Publications & Media

Federal Circuit Court Decisions For Week Ending March 3, 2017

Knauf Insulation, Inc. v. Rockwell International A/S, No. 2016-1184, (February 27, 2017) (Nonprecedential) Patent No. 7,854,980

Key point(s):

  • For inherency in a prior art reference involved in an obviousness analysis, the applicable limitation necessarily must be present or be the natural result of the combination of elements disclosed in the prior art.

Icon Health v. Strava, No. 2016-1475 (Feb. 27, 2017) (Precedential) (2-1) Patent No. 7,789,800

Key points:

  • The PTAB cannot solely rely on a party’s invalidity arguments, but must make findings of fact that adequately support its legal conclusion.
  • The Federal Circuit will consider previously unraised arguments on appeal if they, inter alia, raise an issue of general impact and were fully briefed by both sides.
  • The PTO may rely on an expert’s declaration containing a legal opinion of obviousness so long as the declaration contains underlying facts supporting the legal opinion.

Los Angeles Biomedical v. Eli Lilly, No. 2016-1518 (Feb. 28, 2017) (Precedential) (2-1) Patent No. 8,133,903

Key points:

  • Proof of priority requires written description disclosure in the parent application, not simply information and inferences from uncited references identified in the Specification.

Eli Lilly v. Los Angeles Biomedical, No. 2016-1547 (Feb. 28, 2017) (Precedential) (3-0) Patent No. 8,133,903

Key points:

  • For anticipation, the issue is not whether a prior art reference “suggests” the claimed subject matter; rather, but whether one skilled in the art would reasonably understand or infer from a prior art reference that every claim element is disclosed in that reference.

ProBatter Sports, LLC, v. Sports Tutor, Inc., Case No. 2016-1800, (March 1, 2017) (Nonprecedential); Patent Nos. US 6,182,649 and US 6,546,924

Key point(s):

  • A showing of obviousness by clear and convincing evidence based on a combination of references requires a showing of which references (and where in those references) the claim limitations are taught, as well as a showing of a motivation to combine the references.

Smartflash LLC v. Apple Inc., No. 2017-1059 (March 1, 2017) (nonprecedential) Patent Nos. 7,334,720; 8,118,221 and 8,336,772

Key point(s):

  • A claim is not transformed into § 101 patent-eligible subject matter by merely storing, transmitting, retrieving and writing data to implement an abstract idea on a computer.
  • The test for patent eligibility is not whether the claims provide an advantage over alternatives, but rather whether the claims recite an inventive concept sufficient to transform the nature of the claims.

Bayer CropScience AG, v. Dow AgroSciences LLC, Nos. 2016-1530, 2016-1623 (March 1, 2017) (nonprecedential) Patent Nos. 5,561,236, 5,646,024, 5,648,477, 7,112,665, RE44,962

Key points:

  • The grounds for disturbing an arbitral award are strictly limited; the challenger must show that the arbitrators exceeded their powers or manifestly disregarded the law.
  • Once a federal court confirms an arbitral award, the award merges into the judgment and the federal rate for post-judgment interest presumptively applies.

Skullcandy, Inc., v. CSR Limited, Case No. 2016-1384 (March 2, 2017) (Nonprecedential) Patent No. 7,187,948

Key point(s):

  • Inconsistent summary statements by the PTAB during claim construction do not constitute error where the PTAB gives a single, explicit construction.

Technology Properties Limited v. Huawei Technologies, et al., Case Nos. 2016-1306 through 2016-1311 (March 3, 2017) (Precedential) (3-0) Patent No. 5,809,336

Key points:

  • When determining the scope of subject matter a patentee disclaimed, the question is what a person of ordinary skill would understand the patentee to have disclaimed, not what a person of ordinary skill would think the patentee needed to disclaim to overcome a prior art rejection.