United States: Federal Circuit Patent Updates - December 2015

Prolitec, Inc. v. Scentair Technologies, Inc. (No. 2015-1020, 12/4/15) (Prost, Newman, Taranto)

December 4, 2015 4:11 PM

Prost, C. J. Affirming PTAB determinations of unpatentability and denial of motion to amend in an inter partes review (IPR). "Prolitec's expert cannot rewrite the intrinsic record of the '683 patent to narrow the scope of the patent and the claim element 'mounted.'... Prolitec's expert opinion ... was inconsistent with the intrinsic record of the '683 patent and was properly rejected by the Board." An optional inclusion of a feature in the
prior art anticipates a claim that excludes the feature. Regarding the motion to amend, affirming the Board's denial of the motion "on a merits assessment of the entire record developed on the motion, not just on the initial motion itself," including "that the patentee's burden on a motion to amend includes the burden to show patentability over prior art from the patent's original prosecution history." Newman, J., dissents.

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

Commonwealth Scientific v. Cisco Systems, Inc. (No. 2015-1066, 12/3/15) (Prost, Dyk, Hughes)

December 3, 2015 2:19 PM

Prost, C. J. Vacating damages judgment and remanding for the district court to revise its damages award. The district court erred in not accounting for the asserted patent's standard-essential (SEP) status and in its reasons for discounting a relevant license agreement. "[T]he district court did not err in valuing the asserted patent with reference to end product licensing negotiations" between the parties. However, "reasonable royalties for SEPs generally—and not only those subject to a RAND commitment—must not include any value flowing to the patent from the standard's adoption." "[D]amages awards for SEPs must be premised on methodologies that attempt to capture the asserted patent's value resulting not from the value added by the standard's widespread adoption, but only from the technology's superiority."

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

MCM Portfolio LLC v. Hewlett-Packard Company (No. 2015-1091, 12/2/15) (Prost, Dyk, Hughes)

December 2, 2015 1:22 PM

Dyk, J. Affirming invalidation of claims in an inter partes review (IPR) proceeding. IPR is constitutional under Article III and the Seventh Amendment.

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

Cardsoft, LLC v. VeriFone Inc. (No. 2014-1135, 12/2/15) (Prost, Taranto, Hughes)

December 2, 2015 10:41 AM

Hughes, J. On remand from the Supreme Court, again reversing district court judgment of infringement because of incorrect claim construction. "Because this case does not involve the factual findings to which we owe deference under Teva, we again reverse the district court's construction ...." "[A[s we have repeatedly held after Teva, it is not enough that the district court may have heard extrinsic evidence during a claim construction proceeding—rather, the district court must have actually made a factual finding in order to trigger Teva's deferential review. ... In this case, we review the district court's construction de novo, as the district court did not make any factual findings based on extrinsic evidence that underlie its constructions of the disputed claim term."

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

Ariosa Diagnostics, Inc. v. Sequenom, Inc. (No. 2014-1139, 12/2/15) (en banc)

December 2, 2015 8:33 AM

Precedential order denying rehearing en banc in a case invalidating claims on prenatal paternity tests under 35 U.S.C. § 101. Lourie, Moore, and Dyk, JJ., concur; Newman, J., dissents.

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