Publications & Media

Federal Circuit Court Decisions For Week Ending March 20, 2020

Hafco Foundry And Machine Co. v. GMS Mine Repair , No. 2018-1904 (March 16, 2020) (precedential)(3-0 (1 concurring in part and dissenting in part)); Design Patent No. D681,684

Key point(s):

  • To support a contention that jury instructions were in plain error, it is necessary to provide strong facts and evidence to warrant a new trial, and further such a contention is unlikely to be persuasive when objections and evidence to support such a contention were not raised at trial.
Boehringer Ingelheim v. Mylan Pharmaceuticals Inc., No. 2019-1172 (March 16, 2020) (nonprecedential); Patent Nos. 8,853,156; 9,173,859; and 8,673,927

Key point(s):

  • A specific method of treatment for specific patients using a specific compound at specific doses to achieve a specific outcome is subject matter eligible under 35 U.S.C. § 101.

Intellectual Ventures I LLC v. Unified Patents, LLC , No. 2018-2308 (March 17, 2020) (nonprecedential); Patent No. 6,775,745

Key point(s):

  • New arguments cannot be first raised at the oral hearing in an IPR; and
  • Procedural violation issues not raised during IPR cannot be raised during appeal.

Illumina, Inc. v. Ariosa Diagnostics, Inc. , No. 2019-1419 (March 17, 2020) (precedential)( 2-1); Patent Nos. 9,580,751 and 9,738,931

Key point(s):

  • Methods of preparation, unlike diagnostic cases, may be subject-matter eligible; and
  • Process steps that change a composition of a mixture, resulting in a DNA fraction that is different from the naturally-occurring fraction, based on conventional techniques, are not invalid under 35 U.S.C. § 101 as directed to an ineligible natural phenomenon.

Facebook, Inc. v. Windy City Innovations, LLC. , Nos. 2018-1400, 2018-1401, 2018-1402, 2018-1403, 2018-1537, 2018-1540, 2018-1541 (March 18, 2020) (precedential)( 3-0); Patent Nos. 8,458,245; 8,694,657; 8,473,552; and 8,407,356

Key point(s):

  • In an IPR, § 315(c) does not authorize same-party joinder, i.e., does not allow a petitioner who has filed an IPR petition to join its own, earlier IPR petition; and
  • In an IPR, § 315(c) does not authorize issue joinder, i.e., does not allow joinder that would introduce new issues material to patentability, such as new patent claims or new grounds for cancellation.