James Bender, Associate

Publications & Media

Federal Circuit Court Decisions For Week Ending October 6, 2017

In re Arunachalam, Case No. 2016-1607 (October 3, 2017) (non-precedential) Patent No. 6,212,556

Key point(s):

  • Collateral estoppel may apply to bar appeals relating to a continuation-in-part, if the claims are not materially different from the parent claims and the parent claims have already been invalidated.
  • Collateral estoppel applies to bar re-litigation of issues, not particular claims.

B/E Aerospace, Inc. v. C&D Zodiac, Inc., Case Nos. 2016-1496, -1497 (October 3, 2017) (non-precedential) Patent No. 8,590,838

Key point(s):

  • Evidence of commercial success requires additional context to show the magnitude of the success.
  • Showing that a reference is a “printed publication” requires proving that the particular version of the reference relied upon was publically accessible

Suppes v. Katti, Case No. 2017-1142 (October 3, 2017) (non-precedential)

Key point(s):

  • The Constitution and Patent Act do not preempt contracts assigning an inventor’s interest in not-yet-filed patents.
  • The allocation of interests under such a contract is a matter of state contract law.

Amgen Inc. v. Sanofi, Aventisub LLC, Case No. 2017-1480 (October 5, 2017) (precedential) (3-0) Patent Nos. 8,829,165 and 8,859,741

Key point(s):

  • A reduction in the choice of beneficial drugs on the market is not sufficient to show that the public interest weighs against an injunction, but to get an injunction the patentee must establish that “the public would not be disserved by a permanent injunction.”
  • For a claim to a genus, post-priority date evidence can sometimes be relevant to establish that the claim lacks written description.
  • A prior art published application is entitled to priority to a provisional only if the claims of the prior art application are supported by the written description in the provisional.

Aqua Products, Inc. v. Joseph Matal, Case No. 2015-1177 (October 4, 2017) (precedential) (en banc) Patent No. 8,273,183

Key point(s):

  • In an inter partes review, the PTO has not adopted a rule placing the burden of persuasion with respect to the patentability of amended claims on the patent owner that is entitled to Chevron deference.
  • In the absence of any[ regulation] that might be entitled to deference, the PTO may not place that burden on the patentee.