December 28, 2015

Federal Circuit Court Decisions For Week Ending December 18, 2015

Openwave Systems, Inc. v. Apple Inc., No.2015-1108 (December 15, 2015) (Precedential) (3-0) Patent Nos. 6,405,037, 6,430,409, and 6,625,447

Key point(s):

  • Disavowal of claim scope, while a high bar, may be found through repeated disparagement of the prior art in the specification.
  • The specification needs to make clear that the invention does not include a particular feature.

Sightsound Technologies v. Apple, Inc., Nos. 2015-1159, 2015-1160 (December 15, 2015) (Precedential) (3-0) Patent Nos. 5,966,440 and 5,191,573

Key point(s):

  • Decisions related to the institution or initiations of covered business method review by the Board are not appealable, but the final result of the review is appealable.
  • The specification acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication.

Synqor, Inc. v. Artesyn Technologies, No. 2014-1459 (December 16, 2015) (Nonprecedential)

Key point(s):

  • The burden of proving infringement rests with the patentee who must prove infringement by a preponderance of the evidence.
  • Ordinarily, and absent compelling reasons otherwise, an appellate court defers to the lower court for credibility determinations of a witness.

Apple Inc. v. Samsung Electronics Co., Ltd., No. 2014-1802 (December 16, 2015) (Precedential) (2-1) (en banc) Patent Nos. 5,946,647; 8,046,721; and No. 8,074,172

Key point(s):

  • In the analysis for irreparable harm, the causal nexus requirement ensures that an injunction is only entered against a defendant on account of a harm resulting from the defendant’s wrongful conduct, not on account of irreparable harm caused by otherwise lawful competition.
  • However, the patentee is required to show only “some connection” between the infringement and the lost sales for irreparable harm rather than the “exclusive or predominant reason.”

In Re DiStefano, No. 2015- 1453 (December 17, 2015) (Precedential) (3-0) Patent Application No. 10/868,312

Key point(s):

  • The printed matter rule, which gives no weight to information recorded in any substrate or medium when comparing prior art and claimed subject matter, assesses matter claimed for its communicative content but should not be used when the content of the information is not claimed.

Merck & CIE v. Gnosis S.P.A., No. 2014-1779 (December 17, 2015) (Precedential) (2-1) Patent No. 6,011,040

Key point(s):

  • A factfinder’s analysis of a reason to combine known elements in the art does

South Alabama Medical Science Foundation v. Gnosis S.P.A., Nos. 2014-1778, 2014-1780, and 2014-1781 (December 17, 2015) (Precedential) (2-1) Patent Nos. 5,997,915; 6,673,381; and 7,172,778.

Key point(s):

  • In an obviousness analysis, evidence of commercial success is not required for every potential embodiment of the claims.
  • The relevant inquiry into evidence of licensing as a secondary consideration is whether there is a nexus between the patent and the licensing activity itself such that the factfinder could infer that the licensing “arose out of recognition and acceptance of the subject matter claimed” in the patent.

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