Litigation + Dispute Resolution

Publications & Media

Federal Circuit Court Decisions For Week Ending January 5, 2018

Monsanto Technology LLC v. E.I. DuPont De Nemours & Co., No. 2017-1032 (January 5, 2018) (precedential, 3-0), Patent No. 7,790,953

Key point(s):

  • A declaration from a prior art inventor or author submitted during a proceeding can properly be used as extrinsic evidence to interpret the disclosure of the prior art
  • The content of a prior publication referenced in a specification, as an example relating to a claim term, may be used to construe that claim term

Aptalis Pharmatech, Inc. v. Apotex Inc., No. 2017-1344 (January 4, 2018) (nonprecedential) Patent Nos. 7,790,199 and 7,829,121

Key point(s):

  • Prosecution history can be relevant to claim construction even where there is no “clear and unmistakable disavowal” and therefore no disclaimer.
  • The Federal Circuit will not defer to a district court’s claim construction that is based on intrinsic evidence, even in a close case.

Everlight Electronics Co., Ltd v. Nichia Corp., Nos. 2016-1577 and 2016-1611 (January 4, 2018) (non-precedential) Patent Nos. 5,998,925 and 7,531,960

Key point(s):

  • In an obviousness analysis, proof of a motivation to combine is sufficient. A challenger need not show that a POSITA would have recognized the advantages to an alleged invention described in the patent’s specification.
  • An error in the specification (here, claiming that inventors had achieved “an LED with peak wavelengths ‘near 600nm’” when they had not) does not necessarily evidence an intent to deceive for purposes of an inequitable conduct analysis.