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Huawei Technologies Co., LTD., v. Iancu, No. 2019-1493 (May 14, 2020) (nonprecedential);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
Bushnell Hawthorne, LLC,
v. Cisco Systems, INC.
2019-2191_(May 14, 2020) (nonprecedential); Patent No. 7,933,951
- 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.,
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
- 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.
LTD. v. Iancu,
(May 11, 2020) (nonprecedential); Patent Nos. 8,518,912;
- 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(May 13, 2020) (nonprecedential); Patent No. 6,980,522
- 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__________ (May 14, 2020) (nonprecedential) (3-0); Patent Nos. 7,805,025,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
- Examples in the specification inform
claim scope, but do not necessarily define it.
Lone Star Silicon Innovations
LLC v. Iancu
2019-1556,_(May 14, 2020) (nonprecedential) (3-0); Patent No. No. 6,097,061
- 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.
, No. 2019-1781
(May 14, 2020) (precedential) (3-0); Design Patent D671,167
- 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
Technologies, LLC v. Shopperschoice.com. L.L.C.
, No. 2019-1587, (May 14, 2020) (precedential) (3-0);
Patent No. 9,373,261
- A claim’s uniqueness alone is
insufficient to confer patent eligibility
Intellectual Ventures II
LLC v. Aisin Seiko Co.,
2019-1718 (May 15, 2020) (nonprecedential); Patent No. 7,928,348
- 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.
- 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
Agarwal v. TopGolf Int’l,
Nos. 2018-2270 (May 11,
2020) (non-precedential); Patent No. 5,370,389
- 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
- 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
- “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.,
2019-1856, 2019-1858 (May 11, 2020) (non-precedential); Patent Nos. 7,173,916,
- 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.,
2019-1855 (May 13, 2020) (non-precedential); Patent No. 7,230,931
- 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
- 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.