Publications & Media

Federal Circuit Court Decisions For Week Ending May 18, 2018

In re ZTE (USA) Inc., No. 2018-113 (May 14, 2018) (Precedential) (3-0), Patent Nos. 6,311,555; 6,415,227; 6,508,122; 6,516,283; 6,671,648; 6,697,758; and 6,792,353

Key points:

  • Federal Circuit law governs the burden of proof for determining the propriety of venue and which party bears the burden of establishing proper venue under 28 U.S.C. § 1400(b).
  • The burden of proof rests on the Plaintiff to establish proper venue under 28 U.S.C. § 1400(b).

M-I Drilling Fluids (UK) Ltd. v. Dynamic Air Ltda., No. 2016-1772 (May 14, 2018) (Precedential) (3-0), Patent Nos. 6,702,539; 6,709,217; 7,033,124; 7,186,062 B2; and 7,544,018

Key point:

  • Exercising specific personal jurisdiction under Rule 4(k)(2) over a foreign party who purposefully directed its activities at the United States comports with due process.

Anacor Pharmaceuticals Inc. v. Iancu, No. 2017-120 (May 14, 2018) (Precedential) (3-0) Patent No. 7,582,621

Key point:

  • An obviousness determination of claims directed to a new treatment using a known compound can be based on whether evidence demonstrates a nexus between structural similarities and functional similarities of similar compounds.

SAP America Inc. v. InvestPic LLC., No. 2017-2081 (May 15, 2018) (Precedential) (3-0) Patent No. 6,349,291

Key point:

  • In the two-step Mayo/Alice framework for patent eligibility, the abstract nature of the claims may be overcome if the claims are directed to a physical improvement and are specific to how to achieve the physical improvement.

In re BigCommerce Inc., No. 2018-120 (May 15, 2018) (Precedential) (3-0) Patent Nos. 7,770,122; 6,546,397; and 7,594,168

Key points:

  • Under 28 U.S.C. § 1400(b) a corporation incorporated in a state having multiple judicial districts does not “reside” in each and every judicial district in that state.
  • A domestic corporation “resides” under 28 U.S.C. § 1400(b) in a state having multiple judicial districts where it maintains a principal place of business. In the absence of a principal place of business, the corporation resides in the judicial district in which it is registered.

Praxair Distribution Inc. v. Mallinckrodt Hospital Products IP Ltd., Nos. 2016-2616, 2016-2656 (May 16, 2018) (Precedential) (2-1) Patent No. 8,846,112

Key point:

  • Claim limitations directed to printed matter or mental steps may only be given patentable weight to distinguish over prior art in § 102 and § 103 inquiries if the printed matter or mental steps are functionally related to the substrate on which the printed matter or mental steps are applied.

Ultratec, Inc., v. Sorenson Communications, Inc., No. 2017-1161, -1225 (May 18, 2018) (Nonprecedential) Patent No. 7,660,398

Key points:

  • When there is a relevant change of law before entry of final judgment, a party must generally notify the district court or the party waives arguments on appeal that are based on that change in the law.
  • A jury’s determination of the amount of damages and a jury’s finding that claims are nonobvious are reviewed for substantial evidence.

Endo Pharmaceuticals, Inc. v. Teva Pharmaceuticals, No. 2015-2021 et al., (May 16, 2018) (Nonprecedential) Patent Nos. 8,309,122 and 8,329,216

Key points:

  • The test for sufficiency of the written description is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.