Fresh From the Bench: Latest Precedential Patent Cases

CASE OF THE WEEK

Mitek Systems Inc. v. United Services Automobile Association, Appeal No. 2023-1687 (Fed. Cir. June 12, 2025)

In our Case of the Week, the Federal Circuit examined the limits of declaratory judgment jurisdiction for a software supplier whose customers had been accused of infringing certain mobile banking patents.  Appellant Mitek provides automatic image capture technology to banks for incorporation into mobile check deposit applications, against which USAA had sought to enforce its patents through a series of demand letters and lawsuits.  In a detailed opinion, the Federal Circuit rejected Mitek’s bid for declaratory judgment of non-infringement, and affirmed the district court’s dismissal of Mitek’s case for lack of subject matter jurisdiction.

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ALSO THIS WEEK

United Services Automobile Association v. PNC Bank N.A., Appeal Nos. 2023-1639, 2023-1866, 2025-1276, 2025-1341 (Fed. Cir. June 12, 2025)

In this appeal from the United States District Court for the Eastern District of Texas, the Federal Circuit reversed the district court’s grant of summary judgment of patent eligibility under 35 U.S.C. § 101, holding that the patent at issue relating to a mobile check deposit system was directed to an abstract idea and did not contain an inventive concept.  The subject patent specifically claimed a system for allowing a customer to deposit a check using a customer’s handheld mobile device, and included the steps for carrying out this process, including instructing the customer to take a photo of the check, using a wireless network to transmit a copy of the photo, and having the configured system check for errors.  In reversing the district court’s grant of summary judgment of patent eligibility, the Federal Circuit reasoned that the claim merely recited routine data collection and analysis steps that have been traditionally performed by banks and people depositing checks, and that the addition of a handheld mobile device to carry out these routine steps did not make the claim any less abstract.  The Court further reasoned that computer-mediated implementation of routine or conventional activity was not enough to provide an inventive concept sufficient to transform the abstract idea into a patent-eligible application.

The opinion can be found here.

Agilent Technologies, Inc. v. Synthego Corp., Appeal Nos. 2023-2186, -2187 (Fed. Cir. June 11, 2025)

In Agilent’s appeal from inter partes reviews finding all claims of two of its CRISPR-related patents unpatentable, the Federal Circuit affirmed.   The Court rejected Agilent’s argument—relying on the Supreme Court’s recent decision in Amgen Inc. v. Sanofi, 598 U.S. 594 (2023)—that an anticipatory prior art patent application failed to satisfy the enablement requirement of 35 U.S.C. § 112.   The Federal Circuit distinguished Amgen, explaining that Amgen concerned whether a patent satisfied § 112 for purposes of determining its own validity.  By contrast, when assessing enablement of the prior art for anticipation purposes under § 102, “only a single embodiment” of the reference needs to be enabled.  Moreover, the Court agreed with the Board that the prior art did not require “painstaking experimentation” but rather, “a person of ordinary skill in the art understood ‘how the different elements of a CRISPR/Cas system are used and function together, including the role of gRNA’” because, inter alia, the prior art “did not ‘disclose any new techniques for synthesizing chemically-modified gRNAs.’”  The Court also found that substantial evidence supported the Board’s determinations that the prior art references disclosed the claimed gRNA functionality, and that a skilled artisan would have been motivated to combine them to arrive at the claimed subject matter.

The opinion can be found here.

Fraunhofer-Gesellschaft Zur Forderung Der Angewandten Forschung E.V. v. Sirius XM Radio, Inc., Appeal No. 2023-2267 (Fed. Cir. June 9, 2025)

In a second trip to the Federal Circuit, the Court reversed the district court for a second time.  The case involves expired patents for satellite radio.  In its first trip to the Federal Circuit, the Court reversed the district court’s decision dismissing the case for failure to state a claim.  We covered that appeal here.  On remand, the parties collectively filed thirteen motions for summary judgment.  The district court granted summary judgment to Sirius on the affirmative defense of equitable estoppel.  The Federal Circuit remanded, finding a genuine dispute of material fact as to the reliance factor.  While there was testimony about a business decision to pursue the infringing path over a non-infringing path, that evidence was inconclusive about whether it had anything to do with representations by Fraunhofer, as opposed to other business factors.  The Court reversed and remanded for the district court to resolve the other ten summary judgment motions filed by the parties, which the district court had concluded were moot following its grant of summary judgment on equitable estoppel grounds.

The opinion can be found here.

Editors:

Nika Aldrich, IP Litigation Group Leader, Schwabe

Jason A. Wrubleski, Shareholder

Contributors:

Mario E. Delegato, Associate

Jeff Liao, Associate