November 6, 2017

Federal Circuit Court Decisions For Week Ending October 27, 2017

EmeraChem Holdings, LLC v. Volkswagen Group of America, Inc., No. 2016-2619 (Oct. 23, 2017) (nonprecedential) Patent No. 5,451,558

Key point(s):

  • Claim terms are construed to resolve a controversy and only to the extent necessary to resolve the controversy.
  • If a claim recites a composition of matter, it is anticipated if the composition was known in the prior art, regardless of the environment in which the composition was used.

Uniloc USA, Inc., v. Sega of America Inc., No. 2016-2000 (Oct. 23, 2017) (nonprecedential) Patent No. 5,490,216

Key point(s):

  • Means-plus-function claim limitations comprise not only the language of the claims, but also the structure corresponding to that means that is disclosed in the written description.
  • Compliance with the written description requirement is a question of fact that is reviewed for substantial evidence.

Merck Sharp & Dohme Corp., v. Hospira, Inc., No. 2017-1115 (Oct. 26. 2017) (precedential) (2-1) Patent No. 6,486,150

Key point(s):

  • Obviousness is based on underlying factual findings, including what a reference teaches, whether a person of ordinary skill in the art would have been motivated to combine references, and any relevant objective indicia of nonobviousness.
  • Blocking patents do not necessarily detract from evidence of commercial success of a product or process, which speaks to the merits of the invention.

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