November 26, 2014

Federal Circuit Decisions for Week Ending November 21, 2014

Antares Pharma, Inc. v. Medac Pharma Inc., No. 14-1648 (November 17, 2014) (precedential) (3-0), U.S. Patent No. RE44,846

Key point(s):

  • For claims in a broadening reissue to be valid, the subject matter of the claims must be explicitly disclosed in the original specification rather than merely being hinted at in the specification.

Malico, Inc. v. Cooler Master USA Inc., No. 13-1680 (November 17, 2014) (nonprecedential) (3-0), U.S. Patent No. 6,476,484

Key point(s):

  • If a patentee fails to mark a patented product, damages are only available starting from when an alleged infringer has actual notice of infringement.
  • In determining invalidity, a district court must perform a meaningful comparison between the cited references and the claim limitations.

Vehicle IP, LLC v. AT&T Mobility, LLC, No. 13-1380 (November 18, 2014) (nonprecedential) (2-1), U.S. Patent No. 5,987,377

Key point(s):

  • Where there is no disavowal of term definitions or the applicant acting as his own lexicographer, the plain and ordinary meaning of a term applies.

E.Digital Corp. v. Futurewei Techs., Inc., Nos. 14-1019, -1242, and -1243 (November 19, 2014) (precedential) (3-0), U.S. Patent Nos. 5,491,774 and 5,839,108

Key point(s):

  • Collateral estoppel applies to a reexamined claim when the reexamined claim recites the same limitations addressed in a previous case and the reexamination focuses on an unrelated limitation.
  • Collateral estoppel from a judgment with respect to one patent does not apply to another patent if the patents are not related, even if the second patent incorporates the first by reference.

Versata Software, Inc. v. Callidus Software, Inc., No. 14-1468 (November 20, 2014) (precedential) (3-0), U.S. Patent Nos. 7,904,326, 7,908,304, and 7,958,024

Key point(s):

  • Not all claims need be challenged in PTAB proceedings in order for there to be simplification of issues in question during litigation.
  • Relative timing of an expected PTAB decision versus a scheduled trial date does not alone disfavor a stay; the amount of work remaining before trial must be considered.
  • Determination of the burden of litigation is a prospective, not retrospective, examination.

Related Team:

Michael Lew