June 24, 2015

Federal Circuit Court Decisions For Week Ending June 12, 2015

Ariosa Diagnostics, Inc. v. Sequenom, Inc., Nos. 14-1139, 14-1144 (June 12, 2015) (precedential) (3-0), U.S. Patent No. 6,258,540

Key point(s):

  • Claims that recite a naturally occurring phenomenon and conventional steps for applying the naturally occurring phenomenon are not patent eligible

Sealant Systems International, Inc. v. Accessories, S.R.L. (June 11, 2015) (nonprecedential), Patent No. 7,789,110 & Patent No. 6,789,581

Key point(s):

  • Party who was first added in an amended complaint had standing to sue for infringement because it owned the patent at the time it first asserted patent infringement.
  • Claim construction must be viewed through the lens of a PHOSITA and construction that conflicts with only construction a PHOSITA would adopt is in error.

OIP Technologies, Inc. v. Amazon.Com, Inc. (June 11, 2015) (precedential) (3-0), Patent No. 7,970,713

Key point(s):

  • Claims that do not preempt all activities in an area or are limited to preemption in just an e-commerce setting may still be abstract.
  • Claims that merely recite well-understood, routine, conventional activities, either by requiring conventional computer activities or routine data-gathering steps are not patent-eligible.

Kaneka Corporation v. Xiamen Kingdomway Group Company (June 10, 2015) (precedential) (3-0), Patent No. 7,910,340

Key point(s):

  • Claim construction that excludes all preferred embodiments is “especially disfavored.”
  • Claim term can have more than one plain and ordinary meaning.
  • An active step cannot be interpreted as doing nothing or allowed to occur on its own.
  • Claims that implicitly require order must be done in the order prescribed.
  • Claims that require a continuous process do not require each step to occur independently and separately.

Acme Scale Company, Inc. v. LTS Scale Company, LLC (June 10, 2015) (nonprecedential), Patent No. 7,757,946

Key point(s):

  • Even if specification broadly defines term, term cannot be construed to cover embodiments that do not have the same intent or function as the examples contained in the specification.

Virginia Information Sciences, Inc. v. Samsung Electronics Co., Ltd., No. 14-1477 (June 9, 2015) (nonprecedential), Patent Nos. 7,899,492, 8,050,711, and 8,145,268

Key point(s):

  • If intrinsic evidence is not dispositive in defining a claim term, the district court must build a record based on extrinsic evidence before ruling on validity and infringement

In re Gilbert C. Gee, No. 15-1145 (June 8, 2015) (non-precedential), Patent Application No. 10/602,404

Key point(s):

  • A combination of known items with a known effect to produce the same known effect is unpatentable.
  • When raising an argument that a combination was not obvious to try, the applicant must provide evidence that the combination of known items yields a composition with unexpected results.

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