July 15, 2020

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(non-precedential); Patent No. 6,949,491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(March 31, 2020) (non-precedential); Patent No. RE42,714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Taylor v. Iancu, No. 2018-1070 (April 3, 2020) (non-precedential);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Taylor v. Iancu, No. 2018-1048 (April 3, 2020) (non-precedential) ;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.