May 31, 2017

Federal Circuit Court Decisions For Week Ending May 12, 2017

Cisco Systems, Inc. v. Cirrex Systems, LLC, Case Nos. 2016-1143, 2016-1144 (May 10, 2017) (Precedential) (3-0) Patent No. 6,415,082

Key points:

  • A written description analysis requires a claim to be properly construed and then to besupported in a manner whereby persons of ordinary skill in the art can recognize theinvention as claimed from the specification.

NOVA Chemicals Corporation, Nova Chemicals, Inc. v. Dow Chemical Company, Case No. 2016-1576 (May 11, 2017) (Precedential) (3-0) Patent Nos. 5,847,053, 6,111,023

Key points:

  • A district court may determine a case is exceptional due to a determination, consideringthe totality of the circumstances, that the strength of a litigant’s position is objectively baseless.

Aylus Networks, Inc. v. Apple Inc., Case No. 2016-1599 (May 11, 2017) (Precedential) (3-0) Patent No. RE 44,412

Key points:

  • Statements made by a patent owner during an IPR can be used to support a finding of prosecution disclaimer.

Intellectual Ventures II LLC v. Ericsson Inc., Nos. 2016-1739, 2016-1740, 2016-1741 (May 8, 2017) (non-precedential) U.S. Patent Nos. 7,848,353 and 8,396,079

Key points:

  • The Board may not change theories midstream without giving the parties reasonable notice of its change and an opportunity to be heard, but the burden is upon an aggrieved party to seek redress.

Nestle USA, Inc. v. Steuben Foods, Inc., No. 2016-1750 (May 9, 2017) (non-precedential) U.S. Patent No. 6,945,013

Key point:

  • Although words in a claim are generally given their ordinary and customary meaning, a patentee may choose to be his own lexicographer by defining terms in the specification.

E2Interactive, Inc. v. Blackhawk Network, Inc., Case No. 2016-1775 (May 11, 2017) (Non-Precedential) Patent No. 7,578,439

Key point:

  • The broadest reasonable interpretation of a claim term is not limited to examples given in the specification when no clear explicit definition of the claim term is given.

In Re AT&T Intellectual Property II, Nos. 2016-1830 (May 10, 2017) (Precedential) (3-0) U.S. Patent No. 7,454,071

Key points:

  • The PTAB is not obligated to deny inter partes reexamination even if the requester is the party seeking to have the reexamination denied.

Atlas IP, LLC v. Commonwealth Edison Co., Case No. 2016-2203 (May 9, 2017) (Non-precedential) Patent No. 5,371,734

Key points:

  • An award of attorneys’ fees and costs must be appealed separately and will not typically be considered along with the appeal of another judgement under the doctrine of pendant jurisdiction.

Related Team:

Payton Hashemi

Of Counsel

W. Bruce Patterson

Partner, Practice Head

Marcus Hammack