Publications & Media

Federal Circuit Court Decisions For Week Ending June 21, 2019

Hyosung TNS Inc.. v. ITC, No. 2017-2563 (June 17, 2019) (precedential) (3-0), Patent Nos. 6,082,616; 7,832,631

Key point(s):

  • An appeal from an ITC proceeding, in which the only remedy is injunctive relief, can be dismissed as moot if the patent has expired, regardless of the potential for collateral consequences resulting from the possible stare decisis effect.
  • Arguments regarding motivation to combine may not need to be reached if the combination of references has not been shown to render the claims obvious.

Forum US, Inc. v. Flow Valve, LLC, No. 2018-1765 (June 17, 2019) (precedential) (3-0), Patent No. RE45,878

Key point(s):

  • Claims of a reissue patent must be “clearly and unequivocally” supported by the disclosure in the original patent. It is insufficient to establish that a person of ordinary skill in the art would understand that the newly claimed invention would be possible based on the original patent.

Samsung Electronics Co., LTD. v. UUSI, LLC, No. 2018-1310 (June 18, 2019) (nonprecedential), Patent No. 5,796,183

Key point(s):

  • For obviousness, a motivation to combine prior art references does not have to address the same problem addressed by the claimed solution.

Mayne Pharma International PTY v. Merck Sharp & Dohme Corp., No. 2018-1593 (June 21, 2019) (precedential) (3-0), Patent No. 6,881,745

Key point(s):

  • The PTAB has discretion to allow amendments to a petition, without affecting the petition’s filing date, in the interests of justice.
  • Claim terms will not be given constructions that are in direct conflict with the specification.

Game and Technology Co., Ltd. v. Activision Blizzard Inc., No. 2018-1981 (June 21, 2019) (precedential) (3-0), Patent No. 8,253,743

Key point(s):

  • Amendments made to distinguish references during prosecution can be used to limit claim scope.
  • A claim can be obvious over a single reference.