July 16, 2020

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(nonprecedential); Patent No. 6,069,507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2019-1507 (April 7, 2020) (nonprecedential); Patent No. 8,477,978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No. 2019-2072 (April 7, 2020) (nonprecedential); Patent No. 6,868,079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 

Related Team:

Simon J Harrall

Associate

Grant Davis

Associate

Grant Buchanan, Ph.D.

Associate

Eric Moore

Associate