Key Takeaways: Federal Circuit Mid-Year Review

Recent Federal Circuit decisions are reshaping the practical rules that govern patent appeals, PTAB proceedings, district court litigation, and IP portfolio strategy. In Sterne Kessler’s Federal Circuit Mid-Year Review, Directors Michael Joffre, William Milliken, and Melissa Haapala discussed developments in areas such as patent eligibility, estoppel, trade secret limitations, and design patent infringement, with a focus on what the court’s evolving approach means for business and legal leaders. Key takeaways include:

1. Federal Circuit appeal patterns are shifting: Affirmance rates remain consistent with historical norms, although the court is issuing fewer Rule 36 affirmances and more short nonprecedential opinions. Appeals from the U.S. Patent and Trademark Office have fallen substantially and may change the composition of the court’s docket in the future as fewer PTAB matters reach final written decisions.
2. EcoFactor does not make every expert dispute an admissibility issue: The Federal Circuit’s en banc EcoFactor decision prompted expectations of more demanding scrutiny for admissibility of expert testimony. However, two later precedential decisions treated challenges to expert assumptions and methodology as matters of weight rather than admissibility. The sharper admissibility issue arises when an opinion depends on a factual premise that is indisputably wrong or unsupported.
3. Increasing consistency in patent eligibility doctrine: There is growing consistency in computer-related eligibility cases. The court continues to ask whether a claimed invention improves computer functionality itself or merely uses a computer as a tool. The specification can explain the technological problem and the asserted improvement, but the claims must show how the improvement was accomplished.
4. Procedural issues can carry substantive consequences: Recent decisions underscore the importance of getting procedural issues right when litigating patents. The court clarified key standards for standing, reinforced a practical and non-hindsight approach to IPR estoppel, and confirmed that the same written-description requirements apply regardless of whether a patent falls under the AIA or pre-AIA framework.
5. Recent developments in trade secret and design law: In trade secret cases, statute-of-limitations questions may turn on when access and similarity gave reason to discover potential misappropriation. Design patent infringement is currently a hot issue at the Federal Circuit, with a controversial recent case potentially headed to the Supreme Court.

Success in IP matters increasingly depends on aligning litigation, licensing, patent drafting, and PTAB strategies with evolving legal standards. Businesses should use these rulings as an opportunity to reassess current practices and sharpen their approach to litigation and portfolio management.