Publications & Media

Federal Circuit Court Decisions For Week Ending May 22, 2020

Odyssey Logistics and Technology Corporation v. Iancu, No. 2019-1066, (May 22, 2020) (precedential) (3-0) ; Patent Application Nos. 11/005,678 and 11/465,603

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 action.
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, No. 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 non-appealable.

Rothschild Connected Devices Innovations, LLC v. Coca-Cola Company, No. 2019-1825 (May 18, 2020) (nonprecedential); Patent No. 8,417,377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Boston Scientific Neuromodulation Corporation v. Nevro Corp., No. 2019-1584 (May 18, 2020) (nonprecedential); Patent No. 7,587,241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Fox Factory, Inc. v. SRAM LLC, No. 2019-1544 (May 18, 2020) (nonprecedential); Patent No. 9,291,250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Sandbox Logistics LLC v. Proppant Express Investments LLC, No. 2019-1684 (May 18, 2020) (nonprecedential); Patent Nos. 9,296,518, 9,403,626, 9,440,785, and 9,511,929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.