Before Reyna, Taranto, and Chen.  Appeal from the Patent Trial and Appeal Board.

Summary: The Board must consider arguments in an IPR petitioner’s reply, where the arguments expressly follow from the petition, do not rely on new references or rationales, and are necessary to address an issue that arose after institution.

Before Dyk, Reyna, and Stoll. Appeal from the Patent Trial and Appeal Board.

Summary:  A two-dimensional drawing of a three-dimensional object may meet the enablement and definiteness requirements for a design patent. 

Before Lourie, Dyk, and Taranto. Appeal from the Patent Trial and Appeal Board.

Summary:  The section 315(b) time-bar for IPRs applies even when the underlying complaint alleging infringement has been voluntarily dismissed without prejudice.

Research supporting the role of the microbiome in human, animal, and plant health continues to grow at a staggering rate.  While the wave of new health technologies emerging from this research rises, companies working in the microbiome space have had to confront a number of unique, interlinked technical, intellectual property, and regulatory issues that threaten to derail this extraordinarily promising area of development.  

Before Reyna, Bryson, and Hughes.  Appeal from the Northern District of California.

Summary: Breach of a duty of disclosure to a standards-setting organization may constitute implied waiver, thus rendering a patent unenforceable, if the proposed standard covers a technology claimed in the patent.  However, implied waiver only renders a patent unenforceable if the patentee’s misconduct results in an unfair benefit or the patentee otherwise engages in egregious misconduct. 

Before O’Malley, Bryson, and Chen.  Appeal from the Patent Trial and Appeal Board.

Summary: A writ of mandamus cannot be used as an alternative means of obtaining appellate review of institution decisions in IPRs, since Congress specifically prohibited such review in 35 U.S.C. § 314(d).

Before O’Malley, Taranto, and Stark; Partial En Banc Decision before Prost, Newman, Lourie, Dyk, Moore, O’Malley, Reyna, Wallach, Taranto, Chen, Hughes, and Stoll. Appeal from the Patent Trial and Appeal Board.

Summary: 35 U.S.C. § 315(b)’s time bar applies to bar institution when an IPR petitioner was served with a complaint for patent infringement more than one year before filing its petition, but the district court action in which the petitioner was so served was voluntarily dismissed without prejudice.

Before Reyna, Wallach, and Hughes. Appeal from the District Court for the Eastern District of Texas.

Summary: When the only unconventional feature of the patent claim is what has already been determined to be an abstract idea, the patent claim is ineligible under § 101. 

Before O’Malley, Mayer, and Reyna.  Appeal from the U.S. District Court for the District of Delaware.

Summary: A case may be exceptional if: (1) fact witnesses are compensated based on the outcome of the case, (2) relevant documents are destroyed, or (3) asserted patents were improperly revived during prosecution.  However, an award of attorneys’ fees must have some causal connection to the misconduct. 

Before Prost, Bryson, and O’Malley.  Appeal from the United States International Trade Commission (“ITC”).

Summary: Evidence intrinsic to a patent may be sufficient to overcome the presumption that § 112 ¶ 6 does not apply.