Supreme Court Patent Cases

Although some have called the Federal Circuit the "Supreme Court of Patents," the real Supreme Court has heard quite a number of patent cases, especially in recent years. Here is a list in reverse chronological order (back to 1952). Deciding which cases are "patent cases" involves some judgment calls: I am including things like Hatch-Waxman cases, patent-antitrust cases, and cases involving Federal Circuit jurisdiction, but not cases where the legal issue before the Court is likely of little interest to patent scholars (e.g., I am omitting Unitherm v. Swift-Eckrich (2006) and Nelson v. Adams (2000)). Click the case link for details; my brief notes next to each case are obviously not comprehensive summaries. Authorship is included for the most recent opinions. Please contact me ( with corrections.
  1. Amgen v. Sanofi (2023): The claims at issue—covering a broad genus of all antibodies that bind to a particular receptor—are invalid for lack of enablement (9-0 Gorsuch).
  2. Minerva Surgical v. Hologic (2021): Assignor estoppel applies only when the assignor’s claim of invalidity contradicts explicit or implicit representations the assignor made in assigning the patent (5-4 Kagan, Alito dissents, Barrett dissents).
  3. United States v. Arthrex, Smith & Nephew v. Arthrex & Arthrex v. Smith & Nephew (2021): Under the Appointments Clause, because PTAB judges were not appointed and confirmed by the Senate, their decisions should be reviewable by the USPTO director (5-4 Roberts, Gorsuch concurs/dissents, Breyer concurs/dissents, Thomas dissents).
  4. Thryv v. Click-To-Call Technologies (2020): § 314(d) doesn't allow appeal of the PTAB's decision to institute IPR upon finding that § 315(b)'s time bar did not apply (7-2 Ginsburg, Gorsuch dissents).
  5. Peter v. NantKwest (2019): The PTO cannot recover the salaries of its legal personnel under Section 145 of the Patent Act (9-0 Sotomayor).
  6. Return Mail v. USPS (2019): The federal government is not a “person” capable of petitioning the PTAB to institute patent review proceedings under the AIA (6-3 Sotomayor, Breyer dissents).
  7. Helsinn v. Teva (2019): The AIA did not change the meaning of "on sale" in § 102, so a secret commercial sale still counts as prior art (9-0 Thomas). Argument preview and recap.
  8. WesternGeco v. ION Geophysical (2018): Extraterritorial lost profits are available under 271(f)(2) (7-2 Thomas, Gorsuch dissents).
  9. Oil States Energy v. Greene's Energy (2018): IPR doesn't violate Article III or the 7th Amendment (7-2 Thomas, Gorsuch dissents).
  10. SAS Institute v. Lee (2018): When the PTO institutes IPR it must decide the patentability of all of the claims petitioner has challenged (5-4 Gorsuch, Ginsburg & Breyer dissent).
  11. Sandoz v. Amgen and Amgen v. Sandoz (2017): Under the BPCIA, a biosimilar applicant may provide notice of commercial marketing prior to obtaining licensure, and failure to participate in the "patent dance" is not enforceable by injunction under federal law (but perhaps is under state law) (9-0 Thomas, Breyer concurs).
  12. TC Heartland v. Kraft Food (2017): For purposes of the patent venue statute, a corporation only "resides" in its state of incorporation (8-0 Thomas). Opinion summary.
  13. Impression v. Lexmark (2017): Authorized foreign and conditional sales exhaust U.S. patent rights (7-1 Roberts, Ginsburg concurs/dissents). Argument recap; opinion analysis; more analysis.
  14. SCA Hygiene v. First Quality Baby Products (2017): Laches cannot be invoked as a defense against a claim for damages brought within the six-year limitations period of § 286 (7-1 Alito, Breyer dissents).
  15. LifeTech v. Promega (2017): Supplying a single component for manufacture abroad does not give rise to § 271(f)(1) liability (7-0 Sotomayor, Alito concurs).
  16. Samsung v. Apple (2016): The "article of manufacture" for design patent damages can be less than the end product sold to consumers (8-0 Sotomayor).
  17. Cuozzo v. Lee (2016): The PTO may use broadest reasonable construction for IPRs, and its decision on whether to institute an IPR is unreviewable (8-0 Breyer, Thomas concurs, Alito concurs/dissents). Opinion analysis.
  18. Halo v. Pulse and Stryker v. Zimmer (2016): Seagate test for enhanced damages under § 284 is unduly rigid (8-0, Roberts, Breyer concurs). Opinion analysis.
  19. Kimble v. Marvel (2015): The Court declined to overrule Brulotte, which held post-patent-expiration royalties unlawful per se (6-3, Kagan, Alito dissents).
  20. Commil v. Cisco (2015): A defendant’s belief regarding patent validity is not a defense to an induced infringement claim under §271(b) (6-2, Kennedy, Scalia dissents).
  21. Teva v. Sandoz (2015): Review of factual matters in claim construction is for clear error; ultimate inquiry is de novo (7-2, Breyer, Thomas dissents). Argument preview and recap; opinion summary.
  22. Alice v. CLS Bank (2014): Adding a generic computer to the abstract idea of intermediated settlement does not make it patentable subject matter (9-0, Thomas, Sotomayor concurs).
  23. Nautilus v. Biosig (2014): Claims are invalid for indefiniteness if, in light of the specification and prosecution history, they fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention (9-0, Ginsburg).
  24. Limelight v. Akamai (2014): No §271(b) inducement liability when no one has directly infringed under §271(a) or other statute (9-0, Alito).
  25. Highmark v. Allcare (2014): All aspects of district court's exceptional-case determination for fee-shifting should be reviewed for abuse of discretion (9-0, Sotomayor).
  26. Octane Fitness v. Icon Health & Fitness (2014): In determining which cases are "exceptional" and deserve fee shifting under § 285, district courts should consider totality of the circumstances rather than rigid subjective bad faith / objectively baseless framework (9-0, Sotomayor).
  27. Medtronic v. Mirowski (2014): When a licensee-in-good-standing sues for declaratory judgment of non-infringement, the patentee (as usual) bears the burden of persuasion on infringement (9-0, Breyer).
  28. FTC v. Actavis (2013): "Pay-for-delay" pharmaceutical patent litigation settlements are subject to antitrust scrutiny under the rule of reason (5-3, Breyer, Roberts dissents). See my argument recap and preview.
  29. AMP v. Myriad (2013): Naturally occurring isolated DNA is not patentable subject matter; cDNA is (9-0, Thomas, Scalia concurs).
  30. Bowman v. Monsanto (2013): Patent exhaustion does not allow farmer to reproduce subsequent generations of patented seeds (9-0, Kagan). Pre-argument commentary.
  31. Gunn v. Minton (2013): Applying Grable, "state legal malpractice claims based on underlying patent matters will rarely, if ever, arise under federal patent law for purposes of §1338(a)" (9-0, Roberts). Argument preview.
  32. Kappos v. Hyatt (2012): No limits on new evidence in § 145 proceedings (9-0, Thomas, Sotomayor concurs).
  33. Caraco v. Novo (2012): Generics may bring counterclaim to correct use code (9-0, Kagan, Sotomayor concurs).
  34. Mayo v. Prometheus (2012): Diagnostic method patent is not patentable subject matter because it claims a law of nature (9-0, Breyer).
  35. Microsoft v. i4i (2011): Invalidity must be proved by clear and convincing evidence (8-0, Sotomayor, Breyer concurs, Thomas concurs in judgment). Does it matter?
  36. Stanford v. Roche (2011): Bayh-Dole does not automatically confer title in federally funded inventions in the contractor (7-2, Roberts, Sotomayor concurs, Breyer dissents).
  37. Global-Tech v. SEB (2011): Induced infringement under § 271(b) requires knowledge that induced acts constitute patent infringement (8-1, Alito, Kennedy dissents).
  38. Bilski v. Kappos (2010): Method of hedging risk in commodities trading is an abstract idea and thus not patentable subject matter under § 101. Machine-or-transformation test is not the sole test for determining whether a process is patent-eligible (9-0 for result, but complicated voting: Kennedy majority/plurality, Stevens concurs in judgment, Breyer concurs in judgment).
  39. Carlsbad v. HIF (2009): Fed. Cir. has jurisdiction over appeal from dist. ct. order remanding case to state court after declining to exercise supplemental jurisdiction over state-law claims (9-0, Thomas, Stevens concurs). (This one is barely a patent case.)
  40. Quanta v. LG (2008): Patent exhaustion applies to method patents, which are exhausted by the sale of the item embodying the method (9-0, Thomas).
  41. Microsoft v. AT&T (2007): Supplying software that is copied abroad is not supplying a component under § 271(f) (7-1, Ginsburg, Alito concurs, Stevens dissents).
  42. KSR v. Teleflex (2007): Pedal assembly patent is obvious based on "common sense" (9-0, Kennedy).
  43. MedImmune v. Genentech (2007): All-the-circumstances test for a declaratory judgment action of patent invalidity does not require a licensee to breach the license (8-1, Scalia, Thomas dissents).
  44. LabCorp v. Metabolite (2006): Breyer, Stevens, and Souter dissent from DIG in § 101 medical methods case.
  45. eBay v. MercExchange (2006): Four-factor test for a permanent injunction applies in patent cases (9-0, Thomas, Roberts concurs, Kennedy concurs).
  46. Ill. Tool Works v. Indep. Ink (2006): Mere fact that a tying product is patented does not support a presumption of market power in antitrust law (8-0, Stevens).
  47. Merck v. Integra (2005): Use of patented compounds in preclinical studies is protected under § 271(e)(1) (9-0, Scalia).
  48. Holmes Group v. Vornado (2002): Federal Circuit does not have jurisdiction over a case in which patent law is only raised in a counterclaim (9-0 for judgment, Scalia, Stevens concurs in part, Ginsburg concurs in judgment).
  49. Festo v. Shoketsu (2002): Prosecution history estoppel creates a rebuttable presumption against infringement under the doctrine of equivalents, not an absolute bar (9-0, Kennedy).
  50. J.E.M. v. Pioneer Hi-Bred (2001): Newly developed plant breeds are patentable subject matter under § 101 (6-2 Thomas, Scalia concurs, Breyer dissents).
  51. Fla. Prepaid v. College Savings Bank (1999): Congress does not have authority to abrogate state sovereign immunity from patent infringement claims (5-4 Rehnquist, Stevens dissents).
  52. Dickinson v. Zurko (1999): Federal Circuit must use APA's "substantial evidence" standard when reviewing PTO factfinding (6-3 Breyer, Rehnquist dissents).
  53. Pfaff v. Wells Elecs. (1998): Marketing triggers on-sale period even if invention is not yet reduced to practice (9-0 Stevens).
  54. Warner-Jenkinson v. Hilton Davis (1997): Affirms (and explains) continuation of doctrine of equivalents (9-0 Thomas, Ginsburg concurs).
  55. Markman v. Westview Instruments (1996): Claim construction is a matter for the court (9-0 Souter).
  56. Asgrow v. Winterboer (1995): Discusses the patent-like protection under the PVPA (8-1 Scalia, Stevens dissents).
  57. Cardinal Chem. v. Morton (1993): Affirmance of a finding that a patent is not infringed is not a sufficient reason for vacating a declaratory judgment that it is invalid (mostly 9-0 Stevens, Scalia concurs).
  58. Eli Lilly v. Medtronic (1990): § 271(e)(1) exempts from infringement the use of patented inventions needed to obtain marketing approval of medical devices (6-2 Scalia, Kennedy dissents).
  59. Bonito Boats v. Thunder Craft Boats (1989): State statute protecting public domain boat hulls is preempted by federal patent law (9-0 O'Connor).
  60. Christianson v. Colt (1988): Federal Circuit lacks jurisdiction where patent law is not necessary to the overall success of a well-pleaded claim, even if it is necessary to one theory under that claim (9-0 Brennan, Stevens concurs).
  61. Dennison Mfg. v. Panduit (1986): Subsidiary determinations of nonobviousness are questions of fact to which Federal Circuit must apply clearly erroneous standard of FRCP 52(a) (per curiam, Marshall dissents).
  62. Gen. Motors v. Devex (1983): Prejudgment interest should ordinarily be awarded in patent suits under § 284 (9-0 Marshall, Stevens concurs).
  63. Diamond v. Diehr (1981): Patent on process of curing rubber using a well-known mathematical equation and a computer is patentable subject matter under § 101 (5-4 Rehnquist, Stevens dissents).
  64. Dawson Chem. v. Rohm & Haas (1980): Selling unpatented chemical with instructions to apply by patented method and refusing to license to competitors is not patent misuse (5-4 Blackmun, White dissents). (Long discussion of contributory infringement.)
  65. Diamond v. Chakrabarty (1980): Genetically engineered bacterium is patentable subject matter under § 101 (5-4 Burger, Brennan dissents).
  66. Aronson v. Quick Point Pencil (1979): Federal patent law does not preempt state contract law where enforcement is not inconsistent with purposes of patent laws.
  67. Parker v. Flook (1978): Method for updating alarm limits during catalytic conversion in which only novel feature is mathematical formula is not patentable under § 101.
  68. Sakraida v. Ag Pro (1976): Patent on removing manure from barn floor is obvious.
  69. Dann v. Johnston (1976): Application for patent on automatic bank record system is obvious.
  70. Kewanee Oil v. Bicron (1974): State trade secret law is not preempted by patent law.
  71. United States v. Glaxo (1973): US may challenge patent validity when patents are raised as antitrust defense.
  72. Gottschalk v. Benson (1972): Method of decimal-to-binary conversion is not patentable under § 101.
  73. Brunette v. Kockum (1972): 28 U.S.C. § 1400(b) does not change the venue rules for suits against aliens in patent cases.
  74. Deepsouth v. Laitram (1972): § 271(a) does not proscribe making the parts of a patented machine in the US for combination abroad.
  75. Blonder-Tongue v. Univ. of Ill. (1971): Collateral estoppel prevents a patentee from suing on a patent that has been found invalid in a final merits determination.
  76. Anderson's-Black Rock v. Pavement Salvage (1969): Paving machine patent is obvious.
  77. Lear v. Adkins (1969): Licensee is not estopped from challenging patent validity.
  78. Zenith Radio v. Hazeltine (Zenith I) (1969): Injunction was warranted against patentee (part of patent pool) for excluding prospective licensee from Canadian market. See also Zenith Radio v. Hazeltine (Zenith II) (1971).
  79. Brenner v. Manson (1966): Patent application on compound with possible tumor-inhibiting effects lacks utility.
  80. United States v. Adams (1966): Battery patent not invalid for lack of novelty or obviousness.
  81. Graham v. John Deere (1966): First patent validity opinion since Patent Act of 1952, discussing obviousness (highly cited).
  82. Hazeltine v. Brenner (1965): Unpublished pending patent application is prior art.
  83. Walker Process v. Food Mach. & Chem. (1965): Enforcement of a patent procured by fraud on the PTO may violate Sherman Act § 2.
  84. Brulotte v. Thys (1964): License unenforceable to extent that it demands royalty payments after patent expiration.
  85. Aro v. Convertible Top (Aro II) (1964); Aro v. Convertible Top (Aro I) (1961): Discusses extent to which repair/reconstruction of patented convertible top is contributory infringement. See also Wilbur-Ellis v. Kuther (1964).
  86. Compco v. Day-Brite (1964) Sears, Roebuck v. Stiffel (1964): State unfair competition law cannot prevent copying of an unpatented article due to preemption by federal patent law.
  87. United States v. Singer (1963): Patent holders cannot escape the prohibitions of the Sherman Act.
  88. Sperry v. Florida (1963): Florida cannot enjoin nonlawyer from preparing and prosecuting patent applications.
  89. White Motor v. United States (1963): Tying a patented product to an unpatented one is a per se antitrust violation.
  90. Glidden v. Zdanok (1962): CCPA is an Article III court.
  91. Schnell v. Eckrich & Sons (1961); Fourco v. Transmirra (1957): Patent infringement venue statute.
  92. U.S. Gypsum v. Nat'l Gypsum (1957): Discusses claims against codefendants by patentee whose licensee agreements were antitrust violations for patent misuse.
  93. Sanford v. Kepner (1952): In an interference proceeding, where inventorship is decided against the plaintiff, the court need not reach the question of validity raised by the plaintiff.
  94. Besser Mfg. v. United States (1952): Compulsory licensing is a recognized remedy for patent-related antitrust violations; district court has discretion setting royalty rates.

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