September 5, 2022

Federal Circuit Summary for Week Ending September 2, 2022

Best Medical International, Inc., v. Elekta Inc., No. 2021-2099, 2021-2100 (Issued: August 26, 2022, Modified: August 29, 2022); (precedential) (3-0);Patent No. 6,393,096

Key point(s):

  • The Board has jurisdiction in an IPR to consider a claim’s patentability even after the patent owner “cancels” the claim in a concurrent ex parte reexamination when the patent owner did not finally cancel or statutorily disclaim the claim nor did the Board did not err when it found that a POSITA would have possessed “formal computer programming experience,” something the patent owner’s expert lacked.

Nike Inc. v. Adidas AG, No. 2021-1903 (September 1, 2022) (nonprecedential); Patent No. 7,347,011

Key point(s):

  • The Board is not improperly shifting the burden of proof if it simply disagrees with the evidence and argument advanced.
  • While a mere invocation of “common sense” without more would be problematic, the Federal Circuit has held, consistent with KSR, that common sense can be used to support a motivation to combine, including motivations to reduce waste and increase efficiency.

INVT Spe LLC, v. International Trade Commission, No. 2020-1903 (August 31, 2022) (precedential) (3-0); Patent Nos. 6,760,590 and 7,848,439

Key point(s):

  • For infringement of a computer-implemented claim to a functional capability, there must be evidence that the accused computer-implemented device, when unmodified and put into operation, will perform the particular recited functions at least once.

Related Team:

Aaron Leiter