March 25, 2014

Federal Circuit Decisions for Week Ending March 14, 2014

Danisco U.S., Inc. v. Novozymes A/S, No. 2013-1214 (March 11, 2014) (precedential) (3-0), Patent Nos. 8,084,240 and 8,252,573

Key Point:

  • A patentee’s pre-issuance conduct may be considered in determining whether a dispute is “real and substantial” to support a non-infringement declaratory judgment lawsuit.

Medtronic, Inc. v. Boston Scientific Corp., No. 2011-1313, -1372 (March 11, 2014) (3-0) (non-precedential) Patent Nos. RE38,119 and RE39,897

Key point:

  • An expert must consider each element of a claim for the expert witness’s opinion of infringement to have evidentiary foundation.

e2Interactive, Inc. v. Blackhawk Network, Inc., No. 2013-1151 (March 12, 2014) (nonprecedential) (3-0) Patent No. 7,578,439

Key point:

  • Prosecution disclaimer applies to statements in reexamination.

Therasense, Inc. v. Becton, Dickinson & Co., No. 2012-1504 (March 12, 2014) (precedential) (2-1) Patent Nos. 6,143,164, 6,592,745, and 5,820,551

Key points:

  • Where a district court’s order granting attorney’s fees expressly stated that the payment is predicated on the judgment being upheld on appeal and the judgment is later vacated, the district court does not abuse its discretion in later denying additional attorney’s fees for the appeal, rehearing, and remand for further consideration.
  • Where a party requesting fees for fees does not show that the appeal seeking fees was brought with bad faith, the district court does not abuse its discretion in denying the fees.

Bose Corp. v. SDI Techs., Inc., No. 2013-1347 (Mar. 14, 2014) (nonprecedential) (3-0) Patent No. 7,277,765

Key Points:

  • Where a specification uses different words to express different concepts, those words must be interpreted as expressing different concepts in claim construction.
  • A party must show that it exercised reasonable and good-faith adherence to the analysis and advice in an attorney’s opinion of invalidity or noninfringement to meet its burden of showing a lack of intent for induced or contributory infringement.

Vederi, LLC v. Google, Inc., No. 2013-1057, -1296 (Mar. 14, 2014) (3-0) (precedential) Patent Nos. 7,239,760, 7,577,316, 7,805,025, and 7813,596

Key point:

  • In construing claims, the district court must sufficiently consider the intrinsic evidence before considering extrinsic evidence.

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