Federal Circuit Summary for Week Ending October 20, 2023
ABS Global. Inc., Genus PLC v. Cytonome/ST, LLC, No. 2022-1761 (October 19, 2023) (precedential) (3-0); Patent No. 10,583,439 (“the ’439 patent”)
Key point(s):
- At least in an open-ended ‘comprising’ claim, the use of ‘a’ or ‘an’ before a noun naming an object requires that the phrase be construed to mean ‘one or more’ unless the context sufficiently indicates otherwise.
- If the specification states that “for the purposes of the present disclosure, the term ‘a’ or ‘an’ entity refers to one or more of that entity,” then the terms ‘a’ or ‘an’, ‘one or more’ and ‘at least one’ can be used interchangeably herein.
- Where the specification instructs as to the meaning of a claim term, ‘the inventor’s lexicography governs.’
Corephotonics, Ltd., v. Apple Inc., No. 2022-1340, 2022-1341, 2022-1455, 2022 (October 16, 2023) (precedential) (3-0); Patent Nos. 9,661,233, 10,230,898, 10,326,942, 10,356,332 (“Challenged Patents”)
Key point(s):
- In establishing obviousness, it may be clear from the IPR petition’s description of the references and the challenged claims that prior art is in the same field of endeavor as the challenged patent, or the pertinence of the prior art to the problem solved by the invention may be implicit in the petition’s discussion of the challenged claims and why a person of ordinary skill would be motivated to combine the prior art reference with a reasonable expectation of success.
- An IPR petitioner is not required to anticipate and raise analogous art arguments in its petition; instead, a petitioner can use its reply to respond to, for example, arguments raised in a patent owner response.
Cyntec Company, Ltd., v. Chilisin Electronics Corp., No. 2022-1873_ (October 16, 2023) (precedential) (3-0); Patent Nos. 8,922,312, and 9,481,037.
Key point(s):
- Courts abuse their discretion when they admit the testimony that is both unreliable and speculative (e.g., unreliable and speculative calculations provided by an expert).
- It is better to send the issue to the jury first, and then rule on the JMOL. Because JMOL requires that the court views the evidence in the light most favorable to the nonmoving party and draws all reasonable inferences in that party’s favor, the district court erred in granting JMOL and not giving the issue of invalidity to the jury. If there are factual disputes that should have been given to the jury, then JMOL should not be granted.
Dali Wireless Inc., v. Commscope Technologies LLC, Commscope Holding Company, Inc., No. 2022-1699 (October 18, 2023) (nonprecedential); Patent No. 8,682,338
Key point:
- The claim term “translating … as appropriate” is not a conditional term and requires translation each time the method is performed.
Great Concepts, LLC, v. Chutter, Inc., No. 2022-1212 (October 18, 2023) (precedential) (2-1); Trademark “DANTANNA’S” Registration No. 2929764 (’764 Registration)
Key point:
- Section 14 of the Lanham Act, 15 U.S.C. § 1064, does not permit the TTAB to cancel a trademark’s registration due to the owner filing a fraudulent Section 15 declaration to acquire incontestability status for its already-registered mark, although fraudulent declaration may affect the registration’s incontestable status.
Monterey Research, LLC v. STMicroelectronics, Inc, Nos. 2022-1435, 2022-1771 (October 16, 2023) (nonprecedential); Patent No. 6,651,134
Key point:
- Obviousness is a mixed question of fact and law and is subject de novo review while factual findings are reviewed for substantial evidence.
WSOU Investments LLC v. Google LLC., No. 2022-1063 (October 19, 2023) (nonprecedential); Patent Nos. 8,965,045 and 9,335,825
Key point:
- A claim limitation when combined with an adequate description of what code is intended to accomplish does not invoke § 112 ¶ 6.
Cosmic Crusaders LLC v. Andrusiek, No. _2023-1150 (October 19, 2023) (nonprecedential), Reg Nos. 4,782,920
Key point:
- Public association of a word or phrase may be inferred by the fact finder on the basis of indirect evidence regarding the opposer’s use of the word or phrase in advertising.
VirnetX Inc., v. Vidal, No. 2022-1523 (October 20, 2023) (nonprecedential); Patent No. 7,418,504
Key point:
- The Federal Circuit will not vacate a decision from the Board absent a reason why the unreviewed Board decision would require the discretionary remedy of vacatur.
Ottah v. Verifone System Inc., No. 2023-1219 (October 18, 2023) (nonprecedential); Patent No. 7,152,840
Key point(s):
- Causes of action are the same for claim preclusion if the accused products are “essentially the same” and “the same patents are involved in both suits”.
- New arguments or infringement theories do not provide a meritorious basis to avoid the application of claim preclusion.
VirnetX Inc., v. Cisco Systems, Inc., No. 2022-2234 (October 20, 2023) (nonprecedential); Patent No. 7,418,504
Key point:
- Passages of a reference relied on by the patent holder do not “outweigh or limit the express disclosure” of the reference.
VirnetX Inc., v. Apple Inc., No. 2022-1523 (October 20, 2023) (nonprecedential); Patent No. 6,502,135
Key point(s):
- When a reference incorporates another document, the two references must be treated as one for anticipation purposes.
- Neither the PTO regulations, nor the APA, required the Commissioner or the Board to provide an explanation for a decision to deny rehearing.