April 11, 2016

Federal Circuit Court Decisions For Week Ending March 25, 2016

In re Hagenbuch, No. 2015-1745, 2015-1747, (March 21, 2016) (Non-Precedential) U.S. Patent No’s. 8,014,917 and 8,532,867

Key point(s):

  • Evidence of commercial success without a clear nexus to the claimed invention is insufficient to overcome a prima facie case of obviousness.

In re Cree, Inc., No. 2015-1365, (March 21, 2016) (Precedential) (3-0) U.S. Patent No. 6,600,175

Key point(s):

  • Evidence of licensing and/or commercial success without a clear nexus to the claims is insufficient to overcome a prima facie case of obviousness.

CSP Technologies, Inc. v. Süd-Chemie AG, No. 2015-1124, (March 22, 2016) (Non-precedential ); U.S. Patent No. 7,537,137

Key point(s):

  • Claim terms that are used exclusively to describe one embodiment in the specification may bar a showing of infringement of an accused product that may otherwise infringe another disclosed embodiment. 

DSS Technology Management, Inc. v. Taiwan Semiconductor Manufacturing Co, LTD., No. 2015-1684, (March 22, 2016) (Non-precedential); U.S. Patent No. 5,652,084

Key point(s):

  • Principles favoring claim constructions under the doctrine of claim differentiation may not defeat a claim construction supported by the specification.

Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., No. 2015-1116, 2015-1119, (March 23, 2016) (Precedential ) (3-0); U.S. Patent No. 7,806,360

Key point(s):

  • Board decisions regarding instituting inter partes reviews are not reviewable by the Federal Circuit based on 35 U.S.C. § 314(d).
  • Grounds for invalidity asserted in a request for inter partes review that are not part of the bases for instituting the review are not subject to the estoppel provisions of 35 U.S.C. § 315(e).

MAG Aerospace Industries, Inc., v. B/E Aerospace, Inc, No. 2015-1370, 2015-1426, (March 23, 2016) (Precedential ) (3-0); U.S. Patent No’s. 6,536,054; 6,536,055; 6,353,942

Key point(s):

  • The assignor estoppel doctrine may bar challenges from an assignor of the patent regarding invalidity, during a patent infringement proceeding, when sufficient privity is found between an inventor (original assignor) and the party asserting invalidity.

Purdue Pharma L.P., v. Depomed Inc., No. 2015-2029, 2015-2030, 2015-2032 (March 24, 2016) (Non-precedential ); U.S. Patent No’s. 6,340,475; 6,635,280

Key point(s):

  • In establishing obviousness in an inter partes review proceeding, petitioners must identify a reason why a POSITA would combine the elements in the references in the way the claimed invention does.

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