September 20, 2017

Federal Circuit Court Decisions For Week Ending September 1, 2017

Ultratec, Inc. V. CaptionCall, LLC, Nos 2016-1706, 2016-1707, 2016-1710, 2016-1712, 2016-1708, 2016-1709, 2016-1715, 2016-1713, 2016-2366 (Aug. 28, 2017) (precedential, 3-0) Patent Nos. 5,909,482, 6,233,314, 6,594,346, 6,603,835, 7,003,082, 7,319,740, 7,555,104, and 8,213,578

Key point(s):

  • The Board must “consider” sworn inconsistent testimony on identical issues by putting the testimony on the record to allow appellate review.
  • The Board must sufficiently explain its evidentiary decisions.

Return Mail, Inc. V. United States Postal Service, Unites States (collectively USPS), No. 2016-1502 (August 28, 2017) (precedential, 2-1) Patent No. 6,826,548

Key point(s):

  • The Federal Circuit may review whether the PTAB erred in implementing CBM review proceedings even though the proceedings include a “No Appeal Provision” under 35 U.S.C. § 324(e) stating that the Director’s decision whether to institute a post-grant review is nonappealable.
  • Ineligible patent subject matter under 35 U.S.C. § 101 cannot be saved for lack of pre-emption.

Vicor Corporation v. SynQor, Inc., Nos. 2016-2283_and 2016-2288_(August 30, 2017) (precedential, 3-0) Patent Nos. 8,023,290 and 7,272,021

Key point(s):

  • In a determination of obviousness, all four Graham factors must be considered: (1) “the scope and content of the prior art,” (2) “differences between the prior art and the claims at issue,” (3) “the level of ordinary skill in the pertinent art,” and (4) “secondary considerations” such as “commercial success, long felt but unsolved needs,” and “failure of others.” Graham v. John Deere, 383 U.S. 1, 17 (1966).

CardiAQ Valve Technologies, Inc. v. Neovasc Inc., Nos. 2017-1302, 2017-1513 (Sept. 1, 2017) (nonprecedential, 3-0) Patent No. 8,579,964

Key point(s):

  • Secret 102(e) (pre-AIA) prior art may not be used to establish that a person is not a co-inventor due to mere contribution of what is in the secret prior art.

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