November 14, 2017

Federal Circuit Court Decisions For Week Ending October 20, 2017

Secured Mail Solutions LLC v. Universal Wilde, Inc., No. 2016-1728 (Oct. 16, 2017) (precedential, 3-0) Patent Nos. 7,814,032; 7,818,268; 8,073,787; 8,260,629; 8,429,093; 8,910,860; 9,105,002

Key point:

  • Claims that recite conventional activities performed with conventional technology are invalid under § 101.

Boundary Solutions, Inc. v. CoreLogic, Inc., No. 2016-2354, -2355 (October 17, 2017) (nonprecedential) Patent Nos. 7,499,946; 7,092,957

Key point:

  • Obviousness analysis does not require looking for individual claim elements in the prior art; rather, the focus is on whether the claims, as a whole, would be obvious in view of the prior art.

Smart Systems Innovations, LLC v. Chicago Transit Authority, No. 2016-1233 (October 18, 2017) (precedential, 2-1) Patent Nos. 7,566,003; 7,568,617; 8,505,816; 8,662,390

Key points:

  • Claims that merely invoke computers as a tool, rather than improving on the functioning of existing technology, are likely abstract.
  • Claims that are directed to an abstract idea are not rendered any less abstract by being limited to a particular environment.

Cisco Systems, Inc. v. ITC, No. 2016-2563, -2539 (September 27, 2017) (precedential, 3-0) Patent Nos. 7,162,537; 7,340,597

Key point:

  • The ITC has authority to bar importation of individual components of a product that induces patent infringement.

Merck Sharp & Dohme B.V. v Warner Chilcott Co., No. 2016-2583 (October 19, 2017) (non- precedential) Patent No. 5,989,581

Key points:

  • Even if a prior art reference discloses number ranges that overlap with claim limitations, the claim may not be obvious if a person of ordinary skill in the art would have no guidance to select from a high range end for one limitation and from a low range end for another limitation.
  • Criticism in a prior art reference of key claim limitations should not be ignored when considering whether the prior art renders the claim obvious.

Lufthansa Technik AG v. Astronics Andvanced Electronic Systems Corp, No. 2016-2535 (October 19, 2017) (non-precedential) Patent No. 6,016,016

Key point(s):

  • For a means-plus-function limitation, if the specification does not explain the structure that performs the function, the claim is indefinite because a person of ordinary skill in the art would not be able to ascertain the scope of the invention.

Art+Com Innovationpool GmbH v. Google LLC, No. 2017-1016 (October 20, 2017) (non- precedential) Patent No. RE44,550

Key points:

  • For a prior public use to be an on-sale bar under pre-AIA § 102(b), the prior use must be “ready for patenting.”
  • To establish that a prior use was “ready for patenting,” the evidence must demonstrate that it works for its intended purpose, i.e., its workability or utility.
  • Later refinements or improvements do not negate that the prior use was “ready for patenting.”

Related Team:

Aaron Perkins