March 21, 2016

Federal Circuit Court Decisions For Week Ending February 26, 2016

Nuance Communications, Inc. v. ABBYY USA Software House, Inc.
No. 2014-1629, 2014-1630 (February 22, 2016) (precedential) (3-0) Patent No. 6,038,342

Key point(s):

  • Having willingly winnowed down the patents for trial, there was no due process violation in having the case limited to those patents.
  • If a party has proposed claim construction, it cannot later seek a new claim construction.

Rembrandt Social Media, LP v. Facebook, Inc. No. 2014-1812 (February 25, 2016) (non-precedential) Patent No. 6,415,316 and 6,289,362

Key point(s):

  • Be sure to object to claim construction rulings to preserve the matter for appeal if the claim construction is not exactly as desired.

ACCO Brands Corp. v. Fellows, Inc. No. 2015-1045 (February 22, 2016) (precedential) (3-0) Patent No. 7,963,468

Key point(s):

  • When there are multiple obvious combinations, even if one of the multiple obvious combinations is not within the claim scope, the one obvious combination outside the claim scope does not undercut the fact that at least one combination is within the claim scope.

PPC Boradband, Inc. v. Corning Optical Communications RF, LLC No. 2015-1361, 2015-1366, 2015-1368, 2015-1369 (February 22, 2016) (precedential) (3-0) Patent No. 8,287,320; 8,323,060 & 8,313,353

Key point(s):

  • Cuozzo sets the standard for IPR determinations and may result in a different construction and ultimate outcome than Phillips.

PPC Boradband, Inc. v. Corning Optical Communications RF, LLC No. 2015-1364 (February 22, 2016) (precedential) (3-0) Patent No. 8,323,060

Key point(s):

  • The canon that different words have different meanings has less weight with regards to words in the preamble that have no weight.
  • The broadest reasonable interpretation consistent with the specification is not always the one that covers the most embodiments. The fact that one claim construction covers more embodiments than another construction does not categorically render that construction reasonable.

Howmedica Osteonics Corp. v. Zimmer, Inc. No. 2015-1498, 2015-1503 (February 26, 2016) (non-precedential) (2-1) Patent No. 6,818,020

Key point(s):

  • The patentee may not rely on the preamble of the claim to avoid prior art when the claim body defines a structurally complete invention.

Apple Inc. v. Samsung Electronics Co. LTD. No. 2015-1171, 2015-1195, 2015-1994 (February 26, 2016) (precedential) (3-0) Patent No. 5,946,647; 6,847,959; 7,761,414; 8,046,721; 8,074,172; 5,579,239; 6,226,449

Key point(s):

  • Discussion of a preferred design among multiple designs is not evidence of teaching away.
  • The nature of the prior art submitted in an IDS can be informative as to the field of endeavor.

Related Team:

Steve VerSteeg