September 22, 2023

Federal Circuit summaries for Week Ending September 22, 2023

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Baxalta Incorporated v. Genentech, Inc., No. 2022-1461 (September 20, 2023) (precedential) (3-0); Patent No. 7,033,590
Key point(s):
  • Trial-and-error discovery to enable a functional genus constitutes unreasonable experimentation under Amgen.
  • Amgen leaves prior enablement case law undisturbed, including Wands and its factors.
Target Corporation v. Proxicom Wireless, LLC, No. 2022-1282 (September 20, 2023) (nonprecedential); Patent Nos. 8,090,359 and 8,374,592
Key point(s):
  • Claim limitations should not be interpreted to include unwritten requirements, particularly where similar limitations in other claims are not so interpreted.
  • A claim limitation may be satisfied if the prior art discloses the limitation at least some of the time.
Well Cell Global LLC v. Calvit, No. 2023-1229 (September 21, 2023) (nonprecedential); Patent No. 10,533,990
Key point(s):
For a preliminary injunction:
  • Irreparable harm generally requires more than speculation about future events.
  • Likelihood of success in proving patent infringement or trade secret misappropriation generally requires identification of a patent claim or trade secret, respectively.
Elekta Limited v. ZAP Surgical Systems, Inc., No. 2021-1985 (September 21, 2023) (precedential) (3-0); Patent No. 7,295,648
Key point(s):
  • Silence during prosecution regarding the technological relevance of cited art may support a later finding of a motivation to combine other art from the same field.
  • Reasonable expectation of success may be addressed by the Board implicitly with motivation for combine, particularly where the evidence and arguments are intertwined.
Caddo Systems, Inc. v. Siemens AG, No. 2022-1623 (September 22, 2023) (nonprecedential); Patent Nos. 7,191,411, 7,216,301, 7,640,517, 7,725,836, 8,352,880, and 10,037,127
Key point(s):
  • License and covenant-not-to-sue provisions that broadly cover combinations with other products may reach an expansive class of third parties.

Related Team:

David Lovell

Of Counsel