Publications & Media

Federal Circuit Court Decisions For Week Ending February 8, 2019

Rehco, LLC v. Spin Master, Ltd., No. 2017-2589 (February 4, 2019) (non-precedential) Patent No. 7,100,866

Key point(s):

  • A term defined in a contract is given the defined meaning when referred to later in the contract.
  • Use of the article “a” or “an” in a patent claim generally means “one or more” unless the patentee shows clear intent for it to mean “one”. Later use of articles “the”, “said”, or “it” do not show clear intent to mean “one”.

Sanofi Mature IP v. Mylab Labs Ltd., No. 2018-1203 (February 5, 2019) (non-precedential) Patent No. 8,927,592

Key point(s):

  • The IPR petitioner bears the burden of proving the proposed amended claims are unpatentable.
  • A preamble is limiting when it is necessary to give meaning and vitality to the claims.

Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC, No. 2017-2508 (February 6, 2019) (precedential, 2-1) Patent No. 7,267,820

Key point(s):

  • Claims that recite a natural law and conventional means of detecting it are directed to a natural law.
  • Preemption of a natural law is sufficient to render claim ineligible, but is not required.
  • Use of man-made molecules is not decisive if it amounts to only a routine step in a conventional method for observing a natural law.
  • To supply an inventive concept, the claimed sequence of steps must do more than adapt a conventional assay to a newly discovered natural law.

Momenta Pharmaceuticals, Inc. v. Bristol-Myers Squibb Co., No. 2017-1694 (February 7, 2019) (precedential, 3-0) Patent No. 8,476,239

Key point(s):

  • The AIA estoppel provision does not provide injury-in-fact grounds for standing where there is no current activity for a potential infringement suit.
  • Speculative future royalties do not establish standing.

Codexis, Inc. v. Enzymeworks, Inc., No. 2018-1655 (February 8, 2019) (non-precedential)

Key point(s):

  • A district court has authority to punish contempt of a court order when a party fails to take all reasonable steps within the party’s power to comply.
  • Filing of a notice of appeal moves jurisdiction over the case to the appellate court.

Continental Circuits LLC v. Intel Corporation, et al., No. 2018-1076 (February 8, 2019) (precedential, 3-0) Patent Nos. 7,501,582; 8,278,560; 8,581,105; and 9,374,912

Key point(s):

  • Even when the specification describes only a single embodiment, the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using words or expressions of manifest exclusion or restriction.
  • Mere criticism of a particular embodiment is not sufficient to rise to the level of clear disavowal.

Drop Stop LLC v. Jian Qing Zhu, No. 2018-1533 (February 8, 2019) (non-precedential) U.S. Patent No. 8,267,291

Key point(s):

  • Because a district court lives with a case over a prolonged period of time, it is better positioned to decide whether a case is exceptional.
  • While individual acts of misconduct might not make a party’s conduct look exceptional, the conduct over the course of the entire litigation can support the conclusion that it is an exceptional case.

Voit Technologies, LLC v. Del-Ton, Inc., No. 2018-1536 (February 8, 2019) (non-precedential) U.S. Patent No. 6,226,412

Key point(s):

  • Claims directed to improved speed or efficiency inherent with applying the abstract idea on a computer are insufficient to demonstrate an inventive concept.
  • For claims to be found patent eligible under § 101, a patentee has to do more than assert that the claims are directed to a technological improvement without an explanation of the nature of that improvement.