July 16, 2020

Federal Circuit Court Decisions For Week Ending May 8, 2020

Uber Technologies, Inc. v. X One, Inc.,
No. 2019-1164 (May 5, 2020) (precedential) (3-0); Patent No. 8,798,593

Key point(s):

  • If there are a finite
    number of identified, predictable solutions, a POSITA has good reason to
    pursue the known options.
  • The fact that a combination
    was obvious to try might show that it was obvious under § 103.

In re Apple, Inc., No. 2020-115 (April 22, 2020, unsealed May 5, 2020)
(nonprecedential) ; Patent No. 8,380,244

Key point(s):

  • A writ of mandamus reversing
    the denial of transfer under §1404(a) is proper only when the denial is
    patently erroneous and requires the petitioner to establish that the district
    court’s decision amounted to a failure to meaningfully consider the merits of
    the motion.

Caterpillar Paving
Products Inc. v. Wirtgen America, Inc., Joseph Vogel AG
, No. 2020-1261_(May 6, 2020) (precedential) (3-0);
Patent No. 9,045,871

Key point(s):

  • The Arthrex decision
    that Administrative Patent Judge (APJ) appointment provisions in the AIA were
    unconstitutional is expressly limited to cases where a final written decision was
    issued before the panel members became constitutional.

Dionex Softron GmbH v.
Agilent Techs., Inc.
No.
2019-1888 (May 6, 2020) (nonprecedential); Application No. 14/454,577 and
Patent No. 9,435,773

Key point(s):

  • When a party challenges written
    description support for an interference count or the copied claim, the
    originating disclosure provides the meaning of the pertinent claim language.
  • When copied claims that are
    the subject of an interference proceeding are found indefinite and unpatentable,
    the applicant lacks standing to continue the interference proceeding.

Boston Scientific SciMed,
Inc. v. Iancu
, No. 2018-2005
(April 27, 2020, unsealed May 6, 2020) (nonprecedential); Patent No. 8,992,608

Key point(s):

  • If two inconsistent
    conclusions may be reasonably drawn from the evidence of record, the PTAB’s
    decision to favor one conclusion over the other is the epitome of a decision
    that must be sustained upon review for substantial evidence.
  • A reasonable expectation of
    success requirement for obviousness does not necessitate an absolute certainty
    for success.

Donghee America, Inc. v.
Plastic Omnium Advanced Innovation and Research.
No. 2019-1733 (May 7, 2020) (nonprecedential); Patent
No. 9,399,326

Key point(s):

  • A claim limitation must be
    construed in the context of the claim in which it appears.

Eagle Pharmaceuticals
Inc. v. Slayback Pharma LLC
,
No. 2019-1924_(May 8, 2020) (precedential) (3-0); Patent Nos. 9,265,831;
9,572,796; 9,572,797; 10,010,533

Key point(s):

  • When a patent discloses but
    does not claim alternatives, the unclaimed alternatives are dedicated to the
    public and cannot be recaptured via the doctrine of equivalents.
  • A party cannot manufacture a
    factual dispute using expert testimony when the patents themselves provide
    sufficient context to decide the legal issue.

Essity Hygiene and Health
AB v. Cascades Canada ULC, Tarzana Enterprises, LLC
, Nos. 2019-1736 and 2019-1741_(May 8, 2020)
(non-precedential); Patent Nos. 8,597,761 and 9,320,372

Key point(s):

  • When a reference states that
    a description relates “non-limitingly” to an exemplary embodiment, the
    teachings of the reference are not limited to that example.

Essity Professional
Hygiene North America LLC v. Cascades Canada ULC
, No. 2019-1742_(May 8, 2020) (non-precedential);
Patent No. 8,273,443

Key point(s):

  • Explaining why a party’s
    arguments are not persuasive does not constitute improper burden shifting to
    the party.
  • The mere age of prior
    references is not persuasive of the non-obviousness of the combination of their
    teachings, absent evidence that, notwithstanding knowledge of the references,
    the art tried and failed to solve the problem.

In re Jobin. No. 2020-1067 (May 8, 2020) (nonprecedential);
Application No. 12/523,427

Key point(s):

  • Claims directed to methods of
    organizing human activity are a hallmark of claims directed to abstract ideas.
  • If the claims at issue are
    directed to a patent ineligible concept, the court must consider the elements
    of each claim both individually and as an ordered combination to determine
    whether the additional elements transform the nature of the claim into a
    patent-eligible application.