March 11, 2016

Federal Circuit Court Decisions For Week Ending February 19, 2016

Lismont v. Alexander Binzel Corporation, No. 2014-1846, (February 16, 2016) (Precedential) (3-0); Patent No. US 6,429,406

Key point(s):

  • Mere initiation of patent litigation in a foreign jurisdiction and the existence of a counterpart U.S. patent is not sufficient notice to a defendant to rebut a presumption of laches barring litigation over inventorship.

Secure Web Conference Corp. v. Microsoft Corp., No. 2016-1321, (February 17, 2016) (Non-precedential ); U.S. Patent Nos. 6,856,686 and 6,856,687

Key point(s):

  • Claim construction that a “device” was a “stand-alone” device which was “external to and separate from” other devices was supported by a specification that never contemplated an embedded device.

High Point Sarl v. T-Mobile USA, Inc., No. 2015-1235, (February 18, 2016) (Non-precedential ); U.S. Patent No. 5,195,090, 5,305,308, and 5,184,347

Key point(s):

  • A cross-licensing agreement covering “any or all products of the kinds which were furnished or used” by the licensing parties applies to new products even if those products were not specifically sold at the effective date of the cross-licensing agreement for purposes of patent exhaustion.

Ohio Willow Wood Co. v. Alps South, LLC, No. 2015-1132 and -1133, (February 19, 2016) (Precedential ) (3-0); U.S. Patent No. 5,830,237

Key point(s):

  • Evidence that a party withheld corroborating evidence, while knowing the question of validity turned in substantial part on uncorroborated testimony regarding prior art, meets the Therasense standard for inequitable conduct.

White v. H.J. Heinz Co., No. 2015-1176, (February 19, 2016) (Non-precedential ); U.S. Patent No. 8,231,026

Key point(s):

  • Inherent anticipation requires that the prior art necessarily include the unstated limitation.

Zoltek Corp. v. US, No. 2014-5082, (February 19, 2016) (Precedential ) (3-0); U.S. Reissue Patent No. RE 34,162 or U.S. 4,728,395

Key point(s):

  • It is not an improper broadening amendment when a reissue applicant, with the considered agreement of the reissue Examiner, substitutes a preparatory step known to those skilled in the art at the time of the invention with a requirement to start with the product of that known preparatory step (e.g., “previously oxidized and stabilized fiber starting material”).
  • Testimony that an expert witness was able to reproduce a discovery underpinning a patented method using data from the prior art record is not dispositive evidence of obviousness.

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