November 18, 2015

Federal Circuit Court Decisions For Week Ending November 13, 2015

Imaginal Systematic, LLC, v. Leggett & Platt, Inc., No. 2014-1845 (November 10, 2015) (Precedential) (3-0) Patent No. 7,222,402

Key point:

  • A preferred embodiment does not express a manifest exclusion or restriction as it pertains to the meaning of the recited phrase “without a vision guidance system.”

Momenta Pharm., Inc., v. Teva Pharm., Inc., Nos. 2014-1274, 2014-1277, 2014-1276, 2014-1278 (November 10, 2015) (Precedential) (2-1) Patent No. 7,575,886

Key point:

  • Testing whether an already-synthesized drug possesses certain qualities, without any assertions that the samples on which tests are performed are themselves incorporated into the finished product

Prometheus Laboratories, Inc., v. Roxane Laboratories, Inc., Nos. 2014-1634, 2014-1635 (November 10, 2015) (Precedential) (3-0) Patent No. 6,284,770

Key point:

  • Insubstantial differences between a later-claimed species of an earlier disclosed genus, in addition to a lack of a nexus between the asserted secondary consideration and the non-obviousness of the claimed invention, render the species patent obvious.

Click-To-Call Technologies, LP, v. Oracle Corporation, No. 2015-1242 (November 12, 2015) (Nonprecedential) Patent No. 5,818,836

Key point:

  • U.S.C. § 314(d) prohibits the Federal Circuit from reviewing the PTAB’s determination to initiate an IPR proceeding based on the PTAB’s assessment of the time-bar of 35 U.S.C. § 315(b).

Advanced Steel Recovery, LLC, v. X-Body Equipment, Inc., No. 2014-1829 (November 12, 2015) (Precedential) (3-0) Patent No. 8,061,950

Key point:

  • Disregarding a portion of patented claim elements, while attempting to establish that an accused device functions in substantially the same way as the claimed invention, does not satisfy a patentee’s burden to establish equivalence.

Cubist Pharmaceuticals, Inc., v. Hospira, Inc., Nos. 2015-1197, 2015-1204, 2015-1259 (November 12, 2015) (Precedential) (3-0) Patent Nos. RE39,071, 6,852,689, 6,468,967, 8,058,238, 8,129,342

Key point:

  • A certificate of correction may be issued to change the name of a compound from the L- isomer of asparagine to the D-isomer of asparagine in a structural diagram when the specification makes clear that the patent claimed the D-isomer of asparagine.

Inphi Corporation, v. Netlist, Inc., No. 2015-1179 (November 13, 2015) (Precedential) (3-0) Patent No. 7,532,537

Key point:

  • Properly describing alternative features without articulating advantages or disadvantages of each feature can constitute a “reason to exclude” under the standard articulated in Santarus.

Related Team:

Puja Detjen