April 11, 2017

Federal Circuit Court Decisions For Week Ending March 31, 2017

TMC Fuel Injection System, LLC v. Ford Motor Company, Case No. 2016-2122 (March 27, 2017) (Non-Precedential) Patent No. 7,318,414

Key points:

  • Doctrine of prosecution disclaimer attaches to limit claims where patentee unequivocally disavows claim scope.
  • Scope of surrender is not limited to what is absolutely necessary to avoid a prior art reference; patentees may surrender more than necessary.

Intellectual Ventures II LLC v. Commerce Bancshares, Inc., 2016-1520; Intellectual Ventures II LLC v. International Business Machines Corporation, Case No. 2016-1528 (March 27, 2017) (Nonprecedential) Patent No. 6,715,084

Key point:

  • Construing “analyzing data” under broadest reasonable construction to include direct and indirect analysis was supported by ordinary meaning and the specification.

In re Chudik, Case No. 2016-1817 (March 27, 2017) (Precedential) (3-0) App. No. 11/252,631

Key points:

  • The phrase “arranged to” in a claim is analogous to “adapted to” and is given patentable weight.
  • The Federal Circuit will overturn a PTAB prior art rejection of a patent application if the rejection is not supported by substantial evidence.

Google Inc. v. Simpleair, Inc., Case No. 2016-1901 (March 28, 2017) (Nonprecedential) (3-0) Patent No. 8,601,154

Key point:

  • To preserve a claim construction argument for appeal, a party in an inter partes review must affirmatively raise the issue before the Board.

Huster v. J2 Cloud Services, Inc., Case No. 2016-1639 (March 29, 2017) (Non-Precedential)

Key point:

  • An individual who has assigned or otherwise been divested of her alleged interests in a patent cannot subsequently bring a correction of inventorship claim under 35 USC § 256.

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