April 25, 2016

Federal Circuit Court Decisions For Week Ending April 8, 2016

Trading Technologies Int’l Inc. v. Sungard Data Systems, Inc., No. 2015-1767, 2015-1768, (April 4, 2016) (Non-Precedential) U.S. Patent No. 6,772,132

Key point(s):

  • Claim construction from a prior litigation is controlling in a subsequent litigation.

High Point SARL v. Sprint Nextel Corp., No. 2015-1298, (April 5, 2016)(Precedential) (3-0) U.S. Patent Nos. 5,195,090, 5,195,091, 5,305,308, and 5,184,347

Key point(s):

  • Actions (or lack thereof) by a predecessor–in-interest can affect a determination on equitable estoppel.

Cardpool, Inc. v. Plastic Jungle, Inc., No. 2014-1562, (April 5, 2016) (Precedential) (3-0); U.S. Patent No. 7,494,048

Key point(s):

  • A district court does not have to vacate a judgment due to changed circumstances caused by a party to a suit.
  • Res judicata may not apply to reexamined claims when a final decision is based on the claims as they existed prior to reexamination.

Pride Mobility Products Corp. v. Permobil, Inc., No. 2015-1585, 2015-1586, (April 5, 2016) (Precedential) (3-0); U.S. Patent Nos. 8,408,598 and 8,408,343

Key point(s):

  • Claim construction related to physical arrangements of parts should be based on an ordinary geometric meanings of terms used.

Meng v. Chu, Nos. 2014-1746, 2015-1390, (April 5, 2016) (Non-precedential); U.S. Patent Nos. 7,709,418 and 7,056,866

Key point(s):

  • Non-joinder of inventors must be proven by clear and convincing evidence.
  • Alleged inventors must provide corroborating evidence of contribution to conception.

HP Inc. v. MPHJ Technology Investments, LLC, No. 2015-1427, (April 5, 2016) (Precedential) (3-0); U.S. Patent No. 6,771,381

Key point(s):

  • A PTAB decision whether to institute an IPR proceeding on particular grounds, including whether a particular ground is redundant with respect to another ground, is not appealable.
  • A party is not estopped from filing a subsequent IPR on non-instituted grounds in a first IPR.

Cutsforth, Inc. v. Motivepower, Inc., No. 2015-1314 (April 6, 2016) (Non-precedential); U.S. Patent No. 7,141,906

Key point(s):

  • Claim terms are to be given their plain, ordinary meaning unless evidence proves that the inventors intended to deviate from the plain meaning.

Rembrandt Vision Technologies, L.P. v. Johnson & Johnson Vision Care, Inc., No. 2015-1079, (April 7, 2016) (Precedential) (2-1); U.S. Patent No. 5,712,327

Key point(s):

  • Counsel should be fully aware of all aspects of experts’ activities related to providing expert reports and testimony.

In re Hubbell Incorporated, No. 2015-1222, (April 7, 2016) (Non-precedential); U.S. Patent No. 7,323,639

Key point(s):

  • Proof of teaching away requires more than an expression of a general preference for an alternative invention.
  • Proof of commercial success requires proof that such success is attributable to the claimed invention.

Genetic Technologies Limited v. Merial L.L.C., Nos. 2015-1202, 2015-1203, (April 8, 2016) (Precedential) (3-0); U.S. Patent No. 5,612,179

Key point(s):

  • A claim directed to a newly-discovered law of nature cannot rely on the novelty of that discovery for the inventive concept necessary for patent eligibility.

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