United States: Federal Circuit Patent Updates - February 2018

February 9, 2018 3:18 PM

Moore, J. Precedential order transferring the appeal to the Fifth Circuit. Despite both parties' assertions to the contrary, the Federal Circuit did not have jurisdiction over a Walker Process monopolization claim based on alleged fraud on the PTO. "We acknowledge that a determination of the alleged misrepresentations to the PTO will almost certainly require some application of patent law. ... But consistency with the federal question jurisdiction statute requires more than mere resolution of a patent issue in a 'case within a case'. ... Something more is required to raise a substantial issue of patent law sufficient to invoke our jurisdiction under 28 U.S.C. § 1295(a)(1). ... The underlying patent issue in this case, while important to the parties and necessary for resolution of the claims, does not present a substantial issue of patent law."

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February 9, 2018 12:27 PM

O'Malley, J. Affirming in part, vacating in part, and remanding PTAB findings on obviousness in IPRs. "We have never articulated a  framework for analyzing whether claims would have been obvious that includes the phrase 'subjective preference' or that permits a tribunal to wholly disregard the significance of prior art teachings based on such a characterization. ... There are three specific problems with the  'subjective preference' analysis espoused and applied by the Board. First, by completely disregarding certain teachings as ill-defined 'subjective preferences,' the Board's approach invited the 'distortion caused by hindsight bias' into the fold.... Second, the Board focused on what a skilled artisan would have been able to do, rather than what a skilled artisan would have been motivated to do at the time of the invention. ... Third, the Board's analysis encourages the fact-finder to outright discard evidence relevant both to 'teaching away' and to whether skilled artisans would have been motivated to combine references." "[E]ven if a reference is not found to teach away, its statements regarding preferences are relevant to a finding regarding whether a skilled artisan would be motivated to combine that reference with another reference."

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February 9, 2018 10:36 AM

Stoll, J. Affirming judgment of noninfringement by an ANDA and denial of further discovery or a new trial. "[W]e have not said that the proof of infringement in the ANDA context must necessarily be based on any particular sample. ... Regardless of the type of sample (e.g., commercial or batch), the critical inquiry is whether it is representative of what is likely to be approved and marketed."

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February 8, 2018 4:08 PM

Stoll, J. Vacating rejection of claims in an application. "[W]e disagree with the Board's claim construction of 'injection molded' as a process limitation with no patentable weight." "We have held that, when considering the patentability of product claims that contain process limitations, claim scope is generally based on the product itself, not the process. ... If the process limitation connotes specific structure and may be considered a structural limitation, however, that structure should be considered."

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February 8, 2018 1:55 PM

Moore, J. Affirming summary judgment that certain claims were invalid as indefinite, but vacating summary judgment that other claims were invalid as patent ineligible under 35 U.S.C. § 101 and remanding. "The question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact. ... Whether a particular technology is well-understood, routine, and conventional goes beyond what was simply known in the prior art. The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional."

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January 29, 2018 3:57 PM

Prost, C .J. Affirming in part and vacating in part and remanding a preliminary injunction ordering the defendant to comply with an agreement. "Whether this injunction derives its force from the patents themselves or a contract referencing the patents, it prohibits the same conduct in the same manner as injunctions we have held violated Rule 65(d). Routing the prohibited conduct through a contract does not improve the Injunction's specificity."

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February 6, 2018 2:28 PM

Hughes, J. Affirming finding of noninfringement but reversing and remanding finding that a distribution agreement was not a commercial offer for sale under 35 U.S.C. § 102(b). The distribution agreement "provided all of the necessary terms and conditions to constitute a commercial offer for sale," despite the patentee's argument that the agreement permitted the patentee to reject all purchase orders submitted. "[T]he on-sale bar does not exempt commercial agreements between a patentee and its supplier or distributor."

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February 6, 2018 11:08 AM

Wallach, J. Affirming PTAB decision in an IPR that the claims were not proved obvious.   

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Lourie, J. Affirming summary judgment as to length of patent term adjustment under 35 U.S.C. § 154.   

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February 5, 2018 9:08 AM

Dyk, J. Affirming dismissal of declaratory judgment action for lack of jurisdiction. The plaintiff licensee's claim that a licensed patent it did not practice was invalid would not actually resolve the parties' contractual dispute as to whether royalties were due under the license.

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February 1, 2018 4:17 PM

O'Malley, J. Affirming in part, vacating in part, and remanding PTAB obviousness determinations in an IPR. The Board erred in determining that a priority application did not incorporate the entirety of a prior patent by reference. "The applicability of a document's disclosed features and the incorporation of the document itself are distinct concepts, and one does not imply the other."

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