Litigation + Dispute Resolution

Publications & Media

Federal Circuit Court Decisions For Week Ending March 29, 2019

Artic Cat, Inc. v. GEP Power Products, Inc., Case No. 2018-1520 (March 26, 2019) (precedential) (3-0) Patent Nos. 7,072,188 and 7,420,822

Key point(s):

  • Whether to treat a preamble as limiting is determined on the facts of each case in light of the overall form of the claim and the invention as described in the specification and illuminated in the prosecution history.
  • A lack of diligence cannot be inferred from putting the invention into someone else’s hands for needed testing and awaiting test results.

Colas Solutions, Inc. v. Blacklidge Emulsions Inc., Case Nos. 2018-1358, 2018-1359 (March 27, 2019) (non-precedential) Patent Nos. 7,503,724 and 7,918,624

Key point(s):

  • Invalidity theories not identified in the IPR Petition are deemed waived.
  • A reply may only respond to arguments raised in the corresponding opposition or patent owner response.

ChargePoint, Inc. v. SemaConnect, Inc., Case No. 2018-1739 (March 28, 2019) (precedential) (3-0) Patent No. 8,138,715; 8,432,131; 8,450,967; and 7,956,570

Key point(s):

  • Not every claim that recites concrete, tangible components escapes the reach of the abstract-idea inquiry.
  • A claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.

Grünenthal GmbH v. Alkem Laboratories Limited, Case Nos. 2017-1153, 2017-2048, 2017-2049, 2017-2050 (March 28, 2019) (precedential) (3-0) Patent Nos. 7,994,364 and 8,536,130

Key point(s):

  • Induced infringement requires specific intent to encourage, recommend, or promote the infringing use.
  • Contributory infringement requires that the patent owner show that there are no substantial noninfringing uses for an accused product.
  • Obviousness requires not only that a person of ordinary skill have a reason to combine or modify the prior art to arrive at the claimed invention, but also that in so doing, have a reasonable expectation of success.

TEK Global, S.R.L., TEK Corp. v. Sealant Systems Int’l, Inc., Case No. 2017-2507 (March 29, 2019) (precedential) (3-0) Patent No. 7,789,110

Key point(s):

  • When a commercial product meets all the claim limitations, then a comparison of the accused product to that commercial product may support a finding of infringement.

Endo Pharma. Inc. v. Teva Pharma. USA Inc., Case Nos. 2017-1240, 2017-1455, 2017-1887 (March 28, 2019) (Precedential) (3-0) Patent No. 8,808,737

Key point(s):

  • Claims directed to a specific method of treatment for specific patients using a specific compound at specific doses to achieve a specific outcome are patent-eligible.
  • Method claims that are not simply an observation or detection may be patent-eligible.
  • Method claims including an administering step after a testing step may be patent-eligible because they claim the application of a relationship, not simply the relationship itself.

Google, LLC v. Ji-Soo Lee, Case Nos. 2017-2227, 2017-2272 (March 28, 2019) (non-precedential) Patent No. 6,532,413

Key point(s):

  • Reversal of the PTAB, rather than remand, is appropriate where, on the evidence and arguments presented to the PTAB, there is only one possible evidence-supported finding: that the Board’s determination, when the correct construction is employed, is not supported by substantial evidence.

Google, LLC v. Ji-Soo Lee, Case Nos. 2017-2228 (March 28, 2019) (non-precedential) Patent No. 6,233,518

Key point(s):

  • The PTAB cannot institute review of fewer than all claims challenged by a petitioner.
  • The PTAB cannot institute review of fewer than all grounds raised by a petitioner in its petition.

Polygroup Ltd. MCO v. Willis Electric Co., Ltd., Case Nos. 2018-1745, 2018-1746, 2018-1747, (March 28, 2019) (non-precedential) Patent Nos. 8,454,186; 8,454,187; 9,044,056

Key point(s):

  • When an IPR petition sets forth a ground with multiple references, but the petitioner’s primary arguments rely on a single reference, the PTAB should consider those arguments irrespective of a motivation to combine references.