July 9, 2015

Federal Circuit Court Decisions For Week Ending June 26, 2015

Kimble et al. v. Marvel Entertainment, LLC, (No. 13-720) United States Supreme Court (June 22, 2015) (6-3)

Key point(s):

  • The prohibition on royalty payments beyond the expiration date of the underlying patent is retained on the basis of stare decisis.
  • Patentees seeking to receive payments from licensees after patent expiration may avoid the prohibition by tying post-expiration payments to non-patent rights.

Lighting Ballast Control LLC v. Philips Electronics N.A. Corp., No. 2012-1014 (June 23, 2015) (precedential) (3-0) U.S. Patent No. 5,436,529

Key point(s):

  • Adoption of expert witness testimony by the district court that one skilled in the art would understand “voltage source means” to connote a specific structure, thus overcoming the presumption that § 112, ¶ 6 applied, was a subsidiary factual finding by the district court reviewable up the clearly erroneous standard, because the factual finding was not used to contradict a claim meaning that was unambiguous in light of the intrinsic evidence.

Internet Patents Corp. v. Active Network, Inc, No. 2014-1048 (June 23, 2015) _( precedential) (3-0) U.S. Patent No. 7,707,505

Key point(s):

  • Subject matter eligibility under § 101 based on Mayo/Alice may be determined upon filing of a motion to dismiss under Fed R. Civ. P. 12(b)(6) without performing claim construction.

Gaymar Indus., Inc, v. Cincinnati Sub-Zero Prods., Inc., No. 2014-1179 (June 25, 2015) (precedential) (3-0) U.S. Patent No. 6,517,510

Key point(s):

  • Although party litigation misconduct is a factor to consider when awarding attorney fees under § 285, sloppy arguments or bad lawyering should not be characterized as litigation misconduct.

Lee v. Mike’s Novelties, Inc., No. 2014-1453 (June 23, 2015) (Non-precedential) U.S. Patent No. 6,419,936

Key point(s):

  • Modest litigation misconduct is insufficient to award fees under 35 U.S.C. § 285.

G.D. Searle, Inc, v. Lupin Pharmaceuticals, Inc., No. 2014-1476 (June 23, 2015) (precedential) (3-0) U.S. Patent RE44,048

Key point(s):

  • When a restriction requirement is imposed on a parent patent application, then a child divisional application is protected from double patenting challenges by § 121 in regards to the parent and other divisional children. However, child continuation-in-part (CIP) applications are not protected.
  • Child CIP applications do not receive double patenting protection under § 121 merely by being retroactively converted to divisional applications.

Mohsenzadeh v. Lee, No. 2014-1499 (June 25, 2015) (precedential) (3-0) U.S. Pat. No. 8,352,362 and 8,401,963

Key point(s):

  • Although the terms of continuation applications are adjusted under § 154 for delays attributable to the PTO occurring during prosecution, term adjustments for parent applications are not added to the terms of subsequent continuation applications.

Gator Tail, LLC v. Mud Buddy LLC, No. 2014-1747 and -1748 (June 22, 2015) (Non-precedential) U.S. Patent Nos. 7,052,340 and 7,297,035

Key point(s):

  • A reference does not teach away if it merely expresses a general preference for an alternative but does not criticize, discredit, or somehow discourage investigation into the claimed invention.

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