August 27, 2014

Federal Circuit Decisions for Week Ending August 15, 2014

John R. Gammino v. Sprint Communications Company, L.P., Case Nos. 2013-1613, 2014-1016 (August 15, 2014) (non-precedential) U.S. Patent No. 5,809,125

Key point(s):

  • Acquiescence to an Examiner’s statements in the file history can limit claim scope beyond the actual wording of the claim.
  • Inconsistent positions in summary judgment briefing can be used against the patentee to limit claim scope.

I/P Engine, Inc., v. AOL Inc., Case No. 2013-1307, -1313, August 15, 2014 (non-precedential) (2-1), U.S. Patent Nos. 6,314,420 and 6,775,664

Key point(s)

  • Common sense can be indicia of obviousness.

Apotex Inc. v. UCB, Inc., Case No. 2013-1674, August 15, 2014, (Precedential) (3-0), U.S. Patent No. 6,767,556

Key point(s):

  • An inventor’s suspicion of the true teaching of the prior art is not enough to establish inequitable conduct, but knowingly misrepresenting material facts about the prior art does establish inequitable conduct.

Related Team:

Donald Verplancken