February 11, 2020

Federal Circuit Court Decisions For Week Ending January 10, 2020

Google LLC v. Koninklijke Philips N.V., No. 2019-1234 (January 6, 2020) (nonprecedential); Patent No. _RE44,913

Key point(s):

  • Unless there is evidence of an unexpected result or no reasonable expectation of success, in cases where there are a finite number of identified, predictable solutions, the patented method is obvious.

Amneal Pharmaceuticals LLC. v. Zydus Pharmaceuticals, No. 2018-2414, 2019-1086 (January 7, 2020) (precedential) (3-0); Patent No. 9,375,405

Key point(s):

  • For a claim that uses a “comprising” transition phrase and a limitation that requires a component “consist of” an item listed in a Markush group, this does not forbid infringement by an accused device having an additional component that is functionally similar to a component identified in the Markush group (unless there is evidence to the contrary).

Molon Motor and Coil Corporation v. Nidec Motor Corporation, No. 2019-1071 (January 10, 2020) (precedential) (2-1); Patent No. 6,465,915

Key point(s):

  • Though separate agreements cover the same patent, this does not necessarily mean the separate agreements concern the same subject matter.

Genentech, Inc. v. Hospira, Inc., No. 2018-1933 (January 10, 2020) (precedential) (3-0); Patent No. 7,807,799

Key point(s):

  • Applying IPR to pre-AIA patents is constitutional.

In re Thermolife International LLC, No. 2018-2189 (January 10, 2020) (nonprecedential); Patent No. _7,777,074

Key point(s):

  • An errant statement in a final decision regarding the law applied is not a reversible error when the error is in the statement only but the correct law is applied.

Personal Audio, LLC v. CBS Corp., No. 2018-2256 (January 10, 2020) precedential) (3-0); Patent No. 8,112,504

Key point(s):

  • Legality of a final written decision in an inter partes review can only be reviewed by direct appeal to the Federal Circuit, and not by a collateral attack at a district court.
  • A panel of the Federal Circuit cannot reconsider precedent of another panel.

Hospira, Inc. v. Fresenius Kabi USA, LLC, No. 2019-1329, 2019-1367 (January 9, 2020) (precedential) (3-0); Patent No. 8,648,106

Key point(s):

  • Where evidence is presented that a property is necessarily present in a combination, even if that evidence is not prior art, a court can conclude that the property is inherent when the patentee does not present evidence showing that the property is not necessarily present or, where appropriate, that any difference between the non-prior art evidence and the prior art is the reason why the evidence shows the property to be necessarily present.
  • A district court conflating a proper inherency analysis with a reasonable expectation of success analysis is harmless error.

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