April 5, 2013

Federal Circuit Decisions for Week Ending December 7, 2012

Raylon, LLC v. Complus Data Innovations, Inc., Nos. 2011-1355, -1356, -1357, -1358, -1359 (December 7, 2012) (precedential) (3-0) Patent No. 6,655,589

Key point:

  • The law of the regional circuit applies when determining Rule 11 violations.

Pregis Corporation v. Kappos, Nos. 2010-1942, -1532 (December 6, 2012) (precedential) (3-0) Patent Nos. 7,325,377, 7,526,904, 7,536,837, and 7,361,397

Key points:

  • The mere fact that the prior art teaches a preferred embodiment does not constitute a teaching away from other reasonable uses.
  • A potential infringer cannot sue the PTO under the APA to attack the validity of a patent because the Patent Act (1) precludes judicial review based on its intricate scheme and (2) provides multiple adequate remedies to third party challengers; (1) and (2) are exceptions to filing suit under the APA.

Cummins, Inc. v. TAS Distributing Company, Inc., No. 2010-1134 (December 5, 2012) (precedential) (3-0) Patent No. 5,072,703, and 5,222,469

Key points:

  • The law of the regional circuit applies when general principles of res judicata are at issue.
  • The res judicata effect of a prior judgment of a federal court sitting in federal diversity is determined by the law of the state in which the court sits.
  • A suit for breach of a patent licensing agreement could trigger a compulsory counterclaim for patent invalidity, and failure to do so bars the defense later.

Deere & Company v. Bush Hog, LLC, Nos. 2011-1629, -1630, -1631 (December 4, 2012) (precedential) Patent No. 6,052,980

Key points:

  • The doctrine of claim vitiation is not an exception to the doctrine of equivalents, but rather a legal determination that the evidence is such that no reasonable jury could determine two elements to be equivalent.
  • Whether to treat a preamble as a limitation is determined on the facts of each case in light of the overall form of the claim and the invention as described in the specification and illuminated in the prosecution history.
  • Relative terms such as “substantially” do not render patent claims so unclear as to prevent a person of ordinary skill in the art from ascertaining the scope of the claim.

Related Team:

Jessie D. Herrera, Jr.