May 23, 2016

Federal Circuit Court Decisions For Week Ending May 13, 2016

Intelligent Bio-Systems, Inc., v. Illumina Cambridge LTD., No. 2015-1693, May 9, 2016 (precedential) (3-0) Patent No. 7,566,537

Key point(s):

  • When a quantitative deblocking process requires near 100% efficiency, a reference teaching 60-80% efficiency evidences a lack of motivation to combine references and the absence of a reasonable expectation of success in combining the references.

Enfish, LLC, v. Microsoft Corp., et al., No. 2015-1244, May 12, 2016 (precedential) (3-0) U.S. Patent Nos. 6,151,604 and 6,163,775

Key point(s):

  • For software patents, it is relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea, even at the first step of the Alice analysis.
  • Software claims are not inherently abstract and therefore only properly analyzed at the second step of the Alice analysis.

Howmedica Osteonics Corp., v. Zimmer, Inc. ., No. 2015-1232, -1234, -1239, May 12, 2016 (precedential) (3-0) U.S. Patent No. 6,475,243

Key point(s):

  • Claim differentiation is a rebuttable presumption that may be overcome by a contrary construction dictated by the written description or prosecution history.

In re Cordua Restaurants, Inc., No. 2015-1432, May 12, 2016 (precedential) (3-0) U.S. Trademark Application No. 85/214,191

Key point(s):

  • A trademark applicant defines the genus of goods or services for which it seeks protection – an applicant who recites services that exceed those actually rendered will be held to the broader scope recited in the application.

Merck v. Watson Laboratories, Inc., Nos. 2015-2063, -2064, May 13, 2016 (precedential) (3-0) U.S. Patent No. 6,441,168

Key point(s):

  • A writing specifying price, delivery, and payment terms contains all the required elements to qualify as a commercial offer for sale under the on-sale bar of 35 U.S.C. § 102(b).

Related Team: