Publications & Media

Federal Circuit Court Decisions For Week Ending June 28, 2019

Choon’s Design, LLC v. Idea Village Products Corp., No. 2018-1934 (June 24, 2019) (nonprecedential), US Patent No. 8,485,565

Key point(s):

  • When a patent “repeatedly and consistently” characterizes a claim term in a particular way, it is proper to construe the claim term in accordance with that characterization.

UCB, Inc. v. Watson Laboratories Inc., Nos. 2018-1397, 2018-1453 (June 24, 2019) (precedential) (3-0), Patent Nos. 6,884,434 & 8,232,414

Key point(s):

  • Application of the doctrine of equivalents may not be barred by prosecution history estoppel where an election in response to a restriction requirement does not constitute a surrender of an asserted equivalent or intentional narrow claiming where there is insufficient evidence that the asserted equivalent was foreseeable.

Cellspin Soft, Inc. v. Fitbit, Inc., Nos. 2018-1817, 2018-1819, 2018-1820, 2018-1821, 2018-1822, 2018-1823, 2018-1824, 2018-1825, 2018-1826 (June 25, 2019) (precedential) (3-0), Patent Nos. 8,738,794, 8,892,752, 9,258,698, & 9,749,847

Key point(s):

  • The presumption that a patent is valid under § 282 includes the presumption that claims are patent eligible under § 101.
  • When addressing “inventive concept,” as long as what makes the claims inventive is recited by the claims, the specification need not expressly list all the reasons why the claimed structure is unconventional.

Elbit Systems Land And C4I Ltd. v. Hughes Network Systems, LLC, No. 2018-1910 (June 25, 2019) (precedential) (3-0), Patent Nos. 6,240,073

Key point(s):

  • Neither 28 U.S.C. §1295 nor 28 U.S.C. § 1292(c)(2) provide appellate jurisdiction to review an attorney fees award if the amount of the attorney fees has not been quantified.

Parallel Networks Licensing, LLC v. Microsoft Corporation, Nos. 2018-1120 (June 28, 2019) (nonprecedential), Patent Nos. 5,894,554 & 6,415,335

Key point(s):

  • FRE 702 requires that expert testimony help the trier of fact to understand the evidence or determine a fact in issue.
  • An expert’s unsupported conclusion on the ultimate issue of infringement is insufficient to raise a genuine issue of material fact.

VirnetX Inc. v. Cisco Systems, Inc., No. 2018-1751 (June 28, 2019) (nonprecedential), U.S. Patent No. 7,418,504

Key point(s):

  • Under the Administrative Procedures Act the Board is required to set forth in its opinions specific findings of fact and conclusions of law adequate to form a basis for review.