July 22, 2014

Federal Circuit Decisions for Week Ending July 11, 2014

X2Y Attenuators, LLC v. International Trade Commission (July 7, 2014) (precedential) (3-0) Patent Nos. 7,609,500; 7,916,444; and 8,023,241

Key Points:

  • The labeling of an embodiment or an element as “essential” may rise to the level of claim scope disavowal.
  • For the purposes of disavowal, incorporated patents are “effectively part of the host [patents] as if [they] were explicitly contained therein.”

Troy, Jr. v. Samson Manufacturing Corporation, No. 2013-1565 (July 11, 2014) (precedential) (3-0) Patent No. 7,216,451 and U.S. Patent Application No. 11/326,665

Key Points:

  •  In civil proceeding under 35 U.S.C. § 146, the only limitations on the right to introduce new evidence are the Federal Rules of Evidence and the Federal Rules of Civil Procedure.
  • § 145 (ex parte) and § 146 (interference) proceedings are subject to the same rules regarding admission of new evidence not before the PTO.

Retractable Technologies, Inc. v. Becton Dickinson and Company, No. 2013-1567 (July 7, 2014) (precedential) (2-0) Patent Nos. 5,623,733; 6,090,077; and 7,351,224

Key Point:

  • Unless remanded by the appellate court, all issues within the scope of the appealed judgment are deemed incorporated within the mandate and are precluded from further adjudication.

Digitech Image Tech., LLC v. Electronics For Imaging, Inc., Nos. 2013-1600 through -1618 (July 11, 2014) (precedential) (3-0) Patent No. 6,128,415

Key Point:

  • A claim to a process that manipulates information to generate additional information is directed to an abstract idea and not patent eligible, unless the claim includes additional inventive features so that the claim does not solely capture the abstract idea.

H-W Tech., L.C. v. Overstock.com, Inc., (July 11, 2014) (precedential) (2-0) Patent No. 7,525,955

Key Points:

  • The district court cannot rewrite a claim where an error, caused by the PTO, was not evident on the face of the patent.
  • Claim having an omission corrected by a certificate of correction cannot be asserted except in a civil action filed after the certificate of correction is issued
  • A method claim combining method and apparatus limitations is indefinite because the disputed language made it unclear when infringement would occur.

Anderson v. Kimberly-Clark Corp. (July 10, 2014) (nonprecedential – per curiam) Patent No. D401,328

Key Point:

  • Even in the case of a pro se litigant, pleadings are not sufficient if the allegations are merely conclusory.

Virtual Agility, Inc. v. Salesforce.com, Inc. (July 10, 2014) (precedential) (2-1), Patent No. 8,095,413

Key Points:

  • A district court cannot evaluate the merits of a PTAB decision to institute a CBMP proceeding in ruling on a motion to stay litigation pending the outcome of the PTAB proceeding.
  • The factors identified in AIA § 18(b)(2) for a district court to consider in determining deciding whether stay a lawsuit pending resolution of a CBMP proceeding must be considered separately, regardless of overlap.

Related Team: