February 25, 2014

Federal Circuit Decisions for Week Ending February 14, 2014

Tempo Lighting, Inc. v. Tivoli, LLC, No. 13-1140 (February 10, 2014) (precedential) (3-0), U.S. Patent No. 6,554,446

Key points:

  • In proceedings before the PTO, the regular canons of claim construction (e.g., using intrinsic evidence before extrinsic evidence) apply.
  • Where the Board’s claim construction differs substantially from the reversed claim construction used by the examiner, it is improper for the Board to affirm or reject claims based on the factual findings resting on the reversed claim construction.
  • Absent any clear conduct to waive alternative arguments, a requester’s defense of the examiner’s final decision does not waive the requester’s rights to also advance arguments under other claim constructions.

Solvay S.A. v. Honeywell International Inc., No. 12-1660 (February 12, 2014) (precedential) (2-1) Patent No. 6,730,817

Key points:

  • Arguing a new claim construction for the first time on appeal constitutes a waiver of the position.
  • Where inventors authorize another to reduce the inventor’s invention to practice, the doctrine of inurement applies. An invention conceived overseas and reduced to practice by others at the authorization of the overseas inventors constitutes making an invention in the United States.

Related Team:

Michael Lew