April 4, 2013

Federal Circuit Decisions for Week Ending February 15, 2013

Semiconductor Energy Lab. Co., Ltd. v. Nagata, No. 2012-1245 (Feb. 11, 2013) (precedential) (3-0) Patent No. 6,900,463

Key points:

  • An assignor-inventor may cooperate as a fact witness with the defendant in an infringement action covering assigned patent(s) without implicating the doctrine of assignor estoppel.
  • Assignor estoppel does not create an independent cause of action under U.S. patent law.

Function Media, LLC v. Google Inc., No. 2012-1020 (Feb. 13, 2013) (precedential) (3-0) Patent Nos. 6,445,045; 7,240,025 and 7,249,059

Key points:

  • To avoid being indefinite, a “means-plus-function” claim involving software requires an algorithm disclosed in the specification for achieving the recited function.
  • Disclosed structure for a means-plus-function limitation must be more than a mere abstraction; missing structure cannot be supplied by the knowledge of one skilled in the art.

In re Jasinski, No. 2012-1482 (Feb. 15, 2013) (non-precedential) (3-0) Patent App. No. 10/908,508

Key point:

  • Claim preamble language can be limiting when the recited language refers to the “essence of the invention.”

In re Cyclobenzeaprine Hydrochloride Extended-Release Capsule Patent Litigation, No. 2012-1280 (Feb. 1, 2013) (non-precedential) (3-0) Patent Nos. 7,387,793 and 7,544,372

Key point:

  • A non-party to a suit can still be enjoined if in privity or in active concert with a party to the suit.

Cephalon, Inc. v. Watson Pharmaceuticals, Inc., No. 2011-1325 (Feb. 14, 2013) (precedential) (3-0) Patent Nos. 6,200,604 and 6,974,590

Key points:

  • Lack of enablement must be established by clear and convincing evidence. There is no formal burden-shifting framework on the question of enablement, and the alleging party alone has the burden.
  • Experimentation necessary to implement a disclosed invention may be extensive without being undue if the experiments involve repetition of known or commonly used techniques.

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