Daniel McManus, Of Counsel

Publications & Media

Federal Circuit Court Decisions For Week Ending October 2, 2015

Nordock, Inc. v. Systems Inc., Nos. 2014-1762, 2014-1795 (September 29, 2015) (Precedential) (3-0) Patent No. D579,754

Key point(s):

  • Damages for infringement of a design patent allow for recovery of the infringer’s total profit from the sale of the infringing product

Tas v. Beachy, No. 2015-1175 (September 29, 2015) (Non-Precedential) Patent No. 7,893,078

Key point(s):

  • An interference-in-fact exists if the subject matter of a claim of one party would, if prior art,
    have anticipated or rendered obvious the subject matter of a claim of the opposing party and
    vice versa.

Achates Reference Publishing, Inc. v. Apple Inc., Nos. 2014-1767, 2014-1788 (September 30, 2015) (Precedential) (3-0) Patent Nos. 5,982,889, 6,173,403

Key point(s):

  • Although a specific decision made by the PTAB as part of a decision to initiate an IPR or CBM review is generally not appealable, it is appealable if the specific decision is a defining characteristic for the PTAB’s ultimate authority to invalidate the patent.
  • Whether a petition for IPR is time-barred is not a defining characteristic for the

In Re Steed, No. 2014-1458 (October 1, 2015) (Precedential) (3-0) Patent Application No. 10/819,600

Key point(s):

  • Under 37 C.F.R. § 41.47(e) governing evidence relied upon by the PTAB during an appeal, generally the proper remedy to submit evidence not previously entered and considered by the primary examiner, is to file a continuation application and present the evidence to the examiner in the first instance.
  • Under 37 C.F.R. § 41.47(e)(2), additional evidence may be admitted during an appeal if the timing for submitting the new evidence is based on a recent decision of the PTAB or another court.

ParkerVision, Inc. v. Qualcomm Incorporated, Nos. 2014-1612, 2014-1655 (October 2, 2015) (Non-Precedential) Patent Nos. 6,061,551; 6,266,518; 6,370,371; and 7,496,342

Key point(s):

  • If an expert witness for a party gives contradictory statements about information that can affect the outcome of the case, then that party should attempt to reconcile the contradictory statements to prevent the contradictory statements from being fatal to the party’s claim.

Spectrum Pharmaceuticals, Inc. v. Sandoz Inc., No. 2015-1407 (October 2, 2015) (Precedential) (3-0) Patent No. 6,500,829

Key point(s):

  • An impure composition of a material is obvious relative to the pure material when the pure material is known, and no advantages are present in the impure material relative to the impure material.

Shukh v. Seagate Technology, LLC, No. 2014-1406 (October 2, 2015) (Precedential) (3-0) Patent Nos. 7,233,457, 7,684,150, 6,525,902, 6,548,114, 6,738,236, 7,983,002

Key point(s):

  • Reputational harm can be sufficient to create standing for an alleged inventor to bring a claim for correction of inventorship under 35 U.S.C. §256.