July 14, 2014

Federal Circuit Decisions for Week Ending July 4, 2014

AbbVie Deutschland GMBH & Co. v. Janssen Biotech, Inc., Nos. 2013-1338, -1346 (July 1, 2014) (precedential, 3-0) Patents Nos. 6,914,128 and 7,504,485

Key points:

  • The Board’s judgment in an interference proceeding is not a final judgment for purposes of collateral estoppel if further proceedings are conducted at a district court under § 146.
  • When a patent claims a genus using functional language to define a desired result, the specification must disclose either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can visualize or recognize the members of the genus.

Southern Snow Manufacturing v. SnoWizard Holdings, Nos. 2013-1586, 2014-1043 (June 30, 2014) (non-precedential) Patent No. 7,536,871.

Key points:

  • An actual sale is not required to trigger the on-sale bar.
  • A description of the invention sufficiently specific to enable a person skilled in the art to practice the invention triggers the “ready for patenting” prong of the on-sale bar.

MadStad Engineering, Inc. v. USPTO, Nos. 2013-1511, -1512 (July 1, 2014) (precedential, 3-0)

Key point:

  • To challenge the “first-inventor-to-file” and other provisions of the AIA, a party must demonstrate a concrete, particularized, and actual or imminent injury that is traceable to the AIA, and not just actions taken to prevent a hypothetical third party from filing an application for an invention first.

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