Publications & Media

Federal Circuit Court Decisions For Week Ending August 9, 2019

Collabo Innovations, Inc. v. Sony Corp., No. 2018-1311 (August 5, 2019) (nonprecedential); Patent No. 5,952,714

Key point(s):

  • IPR proceedings against patents issued before enactment of the America Invents Act are constitutional and not a taking under the 5th amendment.

Ajinomoto Co. v. ITC, No. 2018-1590, 2018-1629 (August 6, 2019) (precedential) (2-1); Patent No. 7,666,655

Key point(s):

  • Prosecution history estoppel applies when claims are amended in response to a written description rejection.
  • A determination of infringement, whether literal or under the doctrine of equivalents, is a finding of fact, reviewed for substantial evidence. But a determination of the applicability of prosecution history estoppel is a matter of law, reviewed de novo.

ATEN International Co. v. Uniclass Technology Co., No. 2018-1606 (August 6, 2019) (precedential) (3-0); Patent Nos. 8,589,141 and 7,640,289

Key point(s):

  • A reference is not prior art if the evidence shows only that the reference is from the same year that the patent was filed (or invented, for pre-AIA).
  • Failing to object to expert testimony allegedly causing confusion about claim construction waived any right to challenge the jury’s finding based on that testimony.

Aten International Co. v. Uniclass Technology Co., No. 2018-1922 (August 6, 2019) (precedential) (3-0); Patent Nos. 8,589,141 and 7,640,289

Key point(s):

 A case is not exceptional based solely on the fact that costs of litigation outweighed potential recovery.

Nuvo Pharmaceuticals v. Lupin Pharmaceuticals., No. 2017-2487, 2017-2488 (August 7, 2019) (nonprecedential) (per curiam); Patent Nos. 6,926,907 and 8,557,285

Key point(s):

  • An invalidated patent may not be asserted under the doctrine of collateral estoppel.

Genetic Veterinary Sciences, Inc. v. Laboklin GMBH, No. 2018-2056 (unsealed August, 8, 2019) (nonprecedential); Patent No. 9,157,114

Key point(s):

  • Observation of a natural phenomenon with conventional techniques is not subject-matter eligible under §101.

Eli Lilly and Company v. Hospira, Inc., No. 2018-2126, 2018-2127 and Eli Lilly and Company v. Dr. Reddy’s Laboratories, Inc., No. 2018-2129 (August 9, 2019) (precedential) (3-0); Patent No. 7,772,209

Key point(s):

  • When a claim amendment is only tangentially related to the subject-matter at question, the doctrine of equivalents is not barred by prosecution history estoppel.