August 8, 2025

Federal Circuit Summary for Week Ending August 8, 2025

In re BAC IP B.V., No. 2024-2124 (Aug. 5, 2025) (nonprecedential); U.S. Patent Application No. 16/282,082

Key points:

  • For genus claims, the written description requirement generally “requires the disclosure of either a representative number of species … or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.”
  • “The broad claim is supported by only one disclosed [species]” and thus fails to meet the written description requirement.

SunSpec Alliance v. Tigo Energy, Inc., Nos. 2023-1741, 2023-1742 (Aug. 5, 2025) (nonprecedential); U.S. Patent Nos. 8,933,321, 10,256,770

Key points:

  • Claim interpretation needs to “giv[e] effect to all terms in the claim” and be consistent with the specification and prosecution history.
  • Failure by the Board to address an argument that prior art combinations disclose a limitation can require vacatur and remand.

American Science and Engineering, Inc. v. Stewart, No. 2023-2127 (Aug. 7, 2025) (nonprecedential); U.S. Patent No. 7,400,701

Key points:

  • The Federal Circuit will vacate when the Board’s reasoning cannot be “reasonably discerned” from its written decision.
  • Citing a petition or expert testimony without making the Board’s own findings does not satisfy its duty to explain its reasoning.

In re Healy, No. 2024-2311 (Aug. 7, 2025) (nonprecedential); U.S. Patent Application No. 15/171,621

Key points:

  • Improvements to the abstract idea itself, not to computer technology, do not satisfy Step 2A of the Alice test.
  • Additional elements reciting generic computer components at a high level of generality and in functional terms cannot supply an “inventive concept” (Step 2B of the Alice test).

Stryker European Operations Holdings LLC v. OsteoMed LLC, Nos. 2023-2397, 2023-2398 (Aug. 7, 2025) (nonprecedential); U.S. Patent Nos. 9,078,713, 10,993,751

Key point:

  • A motivation to combine prior art can exist “to secure some benefits at the expense of others.”

Mondis Technology Ltd. v. LG Electronics Inc., Nos. 2023-2117, 2023-2116 (Aug. 8, 2025) (precedential) (3-0); U.S. Patent No. 7,475,180

Key point:

  • A patent can be held invalid for lack of written description support based solely on the face of the patent specification.

Related Team:

Shuya Duan

Associate