Publications & Media

Federal Circuit Court Decisions For Week Ending April 3, 2020

Enerpol, LLC v. Schlumberger Technology Corp., Nos. 2019-1079, 2019-1120 (March 31, 2020) (non-precedential); Patent No. 6,949,491

Key point(s):

  • A term is construed as a single phrase in claim construction if the specification consistently describes it as such.

Deep Green Wireless LLC v. Ooma, Inc. , No. 2019-1570 (March 31, 2020) (non-precedential); Patent No. RE42,714

Key point(s):

  • The disclosure of one embodiment in the specification does not mean that broadly written claim language must be limited to that embodiment.

Intellisoft, Ltd. v. Acer America Corp. , No. 2019-1522 (April 3, 2020) (precedential) (3-0); Patent No. 5,410,713

Key point(s):

  • Factual evidence regarding patents in state law claims is not enough to “necessarily raise” patent law issues required for removal to federal court under 28 U.S.C. § 1441.
  • Legally inoperative counterclaims are not “asserted” counterclaims and cannot be removed to federal court under 28 U.S.C. § 1454.

Myco Industries, Inc. v. BlephEx, LLC, No. 2019-2374 (April 3, 2020) (precedential) (3-0); Patent No. 9,039,718

Key point(s):

  • A showing of bad faith is required before a patentee can be enjoined from communicating its patent rights.
  • Under the medical immunity statute, medical practitioners are not immune from infringement, but rather the patentee cannot seek a remedy for such infringement.

Taylor v. Iancu, No. 2018-1070 (April 3, 2020) (non-precedential); Patent App. No. 11/391,501

Key point(s):

  • A specification that does not describe the combination of multiple different versions that are claimed in combination lacks written description.
  • An applicant’s admission that there was not a suitable platform to implement the claimed invention is evidence that the inventor was not in possession of the claimed invention as of the filing date.

Taylor v. Iancu, No. 2018-1048 (April 3, 2020) (non-precedential) ; Patent App. No. 10/425,553

Key point(s):

  • A specification that does not describe how multiple features are integrated simultaneously lacks written description if the claim requires that the multiple features be performed concurrently.
  • An applicant admitting there was a lack of a suitable platform to implement a claimed idea is evidence that the specification did not demonstrate possession of the claimed invention.

Taylor v. Iancu, No. 2018-1047 (April 3, 2020) (non-precedential); Patent App. No. 11/807,860

Key point(s):

  • A specification must enable simulation of all modes of operation to enable the claims to be performed by a person of skill.

• An applicant admitting there was a lack of a suitable platform to implement a claimed idea is evidence that the specification did not demonstrate possession of the claimed invention.