December 12, 2014

Federal Circuit Decisions for Week Ending December 5, 2014

Memorylink Corp. v. Motorola Solutions, Inc., Case No. 2014-1186 (December 5, 2014) (precedential) (3-0), Patent No. 6,522,352

Key point:

  • Under the state law “four-corners” rule of contract interpretation, a patent assignment has sufficient consideration even if the recited consideration is boilerplate language.

Sandoz Inc. v. Amgen, Inc., Case No. 2014-1693 (December 5, 2014) (precedential) (3-0), Patent Nos. 8,063,182 and 8,163,522

Key points:

  • A pharmaceutical company should file an application with the FDA for approval of a biosimilar product prior to filing suit for a declaratory judgment of noninfringement.

DDR Holdings, LLC v., Case No. 2013-1505 (December 5, 2014) (precedential) (2-1), Patent Nos. 6,993,572 and 7,818,399

Key point:

  • Claims that are directed to abstract ideas but include specific interactions with the Internet to yield a desired result that is “not merely the routine or conventional use of the Internet” may be patent eligible under § 101 and Alice.

Tyco Healthcare Group LP v. Ethicon Endo-Surgery, Inc., Case Nos. 2013-1324, -1381 (December 4, 2014) (precedential) (3-0), Patent Nos. 6,682,544, 6,063,050, and 6,468,286.

Key points:

  • Section 102(g) requires prior reduction to practice or prior conception with diligent reduction to practice.
  • An invention that qualifies as prior art under §102(g) for anticipation is also prior art for a § 103 obviousness analysis.

Ericsson, Inc. v. D-Link Systems, Inc., Case Nos. 2013-1625, -1631, -1632, -1633 (December 4, 2014) (precedential) (2-1), Patent Nos. 6,424,625, 6,466,568, and 6,772,215

Key points:

  • Apparatus claims that recite functional capability may be infringed if the accused products are “reasonable capable” of performing the function without modification.
  • A supplier may be liable for inducing infringement if it is aware of an SEP and it sells devices that practice the standard.
  • Some of the Georgia-Pacific factors may be irrelevant and misleading in considering RAND damages.

Tristrata, Inc. v. Microsoft Corp., Case No. 2014-1168 (December 4, 2014) (nonprecedential) (3-0), Patent Nos. 7,257,706 and 7,743,249.

Key point:

  • Language in the Summary of the Invention portion of the specification can indicate a limiting definition for claim terms.

Par Pharmaceutical, Inc. v. TWi Pharmaceuticals, Inc., Case No. 2014-1391 (December 3, 2014) (precedential) (3-0), Patent No. 7,101,576

Key point: 

  • A limitation is inherently disclosed in an obviousness analysis only if it is a natural and necessary result of the combination of the prior art references.

Metso Minerals Inc. v. Terex Corp., Case No. 2014-1352 (December 3, 2014) (nonprecedential) (3-0), Patent No. 5,577,618.

Key point:

  • A party whose favorable judgment is reversed on appeal may be liable for the costs of the other party’s supersedeas bond.

Related Team:

Aaron Perkins