Publications & Media

Federal Circuit Court Decisions For Week Ending July 13, 2018

TF3 Limited v. Tre Milano, LLC, No. 2016-2285 (July 13, 2018) (Precedential) (3-0) Patent No. 8,651,118

Key point:

  • The broadest reasonable interpretation of a claim must be reasonable in light of the claims and specification.
  • The term “i.e.” is definitional (signals an intent to define the word to which it refers) when it comports with the specification and every other reference

Texas Advanced Optoelectronic Solutions, Inc., v. Renesas Electronics America, Inc., F/K/A Intersil Corp., Nos. 2016-2121, 2016-2208, 2016-2235 (May 1, 2018) (Precedential) (3-0), Patent No. 6,596,981

Key points:

  • A method claim is not infringed by a device that has the capability to perform the method if the method is not performed in practice.
  • When an apparatus claim recites a means for performing a function as part of a monolithic structure, and a potentially infringing device can perform that function only when “activated” by a separate device, a reasonable jury could find that the separate device’s simple “activation” is not part of the means.

Jazz Pharmaceuticals, Inc., v. Amneal Pharmaceuticals, LLC, Nos. 2017-1671, 2017-1673, 2017-1674, 2017-1675, 2017-1676 (July 13, 2018) (Precedential) (3-0), Patent Nos. 7,668,730; 7,765,106; 7,765,107; 7,895,059; 8,589,182; 8,457,988; and 8,731,963

Key point:

  • Wide dissemination of a reference through a publication like the Federal Register, that those of ordinary skill would be motivated to examine, is a factor strongly favoring public accessibility.

Endo Pharmaceuticals Solutions, Inc. v. Custopharm Inc., No. 2017-1719 (July 13, 2018) (Precedential) (3-0) Patent Nos. 7,718,640; 8,338,395

Key point:

  • To establish that a prior art reference inherently discloses a claim limitation, the limitation necessarily must be present, or be the natural result of the combination of elements disclosed by the prior art

Polara Engineering Inc. v. Campbell Company, Nos. 2017-1974, 2017-2033 (July 10, 2018) (Precedential) (3-0) Patent No. 7,145,476

Key point:

  • Experimental use of an invention in view of the public is not “public use” under § 102(b) if its purpose is to test claimed features of the invention or to determine whether an invention will work for its intended purpose.

Apple Inc. v. ContentGuard Holdings, Inc., Nos. 2016-2548, 2016-2557, 2016-2559, 2016-2629 (July 11, 2018) (Nonprecedential), Patent No. 7,774,280

Key point:

  • For a patent to qualify as a covered business method (CBM) patent, it is not enough for the specification to describe how the invention could, in some instances, be used to facilitate financial transactions.