December 9, 2015

Federal Circuit Court Decisions For Week Ending December 4, 2015

Cardsoft, LLC, v. VeriFone, Inc. et al, No. 2014-1135 (December 2, 2015) Precedential (3-0) Patent Nos. 6,934,945 and 7,302,683

Key point(s):

  • Remand from Supreme Court to consider factual findings by the district court regarding construction of “virtual machine” does not alter prior decision to reverse the district court in absence of factual findings by the district court.

MCM Portfolio LLC v. Hewlitt-Packard Co., No. 2015-1091 (December 2, 2015) Precedential (3-0) Patent No. 7,162,549

Key point(s):

  • Federal Circuit has no jurisdiction to review PTAB decision that an Inter Partes Review (IPR) is not barred under 35 USC Section 315(b).
  • An IPR proceeding does not violate Article III or Seventh Amendment.
  • Inability to physically combine all elements of references without introducing an element prohibited by one reference does not negate a sufficient showing that the combination of references suggests claimed subject matter.

In Re: Hill-Rom Services, Inc., No. 2015-1305 (December 2, 2015) Non-precedential Patent No. 5,771,511

Key point(s):

  • The Patent Owner’s failure to request rehearing by the PTAB based on entry by the PTAB of a new ground of rejection during an appeal

Commonwealth Scientific and Industrial Research Org. v. Cisco Systems, Inc., No. 2015-1066 (December 3, 2015) Precedential (3-0) Patent No. 5,487,069

Key point(s):

  • A reasonable royalty damage award must account for the standard-essential status of a patent, which requires determining value of the patent in absence of the standard.
  • Prior agreements by the same parties for similar standard essential patents (SEPs) are relevant to finding reasonable and non-discriminatory (RAND) terms.

Prolitec, Inc v. ScentAir Technologies, Inc, No. 2015-1020 (December 4, 2015) Precedential (2-1) Patent No. 7,712,683

Key point(s):

  • Motion to amend claims in an Inter Partes Review requires analysis of all relevant references in the prosecution history, not just references submitted in the IPR

Related Team:

Keith Tackett

Retired Partner