August 20, 2013

Federal Circuit Decisions for Week Ending August 9, 2013

3M Innovative Properties Co. v. Tredegar Corp., No. 2012-1241, (August 6, 2013) (precedential) (2-1) Patent Nos. 5,344,691, 5,468,428, 5,501,679, and 5,691,034

Key points:

  • In order for prosecution disclaimer to attach, the disavowal must be both clean and unmistakable.
  • Claim construction is difficult because patent

Cheese Systems, Inc. v. Tetra Pak Cheese And Powder Systems, Inc., Nos. 2012-1463, -1501, (August 6, 2013) (precedential) (3-0) Patent No. 5,985,347

Key points:

  • It is within the appellate court’s discretion to affirm a district court on any grounds shown by the record, even though that was not the basis of appeal.
  • Where a district court holds a claim obvious without making findings of secondary considerations, the lack of specific consideration of secondary considerations ordinarily requires a remand.

Rembrandt Vision Technologies, L. P. v. Johnson & Johnson Vision Care, Inc., No. 2012-1510, (August 7, 2013) (precedential) (3-0) Patent No. 5,712,327

Key points:

  • Fed. R. Civ. P. 26 requires an expert witness to disclose in the expert report “a complete statement of all opinions the witness will express and the basis and reasons for them.”
  • Under Fed. R. Civ. P. 37, an expert witness may not testify to subject matter beyond the scope of the witnesses’ expert report unless the failure to include the information in the report was “substantially justified or harmless.”

Apple Inc. v. International Trade Commission, 2012-1338 (August 7, 2013) (precedential)(3-0), Patent Nos. 7,663,607, 7,812,828

Key points:

  • To incorporate by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found.
  • Evidence relating to all Graham factors – including “objective” evidence of secondary considerations – must be considered before determining whether the claimed invention would have been obvious to one of skill in the art at the time of the invention.

Aria Diagnostics, Inc. v. Sequenom, Inc. 2012-1531 (August 9, 2013) (precedential) (3-0) Patent No. 6,258,540

Key points:

  • Claim construction must not introduce limitations that are not described in the claim itself, in the specification or through prosecution history.
  • Even if a specification has only one embodiment, its claims will not be limited to that example unless the patentee has demonstrated a clear intention to limit the claim scope using words or expression of manifest exclusion or restriction.

Taurus IP, LLC v. Daimler Chrysler Corp. 2008-1462, -1463, -1464, -1465 (August 9, 2013) (precedential) (3-0) Patent No. 6,141,658

Key point:

  • While an adverse claim construction generally cannot, alone, form the basis for an exceptional case finding under 35 U.S.C. § 285, a party cannot assert baseless infringement claims and must continually assess the soundness of pending infringement claims especially after an adverse claim construction.

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