July 1, 2019

Federal Circuit Court Decisions For Week Ending June 14, 2019

In re Greenstein, No. 2019-1117 (June 10, 2019) (nonprecedential), Patent Application No. 12/851,021

Key point(s):

  • Claims directed to automating known financial investment practices on a computer do not constitute patent-eligible subject matter.

Reese v. Sprint Nextel Corp., Nos. 2018-1971, 2018-1972, 2018-1973, 2018-1974, 2018-1975 (June 10, 2019) (nonprecedential), Patent No. 6,868,150

Key point(s):

  • Claims directed to automating known business practices on a computer do not constitute patent-eligible subject matter.

Packers Plus Energy Services Inc. v. Baker Hughes Oilfield Operations, LLC, No. 2018-1490 (June 10, 2019) (nonprecedential), Patent No. 6,006,838

Key point(s):

  • The mere existence of a plain-language definition of a claim term is not sufficient to make that definition a reasonable reading of the term in light of the specification.
  • Failing to separately analyze claims with different limitations is reversible legal error.

Dr. Falk Pharma GMBH v. GeneriCo, LLC, No. 2017-2312 (June 12, 2019) (nonprecedential), Patent No. 8,865,688

Key point(s):

  • A claim term is properly construed based on the express definition provided in the patent specification.
  • Merely claiming administering a formulation “without food” does not inherently recite the formulation is more effective than if it was administered with food.

Samsung Electronics Co. v. Elm 3DS Innovations, LLC, Nos. 2017-2474, 2017-2475, 2017-2476, 2017-2478, 2017-2479, 2017-2480, 2017-2482, 2017-2483, 2018-1050, 2018-1079, 2018-1080, 2018-1081 & 2018-1082 (May 1, 2019) (precedential) (3-0), Patent Nos. 8,653,672; 8,841,778; 7,193,239; 8,629,542; 8,796,862; 8,410,617; 7,504,732; 8,928,119; 7,474,004; 8,907,499; and 8,933,570

Key point(s):

  • The Federal Circuit may reject all proposed constructions of a disputed term and substitute its own construction.

Power Integrations, Inc. v. Semiconductor Components Industries, LLC, No. 2018-1607 (June 13, 2019) (precedential) 3-0, U.S. Patent No. 6,212,079

Key point(s):

  • Privity and real party in interest (RPI) relationships are to be assessed as of the time the PTO decides whether to institute an inter partes review for the purpose of determining a time-bar under 35 U.S.C. § 315(b).
  • Privy relationships developed post-petition but pre-institution should be considered for determining whether to apply the time-bar.

In re Gitlin, No. 2018-1461 (June 13, 2019) (nonprecedential), Patent Application No. 12/766,889

Key point(s):

  • Under § 101, a mathematical concept without more does not constitute patent-eligible subject matter.
  • Implementing a mathematical concept on a computer, without improving the functioning of the computer, is not patent-eligible subject matter.

Regents of the University of Minnesota v. LSI Corp., No. 2018-1559 (June 14, 2019) (precedential) 3-0, various patents such as U.S. Patent No. 5,859,601

Key point(s):

  • State sovereign immunity does not apply to inter partes review proceedings.

Related Team:

Puja Detjen