Publications & Media

Federal Circuit Court Decisions For Week Ending October 18, 2019

Campbell Soup Co. v. Gamon Plus, Inc., No. 2018-2099_(Oct 15, 2019) (non-precedential); Patent No. 8,827,111

Key point(s):

  • The Board is allowed to change its understanding of a reference between instituting a decision and the final decision in an inter partes review.
  • Parties do not waive their right to obtain review of all of grounds of an inter partes review under SAS Institute, INC. v. Iancu, by availing themselves of the appeals process with the Federal Circuit.

Knauf Insulation, Inc. v. Rockwool Internat’l A/S, Nos. 18-1810, 18-1811, 18-1891_ (Oct 15, 2019) (non-precedential); Patent Nos. 7,888,445 and 7,772,347

Key point(s):

  • The motivation to combine two references must be established for a proper rejection and be based on a common utility of the components – not a common identity of the components.
  • The petitioner in an inter partes reexamination bears the burden to prove that every limitation of a claim can be found in the prior art.
  • A petitioner does not have an automatic right to cross-appeal from the Board’s decision despite having the right to defend the Board’s decision against the direct appeal

In re Gates, No. 18-2331 (Oct 16, 2019) (non-precedential); Application No. 15/349,668

Key point(s):

  • Anticipation under §102 is not the same as a 1-reference obviousness rejection under §103.
  • Different embodiments in a single reference may be separate and a §103 rejection may be required to combine those embodiments.

Fraunhofer-Gesellschaft v. Sirius XM Radio Inc., No. 18-2400 (Oct 17, 2019) (Precedential) (3-0); Patent Nos. _6314289, 6931084, 6993084, 7061997

Key point(s):

  • Ambiguity in a contract cannot be resolved in a motion to dismiss.

In re Gen’l Elec. Co., No. 19-1112, 19-1113, 19-1115 (Oct 18, 2019) (non-precedential); Patent No. 7,990,705 and Application Nos. _14/593,087, 15/070,427, and 15/070,483

Key point(s):

  • Prosecution history is considered when determining what subject matter has been surrendered during prosecution in light of impermissible re-capture of subject matter in the reissue claims.
  • Additional limitations or overlooked aspects of reissue claims are irrelevant when considering whether the reissue claims seek to recapture surrendered subject matter.