United States: Federal Circuit Patent Updates - June 2014

June 9, 2014 3:10 PM

Lourie, J. Affirming in part and vacating in part rejections and confirmations of claims in inter partes reexamination. "We do not hold that the Board should always apply references that are before it affecting some claims to every other claim on appeal, but we do find that in this instance, in which nearly identical claims were found both valid and invalid due to similar combinations of prior art resulting in a Board opinion that was seemingly inconsistent, the Board erred by not considering the combination of Sainio and Ross as a new ground for rejection of claims 1–60."

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June 6, 2014 11:40 AM

Rader, J. Affirming dismissal of infringement suit for lack of standing becase a co-owner of the patent would not and could not be joined as a co-plaintiff. "[T]his court holds that the right of a patent co-owner to impede an infringement suit brought by another co-owner is a substantive right that trumps the procedural rule for involuntary joinder under Rule 19(a)." Newman, J., dissents.

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June 5, 2014 6:10 PM

Wallach, J. Affirming Rule 11 sanctions against plaintiff's counsel for bringing a frivolous patent infringement suit. "The district court properly determined that "claim construction is a function of the words of the claim not the 'purpose' of the invention," and that Source's construction "violates nearly every tenet of claim construction and amounts to a wholesale judicial rewriting of the claim." And the infringement claim "lacked evidentiary support no matter how the claim was construed."

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June 4, 2014 2:15 PM

Rader, J. Dismissing appeal from an unsuccessful reexamination (of claims generally directed to human embryonic stem cell cultures) because the appellant "has not established an injury in fact sufficient to confer Article III standing," "Consumer Watchdog does not identify any alleged injury aside from the Board denying Consumer Watchdog the particular outcome it desired in the reexamination, i.e., canceling the claims of the '913 patent." "While Consumer Watchdog is sharply opposed to the Board's decision and the existence of the '913 patent, that is not enough to make this dispute justiciable." 

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June 4, 2014 3:45 PM

Reyna, J. Reversing Board determination of anticipation in an inter partes reexamination. "Claims are generally given their "broadest reasonable interpretation" consistent with the specification during reexamination. ... If, as is the case here, a reexamination involves claims of an expired patent, a patentee is unable to make claim amendments and the PTO applies the claim construction principles outlined by this court in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)."

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June 4, 2014 10:10 AM

Dyk, J. Transferring appeal to the Eleventh Circuit because of lack of jurisdiction. "Here, the Eleventh Circuit has transferred this case to us, and accordingly, the Eleventh Circuit's decision should normally be the law of the case. ...We conclude, however, that there is no "plausible" basis for this court's jurisdiction." "We have repeatedly held that an amendment to the complaint that dismisses the patent law claims without prejudice, as here, deprives this court of jurisdiction over the case." "A claim of ownership does not necessarily require consideration of patent law inventorship."

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June 2, 2014 3:15 PM

Ginsburg, J. Vacating judgment that patent claims were not invalid for indefiniteness. '[W]e hold that a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention." The Federal Circuit's test that "a patent claim passes the §112, ¶2 threshold so long as the claim is "amenable to construction," and the claim, as construed, is not "insolubly ambiguous," "does not satisfy the statute's definiteness requirement."

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June 2, 2014 12:50 PM

Alito, J. Reversing judgment of inducement of infringement where no one person had committed direct infringement. "[T]he Federal Circuit erred in holding that a defendant may be held liable for inducing patent infringement under 35 U. S. C. §271(b) even though no one has committed direct infringement under §271(a)." "Muniauction (which ... we assume to be correct) instructs that a method patent is not directly infringed—and the patentee's interest is thus not violated—unless a single actor can be held responsible for the performance of all steps of the patent. Because Limelight did not under¬take all steps of the '703 patent and cannot otherwise be held responsible for all those steps, respondents' rights have not been violated."

WilmerHale represented the respondents.

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