July 16, 2020

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Boehringer Ingelheim v. Mylan Pharmaceuticals Inc., No. 2019-1172 (March 16, 2020) (nonprecedential); Patent Nos.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


  • 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, No. 2018-2308 (March 17, 2020) (nonprecedential); Patent No.

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

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