December 17, 2018

Federal Circuit Court Decisions For Week Ending November 23, 2018

Google LLC v. Conversant Wireless Licensing S.A.R.L., No. 2017-2456, November 20, 2018 (non-precedential) Patent No. 7.072,667

Key point(s): 

  • When the PTAB institutes an IPR based on prior art likely meeting a limitation but in the final decision concludes that the petitioner had not met its burden on that limitation, the Board must explain why the prior art did not meet the limitation.

Palo Alto Networks, Inc., v. Finjan, Inc. Nos. 2017-2314, 2315, November 19, 2018 (nonprecedential), Patent No. 8,141,154

Key point(s):

  • A party concurrently appealing two final decisions cannot request vacatur of the decision in the first IPR but rely on that first decision to support its argument in the second IPR.

Indivior Inc. v. Dr. Reddy’s Laboratories S.A, , Nos. 2018-2167, 2169, November 20, 2018 (nonprecedential) Patent 9.931,305

Key points:

  • Filing a terminal disclaimer, while not conclusive proof that the respective claim scopes of a parent application and a child application are the same, is a “strong clue” that the claims of the two patents are patentably indistinct.
  • Claim preclusion can bar the filing of a lawsuit for a patent that shares a specification with a previously-litigated patent, in particular when the claims of the two patents are patentably indistinct.

Tris Pharma, Inc., v. Actavis Labs. FL, Inc., Nos. 2017-2557, 2559, 2560, November 20, 2018, (nonprecedential) Patent Nos. 8,465,765, 8,563,033, 8,778,390, 8,956,649, and 9,040,083

Key point(s):

  • Failure of a district court to perform factual findings and adequately explain those findings is reversible error.
  • Failure to address motivation to combine elements of prior art is reversible error.

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