February 29, 2016

Federal Circuit Court Decisions For Week Ending February 12, 2016

Rosebud LMS Inc., v. Adobe Systems Inc., No. 2015-1428, (February 9, 2016) (Precedential) (3-0); Patent No. US 8,578,280

Key point(s):

  • While 35 U.S.C. § 154(d) requires actual notice (among other requirements) of a published patent application for pre-issuance damages, it does not require an affirmative act of notification.
  • However, § 154(d) is not satisfied by constructive notice, such as knowledge of related patents.

Synopsys, Inc. v. Mentor Graphics Corp., Nos. 2014-1516, 2014-1530, (February 10, 2016) (Precedential) (2-1); U.S. Patent No. 6,240,376

Key point(s):

  • The PTAB need only issue a final written decision with respect to claims on which IPR has been initiated and which are challenged by the petitioner after the institution stage.
  • Agencies must articulate “logical and rational” reasons for their decisions, but this does not require an agency to address every argument raised by a party or explain every possible reason supporting its conclusion. The Agency’s decision need only follow “effective judicial review.” 

Convolve, Inc. v. Compaq Computer Corp., No. 2014-1732 (February 10, 2016) (Precedential) (3-0) (Patent 6,314,473)

Key point(s):

  • Absent a clear statement to the contrary, recitation of “a device” will be construed as including one or more of those devices.
  • In determining whether intervening rights exist for a claim amended in reexamination, the scope, but not the exact wording, must be substantially identical.

TransWeb v. 3M Innovative Properties, Co., Case No. 2014-1646 (February 10, 2016) (Precedential) (3-0); U.S. Patent Nos. 6,397,458 and 6,808,551

Key point(s):

  • Each detail of oral testimony need not be independently corroborated; rather, the evidence, taken as a whole, must make the testimony credible.
  • Attorney fees that flow from an antitrust violation are an appropriate basis for damages.

Driessen v. Sony Music Entertainment, No. 2015-2050 (February 10, 2016) (Non-precedential); Patent Nos. 7,003,500; 7,636,695; 7,742,993

Key point(s):

  • All claim terms should be supported in detail in the written description.
  • New claims added by amendment after the original filing date must find support in the original specification.

Nike, Inc. v. Adidas AG, No. 2014-1719, (February 11, 2016) (precedential)(3-0); Patent No. 7,347,011

Key point(s):

  • In an IPR, the burden is on the patentee to show patentability of proposed substitute claims.
  • The burden of proof recited in 35 U.S.C. § 316(e) does not apply to proposed substitute claims in an IPR; rather the petitioner needs only to prove unpatentability of the issued claims actually challenged in the petition for review and for which the PTAB has instituted review.
  • The PTAB’s requirement that a patentee establish patentability of substitute claims over prior art not of record but known to the patentee includes only material prior art pursuant to the duty of candor and good faith to the PTO.   

Lexmark International, Inc. v. Impression Products, Inc., No. 2014-1617, (February 12, 2016) (en banc) (9-3)

Key point(s):

  • When a patentee sells a patented article under otherwise-proper restrictions on resale and reuse communicated to the buyer at the time of sale, the patentee does not confer authority on the buyer to engage in the prohibited resale or reuse. The patentee does not exhaust its § 271 rights to charge the buyer who engages in those acts—or downstream buyers having knowledge of the restrictions—with infringement.
  • A foreign sale of a U.S.-patented article, when made by or with the approval of the U.S. patentee, does not exhaust the patentee’s U.S. patent rights in the article sold, even when no reservation of rights accompanies the sale. Loss of U.S. patent rights based on a foreign sale remains a matter of express or implied license.

Related Team:

Nicholas Smith, Ph.D.