May 21, 2015

Federal Circuit Court Decisions For Week Ending May 8, 2015

Sukumar v. Nautilus, Inc. No. 2014-1205, May 4, 2015 (precedential) (3-0)

Key point(s):

  • A potential competitor may suffer competitive injury under the false marking standing requirement of the AIA, if it has attempted to enter the market.
  • An attempt to enter the market requires intent to enter the market with a reasonable possibility of success, and an action to enter the market.

Takeda Pharmaceuticals, Inc. v. Hikma Americas, Inc., Nos. 2015-1139 and 2015-1142, May 6, 2015 (precedential) (2-1); Patent Nos. 7,964,648; 7,981,938; 8,097,655; 8,440,722; and 7,964,647

Key point(s):

  • In induced infringement, mere knowledge of possible infringement by others does not amount to inducement; specific intent and action to induce infringement must be proven.

Eon Corp IP Holdings, LLC v. AT&T Mobility, Inc., Nos. 2014-1392 and 2014-1393, May 6, 2015 (Precedential) (3-0); Patent No. 5,663,757

Key point(s):

  • The Katz exception applies only where no algorithm was disclosed and no special programming would be needed for the described function.
  • When a specification discloses no algorithm, the knowledge of a person of ordinary skill in the art is not relevant.

Biogen MA, Inc. v Japanese Foundation for Cancer Research, No. 2014-1525 and 2014-1694, May 7, 2015 (Precedential) (3-0); Patent No. 5,236,859 and 5,514,567

Key point(s):

  • Historically, election of either 35 U.S.C.§ 141 or 35 U.S.C.§ 146 was mutually exclusive and the election was irrevocable.
  • Erroneously electing § 146 after Congress precluded that option in enacting the AIA does not bar transfer to the Federal Circuit for review under § 146.

AstraZeneca LP. v. Breath Limited, No. 2015-1335, May 7, 2015 (Nonprecedential) (3-0); Patent No. 7,524,834

Key point(s):

  • Whether or not there is a nexus between the novel features of the patented product and commercial success must be evaluated in terms of what is driving sales, not what is allowing the product to reach the shelf in the first place.

In Re: Magna Electronics, Inc., No. 2014-1804, May 7, 2015 (Nonprecedential) (3-0); Patent Nos. 6,222,447 and 5,949,331

Key point(s):

  • Conclusory statements regarding secondary considerations cannot supplant evidence of those secondary considerations.
  • A nexus must exist between a product’s commercial success and the claimed invention.

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