December 23, 2014

Federal Circuit Decisions for Week Ending December 19, 2014

ProMega Corp. v. Life Techs. Corp. (Fed. Cir. Dec. 15, 2014 (precedential) Patent Nos. 5,843,660, 6,221,598, 6,479,235, 7,008,771, RE37,984

Key point(s):

  • Open claims (using internal “comprising” language) may not be used to expand the claims at a key limitation in order to cover indisputable advances in an unpredictable art. Such open claims do not enable a skilled artisan to practice the full breadth of the claim scope without undue experimentation and are invalid for lack of enablement.
  • Liability for inducement of infringement under 35 U.S.C. § 271(f)(1) does not require inducement of a third party, and a single U.S.-made component may constitute a “substantial portion of the components of a patented invention.”

In re St. Helena Hosp. (Fed Cir. Dec. 16, 2014) (precedential), Trademark Reg. No. 2,577,657

Key point(s):

  • The likelihood of confusion inquiry is fact-intensive, turning on the relevant DuPont factors.

CSR, PLC v. Skullcandy, Inc. (Fed. Cir. Dec. 16, 2014) (non-precedential), Patent Nos. 7,187,948, 7,395,090

Key point(s):

  • The PTAB must construe claim limitations with sufficient particularity to enable the reviewing court to understand its reasoning.
  • A claim may be anticipated if each and every limitation is found in a single prior art reference, and figures may be combined where the disclosure provides for a reconfigurable apparatus with interchangeable parts encompassing the multiple figures.

ABB Turbo Systems AG v. TurboUSA (Fed. Cir. Dec. 17, 2014) (precedential) (3-0)

Key point(s):

  • To survive a 12(b)(6) motion to dismiss, it is sufficient to allege enough facts to state a claim to relief that is plausible on its face or, said differently, to nudge one’s claims across the line from conceivable to plausible.
  • Dismissal on statute of limitations grounds at the pleadings stage is improper unless it is apparent from the face of the complaint that the claim is time-barred.

In re BRCA1- and BRCA2-Based Hereditary Cancer Test Patent Litigation (Fed. Cir. Dec. 17, 2014) (precedential) (3-0), Patent Nos. 5,753,441, 5,747,282, 5,837,492

Key point(s):

  • DNA primers (short, synthetic single-stranded DNA molecules that bind specifically to intended target DNA sequences) are patent ineligible because they are identical to naturally occurring DNA.
  • Method claims directed to comparing wild-type sequences with the patient’s sequences are patent ineligible under Alice because the comparison steps are abstract mental processes and the remaining steps did not serve to render the claims patent eligible.

Stryker Corp. v. Zimmer, Inc. (Fed. Cir. Dec. 19, 2014) (precedential) (3-0), Patent Nos. 6,022,329, 6,179,807, 7,144383

Key point(s):

  • Where the accused infringer’s position is susceptible to a reasonable conclusion of no infringement, objective recklessness (and therefore willful infringement entailing treble damages) will not be found.

DataTern, Inc. v. EpiCor Software Corp. (Fed Cir. Dec. 19, 2014) (non-precedential), Patent No. 6,101,502

Key point(s):

  • Claim terms are construed to have their ordinary and customary meaning, i.e., the meaning the term would have to a person of ordinary skill in the art in the context of the entire patent specification and its prosecution history.

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