United States: 2015年美国重要专利法判决(英文版)

In this White Paper, we have attempted to identify and summarize what we believe to be the most significant United States Supreme Court and Federal Circuit cases of 2015. These decisions create important precedent that is likely to be encountered by patent law practitioners in 2016 and beyond.

2015 saw the Federal Circuit endeavor to apply the Supreme Court's new hybrid approach to appellate review of claim construction decisions. In the joint infringement context, 2015 also saw the Federal Circuit attempt to add certainty to the standard for infringement by multiple actors. Likewise, in the induced infringement context, the Supreme Court clarified the required mental state for a finding of inducement. There were also cases discussing remedies and attorneys' fees, issues that are familiar to every patent litigator. Other issues were less familiar, as in the Supreme Court's decision to uphold its half-century-old rule against allowing patent royalties beyond the term of a patent, or the Federal Circuit's decision to maintain the defense of laches.

Another set of important cases in 2015 dealt with administrative agencies and the roles they play in patent law. For example, several cases considered the substantive standards and jurisdiction of the International Trade Commission ("ITC") and the U.S. Patent and Trademark Office ("PTO"). These decisions indicate that the rules governing administrative review will continue to be beneficial for the petitioner, as the Federal Circuit limited courts' authority to review decisions to institute review and upheld the broad standards used for claim construction.

Finally, our White Paper discussing key 2014 cases noted the sharp uptick in the number of patent law cases the Supreme Court had agreed to hear in recent years.1 Between 2000 and 2014, the Supreme Court decided 39 patent-related cases, or an average of slightly less than three cases per year. That trend continued in 2015, as the Supreme Court decided three patent law cases.


The key decisions from 2015 encompassed a wide range of issues. Some broader themes that tie these cases together are highlighted below.

Appellate Review of Claim Construction

Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 789 F.3d 1335 (Fed. Cir. 2015). In January 2015, the Supreme Court handed down its decision in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc.,2 holding that underlying factual disputes related to a district court's claim construction should be reviewed for clear error instead of de novo, as the Federal Circuit had long held. While this holding reflected a change in more than 20 years of the Federal Circuit's practice, during which de novo review of all aspects of claim construction decisions was the rule, in practice the new regime of appellate review has had only a marginal effect.

There is no better indicator of this than the Federal Circuit's treatment of the Teva decision on remand. A divided panel of the Federal Circuit stuck to its original view that the district court had erred in holding the term "molecular weight" definite.3 This decision was premised on claim construction: The district court had held that the term "molecular weight" (which in the abstract could refer to any of various types of molecular weight, including "number average," "weight average," and "peak average" molecular weight) actually referred to peak average molecular weight, based on expert testimony that peak average molecular weight was the only kind of molecular weight that could be obtained from the size-exclusion-chromatography data (a chromatogram and calibration curve) set forth in the patent's Example 1.4

The Federal Circuit agreed that the term "molecular weight" does "not have a plain meaning to one of skill in the art."5 And the majority upheld, as not clearly erroneous, "[t]he district court's determination about how a skilled artisan would understand the way in which [size-exclusion-chromatography]-generated chromatogram data reflects molecular weight."6 But the court said that it did not follow that the meaning of "molecular weight," as used in the claims, had to accord with this not clearly erroneous finding. The problem, according to the majority, was that a correct claim construction has to be one that a skilled artisan would give to the claim term—in the words of the Supreme Court's decision in Teva—"in the context of the specific patent claim under review." As the majority explained, "accepting these fact findings does not, as Teva suggests, mean that there now exists a presumption regarding the meaning of the claim term in the art in general or in the context of this patent."7

The context of the patent, including the prosecution history, highlighted the problem. Even though a skilled artisan might understand the meaning of "molecular weight" to be "peak average molecular weight" based on the data provided in Example 1, the patentee had also said, during prosecution of the patent (to overcome an examiner's rejection for indefiniteness), that "molecular weight" meant "weight average molecular weight." And this, the majority concluded, meant that "there is not reasonable certainty that molecular weight should be measured using [peak average molecular weight]."8

The majority was not willing to let the "weight average" representation in the intrinsic record be overcome by expert testimony or factual findings that this statement was scientifically erroneous. In the majority's view, it is the court's job, as a matter of law, to determine whether a proffered construction is consistent with the context provided by the entire patent, such that the document is internally coherent: "A party cannot transform into a factual matter the internal coherence and context assessment of the patent simply by having an expert offer an opinion on it."9 Thus, the majority held that the district court's not clearly erroneous findings still could not compensate for the absence of reasonable certainty in the intrinsic record, and the claim was indefinite.10

Senior Judge Mayer, who has historically urged deferential review of district courts' claim constructions, dissented. He would have found the claim term definite based on the district court's factual findings, giving those findings considerable deference in light of the evidence and testimony reviewed by the district court.11

The Federal Circuit had numerous occasions to apply Teva's hybrid approach to appellate review in 2015. In doing so, however, the court largely preserved for itself the de novo power to review district court claim constructions. Where a district court's claim construction is completed solely based on the intrinsic written patent record, then appellate review of course remains de novo. But even where clear-error review applies to certain factual findings made in the context of claim construction, this is not always the end of the inquiry—those factual findings, even if not clearly erroneous ones, also should be tested against the context of the patent and the intrinsic record. And, where the intrinsic record would yield a different or inconsistent conclusion, the factual findings may either yield to the internal coherence of the intrinsic record, or may—as was the case in Teva—demonstrate that the patent claim is indefinite.

Issue Preclusion

SpeedTrack, Inc. v. Office Depot, Inc., 791 F.3d 1317 (Fed. Cir. 2015). In SpeedTrack, the Federal Circuit addressed the circumstances in which a patentee may be barred from bringing multiple suits concerning the same allegedly infringing behavior. The patent-at-issue concerned a "method[] for searching and accessing files stored on a computer system" that involved filtering results based on broader "category descriptions."12 In an earlier lawsuit, the same plaintiff (SpeedTrack) sued a different defendant (Wal-Mart) and alleged that Wal-Mart's website infringed its method patent.13 The company that wrote the software used on Wal-Mart's website (Endeca) then intervened. The district court granted summary judgment of noninfringement because Endeca's accused software used "numerical identifiers instead of [the] descriptive words" required by the claimed "category descriptions."14 The Federal Circuit affirmed.15

In SpeedTrack, the defendant (Office Depot) was accused of infringing the same patent by using the same Endeca software. Office Depot argued that SpeedTrack's suit was barred according to the Kessler doctrine. The district court agreed. Under the Kessler doctrine, "a party who obtains final adjudication in its favor obtains 'the right to have that which it lawfully produces freely bought and sold without restraint or interference.'"16 Critically, the Federal Circuit has recognized that the Kessler doctrine creates a right "that attaches to the [allegedly infringing] product itself"17 and that it may "preclude[] some claims that are not otherwise barred by claim or issue preclusion."18

The Federal Circuit affirmed the application of Kessler in SpeedTrack. First, it dismissed arguments that Kessler was inapplicable where the product manufacturer was not a party. Although only the customer using the software (Office Depot) was involved, the court emphasized that the "right ... attaches to the noninfringing product, and it is a right designed to protect the unencumbered sale of that product."19 Therefore, SpeedTrack's "argument that the Kessler doctrine can only be invoked by a manufacturer must fail."20 Furthermore, the Federal Circuit declined to accept SpeedTrack's argument that Kessler was no longer good law. According to the court, "the Kessler doctrine is a necessary supplement to issue and claim preclusion: without it, a patent owner could sue a manufacturer for literal infringement and, if unsuccessful, file suit against the manufacturer's customers under the doctrine of equivalents."21

Joint and Induced Infringement

Akamai Technologies, Inc. v. Limelight Networks, Inc., 797 F.3d 1020 (Fed. Cir. 2015) (en banc). The Federal Circuit's en banc decision in Akamai sought to finally resolve questions of joint infringement that had plagued the court for years. The case began when Akamai alleged that Limelight infringed its patented method for efficiently "delivering content over the Internet."22 One of the steps of Akamai's patent involved "tagging" internet content.23 Although Limelight operated a "content delivery network," it argued that it could not be liable for infringement because its customers were the ones that "tagged" the content to be delivered.24 Akamai countered that infringement liability may still attach in certain "multiple actor" situations (i.e., situations where multiple actors combine to perform all of the claimed steps). A lack of consensus on the type of relationship required for "multiple actor" infringement (also referred to as "joint" or "divided" infringement) had divided the Federal Circuit for years. In fact, by the time the Federal Circuit issued its en banc opinion in Akamai in August 2015, the Federal Circuit had already issued three opinions in the case and the Supreme Court had issued one.25

Hoping that it could finally put the Akamai case to rest, the en banc Federal Circuit issued an opinion per curiam to "unanimously set forth the law of divided infringement."26 The court began its opinion by stating that direct infringement liability requires "all steps of a claimed method [to be] performed by or attributable to a single entity."27 Attribution is appropriate where either one entity "directs or controls" another's performance or "where the actors form a joint enterprise."28 Additionally, the court noted that "other factual scenarios may arise which warrant attributing others' performance of method steps to a single actor."29

In determining whether the "direct or control" standard was satisfied, the court stated that it would "continue to consider general principles of vicarious liability."30 This would include principle-agent relationships and situations in which the parties are bound by contract "to perform one or more steps of a claimed method."31 Additionally, liability for inducement under the "direct or control" standard would exist where "an alleged infringer conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner or timing of that performance."32

On the other hand, to satisfy the "joint enterprise" standard, the four joint enterprise elements from the Restatement (Second) of Torts must be met. These elements are: (i) an agreement, (ii) a "common purpose," (iii) "a community of pecuniary interest," and (iv) "an equal right to a voice in the direction of the enterprise."33

Applying its newly announced framework, the court determined that Limelight was liable for induced infringement. Specifically, Limelight "directs or controls" its customers' actions in performing the tagging step by "condition[ing] its customers' use of its content delivery network upon its customers' performance of the tagging ... step[.]"34 In fact, Limelight customers wishing to use its service are required to agree by contract that they will be the party that performs the tagging instead of Limelight.35 Therefore, Limelight's relationship with its customers was sufficient for a finding of induced infringement.

Commil USA, LLC v. Cisco Systems, Inc., 135 S. Ct. 1920 (2015). Commil addressed the question of the state of mind required for a finding of induced infringement. The patentee in Commil argued that the accused infringer was liable for inducement of its patent for a "method of providing faster and more reliable communications between devices and base stations."36 Specifically, the plaintiff (Commil) "alleged that Cisco had induced others to infringe [its] patent by selling the infringing equipment for them to use[.]"37 Cisco argued in defense that it could not be found liable for inducement if it had a "good-faith belief" that Commil's patent was invalid.38

The Court found that a good-faith belief in invalidity was no defense to inducement liability. In doing so, it first clarified its 2011 holding in Global-Tech Appliances, Inc. v. SEB, S.A.39 That case, according to the Court, requires "proof the defendant knew the acts were infringing" before it may be found liable for inducement.40 This holding was in contrast to Commil's argument that a finding of inducement requires only a showing that the defendant had knowledge of the patent.41

Next, the Court addressed a more significant question: whether Cisco could be liable if it had a good-faith belief in the patent's invalidity. According to the Court, if it were to hold that a belief of invalidity is a defense to inducement, then it would be "conflat[ing] the issues of infringement and invalidity."42 The Court noted that it was a "long-accepted truth—perhaps [an] axiom—that infringement and invalidity are separate matters under patent law."43 Because infringement and invalidity are separate issues, there can be no defense to induced infringement that rests on beliefs regarding invalidity.44 And, as the Court pointed out, there are good reasons for maintaining this distinction. For one, allowing a "good-faith belief" defense would be inconsistent with the presumption of validity that patents are granted in infringement cases.

In dissent, Justice Scalia (joined by Chief Justice Roberts) pointed out that "only valid patents can be infringed"45 and that "[i]nduced infringement ... requires knowledge that the induced acts constitute patent infringement."46 "Because only valid patents can be infringed, anyone with a good-faith belief in a patent's invalidity necessarily believes the patent cannot be infringed."47 Therefore, according to Justice Scalia, such a person cannot be found liable for inducement.48

It is worth noting that Justice Scalia's premise—that an invalid patent cannot be infringed—contradicts the views long expressed by Federal Circuit judges, namely that invalidity negatives only liability for infringement, not infringement itself.49


SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, 807 F.3d 1311 (Fed. Cir. 2015) (en banc). In SCA Hygiene, the en banc Federal Circuit considered whether laches should be abolished in patent law, and, by a 6–5 vote, rejected that proposition. Specifically, the court considered whether the Supreme Court's recent decision in Petrella v. Metro-Goldwyn-Mayer, which abolished laches for "copyright infringement suit[s] brought within the Copyright Act's statutory limitations period[,]" required a similar abolition from the patent law.50 In Petrella, the Court reasoned that Congress had taken account of "delay" issues by enacting the copyright statute of limitations.51 Because laches also dealt with issues of delay, the Court found that it was duplicative of the limitations period established by Congress.52 "According to the Court, '[l]aches ... originally served as a guide when no statute of limitations controlled the claim.' ... Laches is thus 'gap-filling, not legislation-overriding.' In this respect, separation of powers concerns drove the result in Petrella."53 However, the Court noted that "Congress could provide a laches defense, noting, as an example, that it had done so in the Lanham Act, governing trademarks."54

In considering the effect of Petrella, the Federal Circuit contrasted the statutory regime in patent law to that of copyright law. First, the majority noted the existence of 35 U.S.C. § 286, which limits damages in patent cases to those accrued over the six years prior to the filing of the case. According to the court, this provision "considers the timeliness of damages claims" much in the same way as the copyright statute of limitations at issue in Petrella.55 However, unlike in the copyright context, the court found that Congress had also provided for laches statutorily. Specifically, the majority determined that § 282 (which specifies defenses to infringement and invalidity) was intended to have a "broad reach"56 and included a general provision that includes as a defense "[a]ny other fact or act made a defense by this title."57 Contemporary commentary from the time of the 1952 Patent Act's adoption confirmed that "§ 282 includes laches."58 The court stated that it could not displace Congress's judgment with its own and held that the laches defense remained despite Petrella.59

Finally, the Federal Circuit also used this occasion to change its earlier holding that "laches could not bar prospective relief."60 According to the court, "[c]onsideration of laches fits naturally into [the eBay] framework" for considering injunctions.61 Thus, laches should factor into the analysis when considering whether injunctive relief is "foreclose[d]."62 "However, a patentee guilty of laches typically does not surrender its right to an ongoing royalty. Paramount in both these inquiries are flexible rules of equity and, as a corollary, district court discretion."63

In dissent, Judge Hughes (joined by four other judges) chided the majority for what he viewed as its adoption of a "patent-specific approach to the equitable doctrine of laches."64 Judge Hughes argued that the majority made its ruling in spite of congressional intent and Supreme Court precedent counseling in favor of the opposite approach.65


Kimble v. Marvel Entertainment, LLC, 135 S. Ct. 2401 (2015). Kimble reconsidered—and ultimately reaffirmed—a 51-year-old Supreme Court precedent on the topic of patent royalties. The Supreme Court decided Brulotte v. Thys Co. in 196466 holding that a patent holder cannot charge royalties for the use of his invention "after its patent term has expired."67 Kimble fell directly within the boundaries of that precedent: a patentee (Kimble) had settled a patent dispute with an accused infringer (Marvel) by agreeing to a "3% royalty on Marvel's future sales" of its allegedly infringing product.68 The parties' agreement did not include an expiration date. After discovering Brulotte, Marvel sought a declaratory judgment "that the company could cease paying royalties" after the patent's expiration.69 The "sole question presented [was] whether [the Court] should overrule Brulotte."70

Writing for a six-Justice majority, Justice Kagan determined that principles of stare decisis required that Brulotte be left intact, even if there were compelling arguments that it was wrongly decided. According to the majority, "an argument that we got something wrong—even a good argument to that effect—cannot by itself justify scrapping settled precedent."71 Overturning Brulotte had the potential to "upset expectations" and would have called into question "a whole web of precedents."72 If the parties disagreed with its opinion, said the majority, the proper avenue for overturning Brulotte was through Congress and not the courts.

In further support of its holding, the majority stated that Brulotte does not present an insurmountable barrier for parties wishing to structure agreements that extend beyond a patent's term. As an example, "[a] licensee could agree ... to pay [a] licensor a sum equal to 10% of sales during the 20-year patent term, but to amortize that amount over 40 years."73

Justice Alito authored a dissent in which Justice Thomas and Chief Justice Roberts joined. According to Justice Alito, because the Brulotte decision relied on an economic theory that "had no basis in the law" and "its reasoning [had] been thoroughly disproved," it should not be entitled to the level of deference that the majority accorded it.74

ePlus, Inc. v. Lawson Software, Inc., 789 F.3d 1349 (Fed. Cir. 2015). In ePlus, the Federal Circuit considered whether an infringer could be forced to pay a civil contempt penalty for violating an injunction order despite the fact that the patent claims on which the order was premised were later found to be invalid. The infringer in ePlus (Lawson) had originally been sued by the patentee (ePlus) in 2009.75 The patent-at-issue involved "using electronic databases to search for product information and ordering selected products from third party vendors."76 Originally, a jury found that Lawson infringed certain claims of the asserted patents, and the district court ordered a permanent injunction against Lawson.77 On appeal, the Federal Circuit held that only one remaining claim was both valid and infringed.78 The Federal Circuit remanded with instructions to the district court to modify the injunction as appropriate.79 Although Lawson argued that an injunction was no longer appropriate given the one remaining claim, the district court maintained the injunction.80 The district court also held Lawson in civil contempt and ordered it to pay more than $18 million in fines for violation of the injunction, despite Lawson's arguments that it had changed its practices.81 Lawson appealed these findings to the Federal Circuit.

While the ePlus–Lawson dispute was ongoing, there was also a pending reexamination of the only remaining claim of the asserted patents.82 In the reexamination, the PTO found the remaining claim to be invalid. "While Lawson's appeals were pending, [the Federal Circuit] affirmed the PTO's reexamination decision invalidating [the remaining claim]."83 In light of the invalidation, Lawson argued that (i) it should not have to comply with the injunction and (ii) it should not be responsible for paying any outstanding fines.84

On appeal, a Federal Circuit panel agreed with Lawson. First, it held that because the only remaining claim had been cancelled, there was "no longer any legal basis to enjoin Lawson's conduct."85 Because the legal basis for the injunction had been removed, the Federal Circuit held that it was "require[d to] now vacate the injunction."86

Second, the majority found that the injunction in question had been "non-final" and, therefore, that the sanctions imposed on Lawson should be set aside.87 Crucial to this decision was that the district court's original injunction "did not tie specific enjoined activities or products to specific claims that had been found infringed."88 Therefore, the Federal Circuit's invalidation of certain claims in the first appeal "resulted in a substantial question as to the appropriate scope of the injunction."89 Citing the 2013 decision in Fresenius USA, Inc. v. Baxter International, Inc., the majority argued that the "original district court judgment, while 'final for purposes of appeal ... was not sufficiently final to preclude application of the intervening judgment.'"90 With questions regarding the injunction still open on appeal when the remaining claim was found invalid, the injunction could not be considered "final" and, according to Supreme Court precedent, should be set aside.91

Judge O'Malley dissented, arguing that the decision was not required by Fresenius.92 More broadly, Judge O'Malley stated that "the majority's approach essentially allows an executive agency to render both the panel opinion ... and the district court's judgment regarding validity as advisory opinions. That result ignores the role of Article III courts in our constitutional structure."93 In addition to Judge O'Malley's critique, several other judges dissented from the decision to deny rehearing en banc in ePlus.94

Attorneys' Fees

Oplus Technologies, Ltd. v. Vizio, Inc., 782 F.3d 1371 (Fed. Cir. 2015). Oplus dealt with a district court's discretionary authority to award "reasonable attorney fees to the prevailing party" in cases deemed "exceptional."95 The plaintiff (Oplus) had filed an infringement action against Vizio. The litigation that followed was described by the Federal Circuit as "anything but ordinary."96 During discovery, Oplus continually subjected Vizio to abusive and improper requests, including a subpoena "for documents [Oplus's] counsel had accessed under a prior protective order [in a previous case.]"97 Oplus also "present[ed] contradictory expert evidence and infringement contentions" and repeatedly "misrepresent[ed] its legal and factual support."98 In light of these findings, the district court found the case to be "exceptional" under § 285.99 Nonetheless, it denied Vizio's fee request because: (i) both sides were at least partially responsible for some of the "delay and avoidance tactics," (ii) "each instance of motion practice occurred according to normal litigation practice," and (iii) neither side seemed to have incurred more fees as a result of "Oplus's vexatious behavior."100

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1 See Nix & Castanias, "Key Patent Law Decisions of 2014."

2 135 S. Ct. 831 (2015).

3 See Teva Pharm. USA, Inc. v. Sandoz, Inc., 723 F.3d 1363 (Fed. Cir. 2013), vacated, Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831 (2015).

4 789 F.3d 1335, 1338-39 (Fed. Cir. 2015).

5 Id. at 1345.

6 Id. at 1341-42.

7 Id. at 1342.

8 Id. at 1345.

9 Id. at 1342.

10 Id. at 1345.

11 Id. at 1345-49 (Mayer, J., dissenting).

12 SpeedTrack, Inc. v. Office Depot, Inc., 791 F.3d 1317, 1319 (Fed. Cir. 2015).

13 SpeedTrack, Inc. v. Endeca Techs., Inc., 524 Fed. Appx. 651 (Fed. Cir. 2013).

14 SpeedTrack, 791 F.3d at 1319–20.

15 Id. at 1320–21.

16 Id. at 1323 (quoting Rubber Tire Wheel Co. v. Goodyear Tire & Rubber Co., 232 U.S. 413, 418 (1914)).

17 Id.

18 Id. at 1324 (quoting Brain Life, LLC v. Elekta, Inc., 746 F.3d 1045, 1055–56 (Fed. Cir. 2014) (internal quotation marks omitted)).

19 Id. at 1327 (emphasis in original).

20 Id.

21 Id. at 1328.

22 Akamai Techs., Inc. v. Limelight Networks, Inc., 797 F.3d 1020, 1024 (Fed. Cir. 2015) (en banc) (per curiam).

23 Id.

24 Id.

25 See Limelight Networks, Inc. v. Akamai Techs., Inc., 134 S. Ct. 2111 (2014); Akamai Techs., Inc. v. Limelight Networks, Inc., 786 F.3d 899 (Fed. Cir. 2015); Akamai Techs., Inc. v. Limelight Networks, Inc., 692 F.3d 1301 (Fed. Cir. 2012) (en banc) (per curiam); Akamai Techs., Inc. v. Limelight Networks, Inc., 419 Fed. App'x 989 (Fed. Cir. 2011).

26 Akamai Techs., Inc. v. Limelight Networks, Inc., 797 F.3d 1020, 1022 (Fed. Cir. 2015) (en banc) (per curiam).

27 Id.

28 Id.

29 Id. at 1023.

30 Id. at 1022.

31 Id. at 1023.

32 Id.

33 Id. (citing Restatement (Second) of Torts § 491 cmt. c).

34 Id. at 1024.

35 Id.

36 Commil USA, LLC v. Cisco Sys., Inc., 135 S. Ct. 1920, 1924 (2015).

37 Id.

38 Id.

39 131 S. Ct. 2060 (2011).

40 Commil, 135 S. Ct. at 1926–28.

41 Id.

42 Id. at 1928.

43 Id.

44 Id. at 1928–29.

45 Id. at 1932 (Scalia, J., dissenting).

46 Id. (quoting Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011)).

47 Id.

48 Id.

49 See, e.g., Medtronic, Inc. v. Cardiac Pacemakers, Inc., 721 F.2d 1563, 1583 (Fed. Cir. 1983) (Markey, C.J.) ("Though an invalid claim cannot give rise to liability for infringement, whether it is infringed is an entirely separate question capable of determination without regard to its validity.").

50 SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, 807 F.3d 1311, 1319 (Fed. Cir. 2015). One of the authors was counsel to amicus curiae Intellectual Property Owners' Association and filed a brief amicus curiae in this case.

51 Id.

52 Id.

53 Id. (quoting Petrella v. Metro-Goldwyn-Mayer, 134 S. Ct. 1962, 1974–75 (2014)) (internal citations omitted).

54 Id. at 1321 (emphasis added).

55 Id.

56 Id.

57 35 U.S.C. § 282(b)(4).

58 SCA Hygiene, 807 F.3d at 1323.

59 Id. at 1329–30.

60 Id. at 1331.

61 Id.

62 Id. at 1332.

63 Id. at 1333 (citations omitted).

64 Id. at 1333 (Hughes, J., dissenting).

65 Id.

66 379 U.S. 29 (1964).

67 Kimble v. Marvel Entertainment, LLC, 135 S. Ct. 2401, 2405 (2015).

68 Id. at 2406.

69 Id.

70 Id. at 2405.

71 Id. at 2409.

72 Id. at 2410–11.

73 Id. at 2409.

74 Id. at 2415 (Alito, J., dissenting).

75 ePlus, Inc. v. Lawson Software, Inc., 789 F.3d 1349, 1351 (Fed. Cir. 2015).

76 Id.

77 Id. at 1352.

78 Id. at 1352–53.

79 Id. at 1353.

80 Id.

81 Id. at 1354.

82 Id. at 1351.

83 Id. at 1354.

84 Id. at 1351.

85 Id. at 1355–56.

86 Id. at 1356.

87 Id. at 1356.

88 Id. at 1359.

89 Id.

90 Id. at 1358 (quoting Fresenius USA, Inc. v. Baxter International, Inc., 721 F.3d 1330, 1340 (Fed. Cir. 2013)).

91 Id. at 1356–61.

92 Id. at 1366–69 (O'Malley, J., dissenting).

93 Id. at 1370.

94 ePlus, Inc. v. Lawson Software, Inc., 790 F.3d 1307, 1314, 1315 (Fed. Cir. 2015) (dissenting opinions of Moore, J. (joined by O'Malley, Reyna, and Wallach, JJ.) and O'Malley, J. (joined by Wallach, J.)).

95 Oplus Techs., Ltd. v. Vizio, Inc., 782 F.3d 1371, 1375 (Fed. Cir. 2015) (quoting 35 U.S.C. § 285).

96 Id. at 1372.

97 Id. at 1373 (quoting Oplus Techs., Ltd. v. Sears Holdings Corp., No. 2:12-cv-05707-MRP-Ex, at *12 (C.D. Cal. Feb. 3, 2014), ECF No. 220).

98 Id. (quoting Oplus Techs., Ltd. v. Sears Holdings Corp., No. 2:12-cv-05707-MRP-Ex, at *13 (C.D. Cal. Feb. 3, 2014), ECF No. 220).

99 Id.

100 Id. at 1374 (quoting Oplus Techs., Ltd. v. Sears Holdings Corp., No. 2:12-cv-05707-MRP-Ex, at *16 (C.D. Cal. Feb. 3, 2014), ECF No. 220).

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Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions