Publications & Media

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In re Morinville, No. 2018-1895 (April 29, 2019)(nonprecedential), Patent Application No. 11/003,557

Key point(s):

  • 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Polycom, Inc. v. Fullview, Inc., No. 2018-1829 (April 29, 2019) (nonprecedential), Patent Control No. 95/001,876 (Patent No. 6,700,711)

Key point(s):

  • 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

Key point(s):

  • 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In re Cohen, No. 2018-1609 (May 1, 2019) (nonprecedential), Patent Application No. 12/471,557

Key point(s):

  • 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

Key point(s):

  • 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)

Key point(s):

  • 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

Key point(s):

  • Private communications may qualify as prior art under pre-AIA § 102(f) which may be considered in an obviousness analysis.