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Decision: EcoFactor, Inc. v. Google LLC, 137 F.4th 1333 (Fed. Cir. 2025) (en banc) — U.S. Court of Appeals for the Federal Circuit, decided May 21, 2025.

The holding. In a rare en banc decision — the court's first in a utility-patent case since 2018 — the Federal Circuit vacated a jury's award of more than $20 million against Google and ordered a new trial on damages. EcoFactor's damages expert had testified that prior licensees had agreed to a per-unit royalty, and built his reasonable-royalty opinion on that rate. The problem was in the documents themselves: the three licenses he relied on were lump-sum agreements, and two of them expressly stated that the lump sum was not based on sales or indicative of a per-unit rate. The rate appeared only in one-sided recitals stating EcoFactor's own belief. The court held that where the evidence contradicts a critical fact the expert relied on, the trial court fails its gatekeeping duty under Federal Rule of Evidence 702 by letting the expert testify. Reliability of the expert's basis is a question of admissibility, not merely of weight for the jury.

What it means. EcoFactor raises the bar for damages proof in patent cases, and it cuts both ways. Patent owners can no longer count on getting a royalty opinion to the jury simply because an expert is willing to state it; the opinion must be anchored in facts the record actually supports, and the other side will read the underlying licenses closely. Accused infringers, meanwhile, have a stronger Daubert weapon — and a real prospect of a new trial, rather than just a remittitur, when an expert's foundation collapses. The decision also matters at the front end of a case: damages experts should be retained early, their royalty theories should be tested against the actual license language before the report is written, and settlement licenses should be drafted with an eye to how their terms will read in a future damages fight.

Sources:

• Opinion: EcoFactor, Inc. v. Google LLC, 137 F.4th 1333 (Fed. Cir. 2025) (en banc)
• Also consulted: Venable LLP, "Federal Circuit Issues Rare En Banc Decision on Patent Damages" (May 27, 2025); Fish & Richardson, "The Federal Circuit Continues to Evolve Its Daubert Gatekeeping Framework: Willis and Exafer" (2026)

Decision: Vidal v. Elster, 602 U.S. 286 (2024) — U.S. Supreme Court, decided June 13, 2024 (unanimous in result).

The holding. The Lanham Act's "names clause" — which bars registration of a trademark that identifies a living person without that person's written consent — does not violate the First Amendment. Steve Elster sought to register "TRUMP TOO SMALL" for T-shirts, as political commentary. The Patent and Trademark Office refused; the Federal Circuit sided with Elster, reading the Court's earlier decisions striking down the bars on disparaging and scandalous marks as settling the issue. The Supreme Court reversed. Trademark law has always been content-based — it has to be, since registration turns on what the mark says — and the names clause is viewpoint-neutral: it applies whether the use of the name is flattering or mocking. The Court rested on history and tradition, noting that restrictions on registering other people's names have coexisted with the First Amendment since the beginning of trademark law.

What it means. The decision draws a line the Court had left open in its earlier trademark cases: not every content-based registration rule is unconstitutional. The bars on disparaging and scandalous marks fell because they discriminated by viewpoint; the names clause survives because it does not. For brand owners and public figures, the practical point is simple — the names clause remains a working tool to stop others from registering your name as a brand. For applicants, political commentary is still protected speech, and Elster remains free to sell his T-shirts; what he cannot do is claim the exclusive federal benefits of registration for a mark built on someone else's name without their consent.

Sources:

• Opinion: Vidal v. Elster, 602 U.S. 286 (2024)
• Also consulted: Mayer Brown, "US Supreme Court Decision Alert: Vidal v. Elster, No. 22-704" (June 2024); Brown Rudnick, "Supreme Court: Ban on Registering Someone Else's Name as a Trademark Withstands the First Amendment" (June 2024)

Decision: LKQ Corp. v. GM Global Technology Operations LLC, 102 F.4th 1280 (Fed. Cir. 2024) (en banc) — U.S. Court of Appeals for the Federal Circuit, decided May 21, 2024.

The holding. Sitting en banc for the first time in a patent case since 2018, the Federal Circuit threw out the Rosen-Durling test that had governed design-patent obviousness for more than forty years. Under that test, a challenger first had to find a single prior-art design that was "basically the same" as the claimed design; if none existed, the obviousness inquiry stopped there. The court held that test was improperly rigid and inconsistent with the Supreme Court's flexible approach to obviousness in KSR. Design patents must now be judged under the same flexible obviousness framework as utility patents: a design can be obvious based on a combination of prior-art references, judged from the perspective of an ordinary designer, without first clearing the single-reference hurdle.

What it means. This is the most consequential design-patent decision in a generation. Design patents — on car fenders, phone shapes, furniture, packaging — were historically hard to invalidate on obviousness grounds, and that durability was part of their value. LKQ changes the calculus on both sides. Patent owners should expect more obviousness challenges, including at the PTAB, and should build their portfolios and their prosecution records with that in mind: document the design choices, the problems solved, and the commercial success tied to the look of the product. Accused infringers and aftermarket competitors, meanwhile, have a genuinely new invalidity tool — combinations of prior designs that would previously have been barred at the threshold are now fair game. The decision also leaves open how the flexible test will be applied in practice, so the next few years of cases will matter as much as this one.

Sources:

• Opinion: LKQ Corp. v. GM Global Technology Operations LLC, 102 F.4th 1280 (Fed. Cir. 2024) (en banc)
• Also consulted: Morrison Foerster, "Federal Circuit Overrules Obviousness Test for Design Patents" (May 23, 2024); Ballard Spahr, "Full Federal Circuit Eliminates 'Improperly Rigid' Tests for Design Patent Obviousness" (May 2024)

Decision: Abitron Austria GmbH v. Hetronic International, Inc., 600 U.S. 412 (2023) — U.S. Supreme Court, decided June 29, 2023.

The holding. The Lanham Act, the federal trademark statute, does not reach infringing conduct that happens entirely abroad. Hetronic, a U.S. company, sued a former European distributor that was selling look-alike remote controls for heavy machinery in Europe. A jury had awarded Hetronic roughly $96 million, nearly all of it for foreign sales. The Supreme Court vacated that award, holding that the Act's infringement provisions apply only to conduct where the use of the mark in commerce is domestic — in practice, where the infringing use itself occurs in the United States. Foreign sales, even of goods that copy a U.S. brand, are outside the statute's reach unless the infringing use itself is domestic.

What it means. For U.S. brand owners, the decision is a blunt reminder that a U.S. trademark registration is not a worldwide injunction. If the counterfeiting or copying is happening overseas, the remedy has to be found overseas — through foreign trademark registrations, foreign courts, customs enforcement, or contractual controls on distributors. For defendants, the case limits exposure in U.S. litigation: damages must be tied to domestic infringing use, not to a global sales figure. And for companies negotiating distribution agreements, it raises the stakes on the contract itself — territory, trademark use, and post-termination obligations — because once a distributor goes rogue abroad, U.S. trademark law may no longer be the tool that stops it.

Sources:

• Opinion: Abitron Austria GmbH v. Hetronic International, Inc., 600 U.S. 412 (2023)
• Also consulted: Akerman LLP, "The Supreme Court Limits the Extraterritorial Application of the Lanham Act" (July 10, 2023)

Decision: Jack Daniel's Properties, Inc. v. VIP Products LLC, 599 U.S. 140 (2023) — U.S. Supreme Court, decided June 8, 2023 (unanimous).

The holding. VIP Products sold a squeaky dog toy shaped like a Jack Daniel's bottle, relabelled "Bad Spaniels" with the line "The Old No. 2 On Your Tennessee Carpet." The Supreme Court held that the First Amendment does not protect that use from a trademark claim. The key distinction was how the mark was used: VIP was not merely commenting on Jack Daniel's in an expressive work — it was using the parody as the brand name for its own product, a source identifier in the ordinary sense of trademark law. The Court therefore refused to apply the special First Amendment threshold test from Rogers v. Grimaldi, which shields expressive works unless they are artistically irrelevant or explicitly misleading. It also rejected the argument that the toy's use was "noncommercial" and therefore exempt from a dilution claim, because the parody was being used to sell the toy itself. The case went back to the lower courts to decide likelihood of confusion under the ordinary trademark test.

What it means. The decision narrows, but does not eliminate, the parody defense. A joke about a brand in a song, a film, or a piece of commentary still gets First Amendment breathing room. But once the joke becomes the brand — the name on the package that tells consumers whose product this is — ordinary trademark law applies, and the question is simply whether consumers are likely to be confused. Brand owners should take note: a parody product that borrows your trade dress is now a much more straightforward enforcement target. And businesses that build products around a parody should get a clearance opinion first, because "it's a joke" is no longer a reliable defense when the joke is doing the work of a trademark.

Sources:

• Opinion: Jack Daniel's Properties, Inc. v. VIP Products LLC, 599 U.S. 140 (2023)
• Also consulted: Foley & Lardner, "Supreme Court's Jack Daniel's Decision Clarifies First Amendment Parody Defense In Trademark Infringement Cases" (June 2023)

Decision: Amgen Inc. v. Sanofi, 598 U.S. 594 (2023) — U.S. Supreme Court, decided May 18, 2023 (unanimous).

The holding. Amgen's patents claimed an entire class of antibodies defined by their function: binding to a particular spot on the PCSK9 protein and blocking it from interfering with cholesterol removal. The specification disclosed 26 specific antibodies and two methods for finding more — generating candidates and testing them, and swapping amino acids in a known antibody and testing the result. The Supreme Court held the claims invalid for lack of enablement. A patent that claims a whole class, the Court said, must teach a skilled person how to make and use the whole class, and Amgen's methods amounted to little more than a research assignment: generate candidates, test them, and see what works. The Court stressed it was not changing the law, only applying a principle as old as the patent system — the broader the monopoly claimed, the more the specification must teach.

What it means. Amgen is now the first case cited in almost every enablement challenge to a functionally defined genus claim, in biotech and beyond. Patent owners drafting broad claims should assume the disclosure will be measured against the full scope of what is claimed, not just against the examples given. That means more working examples across the claimed range, a structural feature that ties the class together, or narrower claims that match what was actually demonstrated. For defendants, Amgen supplies a straightforward framework: if the specification leaves the skilled reader to hunt through trial and error to find the claimed embodiments, the claim is vulnerable. And for prosecutors, the decision argues for filing early and often — with continuations that claim what the data actually supports as the science develops.

Sources:

• Opinion: Amgen Inc. v. Sanofi, 598 U.S. 594 (2023)
• Also consulted: Finnegan, "SCOTUS Clarifies Enablement Requirement" (Aug. 18, 2023); Finnegan, "Highlights of US Patent Law in the Life Sciences in 2023"; Mayer Brown, "US Supreme Court Decision Alert: Amgen Inc. v. Sanofi, No. 21-757" (May 2023)

Decision: Juno Therapeutics, Inc. v. Kite Pharma, Inc., 993 F.3d 1354 (Fed. Cir. 2021) — U.S. Court of Appeals for the Federal Circuit, decided August 26, 2021.

The holding. The Federal Circuit threw out a jury verdict of roughly $1.2 billion against Kite Pharma, holding that Juno's patent on cancer-fighting CAR-T cells lacked adequate written description. The patent claimed a broad genus of chimeric antigen receptors defined by what they do — bind to a chosen target — but disclosed only two examples and no amino-acid sequence for either. The court explained that to claim a genus defined by function, a patent must either disclose a representative number of species in that genus or describe structural features shared by its members, so that a skilled reader can recognize what falls inside the claim. Two unnamed examples covering a universe the court described as running into the millions of billions did neither, so the claims were invalid.

What it means. Juno is the Federal Circuit's clearest warning that a pioneering invention does not entitle its owner to claim every way of achieving the same result. The case sits alongside the Supreme Court's later decision in Amgen v. Sanofi (see No. 5 below) as a two-part lesson on genus claims: written description and enablement both demand disclosure commensurate with claim scope. For life-sciences patentees, the practical answer is to file with more examples, more sequences, and narrower fallback claims that track what was actually made. For accused infringers, a patent that claims a whole functional class on the strength of a handful of examples is a strong invalidity candidate — and, as Juno shows, that argument can be worth more than a billion dollars.

Sources:

• Opinion: Juno Therapeutics, Inc. v. Kite Pharma, Inc., 993 F.3d 1354 (Fed. Cir. 2021)
• Also consulted: Snell & Wilmer, "Federal Circuit Erases Juno's $1 Billion Judgment by Invalidating Patent for Inadequate Written Description" (Aug. 27, 2021); Wolf Greenfield, "Kite Flies Away With CAR-T Patent Challenge Win Based on Written Description Battle" (2021)

Decision: United States v. Arthrex, Inc., 594 U.S. 1 (2021) — U.S. Supreme Court, decided June 21, 2021 (5–4 on the constitutional question).

The holding. The way the Patent Trial and Appeal Board (PTAB) was set up violated the Constitution's Appointments Clause. Administrative patent judges, who were appointed by the Secretary of Commerce, could issue final decisions cancelling patents with no review by any presidentially appointed officer. The Court held that judges wielding that kind of unreviewable power had to be principal officers, appointed by the President and confirmed by the Senate. But rather than dismantle the Board, the Court fixed the problem narrowly: it made every final PTAB decision in an inter partes review subject to review by the Director of the Patent and Trademark Office, who is presidentially appointed. The Board itself, and inter partes review as a proceeding, survived intact.

What it means. Arthrex did not end PTAB challenges — it added a new layer to them. Patent owners who lose at the Board now have a further administrative step: asking the Director to review the decision before going to the Federal Circuit. That review is discretionary, and in practice it is granted sparingly, but it is a real strategic option, particularly where a Board decision turns on a policy question or an issue the Director has addressed before. For petitioners, the decision is a caution that a favorable Board ruling is no longer quite as final as it once was. And for everyone litigating in parallel in district court and at the PTAB, the Director-review step is one more timing consideration to build into the case plan.

Sources:

• Opinion: United States v. Arthrex, Inc., 594 U.S. 1 (2021)
• Also consulted: Venable LLP, "Supreme Court Holds That Authority Exercised by Administrative Patent Judges in IPRs Is Unconstitutional and Provides for Director Review of IPR Decisions as a Remedy" (June 2021); Snell & Wilmer, "Supreme Court Holds that PTAB Judges Are Unconstitutionally Appointed" (June 25, 2021)

Decision: Google LLC v. Oracle America, Inc., 593 U.S. 1 (2021) — U.S. Supreme Court, decided April 5, 2021 (6–2).

The holding. Google's reuse of about 11,500 lines of Java declaring code — the part of Oracle's Java platform that lets programmers call up functions by name — in building the Android operating system was fair use. The Court treated the declaring code as a functional interface, more like a method of operating a system than like creative expression, and therefore entitled to only thin copyright protection. Google had taken only what it needed so that programmers who already knew Java could write apps for Android, and the Court found that use transformative: it created a new platform for a different market rather than serving as a substitute for Java itself. Because fair use decided the case, the Court left open the question whether APIs are copyrightable at all.

What it means. For software companies, the decision draws a practical line between the creative code that does the work and the interface that lets people use it. Reimplementing an interface so that existing developers and existing code can move to a new platform is far safer after this ruling than it was before — but the protection is not unlimited. The Court weighed how much was taken, why it was taken, and whether the new use displaced the original's market. Companies that copy an API to build a competing product in the same market, rather than to enable interoperability in a new one, should not read this case as a green light. And for copyright owners, the decision is a reminder that the strongest protection attaches to the implementing code, not to the names and structure of the interface.

Sources:

• Opinion: Google LLC v. Oracle America, Inc., 593 U.S. 1 (2021)
• Also consulted: Wiley Rein LLP alert, "Supreme Court Determines Copying of Software API Can Constitute Fair Use" (Apr. 2021)

Decision: Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 586 U.S. 123 (2019) — U.S. Supreme Court, decided January 22, 2019 (unanimous).

The holding. A sale of an invention can trigger the patent law's on-sale bar even if the buyer is bound by confidentiality and the public never learns what the invention is. Helsinn, a Swiss drug maker, had licensed a nausea drug to a marketing partner under a confidentiality agreement more than a year before it filed for a patent on the drug's dose. When a generic maker later challenged the patent, the Supreme Court held that the earlier deal counted as a sale under the America Invents Act (AIA). The AIA's added phrase — that an invention must be "otherwise available to the public" — did not change the long-standing rule that a commercial sale need not disclose the invention to the public to start the one-year clock.

What it means. The on-sale bar is a trap that has nothing to do with whether competitors could have learned about your invention. What matters is whether you commercialized it — or offered to — more than a year before filing. A licensing deal, a distribution agreement, or a supply contract can all count, even when the technical details stay behind a confidentiality clause. For patent owners, the lesson is to calendar the filing deadline from the first commercial discussion, not from the first public disclosure. For accused infringers, it is worth digging into a patentee's early business dealings: a confidential agreement signed years before the patent application may be the invalidity argument that wins the case.

Sources:

• Opinion: Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 586 U.S. 123 (2019)
• Also consulted: Marshall, Gerstein & Borun LLP alert, "Supreme Court Confirms Secret Sales Can Invalidate Patents" (Jan. 24, 2019); Faegre Drinker, "Supreme Court Decides Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc." (Jan. 22, 2019)