June 9, 2023

Federal Circuit Summary for Week Ending June 9, 2023


Medtronic, Inc. v. Teleflex Innovations S.A.R.L., No. 2021-2357, 2021-2360, 2021-2364 (June 5, 2023) (precedential) (3-0); Patent No. 8,048,032; RE45,380; RE45,776

Key point(s):
  • A party having access to a competitor’s product and then making a substantially similar product infers copying;
  • Strong objective evidence including copying, industry praise, and significant commercial success can outweigh prima facie arguments of obviousness.
Medtronic, Inc. v. Teleflex Innovations S.A.R.L., No. 2021-2359, 2021-2362, 2021-2366 (June 5, 2023) (precedential) (3-0); Patent Nos. RE45,380; RE45,760; RE47,379
Key point(s):
  • Modifying the device of a prior art reference in a manner that would undermine a purpose it shares with the challenged claims counsels against a motivation to make such modifications.
Yita, LLC v. MacNeil IP., LLC., Nos. 2022-1373, 2022-1374; (June 6, 2023) (precedential) (3-0); Patent Nos. 8,382,186; and 8,833,834
Key point(s):
  • Objective evidence of non-obviousness exclusively relating to features known in the art may be insufficient to overcome a finding of obviousness even if those features are not necessarily well-known.
  • The PTAB may decline to consider an argument presented in a reply that was not previously disclosed in the petition.
Blackhawk Network, Inc. v. Interactive Communications Int’l, Inc., No. 2022-1650 (June 7, 2023) (nonprecedential); Patent No. 10,769,894
Key point(s):
  • The construing of a prior art teaching from the perspective of a POSITA can result in a logical inference even if such a conclusion is not explicitly disclosed.
In re Starrett, Jr., No. 2022-2209 (June 8, 2023) (nonprecedential) Patent Application No. 15/299,124
Key point(s):
  • The specification must enable the full scope of the invention defined in the claims.
  • When an appellant argues claim rejections as a group, the board can select a single claim to review as representative.
LBT IP LLC v. Apple Inc., No. 2022-1613, 2022-1614, 2022-1615, 2022-1616, 2022-1617 (June 9, 2023) (nonprecedential) (3-0); Patent Nos. 8,497,774; 8,542,113; 8,102,256; 8,421,618; 8,421,619
Key point(s):
  • An obviousness analysis relying on inherency in the prior art to establish the existence of a claim limitation requires a showing that the limitation is “necessarily present” or “the natural result of the combination of elements explicitly disclosed by the prior art.”
Ubiquitous Connectivity, LP v. TXU Energy Retail Company LLC, No. 2023-1349 (June 9, 2023) (nonprecedential); Patent Nos. 8,064,935; 9,602,655; 10,344,999
Key point(s):
  • Dismissal of an action for failure to prosecute will not prevent a substituted plaintiff from being considered a “party” for appellate purposes.
Blue Gentian, LLC v. Tristar Products, Inc., No. 2021-2316, 2021-2317 ( (June 9, 2023) (precedential) (3-0); Patent Nos. 8,291,941; 8,291,942; 8,479,776; 8,757,213; D722,681; D724,186
Key point(s):
  • The same standards govern inventorship challenges for utility patents and design patents.
  • While the named inventors are presumed correct, a district court may order correction of inventorship when it determines that an inventor has been erroneously omitted from a patent, but an alleged joint inventor’s testimony standing alone is insufficient and needs corroboration.
  • Corroborating evidence of inventorship may take many forms, including contemporaneous documents, physical evidence, circumstantial evidence, and oral testimony of someone other than the alleged inventor.

Related Team:

Simon J Harrall


W. Bruce Patterson

Partner, Practice Head