September 8, 2016

Federal Circuit Court Decisions For Week Ending August 19, 2016

TDE Petroleum Data Solutions, Inc. v. AKM Enterprise, Inc., Case No. 2016-1004 (August 15, 2016) (non-precedential) Patent No. 6,892,812

Key point:

  • Claims directed to storing, gathering and analyzing data—without anything more—are patent-ineligible under § 101.

ScriptPro LLC v. Innovation Associates, Inc., Case No. 2015-1565 (August 15, 2016) (precedential) (3-0) Patent No. 6,910,601

Key point:

  • When the specification discloses multiple problems solved by the invention, claims that are directed to less than all of the problems are not invalid for lack of written description.

Apotex Inc. v. Wyeth LLC, Case No. 2015-1871 (August 16, 2016) (non-precedential) Patent No. 7,879,828

Key point:

  • Substitution of one known compound for another relatively equivalent known compound is not necessarily obvious if there is no motivation to do so.

TecSec, Inc. v. Adobe Systems Inc., Case No. 2015-1686 (August 18, 2016) (non-precedential) Patent Nos. 5,369,702; 5,680,452; 5,717,755; 5,898,781

Key point(s):

  • Claim differentiation means that the limitation in the parent claim is different in scope from the limitation in the dependent claim, but they are not necessarily mutually exclusive. The only requirement is that the limitation in the parent is at least broad enough to encompass the limitation in the dependent claim.

Semcon Tech. LLC v. Micron Technology, Inc., Case No. 2015-1936 (August 19, 2016) (non-precedential) Patent No. 7,156,717

Key point(s):

  • An expert’s report on anticipation should accurately characterize how the reference discloses each limitation, and the expert should be prepared to give testimony that is consistent with the reference and the report.

E.I. du Pont de Nemours & Co. v. MacDermid Printing Solutions, LLC, Case No. 2015-1777 (August 19, 2016) (non-precedential) Patent Nos. 6,773,859; 6,171,758

Key point(s):

  • When an applicant argues that the prior art does not have a recited limitation because the prior art does not perform a process that necessarily results in the recited limitation, prosecution disclaimer may be used to add the process as a limitation.

Related Team:

Aaron Perkins