August 11, 2017

Federal Circuit Court Decisions For Week Ending July 28, 2017

Home Semiconductor Corp. v. Samsung Elecs. Co., No. 2016-2215 (July 25, 2017) (Non-precedential) Patent No. 6,146,997

Key point(s):

  • A claim term may not be construed in such a way that, in light of the specification, would render other claim language superfluous.

Spherix Incorporated v. Joseph Matal, No. 2016-1790 (July 25, 2017) (Non-precedential) Patent No. 5,581,599

Key point(s):

  • The PTAB may construe claim limitations as means-plus-function limitations “in the alternative.”
  • A party may not assert that it had insufficient notice of a construction if the party argued for that construction.

Netlist, Inc. v. Diablo Technologies, Inc., Nos. 2016-1742, 2016-1743, 2016-1744 (July 25, 2017) (Non-precedential) Patent Nos. 7,881,150, 8,081,536

Key point(s):

  • The PTAB must construe claim terms based on the context in which the terms are used in the claims.

Soft Gel Technologies, Inc. v. Jarrow Formulas, Inc., No. 2017-1051 (July 26, 2017) (Precedential, 3-0) Patent Nos. 8,124,072, 8,105,583, 8,147,826

Key point(s):

  • Obviousness only requires “a reasonable expectation of success,” not “absolute predictability.”

Regeneron Pharmaceuticals, Inc. v. Merus N.V., No. 2016-1346 (July 27, 2017) (Precedential, 2-1) Patent No. 8,502,018

Key point(s):

  • While a patent cannot be held unenforceable as a sanction for litigation misconduct, it is permissible to draw an adverse inference regarding intent to deceive the USPTO as a sanction for litigation misconduct.

Alfred T. Giuliano v. SanDisk LLC, No. 2016-2166 (July 27, 2017) (Non-precedential) Patent Nos. 5,172,338 and 5,991,517

Key point(s):

  • The mere presence of an undisclosed reference in a database, where there was no evidence showing that the patentee had searched and found a copy of that reference during the prosecution of the patent, is not enough to show an intent to deceive for purposes of inequitable conduct.

Audatex North America, Inc. v. Mitchell International, Inc., Nos. 2016-1913, 2016-1914 (July 27, 2017) (Non-precedential) Patent Nos. 7,912,740 and 8,468,038

Key point(s):

  • Claims which recite an abstract idea performed with the aid of well-known technological features, not recited in a manner that produces “a result that overrides the routine and conventional” use of these known features, are not patent eligible under § 101.

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Eric Moore