Federal Circuit Court Decisions For Week Ending May 3, 2019
In re Morinville, No. 2018-1895 (April 29, 2019)(nonprecedential), Patent Application No. 11/003,557
- Claims directed to automating known business practices on a computer are not patent subject matter eligible.
Polycom, Inc. v. Fullview, Inc., No. 2018-1829 (April 29, 2019) (nonprecedential), Patent Control No. 95/001,876 (Patent No. 6,700,711)
- A subsequent PTAB decision in a same proceeding may incorporate a previous decision.
- When a party requests rehearing of a PTAB decision, failure to address in the rehearing request an error in the decision (or a previous decision incorporated into that decision) in the request for rehearing waives that error, precluding appeal of that error.
Trading Techs. Int’l v. IBG LLC, No. 2017-2323 (April 30, 2019) (precedential) (3-0), Patent No. 7,783,556
- A patent that does not solve a technical problem using a technical solution is not excluded from Covered Business Method (CBM) review.
- Claims that merely display new information using a prior art screen are not patent-eligible.
In re Cohen, No. 2018-1609 (May 1, 2019) (nonprecedential), Patent Application No. 12/471,557
- The PTAB may resolve ambiguity in admitted prior art against the applicant.
Thermolife Int’l, LLC v. GNC Corp., Nos. 2018-1657 & 2018-1666 (May 1, 2019) (precedential) (3-0), Patent Nos. 5,891,459; 6,117,872; 6,646,006; & 7,452,916
- An exceptional case finding can be based on a plaintiff’s failure to conduct an adequate pre-filing investigation with respect to even one of multiple asserted claims.
Amarin Pharma, Inc. v. ITC, Nos. 2018-1247 & 2018-114 (May 1, 2019) (precedential) (2-1)
- When the ITC intrinsically rules on the merits of a § 337 claim in declining to institute an investigation, the Federal Circuit has jurisdiction to review the ITC’s decision.
Endo Pharm. Inc. v. Actavis LLC, No. 2018-1054 (May 3, 2019) (precedential) (2-1), Patent No. 8,871,779
- Private communications may qualify as prior art under pre-AIA § 102(f) which may be considered in an obviousness analysis.