August 16, 2018

Federal Circuit Court Decisions For Week Ending July 20, 2018

Blackbird Tech LLC. v. ELB Electronics, Inc., No. 2017-1702 (July 16, 2018) (nonprecedential) Patent No. 7,086,747

Key point(s):

  • A limitation expressly eliminated from the claim during prosecution ought not be imported to the claim even though the claim limitation is described in the specification.

Burnett v. Panasonic Corporation, No. 2018-1234 (July 16, 2018) (Per Curiam) (nonprecedential) Patent No. 7,107,286

Key point(s):

  • A claim may produce a useful result and yet not be patent-eligible under the Supreme Court’s decision in Alice.

Swartz v. USPTO, No. 2018-1122 (July 17, 2018) (Per Curiam) (nonprecedential) Patent Application Nos. 12/932,058, 13/544,381, 12/316,643, 09/748,258, and 09/750,765

Key point(s):

  • The USPTO has the initial burden of challenging the utility of an invention but satisfies that burden by relying on a Federal Circuit decision holding that an invention suggests an inherently unbelievable undertaking.

BASF Corporation v. Iancu, Nos. 2017-1425 – 1428 (July 17, 2018) (nonprecedential) Patent Nos. 7,601,662 and 8,404,203

Key point(s):

  • The Federal Circuit has jurisdiction to review partial IPR decisions when the combination of the non-institution decisions and final written decisions on the instituted claims and grounds “terminated the IPR proceedings” such that those decisions were final.
  • The appellate court does not need to correct an erroneous partial decision in the absence of an appropriate request for relief on that basis.

Interval Licensing LLC, v. AOL Inc., No. 2016-2502, 2505, 2506, and 2507_(July 20,2018) (precedential) (2-1) Patent No. 6,034,652

Key point(s):

  • Claims consisting of generic and conventional information acquisition and organization steps that are connected to, but do not convert, an abstract idea into a particular conception of how to carry out the concept are directed to ineligible subject matter.
  • Claims limitations recited at a high level of generality and conventional components do not convert any inventive concept sufficient to convert an abstract idea into a patent-eligible application.

Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc., Nos. 2018-1638 – 1643 (July 20, 2018) precedential, (3-0)

Key point(s):

  • Tribal sovereign immunity cannot be asserted as a defense to an IPR because an IPR is more like an agency enforcement action than a civil suit brought by a private party and tribal immunity is not implicated.

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