February 21, 2018

Federal Circuit Court Decisions For Week Ending February 2, 2018

Smith & Nephew, Inc. v. Hologic, Inc., No. 2017-1008 (January 30, 2018) (nonprecedential) Patent No. 7,226,459

Key point(s):

  • To use a definition of a claim term that departs from the term’s plain and ordinary meaning, a patentee must clearly set forth a definition of a term that is other than its plain and ordinary meaning.
  • While a reference in an obviousness rejection can come from different fields of endeavor, a reference is non-analogous if it would not have commended itself to an inventor focused on solving a problem even if the reference describes a similar mechanical solution as that which is claimed.

Move, Inc. v. Real Estate Alliance Ltd., No. 2017-1463 (February 1, 2018) (nonprecedential) Patent Nos. 5,032,989 and 4,870,576

Key point(s):

  • Without specific implementation details or technical description, claims that are directed to the use of conventional computer technology to perform an action are likely to be directed to ineligible subject matter.
  • Parties are bound by representations they make during the course of litigation.

Paice LLC v. Ford Motor Co., Nos. 2017-1263, 2017-1264, 2017-1308, 2017-1309, 2017-1310, 2017-1311, 2017-1442, 2017-1443 (February 1, 2018) (nonprecedential) (Patent Nos. 7,237,634 and 7,104,347

Key Point(s):

  • The Federal Circuit will not disturb a finding that is supported by substantial evidence, which may be provided by expert testimony in view of the understanding of one of skill in the art.
  • While proportions of elements in drawings are generally not to be relied on to show size if the specification is silent, visual inspection may be used in interpreting a figure where a figure provides some scale information.

Paice, LLC v. Ford Motor Co., Nos. 2017-1387, 2017-1388, 2017-1390, 2017-1457, 2017-1458, 2017-1406 (February 1, 2018) (precedential) U.S. Patent Nos. 7,237,634 and 8,214,097

Key Point(s):

  • Where a claim limitation is not explicitly present in an application but was defined in a parent application, construction of the claim limitation is based on the definition in the parent application.
  • To limit the scope of an incorporation by reference, the subject matter to be incorporated must be explicitly identified.

Related Team:

Michael Lew