Publications & Media

Federal Circuit Court Decisions For Week Ending November 8, 2019

In re Fought, No. 2019-1126 (November 4, 2019) (precedential) (3-0); Patent Application No. 13/507,528

Key point(s):

  • The preamble is limiting when the body of the claim relies on it for antecedent basis.
  • Unless the patentee places the ordinary level of skill in the art in dispute, arguing with particularity how it would alter the outcome, neither the Examiner nor the Board has to articulate the ordinary level of skill in the art.

Telefonaktiebolaget LM Ericsson v. TCL Corp., Nos. 2017-2381; 2017-2385 (November 7, 2019) (precedential) (3-0); Patent No. 6,029,052

Key point(s):

  • New evidence can be submitted more than one month after an IPR is instituted if material and there is sufficient reason why it was not submitted earlier, and the opposing party is not prejudiced.
  • A library document is publicly accessible when it has been meaningfully indexed/catalogued.
  • A reference does not teach away by discussing advantages and disadvantages of an alternative.

Bedgear v. Fredman Bros. Furniture Company, Inc., Nos. 2018-2082; 2018-2083; 2018-2084 (November 7, 2019) (non-precedential); Patent No. 6,029,052

Key point(s):

  • Under Arthrex, USPTO ALJs are inferior officers, and cases raising the constitutionality issue are to be remanded for rehearing by properly appointed judges.
  • Some members of the Federal Circuit believe Arthrex wrongly interpreted Supreme Court precedent and, specifically, that there is no requirement to remand the cases for rehearing.

Polidi v. Lee., No. 2018-2277 (November 8, 2019) (non-precedential); Patent No. 6,029,052

Key point(s):

  • The Federal Circuit has jurisdiction over claims that arise under federal patent law. Claims for declaratory judgment under 28 U.S.C. 2201, monetary damages under Bivens, and relief under the RICO statute, do not arise under federal patent law.

In re Motupalli., No. 2019-1889 (November 8, 2019) (non-precedential); Patent Application No. 13/516,443

Key point(s):

  • If an appeal brief does not expressly address each ground of rejection, later challenges to those rejections are waived.
  • Challenges to a ground of rejection in an appeal brief cannot be made only by incorporation by reference from the appendix.

Airbus S.A.S. v. Firepass Corp., No. 2019-1803 (November 8, 2019) (precedential) (3-0); Patent No. 6,418,752

Key point(s):

  • Background prior art, and other evidence cited by the parties, should be considered when analyzing whether a prior art reference qualifies as analogous art, even where the evidence is not itself part of the obviousness combination.