August 25, 2016

Federal Circuit Court Decisions For Week Ending August 5, 2016

WI-LAN USA, Inc. v. Apple, Inc. Case No. 2015-1256 (August 1, 2016) (precedential ) (3-0) Patent Nos. 8,311,040 and 8,315,640

Key point(s):

  • Construction of a claim term cannot be inconsistent with other terms in the claim, with the description of the invention, and with statements made by the patentee during prosecution.

Murata Mach. USA v. Daifuku Co., Ltd. Case No. 2015-2094 (August 1, 2016) (precedential) (3-0) Patent Nos. 7,165,927; 7,771,153; 9,197,172; 6,113,341; 6,183,184

Key point(s):

  • A district court has broad discretion to stay proceedings, and is not limited to the three-factor stay test when considering whether to stay pending IPR proceedings.
  • When a district court denies a preliminary injunction motion, it must provide an adequate reason for its decision beyond merely noting that the case has been stayed.

GPNE Corp. v. Apple, Inc., Case No. 2015-1825 (August 1, 2016) (precedential) (3-0) Patent Nos. 7,570,954; 7,792,492

Key point(s):

  • Repeatedly defining a claim term in the specification and prosecution history, and summarizing “the present invention” in the specification, can limit the scope of the claims.
  • O2 Micro requires a district court to resolve fundamental disputes about the meaning of claim terms, but does not require removing all potential ambiguities from consideration by the jury.

Elec. Power Group, LLC v. Alstom S.A. Case No. 2015-1778 (August 1, 2016) (precedential) (3-0) Patent Nos. 7,223,843; 8,060,250; 8,401,710

Key point(s):

  • Claims that recite collecting and analyzing data from an electric power grid, and presenting the results of the analysis, were ineligible for patenting.

Halo Elecs. Inc. v. Pulse Elecs., Inc. Case Nos. 2013-1472; 2013-1656 (August 5, 2016) (precedential) (3-0) Patent Nos. 7,031,728 and 7,672,681

Key point(s):

  • Holding of no enhanced damages based on no willful infringement under Seagate must be reconsidered in light of the overruling of Seagate by the Supreme Court.

Ricky Kamdem-Ouaffo v. Pepsico, Inc. Case No. 2016-1668 (August 5, 2016) (non- precedential) Patent No. 8,474,637

Key point(s):

  • Section 116 of Title 35, United States Code, does not provide a private right of action to challenge inventorship of a pending patent application.
  • Section 256 provides a private right of action to challenge inventorship once a patent issues.

Innovention Toys, LLC v. MGA Entertainment, Inc., Case No. 2014-1731 (August 5, 2016) (non-precedential) Patent No. 7,264,242

Key point(s):

  • Enhanced damages awarded based on finding of willful infringement must be reconsidered in light of the overruling of Seagate by the Supreme Court.

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