May 7, 2018

Federal Circuit Court Decisions For Week Ending April 6, 2018

Knowles Electrons. LLC v. Iancu, No. 2016-1954 (April 6, 2018) (precedential) (2-1) Patent No. 8,018,049

Key point(s):

  • The PTO has standing to intervene in an adversarial proceeding at the appellate court level when a party drops out.
  • The PTAB is not bound by a previous judicial construction when that construction is not based on the BRI standard and is based on different claims.
  • The PTAB may explain an examiner’s reasoning and thoroughly respond to an applicant’s argument without introducing a new ground of rejection. The ultimate criterion is whether the applicant had a fair opportunity to react to the thrust of the rejection.

Raytheon Co. v Sony Corp., Nos. 2017-1554, 2017-1556, 2017-1557 (April 2, 2018) (nonprecedential) Patent No. 5,591,678

Key point(s):

  • A modification to a prior art reference that makes the resulting structure less efficient or less desirable does not necessarily result in inoperability or a teaching away.
  • Evidence corroborating an actual reduction to practice, while not required to corroborate the presence of every claimed element, should not contradict the assertion that every claimed element was reduced to practice.
  • Under the Phillips standard, a “comprising” transition in a preamble permits neither a construction inconsistent with the specification nor the removal of limitations from the claim.

Pazandeh v Yamaha Corp. of Am., No. 2018-1275 (April 6, 2018) (nonprecedential) Patent No. 7,577,265

Key point(s):

  • A conclusory expert declaration is not sufficient to raise an issue of fact to preclude summary judgment of noninfringement under the doctrine of equivalents (“DOE”).
  • Judgement of noninfringement under DOE is appropriate where a claim element would be vitiated.
  • Failure to properly appeal an order deprives the appellate court of jurisdiction.

In re Coutts, No. 2017-2458 (April 6, 2018) (nonprecedential) Patent Application No. 11/836,293

Key point(s):

  • Obviousness is an objective standard based on the knowledge of a hypothetical person having ordinary skill.
  • The knowledge of any one individual may be relevant to what a person of ordinary skill in the art would know, but is not conclusive to the obviousness inquiry.

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