Publications & Media

Federal Circuit Court Decisions For Week Ending November 22, 2019

Game and Technology Co. Ltd. v. Wargaming Group Limited, Activision Blizzard Inc., No. 2019-1171 (November 19, 2019) (Precedential), (3-0), Patent No. 7,682,243

Key point:

  • The Board must necessarily determine whether service of a complaint alleging infringement was properly effectuated to institute an inter partes review (IPR).

Sanofi-Aventis Deutschland GMBH, v. Mylan Pharmaceuticals Inc., Nos. 2019-1368, 2019-1369 (November 19, 2019) (Nonprecedential), Patent Nos. 7,476,652 and 7,713,930

Key points:

  • “Blocking patents” owned by a patentee may be used to discount evidence of commercial success.
  • A patentee’s specification may be used for its teachings about prior-art knowledge, but may not be used for its teachings about the inventor’s discovery.

Piccone v. United States Patent and Trademark Office, No. 2019-1471 (November 20, 2019) (Nonprecedential)

Key points:

  • Constructive notice of misconduct or a grievance is not enough to trigger the one-year statute of limitations period for a disciplinary hearing.

Fiber, LLC, v. Ciena Corp., No. 2019-1005 (November 21, 2019) (Nonprecedential), Patent No. 7,095,917

Key points:

  • Construing a means-plus-function claim term is a two-step process: 1) the court must identify the claimed function; 2) the court must determine what structure, if any, disclosed in the specification corresponds to the claimed function
  • Material incorporated by reference cannot provide the corresponding structure necessary to satisfy the definiteness requirement for a means-plus-function clause

TQ Delta, LLC, v. Cisco Systems, Inc., Nos. 2018-1766, 2018-1767 (November 22, 2019) (Precedential), (2-1), Patent Nos. 9,014,243 and 8,718,158

Key points:

  • Conclusory expert testimony does not qualify as substantial evidence
  • Expert testimony must be tethered to supporting evidence

In re IPR Licensing, Inc, No. 2018-1805 (November 22, 2019) (Precedential), (3-0), Patent No. 8,380,244

Key point:

  • The Board cannot properly rely on prior art as evidence of obviousness when the reference was not cited in the ground on which IPR was instituted.

Pharma Tech Solutions, Inc. v. Decision IT Corp., No. 2019-1163 (November 22, 2019) (Precedential), (3-0), Patent Nos. 6,153,069 and 6,413,411

Key points:

  • To apply the “tangential relation” exception to amendment-based prosecution history estoppel, the patentee’s objectively apparent reason for the narrowing amendment should be discernable from the prosecution history record.
  • Argument-based prosecution history estoppel is based on whether a competitor would reasonably believe that the applicant had surrendered the relevant subject matter.

VirnetX Inc. v. Apple Inc., No. 2019-1050 (November 22, 2019) (Nonprecedential), Patent Nos. 6,502,135; 7,418,504; 7,490,151; and 7,921,211

Key points:

  • Issue preclusion prevents successive litigation of an issue of fact or law “actually litigated and resolved in a valid court determination essential to the prior judgment, whether or not the issue arises on the same or a different claim.”
  • It is generally presumed that a word or phrase used throughout a claim should be interpreted consistently