March 6, 2017

Federal Circuit Court Decisions For Week Ending February 17, 2017

MPHJ Technology Investments, LLC v. Ricoh Americas Corporation, No. 2016-1243 (February 13, 2017) (Precedential) (3-0) Patent No. 8,488,173

Key point(s):

  • While provisional applications can contribute to understanding the claims, the removal of information or absence of information from the final application once seen in the provisional application, also contributes understanding of the intended scope of the final application.

Qualtrics, LLC v. Opinionlab, Inc., No. 2016-1177 (February 13, 2017) (Nonprecedential) Patent No. 8,041,805

Key point(s):

  • Where two experts disagree as to the interpretation of a disclosure, strong deference is given to the Board’s credibility determinations as to which expert is correct.

In re Lockwood., No. 2016-1371 (February 13, 2017) (Nonprecedential) Patent No. 7,010,508

Key point(s):

  • The PTAB is entitled to focus on portions of claim limitation at issue rather than those parts of the Examiner’s construction that were not in dispute.
  • An appeal court will not hear on issues on appeal not clearly raised in proceedings below.

PersonalWeb Technologies, LLC. v. Apple, Inc., No. 2015-1174 (February 14, 2017) (Precedential) (3-0) Patent No. 7,802,310

Key point(s):

  • The PTAB needs to provide reasoning to meet the governing legal standards- to enable judicial review and to avoid judicial displacement of agency authorization.

Wundaformer, LLC, v. Flex Studios, Inc., No. 2016-1301 (February 16, 2017) (Nonprecedential) Patent No. 8,602,953

Key point(s):

  • The mutual exclusivity of two positions does not require that those two positions be exact opposites in every respect. Instead, it requires only a single incompatible characteristic.

MetalCraft of Mayville,Inc. v. The Toro Company, Nos. 2016-2433, 2016-2514 (February 16, 2017) (Precedential) (3-0) Patent No. 8,186,475

Key point(s):

  • It would be improper to import a functional requirement into a separate “entire body” limitation where the specification and claims themselves clearly make a distinction.

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