Fresh From the Bench: Latest Precedential Patent Cases
CASE OF THE WEEK
In re Forest, Appeal No. 2023-1178 (Fed. Cir. Apr. 3, 2025)
In an appeal from a Patent Office decision denying a patent that would have been expired upon issuance, the Federal Circuit dismissed. Applicant Forest had filed a string of patent continuation applications, culminating with a continuation application filed more than 20 years after the original application in the chain, claiming priority to the original application. Since patents have a 20-year term that dates from the priority application, this patent would have been expired upon issuance. In fact, the patent would have been expired even if it had been granted on the date the application was filed. The examiner rejected it based on obviousness and non-statutory double-patenting grounds—a decision that was affirmed by the Patent Trial and Appeal Board.
Forest appealed to the Federal Circuit, and the Patent Office moved to dismiss, arguing he had no standing to pursue an appeal because he had no personal stake in it, given that an expired patent has no rights associated with it.
ALSO THIS WEEK
AMS-Osram USA Inc. v. Renesas Elecs. Am., Inc., Appeal Nos. 2022-2185, -2186 (Fed. Cir. April 4, 2025)
In a second appeal from an Eastern District of Texas case, the Federal Circuit reversed in part, affirmed in part, vacated in part, and remanded. The lawsuit involved alleged misuse of confidential information that relates to ambient light sensors used in Apple products. The Court considered various overlapping issues concerning damages, disgorgement, exemplary damages, and attorneys’ fees for trade secret and contract claims under Texas and California law. (A previously dismissed patent claim was not before the Court, nor was any issue concerning liability.) Among other issues, the Federal Circuit panel rejected the defendant’s argument that a Texas statute precluded exemplary damages on the trade secrets claim, holding the argument to be waived for failure to have raised it during the prior appeal. Considering other arguments, the Court left the multimillion-dollar damages award largely undisturbed, but found some errors with regard to the amount, and remanded for further proceedings.
The opinion can be found here.
Editors:
Nika Aldrich, IP Litigation Group Leader, Schwabe
Jason A. Wrubleski, Shareholder