May 4, 2017

Federal Circuit Court Decisions For Week Ending April 21, 2017

Rembrandt Wireless Technologies, LP v. Samsung Electronics Co., Ltd., Case No. 2016-1729 (April 17, 2017) (Precedential) (3-0) Patent Nos. 8,023,580 and 8,457,228

Key points:

  • A statutory disclaimer of a particular claim cannot serve to retroactively dissolve the marking requirement of 35 U.S.C. § 287(a) for a patentee to collect pre-notice damages.
  • Issue to be decided on remand: whether the marking requirement is by patent or by claim, such that if a patentee or its licensee does not mark an article that meets only one claim and fails to mark, does that failure taint the entire patent or only the one claim.

Phil-Insul Corp. v. Airlite Plastics Co., Case No. 2016-1982 (April 17, 2017) (Precedential) (3-0) Patent No. 5,428,933

Key point: 

  • A Federal Circuit Rule 36 summary affirmance is a binding judgment for the purposes of collateral estoppel.

Intellectual Ventures II LLC v. Ericsson Inc., Case No. 2016-1803 (April 18, 2017) (Nonprecedential) Patent No. 7,787,431

Key points:

  • In an obviousness analysis, there is no rigid formula or per se rule requiring each subset of prior art references to be independently combined.
  • The reference(s) used to establish that a claim would have been obvious need not be directed to the same problem that the inventor was trying to solve.

West View Research, LLC v. Audi AG, Case Nos. 2016-1947, 2016-1948, 2016-1949, 2016-1951 (April 19, 2017) (Nonprecedential) Patent Nos. 8,065,156; 8,290,778; 8,296,146; 8712,777; 8,719,037; 8,719,038; and 8,781,839

Key point: 

  • Accused infringers may be able to reduce litigation expenses in appropriate circumstances by moving for judgment on the pleadings and arguing that the asserted claims are patent-ineligible under 35 U.S.C. § 101, when applicable.

IPR Licensing, Inc. v. ZTE Corp., Case Nos. 2016-1374, 2016-1443 (April 20, 2017) (Nonprecedential) Patent No. 8,380,244

Key point

  • Proper determination of a motivation to combine references requires evidence of what a person having ordinary skill in the art would have been motivated to do, not what such a person could have done if motivated.

Fairchild (Taiwan) Corp. v. Power Integrations, Inc., Case No. 2017-1002 (April 21, 2017) (Precedential) (3-0) Patent No. 7,259,972

Key point: 

  • If a party brought an invalidity challenge in a civil action and was unsuccessful, as reflected in a final decision, the party cannot bring the same challenge in a subsequent inter partes reexamination.

Paice LLC v. Ford Motor Co., Case No. 2016-1411 (April 21, 2017) (Nonprecedential) Patent No. 8,214,097

Key points:

  • The Patent Trial and Appeal Board (PTAB)’s ultimate determination of obviousness is reviewed de novo, and its underlying factual determinations are reviewed for substantial evidence.
  • These factual determinations “include findings as to the scope and content of the prior art, the differences between the prior art and the claimed invention, the level of ordinary skill in the art, the presence or absence of a motivation to combine or modify with a reasonable expectation of success, and objective indicia of non-obviousness.”

Related Team:

Steven E. Roberts