July 21, 2017

Federal Circuit Court Decisions For Week Ending July 7, 2017

Shinn Fu Co. of Am. v. The Tire Hanger Corp., No. 2016-2250, (July 3, 2017) (Non-precedential) U.S. Patent No. 6,681,897

Key point(s):

  • The PTAB has an obligation to address arguments raised in an opposition to motion to amend in an IPR.

AdjustaCam, LLC v. Newegg, Inc., No. 2016-1882, July 5, 2017 (Precedential) (3-0); Patent No. 5,855,343

Key point(s):

  • Whether a case is sufficiently “exceptional” to warrant recovery of attorney fees and expert feesis decided by the district court based on independent evaluation of the evidence before it.

Parallel Networks LLC v. Kayak Software Corp., No’s. 2015-1681, 2016-1944, (July 5, 2017) (Non-precedential) U.S. Patent No. 6,446,111

Key point(s):

  • District courts cannot dismiss invalidity claims with prejudice on the mistaken premise that the parties had entered an agreement for a covenant not to sue.

Hitachi Metals LTD. v. Alliance of Rare-Earth Permanent Magnet Industry, Nos. 2016-1824, 2016-1825 (July 6, 2017) (Non-precedential) U.S. Patent Nos. 6,537,385 and 6,491,765

Key point(s):

  • The PTAB cannot reject the argument of no motivation to combine due to commercial consideration when it found that one of skill in the art would have been motivated to combine the references due to “design incentives.”

IPCom GMBH & CO. v. HTC Corporation, No. 2016-1474, (July 7, 2017) (Precedential) (3-0) U.S. Patent No. 6,879,830

Key point(s):

  • In performing an obviousness analysis, the PTAB cannot construe a means-plus-function limitation by relying solely on functionality without considering the corresponding structure.

  • Related Team: