cerro Wire LLC, 870 F.3d 1306 (Fed. Cir. 2017) (opinion by Circuit Judge Lourie, joined by Circuit Judges Moore and Hughes).....................................49–52

Storer v. Clark, 860 F.3d 1340 (Fed. Cir. 2017) (opinion by Circuit Judge Newman, joined by Chief Judge Prost and Circuit Judge Dyk) ......................113–115

T

Tech. Props. Ltd LLC v. Huawei Techs. Co., 849 F.3d 1349 (Fed. Cir. 2017) (opinion by Circuit Judge Moore, joined by Circuit Judges Wallach and Chen) ..................................132–134

Thales Visionix, Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017) (opinion by Circuit Judge Moore, joined by Circuit Judges Wallach and Stoll)........................................19–21

Tinnus Enters., LLC v. Telebrands Corp., 846 F.3d 1190 (Fed. Cir. 2017) (opinion by Circuit Judge Stoll, joined by Circuit Judges Moore and Wallach) ................................334–336

Travel Sentry, Inc. v. Tropp, 877 F.3d 1370 (Fed. Cir. 2017) (opinion by Circuit Judge O’Malley, joined by Circuit Judges Lourie and Taranto) ................................163–168

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Table of 2017 Cases

TVIIM, LLC v. McAfee, Inc., 851 F.3d 1356 (Fed. Cir. 2017) (opinion by Circuit Judge Reyna, joined by Chief Judge Prost and Circuit Judge Clevenger) ............ 336–337

Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329 (Fed. Cir. 2017) (opinion by Circuit Judge Reyna, joined by Circuit Judges Lourie and Hughes) .................................... 22–25

U

Ultratec, Inc. v. CaptionCall, LLC, 872 F.3d 1267 (Fed. Cir. 2017) (opinion by Circuit Judge Moore, joined by Circuit Judges Newman and Linn).................................. 264–268

V

Vicor Corp. v. SynQor, Inc., 869 F.3d 1309 (Fed. Cir. 2017) (opinion by Circuit Judge Chen, joined by Circuit Judges Lourie and Taranto) ................................ 268–271

Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253 (Fed. Cir. 2017) (opinion by Circuit Judge Stoll, joined by Circuit Judge O’Malley, dissenting opinion by Circuit Judge Hughes)......................................................... 25–28

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W

Walker v. Health Int’l Corp., 845 F.3d 1148 (Fed. Cir. 2017) (opinion by Circuit Judge Reyna, joined by Circuit Judges Hughes and Stoll) ....................................370–372

Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272 (Fed. Cir. 2017) (opinion by Circuit Judge Schall, joined by Chief Judge Prost and Circuit Judge Chen)........................53–55

Waymo LLC v. Uber Techs., Inc., 870 F.3d 1342 (Fed. Cir. 2017) (opinion by Circuit Judge Newman, joined by Circuit Judges Wallach and Stoll)....................................339–342

Waymo LLC v. Uber Techs., Inc., 870 F.3d 1350 (Fed. Cir. 2017) (opinion by Circuit Judge Wallach, joined by Circuit Judges Newman and Stoll) ..................................372–376

X

Xilinx, Inc. v. Papst Licensing GmbH & Co. KG, 848 F.3d 1346 (Fed. Cir. 2017) (opinion by Circuit Judge Dyk, joined by Chief Judge Prost and Circuit Judge Newman) ..............342–344

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Preface

This book contains a synopsis of the Federal Circuit cases relating to patent law decided in 2017. 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 2017, 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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