Publications & Media

Federal Circuit Court Decisions For Week Ending June 1, 2018

Polaris Industries Inc., v. Artic Cat, Inc., Nos. 2017-1870, 2018-1871 (May 30, 2018) (per curiam) (nonprecedential) Patent No. 8,287,028

Key point(s):

  • Failing to argue against partial institution in an IPR did not waive the right of remand to address noninstituted claims and grounds following SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018).

Ericsson Inc. v. Intellectual Ventures I LLC, No. 2016-1671 (May 29, 2018) (precedential) (2-1) Patent No. 6,952,408

Key point:

  • More than an unsupported or conclusory expert opinion about the meaning of a reference to a POSITA is necessary to contradict the reference’s express statements.

Tinnus Enterprises, LLC v. Telebrands Corporation, No. 2017-1726 (May 30, 2018) (nonprecedential) Patent No. 9,051,066.

Key point:

  • Courts will presume that Examiner’s amendments bringing the claims into condition for allowance do not include indefinite terms.

Zeroclick, LLC v. Apple Inc., No. 2017-1267 (June 1, 2018) (precedential) (3-0) Patent Nos. 7,818,691, 8,549,443

Key point:

  • Overcoming the presumption against means-plus-function interpretation for a term not using “means for” requires evidentiary support.

In re Durance, No. 2017-1486 (June 1, 2018) (precedential) (3-0) Application No. 12/682,989.

Key point:

  • An applicant is not barred under 37 C.F.R. §41.41 from responding to a new argument raised in the Examiner’s answer.

Steven E Berkheimer, v. HP Inc., FKA Hewlett-Packard Company, No.2017-1437, & Aatrix Software, Inc., v. Green Shades Software, Inc, No. 2017-1452, (May 31, 2018) (precedential) (7-1)

Key point(s):

  • Determining whether a claim, element, or combination of elements would be well-understood, routine, and conventional to a skilled artisan in the relevant field at a specific time is a question of fact.