Proveris Scientific Corporation v. Innovasystems, Inc., No. 2013-1166 (1/13/2014) (precedential) (3-0) Patent No. 6,785,400

Key point:

• Admitted infringement of a previous device cannot form the basis of a decision to refuse claim construction in a subsequent infringement case for a newly modified device.

In re Raymond Giannelli, Appeal No. 2013-1167 (1/13/2014) (precedential) (3-0) Patent App. No. 10/378,261

Key points:

• Physical capability alone does not render obvious that which is contraindicated.
• An examiner should determine whether it would have been obvious to modify the prior art apparatus to arrive at the claimed invention.

In re Enhanced Security Research, LLC, Appeal No. 2013-1114 (1/13/2014) (precedential) (2-1) Patent No. 6,119,236

Key points:

• 37 C.F.R § 41.37, the rule governing the briefing requirements in ex parte appeals, requires “applicants to articulate more substantive arguments if they wish for individual claims to be treated separately.”
• A non-complete prior art reference may be acceptable since the MPEP only requires the submission of the “pertinent parts” of a non-English translation.

Hemphill v. Johnson & Johnson, Appeal No. 2013-1503 (1/14/2014) (precedential) (3-0) Patent No. 4,557,720

Key points:

• A reexamination certificate does not alter the term of a patent.
• 35 U.S.C. § 286 precludes recovery for any act of infringement committed more than six years prior to the filing of the complaint.

Novartis v. Michelle K. Lee, Appeal No. 2013-1160 (1/15/2014) (precedential) (3-0)

Key points:

• Under 35 § 154(b)(1)(B), the patent term adjustment is calculated by determining the time between application filing date and patent issuance, subtracting any continued examination time, and determining the extent to which the result exceeds three years.
• 35 U.S.C. § 154(b)(3) governs all patent term adjustment determinations.

Superior Industries, Inc. v. Masaba, Appeal No. 2013-1302 (1/16/2014) (non-precedential) (3-0) Patent Nos. 7,470,101, 7,618,213, 7,424,943, 7,607,529, and 7,845,482

Key point:

• An appealed claim construction is remanded for further clarification if the district court fails to provide adequate explanation for the construction or resulting grant of summary judgment of noninfringement.