July 5, 2017

Federal Circuit Court Decisions For Week Ending June 16, 2017

Chaganti v. Lee, No. 2016-2133 (June 12, 2017) (non-precedential)

Key point(s):

  • Discipline or disqualification by another jurisdiction, such as a state bar, may result inreciprocal discipline by the PTO.

One-E-Way Inc. v. International Trade Commission, No. 2016-2105 (June 12, 2017) (Precedential, 2-1) U.S. Patent Nos. 7,865,258, 8,131,391

Key point(s):

  • For purposes of definiteness, statements made during prosecution of other patents in the same family may be relevant to the meaning of a claim term.
  • Lack of a technical definition by itself does not render a claim term indefinite.

Navico Inc. v. International Trade Commission, No. 2016-1533, (June 13, 2017) (Non-precedential) U.S. Patent Nos. 8,305,840, 8,605,550, 8,300,499

Key point(s):

  • A motivation to combine may be found by identifying a reason that would have prompted a skilled person to modify the prior art in the same way as the claimed invention.

Garmin Int’l, Inc. v. International Trade Commission, No. 2016-1572, (June 13, 2017) (Non-precedential) U.S. Patent Nos. 8,305,840, 8,605,550, 8,300,499

Key point(s):

  • A claimed invention is obvious when it is nothing more than the predictable use of prior art elements according to their established functions.

Purdue Pharma L.P. v. Recro Technology, LLC, No. 2016-2260 (June 13, 2017) (Non-precedential) Patent Application Nos. 13/833,263, 14/094,968

Key point(s):

  • The written description requirement is not satisfied by a showing that a person skilled in the art would combine embodiments from the specification to arrive at the claimed invention.

Emerachem Holdings, LLC, v. Volkswagen Group of America, No. 2016-1984 (June 15, 2017) (Precedential, 3-0) U.S. Patent No. 5,599,758

Key point(s):

  • An uncorroborated inventor declaration, by itself, is insufficient to establish an inventor’s claim to inventorship over cited prior art.

The Cleveland Clinic Foundation v. True Health Diagnostics LLC, No. 2016-1766 (June 16, 2017) (Precedential, 3-0) U.S. Patent Nos. 7,223,552, 7,459,286, 8,349,581, 9,170,260

Key point(s):

  • A method for correlating levels of an enzyme to cardiovascular disease is not patentable subject matter.
  • A party that provides a service, but no material or apparatus, cannot be liable for contributory infringement.

Outdry Technologies Corporation v. Geox S.P.A., No. 2016-1769 (June 16, 2017) (Precedential, 3-0) U.S. Patent No. 6,855,171

Key point(s):

  • In an inter partes review, the PTAB may establish motivation to combine by adopting petitioner’s arguments.

Related Team:

Craig Williams

Associate