November 14, 2017

Federal Circuit Court Decisions For Week Ending November 3, 2017

Mastermine Software, Inc. v. Microsoft Corporation, No. 2016-2465 (October 30, 2017) (precedential, 3-0) Patent Nos. 7,945,850; 8,429,518

Key point(s):

  • Functional language is permissible in system claims if it does not obfuscate when infringement occurs (e.g., when the system is made versus when the system is used)

Dragon Intellectual Property, LLC v. Dish Network LLC, Nos. 2016-2492, 2016-2492 (November 1, 2017) (nonprecedential) Patent No. 5,930,444

Key point(s):

  • Even if a party does not make a particular limitation the “only focus” of arguments presented prior to oral hearing in inter partes review, the party has not waived arguments that do focus on that limitation for appeal purposes if the limitation was raised as part of a broader argument
  • The PTAB’s reliance on an additional reference to teach a limitation is evident if the PTAB states that a primary reference “viewed in light of” the additional reference teaches the limitation

Bayer Pharma AG v. Watson Laboratories, Inc., No. 2016-2169 (November 1, 2017) (precedential, 3-0) Patent No. 8,613,950

Key point(s):

  • A district court commits clear error if its analysis and the testimony of an expert the district court finds credible both fail to address relevant prior art
  • A finding that a person of ordinary skill in the art would prefer one option over another is insufficient to support a finding of teaching away from the less-preferred option

Two-Way Media LTD. v. Comcast Cable Communications LLC, No. 2016-2531, 2016-2532 (November 1, 2017) (precedential, 3-0) Patent Nos. 5,778,187; 5,983,005; 6,434,622; 7,266,686

Key point(s):

  • Claims that require functional results must describe how those results are achieved in a non-abstract way to attain subject-matter eligibility under § 101
  • An inventive concept must be found in the claims, not merely in the specification, under the Alice framework
  • Subject-matter eligibility under § 101 and inquiries under §§ 102, 103 are separate
  • When a patent’s claims are deemed only to disclose ineligible subject matter under the Alice framework, preemption concerns are moot

Interdigital Communications, Inc. v. ZTE Corporation, No. 2016-2362 (November 3, 2017) (nonprecedential) Patent No. 7,190,966 and 7,286,847

Key point(s):

  • A claim construction made by the ITC that was uncontested in a previous appeal is not controlling if the Federal Circuit had no occasion to rule on the correctness of the construction during the previous appeal.
  • Judicial estoppel does not apply if a party assumes a position in a legal proceeding, but does not succeed in maintaining that position.

Intellectual Ventures I LLC v. Erie Indemnity Company, No. 2017-1147 (November 3, 2017) (nonprecedential) Patent No. 7,757,298

Key point(s):

  • Limitations from dependent claims may not factor into an analysis under step 2A of the Alice test if a designation of an independent claim as representative is not challenged.
  • Novelty of a claim’s limitations may not demonstrate that the claim itself is not abstract.

University of Maryland Biotechnology Institute v. Presens Precision Sensing GMBH, Nos. 2016-2745 and 2017-1057 (November 3, 2017) (nonprecedential) Patent No. 6,673,532

Key point(s):

  • Obviousness under § 103 can be found if a combination of features from multiple references is consistent with the basic principle of operation of at least one of the references
  • To teach away from a feature, a prior-art reference must provide clear discouragement from implementing the feature

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