December 2, 2015

Federal Circuit Court Decisions For Week Ending November 20, 2015

Akamai Technologies, Inc. v. Limelight Networks, Inc., Nos. 2009-1372, 2009-1380, 2009-1416, 2009-1417 (November 16, 2015) (Precedential) (3-0) (U.S. Patent No. 6,108,703)

Key point(s):

  • Where there is no disavowal of term definitions or the applicant acting as his own lexicographer, the plain and ordinary meaning of a term applies.
  • Where expert testimony on damages is sufficiently grounded in economic principles, evidence based on a lost profits theory is admissible.

Ariosa Diagnostics v. Verinata Health, Inc., Nos. 2015-1215, 2015-1226 (November 16, 2015) (Precedential) (3-0) (Patent No. 8,318,430)

Key point(s):

  • In a petition for inter partes review and supporting evidence (e.g., expert declarations), the petitioner should clearly articulate how the references can be combined to read on the challenged claims.
  • The PTAB cannot disregard art used to document knowledge that one of ordinary skill in the art would use in reading the prior art because the art was not identified in the petition as prior art for purposes of demonstrating obviousness.

Cioffi v. Google, Inc., No. 2015-1194 (November 17, 2015) (Non-precedential) (Patent Nos. RE43,103, RE43,500, RE43,528, and RE43,529)

Key point(s):

  • Claim interpretation that renders a dependent claim superfluous is generally disfavored.
  • Occasional passing references to a definition of a term that is inconsistent with a well-understood, objective meaning of a term are not sufficient to alter the well-understood, objective meaning of the term.

In re Commonwealth Scientific & Instructional Research Organisation, No. 2014-1710 (November 20, 2015) (Non-precedential) (Patent Application No. 11/364,183)

Key point(s):

  • Diligence in prosecution and prosecution strategy is immaterial to the § 135(b)(1) bar that an application claim copy an issued patent claim prior to one year from the patent grant.
  • To defeat the § 135(b)(1) bar, an applicant need only show that claims filed after the critical date find support in the claims filed before the critical date

Related Team:

Michael Lew