June 16, 2023

Federal Circuit Summary for Week Ending June 16, 2023

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Parus Holdings, Inc. v. Google LLC,
Nos. 2022-1269 & 2022-1270; (June 12, 2023) (precedential) (3-0); Patent Nos. 7,076,431; 6,952,450; and 9,453,084

Key point(s):

  • A patent owner that chooses to show invention prior to date of filing bears the responsibilities that come with that showing, including submitting a response compliant with USPTO rules and regulations
  • A patent owner that attempts to antedate a prior art reference cannot meet its burden of production by “throwing mountains of evidence” without explanation.
  • Section 311(b) only dictates the grounds on which an IPR petition may be based, not the issues that may be considered by the Board. 

In re Couvaras, No. 2022-1489 (June 14, 2023) (precedential) (3-0); Patent App. No. 15/131,442

Key point(s):

  • It is prima facie obvious to combine two compositions taught by the prior art to be useful for the same purpose to form a third composition used for the same purpose.
  • Reciting the mechanism for known compounds to yield a known result cannot overcome a prima facie case of obviousness, even if the nature of that mechanism is unexpected.
  • To establish unexpected results indicium to overcome obviousness, an unexpected benefit needs to be shown.

In re Universal Electronics, Inc., No. 2022-1757 (June 14, 2023) (nonprecedential); Patent App. No. 14/282,785

Key point(s):

  • An argument not made to the Board is forfeited during a subsequent appeal to the Federal Circuit.

Optolum, Inc. v. Cree, Inc., No. 2022-1511 (June 12, 2023) (nonprecedential); Patent Nos. 6,154,844; 6,804,780; 8,079,086; and 9,189,621

Key point(s):

  • Prosecution history disclaimer and estoppel are questions of law.

Related Team:

Jesus Cano