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(nonprecedential); Patent No. 6,069,507
In re Anova Hearing Labs, Inc., No.
2019-1507 (April 7, 2020) (nonprecedential); Patent No. 8,477,978
Uniloc USA, Inc. v.
Samsung Electronics America
No. 2019-2072 (April 7, 2020) (nonprecedential); Patent No. 6,868,079
- 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.
, No. 2019-1136
(April 7, 2020) (precedential) (3-0); Patent No. 9,126,520
- 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
International, Inc. v. Mylan Pharmaceuticals, Inc.
, No. 2018-2097 (April 8, 2020) (precedential) (3-0);
Patent No. 8,552,025
- 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
, No. 2019-1243
(April 8, 2020) (precedential) (3-0); Patent No. 5,633,329
- 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
Askan v. Faro
2019-2412 (April 8, 2020) (nonprecedential); Patent Nos. 8,705,110; 9,300,841;
- Once a complaint is filed,
the plaintiff must take steps to reasonably prosecute the case.
Tech. Consumer Prods. V.
Lighting Sci. Grp. Corp.
2019-1361 (April 8, 2020) (precedential) (3-0); Patent No. 8,201,968
- An allegedly anticipatory
invention disclosed by a prior art reference must be enabled by that prior art
- 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
Satco Prods., Inc. v.
Lighting Sci. Grp. Corp.
2019-1638 (April 8, 2020) (nonprecedential) (3-0); Patent No. 8,201,968
- 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.
- The test for indefiniteness
is not whether infringement of the claim must be determined on a case-by-case
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
Nike, Inc. v. Adidas AG, No. 2019-1262 (April 9, 2020) (precedential) (3-0);
Patent No. 7,347,011
- 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.
Corporation v. Repro-Med Systems, Inc.
, No. 2019-2145 (April 9, 2020) (nonprecedential); Patent No. 8,961,476
- The doctrine of equivalents
cannot be applied if it would render a claim limitation inconsequential or
In Re Morsa, No. 2019-1757 (April 10, 2020) (nonprecedential);
Patent Application No. 13/694,192
- 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
, No. 2019-2240 (April 10,
2020) (nonprecedential); Patent Nos. 5,895,468 and 6,182,078
- Language in the specification
can be used against an applicant arguing that claims recite a technical
Rembrandt Diagnostics, LP
v. Alere, Inc
, No. 2019-1648
(April 10, 2020) (nonprecedential); Patent No. 6,548,019
- Removing language from a
claim during prosecution does not necessarily preclude a construction based on
Bozeman Financial LLC v.
Federal Reserve Bank
2019-1018 (April 10, 2020) (precedential) (3-0); Patent Nos. 6,754,640 and
- 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
- The PTAB will not approve
contingent claim amendments that do not overcome the prior art relied on by