July 6, 2016

Federal Circuit Court Decisions For Week Ending June 17, 2016

Allied Erecting and Dismantling Co., Inc., v. Genesis Attachments, LLC, No. 2015-1533, June 15, 2016 (Precedential) (3-0) Patent No. 7,121,489

Key point(s): 

  • A reference does not teach away from a feature, even when the reference expresses doubt as to whether an optimal design can include the feature.

Genzyme Therapeutic Products Limited Partnership v. Biomarin Pharmaceutical Inc., Nos. 2015-1720, 2015-1721, June 14, 2016 (Precedential) (3-0) Patent Nos. 7,351,410 and 7,655,226

Key point(s): 

  • A proceeding does not violate the Administrative Procedure Act (APA) by discussing, in the final decision, references not used to reject the claims in the institution decision, when both parties had opportunity to address the references during trial.

Graftech International Holding, Inc. v. Laird Technologies Inc., Nos. 2015-1796, 2015-1797, 2015-1798 June 17, 2016 (non-precedential); Patent Nos. 6,482,520, 6,982,874, 7,292,441

Key point(s):

  • When there is substantial evidence to support an expert’s testimony as an expert, the court will find that the person is an expert.

Yufa. v. TSI, Inc., Nos. 2015-1063, 2015-2007, 2016-1134, June 14, 2016 (non-precedential); Patent Nos. 5,767,967, 5,946,091, 6,034,769, 7,439,855 

Key point(s): 

  • A response to interrogatories that contemplates a hypothetical scenario is not an admission.

In re Kayyali, No. 2016-1081, June 14, 2016 (non-precedential); App. No. 11/811,156

Key point(s): 

  • Prior art does not teach skilled artisans away from a claimed feature, simply because the reference identifies disadvantages of such a feature.

In re Gorelik, No. 2016-1432, June 14, 2016 (non-precedential); App. No. 13/289,814

Key point(s): 

  • A claim limitation may be construed more broadly than the sole embodiment described in the specification, where the specification contemplates that various modifications will become apparent to those skilled in the art after having read this disclosure.

In re Zhang, No. 2015-1995, June 17, 2016 (non-precedential); App. No. 12/023,047

Key point(s): 

  • Even though a prior art reference indicates that a particular combination is undesirable for its own purposes, the reference can still teach that combination if the purpose remains suitable for the claimed invention.

Related Team: