November 15, 2013

Federal Circuit Decisions for Week Ending November 8, 2013

LifeScan Scotland, Ltd. v. Shasta Technologies, LLC (November 4, 2013) Case No. 2013-1271 (precedential) (2-1); Patent No. 7,250,105

Key points:

  • Non-infringing uses are relevant to an exhaustion inquiry only where the non-infringing uses are both reasonable and intended.
  • A product embodies the essential features of a patented method if the inventive functions of the method are performed with the product.
  • If there has been an authorized and unconditional transfer of title, the absence of consideration does not prevent the application of patent exhaustion principles.

Integrated Technology Corp. v. Rudolph Technologies, Inc. (November 4, 2013) Case Nos. 2012-1593, -1618 (precedential) (3-0); Patent No. 6,118,894

Key points:

  • The tangential relation exception to prosecution history estoppel is very narrow and focuses on the patentee’s objectively apparent reason for the narrowing amendment, which should be discernible from the prosecution history record
  • When the patentee originally claimed the subject matter alleged to infringe but then narrowed the claims, the surrendered territory cannot support the “unforeseen subject matter” exception to prosecution history estoppel

Sandofi-Aventis v. Pfizer Inc. (November 5, 2013) Case No. 2013-1345 (precedential) (3-0); Patent Nos. 6,268,480 and 5,710,023

Key point:

  • Conception does not require knowledge of the specific nucleotide sequence. Possessing and appreciating the isolated DNA suffices

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