#federal-circuit

#federal-circuit

Conventional wisdom is that a good certiorari petition needs to show the legal error below and also show why the case is important and timely. The petition follows this dual framing strategy: (1) a doctrinal claim that the Federal Circuit has abandoned preemption as the touchstone of patent eligibility; and (2) a policy argument tied to what I think of as the "new great game" and what the Trump Administration calls "Winning the AI Race." The case also arrives at the Supreme Court as the USPTO has begun to move aggressively toward limiting its use of eligibility in patent prosecution.

Today, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a pair of precedential decisions involving appeals from U.S. federal agency determinations on the patent rights of North Carolina-based energy demand response developer Causam Enterprises. The Federal Circuit affirmed the invalidation of Causam's patent rights and mooted further infringement proceedings after finding that inconsistent positions on patent ownership taken by respondent ecobee in alternative forums did not present a constitutional due process issue.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Monday issued a decision in Rasmussen Instruments, LLC v. DePuy Synthes Products, Inc., vacating a United States District Court for the District of Massachusetts judgment and remanding with instructions to dismiss for lack of subject matter jurisdiction. The court held that Rasmussen Instruments lacked standing to bring the patent infringement lawsuit because it did not own the asserted patents at the time the suit was filed.

The decision, authored by Circuit Judge Stoll and joined by Circuit Judges Dyk and Prost, held that the United States District Court for the District of Delaware properly considered the requirements for expert testimony based on comparable license agreements to establish reasonable royalty damages. The CAFC also affirmed the district court's denial of Intuitive's request for judgment as a matter of law (JMOL) of non-infringement and agreed with the district court's finding that claim 6 of the '650 patent is not invalid for lack of written description.

Over the past couple of years, I have noticed increased willingness of the Federal Circuit to reject jury verdicts, especially in situations involving potentially inadequate expert testimony. This past summer, the Federal Circuit's en banc EcoFactor decision followed this pattern by overturning a $20 million jury verdict based upon flaws in the patentee's damages expert testimony.

The Federal Circuit reversed a Texas jury's $166 million infringement verdict in Finesse Wireless LLC v. AT&T Mobility LLC, 24-1039 (Fed. Cir. Sept. 24, 2025), holding that the patentee's contradictory and unclear expert testimony could not support the Jury's finding of patent infringement. The case is centered on Finesse's U.S. Patent Nos. 7,346,134 and 9,548,775, which relate to methods of reducing "intermodulation interference" in wireless communications.

In a spirited discussion at our annual Women's IP Forum, attendees were treated to an insightful fireside-style chat conversation with the Honorable Judge Pauline Newman, a trailblazer for women in law and a luminary in the field of intellectual property. Judge Newman spoke with Renee C. Quinn, Chief Operating Officer of IPWatchdog, Inc., about her extraordinary career and her life journey.

"Given Google here identified a significant number of potential witnesses residing in the transferee forum, the case for transfer is even stronger than it was in TikTok." - Federal Circuit Today, the U.S. Court of Appeals for the Federal Circuit issued a pair of orders dismissing petitions for mandamus relief filed by patent owner VirtaMove seeking vacatur of transfer orders issued by the Western District of Texas. Applying "common sense," the Federal Circuit rejected VirtaMove's attempts to use the U.S. Court of Appeals for the Fifth Circuit's 100-mile rule for assessing venue transfer in such a way that would prevent a significant number of witnesses from participating in trial proceedings close to home.

In a divided decision that highlights ongoing tensions around trademark law's Failure to Function doctrine, the Federal Circuit in In re Brunetti, No. 2023-1539 (Fed. Cir. Aug. 26, 2025), vacated a TTAB refusal to register the word FUCK as a trademark for various consumer goods and retail services. The court rejected most of applicant Erik Brunetti's constitutional challenges but concluded that the Board failed to articulate a coherent standard for determining when widely-used words can function as source identifiers.

The Federal Circuit's recent decision in Wilco Marsh Buggies and Draglines, Inc. v. Weeks Marine, Inc., 23-2320 (Fed. Cir. Aug. 19, 2025) (nonprecedential), illustrates how the Federal Circuit appears to be increasingly disregarding the jury's role in fact finding -- in this case disputes about whether a competitor's prior sales were anticipating based upon the on sale bar. Looking at it from an alternative perspective, the decision demonstrates how the Federal Circuit's regular disregard of conclusory expert testimony can vaporize what appear to be genuine factual disputes.

The Federal Circuit’s response so far has been as a collective institution-proceeding en banc from the outset and issuing unanimous per curiam orders-reflects institutional awareness of political vulnerabilities.