Uniloc USA, Inc. v.
Samsung Electronics America
,
No. 2019-2072 (April 7, 2020) (nonprecedential); Patent No. 6,868,079

Key point(s):

• For a computer-implemented
  invention claimed in means-plus-function format, the specification must
  disclose the algorithm that the computer performs to accomplish the claimed
  function. Failure to disclose the corresponding algorithm for a
  computer-implemented means-plus-function term renders the claim indefinite.

Keith Manufacturing Co.
v. Butterfield
, No. 2019-1136
(April 7, 2020) (precedential) (3-0); Patent No. 9,126,520

Key point(s):

• An accused party can move for
  attorney’s fees under Rule 54(d) after the litigants file a Rule
  41(a)(1)(A)(ii) stipulation of dismissal with prejudice which is silent about
  attorney fees.

Valeant Pharmaceuticals
International, Inc. v. Mylan Pharmaceuticals, Inc.
, No. 2018-2097 (April 8, 2020) (precedential) (3-0);
Patent No. 8,552,025

Key point(s):

• A prima facie case of
  obviousness sufficient to survive summary judgement exists when the prior art
  ranges for solutions of structurally and functionally similar compounds overlap
  with the claimed range.

BASF Corporation V. SNF
Holding Company
, No. 2019-1243
(April 8, 2020) (precedential) (3-0); Patent No. 5,633,329

Key point(s):

• Prior knowledge or use that
  is not accessible to the public ‘upon reasonable inquiry’ confers no benefit on
  the public, and thus does not suffice as a defense under the pre-AIA novelty
  condition of prior use or knowledge.

• Because the pre-AIA
  public-use bar applies to uses of the invention not purposely hidden, the use
  of a process in the ordinary course of business—where the process is well known
  to the employees and no efforts are made to conceal it from anyone else—is a
  public use.

Askan v. Faro
Technologies, Inc.
, No.
2019-2412 (April 8, 2020) (nonprecedential); Patent Nos. 8,705,110; 9,300,841;
and 10,032,255

Key point(s):

• Once a complaint is filed,
  the plaintiff must take steps to reasonably prosecute the case.

Tech. Consumer Prods. V.
Lighting Sci. Grp. Corp.
, No.
2019-1361 (April 8, 2020) (precedential) (3-0); Patent No. 8,201,968

Key point(s):

• An allegedly anticipatory
  invention disclosed by a prior art reference must be enabled by that prior art
  reference.

• A prior art reference does
  not anticipate a claim when it could only meet the claim language if an
  essential element were physically removed, thus distorting the original design.

• When claim language does not
  specifically exclude additional, unclaimed, elements, the enablement analysis
  of an anticipatory reference should not involve automatically stripping the
  reference’s disclosed structure of components additional to the elements of the
  claim.

Satco Prods., Inc. v.
Lighting Sci. Grp. Corp.
, No.
2019-1638 (April 8, 2020) (nonprecedential) (3-0); Patent No. 8,201,968

Key point(s):

• Same issue as discussed in Tech.
  Consumer Prods. V. Lighting Sci. Grp. Corp.
  , No. 2019-1361 (April 8, 2020).

• Ruling issued along with that
  in the above matter.

Nevro Corp., Inc. v.
Boston Scientific Corp.
, Nos. 2018-2220,
2018-2349 (April 9, 2020) (precedential) (3-0); Patent Nos. 8,359,102;
8,712,533; 8,768,472; 8,792,988; 9,327,125; 9,333,357; and 9,480,842.

Key point(s):

• The test for indefiniteness
  is not whether infringement of the claim must be determined on a case-by-case
  basis.
  Nautilus merely requires the skilled artisan to be informed with
  reasonable certainty as to the scope of the invention.

• Definiteness does not require
  an ability to determine
  ex ante if a particular act infringes the
  claims.

Nike, Inc. v. Adidas AG, No. 2019-1262 (April 9, 2020) (precedential) (3-0);
Patent No. 7,347,011

Key point(s):

• The notice provisions of the
  APA apply to IPRs, including in the context of a motion to amend.

• The PTAB may sua sponte identify
  a patentability issue for a proposed substitute claim based on the prior art of
  record, but must provide notice of the issue and an opportunity for the parties
  to respond before issuing a final decision under 35 U.S.C. § 318(a).

• Suitable notice provisions
  include declaring the intent to reject the claim on the new basis and
  requesting supplemental briefing, or holding an oral hearing after requesting
  the parties be prepared to discuss the intended rejection.

• A “long-felt unmet needs”
  argument must address all relevant references in the record.

Emed Technologies
Corporation v. Repro-Med Systems, Inc.
, No. 2019-2145 (April 9, 2020) (nonprecedential); Patent No. 8,961,476

Key point(s):

• The doctrine of equivalents
  cannot be applied if it would render a claim limitation inconsequential or
  ineffective.

In Re Morsa, No. 2019-1757 (April 10, 2020) (nonprecedential);
Patent Application No. 13/694,192

Key point(s):

• Claims related to
  “customizing information based on (1) information known about the user and (2)
  [specific] data” may be directed to abstract ideas.

• Examiners can identify more
  than one abstract idea in a claim.

• Applicants must do more than
  simply restate the claim limitations and assert that the claims are directed to
  a technological improvement
  .

Whitserve LLC v. Donuts
Inc.
, No. 2019-2240 (April 10,
2020) (nonprecedential); Patent Nos. 5,895,468 and 6,182,078

Key point(s):

• Language in the specification
  can be used against an applicant arguing that claims recite a technical
  improvement.

Rembrandt Diagnostics, LP
v. Alere, Inc
, No. 2019-1648
(April 10, 2020) (nonprecedential); Patent No. 6,548,019

Key point(s):

• Removing language from a
  claim during prosecution does not necessarily preclude a construction based on
  the language.

Bozeman Financial LLC v.
Federal Reserve Bank
, No.
2019-1018 (April 10, 2020) (precedential) (3-0); Patent Nos. 6,754,640 and
8,768,840

Key point(s):

• The Federal Reserve Bank is a
  “person” under the AIA.

Jerry Harvey Audio
Holdings, LLC v. 1964 Ears, LLC
,
Nos. 2019-1967, -1968 (April 10, 2020) (nonprecedential); Patent Nos. 8,925,674
and 9,197,960

Key point(s):

• The PTAB will not approve
  contingent claim amendments that do not overcome the prior art relied on by
  petitioner