July 1, 2022

Federal Circuit Summaries For Week Ending May 20, 2022

Google LLC, v. IPA Technologies Inc., No. 2021-1179, (May 19, 2022) (precedential) (3-0); U.S. Patent Nos. 6,851,115 (’115) and 7,069,560 (’560)

Key point(s):

  • A complete Duncan Analysis is required to determine a joint Inventor under 35 U.S.C. § 116(a).
  • Fundamental testimonial conflicts must be resolved by the Board before they can be relied-upon to determine prior art.

Ethicon LLC v. Intuitive Surgical, Inc., No. 21-1601 (May 19, 2022) (nonprecedential); U.S. Patent No. 8,602,287 (‘287)

Key point(s):

  • Arguments during an appeal of a PTAB ruling must be made previously to the Board or are waived.
  • Analogous art is art addressing the same problem, even if not in the same field.

Kaufman, v. Microsoft Corporation, No. 2021-1634 (May 20, 2022) (precedential) (3-0); U.S. Patent No. 7,885,981 (‘981)

Key point(s):

  • To preserve a claim construction issue for appeal, it must be presented to the district court and in timely fashion.

Acquis, LLC, V. EMC Corporation, No. 2021-1772 (May 18, 2022) (nonprecedential); U.S. Patent Nos. 7,363,416 (‘416); 7,818,487; 8,041,873; RE41,294; RE42,814; RE43,119; RE43,171; and RE44,468

Key point(s):

  • The court is entitled to render its own independent claim construction from those made in a prior case.

Emerson Electric Co., V. Sipco, LLC, No. 2021-1881 (May 17, 2022) (nonprecedential); U.S. Patent No. 7,697,492 (‘492)

Key point(s):

  • A negative claim limitation must have affirmative support in the claim language and/or the written description.

Mitek Sys., Inc. V. United Servs. Auto. Assoc., No. 21-1989 (May 20, 2022) (precedential) (3-0); U.S. Patent Nos. 8,699,779; 9,336,517; 8,977,571; and 9,818,090

Key points:

  • Jurisdiction may exist in a declaratory-judgment suit where another case implicates the declaratory-judgment plaintiff’s software and customers of that software.
  • Discretionary dismissal of a declaratory-judgment action is improper when the reasons for discretionary dismissal are insufficient to support dismissal on other grounds.

Related Team:

Brian Taboada