January 22, 2016

Federal Circuit Court Decisions For Week Ending January 8, 2016

In re Urbanski (January 8, 2016) Case No. 2015-1272 (precedential) (3-0); Patent Appl. No. 11/170,614.

Key point(s):

  • Even if modification of a prior art reference in view of another prior art reference would lead to inoperability of the modified reference for its intended purpose, the reference does not teach away from the combination if the prior art suggests the desirability of the modification. 

Wi-LAN, Inc. v. Apple, Inc. (January 8, 2016) Case Nos. 2014-1437, 2014-1485 (precedential) (3-0); U.S. Patent No. RE 37,802.

Key point(s):

  • Use of “tying” words in limitation can require an ordering of the claim steps.
  • A post-trial adjustment to claim construction to clarify what should have been obvious to the jury, would not have been obvious when that language was disputed by the parties during trial

Related Team:

Orson Bell