February 17, 2015

Federal Circuit Court Decisions for the Week Ending February 13, 2015

Lexington Luminance LLC v. Amazon.com Inc., No. 2014-1384, February 9, 2015 (nonprecedential); Patent No.: 6,936,851

Key point(s):

  • Open claim language of a Markush group does not render a claim indefinite if the “reasonable ascertainable meaning” of the contested claim language can be discerned from the intrinsic record, i.e. the intrinsic record exemplifies what the claim covers.

In Re Thomas C. Chuang, No. 2014-1257, February 10, 2015 (nonprecedential); USSN 12/488,562

Key point(s):

  • To teach away from use of a claim element, a reference must do more than merely disclose more than one alternative embodiment. The reference must criticize, discredit, or otherwise discourage the claimed solution.
  • It is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.

Helferich Patent Licensing, LLC v. The New York Times Co., No. 2014-1196, February 10, 2015 (precedential) (3-0); Patent Nos.: 7,280,838; 7,499,716; 7,835,757; 8,107,601; 8,116,741; 8,134,450; and 7,155,241

Key point(s):

  • An authorized buyer of product X is free of the patent owner’s patent rights on product X, but the buyer cannot prevent a patentee covering product Y from enforcing his patent rights for product Y, even if Y is designed to be used with X and makes X more useful than it otherwise would be. Patent exhaustion applies to X but not Y.

Soverain Software LLC v. Victoria’s Secret Direct Brand Management, LLC, et al., No. 2012-1649, 2012-1650, February 12, 2015 (precedential) (3-0); Patent Nos. 5,715,314 and 5,909,492

Key point(s):

  • Absence of an incentive to raise an argument in another proceeding is immaterial to whether a full and fair opportunity to litigate is lacking.
  • Complete identity of claims is not required to satisfy the identity-of-issues requirement for issue preclusion. If the differences between the unadjudicated patent claims and adjudicated patent claims do not materially alter the question of invalidity, issue preclusion applies.

Fenner Investments, Ltd. v. CellCo Partnership d/b/a Verizon Wireless, No. 2013-1640, February 12, 2015 (precedential) (3-0), Patent No.: 5,561,706

Key point(s):

  • The interested public has the right to rely on an inventor’s statements made during prosecution, without attempting to decipher whether the examiner relied on them, or how much weight they were given. Similarly, a patentee’s statements during prosecution, whether relied on by the examiner or not, are indeed relevant to claim interpretation.
  • Although claim differentiation is a useful analytic tool, it cannot enlarge the meaning of a claim beyond that which is supported by the patent documents, or relieve any claim of limitations imposed by the prosecution history.

United Access Technologies, LLC v. Centurytel Broadband Services, LLC, No. 2014-1347, February 12, 2015 (precedential) (3-0); Patent Nos.: 5,844,596; 6,243,446 and 6,542,585

Key point(s):

  • A general jury verdict can give rise to collateral estoppel only if it is clear that the jury necessarily decided a particular issue in the course of reaching its verdict. When there are several possible grounds on which a jury could have based its general verdict and the record does not make clear which ground the jury relied on, collateral estoppel does not attach to any of the possible theories.

Related Team:

Nicholas Smith, Ph.D.