February 11, 2016

Federal Circuit Court Decisions For Week Ending January 29, 2016

Agilent Technologies, Inc. v. Waters Technology Corporation, No. 2015-1280, January 29, 2016 (precedential) (3-0); Patent No. 6,648,609

Key point(s):

  • Inter partes reexamination decisions may be appealed by third-party requestors, but not by privies to third party requestors.

Industrial Technology Research Institute v. Pacific Biosciences of California, Inc., No. 2015-1200, January 29, 2016 (nonprecedential); Patent No. 8,486,630

Key point(s):

  • The Federal Circuit reviews for substantial evidence the factual findings underlying a legal determination of obviousness.
  • When a motion for judgment of unpatentability against an opponent’s claim on the basis of prior art is granted, each of the movant’s claims corresponding to the same count as the opponent’s claim will be presumed to be unpatentable in view of the same prior art unless the movant in its motion rebuts this presumption.
  • To receive the benefit of an earlier application in an interference, the application must contain an adequate written description of at least one embodiment of the count.

Illumina Cambridge, Ltd. v. Intelligent Bio-Systems, Inc., No. 2015-1123, January 29, 2016 (nonprecedential); Patent Nos. 7,057,026 and 8,158,346

Key point(s):

  • A showing that proposed substitute claims are patentable over the prior art of record is required in order to establish that the patent owner is entitled to amend the patent with the proposed substitute claims.

Avid Technology, Inc.. v. Harmonic, Inc., No. 2015-1246, January 29,
2016 (precedential) (3-0); Patent Nos. 6,760,808 and No. 7,487,309

Key point(s):

  • Error in claim construction given to a jury, absent argument that the evidence compels a finding of noninfringement independently of the construction error, requires setting aside a noninfringement verdict.

Akzo Nobel Coatings, Inc. v. Dow Chemical Company, No. 2015-1331, 2015-1389, January 29, 2016 (precedential) (3-0); Patent No. 6,767,956

Key point(s):

  • To establish equivalency, a patentee must show the insubstantiality of the differences between the claimed invention and the accused device or process. The function-way-result test often suffices to show the substantiality of the differences.
  • Patents are presumed to be valid, and the challenger bears the burden of establishing that a claim is invalid for indefiniteness by showing its language, when read in light of the specification and prosecution history, fails to inform, with reasonable certainty, those skilled in the art about the scope of the invention.

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