Publications & Media

Federal Circuit Court Decisions For Week Ending February 7, 2020

Apple, Inc. v. Andrea Electronics Corp., No. 2018-2382, 2018-2383 (February 7, 2020) (precedential)(3-0); Patent No. 6,363,345

Key point(s):

  • An inter partes review (IPR) reply brief that relies on another example in previously relied upon evidence (e.g., prior art) to support the same argument does not raise a new ground.
  • A petitioner may introduce new evidence in an IPR proceeding after the petition stage if the evidence is a legitimate reply to evidence introduced by the patent owner.

Cheetah Omni, LLC v. AT&T Services, Inc., No. 2019-1264 (February 6, 2020) (precedential)(3-0); Patent No. 7,522,836

Key point(s):

  • Licensing of parent patents covering certain products provides a presumption that the continuation patents are impliedly licensed absent a clear indication of mutual intent to the contrary.

HVLPO2, LLC v. Oxygen Frog, LLC, No. 2019-1649 (February 5, 2020) (precedential)(3-0); Patent Nos. 8,876,941 and 9,372,488

Key point(s):

  • It is an abuse of discretion for a district court to permit a witness to testify as an expert on noninfringement or invalidity unless that witness is qualified as an expert in the pertinent art.
  • The prohibition of unqualified witness testimony extends to the ultimate conclusions of infringement and validity as well as to the underlying technical questions.

Samsung Electronics America, Inc. v. Prisua Engineering Corp., No. 2019-1169, 2019-1260 (February 4, 2020) (precedential)(3-0); Patent No. 8,650,591

Key point(s):

  • The statutory provisions governing the inter partes review (IPR) process do not permit the Board to institute IPR of claims (or cancel claims sua sponte) for ยง112 indefiniteness.