February 19, 2016

Federal Circuit Court Decisions For Week Ending February 5, 2016

Site Update Solutions, LLC v. CBS Corp., No. 2015-1448,
February 1, 2016 (nonprecedential); Patent No. US RE40,683

Key point(s):

  • Attorney’s fee issues under Octane Fitness are within the sound discretion of the district court and such decisions can only be disturbed on appeal if they are based on an erroneous view of the law or other abuse of discretion.     

Purdue Pharma L.P. v. Epic Pharma, LLC  No. 2014-1294, February 1, 2016 (precedential) (3-0); U.S. Patent Nos. 7,674,799; 7,674,800; 7,683,072; and 8,114,383

Key point(s):

  • The terms “such as” and “and the like” established that McGinity disclosed a broader group of analgesic than just those listed. In addition, opioids are a major class of analgesics, and oxycodone was a widely prescribed analgesic at the time. Therefore, selecting analgesics from a long list of pharmaceutical categories and further choosing oxycodone, even though it was not disclosed by the McGinity reference, was permissible because the selected disclosures used by the district court are all directly related to the teachings of the cited reference.

Trustees of Columbia Univ. v. Symantec Corporation No. 2015-1146, February 2, 2016 (precedential) (3-0); U.S. Patent Nos. 7,487,544; 7,979,907; 7,448,084; 7,913,306; 8,074,115; and 8,601,322

Key point(s):

  • Claims must be construed separately if they are from separate patent families claiming different inventions, where the patents are filed separately and years apart, and with only one common inventor.

TriVascular, Inc. v. Samuels, No. 2015-1631, February 5, 2016 (precedential) (3-0); Patent No. 6,007,575

Key point(s):

  • Prosecution history disclaimer requires the existence of a “clear and unmistakable” disclaimer that would have been evident to one skilled in the art. Proposed claim amendments that are ultimately not adopted at issuance would most likely not be viewed as a disclaimer required for patentability by the court.

TriReme Medical, LLC v. Angioscore, Inc., No. 2015 1504, February 05, 2016 (precedential) (3-0); U.S. Patent Nos. 8,080,026; 8,454,636; and 8,721,667

Key point(s):

  • Estoppel by contract does not apply when an unlisted inventor, or his successor in interest, is not seeking to enforce any rights under the contract.

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