October 6, 2016

Federal Circuit Court Decisions For Week Ending September 23, 2016

COX Communication Inc. v. Sprint Communication Company, No. 2016-1013 (September 23, 2016) (precedential) (3-0) Patent Nos. 6,452,932, 6,463,052, 6,633,561, 7,286,561, 6,298,064, 6,473,429

Key point(s):

  • The term “processing system” is not indefinite if it does not discernably alter the scope of the claims.
  • Claims are not per se indefinite merely because they contain functional language.

Affinity Labs of Texas, LLC v. DirectTV LLC, No. 2015-1845, 2015-1846, 2015-1847, 2015-1848, (September 23, 2016) (precedential) (3-0), Patents No. 7,970,379

Key point(s):

  • Merely limiting the field of use of an abstract idea to a particular existing technological environment does not render the claims any less abstract.

Affinity Labs of Texas, LLV v. Amazon.com Inc., No. 2015-2080, (September 23, 2016) (precedential) (3-0), Patents No. 8,688,085

Key point(s):

  • In addressing the first step of a § 101 inquiry it is often helpful to ask whether the claims are directed to an improvement in the functioning of a computer, or merely adding conventional computer components to well-known business practices.

Server Technology, Inc. v. American Power Conversion, No. 2015-1605, (September 23, 2016) (precedential) (3-0), Patents Nos. 7,702,771 and 7,043,543

Key point(s):

  • The term “associated with” merely requires commonality, not physical connection.
  • The use of the word “comprising” is open ended and indicates that the claim must have all of the claimed elements, but not that all the elements must be contained in a single enclosure.

Roche Diagnostics Operations v. Lifescan Inc., No. 2015-1356 (September 22, 2016) (non- precedential), Patent Nos. 7,276,146 and 7,276,147

Key point(s):

  • A term’s ordinary meaning is its meaning to the ordinary artisan after reading the entire patent.
  • A specification may define claim terms expressly or by implication.

WesternGeco LLC. v. ION Geophysical Corp, No. 2013-1527, 2014-1121, 2014-1526 (September 21, 2016) (precedential) (3-0) Patent Nos. 6,691,038, 7,080,607, and 7,293,520

Key point(s):

  • The Supreme Court’s decision in Halo rejected an objective prong to establish willfulness for enhanced damages.

Yedda Research and Development v. Abbott GMBH & Co. KG., No. 2015-1662, (September 20, 2016) (precedential) (3-0), Patents No. 5,344,915

Key point(s):

  • One avenue of review of the Board of Patent Appeals and Interferences (PTAB) is to the district court, rather than a direct appeal to the Federal Circuit.

In re Lemay, No. 2015-1973 (September 19, 2016) (non-precedential), Patent Application No. 11/968,067

Key point(s):

  • When combining references under a § 103 rejection, antecedent basis for claim terms must be taken into account.

ClassCo, Inc., v. Apple, Inc., No. 2015-1853 (September 22, 2016) (Precedential) (3-0) PTAB- Inter Partes Review No. 95/002,109

Key point(s):

  • KSR does not require combined references to have the same function.

Husky Injection Molding Systems Ltd. v. Athena Automation Ltd., Nos. 2015-1726, 2015-1727 (September 23, 2016) (precedential) (3-0) Patent No. 7,670,536

Key point(s):

  • The determination as to whether to institute inter partes review is typically non appealable and an appeal on the basis of assignor estoppel is not an exception to the rule

Related Team:

Payton Hashemi

Of Counsel