Publications & Media

Federal Circuit Court Decisions For Week Ending April 7, 2017

Asetek Danmark A/S v. CMI USA Inc., FKA Cooler Master USA, Inc., Cooler Mastr Co., Ltd., No. 2016-1026, 2016-1183 (April 3, 2017)(Precedential 3-0) Patent Nos. 8,240,362 and 8,245,764

Key points:

  • A patentee’s per-unit profit can be a factor in a hypothetical negotiation for a reasonable royalty calculation without conflating reasonable royalty and lost-profit damages.
  • A component of a patented device can be “removably attached” if it can be detached so the device will function again if the component is reattached.

Medtronics, Inc. v. Mirowski Family Ventures, LLC., Nos. 2015-1996, 2015-2074, 2015-2075 (April 4, 2017)(Nonprecedential) Patent No. RE38,119

Key point(s):

  • The 14-day requirement in Fed. R. Civ. P. 54(d)(2) within which a claim for attorney’s fees must be made does not apply to a claim for attorney’s fees based on contract.

Novartis AG, v. Noven Pharma. Inc., Nos. 2016-1678, 2016-1679 (April 4, 2017) (Precedential 3-0) Patent Nos. 6,316,023 and 6,335,031

Key point(s):

  • The Federal Circuit’s statement in In re Baxter that the USPTO “ideally should not arrive at a different conclusion” as a district court if it faces the same evidence and argument as the district court is not a mandate but a recognition by the court that Congress has provided a separate review mechanism before the USPTO with its own standards.
  • In an appeal from the PTAB, the Federal Circuit cannot reweight expert evidence and give greater weight to the expert evidence than did the PTAB.

Wasica Finance GMBH, v. Continental Automotive Systems, Inc., Nos. 2015-2078, 2015-2079, 2015-2093, 2015-2096 (April 4, 2017)(Precedential 3-0) Patent No. 5,602,524

Key point(s):

  • A claim term has its plain and ordinary meaning unless the words of the claim, the specification, or the prosecution history support a more narrow construction.
  • If the specification and claims use two different terms interchangeably, this equates the two terms for claim construction purposes.

The Medicines Company v. Mylan, Inc., Nos. 2015-1113, 2015-1115, 2015-1181 (April 6, 2017)(Precedential 3-0) Patent Nos. 7,582,727 and 7,598,343

Key point(s):

  • A product claim is limited to a process of forming the product if the specification has a definition that includes the process of forming the product element.
  • If the specification defines a claim term (e.g., the defined term in quotation marks, followed by ‘refers to’ or ‘as defined herein’), other claim terms that depart from the definition lack clear expression of intent necessary for a patentee to act as its own lexicographer.