September 1, 2016

Federal Circuit Court Decisions For Week Ending August 12, 2016

Icon Health v. Polar Electro, Case No. 2015-1891; Icon Health v. Garmin Int’l, Case No. 2016-1166 (August 8, 2016) (non-precedential) Patent No. 6,921,351

Key point(s):

  • If a claim term has discernible meaning only in the context of a defined reference, the specification must provide such a reference in order to avoid indefiniteness.
  • Simply reciting that two terms have “a relationship,” without expounding on the relationship in the specification, results in ambiguous and indefinite claims.

In re Warsaw Orthopedic, Inc., Case Nos. 2015-1050, -1058 (August 9, 2016) (precedential) (3-0) Patent No. 8,251,997

Key point(s):

  • Obviousness is a question of law based on underlying findings of fact. An examination of the scope and content of the prior art produces factual findings that are reviewed by the Federal Circuit for substantial evidence. The Federal Circuit will not reweigh facts already considered by the Board.
  • Without more, an assertion that a figure “appears to disclose” a claim limitation is conclusory and does not rise to the level of a “reasoned explanation.”

In re CSB-System International, Inc., Case No. 2015-1832 (August 9, 2016) (precedential) (3-0) Patent No. 5,631,953

Key point(s):

  • When a patent expires during a reexamination proceeding, the Board should thereafter apply the Phillips standard for claim construction, regardless of any difference in standards applied by the examiner and the Board.

In re Victor Gorelik, Case No. 2016-1602 (August 9, 2016) (non-precedential) Patent App. No. 12/825,505

Key point(s):

  • The USPTO uses the broadest reasonable interpretation to examine claims, and claim language that is broad enough to cover prior art must be rejected or narrowed.

Arendi S.A.R.L. v. Apple Inc., Case No. 2015-2073 (August 10, 2016) (precedential) (3-0) Patent No. 7,917,843

Key point(s):

  • Relying on “common sense” does not remedy a conclusory assertion about general knowledge in the art without an evidentiary record, especially where a missing limitation is an important structural claim limitation that is not evidently and indisputably within the common knowledge of those skilled in the art.

In re Chorna, Case No. 2016-1324 (August 10, 2016) (non-precedential) Patent App. No. 12/029,610

Key point(s):

  • Claims directed to implementing an abstract idea of intermediated settlement on a generic computer do render the claims patent-eligible subject matter.
  • Claims directed at financial instruments that are valued using an allocation formula and are traded and cleared through conventional processes do not recite patent-eligible subject matter.

Mich & Mich TGR, Inc. v. Brazabra Corp., Case No. 2016-1057 (August 11, 2016) (non-precedential) Patent No. RE 43,766

Key point(s):

  • When evaluating a grant of summary judgment of noninfringement, claim construction is a legal question and reviewed de novo. Infringement, whether literal or under the doctrine of equivalents, is a question of fact.
  • The doctrine of claim differentiation cannot broaden claims beyond their correct scope.
  • An argument not raised at the district court cannot be raised on appeal.

B.E. Tech., LLC v. Sony Mobile Comm’s (USA) Inc., Case No. 2015-1882; B.E. Tech., LLC v. Google, Inc., Case Nos. 2015-1883, -1884; B.E. Tech., LLC v. Microsoft Corp., Case No. 2015-1887; B.E. Tech., LLC v. Samsung Electronics America, Inc., Case No. 2015-1888 (August 12, 2016) (non-precedential) Patent No. 6,771,290

Key point(s):

  • In an IPR, a party must present contrary evidence to challenge the Board’s determination of an ordinary meaning of a claim term supported by extrinsic evidence.
  • A finding of anticipation must be supported by substantial evidence.

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