April 10, 2017

Federal Circuit Court Decisions For Week Ending March 10, 2017

In re DDMB, No. 2016-2037, (March 8, 2017) (Nonprecedential)

Key point(s):

  • Dictionary definitions can provide substantial evidence sufficient to support a TTAB decision.

Trusted Knight Corp. v. IBM, No. 2016-1510 (March 7, 2017) (Nonprecedential) Patent No. 8,316,445

Key points:

  • Claim elements responding to unspecified events create vagueness sufficient to render the claim indefinite.
  • Typographical errors in claim language cannot be corrected by a court if there is more than one reasonable correction supported by the specification.

Intellection Ventures I, LLC, v. Erie Indemnity Co., No. 2016-1138, 2016-1132 (March 7, 2017) (Precedential) (3-0) Patent Nos. 6,510,434, 6,519,581, and 6,546,002

Key points:

  • Without an explanation of the ‘mechanism’ for ‘how the result is accomplished’ a feature of an invention cannot supply an inventive concept under step 2 of the Alice/Mayo framework.
  • Failure to list a patent among those being transferred cannot be cured by extrinsic evidence or a general clause assigning the “goodwill of the business.”

Intellection Ventures I, LLC, v. Capital One Financial Corp., No. 2016-1077 (March 7, 2017) (Precedential) (3-0) Patent Nos. 7,984,081, 6,546,002, 6,715,084

Key points:

  • To comply with step 2 of Alice, a claim needs to include elements defining “how” the system/method achieves the result with particularity.
  • Collateral estoppel may bar a suit.

Meiresonne v. Google, Inc., Case No. 2016-1755, (March 7, 2017) (Precedential)(3-0); Patent Nos. US 6,182,649 and US 8,156,096

Key point(s):

  • A reference which merely describes descriptive text as often cursory if not cryptic does not convert the reference to one that teaches away from combining text descriptions with a rollover window.

Paice, LLC v. Ford Motor Co., No. 2016-1412, 2016-1415 (March 7, 2017) (nonprecedential) Patent No. 7,104,347

Key point(s):

  • The Board can rely on a “common sense” conclusion within the understanding of one skilled in the art; here, that an engine starter must be connected to a traction battery.

Paice, LLC v. Ford Motor Co., No. 2016-1647 (March 7, 2017) (nonprecedential) Patent No. 7,559,388

Key point(s):

  • Disagreeing with an expert witness’s testimony and conclusions is not a sufficient basis to reverse Board findings based on that testimony.
  • The Board must separately analyze limitations added in dependent claims.

Comcast IP Holdings I, LLC, v. Sprint Communications Co., No. 2015-1992, (March 7, 2017) (Precedential)(3-0); Patent Nos. 8,170,008, 7,012,916, and 8,204,046

Key points:

  • A party cannot seek a claim construction from the Federal Circuit when it failed to ask the district court to construe the claim term.
  • When a lump sum damages award encompasses multiple patents as a group, prejudgment interest can be applied to the entire award from the earliest date of infringement, even if some of the patents had not issued at that time.

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