Publications & Media

Federal Circuit Court Decisions For Week Ending March 23, 2018

Dell Inc. v. Acceleron, LLC, No. 2017-1101 (March 19, 2018) (precedential) (3-0) Patent No. 6,948,021

Key point(s):

  • It is reversible error for the PTAB to consider new evidence or arguments presented for the first time at oral argument.

In re Power Integrations, Inc., No. 2017-1304 (March 19, 2018) (precedential) (3-0) Patent No. 6,249,876

Key point(s):

  • Though the Board is not generally bound by a district court’s claim construction, they must consider that construction if a party’s arguments are based on it.

Cave Consulting Group, LLC v. OptumInsight, Inc., FKA Ingenix, Inc., No. 2017-1060 (March 21, 2018) (nonprecedential) Patent No. 7,739,126

Key point(s):

  • Subsequently-added dependent claims cannot be used to support a broader reading of an independent claim limitation if the dependent claims lack sufficient written description in the specification.
  • Explicit redefinition or disavowal of prior art is not necessary to disclaim claim scope if the description itself is affirmatively limiting.

Sarif Biomedical LLC v. Brainlab, Inc., No. 2017-1103 (March 21, 2018) (nonprecedential) Patent No. 5,755,725

Key point(s):

  • If the PTAB declines to institute IPR of claims based on a likelihood of indefiniteness, the patent owner is not precluded from making good faith arguments about the construction of those claims during litigation without making the case one which is exceptional under § 285.

DSS Technology Management, Inc. v. Apple Inc., Nos. 2016-2523, 2016-2524 (March 23, 2018) (precedential) (2-1) Patent No. 6,128,290

Key point(s):

  • A PTAB decision ruling claims to be obvious must be supported by sufficient explanation within the decision.
  • “Common sense” does not generally support finding a missing claim limitation obvious unless the limitation and technology are unusually simple and straightforward.