Federal Circuit Court Decisions For Week Ending April 10, 2020

ProMOS Technologies, Inc. v. Samsung Electronics Co., Ltd. , No. 2019-1343, 2019-1344 (April 6, 2020) (nonprecedential); Patent No. 6,069,507 Key point(s): In Phillips, the Court cautioned against construing claims by first developing a broad definition of claim terms divorced from the context of the patent and then turning to the specification only to look for grounds for limiting the claim scope. Such an approach, they noted, posed a “risk of systematic overbreadth.”

In re Anova Hearing Labs, Inc., No. 2019-1507 (April 7, 2020) (nonprecedential); Patent No. 8,477,978 Key point(s): The Board must articulate a basis or rationale sufficient for the reviewing court to determine whether substantial evidence supported its motivation to combine finding. The Board’s factual inquiry on whether to combine references must be thorough and searching and the need for specificity pervades the Court’s authority on the findings on motivation to combine.

Uniloc USA, Inc. v. Samsung Electronics America , No. 2019-2072 (April 7, 2020) (nonprecedential); Patent No. 6,868,079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