April 8, 2013

Federal Circuit Decisions for Week Ending March 29, 2013

Rubin v. General Hospital Corporation, No. 2011-1439 (March 28, 2013) (nonprecedential) (3-0) Patent Nos. 7,388,093 and 7,407,756

Key points:

  • Joint inventorship under 35 U.S.C. §116 requires some showing of collaboration or working under a common direction.
  • 35 U.S.C. §256 allows correction of inventorship but not replacement of all inventors.

Power Integrations, Inc. v. Fairchild Semiconductor, No. 2011-1218, 1238 (March 26, 2013) (precedential) (3-0) Patent Nos. 6,249,876, 6,107,851, 6,229,366 and 4,811,075

Key points:

  • A claim construction inquiry starts with the intrinsic record, including the specification, and not with a dictionary definition of the disputed term.
  • When a claim recites functional language, but it does not use “means plus function” language, the proper inquiry is whether the claim limitation, when read in light of the specification, connotes definite structure for performing the identified functions.
  • A price erosion analysis relating to damages arising from post-notice infringement must measure price changes against infringement-free market conditions, and thus the proper starting point of such a price erosion analysis is the date of first infringement.

In re Owens, No. 2012-1261 (March 26, 2013) (precedential) (3-0) App. No. 29/253,172

Key point:

  • In a design patent, the test for sufficiency of the written description is whether the disclosure (i.e., the drawings) of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.

Dawson v. Dawson and Bowman, Nos. 2012-1214, 1215, 1216, 1217 (March 25, 2013) (precedential) (2-1) Patent Nos. 6,239,113 and 6,569,443

Key point:

  • A preliminary statement about a “possibility” or “potential use,” alongside a recommendation for continued work and a “report back” in the future, falls short of a “definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.”

Checkpoint Systems, Inc., v All-Tag, No. 2012-1085 (March 25, 2013) (precedential) (3-0) Patent No. 4,876,555

Key point:

  • A party may rely on an admission of an accused infringer that the accused product was made according to the accused infringer’s patent as conclusively established unless the admission is recanted.

Related Team:

Marcus Hammack