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Spring 2024

The Precedent: Vol 002

Welcome to this issue of The Precedent, which covers those opinions from Q3 and Q4 of 2023 that the Federal Circuit designated as precedential and worthy of publication in the Federal Reporter. 

In the second half of 2023, the Federal Circuit issued 35 precedential opinions regarding intellectual property issues. Sixty percent (21 of 35) of those opinions were on appeals from the United States Patent and Trademark Office. The Federal Circuit affirmed the decision of the agency’s appeal boards in 53% (11 of 21) cases, which was higher than the court’s average of 46% (16 of 35) across all appeals.  

As was the case in Q2 of 2023, the most common issue addressed by the Federal Circuit’s precedential opinions was the obviousness standard for patent invalidity under 35 U.S.C. § 103. Those decisions accounted for 32% (11 of 35) of the Federal Circuit’s precedential opinions in the second half of 2023 and were almost exclusively decided on appeals from the Patent Trial and Appeal Board. 

Summaries of those 35 opinions can be found below, grouped by the issues that matter most to the protection and enforcement of your intellectual property. As always, if you have any questions regarding how these decisions may impact your intellectual property portfolio or litigation strategy, please contact your Vorys attorney. 

Patent Eligibility under § 101 

Section 101 of the Patent Act provides: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor.” The Federal Circuit has long held that § 101 contains an implicit exception, namely that laws of nature, natural phenomena, and abstract ideas—such as mathematical formulas and algorithms, mental processes, etc.—are not patentable. 

Invalidity and § 102 Anticipation Defenses 

In general, a patent is invalid as anticipated under 35 U.S.C. § 102 where a single prior art reference contains an enabling disclosure of each element of the claim(s) of the later-filed patent. As the Federal Circuit has previously stated, a prior art reference anticipates a patent’s claims when the four corners of the prior art reference describe every element of the claimed invention, expressly or inherently, such that a person of skill in the art could practice the invention without undue experimentation.  

Invalidity and § 103 Obviousness Defenses 

Section 103 of the Patent Act provides: “A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. 

Invalidity and § 112 Enablement Defenses 

Section 112(a) of the Patent Act provides that a patent’s specification must “contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable a person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.” As the Supreme Court has recently advised, enablement requires inventors to enable—i.e., disclose—the full scope of the claimed invention without unreasonable experimentation. 

Patent Litigation and Exceptional Cases 

Patent Litigation and Claim Construction 

PTAB Patent Litigation Generally

District Court Patent Litigation Generally 

Trademarks and TTAB Prosecution 


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