October 3, 2013

Federal Circuit Decisions for Week Ending September 27, 2013

Rambus, Inc. v. Rea (September 24, 2013) (Precedential) (3-0) Appeal 2012-1634, Application No. 95/001,134

Key point:

  • When the Board supplies its own reasons to combine references to affirm an obviousness rejection in lieu of an examiner’s erroneous reason to combine the same references, it is a new ground of rejection.

Network Signatures, Inc. v. State Farm Mut. Auto. Ins. Co. (September 24, 2013) (Precedential) (2-1) Appeal 2012-1492, Patent 5,511,122

Key point:

  • When a patent owner fails to pay a maintenance fee and then successfully revives the patent after a subsequent inquiry about licensing the patent, the patent owner does not commit inequitable conduct merely by failing to supply detailed evidence supporting the standard statement, included on the PTO revival petition form, that the abandonment was unintentional.

Sunovion Pharm., Inc. v. Teva Pharm. USA, Inc. (September 26, 2013) (Precedential) (3-0) Appeal 2013-1335, Patent 6,444,673

Key points:

  • In a patent claim, “essentially free” means “less than 0.25%”, where the patent applicant, in obtaining the patent, distinguished a reference by arguing in a declaration that an exemplary embodiment contained “lower than 0.25%” of a relevant component.
  • An ANDA request to market a generic drug within the scope of a valid patent claim is an infringement, regardless of whether approval has been obtained for such marketing, and regardless of any internal procedures to avoid infringement of the claim.

Meadwestvaco, Corp. v. Rexam Beauty and Closures, Inc. (September 26, 2013) (Precedential) (3-0) Appeals 2012-1518-1527, Patents 7,718,132 and 7,722,819

Key points:

  • Grant of a summary judgment motion is improper where material issues of fact are resolved in favor of the moving party.
  • Appeal of an issue subject only to denial of a summary judgment motion at the district court is improper.

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