December 6, 2016

Federal Circuit Court Decisions For Week Ending November 18, 2016

Christian Faith Fellowship Church v. Adidas AG, Case No. 2016-1296 (November 14, 2016) (precedential) (3-0) Trademark Registration Nos. 3,173,207 and 3,173,208

Key point(s):

  • Even small and relatively insignificant sales of goods can support trademark registration so long as the sales are interstate and the goods bear the mark.

Intermec, Inc. v. Alien Technologies, LLC, Case No. 2015-1808 (November 15, 2016) (non-precedential) Patent No. 6,812,841

Key point(s):

  • Inconsistencies in statements by the Examiner and the PTAB with regards to combination of references that result in harmless error will not impact an obviousness determination.

Perfect Surgical Techniques, Inc., v. Olympus America, Inc., Case No. 2015-2043 (November 15, 2016) (precedential) (2-1) Patent No. 6,030,384

Key point(s):

  • Under a standard of “reasonably continuous diligence,” an inventor is not required to work on reducing an invention to practice every day during the critical period.
  • An attorney’s work in preparing a patent application is evidence of an inventor’s diligence during the critical period.

Unwired Planet, LLC v. Google Inc., Case No. 2015-1810, 2015-1811 (November 15, 2016) (precedential) (3-0) Patent Nos. 7,024,205

Key point(s):

  • In determining whether prior art is analogous, the field of endeavor of a patent is not limited to the specific point of novelty, the narrowest conception of the field, or the particular focus within a given field.
  • Combinations of prior art that sometimes meet the claim elements are sufficient to show obviousness.
  • In combining references, one need not show there is a known problem to show an apparent reason to combine known elements in the fashion claimed by the patent at issue.

Tranxition, Inc. v. Lenovo Inc., Case No. 2015-1907, 2015-1941, 2015-1958 (November 16, 2016) (non-precedential) Patent Nos. 6,728,877, 7,346,766

Key point(s):

  • That a human may perform steps of an abstract idea differently from a computer does not make the computer implementation of the abstract idea an inventive concept sufficient to transform the abstract idea into a patent-eligible application.

Click-to-Call Technologies, LP v. Oracle Corporation, Case No. 2015-1242 (November 17, 2016) (non-precedential) (Patent No. 5,818,836

Key point(s):

  • A party cannot challenge the PTAB’s decision to institute an IPR under 35 U.S.C. § 315(b) because 35 U.S.C. § 314(d) prohibits review of the PTAB’s determination to initiate IPR proceedings based on its assessment of the time-bar of 35 U.S.C. § 315(b).

B.E. Technology, L.L.C v. Google Inc., Case Nos. 2015-1827, 2015-1828, 2015-1829, 2015-1879 (November 17, 2016) (non-precedential) Patent No. 6,628,314

Key point(s):

  • A string citation to multiple pages in a specification without explanation as to how the pages support a proposed amendment is not sufficient to support an amendment.

Roxane Laboratories, Inc. v. Camber Pharmaceuticals, Inc. et al., Case No. 2016-1028 (November 17, 2016) (nonprecedential) U.S. Patent No. 8,563,032

Key point(s):

  • When the intrinsic evidence unambiguously and fully resolves the proper construction of a claim term, resort to extrinsic evidence is unnecessary and improper.

Alfred E. Mann Foundation v. Cochlear Corporation, Case Nos. 2015-1580, 2015-1606, 2015-1607 (November 17, 2016) (precedential) (2-1) Patent Nos. 5,609,616 and 5,938,691

Key point(s):

  • Regarding indefiniteness of a means-plus-function limitation performed by a generic processor, although a PHOSITA would know of potential algorithms to achieve the recited function, this does not create a sufficient algorithm where there is none described.

Related Team:

Payton Hashemi

Of Counsel

W. Bruce Patterson

Partner, Practice Head

Marcus Hammack