Publications & Media

Federal Circuit Court Decisions For Week Ending August 30, 2019

WAG Acquisition, LLC v. WebPower, Inc., No. 2018-1617 (August 26, 2019) (nonprecedential); Patent No. 8,122,141

Key point:

  • The context in which the term is used in the claim, including the term’s relationship to other limitations, showed that the PTAB’s construction of “rate” was erroneous.

Guangdong Alison Hi-Tech Co. v. Int’l Trade Comm’n, No. 2018-2042 (August 27, 2019) (precedential); Patent No. 7,078,359

Key points:

  • Terms of degree need not be described with precise mathematical definitions.
  • Examples in the specification may inform of the scope of the invention with reasonable certainty without details of the examples being directly read into the claims.

Innovative Memory Systems v. Micron Technology, Inc., No. 2017-2472 (August 27, 2019) (nonprecedential); Patent No. 6,901,498

Key point:

  • The Federal Circuit gave patentable weight to the limitation “the correspondence” although this limitation lacked antecedent basis.

INO Therapeutics LLC v. Praxair Distribution Inc., No. 2018-1019 (August 27, 2019) (nonprecedential); Patent Nos. 8,282,966; 8,293,284; 8,795,741; 8,431,163; 8,846,112; 8,573,209; 8,776,794; 8,776,795; 9,265,911; 9,295,802

Key point:

  • A negative claim limitation directed to a non-action (e.g., excluding a step) may be determined to be patent-ineligible subject matter under the Alice/Mayo test.

BioDelivery Sciences Int’l. v. Aquestive Therapeutics, Inc., No. 2019-1643 (August 29, 2019) (precedential) (2-1); Patent No. 8,765,167; IPR2015-00165, -00168, -00169

Key points:

  • A decision to institute IPR is not permanent, and the decision may be altered by the Board absent a limiting of its discretion.
  • The Board is within its discretion to deny a petition to institute IPR as being inefficient and/or expensive.


Allergan Sales, LLC v. Sandoz, Inc., No. 2018-2207 (August 29, 2019) (precedential) (3-0); Patent Nos. 9,770,453; 9,907,801; 9,907,802

Key point:

  • Features recited in “wherein” clauses are material to patentability when described as such in the specification, and explicitly relied upon in the prosecution history.

The Scripps Research Institute v. Illumina, Inc., No. 2018-2207 (August 29, 2019) (nonprecedential); Patent No. 6,060,596

Key point:

  • The specification and claim language supported the construction that the value of a appearing in two components of a chemical formula for a bifunctional molecule must have the same value.

Uniloc USA, Inc. v. Apple Inc., Nos. 2018-2094, 2018-2185 (August 30, 2019) (nonprecedential); Patent No. 6,661,203

Key point:

  • Subject matter jurisdiction may be challenged at any time, even on appeal.