Landmark Patent Invalidity Cases and Their Lessons

Landmark Patent Invalidity Cases and Their Lessons

Table of Contents

Introduction

Patent invalidity cases have shaped intellectual property law worldwide. Courts have examined patents for novelty, obviousness, sufficiency of disclosure, and subject-matter eligibility, leading to key rulings that influence patent litigation strategies. These cases provide valuable lessons for businesses, inventors, and attorneys, demonstrating how patents can be invalidated and the risks associated with weak patent claims.

In this article, we will discuss some of the most significant patent invalidity cases in the US, EU, and other jurisdictions, analyzing the legal reasoning behind the decisions and the lessons they offer.

1. KSR International Co. v. Teleflex Inc. (2007) – Obviousness Standard in the US

Case Summary

  • Jurisdiction: United States
  • Court: Supreme Court of the United States
  • Key Issue: Obviousness under 35 U.S.C. § 103
  • Outcome: The Supreme Court invalidated Teleflex’s patent, ruling that the invention was obvious.

Background

Teleflex sued KSR International for patent infringement over an adjustable pedal assembly with an electronic throttle control. KSR argued that the patent was invalid due to obviousness, as combining an electronic sensor with an adjustable pedal was an expected design improvement.

Court’s Ruling

The Supreme Court ruled that:

  1. Rigid application of the “Teaching, Suggestion, Motivation” (TSM) test was incorrect.
  2. A flexible, common-sense approach should be used when determining obviousness.
  3. If a solution is merely a predictable combination of existing technologies, it lacks inventive step.

Lessons Learned

Obviousness is a major ground for invalidity. Patent applicants must ensure their inventions are more than just predictable improvements.
Combining known elements must produce unexpected results to be patentable.

2. Alice Corp. v. CLS Bank International (2014) – Patent Eligibility for Software

Case Summary

  • Jurisdiction: United States
  • Court: Supreme Court of the United States
  • Key Issue: Patent eligibility of abstract ideas under 35 U.S.C. § 101
  • Outcome: The Supreme Court invalidated Alice Corp’s software patents, ruling them abstract and non-patentable.

Background

Alice Corp owned patents on a computerized financial transaction system, which reduced settlement risk. CLS Bank challenged the patents as abstract ideas, arguing that they merely implemented existing financial concepts on a computer.

Court’s Ruling

The Supreme Court applied the Mayo/Alice two-step test:

  1. Is the claim directed to an abstract idea? – Yes, the method was a fundamental financial concept.
  2. Does it include an inventive concept that transforms it into a patent-eligible application? – No, merely implementing the idea on a generic computer is not inventive.

Lessons Learned

Software patents must demonstrate a technical improvement rather than just automating existing processes.
Business methods and abstract ideas require a concrete, innovative implementation to be patentable.

3. Mayo Collaborative Services v. Prometheus Laboratories (2012) – Patent Eligibility in Biotech

Case Summary

  • Jurisdiction: United States
  • Court: Supreme Court of the United States
  • Key Issue: Whether laws of nature can be patented under 35 U.S.C. § 101
  • Outcome: The Supreme Court ruled that the patent was invalid because it covered a natural law.

Background

Prometheus Laboratories patented a method for determining optimal drug dosages based on metabolite levels in the blood. Mayo Collaborative Services challenged the patent, arguing that it was merely describing a natural law (how the body processes drugs).

Court’s Ruling

The Court ruled that:

  • The patent claimed a natural law rather than an innovative application.
  • The added steps were routine and conventional, making the claim ineligible.

Lessons Learned

Biotech and medical patents must do more than describe natural laws—they must add significant, inventive steps.
Diagnostic methods must include novel, transformative elements to be valid.

4. European Patent Office (EPO) Opposition Against Broad Institute’s CRISPR Patent (2018) – Priority Disputes

Case Summary

  • Jurisdiction: European Union
  • Court: European Patent Office (EPO)
  • Key Issue: Priority rights and sufficiency of disclosure under Article 87 EPC
  • Outcome: The Broad Institute’s CRISPR patent was revoked.

Background

The Broad Institute filed patents for CRISPR gene-editing technology in both the US and Europe. Several opponents, including biotech firms and universities, challenged the European patent’s validity, arguing that:

  • The priority claims were improperly filed.
  • The patent did not provide sufficient technical details for skilled practitioners to replicate the invention.

Court’s Ruling

  • The Broad Institute failed to list all original inventors on the priority documents, making the priority claim invalid under EPC rules.
  • Without valid priority, earlier publications became prior art, rendering the patent invalid due to lack of novelty.

Lessons Learned

Properly filing priority claims is critical for global patent protection.
European patents are more vulnerable to opposition due to strict administrative requirements.

5. Novartis v. Union of India (2013) – Evergreening and Section 3(d) of Indian Patent Act

Case Summary

  • Jurisdiction: India
  • Court: Supreme Court of India
  • Key Issue: Evergreening and incremental innovations under Section 3(d) of the Indian Patents Act
  • Outcome: Novartis’ patent on Gleevec was denied.

Background

Novartis sought a patent in India for an updated version of its leukemia drug, Gleevec. The Indian Patent Office rejected the application, citing Section 3(d), which prevents patents on minor modifications of known drugs unless they show enhanced efficacy.

Court’s Ruling

  • The Supreme Court ruled that Novartis’ changes did not provide significant therapeutic efficacy over the existing drug.
  • The patent was denied to prevent evergreening (extending a monopoly through trivial modifications).

Lessons Learned

Indian patent law requires pharmaceutical inventions to demonstrate improved efficacy, not just structural changes.
Evergreening strategies are unlikely to succeed in jurisdictions with strict patentability standards.

Why an Invalidity Search Is a High-ROI Investment

Patent Invalidity Search Report
Patent Invalidity Search Report

A well-executed invalidity search can mean the difference between:

✔ Winning vs. Losing a Patent Litigation – A single overlooked piece of prior art can make or break a case, saving millions in damages and legal fees.

✔ Gaining vs. Losing Negotiation Leverage – Invalidating a competitor’s patent before entering a licensing or infringement dispute can shift the power dynamics in your favor.

✔ Securing vs. Risking Market Freedom – Before launching a product, knowing whether an asserted patent is truly valid can prevent unnecessary licensing fees or redesign costs.

Simply put, an invalidity search is not an expense—it’s an investment with the potential for significant financial and strategic returns. However, we know that you may want to validate the quality of our work before committing to long-term projects.

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Prasad Karhad
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