Fresh From the Bench: Latest Precedential Patent Cases
CASE OF THE WEEK
Actavis Labs. FL, Inc. v. United States, Appeal No. 2023-1320 (Fed. Cir. Mar. 21, 2025)
Our Case of the Week, in the words of its author, Circuit Judge Stark, “is not actually a patent case. It is, instead, a tax case.” In this appeal from the Court of Federal Claims, the Federal Circuit considered whether expenses incurred by a generic drug manufacturer in defending against Hatch-Waxman infringement litigation are deductible from taxable income as ordinary business expenses in the year incurred; or such patent litigation expenses are non-deductible capital expenditures that must be amortized over time. The Court sided with Actavis and held that Hatch-Waxman litigation defense costs are deductible as ordinary business expenses.
ALSO THIS WEEK
Maquet Cardiovascular LLC v. Abiomed Inc., Appeal No. 2023-2045 (Fed. Cir. Mar. 21, 2025)
In an appeal from a judgment that Abiomed et al. had not infringed certain claims of a patent directed to “Guidable intravascular blood pump and related methods,” the Federal Circuit rejected the lower court’s claim construction, and vacated and remanded the district court’s non-infringement judgment. In response to the district court’s construction of a claim to include a negative limitation based on statements made during prosecution, the Federal Circuit found the current claim language was not sufficiently similar to the claim language in the parent application; therefore, the parent’s prosecution history was irrelevant. The district court also construed a claim to include a limitation that contains the “exact same guide wire limitation” as its great-great-grandparent application. But the Federal Circuit found no unmistakable disavowal, because an “applicant’s silence in response to an examiner’s notice of allowance will generally not rise to a clear and unmistakable claim disavowal,” and an “argument that a skilled artisan would not be motivated to combine the prior art references does not speak” to the claim scope. The Court further rejected a third claim construction because the parent application’s prosecution history was not relevant and Maquet had made no clear claim disavowal.
The opinion can be found here.
AMP Plus, Inc. d/b/a ELCO Lighting v. DMF, Inc., Appeal No. 2023-1997 (Fed. Cir. Mar. 19, 2025)
In an appeal from the U.S. Patent Trial and Appeal Board’s inter partes review decision that ELCO Lighting had failed to show challenged claim 22 of U.S. Patent No. 9,964,266 to be unpatentable, the Federal Circuit affirmed. Patent owner DMF argued the Court lacked jurisdiction to hear the appeal because ELCO had not timely filed a notice of appeal compliant with 37 C.F.R. § 90.2(a)(3)(ii), which requires the notice to “provide sufficient information to allow the [USPTO] Director to determine whether to exercise the right to intervene in the appeal… .” (ELCO had filed a corrected notice of appeal with this information later.) Noting that courts treat a procedural requirement as jurisdictional only if Congress “clearly states that it is,” the Federal Circuit readily determined the regulatory provision at issue was not jurisdictional in nature, and rejected DMF’s argument. Nonetheless, it found ELCO’s appeal to be substantially lacking in merit, and affirmed the PTAB’s decision that ELCO had failed to show unpatentability.
The opinion can be found here.
Realtek Semiconductor Corp. v. ITC, Appeal No. 2023-1095 (Fed. Cir. Mar. 18, 2025)
In an appeal from an ITC decision that had denied sanctions, the Federal Circuit affirmed. DivX had sought an investigation of Realtek and others. Later, DivX filed a motion to withdraw its complaint, whereupon Realtek filed a motion for sanctions, alleging misconduct. The Administrative Law Judge denied the motion on procedural grounds. Realtek then sought an order from the Commission directing DivX to show cause, but the Commission declined. The Federal Circuit affirmed, holding that such decisions are within the sound discretion of the tribunal. Realtek had faulted the Commission for having failed to provide reasoning, but the Federal Circuit held such an order did not require an explanation of reasoning under the APA. The decision was about four pages pages in length.
The full text of the opinion is available here.
Editors:
Nika Aldrich, IP Litigation Group Leader, Schwabe
Jason A. Wrubleski, Shareholder
Contributors: