March 27, 2019

Federal Circuit Court Decisions For Week Ending February 1, 2019

Arunachalam v. IBM, No. 2018-2015 (January 28, 2019) (non-precedential); Patent No. 7,340,506

Key point(s):

  • A district court can dismiss a patent infringement case with prejudice when the patentee misses the deadline to appeal a PTAB decision invalidating the asserted claims.

Polygroup Ltd MCO v. Willis Elec. Co., Ltd, Nos. 2018-1748, 2018-1749, 2018-1750 (January 28, 2019) (non-precedential); Patent No. 8,936,379

Key point(s):

  • While it can be proper to rely on expert testimony to show that a claim term has a particular meaning in the pertinent field, conclusory assertions by experts are not proper in claim construction.

Polygroup Ltd MCO v. Willis Elec. Co., Ltd, Nos. 2018-1745, 2018-1746, 2018-1747 (January 28, 2019) (non-precedential); Patent Nos. 8,454,186, 8,454,187, 9,044,056

Key point(s):

  • Claims are not confined to the specific embodiments recited in the specification unless the specification specifically limits it to those embodiments or the claims were narrowed to those embodiments during prosecution.
  • When a party explicitly argues that one reference alone teaches every element of some challenged claims, the Board is required to consider those arguments, even if the party also argues for obviousness requiring multiple references.

In re Ikeda Food Research Co., Ltd, No. 2017-2624 (January 29, 2019) (non-precedential); Patent App. No. 12/851,668

Key point(s):

  • Relying on inherency to determine obviousness in substrate specificities is proper when enzymes have the same E.C. classification number, even though each enzyme is produced from a different microorganism.

In re Karpf, No. 2018-2090_(January 30, 2019) (non-precedential); Patent App. No. 11/645,067

Key point(s):

  • Extensive documentation showing a prevalent and costly issue is not enough for a finding of long felt need without specific evidence that the claimed invention meets that need.

Duncan Parking Technologies v. IPS Group, Inc., Nos. 2018-1205, 2018-1360 (January 31, 2019) (precedential) (3-0); Patent Nos. 8,595,054, 7,854,310

Key point(s):

  • Inventorship requires only that a co-inventor make a contribution to the conception of the subject matter of the claim, not all of the limitations of the claim.
  • The phrase “receivable within” implies a device is capable of being contained within and is not limited to being “completely within” or “entirely contained.”

Imperium IP Holdings v. Samsung Electronics Co., Ltd, Nos. 2017-2017, 2017-2133 (January 31, 2019) (non-precedential); Patent Nos. 6,271,884, 7,092,029, 6,836,290

Key point(s):

  • Jurors as the trier of fact are not at liberty to disregard arbitrarily the unequivocal, uncontradicted and unimpeached testimony of an expert witness where the testimony bears on technical questions beyond the competence of lay determination.

Prism Technologies LLC v. Sprint Spectrum L.P., No. 2018-1108 (February 1, 2019) (non-precedential); Patent Nos. 8,127,345, 8,387,155

Key point(s):

  • If a party never contests the scope of an appeal, the scope is determined as all of the claims addressed by the party asserting the appeal.

Mylan Pharmaceuticals Inc. v. Research Corporation Techs, Inc., Nos. 2017-2088, 2017-2089, 2017-2091_(February 1, 2019) (precedential) (3-0); Reissue Patent No. 38,551

Key point(s):

  • Parties joined as petitioners in an IPR proceeding have standing to be a party to an appeal.
  • A party’s request for SAS relief can be waived if the party’s request is not prompt.

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