United States: Federal Circuit Patent Updates - January/February 2015

Last Updated: February 24 2015
Article by WilmerHale

View previous updates...

United States Technologies v. Centurytel Broadband Services (No. 2014-1347, 2/12/15) (Newman, Bryson, O'Malley)

February 12, 2015 9:30 AM

Bryson, J. Reversing judgment of collateral estoppel by a general jury verdict in a prior action. "It is well established that a general jury verdict can give rise to collateral estoppel only if it is clear that the jury necessarily decided a particular issue in the course of reaching its verdict. ... When there are several possible grounds on which a jury could have based its general verdict and the record does not make clear which ground the jury relied on, collateral estoppel does not attach to any of the possible theories." And "it was error to apply collateral estoppel to a general
jury verdict that could have rested on multiple grounds, simply because the first court held, in its JMOL ruling, that the evidence would have been sufficient to support the jury's verdict on either theory of liability presented to it."

A full version of the text is available in PDF form.

Soverain Software LLC v. Victoria's Secret (No. 2012-1649, 2/12/15) (Dyk, Taranto, Hughes)

February 12, 2015 3:20 PM

Dyk, J. reversing judgment of infringement because the asserted claims were invalid by reason of issue preclusion from a judgment in another case. "[I]ssue preclusion applies even though the precluding judgment ... comes into existence while the case as to which preclusion is sought (this case) is on appeal." Rejecting the contentions that the patentee did not have a full and fair opportunity to litigate the issue in the other case.

A full version of the text is available in PDF form.

Fenner Investments, Ltd. v. Cellco Partnership (No. 2013-1640, 2/12/15) (Newman, Schall, Hughes)

February 12, 2015 12:20 PM

Newman, J. Affirming summary judgment of noninfringement. "Fenner argues that the[] purportedly limiting statements he made during prosecution do not limit the claims, arguing that the statements and the limitations discussed were not the basis for grant of the patent. However, the interested public has the right to rely on the inventor's statements made during prosecution, without attempting to decipher whether the examiner relied on them, or how much weight they were given."

A full version of the text is available in PDF form.

Helferich Patent Licensing v. The New York Times (No. 2014-1196, 2/10/15) (Taranto, Bryson, Chen)

February 10, 2015 11:45 AM

Taranto, J. Reversing summary judgment of noninfringement under the doctrine of patent exhaustion. The district court "held that, by granting handset manufacturers patent licenses conferring broad authority to sell the handsets, Helferich had exhausted its ability to enforce its patents not only against acquirers of the handsets but also against the defendant content providers who use presumptively distinct inventions to manage content and deliver it to handset users. We reverse, concluding that patent exhaustion has not reached that far and should not be newly extended to do so in these cases." "The doctrine [of patent exhaustion] has never applied unless, at a minimum, the patentee's allegations of infringement, whether direct or indirect, entail infringement of the asserted claims by authorized acquirers— either because they are parties accused of infringement or because they are the ones allegedly committing the direct infringement required by the indirect infringement charged against other parties. Here ..., that is not so, because infringement of the content claims has not been asserted or shown to require that handset acquirers are practicing those claims."

A full version of the text is available in PDF form.

Lexington Luminance LLC v. Amazon.com Inc. (No. 2014-1384, 2/9/15) (Lourie, Chen, Hughes)

February 9, 2015 5:10 PM

Lourie, J. Vacating judgment on the pleadings that the asserted claim was invalid as indefinite. An "open Markush group" in the claim of "said substrate is selected from the group comprising group IIIV, group IV, group II-VI elements and alloys, ZnO, spinel and sapphire" did not render the claim indefinite; "the reasonably ascertainable meaning of the contested claim language is that the substrate must contain one or more of the enumerated members of the claimed group." Also, a claim term of "the extended lattice defects" that had no antecedent in the claim did not render the claim indefinite.

A full version of the text is available in PDF form.

In re Cuozzo Speed Technologies, LLC (No. 2014-1301, 2/4/15) (Newman, Clevenger, Dyk)

February 4, 2015 1:50 PM

Dyk, J. Affirming Board determination in an inter partes review (IPR). "[W]e hold that we lack jurisdiction to review the PTO's decision to institute IPR. We affirm the Board's final determination, finding no error in the Board's claim construction under the broadest reasonable interpretation standard, the Board's obviousness determination, and the Board's denial of Cuozzo's motion to amend." "We conclude that § 314(d) prohibits review of the decision to institute IPR even after a final decision." "We conclude that Congress implicitly adopted the broadest reasonable interpretation standard in enacting the AIA." "Even if the broadest reasonable interpretation standard were not incorporated into the IPR provisions of the statute, the standard was properly adopted by PTO regulation." Newman, J., dissented.

A full version of the text is available in PDF form.

Papst Licensing v. Fujifilm Corporation (No. 2014-1110, 2/2/15) (Taranto, Schall, Chen)

February 2, 2015 11:03 AM

Taranto, J. Vacating summary judgment of non-infringement of patents relating to transferring data between an input/output device and a computer, and remanding. "In the district court, [patent owner] opposed the construction it now opposes, and it was not required to state its opposition twice. [Patent owner] could not have given the district court the impression that it suddenly supported the construction when, in seeking a modification, it limited its request to a manifest error resting on a plain misapprehension of the record, rather than rehashing the broader arguments on claim construction that the court had fully considered. [Patent owner's] limited approach in seeking a modification was, indeed, commendably consistent with the general anti-repetition principle governing requests for reconsideration."

A full version of the text is available in PDF form.

In re Imes (No. 2014-1206, 1/29/15) (Lourie, Moore, Chen)

January 29, 2015 10:14 AM

Moore, J. Reversing Board's finding of invalidity of claims related to communicating digital images and video over a network and remanding. "The Patent Office's construction of 'wireless' to include communications along metal contacts of the removable memory card and the computer system is inconsistent with the broadest reasonable interpretation in view of the specification." The Court also found that sending "a series of e-mails with attached still images is not the same as streaming video."

A full version of the text is available in PDF form.

Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. (No. 13-854, 1/20/15)

January 20, 2015 1:09 PM

Breyer, J. Vacating judgment of indefiniteness and remanding. Although claim construction is reviewed de novo, a trial judge's resolution of underlying factual disputes should be reviewed under a "clear error" standard. "[W]hen the district court reviews only evidence intrinsic to the patent (the patent claims and specifications, along with the patent's prosecution history), the judge's determination will amount solely to a determination of law, and the Court of Appeals will review that construction de novo... In some cases, however, the district court will need to look beyond the patent's intrinsic evidence and to consult extrinsic evidence in order to understand, for example, the background science or the meaning of a term in the relevant art during the relevant time period... In cases where those subsidiary facts are in dispute, courts will need to make subsidiary factual findings about that extrinsic evidence... Accordingly, the question we have answered here concerns review of the district court's resolution of a subsidiary factual dispute that helps that court determine the proper interpretation of the written patent claim. The district judge, after deciding the factual dispute, will then interpret the patent claim in light of the facts as he has found them. This ultimate interpretation is a legal conclusion. The appellate court can still review the district court's ultimate construction of the claim de novo. But, to overturn the judge's resolution of an underlying factual dispute, the Court of Appeals must find that the judge, in respect to those factual findings, has made a clear error. Fed. Rule Civ. Proc. 52(a)(6)." Justices Thomas and Alito dissented.

A full version of the text is available in PDF form.

Neurorepair, Inc. v. Nath Law Group (No. 2013-1073, 1/15/15) (Wallach, Chen, Hughes)

January 15, 2015 10:22 AM

Wallach, J. Reversing district court and holding state law malpractice claim involving patent law representation improperly removed to federal court.

A full version of the text is available in PDF form.

Bard Peripheral Vascular v. W.L. Gore & Associates (No. 2014-1114, 1/13/15) (Prost, Newman, Hughes)

January 13, 2015 3:40 PM

Prost, J. Affirming finding of willful infringement of patent related to vascular grafts. Inventorship defense was not objectively reasonable even though member of a prior appellate panel had dissented on the issue. Also rejecting a standing defense. Hughes, J. concurred, but urged en banc review. Newman, J. dissented.

A full version of the text is available in PDF form.

Delano Farms Company v. California Table Grape Comm. (No. 2014-1030, 1/9/15) (Prost, Bryson, Hughes)

January 9, 2015 4:10 PM

Bryson, J. Affirming judgment that unauthorized planting of plant varieties did not constitute a public use invalidating patents directed to table grapes.

WilmerHale represented the appellant California Table Grape Commission.

A full version of the text is available in PDF form.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

*** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.