Precedential and Key Federal Circuit Opinions
1. ASCENDIS PHARMA A/S v. BIOMARIN PHARMACEUTICAL INC. (2026-1026, 3/26/2026) (Lourie, Chen, Stoll)
Stoll, J. The Court affirmed the district court’s decision denying Ascendis’s motion for a mandatory stay under 28 U.S.C. § 1659(a)(2) in a declaratory judgment action filed by Ascendis. Specifically, the Court considered whether, Ascendis, a respondent in an ITC proceeding, could seek a mandatory stay of a refiled declaratory judgment action even though it had previously filed the same declaratory judgment action and missed the deadline for seeking a mandatory stay under 28 U.S.C. § 1659(a)(2). The Court held that Ascendis could not restart the 30-day deadline for seeking a mandatory stay by dismissing and refiling its declaratory judgment action. The Court explained that its decision was based on the “common-law principle that prohibits the use of voluntary dismissal as an indirect way to avoid the explicit requirements of other rules.”
2. FORTRESS IRON, LP v. DIGGER SPECIALITIES, INC. (2024-2313, 4/2/2026) (Lourie, Hughes, Kleeh, D.J.)
Lourie, J. The Court affirmed the district court’s grant of summary judgment of invalidity based on the omission of a coinventor under 35 U.S.C. § 101 and affirmed the district court’s denial of partial summary judgment to correct inventorship under 35 U.S.C. § 256(a). The Court held that a patent which incorrectly lists its inventor(s) and cannot be corrected according to law is invalid.
Patentee Fortress Iron had worked with a Chinese Company to design vertical cable railing panels, and the final design was conceived by Fortress Iron’s owner, its employee, and two employees of the Chinese company, Alfonso Lin and Hua-Ping Huang. Fortress Iron filed patent applications, naming only its owner and employee as inventors, and did not include Lin or Huang. After the patent applications issued, Fortress Iron sued Digger for infringement, and Digger learned during the course of the litigation that Lin and Huang contributed to the invention. Fortress Iron acknowledged that Lin and Huang were coinventors and successfully added Lin as a coinventor to the patents following the procedure of § 256(a). Fortress Iron was unable to locate Huang and thus was unable to add him as a coinventor. The district court granted Digger’s motion for summary judgment of invalidity due to incorrect inventorship and denied Fortress Iron’s motion to add Huang as an inventor pursuant to § 256(a).
The Court explained that § 256(b), which saves patents from invalidity for the error of omitting inventors, does not automatically allow a court to order correction of a patent, as a court may only do so “on notice and hearing of all parties concerned.” 35 U.S.C. § 256(b). The Court considered this issue as one of first impression and held that an agreed-upon omitted coinventor such as Huang is a “party concerned” such that he must be given notice and opportunity for a hearing prior to any correction of inventorship under § 256(b). Because Fortress Iron could not satisfy the notice and hearing prerequisite of § 256(b), and thus could not correct inventorship of the patents, the patents were invalid under § 101 for omitting Huang as an inventor. The Court explained that §§ 101 and 100(f), when read together with § 256(b), contemplate that when an invention has multiple inventors, they must all be listed on the patent.
