July 16, 2020

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Huawei Technologies Co., LTD., v. Iancu, No. 2019-1493 (May 14, 2020) (nonprecedential);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2019-2191_(May 14, 2020) (nonprecedential); Patent No. 7,933,951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(May 11, 2020) (nonprecedential); Patent Nos. 8,518,912;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. 

Related Team:

Samie S. Leigh

Associate

Brooks Tueting

Partner

Jerry R. Selinger

Partner