Publications & Media

Federal Circuit Court Decisions For Week Ending May 4, 2018

Disc Disease Solutions Inc. v. VGH Solutions, Inc., No. 2017-1483 (May 1, 2018) (Precedential) (3-0) Patent Nos. 8,012,113 and 7,618,509

Key point(s):

  • The Iqbal/Twombly plausibility pleading standard is met when “the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” “Specific facts are not necessary; the statement need only ‘give the defendant fair notice of what the . . . claim is and the ground upon which it rests.’”

Texas Advanced Optoelectronic Solutions, Inc. v. Renesas Elecs. America, Inc., Nos. 2016-2121, 2016-2208, & 2016-2235 (May 1, 2018) (Precedential) (3-0) Patent No. 6,596,981

Key points:

  • Disgorgement of profits as a remedy for trade secret misappropriation is an equitable relief, and as a result, a decision on disgorgement must be made by a court with findings of fact and conclusions of law, rather than by a jury.

SHFL Entm’t, Inc. v. DigiDeal Corp., No. 2016-2705 (May 2, 2018) (Nonprecedential) Patent Nos. 6,651,982 and 7,523,935

Key point(s):

  • When a claim is canceled (e.g., during reexamination), the patentee loses any cause of action based on that claim, any pending litigation in which the claim is asserted becomes moot with respect to that claim, and thus the court lacks subject matter jurisdiction to hear causes of action based on that claim.
  • A court retains subject matter jurisdiction over a lawsuit after reexamination unless all claims emerging therefrom are no longer substantially identical to the originally asserted claims.

In re Verhoef, No. 2017-1976 (May 3, 2018) (Precedential) (3-0) Appl. Ser. No. 13/328,201

Key point(s):

  • A patent application must list all joint inventors of the claimed invention; failure to name a joint inventor renders a patent invalid.
  • To be considered as a joint inventor, a person must: (1) contribute in some significant manner to the conception or reduction to practice of the invention, (2) make a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention, and (3) do more than merely explain to the real inventors well-known concepts and/or the current state of the art.

In re Eberra, No. 2017-2394 (May 4, 2018) (Nonprecedential) Appl. Ser. No. 12/230,058

Key point(s):

  • In the two-step Mayo/Alice framework for patent eligibility, the abstract nature of the claims is not altered at step one by the existence of claim limitations that “add a degree of particularity” to the implementation of the abstract idea.

Gen. Hosp. Corp. v. Sienna Biopharm., Inc., No. 2017-1012 (May 4, 2018) (Precedential) (3-0) Appl. Ser. No. 13/789,575

Key point(s):

  • The disclosure of a broad range of values does not by itself provide written description support for a particular value within that range.
  • Where a specification discloses a broad range of values and a value within that range is claimed, the disclosure must allow one skilled in the art to “immediately discern the limitation at issue in the claims.”

Energy Heating, LLC v. Heat On-the-Fly, LLC, Nos. 2016-1559, 2016-1893, & 2016-1894 (May 4, 2018) (Precedential) (3-0) Patent No. 8,171,993

Key point(s):

  • For inequitable conduct, a court may find clear and convincing evidence of intent to withhold material information when a specific intent to deceive the USPTO is the only reasonable inference that can be drawn from the evidence, despite testimony to the contrary.
  • A prior commercial sale will serve as an on-sale bar if not a bona fide experiment to (1) test the claimed features or (2) determine if the invention would work for its intended purpose.
  • A court must articulate a reasonable basis for denying attorneys’ fees after a finding of inequitable conduct.