Precedential and Key Federal Circuit Opinions
1. DUKE UNIVERSITY, ALLERGAN SALES, LLC v. SANDOZ INC. [OPINION] (2024-2078, 11/18/2025) (Dyk, Stoll, Stark)
Stark, J. The Federal Circuit found a patent claim invalid because the patent lacked written description support for the claimed genus, holding that “a person of ordinary skill in the art, reviewing the specification of the [asserted] patent, would be unable to visualize or recognize the members of the [claimed genus] based upon the specification’s disclosures.”
Plaintiff-appellees Duke University and Allergan Sales, LLC together had asserted a patent related to the treatment of hair loss using compositions containing prostaglandin F analogs. Initially, a jury found that Sandoz Inc. had failed to show the at-issue claim invalid and awarded damages for infringement. Sandoz filed a motion for a new trial and for judgment as a matter of law, but the district court denied both motions. Sandoz appealed.
The Federal Circuit reversed, holding that the at-issue claim did not have written description support. The Federal Circuit agreed that the specification failed to show a skilled artisan that the inventors were in possession of the full genus covered by the at-issue claim. The experts agreed that the specification was written to describe billions of compounds, but the actual at-issue claim covered only at most a few thousand compounds. The Federal Circuit explained that, to satisfy the written description requirement, “the specification must provide sufficient indication as to how a skilled artisan would narrow the disclosed universe of billions of compounds described in the specification to the subset of just 1,620-4,230 compounds actually claimed.” The Federal Circuit further provided that the patent not only failed to describe a representative number of species of the claimed genus, but also that the patent failed to “‘provide sufficient blaze marks’ to direct a skilled artisan to the” compounds actually claimed. That is “[t]he specification fail[ed] to provide the relevant artisan with sufficient blaze marks or structural commonalities among the claimed compounds to lead her to conclude that the inventor actually possessed the claimed invention.” Accordingly, the Federal Circuit reversed the denial of Sandoz’s motion for judgment as a matter of law.
2. AKAMAI TECHNOLOGIES, INC. v. MEDIAPOINTE, INC., AMHC, INC. [OPINION] (2024-1571, 12/25/2025) (Taranto, Stoll, Cunningham)
Taranto, J. The Federal Circuit affirmed that certain claims were invalid for indefiniteness, because the patents did not provide objective boundaries for determining what is “optimal” or “best,” and that the remaining at-issue claims were not infringed.
Akamai Technologies, Inc. (“Akamai”) brought suit against MediaPointe, Inc. and AMHC, Inc. (collectively “MediaPointe”) for declaratory judgment of noninfringement of two patents directed to systems and methods for routing streamed media content over the Internet. MediaPointe counterclaimed for infringement, and Akamai then sought a declaratory judgment of invalidity. The district court ultimately found for Akamai.
The Federal Circuit affirmed the district court’s finding that certain claims were invalid for indefiniteness and that Akamai did not infringe the remaining claims. First, certain claims recited determining “best,” “best situated” or “optimal” nodes or routes. The Federal Circuit affirmed these claims were indefinite because “[l]anguage of degree … is indefinite unless, when read in light of the specification and the prosecution history, it provides objective boundaries for those of skill in the art” (internal quotation marks and original alterations omitted). The Federal Circuit further explained that the asserted patents do not provide “objective boundaries for determining what is ‘optimal’ or ‘best.’” The Federal Circuit noted that, for example, hops and latency could indicate different “best” routes in particular cases.
Second, the Federal Circuit affirmed that the remaining at-issue claims were not infringed. All of MediaPointe’s noninfringement arguments hinged on an argument that the district court implicitly and incorrectly construed a limitation of an asserted claim. Specifically, MediaPointe argued that “receiving an initial request for media content from a first client, the request being received by a management center” could cover both a “a user’s attempt to access media content” and “a computing message, like an HTTP request.” However, the Federal Circuit found that “attempts”—the act of entering a URL into a browser—are not received by any device, much less the “management center” as required. As such, “a relevant artisan could not reasonably have understood the claim language, considered in the context of the patent, to refer to anything other than a computer message.” This conclusion was dispositive as to infringement, and so the Federal Circuit affirmed that there was no triable issue of fact as to the remaining asserted claims.
* WilmerHale represented appellee Akamai Technologies, Inc. in this appeal.
3. ESCAPEX IP, LLC v. GOOGLE LLC [OPINION] (2024-1201, 11/25/2025) (Taranto, Stoll, Stark)
Stark, J. The Federal Circuit affirmed an award of attorney fees against EscapeX and attorney Bill Ramey, holding “[a]n attorney’s obligation to zealously advocate for a client is not a license to ignore other duties, such as conducting an adequate pre-suit investigation and refraining from filing frivolous motions.”
EscapeX sued Google, and Google responded by sending a letter to EscapeX explaining that accused features were not present in the accused product. Thereafter EscapeX amended its complaint, and Google responded with another letter saying the accused product now predated the asserted patent. Google requested that EscapeX dismiss the lawsuit. Then in a separate case, the asserted patent was found invalid under 35 U.S.C. § 101. Google again requested EscapeX to dismiss the suit. Eventually EscapeX filed a stipulation of dismissal.
Google moved for attorney fees under 35 U.S.C. § 285. The district court found for Google. But then EscapeX moved under Federal Rule of Civil Procedure 59(e) to amend the judgment based on supposedly new evidence—two declarations from EscapeX employees—that, according to EscapeX, showed pre-suit diligence. The district court denied the Rule 59(e) motion, explaining the declarations did not qualify as new evidence. Google then moved to recover the fees and costs incurred in opposing EscapeX’s Rule 59(e) motion under 28 U.S.C. § 1927, 35 U.S.C. § 285, and the court’s inherent powers. The Court granted Google’s motion and EscapeX appealed.
The Federal Circuit rejected EscapeX’s arguments that the district court had abused its discretion in finding the case exceptional and that the district court had erred in rejecting EscapeX’s Rule 59(e) motion. As the Federal Circuit explained, “the district court’s finding that EscapeX failed to conduct an adequate pre-suit investigation is well-supported in the record and, as part of the totality of circumstances found by the court, renders its determination to award attorneys’ fees under Section 285 an appropriate exercise of discretion.” EscapeX argued that “the district court improperly placed weight in its analysis on correspondence between the parties, and EscapeX’s general non-responsiveness to Google’s efforts to meet and confer.” But the Federal Circuit rejected this argument explaining, “Google’s exchanges with EscapeX . . . provide a datapoint the district court was permitted to consider as part of its evaluation of the totality of circumstances.” The Federal Circuit also rejected EscapeX’s arguments regarding the Rule 59(e) motion, explaining that the declaration witnesses were always within EscapeX’s control and therefore the declarations could have been prepared and presented earlier. Lastly, the Federal Circuit affirmed the fee award for the Rule 59(e) motion, rejecting EscapeX’s contention that its attorneys should not be sanctioned for failing to abandon their client’s case at the drop of a motion, and finding the Rule 59(e) motion frivolous because “it was baseless and made without reasonable and competent inquiry and contained legal or factual contentions so weak as to constitute objective evidence of improper purpose.”
4. In Re: GESTURE TECHNOLOGY PARTNERS, LLC [OPINION] (2025-1075, 12/1/2025) (Lourie, Bryson, Chen)
Lourie, J. In In re Gesture Technology Partners, LLC, the Federal Circuit clarified the application of 35 U.S.C. § 315(e)(1) estoppel to ex parte reexamination and further confirmed that the Board has jurisdiction over ex parte reexaminations regarding expired patents.
Gesture Technology Partners, LLC (“Gesture”) appealed from a U.S. Patent and Trademark Office (“Patent Office”) ex parte reexamination decision affirming the unpatentability of most claims of a challenged patent. Samsung Electronics Co. (“Samsung”) had requested the reexamination proceeding. Separately, the Federal Circuit had previously affirmed two inter partes reviews that collectively found all claims of the adjudicated patent except two were unpatentable. One of those IPRs was brought by Unified Patents, an organization of which Samsung is a member, subsequent to Samsung’s request for the ex parte reexamination. The Federal Circuit dismissed Gesture’s appeal as to the claims that had already been invalidated.
The Court then turned to the two remaining claims. Gesture first argued that the estoppel provision of § 315(e)(1) is applicable to ongoing ex parte reexamination procedures. Specifically, Gesture argued “that the Patent Office should have terminated the ongoing ex parte reexamination because Samsung, as a member of the petitioner in the Unified Patents IPR challenging the ’431 patent, cannot ‘maintain a proceeding’ at the Patent Office challenging the same patent after a final written decision in the IPR issued.” The Federal Circuit disagreed. While the petitioner requests a reexamination, the Patent Office, rather than the petitioner, maintains the ex parte reexamination proceeding. As such, the estoppel provision of § 315(e)(1) is inapplicable to ongoing ex parte reexamination proceedings.
Gesture also argued that the Board incorrectly found the two remaining claims anticipated. Gesture first argued that the prior art did not disclose every claim limitation, but the Federal Circuit found the Board’s conclusion supported by substantial evidence.
Finally, Gesture argued that the Board could not invalidate the at-issue patent because it was expired. The Federal Circuit disagreed, noting it had previously rejected similar arguments with respect to IPRs because a patentee maintains some rights, such as the right to bring an action for past damages after its patent expires, thus creating a live case or controversy which can be adjudicated by an IPR. The Federal Circuit found the same reasoning applies here, confirming that the “Board has jurisdiction over ex parte reexaminations concerning expired patents.”
