April 21, 2023

Federal Circuit Summary for Week Ending April 21, 2023

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DivX, LLC v. Netflix, Inc., No 2022-1481 (April 18, 2023) (nonprecedential); Patent No. 7,295,673

Key point(s):

  • The PTAB must have substantial evidence to support a finding that an issued patent is unpatentable.

CIOFFI v. Google LLC, No. 2018-1049 (April 18, 2023) (nonprecedential); Patent Nos. RE43,500; RE43,528; RE43,529; and 7,484,247

Key point(s):

  • Reissue claims need to have an express disclosure of the embodiment sought in the original application to claim that embodiment during a Reissue.
  • Merely being able to infer an embodiment of the invention from the original application is not a sufficient level of disclosure to be able to claim that embodiment in a Reissue.

Amgen Inc. v. Sandoz Inc., No. 2022-1147 (April 19, 2023) (precedential) (3-0); Patent Nos. 7,427,638; 7,893,101; and 10,092,541

Key point(s):

  • A statement in a specification can be ignored if expert testimony from both parties supports a contrary meaning.

FS.Com Inc. v. ITC, No. 2022-1228 (April 20, 2023) (precedential) (3-0); _PatentNos. 9,020,320; 10,444,456; 10,120,153; and 8,712,206.

Key point(s):

  • Open-ended claims are not per se improper; as for all claims their appropriateness depends on the particular facts of the invention, the disclosure, and the prior art. They may be supported if there is an inherent, albeit not precisely known, upper limit and the specification enables one of skill in the art to approach that limit.

Related Team:

Chance Siller