June 14, 2019

Federal Circuit Court Decisions For Week Ending May 24, 2019

Quest Integrity USA, LLC v. Cokebusters USA Inc., No. 2017-2423 (May 21, 2019) (Precedential) (3-0); Patent No. 7,542,874

Key point(s):

  • The on-sale bar applies even where it is the patentee’s performance of a service for a client – rather than the sale of a physical product – that occurred more than one year before filing.

Trading Technologies Int’l v. IBG LLC, Case Nos. 2018-1105, -1302, -1438, -1443 (May 21, 2019) (Non-precedential) Patent Nos. 7,412,416; 7,818,247; 7,685,055; and 7,693,768

Key point(s):

  • Although related patents may provide different information from those already addressed by the Federal Circuit, information is “intangible” such that the Federal Circuit may apply the precedent associated with the related patents so long as the related patents are not distinguishable.

IBM v. Booking Holdings Inc., Case No. 2018-1574 (May 22, 2019) (Non-precedential) Patent No. 7,072,849

Key point(s):

  • Choosing not to argue a specific theory of divided infringement at the district court will preclude that party from arguing the specific theory of divided infringement on appeal.

Sony Corporation v. Iancu, Case No. 2018-1172 (May 22, 2019) (Precedential) (2-1) Patent No. 6,097,676

Key point(s):

  • A live case or controversy may still exist even when the patent at issue has expired and the parties have settled, because resolution of validity would have a consequence on any infringement that occurred during the life of the patent.
  • When “reproducing means” is used in a limitation, means-plus-function treatment is not invoked when the limitation is more appropriately construed as computer-implemented rather than hardware-implemented.

In re: Taylor, Case No. 2018-1958 (May 22, 2019) (Non-precedential) Patent Application No. 2014/096,000

Key point(s):

  • Under the printed matter doctrine a barcode is nothing more than another type of printed matter within an advertisement that does not change the function of the advertisement.

In re: ASM International, N.V., ASM America, Inc.., Case Nos. 2019-118 (May 23, 2019) (Non-precedential) (motion panel order)

Key point(s):

  • There is no rule that one court must hear all forms of intellectual property misappropriation of an accused product. Therefore, where the overlap between two cases is not complete or nearly complete, the Federal Circuit generally defers to the district court’s assessment regarding whether to transfer even if the cases involve the same accused product.

Wireless Protocol Innovations v. TCT Mobile, Inc., Case Nos. 2018-1836, -1837, -1838, and 1840 (May 23, 2019) (Non-precedential) Patent Nos. 8,274,991; 8,565,256; and 9,125,051

Key point(s):

  • Where a claim term does not have a plain and ordinary meaning, specification language, including in the discussion of preferred embodiments, has decisive significance in identifying the proper construction of the term.

Papst Licensing GMBH & Co. KG v. Apple Inc., Case Nos. 2018-1358, 2018-1359 (May 23, 2019) (Non-precedential) Patent No. 6,470,399

Key point(s):

  • Arguments contrary to an uncontested claim construction are not persuasive.

Papst Licensing GMBH & Co. KG v. Samsung Electronics America, Case No. 2018-1777, (May 23, 2019) (Precedential) (3-0) Patent No. 9,189,437

Key point(s):

  • The issue preclusion doctrine applies in the Federal Circuit once the PTAB’s decision in an IPR becomes final.
  • When the PTAB has already resolved a materially identical and essential issue, issue preclusion applies.

Uniloc USA, Inc. v. ADP, LLC, Nos. 2018-1132, 2018-1346, 2018-1448 (May 24, 2019) (Non-precedential); Patent Nos. 7,069,293; 6,324,578; 6,510,466; 6,728,766

Key point(s):

  • Absence of a rule permitting joinder in the Federal Rules of Appellate Procedure does not support denial of joinder, which

Related Team:

Kyrie Cameron


Keith Tackett

Retired Partner