Publications & Media

Federal Circuit Court Decisions For Week Ending May 15, 2020

Huawei Technologies Co., LTD., v. Iancu, No. 2019-1493 (May 14, 2020) (nonprecedential); Patent No. 8,369,278

Key point(s):

  • Increasing efficiency is legally sufficient to determining motivation to combine prior art references if evidence establishes that efficiency is a fundamental design principle in the relevant field, and that the improved efficiency is realized in a concrete way.
  • A petition relying on a combination of a first reference with either a second reference or a third reference to assert unpatentability (e.g., “argument-in-the-alternative style”) can be used by the Board as a combination of all three references to determine unpatentability without abuse of discretion.

Bushnell Hawthorne, LLC, v. Cisco Systems, INC. , No. 2019-2191_(May 14, 2020) (nonprecedential); Patent No. 7,933,951

Key point(s):

  • Defining a term in a specification may not provide sufficient clarity for the term if the specification also defines the term in alternative, inconsistent ways.
  • When a claim term lacks explicit antecedent basis and the context of the claim and specification fails to provide added clarity, the claim is indefinite.

Schwendimann v. Arkwright Advanced Coating, Inc., No. 2018-2416, 2019-1012 (May 13, 2020) (precedential) (2-1); Patent Nos. RE41,623; 7,749,581; 7,754,042; 7,766,475; 7,771,554; and 7,824,748

Key point(s):

  • An assignee has standing to bring suit for infringement if an assignment is documented in a written instrument within the meaning of 35 USC § 261, and if the assignee has legal title to the patent which is determined by state law.
  • An assignment for a patents legal title is interpreted in accordance with contract law principles of the state and the district court of the state has authority to reform contracts in accordance with state laws.
  • Upon reforming a writing instrument after the fact to reflect the parties’ intentions, the writing instrument is effective when made, not as of the date of the reformation. Thus, the assignee of the patent has standing to file suit against alleged infringers as of the effective date of the writing instrument providing such rights.

Idorsia Pharmaceuticals, LTD. v. Iancu, No. 2019-2346 (May 11, 2020) (nonprecedential); Patent Nos. 8,518,912;

Key point(s):

  • Written restriction requirements qualify as notice under 35 U.S.C. § 132 ending the accumulation of prosecution delay for the purposes of patent term adjustment because it informs the applicant of the broad statutory basis for the rejection of his claims, so that he may determine what issues are on which he can or should produce evidence.

Cisco Systems, Inc., v. Uniloc 2017 LLC , No. 2019-2048 (May 13, 2020) (nonprecedential); Patent No. 6,980,522

Key point(s):

  • Asserting that a claim is directed to an improvement is a mere conclusory statement, not a factual allegation required for precluding dismissal.

Vederi, LLC v. Google LLC, No. 2016-1919, -1979, 2017-1479, 2019-1211, -1573 __________ (May 14, 2020) (nonprecedential) (3-0); Patent Nos. 7,805,025, 7,239,760, 7,577,316, 7,813,596

Key point(s):

  • Examples in the specification inform claim scope, but do not necessarily define it.

Lone Star Silicon Innovations LLC v. Iancu , No. 2019-1556,_(May 14, 2020) (nonprecedential) (3-0); Patent No. No. 6,097,061

Key point(s):

  • Using a term the same way in all disclosed embodiments is not by itself sufficient to redefine a term with an established ordinary meaning in the art

Lanard Toys Ltd v. Dolgencorp LLC , No. 2019-1781 (May 14, 2020) (precedential) (3-0); Design Patent D671,167

Key point(s):

  • While the ordinary observer test is not an element-by-element comparison, it does not ignore the reality that designs often have both functional and ornamental aspects.
  • Points of novelty can be considered while remaining focused on how an ordinary observer would view the overall design.

Electronic Communication Technologies, LLC v. Shopperschoice.com. L.L.C. , No. 2019-1587, (May 14, 2020) (precedential) (3-0); Patent No. 9,373,261

Key point(s):

  • A claim’s uniqueness alone is insufficient to confer patent eligibility

Intellectual Ventures II LLC v. Aisin Seiko Co., No. 2019-1718 (May 15, 2020) (nonprecedential); Patent No. 7,928,348

Key point(s):

  • In appropriate circumstances, the Board can make findings without expert testimony

Cochlear Bone Anchored Solutions AB v. Oticon Medical AB, Nos. 2019-1105, -1106 (May 15, 2020) (precedential), (2-1); Patent No. 7,043,040

Key point(s):

  • That a term in the preamble provides antecedent basis does not mean other preamble language, or the entire preamble, is limiting.
  • The Board’s decision not to conduct a prior art analysis of claims using means-plus-function limitations which lack corresponding structure does not trigger § 315(e) estoppel against the Petitioner.

Agarwal v. TopGolf Int’l, Inc., Nos. 2018-2270 (May 11, 2020) (non-precedential); Patent No. 5,370,389

Key Point(s):

  • The Board has substantial latitude in making determinations concerning what is taught by a prior art reference so long as the Board’s position is supported by substantial evidence.

In re Nomula, Nos. 2019-1832, 2019-1833 (May 12, 2020) (non-precedential); Application Nos. 13/908,992, 13/089,772

Key Point(s):

  • PTAB decisions affirming an Examiner’s rejection which are based upon substantial evidence are likely to be upheld upon appeal.

In re Chapman, No. 2019-1895 (May 11, 2020) (non-precedential); Application No. 14/675,320

Key Point(s):

  • “Consisting essentially of” language in a preamble of a claim can, in certain instances, limit the scope of the claim to specified materials or steps and those that do not materially affect the basic and novel properties of the invention.

General Access Solutions, LTD., v. Sprint Spectrum L.P., Nos. 2019-1856, 2019-1858 (May 11, 2020) (non-precedential); Patent Nos. 7,173,916, 6,891,810

Key Point(s):

  • For IPR patent owner responses (POR), arguments incorporated by reference from other documents which are not the POR will not generally be considered by the Board.

Sprint Spectrum L.P., v. General Access Solutions, LTD., No. 2019-1855 (May 13, 2020) (non-precedential); Patent No. 7,230,931

Key Point(s):

  • Construction of claim terms which is narrower than the plain claim language and incompatible with dependent claims is improper.

In re Publicover, No. 2019-1883 (May 15, 2020) (non-precedential); Application No. 15/131,273

Key Point(s):

  • Attorney argument concerning the capabilities of a skilled artisan with regard to sparse disclosure in prior art references, without corresponding sufficient detail disclosed in the instant patent/application, are unpersuasive.