By Robert J. Smyth, David P. Bernstein, Adam D. Brooke, Rudolph Fink IV, Nicholas J. Kim, Janice H. Lee, Rachael Lea Leventhal, David V. Sanker, Mark J. Sullivan, & Yalei Sun | 62 Am. U. L. Rev. 827 (2013)
In its thirtieth year, the Federal Circuit continued to face an increased caseload, including a fourth-consecutive increase in patent
infringement appeals from district courts. During 2012, the court issued several notable en banc opinions providing parties and
practitioners with additional clarity on a range of disputed issues. For example, in Zoltek Corp. v. United States (Zoltek IV), the court reversed
its prior panel decision in Zoltek III, which limited the scope of 28 U.S.C. § 1498(a) to direct infringement under 35 U.S.C. § 271(a). The court reexamined the premises on which Zoltek III was based and effectively reinstated the government’s potential liability for infringement of method claims directed to manufacturing carbon fiber sheets for the F-22 fighter, where part of the steps began in Japan. In Marine Polymer Technologies, Inc. v. Hemcon, Inc., the court held that an amendment to the claim during reexamination, not mere argument, was necessary to invoke intervening rights. In the much-anticipated decision in Akamai Technologies, Inc. v. Limelight Networks, Inc., the court overruled its decision in BMC Resources Inc. v. Paymentech, L.P., in which the court held that for a party to be liable for induced infringement, some other single entity must be liable for direct infringement. Deliberately avoiding resolving whether direct infringement can be found when no single entity performs all of the claimed steps of the patent, the Akamai court instead focused on the issue of induced infringement squarely before it to hold that liability for induced infringement did not require a single entity to directly infringe.
The court’s year was also notable for those cases in which en banc review was denied. After the panel in Highmark, Inc. v. Allcare Health Management Systems, Inc. held that the objective prong of the exceptional case analysis under § 285 was subject to de novo review (relying on Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, which held that that objective recklessness in a willfulness determination under § 284 is subject to de novo review), a narrow majority of the court denied a rehearing en banc. Additionally, in In re Baxter International, Inc., a split panel upheld the Patent and Trademark Office’s (PTO) determination of obviousness in the reexamination of a patent previously upheld as valid by the Federal Circuit. Although the court overwhelmingly denied the petition for rehearing en banc, a trio of judges clarified that their agreement with the majority was “premised on [the] understanding that the panel opinion does not . . . endorse administrative nullification of a final judicial decision.”
In 2012, the Supreme Court continued to shape key facets of patent law, namely with respect to the foundational issue of patent eligible
subject matter. For example, in Mayo Collaborative Services v. Prometheus Laboratories, Inc., the Supreme Court held that a patent directed to a medical diagnostic test was invalid under 35 U.S.C. § 101. Shortly thereafter, the Supreme Court issued an order simultaneously
granting certiorari in Ass’n for Molecular Pathology v. Myriad Genetics, Inc., vacating the judgment, and remanding the case back to the
Federal Circuit for further consideration in light of its decision in Mayo. At the Federal Circuit, a new panel reached the same conclusion as the original panel with Judge Bryson dissenting, and the Public Patent Foundation and the American Civil Liberties Union Foundation again filed a petition for certiorari. The Supreme Court granted certiorari for a second time, and oral arguments were held on April 15, 2013.