August 28, 2014

Federal Circuit Decisions for Week Ending August 22, 2014

AbbVie Inc. v. The Mathilda and Terence Kennedy Institute of Rheumatology Trust, No. 2013-1545 (August 21, 2014) (precedential) (3-0) Patent Nos. 6,270,766 and 7,846,442

Key point(s):

  • Species are unpatentable when prior art disclosures describe the genus containing those species such that a person of ordinary skill could envision every member of the genus.
  • A later expiring patent is not patentably distinct from an earlier expiring patent if it merely claims a disclosed utility of the earlier claimed invention.

American Radio LLC, v. Qualcomm Inc., No. 2013-1641, -1642, -1643, -1644 (August 22, 2014) (nonprecedential) (3-0), Patent Nos. 5,864,754, 7,831,233, 8,045,942, 8,170,519, and 8,280,334

Key point(s):

  • The words of a claim in a patent are generally given their ordinary and customary meaning, which is the meaning that a term would have to a person of ordinary skill in the art after reviewing the intrinsic record at the time of the invention.
  • The intrinsic record includes the claims, the specification, and the prosecution history.

Mformation Technologies, Inc., v. Research in Motion Limited, No. 2012-1679, 2013-1123 (August 22, 2014) (precedential) (3-0) Patent No. 6,970,917

Key point(s):

  • It is not error for a district court to elaborate on a point post-verdict to clarify what was inherent in the claim construction.
  • A claim requires an ordering of steps when the claim language, as a matter of logic or grammar, requires that the steps be performed in the order written, or when the specification directly or implicitly requires an order of steps.

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