August 25, 2023

Federal Circuit summaries for Week ending August 25, 2023

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Ficep Corp. v. Peddinghaus Corp.,
No. 2022-1590 (August 21, 2023) (nonprecedential); Patent No. 7,974,719

Key point(s):

  • Automating a previously manual process is not sufficient for patent eligibility.
  • A specific, discrete implementation of an abstract idea needed to be claimed.

Sun Pharm. Indus., Inc. v. Incyte Corp., No. 2019-2011 (August 22, 2023) (nonprecedential); Patent No. _9,249,149.

Key point(s):

  • For a new compound, the two-step test for determining obviousness is (1) whether a chemist of ordinary skill would have selected the lead compounds as a starting point, and (2) whether the combination of references provides a chemist of ordinary skill with motivation to modify the lead compound

In re Universal Electronics, Inc., No. 2022-1758 (August 24, 2023) (nonprecedential); Patent Application No. 15/711,381

Key point(s):

  • Failing to specifically identify the alleged error in an Examiner’s rejection forfeits at the PTAB any such future arguments.

Volvo Penta of the Ams., LLC v. Brunswick Corp., No. 2022-1765 (August 24, 2023) (precedential) (3-0); Patent No. 9,630,692

Key point(s):

  • The proof to obtain the presumption of a nexus for using objective evidence of secondary consideration of a commercial embodiment includes that the commercial embodiment is coextensive with the claims. The commercial embodiment should not have other elements that are claimed elsewhere that drive, for example, the commercial success or the recognition in the industry for the patent at issue for objective evidence.
  • The objective evidence of nonobviousness is cumulative in nature. Each aspect of secondary consideration is evaluated to meet the substantial evidence standard and then given evidentiary weight. The total evidentiary weight of nonobviousness is also measured by the substantial evidence standard.

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