April 22, 2014

Federal Circuit Decisions for Week Ending April 11, 2014

Chicago Board Options Exchange, Inc. v. International Securities Exchange, LLC., No. 2013-1326 (April 7, 2014) (precedential, 3-0); Patent No. 6,618,707

Key Point:

  • Terms in nested means-plus-function claims construed to be distinct processes may be supported by overlapping discussion in the specification.

United Video Properties, LLC., v. Amazon.com, Inc., No. 2013-1396 (April 8, 2014) (non-precedential, 3-0); Patent No. 6,769,128 and 7,603,690

Key Point:

  • Amendments during prosecution that delete a claim term rejected under §112 and replace it with another phrase may be a clear disavowal of the deleted subject matter.

Jack O. Cartner v. Alamo Group, Inc., No. 2013-1293, -1314 (April 8, 2014) (non-precedential, 3-0); Patent No. 5,197,284

Key Point:

  • It is objectively unreasonable to argue that an alleged infringing product could meet a limitation, when that limitation was added to distinguish a prior art system that was, in relevant part, the same as the alleged infringing product.

Trebro Manufacturing, Inc. v. FireFly Equipment, LLC, No. 2013-1437 (April 8, 2014) (precedential, 3-0); Patent No. 8,336,638

Key Point:

  • Evidence of loss of market share and loss of access to customers are pertinent to an inquiry as to whether a plaintiff is likely to suffer irreparable harm in the absence of a preliminary injunction.

University of Pittsburgh v. Varian Medical Systems, No. 2013-1575 (April 10, 2014) (non-precedential, 2-1); Patent No. 5,727,554

Key Point:

  • In construing a means-plus-function claim, an algorithm corresponding to a function does not need to include every possible implementation of the function, so long as it was linked to and encompassed the claimed function.

Hoffman-La Roche, Inc. v. Apotex, Inc., No. 2013-1164 (April 11, 2014) (precedential, 2-1); Patent No. 7,718,634 and 7,410,957

Key Point:

  • In determining obviousness, evidence of superior efficacy does nothing to undercut the showing that there was a reasonable expectation of success with the claimed subject matter, even if the level of efficacy may have turned out to be somewhat greater than would have been expected.

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