Articles Posted in Federal Circuit

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A federal district court in Texas has granted a patent owner a permanent injunction, more than $4.5 million in pre-judgment interest, and its attorneys’ fees following a willful infringement verdict. The district court based the fee award on the defendant’s litigation conduct, including its repeated reliance on a prior art reference the district court had stricken.

In SnapRays, LLC dba SnapPower v. American Tack & Hardware Company, Inc., Chief Judge Reed O’Connor of the Northern District of Texas resolved the parties’ post-trial motions after a May 2026 trial in which a unanimous jury found that each of the asserted claims of SnapPower’s patents was valid and willfully infringed by American Tack, and awarded SnapPower $9,423,533.52 in damages. The patents cover powered cover plates that draw power through prongs or clips without being hardwired.

On the permanent injunction, the district court found SnapPower “can readily demonstrate the four eBay factors.” The trial record showed that American Tack and SnapPower are the two major players in the powered cover plate market, that SnapPower entered the market first with a popular novel product, and that American Tack’s “own executive suite repeatedly stated in emails—emails it was reticent to produce in discovery—that it was eager to copy the novel product but was aware that SnapPower’s products were likely covered by patent protections.” The entry of American Tack’s accused products coincided with a precipitous fall in SnapPower’s sales, and because SnapPower initially sold direct-to-consumer, American Tack “had cornered the market with infringing products” by the time SnapPower approached large retailers. The district court found reputational harm in the market could not be adequately redressed with legal remedies because “[i]t is difficult to quantify lost market share, brand recognition, and customer goodwill.”

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A federal district court in Idaho has denied McCain Foods’ motions for judgment as a matter of law and for a new trial, leaving intact a jury verdict that McCain’s “Twisted Potato” French fry willfully infringed J.R. Simplot Company’s design patent and that McCain’s own design patent is invalid and not infringed.

In J.R. Simplot Company v. McCain Foods USA, Inc., Judge David C. Nye rejected every ground McCain raised, in a decision that touches on proof of infringement through photographs, the standard for willfulness, and the consequences of failing to move for judgment as a matter of law during trial.

Simplot sued McCain in 2016, alleging that the Twisted Potato infringed Simplot’s U.S. Patent No. D640,036, a design patent titled “Spiral Potato Piece.” McCain filed its own suit alleging that Simplot’s “Sidewinder” fry infringed McCain’s design patent, U.S. Patent No. D720,916, titled “Root Vegetable Product.”  The jury found that the Twisted Potato infringed Simplot’s ‘036 Patent and that the infringement was willful, though it awarded Simplot zero dollars in damages. On McCain’s ‘916 Patent, the jury found no infringement by the Sidewinder and found the patent invalid.

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The U.S. Patent and Trademark Office issued a significant policy shift on July 31, 2025, announcing it will strictly enforce a procedural rule that has been loosely applied for years, potentially making it harder for challengers to invalidate patents through inter partes review (IPR) proceedings.

Key Policy Change

The USPTO will now strictly enforce 37 C.F.R. § 42.104(b)(4), which requires IPR petitions to “specify where each element of the claim is found in the prior art patents or printed publications relied upon.” This marks a dramatic departure from the agency’s previous practice of waiving this requirement.  As Acting USPTO Director Coke Morgan Stewart explained in the memorandum, “enforcement of Rule 104(b)(4) means that applicant admitted prior art (AAPA), expert testimony, common sense, and other evidence that is not ‘prior art consisting of patents or printed publications’ (collectively, ‘general knowledge’) may not be used to supply a missing claim limitation.”

What This Means in Practice

Under the new enforcement approach, IPR petitioners can no longer rely on general knowledge, expert testimony, or common sense to fill gaps in their prior art references when challenging patent claims. Instead, they must point to specific patents or published documents that disclose each element of the challenged claims.  However, the USPTO clarified that general knowledge can still play a supporting role. “General knowledge may still be used in an IPR to support a motivation to combine or to demonstrate the knowledge of a person having ordinary skill in the art,” the memorandum states.

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The U.S. Court of Appeals for the Federal Circuit delivered a noteworthy ruling on Jan. 27, 2025, definitively establishing that the Patent Trial and Appeal Board (PTAB) retains jurisdiction to conduct inter partes review (IPR) proceedings even after patents have expired. The decision in Apple Inc. v. Gesture Technology Partners, LLC, 127 F.4th 364 (Fed. Cir. 2025) provides important clarity for future post-expiration challenges.

The Jurisdictional Challenge

Gesture Technology Partners, the patent owner, mounted an aggressive jurisdictional challenge arguing that the PTAB lacked authority to review its expired patent. The company’s U.S. Patent No. 8,878,949, covering camera-based gesture recognition technology, had expired in May 2020—more than a year before Apple filed its IPR petition in June 2021.

Gesture’s argument hinged on an interpretation of the Supreme Court’s 2018 decision in Oil States Energy Services v. Greene’s Energy Group. The company contended that because Oil States characterized patents as “public franchises,” and because expired patents no longer grant the right to exclude others, the “public franchise ceases to exist” upon expiration. With only limited rights remaining—primarily the ability to collect past damages—Gesture argued that jurisdiction shifted exclusively to Article III federal courts.

The Federal Circuit’s Response

Writing for a three-judge panel, Circuit Judge Timothy B. Dyk systematically dismantled Gesture’s jurisdictional argument, finding it “incompatible with the Court’s logic in Oil States.” The court emphasized that the Supreme Court’s reasoning in Oil States was specifically grounded in the concept that IPR proceedings represent “a second look at an earlier administrative grant of a patent.” This fundamental characterization, the Federal Circuit explained, focuses on the review of the original grant decision rather than the current scope of patent rights. “The review of an earlier grant of a patent thus inherently involves the adjudication of a public right, and it is irrelevant whether the patent has expired,” the court stated, “since the patent itself continues to confer a limited set of rights to the patentee.”

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A recent Federal Circuit decision in Lynk Labs v. Samsung has important implications for what types of prior art can be used to challenge patents in inter partes review (IPR) proceedings. The court held that a published patent application can serve as prior art in an IPR as of its filing date, not just its later publication date.

Understanding Pre-AIA 35 U.S.C. § 102(e)(1)

To grasp the significance of the court’s ruling, it’s helpful to take a closer look at pre-AIA 35 U.S.C. § 102(e)(1). This section states:

“A person shall be entitled to a patent unless— (e) the invention was described in—
(1) an application for patent, published under [35 U.S.C. §] 122(b), by another filed in the United States before the invention by the applicant for patent…”

In other words, pre-AIA § 102(e)(1) creates a special prior art rule for published U.S. patent applications. It says that if another inventor files a U.S. application before the invention date of the patent at issue, that application becomes prior art as of its filing date, as long as it eventually gets published.

Notably, this means the application can be prior art before the public ever sees it. Contrast this with the typical rule for “printed publications” under § 102(a) or (b), which only become prior art as of their public accessibility date.

So why did Congress create this unique prior art rule for published applications? The Federal Circuit explained that it wanted to “afford published patent applications a prior-art effect different from the effect given to printed publications in § 102(a) and (b).” Congress likely recognized that patent applications go through examination and are more reliable than other printed publications. Continue reading

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In a significant patent ruling issued January 6, 2025, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (PTAB) decisions in Laboratory Corporation of America Holdings v. Ravgen, Inc., Case Nos. IPR2021-00902 and -0154, upholding the validity of claims related to non-invasive fetal DNA testing methods. The case centered on whether there was sufficient motivation to combine prior art references in an obviousness challenge.

LabCorp had challenged Ravgen’s ‘277 patent through inter partes review, arguing that claims directed to analyzing cell-free fetal DNA (cffDNA) using cell lysis inhibitors would have been obvious by combining a 2001 Chiu article with either the Bianchi patent or Rao publication. The PTAB rejected these challenges, finding insufficient motivation to combine the references.

The Federal Circuit’s decision, authored by Judge Lourie, systematically dismantled LabCorp’s attempts to reframe factual determinations as legal errors. “Simply put, Labcorp’s ‘disagreement with the Board’s interpretations… does not amount to a demonstration that the Board somehow failed to use the proper analysis,'” the Court stated, citing Eli Lilly & Co. v. Teva Pharms. Int’l GmbH, 8 F.4th 1331, 1347 (Fed. Cir. 2021).

Central to the Board’s analysis was its finding that a skilled artisan would have been discouraged from combining the references because Bianchi’s paraformaldehyde would create unwanted gaps in cell membranes, potentially contaminating the sample with maternal DNA. The Board also noted concerns about formaldehyde’s potential to damage nucleic acids. Even a small amount of DNA leakage – as little as 1% – would have negatively affected the analysis of fetal cell-free DNA. Continue reading

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Blurring the Lines: When AI Creates Art Is It Copyrightable?

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Stan Gibson

In October of 2018, Christie’s sold the work Portrait of Edmond de Belamy for $432,500. None of this, including the price, would be notable if not for the claimed artist. The claimed artist was not a person but an algorithm, bearing its creator’s signature:

AI-Signature-300x46

Obvious, a Paris-based collective, created the work using what is known as Generative Adversarial Networks, or “GANs.” Creating works using GANs requires inputting thousands of images as well as developing and making adjustments to the algorithm.

The sale, which garnered attention and outrage alike, served as a flashpoint in the discussion of artificial intelligence and art. As Ian Bogost of The Atlantic wrote, “[t]he image was created by an algorithm the artists didn’t write, trained on an ‘Old Masters’ image set they also didn’t create.”

In the aftermath of this sale, Sotheby’s followed suit with the sale of Mario Klingemann’s Memories of Passerby I (2018) in March of 2019. The work, which sold online for roughly $42,000, uses multiple GANs trained on thousands of portraits from the 17th to 19th century to generate an infinite stream of real-time portraits for the viewer. Klingemann refers to the neural networks used to create an endless stream of new images as “the brushes that I’ve learned to use.” Memories of Passerby I may not have generated the same buzz as Portrait of Edmond de Belamy, but it raises many of the same questions.

Although the use of technology to create art is nothing new, GANs, and similar neural network software, increasingly blur the lines when it comes to creation, authorship and ownership. The use of technology such as GANs to create art results in works that are not authored by individuals in the traditional sense. The question then becomes, are these works copyrightable under U.S. Copyright laws, and if so, to whom does the copyright belong? Continue reading

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In this patent infringement action, the parties jointly moved the court to enter an order, pursuant to Federal Rule of Evidence 502(d), to allow the parties to claw back the production of not just attorney-client information, but also proprietary and confidential information.  To support the request, the parties explained that the complex nature of the action would require the parties to disclose a large volume of electronically stored information (“ESI”) that would contain proprietary source code, software and computer systems.

The parties claimed that entry of the proposed non-waiver order was needed due to the plaintiff’s filing of and intent to file additional similar lawsuits and “to promote efficiency in discovery to prevent exhaustive, expensive privilege review efforts, to make the parties’ nonwaiver agreement binding on third parties, and to otherwise provide the parties with the maximum protection available under the law.”

After quoting Fed.R.Evid. Rule 502(d), the court noted that it had discretion to enter the order and also noted that federal courts routinely enter such orders with respect to privileged information that allows privileged information to be clawed back by the producing party.  The court then found that the provision with respect to clawing back privileged documents was acceptable, but the extension to proprietary and confidential documents was not:  “The Court finds the foregoing provisions acceptable with one exception. Rule 502 applies to the “disclosure of a communication or information covered by the attorney-client privilege or work-product protection.” Id. In the second paragraph of the proposed order, the parties attempt to extend Rule 502’s protection to information and materials beyond that narrow scope – specifically, to proprietary and confidential documents or materials. (See Doc. 56-1, ¶ 2 (emphasis added)). To the extent the parties are seeking to the expand the protection afforded by Rule 502, that request will be denied and the proposed order modified.”

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Plaintiff Innovation Sciences, LLC (“Innovation”) initiated a patent infringement action against Defendant Amazon.com (“Amazon”).  The original complaint asserted three groups of patents, encompassing a total of ten patents.

After the district court found certain of the patents invalid because they were abstract and the Federal Circuit affirmed, Innovation filed an amended complaint to assert an additional patent and that patent along with two others that were not initially dismissed proceeded to claim construction.  After claim construction, the district court granted Amazon’s motion for summary judgment, holding that Amazon was not infringing one of the patents, that one patent was invalid and Innovation stipulated to noninfringement of the last patent but reserved its right to appeal the construction issue.

The Federal Circuit affirmed as to two of the patents, and affirmed in part, vacated in part, and remanded the stipulated judgment of noninfringement as to that patent.  After that, Innovation jointly stipulated to dismissal.

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After the district court dismissed plaintiff’s patent infringement claims, finding the patents directed to patent-ineligible subject matter, and awarded attorneys’ fees based on the exceptional case doctrine, the Federal Circuit affirmed both determinations. The defendant filed a supplemental motion for attorneys’ fees seeking to recover attorneys’ fees for the appellate process. The plaintiff opposed the motion.

https://patentlaw.jeffer.com/files/2019/05/banner-money-paper-brand-cash-illustration-815076-pxhere-cc0-05.01.2019-1024x405.jpgIn analyzing the motion, the district court explained that it had previously “determined that this case was frivolous and that plaintiff had litigated it in an unreasonable manner, rending the exceptional and entitling defendant to an award of attorneys’ fees. None of those underlying facts have changed, and plaintiff does not argue that they have.”

The court then determined that there was no need to make a second finding of exceptionality. “There is no need to make a second, separate determination under § 285 as to whether the case is exceptional. See, e.g., Dippin’ Dots, Inc. v. Mosey, 602 F. Supp. 2d 777 (N.D. Tex.2009) (rejecting plaintiffs’ argument that defendant had to “make a separate showing that the appeal itself is exceptional” and that fees “have to be separately justified in each phase of a case,” finding that defendant was entitled to fees without a second determination of exceptionality). That is, plaintiffs handling of the case since dismissal need not independently qualify as exceptional. Indeed, plaintiff does not argue here that a second, independent finding of exceptionality is required. As such, this Court’s earlier determination controls, and defendant is entitled to reasonable attorneys’ fees under 35 U.S.C. § 285.”

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