Opinions — Wednesday, September 30, 2026

The Federal Circuit denied rehearing en banc in a case affirming the district court's rejection of Teva Pharmaceuticals International GmbH and Teva Pharmaceuticals USA, Inc.'s enablement challenge to Eli Lilly and Company's patents covering methods of treating headache using humanized anti-CGRP antagonist antibodies. The asserted claims, including claim 30 of U.S. Patent No. 8,586,045 and claims 5 and 6 of U.S. Patent No. 9,884,907, recite administering an effective amount of an anti-CGRP antagonist antibody to reduce or treat headache. The panel held that even assuming the genus of anti-CGRP antagonist antibodies themselves would require undue experimentation to make and humanize (and thus would not be enabled under In re Wands and Wyeth & Cordis Corp. v. Abbott Laboratories), the method-of-treatment claims were enabled because they claimed only the use of such antibodies for the limited purpose of treating headache rather than the antibodies themselves. The panel distinguished Amgen Inc. v. Sanofi on the ground that the claims did not cover the antibody genus but rather a specific therapeutic application of antibodies that were "well known," even if not fully enabled across the entire genus.

Judge Dyk's dissent from the denial of rehearing en banc argues the decision creates an end-run around Amgen's enablement requirements by allowing patentees to claim functional genera through method-of-use claims rather than composition claims, despite identical practical scope. The dissent emphasizes that where a functional compound limitation (anti-CGRP antagonist antibodies requiring months of testing and tens of thousands of dollars per antibody to identify and humanize) is not enabled, recasting it as part of a method claim cannot satisfy enablement merely because the therapeutic application itself is straightforward. Notably, multiple pharmaceutical industry amici—including competitors Amgen, Sanofi, Merck, and Johnson & Johnson—supported rehearing, warning the decision will chill innovation by allowing overbroad method claims to foreclose entire research fields without adequate disclosure, and will create inconsistent guidance following Amgen for the USPTO and courts in evaluating functional claims to antibody therapeutics.

In WSOU Investments LLC v. Salesforce, Inc., Appeal No. 2025-1810, the Federal Circuit dismissed the appeal by stipulation of the parties under Federal Rule of Appellate Procedure 42(b), with each side to bear its own costs.

WSOU Investments LLC, d/b/a Brazos Licensing and Development v. Salesforce, Inc., f/k/a Salesforce.com, Inc. was voluntarily dismissed under Federal Rule of Appellate Procedure 42(b) by stipulation of the parties, with each side to bear their own costs. The appeal originated from the United States District Court for the Western District of Texas before Judge Alan D. Albright in case number 6:20-cv-01170-ADA.

The Federal Circuit affirmed the Patent Trial and Appeal Board's decision rejecting claims 1–11, 18, and 19 of U.S. Patent No. 9,357,014, owned by WSOU Investments LLC, as obvious over prior art reference Traversat. The patent relates to "service-based networking" that establishes connections using service names rather than IP addresses. The Board reversed the Examiner's anticipation rejection but entered a new ground of obviousness rejection based on the same reference, finding that Traversat at least suggested including a peer name in a discovery query message to establish a connection, even if not explicitly disclosed.

The court's analysis turned on whether the Board properly applied its earlier claim construction from a related IPR proceeding and whether substantial evidence supported the obviousness finding. The court rejected WSOU's argument that the Board collapsed the "establishment" and "request" limitations, finding instead that the Board consistently applied its construction requiring the service name used to support establishment to be the same as the service name in the request message. On substantial evidence, the court held that Traversat's teachings—particularly its disclosure that peer discovery "may be done with, or alternatively without, specifying a name for the peer to be located" and that named peers may be located using the discovery protocol—adequately supported the Board's finding that including the peer name in the discovery query would have been an obvious variation. The court also addressed a procedural challenge to the Central Reexamination Unit's refusal to reopen prosecution under 37 C.F.R. § 41.50(b), reviewing for abuse of discretion.

The Federal Circuit affirmed the Patent Trial and Appeal Board's determination that all challenged claims of Hongjia Wang's U.S. Patent No. 11,007,583, directed to a twist drill, are unpatentable. The central dispute was whether Wang could claim priority to his earlier-filed application (which published as Wang '808), or whether Wang '808 instead qualified as prior art that rendered the challenged claims obvious. The Board found that Wang '808 lacked written description support for the limitation requiring composite cutting blade groups "formed . . . spirally," which the parties agreed means the cutting blades have "axial relief" (i.e., are slanted rather than perpendicular to the drill's rotational axis).

The court rejected Wang's argument that the Board applied the wrong written description standard by failing to account for what a skilled artisan would infer in "predictable arts." The Board had expressly applied the PowerOasis standard requiring that the earlier application "convey with reasonable clarity" to a skilled artisan possession of the invention, and the court found no deviation from that framework. Critically, the court held that even if axial relief was conventional and ubiquitous, this does not satisfy written description's requirement of express or inherent disclosure—a skilled artisan's general knowledge cannot cure the absence of disclosure in the priority document itself, consistent with Lockwood.

ParkerVision, Inc. v. Qualcomm Incorporated and Qualcomm Atheros, Inc. involves an appeal from a partial summary judgment of non-infringement of certain patent claims, which the district court certified as final under Federal Rule of Civil Procedure 54(b) while severing and staying other claims of the same patent. The Federal Circuit dismissed the appeal for lack of jurisdiction, holding that Rule 54(b) does not permit entry of final judgment on only some claims of a single patent when other claims of that same patent remain unresolved, because each patent constitutes a single cause of action under 35 U.S.C. § 281, and the district court failed to make the express "no just reason for delay" determination required specifically as to the patent for which all claims were resolved. The court also denied ParkerVision's request for reassignment to a different district judge on remand, finding no basis under Eleventh Circuit law for such a "severe remedy."

The Federal Circuit vacated and remanded the Northern District of Georgia's denial of Pen-Tech Associates, Inc.'s motion for Rule 11 sanctions and attorneys' fees under 35 U.S.C. § 285, 28 U.S.C. § 1927, and the court's inherent power against Epic Tech, LLC and its counsel Baker Donelson. Epic Tech had sued Pen-Tech for infringing claims of U.S. Patent No. 8,545,317, directed to electronic sweepstakes systems, which the district court ultimately held invalid under § 101. The Federal Circuit held that the district court failed to provide sufficient reasoning to permit meaningful appellate review of why Epic Tech's litigation was not unreasonable despite multiple pre-suit indicators of invalidity: the Supreme Court's decision in Alice Corp. Pty. Ltd. v. CLS Bank International, the PTO's post-Alice § 101 rejections of claims in three related applications (including claims the PTO had determined were patentably indistinct from the '317 patent claims), and a Texas district court's invalidation under § 101 of claims in the related '315 patent in Epic Tech, LLC v. Fusion Skill, Inc. The Federal Circuit emphasized that Epic Tech and its counsel could not rely solely on the presumption of validity when confronted with such strong indicators of patent ineligibility, and that the district court's focus on Epic Tech's pre-suit infringement investigation did not address the distinct question of whether Epic Tech should have investigated validity.

The decision signals heightened scrutiny of patentees' pre-filing validity obligations when multiple red flags suggest patent ineligibility, particularly in the software patent context post-Alice. The Federal Circuit declined to establish a bright-line rule for when notice of potential invalidity renders continued patent assertion unreasonable, but made clear that district courts must meaningfully engage with validity-based notice theories when evaluating Rule 11 sanctions and fee awards rather than deflecting to infringement investigation efforts or relying on formalistic distinctions. The court's statement that "it does not suffice" to rely only on the presumption of validity "when faced with multiple indicators" of unpatentability suggests an evolving standard that may require patent owners to affirmatively investigate and document their validity positions before filing suit when confronted with PTO rejections of related claims, adverse judicial rulings on related patents, or significant shifts in applicable law. This decision provides ammunition for accused infringers seeking sanctions in cases involving patents with troubled prosecution histories or claims vulnerable to subject matter eligibility challenges.

The Federal Circuit denied Medical Components, Inc.'s petition for a writ of mandamus seeking to compel the District of Utah to find Bard's asserted claims (from U.S. Patent Nos. 7,785,302; 7,947,022; and 7,959,615) invalid as anticipated by prior art. The underlying dispute concerned whether claim terms like "power injectable" should be treated as unpatentable printed matter. MedComp argued the district court violated the mandate from a prior appeal involving different Bard patents, C.R. Bard, Inc. v. AngioDynamics, Inc., where the Federal Circuit had held that the content of information conveyed by claimed markers was printed matter without patentable weight, though the means of conveying that information was patent-eligible.

The court declined to issue the writ, distinguishing Will v. United States on the ground that the prior mandate in AngioDynamics II was entered in a different proceeding, not the same case. The district court had construed the disputed limitations as representing "the functionality of the port itself" rather than mere identification of functionality, leading it to conclude that the prior-art Jones patent did not anticipate because it was not power injectable. By denying mandamus, the panel declined to apply mandate preclusion across related but separate litigations, leaving MedComp to pursue ordinary appellate review after final judgment.