May 26, 2015

Federal Circuit Court Decisions For Week Ending May 15, 2015

Tadayon v. Saucon Technologies, Inc., No. 2014-1804, May 11, 2015 (nonprecedential); U.S. Patent No. 7,031,657

Key point(s):

  • The fact that a prior art reference teaches that a first step and second step together produce optimal results does not negate the reference’s additional teaching that the first step is effective even in absence of the second step.
  • The Federal Circuit will review claim construction de novo when the intrinsic record fully determines the construction and the construction is not based on extrinsic evidence.

LELO Inc. v. International Trade Commission, No. 2013-1582, May 11, 2015 (precedential) (3-0); U.S. Patent No. 7,931,605

Key point(s):

  • Qualitative factors alone are insufficient to show “significant investment in plant and equipment” and “significant employment of labor or capital” under prongs (A) and (B) of the § 337 domestic industry requirements.

ArcelorMittal v. AK Steel Corporation, 2014-1189, -1190, -1191, May 12, 2015, (precedential) (3-0); U.S. Patent No. RE44,153

Key point(s):

  • The successful prosecution of a reissue patent is not “new evidence” sufficient to trigger the extraordinary circumstances exception to the mandate rule and the law-of-the-case doctrine.

Akamai Technologies, Inc. v. Limelight Networks, Inc., 2009-1372, -1380, -1416, -1417, May 13, 2015 (precedential) (2-1); U.S. Patent Nos. 6,108,0703, 6,553,413, 7,103,645

Key point(s):

  • For method claims, direct infringement only occurs when a single party or a joint enterprise performs all of the steps of the claimed process.
  • Indirect infringement requires, as a predicate, a finding that some party is directly liable for the entire act of direct infringement.

Classen Immunotherapies, Inc. v. Elan Pharmaceuticals, Inc., 2014-1671, May 13, 2015 (precedential) (3-0); Patent No. 6,584,472

Key point(s):

  • Post-approval studies are “reasonably related to the development and submission of information” and are therefore exempt from infringement liability under § 271(e)(1).

Princeton Vanguard, LLC v. Frito-Lay North America, Inc., 2014-1517, May 15, 2015, (precedential) (3-0)

Key point(s):

  • To determine genericness, first identify the genus of goods or services at issue, and then assess whether the public understands the mark, as a whole, to refer to that genus.
  • Even if each of the constituent words in a combination mark is generic, the combination is not generic unless the entire formulation does not add any meaning to the otherwise generic mark.

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