January 5, 2017

Federal Circuit Court Decisions For Week Ending December 9, 2016

Impulse Technology Ltd. v. Microsoft, Case No. 2016-1015 (Dec. 7, 2016) (Nonprecedential) Patent Nos. 6,308,565, 6,430,997, 6,765,726, 6,876,496, 7,359,121, and 7,791,808

Key point(s):

  • Hardcoded values and mathematical constructs for a physical space do not infringe a claim construction requiring an actual physical space, literally or under the doctrine of equivalents.

In Re: NuVasive, Inc., Case No. 2015-1670 (Dec. 7, 2016) (precedential) (3-0) Patent No. 8,361,156

Key point(s):

  • The PTAB must articulate a reason why a PHOSITA would combine prior art references
  • It is not adequate for the PTAB to summarize and reject arguments without explaining a reason for accepting a prevailing argument
  • PTAB cannot rely solely on common knowledge or common sense to support its findings

Virnetx Inc. v. Apple Inc. (Dec. 9, 2016) (Nonprecedential) Patent No. 8,504,697

Key point(s):

  • The PTAB may make factual findings absent expert testimony
  • The PTAB may give expert testimony less weight than other evidence, provided the PTAB’s decision is supported with substantial evidence

Asetek Denmark A/S v. CMI USA Inc. (Dec. 2, 2016) (precedential) (2-1) Patent Nos. 8,240,362 and 8,245,764

Key point(s):

  • Dismissal of infringement claims against a party does not bar relief from future conduct
  • Injunction covering new violations by party not found liable for infringement must be examined under a highly fact-specific analysis

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