January 17, 2017

Federal Circuit Court Decisions For Week Ending January 6, 2017

In re Ethicon, Inc., Case No. 2015-1696 (January 3, 2017) (Precedential) (2-1) Patent No. 7,591,844

Key point:

  • An explicit teaching, suggestion, or motivation in the references is not necessary to support a conclusion of obviousness. Instead, the “normal desire of scientists or artisans to improve upon what is already generally known” is sufficient reasoning, particularly when a claimed invention involves a simple substitution of known prior art elements.

In re Van Os, Case No. 2015-1975 (January 3, 2017) (Precedential) (3-0 for Vacating Decision; 2-1 for Remanding) Patent App. No. 12/364,470

Key point:

  • Without any reasoning or analysis, the PTAB’s mere assertion that it would be “intuitive” to combine two prior art references is insufficient to support an obviousness rejection.

In re Driven Innovations, Inc., Case No. 2016-1094 (January 4, 2017) (Nonprecedential) Trademark App. No. 77/073,701

Key point:

  • If the mental leap between a mark and a product’s attribute is not almost instantaneous, this strongly indicates suggestiveness rather than direct descriptiveness.

Sonix Technology Co., Ltd. v. Publications International, Ltd., Case No. 2016-1449 (January 5, 2017) (Precedential) (3-0) Patent No. 7,328,845

Key point:

  • Terms of degree are not per se indefinite so long as the specification provides guidance to the meaning of a term.
  • Guidance for a term of degree may be provided within a patent by including specific examples or listing specific requirements within the written description.

Andre Walker v. Health International Corporation, Case No. 2015-1676 (January 6, 2017) (Precedential) (3-0) Patent No. 7,090,627

Key point:

  • A federal court may award damages under their equitable powers when litigants have acted in bad faith, vexatiously, wantonly, or for oppressive reasons.
  • Filing a frivolous appeal may result in sanctions being awarded to the victimized party.

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