October 25, 2016

Federal Circuit Court Decisions For Week Ending October 14, 2016

FairWarning IP, LLC v. Iatric Systems, Inc., No. 2015-1985, October 11, 2016 (precedential) (3-0); U.S. Patent No. 8,578,500

Key point(s):

  • Collecting and analyzing information, without more, are mental processes within the abstract idea category.
  • A technological advance that solves a problem unique to the computer environment must be recited in the claims to be patent-eligible under § 101.

Massachusetts Institute of Technology Children’s Medical Center Corp. v. Shire Pharmaceuticals, Inc., No. 2015-1881, October 13, 2016 (precedential) (3-0); U.S. Patent Nos. 5,770,193 and 5,759,830

Key point(s):

  • A party invoking prosecution history disclaimer bears the burden of proving the existence of a clear and unmistakable disclaimer that would have been evident to one of skill in the art.
  • A determination that a claim is indefinite under § 112 is reviewed de novo, although any factual findings based on extrinsic evidence are reviewed for clear error.

Endo Pharmaceuticals, Inc. v. Actavis Laboratories UT, Inc., No. 2016-1146, October 14, 2016 (nonprecedential); U.S. Patent Nos. 6,579,865 and 6,319,913

Key point(s):

  • A large number of possible combinations and a high degree of uncertainty can support a finding of no motivation to combine.

Poly-America, L.P., v. API Industries, Inc., No. 2016-1200, October 14, 2016 (precedential) (3-0); U.S. Patent No. 8,702,308

Key point(s):

  • An inventor may disavow claims lacking a particular feature when the specification distinguishes or disparages prior art based on the absence of that feature.
  • Claim differentiation cannot override clear statements of claim scope found in the specification and prosecution history.

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