United States: Significant 2018 Patent Decisions And A Look Ahead

Last Updated: January 2 2019
Article by Peter F. Snell and Rithika Kulathila

This year the Supreme Court, United States Court of Appeals for the Federal Circuit, and the Federal District Courts penned a number of opinions impacting patent law. Here are some key takeaways from the past year.

  1. A patent owner may collect lost profits based on foreign sales.

In WesternGeco LLC v. ION Geophysical Corp., 138 S. Ct. 2129 (2018), the Supreme Court reversed the Federal Circuit and allowed a patent owner to collect lost profits based on foreign sales, despite the Patent Act's seemingly limited territorial scope. The Supreme Court held that a patent owner may collect lost profits based on foreign sales when components of the patented invention are exported from the United States and are "especially adapted for use in the invention" and "combined outside of the United States," under subsection 35 U.S.C. § 271(f)(2) of the patent statute. The Court's reasoning has the potential to allow patent owners to recover lost profits based on foreign sales in other contexts, too.

  1. The Federal Circuit made it more difficult to challenge patent eligibility based on Alice in early stages of litigation.

In Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), the Federal Circuit held that although patent eligibility is ultimately a question of law, factual questions can exist about whether claims are directed to an abstract idea or transformative inventive concept. Litigants are thus expected to be less successful when bringing Alice motions for judgment on the pleadings or for summary judgment when the factual record is underdeveloped and/or issues of fact are in dispute.

  1. The Federal Circuit clarified the requirements for venue in patent infringement actions.

Venue is proper under 28 U.S.C. § 1400(b) only in the single judicial district where a corporate defendant maintains its "principal place of business" or where its "registered office" is located. In re BigCommerce Inc. and Beyond, 890 F.3d 978 (Fed. Cir. 2018). But foreign defendant corporations can be sued in any district where they may be subject to personal jurisdiction, because § 1400(b) does not apply to them. In re HTC Corp., 889 F.3d 1349 (Fed. Cir. 2018).

  1. The Federal Circuit clarified who has Article III standing to appeal an adverse IPR decision.

When a petitioner receives an adverse decision in an inter partes review (IPR), the petitioner does not have Article III standing to appeal to the Federal Circuit unless "its planned product would create substantial risk of infringing" the patent. JTEKT Corp. v. GKN Automotive, Ltd., 898 F.3d 1217 (Fed. Cir. 2018). The Federal Circuit found Article III standing where the appellant petitioner had taken, and planned to take, actions including commercial activities, research and development that implicated the claimed subject matter of the patent. E.I. DuPont de Nemours & Co. v. Synvina C.V., 904 F.3d 996 (Fed. Cir. 2018).

  1. Further developments regarding IPRs.

The Supreme Court rejected the argument that IPRs are unconstitutional, holding that "Congress has permissibly reserved the PTO's authority" to conduct IPRs. Oil States Energy Services LLC v. Greene's Energy Group, LLC, 138 S. Ct. 1365 (2018). IPRs are thus here to stay.

The Federal Circuit also rejected the notion patent owners can insulate their patents from IPRs by assigning the patents to a Native tribe and asserting the tribe's sovereign immunity, because an "IPR is more like an agency enforcement action than a civil suit brought by a private party, and we conclude that tribal immunity is not implicated." St. Regis Mohawk Tribe v. Mylan Pharms. Inc., 896 F.3d 1322 (Fed. Cir. 2018).

In SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018), the Supreme Court clarified the Patent Trial and Appeal Board's (PTAB) mandate when deciding whether to institute an IPR. The Supreme Court held that the PTAB must institute on all challenged claims and grounds, or none, ending the PTAB's common practice of instituting on some, but not all, of the petitioned grounds and claims. Petitioners may consider filing multiple petitions for IPR to avoid a binary decision as to institution and estoppel.

In Wi-Fi One LLC v. Broadcom Corp., 878 F.3d 1364 (Fed. Cir. 2018) (en banc), the Federal Circuit clarified 35 U.S.C. § 314(b), which seemingly states that PTAB institution decisions are not appealable. The Federal Circuit held that the PTAB's procedural decisions regarding time bars under 35 U.S.C. § 315(b) are appealable.

  1. Cases to watch in 2019:

a. Article III Standing for IPR Appeals to the Federal Circuit

The Supreme Court has entertained a cert. petition on behalf of RPX to determine whether this frequent patent challenger has standing to appeal a PTAB decision upholding a patent. RPX Corp. v. ChanBond LLC, 897 F.3d 1336 (Fed. Cir. 2018) (Pending S. Ct. Cert. Petition). The Supreme Court recently requested the Solicitor General to provide briefing on the matter.

b. AIA & the "on-sale" bar

The Supreme Court recently heard oral arguments in an appeal from Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA Inc., 855 F.3d 1356 (Fed. Cir. 2017) regarding the on-sale bar to patentability. The issue is whether the statutory language of the America Invents Act (AIA) allows an inventor to make a confidential sale to a third party without triggering an "on sale" bar, in contrast to decades of case law under the prior version of the statute holding that such activity raises a statutory bar.

c. FRAND rates for SEPs

A closely-watched district court case set forth guidance on calculating fair, reasonable and non-discriminatory (FRAND) royalties for standards-essential patents (SEPs), and is now pending Federal Circuit review. Ericsson Inc et al v. TCL Communication Technology Holdings Ltd, et al, No. 18-1382. The district court opinion endorsed a " top down " methodology, i.e., taking the value of the standard and determining the percentage of value derived from each SEP where each SEP is presumed to have equal value. The appeal is expected to focus on the district court's finding that all vendors are "similarly situated," such that all vendors receive the benefit of the lower royalty rates that vendors of the most expensive products in the market negotiate with the SEP holders.

d. IPR "Real-Party-in-Interest"

The Federal Circuit has remanded to the PTAB a case that will consider what constitutes a "real-party-in-interest" in an IPR. Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1351 (Fed. Cir. 2018). The PTAB will consider whether Salesforce was a real party-in-interest to RPX's IPR, which is significant because failure to name all "real-parties-in-interest" is fatal to the IPR proceeding and impacts what parties are subject to the IPR's estoppel effects.

Stay tuned in 2019 for continuing coverage of these and other important developments in the patent law.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Peter F. Snell
Similar Articles
Relevancy Powered by MondaqAI
Marshall, Gerstein & Borun LLP
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Marshall, Gerstein & Borun LLP
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

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