Patents and the Federal Circuit, Twelfth Edition, With 2016 Supplement

The most complete commentary available on the state of patent law. This monumental reference places federal patent law decisions, both high-profile and less-celebrated, into an analytical framework that demonstrates their relevance and impact. It details the ever-changing issues and developments in substantive patent law, infringement litigation, and procedure.




This monumental reference deals with both the high-profile cases and the “uncelebrated decisions” that tend to slip under the radar and fits them into an analytical framework that reveals their true significance. Patents and the Federal Circuit addresses ever-changing issues and developments in substantive patent law, infringement litigation, and procedure. The authors distill the opinions issued by the primary source of governing law on patents, providing convenient, one-source access to controlling case law.

The Twelfth Edition includes discussion of the following:

  • The Federal Circuit’s treatment post-Alice of patent eligibility under 35 U.S.C. §101. 
  • The Federal Circuit’s treatment post-Myriad of patent claims involving naturally occurring products.
  • Obviousness-type double patenting issues triggered by changes made to the term for U.S. patents, as discussed in Gilead Sciences v. Natco.
  • The Federal Circuit’s treatment of definiteness post-Nautilus.
  • Post-grant review proceedings under the America Invents Act, including discussion of decisions in early post-grant review appeals.
  • Recent decisions on the entire market value rule of damages, including Ericsson and VirnetX.
  • The effect of RAND obligations on a reasonable royalty analysis as addressed in Ericsson.
  • Inequitable conduct decisions in the wake of Therasense.
  • The latest developments on motions to transfer venue for convenience.
  • The effect of prosecution history estoppel on design patents.
  • Claim construction in view of the Federal Circuit’s decision in Teva v. Sandoz.
The 2016 Supplement adds review of the following key decisions:
  • The U.S. Supreme Court’s decision in Cuozzo Speed Technologies, LLC v. Lee, holding that the PTO’s decision to institute inter partes review is final and appealable and that the PTO properly construes claims in inter partesreview proceedings according to their broadest reasonable interpretation.

  • The Supreme Court’s decision in Halo Electronics, Inc. v. Pulse Electronics overruling the Federal Circuit’s application of a two-part test for determining when a court may increase damages under 35 U.S.C. §284.

  • The Federal Circuit’s ruling in Ariosa Diagnostics, Inc. v. Sequenom, Inc., holding that claims covering a multistep method for extracting and analyzing fetal DNA to determine inherited fetal characteristics, including identification of genetic defects, were unpatentable subject matter under 35 U.S.C. §101 because the claims were merely an application that began and ended with a naturally occurring phenomenon.

  • The Federal Circuit’s en banc ruling on remand from the Supreme Court in Akamai Technologies Inc. v. Limelight Networks, Inc. holding that the predicate act for direct infringement in a scenario involving multiple actors occurs where all method steps can be attributed to a single entity.  Under this standard, direct infringement by multiple actors is no longer limited to situations involving principal-agent relationships, contractual arrangements, or joint enterprises.

  • The Federal Circuit’s first ruling involving the Biologics Price Competition and Innovation Act of 2009 (BPCIA) in Amgen v. Sandoz, which clarifies the procedures and standards for notice and commercial marketing under the BPCIA.

  • The Federal Circuit’s ruling in Dow Chem. Co. v. Nova Chems. Corp. (Can.) where the court addressed the definiteness requirement in the aftermath of the Supreme Court’s decision in NautilusInstruments v. Biosig

  • The Federal Circuit’s ruling in Dome Patent L.P. v. Lee holding that the presumption of validity and the clear and convincing standard of proof required to overcome the presumption do not apply in PTO’s patentability determinations.

  • The Federal Circuit’s decision in Versata Dev. Grp., Inc. v. SAP Am., Inc., where the court explored what constitutes a covered business method patent under the America Invents Act (AIA).

  • The Federal Circuit’s ruling in Delano Farms Co. v. Cal. Table Grape Comm’n holding that an agreement of confidentiality, or circumstances creating a similar expectation of secrecy, may negate a public use where there is not commercial exploitation. 

  • The Federal Circuit’s first decisions applying the modified standard of review for claim construction set out in the Supreme Court’s 2014 Teva v. Sandoz decision, including the Federal Circuit’s decisions on remand from the Supreme Court in Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp. and Teva Pharms. USA, Inc. v. Sandoz, Inc.

  • The Federal Circuit’s ruling in Speedtrack, Inc. v. Office Depot, Inc. holding that a customer may assert the Kessler doctrine as a defense in an infringement suit where the customer’s supplier has been adjudicated not to infringe.  



Bloomberg BNA authors and editors are practicing professionals with insider perspectives and real-life experience. Learn more about this book’s authors and editors.
Robert L. Harmon (deceased) was a partner with the Chicago intellectual property law firm of Brinks Gilson & Lione (Brinks) for 33 years, where he specialized in patent litigation.

Cynthia A. Homan is a partner at Brinks where she specializes in patent litigation, with an emphasis on brief writing. She has been involved in many appeals, most in the Federal Circuit, and is past chair of the firm’s Appellate Practice Group.

Laura A. Lydigsen is a partner at Brinks where she focuses her practice on Hatch-Waxman litigation and appellate practice. She currently serves as chair of the firm’s Appellate Practice Group through which she enjoys working on Federal Circuit appeals across a broad range of technologies. 

Charles M. McMahon practiced law at Brinks from 1999–2015 and is now a partner with McDermott Will & Emery in Chicago. His practice includes all aspects of patent law, with a particular focus on litigation.


View full tables of contents and read the book’s preface or introduction.