United States: Federal Circuit Patent Updates - March 2016

Last Updated: April 1 2016
Article by WilmerHale

View previous updates...

Shaw Industries Group v. Automated Creel Systems (No. 2015-1116, 2015-1119, 3/23/16) (Moore, Reyna, Wallach)

March 23, 2016 3:30 PM

Moore, J. Holding that the Court lacked jurisdiction to review PTAB's refusal to institute an IPR on some grounds on the basis that the grounds were redundant of the grounds on which institution had been granted. Also denying petition for a writ of mandamus on the same issue and finding that there would be no litigation estoppel related to the non-instituted ground. On the merits, vacating a finding that a limitation was not present in the art where the basis of the Board's decision was ambiguous. With respect to a cross-appeal, the Court held that it did not have jurisdiction to review the Board's decision to institute a second IPR as timely  under §315(b) and affirmed the Board's obviousness determination on the merits. Reyna, J., concurred, writing separately to criticize the Board's "Redundancy Doctrine."

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

MAG Aerospace Industries, Inc. v. B/E Aerospace, Inc. (No. 2015-1370, 2015-1426, 3/23/16) (Prost, Mayer, Reyna)

March 23, 2016 11:10 AM

Prost, J. Affirming summary judgment that claims were not infringed and summary judgment of no invalidity based on assignor estoppel.

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

In Re Cree, Inc. (No. 2015-1365, 3/21/16) (Chen, Clevenger, Bryson)

March 21, 2016 2:11 PM

Bryson, J. Affirming PTAB decision in ex parte reexamination that claims were obvious. 

WilmerHale represented the appellant.

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

Acorda Therapeutics Inc. v. Mylan Pharmaceuticals Inc. (No. 2015-1460, 3/18/16) (Newman, O'Malley, Taranto)

March 18, 2016 4:45 PM

Taranto, J. Holding that Hatch-Waxman plaintiff had specific personal jurisdiction over defendant, while not addressing issue of general jurisdiction. "[I]t suffices for Delaware to meet the minimum-contacts requirement in the present cases that Mylan's ANDA filings and its distribution channels establish that Mylan plans to market its proposed drugs in Delaware and the lawsuit is about patent constraints on such in-State marketing." The defendant could not demonstrate "other considerations [that] render jurisdiction unreasonable" where the burden of its litigating in Delaware would be modest. O'Malley, J., concurred, writing separately to find existence of general jurisdiction or, alternatively, special jurisdiction based on harm to Delaware plaintiffs.

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

Dell Inc. v. Acceleron, LLC (No. 2015-1513, -1514, 3/15/16) (Moore, Taranto, Hughes)

March 15, 2016 1:09 PM

Taranto, J. On review of an IPR, vacating PTAB's cancellation of claims where Board's claim construction failed to give meaning to all of the claim terms and where finding that claim element was satisfied by specific figure in prior art was first advanced in oral argument. Other findings of the Board were affirmed.  

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

Halo Creative & Design v. Comptoir Des Indes Inc. (No. 2015-1375, 3/14/16) (Dyk, Mayer, Hughes)

March 14, 2016 2:50 PM

Dyk, J. Reversing dismissal of case on forum non conveniens grounds. The Federal Court of Canada was not an adequate alternative forum where the plaintiff's "complaint seeks redress for alleged infringement of its United States intellectual property rights that occurred in the United States" and "[t]here is no evidence of any predicate act of infringement that occurred in Canada—let alone evidence that such a predicate act, if found, would enable the Federal Court of Canada under Canadian law to redress subsequent infringing acts in the United States." 

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

In Re Varma (No. 2015-1502, 3/10/16) (Wallach, Clevenger, Taranto)

March 10, 2016 4:19 PM

Taranto, J. Reversing in part and vacating in part PTAB cancellation of claims in reexamination because of erroneous claim constructions. "Although the transitional term 'comprising' indicates that the claim is open-ended, the term does not render each limitation or phrase within the claim open-ended.  'Comprising' means that the claim can be met by a system that contains features over and above those specifically required by the claim element, but only if the system still satisfies the specific claim-element requirements: the claim does not cover systems whose unclaimed features make the claim elements no longer satisfied." "For a dog owner to have 'a dog that rolls over and fetches sticks,' it does not suffice that he have two dogs, each able to perform just one of the tasks." "[T]he principle that the same phrase in different claims of the same patent should have the same meaning is a strong one, overcome only if 'it is clear' that the same phrase has different meanings in different claims."

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

In Re Smith (No. 2015-1664, 3/10/16) (Moore, Hughes, Stoll)

March 10, 2016 3:41 PM

Stoll, J. Affirming PTO rejection of claims for claiming patent-ineligible subject matter under 35 U.S.C. § 101 and declining to review whether the PTO's 2014 Interim Guidance on Patent Subject Matter Eligibility exceeds the scope of § 101 and the Supreme Court's Alice decision. "[T]he claims cover only the abstract idea of rules for playing a wagering game and use conventional steps of shuffling and dealing a standard deck of cards." "That is not to say that all inventions in the gaming arts would be foreclosed from patent protection under § 101. We could envisage, for example, claims directed to conducting a game using a new or original deck of cards potentially surviving step two of Alice."

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

Bamberg v. Dalvey (No. 2015-1548, 3/9/16) (Moore, Hughes, Stoll)

March 9, 2016 9:18 AM

Hughes, J. Affirming in part, vacating in part, reversing in part, and remanding summary judgment of noninfringement. The district court erred by importing limitations into certain claim steps and in granting summary judgment based on intervening rights. In determining whether intervening rights apply following reexamination, "amendments made during reexamination do not necessarily compel a conclusion that the scope of the claims has been substantively changed... This is true even where the claims at issue were amended during reexamination after a rejection based on prior art."

A full version of the text available in PDF form.

In Re Queen's University at Kingston (No. 2015-145, 3/7/16) (Lourie, O'Malley, Reyna)

March 7, 2016 12:42 PM

O'Malley, J. Granting mandamus directing the district court to withdraw its order compelling production of petitioner's communications with its non-attorney patent agents. For the first time, "We ... recognize a patent-agent privilege extending to communications with non-attorney patent agents when those agents are acting within the agent's authorized practice of law before the Patent Office." Reyna, J., dissents.

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

Ultimatepointer, LLC v. Nintendo Co. Ltd. (No. 2015-1297, 3/1/16) (Lourie, Dyk, Wallach)

March 1, 2016 5:22 PM

Lourie, J. Affirming summary judgment of noninfringement and reversing summary  judgment of invalidity for indefiniteness. Claim limitation of "an image sensor, said image sensor generating data" was not a combined apparatus/method limitation rendering the claim invalid because "the 'generating data' limitation reflects the capability of that structure rather than the activities of the user." "Unlike the claims in IPXL and Katz, the claims do not recite functionality divorced from the cited structure. Therefore, the claims do not reflect an attempt to claim both an apparatus and a method, but instead claim an apparatus with particular capabilities."

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

Harmonic, Inc. v. Avid Technology, Inc. (No. 2015-1072, 3/1/16) (Chen, Mayer, Stoll)

March 1, 2016 1:12 PM

Stoll, J. Affirming PTAB confirmation of claims in an inter partes review (IPR) and concluding that the Court did not have jurisdiction to review the PTAB's decision to institute IPR on certain grounds but not on other grounds that the PTAB deemed "redundant."

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

Blue Calypso, LLC v. Groupon, Inc. (No. 2015-1391, 3/1/16) (Reyna, Schall, Chen)

March 1, 2016 10:19 AM

Chen, J. Affirming PTAB decision in a Covered Business Patent review that claims were anticipated but reversing PTAB conclusion that certain claim terms lacked written description support. A written report by a graduate student that was made available via a hyperlink on her personal webpage was not a "printed publication" that could be relied upon to prove unpatentability where there was no evidence that the report was viewed or downloaded, that a person skilled in the art would know the address of her webpage, or that the webpage address was indexed or locatable through a search engine. "The written description requirement is an important component of maintaining the integrity of our patent system." Schall, J., dissented in part.

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.


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.