The Federal Circuit Table of Authorities

By Dennis Crouch

For the following list I parsed through all precedential patent related opinions at the Federal Circuit for the past three years. The resulting list are the fifteen most frequently cited cases in Federal Circuit patent decisions:

  1. Phillips v. AWH, 415 F.3d 1303 (Fed. Cir. 2005) (en banc)
  2. Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc)
  3. KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398 (2007)
  4. Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966)
  5. Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986)
  6. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996)
  7. Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336 (Fed. Cir. 2010) (en banc)
  8. Lucent Technologies, Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009)
  9. Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc)
  10. ICU Medical, Inc. v. Alaris Medical Systems, Inc., 558 F.3d 1368 (Fed. Cir. 2009)
  11. Bilski v. Kappos, 130 S.Ct. 3218 (2010)
  12. In re Gartside, 203 F.3d 1305 (Fed. Cir. 2000)
  13. MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007)
  14. In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc)
  15. Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357 (Fed. Cir. 2008)

For cases decided within the past year, the only new entrant on the list is Microsoft Corp. v. i4i Ltd. Partnership, 131 S.Ct. 2238 (2011)

18 thoughts on “The Federal Circuit Table of Authorities

  1. Microsoft Corp. v. i4i Ltd. Patnership is a different case, in which the Supreme Court confirmed that invalidity must be shown by clear and convincing evidence even where art was not considered by the Examiner during prosecution.

    Where in Prometheus does the Supreme Court acknowledge the standard discussed in Research Corp. Technologies v. Microsoft Corp., 627 F. 3d 859, 868-869 (Fed. Cir. 2010) (“[T]his court also will not presume to define ‘abstract’ beyond the recognition that this disqualifying characteristic should exhibit itself so manifestly as to override the broad statutory categories of eligible subject matter and the statutory context that directs primary attention on the patentability criteria of the rest of the Patent Act. . . .
    [T]his court notes that inventions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act.”)?

  2. A paragraph or two summarizing the relevant holding(s) of each of these cases would make for a good follow-up article, Dennis.

  3. Good point about the searching. You have to believe that Google at some point will come out with a search that will work.

  4. If you look closely, you will see that there are 6 lines of text that are repeated, so in a sense, there is a form paragraph.

    I wonder if this screen icon is design-patented.

    6 views, so narrow protection…and clearly anticipated by substantially similar PTO footage (if substantial similarity is the test for anticipation as well as infringement, that is).

    In fact, this illustrates how difficult it is to even begin searching for “prior art” insofar as some design patents are concerned. Like I have said before, you must know people who “know” through long experience, otherwise you are left to simply “getting lucky”.

  5. I don’t know what all of those other guys are whinging about. Almost all of the office actions I receive are adequately written.

  6. Thanks Dennis -

    If ya have the info handy, could ya put a gold star or something by the ones that say a lot of stuff (and by stuff I include methods) is patentable?

  7. Dennis do you have any research that shows what the Bilski case is most often cited in support of?

    Since Bilksi struck down the MoT as the sole test, as well as upholding business methods as patent eligible subject matter, I imagine it would be most used to discredit and debunk bogus and illegal 101 rejections for failing the MoT test.

  8. Dennis Crouch said: “For cases decided within the past year, the only new entrant on the list is Microsoft Corp. v. i4i Ltd. Partnership, 131 S.Ct. 2238 (2011)”

    Dennis, is that case the same as RESEARCH CORP v. MICROSOFT CORP decided 2010 by the CAFC?

    If not, I am surprised patent attorneys are not taking advantage of this important case that emphasized the “manifestly evident” standard that was acknowledged by the Supreme Court in Prometheus.

    In light of the foregoing I would go as far as to say it’s one of the most important 101 cases from the CAFC in the last 15 years!

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