April 5, 2013

Federal Circuit Decisions for Week Ending November 16, 2012

Edwards Lifesciences AG v. CoreValve, No. 2011-1215, -1257 (November 13, 2012) (precedential) (3-0) Patent No. 5,411,552

Key point:

  • When experimentation on human participants is inappropriate, the enablement requirement may be met by animal tests or in vitro data.

Norgren Inc. v. International Trade Commission, No. 2011-1349 (November 14, 2012) (precedential) (2-1) Patent No. 5,372,392

Key point:

  • The person having ordinary skill in the art is a theoretical construct and is not descriptive of some particular individual; a person of exceptional skill should not be disqualified for not being ordinary enough.

Pei-Herng Hor & Ruling Meng v. Ching-Wu “Paul” Chu, No. 2011-1540 (November 14, 2012) (precedential) (3-0) Patent Nos. 7,056,866 and 7,709,418

Key points:

  • The laches period for a 35 U.S.C. § 256 correction of inventorship claim begins to run when the omitted inventor knew or should have known of the issuance of the patent regardless of whether the omitted inventor knew or should have known of the omitted inventorship while the patent application was pending before the USPTO.
  • The failure to challenge inventorship before the USPTO does not bar an inventor from later contesting inventorship under 35 U.S.C. § 256.

Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc. No. 2011-1555 (November 15, 2012) (precedential) (3-0) Patent Nos. 6,047,781, 6,085,851, and 6,068,069

Key points:

  • Where the patentee has presented sufficient evidence of both commercial success and a nexus to features of the claimed invention, the jury’s fact finding that the invention was not obvious was supported by substantial evidence.
  • A contract for sale with the option to modify an alleged infringing product if patent infringement is likely will not avoid infringement.

Related Team: