Publications & Media

Federal Circuit Court Decisions For Week Ending September 28, 2018

Hyatt, v. United States Patent and Trademark Office, No. 2017-1722 (September 24, 2018) (Precedential) (3-0)

Key point(s):

  • The PTO has authority to impose procedural conditions precedent before the PTAB begins a review relating to an appeal.
  • Specifically, MPEP § 1207.04, providing that the PTAB does not acquire jurisdiction relating to an appeal if the examiner reopens prosecution after the appeal is filed, is a valid procedural condition.

Wisconsin Alumni Research Foundation v. Apple, No. 2017-2265, 2017-2380 (September 28, 2018) (Precedential) (3-0); Patent No. 5,781,752

Key point(s):

  • The plain and ordinary meaning of the term “particular” in a claim was singular.
  • The plain and ordinary meaning of a claim term is its meaning to a POSITA after reading the specification.

Gust v. Alphacap Ventures, LLC, No. 2017-2414 (September 28, 2018) (Precedential) (2-1); Patent No. 8,433,630

Key point(s):

  • Patent claims are not ineligible for patent protection simply because they are directed to software based business methods.
  • Because the nature of § 101 jurisprudence was evolving during the merits stage of this lawsuit, the lawyers for the patent owner cannot be faulted for bringing the infringement law suit and arguing for patent eligibility

Bennet Regulator Guard, Inc., v. Atlanta Gas Light Co., No. 2017-1555, 2017-1626 (September 28, 2018) (Precedential) (3-0); Patent No. _5,810,029

Key point(s):

  • The PTAB is prohibited from instituting an IPR if the petition is filed more than 1 year after the date on which the petitioner is served with a complaint alleging infringement of the patent, regardless of the success or failure of the complaint (e.g., whether its dismissed voluntarily or involuntarily, etc.).