June 29, 2015

Federal Circuit Court Decisions For Week Ending June 19, 2015

Williamson v. Citrix Online, LLC, (June 16, 2015) (en banc) (precedential) (11-1) Patent No. 6,155,840

Key point(s):

  • There is now an ordinary presumption that an element not using the word “means” is not governed by § 112 ¶ 6, overruling panel precedent requiring a “strong presumption” and a “strict requirement” that the limitation was “essentially devoid” of anything that can be construed as structure.
  • The new standard is “whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name of structure.”

GTNX, Inc. v. INTTRA, Inc. (June 16, 2015) (precedential) (3-0)

Key point(s):

  • The PTAB may not institute a proceeding to review a covered business method patent if, before the date on which the petition for review is filed, the petitioner or real party in interest has filed a civil action challenging the validity of the claims.

Alexsam, Inc. v. The Gap, Inc. (June 16, 2015) (nonprecedential) Patent Nos. 6,000,608 and 6,189,787

Key point(s):

  • A system can qualify as prior art under 35 U.S.C. 102, when the system was reduced to practice and used in a successful pilot program under actual working conditions.
  • Testimony of an inventor, by itself, is insufficient to establish prior conception.

Microsoft Corporation v. Proxyconn, Inc. (June 16, 2015) (precedential) (3-0) Patent No. 6,757,717

Key point(s):

  • Before a motion to amend in an IPR can be granted, the moving party must establish patentability for the proposed amendments over all prior art of record, and not just over the reference(s) relied on when instituting review of the particular claims being amended.
  • The PTAB did not err in applying the broadest reasonable interpretation rule of claim construction.

Cephalon, Inc. v. Abraxis Bioscience, LLC, No. 2014-1411, 2014-1442, June 17, 2015 (nonprecedential) Patent No. RE40,493

Key point(s):

  • A definition need not be universally accepted to form a proper basis for claim construction.
  • Expert testimony, dictionaries, treaties, and other extrinsic evidence that shed light on the commonly understood meaning of a technical term are less significant than the intrinsic record in determining the legally operative meaning of claim language.

ePlus, Inc. v. Lawson Software, Inc. (June 18, 2015) (precedential) (2-1) Patent Nos. 6,023,683 and 6,505,172

Key point(s):

  • If an injunction is non-final, civil contempt fines must be vacated when the underlying patent is held invalid.

Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., No. 2012-1567, June 18, 2015 (Precedential) (2-1) Patent Nos. 5,800,808; 5,981,589; 6,048,898; 6,054,430; 6,342,476; 6,362,161; 6,620,847; 6,939,539; and 7,199,098

Key point(s):

  • Determining the meaning or significance to ascribe to the legal writings which constitute the intrinsic record is a legal analysis; a party cannot transform legal analysis into a question of fact by having an expert offer an opinion on it.

TomTom, Inc. v. Michael Adolph (June 19, 2015) (precedential) (3-0) Patent No. 6,356,836

Key point(s):

  • Limitations in the preamble may be construed to provide antecedent basis, without requiring the entire preamble to be construed.
  • The preamble is generally not a limitation unless language in the preamble provides necessary structure to the body of the claim.

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