April 10, 2017

Federal Circuit Court Decisions For Week Ending March 17, 2017

In re Salwan, No. 2016-2709 (March 13, 2017) (non-precedential) Patent App. No. 12/587,101

Key point(s):

  • Fundamental and conventional business practices involve abstract ideas and mereautomation of the abstract practices does not make them patentable subject matter.

Nidec Motor Corp. v. Broad Ocean, No. 2016-1900 (March 14, 2017) (non-precedential) U.S. Patent No. 7,208,895

Key point(s):

  • A reference does not anticipate a claim limitation even if a missing limitation would be immediately apparent to one of ordinary skill in the art.

Coffelt v. NVIDIA, No. 2017-1119 (March 15, 2017) (non-precedential) U.S. Patent No. 8,614,710

Key point(s):

  • Calculations that can be done on pen and paper are abstract ideas.
  • Analyzing information that by steps that can be done in a person’s mind is an abstract idea.
  • Mere novelty of an algorithm is not a sufficient inventive concept to transform abstract idea to patent eligible subject matter.

Clarilogic, Inc. v. FormFree Holdings Corp. , No. 2016-1781 (March 15, 2017) (non-precedential) U.S. Patent No.8,762,243

Key point(s):

  • An algorithm is more likely to be found to be abstract without details on how the different steps are performed.
  • Data input to a different data output is not transformative.

Mentor Graphics, Corp. v. Synopsys, Nos. 2015-1470, 2015-1554, 2015-1556 (March 16, 2017) (precedential) (3-0) U.S. Patent Nos. 6,240,376; 6,947,882; 6,009,531; 5,649,176; 6,132,109; 7,069,525

Key point(s):

  • Apportionment of lost profit damages and reasonable royalties is incorporated into the Panduit analysis.

Nordoc, Inc. v. System, Inc., Nos. 2014-1762, 2014-1795 (March 17, 2017) (non-precedential) U.S. Patent No. D579,754

Key point(s):

  • Although a party can only recover one type of damage on each sale of an infringing device, a jury still has to determine both the patentee’s lost profits or a reasonable royalty and the infringer’s profits on the relevant article of manufacture for the purposes of determining damages under § 289.

Tomita v. Nintendo, Nos. 2014-1762, 2016-2015 (March 17, 2017) (non-precedential) U.S. Patent No. 7,417,664

Key point(s):

  • Use of the function-way-result test for non-mechanical product or processes is still valid under particular circumstances.
  • Software and hardware functions can be, but are not necessarily, equivalent “ways.”

Allergan v. Sandoz, No. 2016-1085, 2016-1160 (March 17, 2017) (non-precedential) U.S. Patent No. 8,926,953

Key point(s):

  • The district court cannot invalidate unasserted claims as there is no case or controversy.
  • Collateral estoppel bars infringement suits on previously-litigated claims held invalid if differences between the claims in question and the previously litigated claims that do not materially alter the question of invalidity.

Bayer v. Dow, No. 2015-1854 (March 17, 2017) (non-precedential) U.S. Patent No. 8,926,953

Key point(s):

  • An award of attorney fees is reviewed for abuse of discretion, which is a highly deferential standard of review.

Related Team:

Orson Bell