Publications & Media

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In re Apple, Inc., No. 2020-115 (April 22, 2020, unsealed May 5, 2020) (nonprecedential) ; Patent No. 8,380,244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Dionex Softron GmbH v. Agilent Techs., Inc. No. 2019-1888 (May 6, 2020) (nonprecedential); Application No. 14/454,577 and Patent No. 9,435,773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Boston Scientific SciMed, Inc. v. Iancu , No. 2018-2005 (April 27, 2020, unsealed May 6, 2020) (nonprecedential); Patent No. 8,992,608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 No. 2019-1733 (May 7, 2020) (nonprecedential); Patent No. 9,399,326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.