Each year, the Federal Circuit Yearbook provides a concise, comprehensive review of every patent decision published by the U.S. Court of Appeals for the Federal Circuit during the preceding year. With the Yearbook, readers may conveniently follow all recent patent law developments in the Federal Circuit, presented in a manner that reduces specialized patent and technical jargon to a minimum.
Cases summarized in the Yearbook include the following, among many others:
Utility and Inventions Patentable: Where claims “are substantially similar and linked to the same” law of nature, analyzing representative claims is proper. Section 101 issues may be resolved at the pleading stage before formal claim construction: “we have repeatedly affirmed § 101 rejections at the motion to dismiss stage, before claim construction or significant discovery has commenced.” See Cleveland Clinic Foundation, Cleveland Heartlab, Inc. v. True Health Diagnostics LLC, discussed in § 1:1.
Novelty and Statutory Bars: Federal Circuit concludes that inventor declaration without corroborating evidence alone is not always sufficient to overcome section 102(e) prior art. Despite prior case law (particularly in the U.S. Court of Customs and Patent Appeals), Federal Circuit seems to move law under section 102(e), directed to showing prior disclosure subject matter was not “by another,” closer to case law under section 102(g), directed to showing prior inventorship. See EmeraChem Holdings, LLC v. Volkswagen Group of America, Inc., discussed in § 2:4.
Nonobviousness: Circuit Judge Newman, in dissent, urged that it is time to “remedy” the Graham analysis—namely that the objective factors should be considered together with the first three Graham factors rather than first determining whether a prima facie case of obviousness had been shown. See Merck Sharp & Dohme Corp. v. Hospira, Inc., discussed in § 3:7.
Claim Construction: Using functional language in an apparatus claim does not necessarily mean that the claim improperly covers both an apparatus and method. Functional language described capabilities of a system rather than user actions. See MasterMine Software, Inc. v. Microsoft Corp., discussed in § 6:5.
The 2018 Federal Circuit Yearbook is available on PLI PLUS, our online research database. If you’d like to purchase a print copy, please email email@example.com or call 877.900.5291.