August 13, 2015

Federal Circuit Court Decisions For Week Ending August 7, 2015

Allergan, Inc. v. Sandoz, Inc., Case No. 2014-1275 (August 4, 2015) (precedential) (3-0) Patent Nos. 7,851,504; 8,278,353; 8,299,118; 8,309,605; 8,338,479

Key point(s):

  • A broad prior art disclosure does not demonstrate obviousness of a narrow claim if the prior art teaches away from the claimed invention, the claimed invention is shown to achieve unexpected results, and other secondary indicia show non-obviousness.

Carnegie Mellon University v. Marvell Tech. Group, Ltd., Case No. 2014-1492 (August 4, 2015) (precedential) (3-0) Patent Nos. 6,201,839; 6,438,180

Key point(s):

  • Infringement damages cannot include products not made in, sold in, used in, or imported into the United States.
  • Infringement is not willful if an objectively reasonable defense is presented at any time during the case, whether or not the defense was known at the time of infringement.
  • Laches, an equitable defense, cannot apply if the defendant has engaged in egregious copying of a patented invention.

Ethicon Endo-Surgery, Inc. v. Covidien, Inc., Case No. 2014-1370 (August 7, 2015) (precedential) (3-0) Patent Nos. 8,182,501; 5,989,275; D661,801-04.

Key point(s):

  • A claimed design with a function is invalid only if clear and convincing evidence shows that the design is dictated by the function.
  • Alternative designs with the same function are evidence that a design is not dictated by the function.
  • Functionality of the design of an apparatus must be evaluated separately from functionality of alternative apparatus.

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