December 31, 2014

Federal Circuit Decisions for Week Ending December 26, 2014

Fleming v. Escort Inc., No. 2014-1331, -1371 (Dec. 24, 2014) (precedential) (3-0), Patent Nos. RE39,038 and RE40,653

Key point(s):

  • Not appreciating the full scope of one’s invention and inadequacy of the original claims is a valid reason for asking for a reissue patent under 35 U.S.C. § 251.
  • Every point of corroborating evidence need not come from a source totally independent of the inventor.

Aqua Shield v. Inter Pool Cover Team, No. 2014-1263 (Dec. 22, 2014) (precedential) (3-0) Patent No. 6,637,160

Key point(s):

  • A reasonable royalty calculation should consider all relevant record evidence, including the advantages of the patented product, the ease and cost of designing around the claimed invention, and the relevance of the infringer’s actual profits to what the infringer’s expectations would have been in a hypothetical negotiation.
  • A finding of no willful infringement is not supported by a denial of a preliminary injunction based on personal jurisdiction issues rather than likelihood of success on the merits.

Content Extraction and Transmission, LLC v. Wells Fargo Bank, Nos. 2013-1588, -1589 and 2014-1112, -1687 (Dec. 23, 2014) (precedential) (3-0) Patent Nos. 5,258,855, 5,369,508, 5,625,465, and 5,768,416

Key point(s):

  • A court may dismiss a patent infringement action under FRCP 12(b)(6) by holding the claims invalid under § 101 without performing claim construction or allowing discovery.
  • The mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.

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John Johannes