July 16, 2020

Federal Circuit Court Decisions For Week Ending May 22, 2020

Logistics and Technology Corporation v. Iancu,
No. 2019-1066, (May 22,
2020) (precedential) (3-0)
; Patent Application Nos. 11/005,678 and

Key point:

  • Procedural actions by the
    PTO can be challenged under the Administrative Procedure Act (APA) only after
    a “final agency action” and there is no absolute time limit for a final
McRO, Inc. v. Bandai Namco Games
America Inc.,
No. 2019-1557 (May 20, 2020) (precedential) (3-0);
Patent No. 6,611,278

Key points:

  • Aspects of an invention
    that are well known in the art need not be fully described. Rather, the law
    relies upon artisanal knowledge to fill in the gaps.
  • Embodiments in a patent
    that are not claimed need not be enabled.
ESIP Series 2, LLC v.
Puzhen Life USA, LLC,
2019-1659 (May 19, 2020) (precedential) (3-0); Patent No. 9,415,130

Key point:

A real party in interest
determination made by the Patent Trial and Appeal Board, because it is a
dispute about the application of an institution-related statute, is final and

Rothschild Connected
Devices Innovations, LLC v. Coca-Cola Company,
No. 2019-1825 (May 18, 2020) (nonprecedential);
Patent No. 8,417,377

Key point:

  • In a case where the Federal
    Circuit disagrees with a lower court’s claim construction as well as those of
    the parties, the appellate court may utilize its own construction.
Boston Scientific
Neuromodulation Corporation v. Nevro Corp.,
No. 2019-1584 (May 18, 2020) (nonprecedential);
Patent No. 7,587,241

Key point:

  • Prior art references by the
    same inventor can be more easily combined to make a claim obvious, especially
    if the references have common teachings.
Fox Factory, Inc. v.
No. 2019-1544 (May
18, 2020) (nonprecedential); Patent No. 9,291,250

Key point:

  • Evidence of secondary
    considerations can overcome an allegation of obviousness of patent claims
    upon a showing by the patentee that the product from which the secondary
    considerations arose is “coextensive” with the claimed invention.

Sandbox Logistics LLC v.
Proppant Express Investments LLC,
No. 2019-1684 (May 18, 2020) (nonprecedential); Patent Nos. 9,296,518,
9,403,626, 9,440,785, and 9,511,929

Key point:

  • The words used in the claims
    are interpreted in light of the intrinsic evidence of record, including the
    written description and the prosecution history. 

Related Team:

W. Bruce Patterson

Partner, Practice Head