October 18, 2016

Federal Circuit Court Decisions For Week Ending September 9, 2016

Asia Vital Components Co., Ltd., v. Asetek Danmark A/S, Case No. 2015-1597 (September 8, 2016) (precedential) (3-0) Patent No. 8,240,362 and 8,245,764

Key point:

  • A patent owner does not have to accuse a specific product of infringement before a district court may exercise jurisdiction in a declaratory judgement action involving the specific product if under the totality of the circumstances the patent owner engaged in conduct that can be reasonably inferred as demonstrating intent to enforce a patent against filing party.

UCB, INC., v. Yeda Research And Development Co., Ltd., Case No. 2015-1957 (September 8, 2016) (Precedential) Patent No. 6,090,923

Key point:

  • A patent applicant cannot later obtain scope that was requested during prosecution, rejected by the Examiner, and then withdrawn by the applicant, including by construing otherwise unamended claims to exclude subject matter surrendered during prosecution.

Software Rights Archive, LLC,v. Facebook, Inc., Case Nos. 2015-1649, 2015-1650, 2015- 1651 (September 9, 2016) (non-precedential), Patent Nos. 5,832,494 and 6,233,571

Key point:

  • A prior art reference teaching partial text databases but stating that full text storing of documents was advantageous supported a Board determination that a person of ordinary skill would be motivated to modify the database of the reference to support full text databases.

Related Team:

Jon K. Stewart

Retired Partner