2015/2016 Federal Circuit Year in Review

December 7, 2016

We are pleased to present Gibson Dunn’s fourth "Federal Circuit Year in Review," providing a statistical overview and substantive summaries of the 134 precedential patent opinions issued by the Federal Circuit over the 2015-2016 year. This term was marked by three en banc decisions concerning: (1) the scope of the patent exhaustion doctrine in Lexmark Int’l, Inc. v. Impression Prods., Inc., 816 F.3d 721 (Fed. Cir. 2016); (2) laches as a defense to patent infringement in SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, 807 F.3d 1311 (Fed. Cir. 2015); and (3) the time frame in which an article must infringe to support an ITC exclusion order in Suprema, Inc. v. Int’l Trade Comm’n, 796 F.3d 1338 (Fed. Cir. 2015).

This term also brought significant decisions upholding the patent eligibility of claims under 35 U.S.C. § 101.  For instance, in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), the court held that claims to a self-referential database were patent-eligible because they were directed to an improvement to computer functionality itself, and thus were not direct to an abstract idea.  In reaching that conclusion, the court explained that whether claims recited an improvement to preexisting technology itself–a question that has typically been asked in the context of step two of the Alice/Mayo analysis–can play a role in determining whether the claims are directed to an abstract idea in step one of the analysis.  In addition, the court held in Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), that although generic computer components will generally not confer patent eligibility, an inventive concept can be found in a non-conventional and non-generic arrangement of known, conventional pieces.  The court held that the Internet content-filtering claims at issue in Bascom provided such a non-conventional and non-generic–and thus patent-eligible–arrangement.

The issues most frequently addressed in precedential decisions by the court over the last year were: infringement (44 opinions); obviousness (43 opinions); claim construction (41 opinions); anticipation (21 opinions); and jurisdiction, venue, or standing (18 opinions).

The Year in Review provides a concise, substantive analysis of the court’s precedential patent decisions. The easy-to-use Table of Contents is organized by issue, so that the reader can easily identify all of the relevant cases bearing on the issue of choice.

Use the Federal Circuit Year in Review to find out:

• Which issues have a better chance on appeal based on the Federal Circuit’s history of affirming or reversing that issue in the past, including the real rate of affirmance on claim construction.
• The average length of time from issuance of a final decision in the district court and docketing at the Federal Circuit to issuance of a Federal Circuit opinion on appeal.
• What the likelihood of success is at the Federal Circuit if you are a patentee or the opponent based on the issue being appealed.
• The Federal Circuit’s history of affirming or reversing cases from a specific district court.
• How likely a particular panel will be to render a unanimous opinion or a fractured decision with a majority, concurrence, or dissent.
• The Federal Circuit’s affirmance/reversal rate in cases from the district court, ITC, and the PTO.

The Year in Review provides a statistical analysis of how the Federal Circuit has been deciding precedential patent cases, such as affirmance and reversal rates (overall, by issue, and by district court), average time from lower tribunal decision to key milestones (oral argument, decision), win rate for patentee versus opponent (overall, by issue, and by district court), decision rate by Judge (number of unanimous, majority, plurality, concurring, or dissenting opinions), and other helpful statistics. The Year in Review is an ideal resource for practitioners seeking an objective report on the court’s decisions.

Please click here to view the FEDERAL CIRCUIT YEAR IN REVIEW

Gibson Dunn’s lawyers are available to assist in addressing any questions you may have regarding developments at the Federal Circuit.  Please contact the Gibson Dunn lawyer with whom you usually work or the authors of this alert:

Mark A. Perry – Washington, D.C. (+1 202-887-3667, [email protected])
Michael Sitzman – San Francisco (+1 415-393-8200, [email protected])
Blair A. Silver – Washington, D.C. (+1 202-955-8500, [email protected])

Please also feel free to contact any of the following practice group co-chairs or any member of the firm’s Appellate and Constitutional Law or Intellectual Property practice groups: 

Appellate and Constitutional Law Group:
Mark A. Perry – Washington, D.C. (+1 202-887-3667, [email protected])
James C. Ho – Dallas (+1 214-698-3264, [email protected])
Caitlin J. Halligan – New York (+1 212-351-4000, [email protected])

Intellectual Property Group:
Josh Krevitt – New York (+1 212-351-4000, [email protected])
Wayne Barsky - Los Angeles (+1 310-552-8500, [email protected])
Mark Reiter – Dallas (+1 214-698-3100, [email protected])