April 9, 2014

Federal Circuit Decisions for Week Ending April 4, 2014

Endo Pharmaceuticals v. Actavis, No. 2013-1663 (3-31-2014) (precedential) (2-1) Patent Nos. 8,329,216; 8,309,122; and 7,851,482

Key point:

  • Licensor is not estopped from asserting patent rights against licensee when the patent at issue is not a continuation of any of the licensed patents.

Senju Pharmaceutical v. Apotex, No.2013-1027 (3-31-2014) (precedential) (2-1) Patent No. 6,333,045

Key point:

  • Absent a clear showing that a material difference exists between original claims in a patent and patentable reexamination claims, it is assumed that the reexamination claims will be a subset of the original claims and no new cause of action is created by the reexamination claims.

MRC Innovations v. Hunter MFG, No. 2013-1433 (4-2-2014) (precedential) (3-0) Patent No. D634,488S and D634,487S

Key point:

  • A design patent is obvious under section 103 when there exist (1) a single primary reference having design characters that are basically the same as the claimed design, and (2) other secondary references that are similar in appearance to the primary reference and may be used to modify the primary reference to create a design that has the same overall visual appearance of the claimed design.

HowLink Global v. Network Communications International Corp, No. 2013-1181 (4-2-2014) (non-precedential) (3-0) Patent No. 7,876,744

Key point:

  • The claim term “temporary transmitting voice of a caller” is correctly construed to mean transmitting a live voice of the caller when the claim language further refers to the same term as “temporary voice transmission” and the claim includes a limitation of “prohibiting voice transmission.”

In Re Teles, No. 2012-1297 (4-4-2014) (precedential) (3-0) Reexamination No. 90/010,017 for US Patent No. 6,594,453

Key points:

  • 35 U.S.C § 145, as in effect between 1999 and 2011, did not authorize a patent owner in an ex parte reexamination to bring suit in district court to challenge the Board’s decision.
  • When construing functional claims under § 112 ¶ 6, the statute does not permit limitation of the means-plus-function claim by adopting a function different from that explicitly recited in the claim.

Microsoft v. DataTern, No. 2013-1184 (4-4-2014) (precedential) (2-1) Patent No. 5,937,402 and No. 6,101,502

Key points:

  • A supplier has established a substantial controversy exists for a declaratory judgment action when the patentee sued customers of the supplier using claim charts showing that the supplier provides the customers with the necessary components to infringe and with instruction manuals for using the components in an infringing manner.
  • The scope of declaratory judgment jurisdiction is determined by a product-by-product basis according to the claim charts used in the customer suits.

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