As we enter 2025, I wanted to pause for a moment to look at some of the Federal Circuit’s 2024 development of U.S. patent law. The court issued about 70 precedential patent cases along with a handful related to other IP doctrines (primarily trademark).
Design Patents: A New Framework for Obviousness
The court’s landmark en banc decision in LKQ v. GM marked a dramatic shift in design patent obviousness doctrine. Abandoning the rigid Rosen-Durling test requiring a “basically the same” primary reference, the court adopted Graham‘s more flexible framework. This change makes design patents potentially more vulnerable to invalidity challenges. Notably, Judge Lourie’s concurrence argued for retaining elements of the old test, suggesting continued debate over the proper approach. Up to now, however, I have not been able to discern any greater difficulty for applicants in obtaining design patents.
Subject Matter Eligibility: Mixed Signals
The eligibility landscape remained challenging to navigate, with seemingly similar technologies meeting different fates. In AI Visualize v. Nuance, claims to medical imaging visualization were found ineligible as directed to abstract data manipulation, while Contour v. GoPro upheld claims to dual-stream video recording based on their specific technological improvements. The decisions continue to suggest claims emphasizing concrete technical solutions to technical problems.
FRAND and International Enforcement
In Ericsson v. Lenovo, the court clarified standards for antisuit injunctions in FRAND cases, holding that U.S. courts can enjoin foreign patent enforcement if the U.S. case will determine whether the patentee breached its FRAND obligations. This provides implementers new tools to combat hold-up through foreign injunctions while negotiations are ongoing.
Inequitable Conduct and Patent Prosecution
The Freshub v. Amazon decision illustrated the continued high bar for proving inequitable conduct, even in revival contexts where circumstantial evidence of deception appears strong. The court’s adherence to Therasense’s demanding clear-and-convincing evidence standard effectively creates a shield for patent owners who can strategically invoke attorney-client privilege.
Expert Testimony Standards
The court decided several cases focusing on expert testimony. The most important of these is EcoFactor v. Google that is pending en banc. That case will likely reshape standards for damages expert testimony. In NexStep v. Comcast, the court effectively required expert testimony with particularized function-way-result analysis in order to prove doctrine of equivalents. Osseo v. Planmeca clarified that experts need not possess ordinary skill as of the priority date.
For Patent Prosecutors, there are a few potential pitfall cases.
- DDR v. Priceline is perhaps the most critical case for prosecutors to study. The court held that deletions between provisional and non-provisional applications can effectively limit claim scope, even without formal prosecution disclaimer. I expect this same result could apply when moving from a foreign filing to US.
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The Allergan decision is very important for understanding obviousness-type double patenting (ODP) in the portfolio situation. The quirky holding is that a first-filed, first-issued, later-expiring claim cannot be invalidated by a later-filed, later-issued, earlier-expiring reference claim having a common priority date. This overturns what many prosecutors had assumed about ODP analysis.
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The court decided several inherency cases. The most direct is Cytiva v. JSR, which established that for claims reciting an inherent property of an otherwise obvious composition/process, no separate reasonable expectation of success analysis is needed for that inherent property.
- RAI v. Philip Morris provides guidance on written description support for range limitations. The court found that a narrower claimed range can have adequate written description support even without explicit disclosure of the exact range, particularly if both endpoints are disclosed and there’s no indication the narrower range represents a different invention.
- Pacific Biosciences v. Personal Genomics held that “single” means exactly one, not “at least one” or “one or more.” This reminds prosecutors to be explicit when they want to cover plural embodiments rather than relying on potentially ambiguous interpretations of singular terms.
Looking Ahead, several cases remain pending Supreme Court review, including potentially transformative decisions on:
- Whether secret process sales trigger the AIA on-sale bar (Celanese v. ITC)
- The scope of Amazon APEX-based personal jurisdiction (SnapRays v. Lighting Defense)
- Whether the Federal Circuit’s practice of no-opinion judgments under Rule 36 complies with the law (Island IP and ParkerVision)
- And more. . .