In re Chaplin, No. 2017-1478 (February 12, 2018) (nonprecedential) Patent Appl. No. 13/588,217

Key point(s):

• Under the “one-way” test for obviousness-type double patenting, an applied-for patent claim will not be allowed if the applied-for claim is obvious over the issued patent claims, absent a terminal disclaimer.

In re Hodges, No. 2017-1434 (February 12, 2018) (precedential) (2-1) Patent Appl. No. 12/906,222

Key point(s):

• The Board cannot construe the claims so broadly that its constructions are unreasonable under general claim construction principles.
• The Board must explain its factual conclusions to enable the Federal Circuit to verify readily whether those conclusions are indeed supported by substantial evidence contained within the record.

Aatrix Software, Inc. v. Green Shades Software, Inc., No. 2017-1452 (February 14, 2018) (precedential) (2-1) (Patent Nos. 7,171,615 and 8,984,393)

Key Point(s):

• While the ultimate determination of eligibility under § 101 is a question of law, there can be subsidiary fact questions which must be resolved en route to the ultimate legal determination.
• A complaint may contain factual allegations regarding patent eligible subject matter that, when accepted as true, prevent dismissal pursuant to Rule 12(b)(6).

Think Products, Inc. v. Acco Brands Corporation, Nos. 2017-1360, 2017-1361 (February 14, 2018) (nonprecedential) U.S. Patent Nos. 8,717,758 and 8,837,144

Key Point(s):

• Claim construction is an issue of law reviewed de novo, with any underlying factual determinations made by the Board reviewed for substantial evidence.
• Decisions of the Board are set aside only if they are “arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law” or “unsupported by substantial evidence.”

In Re Khan, No. 2017-2207 (February 15, 2018) (nonprecedential) U.S. Patent Appl. No. 14/509,949

Key Point(s):

• The recapture rule bars a patentee from recapturing subject matter, through reissue, that the patentee intentionally surrendered during the original prosecution in order to overcome the prior art.

Automated Tracking Solutions, LLC v. The Coca-Cola Company, No. 2017-1494 (February 16, 2018) (nonprecedential) U.S. Patent Nos. 7,551,089, 7,834,766, 8,842,013, and 8,896,449

Key Point(s):

• To survive a judgment on the pleadings under step two of Alice, a complaint must contain allegations that, when taken as true, at least create a factual dispute.

Snap-On Incorporated v. Milwaukee Electric Tool Corp., No. 2017-1305, 2017-1306, 2017-1307, 2017-1330, 2017-1331, 2017-1332 (February 16, 2018) (nonprecedential) U.S. Patent Nos. 7,554,290, 7,994,173, 7,999,510

Key Point(s):

• The harmless error rule applies to appeals from the Board.