October 22, 2019

Federal Circuit Court Decisions For Week Ending July 12, 2019

VirnetX Inc. v. The Mangrove Partners Master Fund, Ltd., Nos. 2017-1368 and 2017-1383 (July 8, 2019) (nonprecedential); Patent Nos. 6,502,135; 7,490,151

Key point(s):

  • A party must demonstrate prejudice to assert improper joinder otherwise permitted under 35 U.S.C. 315(c).
  • The PTAB must afford patent owners an opportunity to at least file a motion for additional discovery before concluding additional discovery is not warranted.
  • The meaning of a claim term does not change depending on the party that argues prosecution disclaimer.

In re Black, No. 2018-1166 (July 8, 2019) (nonprecedential); Patent App. No. 13/542,146

Key point(s):

  • The hallmark of whether the PTAB has made a new ground for rejection is whether applicants have had an opportunity to respond to the “thrust of the rejection.”

General Electric Company v. United Technologies Corporation, No. 2017-2497 (July 10, 2019) (precedential) (3-0); Patent No. 8,511,605

Key point(s):

  • Speculative injuries do not support constitutional standing.

Quake v. Lo, 2018-1779, 2018-1780, 2018-1782 (July 10, 2019) (precedential) (3-0); Patent No. 8,008,018 and Patent App. No. 12/393,833

Key point(s):

  • On remand, the PTAB need not reopen the record if (1) the proffered testimony is not inconsistent with the same witness’s previous testimony; (2) there is a reviewable transcript of discussion of the issue with the parties; and (3) the PTAB provides written, reviewable reasoning for why it did not allow the new evidence into the record.

TQ Delta, LLC v. Dish Network LLC, No. 2018-1799 (July 10, 2019) (precedential) (3-0); Patent No. 8,611,404

Key point(s):

  • A change in claim construction by the PTAB during an IPR is not an APA violation if the parties have adequate notice of the change.
  • Construction of a claim limitation for an IPR Final Written Decision is not a change in claim construction if the PTAB did not previously construe the limitation.
  • The PTAB’s decision to uphold patent claims does not invoke the “competitor standing” doctrine, if the competitive landscape (e.g., prices and competitors) for the field remains unchanged.
  • The AIA estoppel provision does not create injury in fact for standing when the party does not practice the patent claim and injury is speculative.

Cisco Systems, Inc. v. TQ Delta, LLC, No. 2018-1806, , No. 2018-1917 (July 10, 2019) (precedential) (3-0); Patent No. 8,611,404

Key point(s):

  • The PTAB must follow PTAB policy of construing a claim using broadest reasonable interpretation during an IPR.

In re JS ADL, LLC, No. 2018-2017 (July 11, 2019) (nonprecedential) ; Trademark App. No. 87/200,423

Key point(s):

  • Minor distinctions in spelling and pronunciation are not enough to overcome similarity in overall commercial impression of marks.
  • Registrations do not demonstrate that consumers actually are conditioned to distinguishing among marks; one needs evidence of use of the marks.

Indivior Inc., v. Dr. Reddy’s Laboratories, S.A., Nos. 2017-2587, 2018-1010, 2018-1058, 2018-1062, 2018-1114, 2018-1115, 2018-1176, 2018-1177, 2018-1949, 2018-2045 (July 12, 2019) (precedential) (2-1); Patent Nos. 8,603,514; 8,900,497; and 8,017,150

Key point(s):

  • Repeatedly disparaging an embodiment may disclaim it.
  • Claim construction tactical decisions cannot be undone through Fed R. Civ. P. 59.

Samsung Electronics Co., Ltd. v. Infobridge Pte. Ltd., Nos. 2018-2007, 2018-2012 (July 12, 2019) (precedential) (3-0); Patent No. 8,917,772

Key point(s):

  • The standard for whether a reference can be prior art is whether the reference was accessible, not whether it was accessed.

In re Greenstein, No. 2019-1382 (July 12, 2019) (nonprecedential); Patent App. No. 10/492,205

Key point(s):

  • Placing an abstract idea in the context of a computer does not create a patent-eligible application of that idea.

Related Team:

Preston Kent

Of Counsel