April 25, 2017

Federal Circuit Court Decisions For Week Ending April 14, 2017

Core Wireless Licensing, S.A.R.L. v. Apple, Inc., Case No. 2015-2037 (April 14, 2017) (Precedential) (3-0) Patent No. 6,978,143

Key points:

  • Because means-plus-function claim limitations are limited to the structure disclosed in the specification that is linked to the claimed function and equivalents thereof, the descriptions of the embodiments in the specification will define the scope of the limitation.

Novartis AG, Mitsubishi Pharma Corp. v. Torrent Pharmaceuticals Limited, Case No. 2016- 1352 (April 12, 2017) (Precedential) (3-0) Patent No. 8,324,283

Key point:

  • To prove non-obviousness due to commercial success, one must show a nexus between a claimed feature and the invention’s commercial success, and also that the claimed feature was not known in the art.
  • References not cited in a petition to institute an IPR can be used by the PTAB to support an obvious determination as long as the patent owner has sufficient notice and an opportunity to submit facts and arguments relating to the references.

Gravelle v. Kaba Ilco Corp., Case No. 2016-2318 (April 12, 2017) (Non-Precedential)

Key point:

  • A plaintiff in a false marking suit under 35 USC §292 must provide sufficient evidence to show that his competitive injury was proximately caused by the defendant’s violation of the marking statute.

In Re Apple Inc., Case No. 2016-1402 (April 14, 2017) (Non-Precedential) Patent No. 7,844,915

Key point:

  • Examples provided in a specification can be useful to help prevent an Examiner from too broadly interpreting a claim term.

Mussa Ali v. Carnegie Institution of Washington, Case No. 2016-2320 (April 12, 2017) (Non- Precedential) Patent Nos. 6,506,559, 7,538,095, 7,560,438, 7,622,633, and 8,283,329

Key point:

  • A suit against a state university or other state run entity, which is a necessary party and did not waive its sovereign immunity, cannot be maintained due to sovereign immunity.

Related Team:

Joe Stevens