A Published Patent Application Is IPR Prior Art as of Its Filing Date
LYNK LABS, INC. v. SAMSUNG ELECTRONICS CO., LTD. Before Lourie, Prost, and Stark Summary: In an IPR, a patent application is considered a “printed publication” as of the application’s filing...
A Patent Must Describe What Is Claimed, Not What Infringes
NOVARTIS PHARMACEUTICALS CORPORATION v. TORRENT PHARMA INC. Before Lourie, Prost, and Reyna. Appeal from the U.S. District Court for the District of Delaware. Summary: A patent was not invalid for lack...
No Patent-Like Claims Under State Law
BearBox, LLC, Austin Storms, v. Lancium LLC, Michael T. McNamara, Raymond E. Cline, Jr. Before Chen, Bryson, and Stoll. Appeal from United States District Court for the District of Delaware....
Unsupported Expert Testimony Cannot Create a Genuine Issue of Material Fact
MIRROR WORLDS TECHS., LLC v. META PLATFORMS, INC. Before Prost, Taranto, and Stark. Appeal from the United States District Court for the Southern District of New York. Summary: Expert testimony...
Bound to Happen: Inherent Property Leaves No Question of Reasonable Expectation of Success
CYTIVA BIOPROCESS R&D AB V. JSR CORP. Before Prost, Taranto, and Hughes. Appeal from the Patent Trial and Appeal Board. Summary: A claim limitation merely reciting an inherent property or...
“Quotation” Letter Found to Constitute Offer Invalidating Patents
CROWN PACKAGING TECHNOLOGY, INC. v. BELVAC PRODUCTION MACHINERY, INC. Before Dyk, Hughes, and Cunningham. Appeal from the United States District Court for the Western District of Virginia. Summary: An offer for...
An Award of Attorneys’ Fees and Costs Under 35 U.S.C. §285 Does Not Preclude Sanctions Pursuant to the Court’s Inherent Authority
PS PRODUCTS INC. V. PANTHER TRADING CO. INC. Before Moore, Stoll, and Cunningham. Appeal from the Eastern District of Arkansas. Summary: Section 285 does not prohibit an award of deterrence...
Deleted Definition “Highly Significant” for Claim Construction
DDR HOLDINGS, LLC V. PRICELINE.COM LLC, BOOKING.COM B.V. Before Chen, Mayer, and Cunningham. Appeal from the United States District Court for the Northern District of Delaware. Summary: Deleting a definition...
The Intersection of FRAND Obligations and Anti-Suit Injunctions
TELEFONAKTIEBOLAGET LM ERICSSON v. LENOVO (UNITED STATES), INC. Before Lourie, Prost, and Reyna. Appeal from the Eastern District of North Carolina. Summary: The threshold requirement for anti-suit injunctions, that the...
Resolving Claim Construction Dispute at 12(b)(6) Stage May Be Error if Specification Indicates Claim Term Does Not Have its Plain Meaning
UTTO INC. v. METROTECH CORP. Before Prost, Taranto, and Hughes. Appeal from the United States District Court for the Northern District of California. Summary: The district court erred in construing...
Read the Fine Print: Federal Circuit Vacates Dismissal of Patent Infringement Claims Based on an Express License, Where Some Transactions Could Fall Within the Scope of the Claims Yet Remain Unlicensed
ALEXSAM, INC. v. ATENA, INC.
Before Stark, Lourie, and Bryson. Appeal from the United States District Court for the District of Connecticut.
Summary: A narrowly defined patent license may result in some activity falling within the scope of the patent claims, but outside the scope of the license. Additionally, a trial court’s determination that an allegation in a complaint is merely conclusory and need not be taken as true when evaluating a motion to dismiss is reviewed de novo.
Falsely Claiming Patent Protection May Violate the Lanham Act
CROCS, INC. v. EFFERVESCENT, INC.
Before Reyna, Cunningham and Albright. Appeal from the United States District Court for the District of Colorado.
Summary: A claim that an unpatented product feature is “patented,” “proprietary,” or “exclusive” may violate Section 43(a)(1)(B) of the Lanham Act.
Tying Claimed Technological Advancements to Specific Technological Methods Is a Winning POV on Patent Eligibility
CONTOUR IP HOLDING LLC v. GOPRO, INC.
Before Reyna, Prost, and Schall. Appeal from the United States District Court for the Northern District of California.
Summary: Claims are patent-eligible under 35 U.S.C. § 101 where the written description discloses improving technology through specific technological means and the claims reflect that improvement.
Combining Abstract Ideas Does Not Make Them Less Abstract
BROADBAND ITV, INC. v. AMAZON.COM, INC.
Before Dyk, Reyna, and Stark. Appeal from the United States District Court for the Western District of Texas.
Summary: When assessing patent eligibility under 35 U.S.C. § 101, combining two abstract ideas does not make either less abstract, and conventionality can be analyzed at both steps of the Alice test.
An Expert Witness Need Not Have Been a Posita at the Time of the Invention
OSSEO IMAGING, LLC v. PLANMECA USA INC.
Before Dyk, Clevenger, and Stoll. Appeal from the United States District Court for the District of Delaware.
Summary: An expert witness can testify from the perspective of a POSITA at the time of the invention even if they did not qualify as a POSITA until later.
Relying on Irrelevant Factors to Award Attorneys’ Fees Is a Red Flag
REALTIME ADAPTIVE STREAMING LLC v. SLING TV, LLC
Before Moore, Lourie, and Albright. Appeal from the United States District Court for the District of Colorado.
Summary: Awarding attorneys’ fees may be an abuse of discretion if the court relies on factors that should be given no weight in the exceptional-case analysis.
Are Literal Infringement and the Doctrine of Equivalents the Same Issue?
WISCONSIN ALUMNI RESEARCH FOUNDATION v. APPLE INC
Before Prost, Taranto, and Chen. Appeal from the United States District Court for the Western District of Wisconsin.
Summary: Literal infringement and infringement under the doctrine of equivalents are treated as the same issue for issue preclusion.
Platinum Cannot Stand on Speculation
PLATINUM OPTICS TECHNOLOGY INC., v. VIAVI SOLUTIONS INC.
Before Moore. Appeal from the Patent Trial and Appeal Board.
Summary: Standing based on potential infringement liability requires concrete plans for future activity which will create a substantial risk of future infringement or will likely lead to a patentee claiming infringement.
A Certification Mark May Be Famous for Any Reason and May Connote More Than the Product’s Place of Origin
BUREAU NATIONAL INTERPROFESSIONNEL DU COGNAC v. COLOGNE & COGNAC ENTERTAINMENT Before Lourie, Clevenger and Hughes. Appeal from the Trademark Trial and Appeal Board. Summary: Fame and likelihood of confusion analyses...
Specify the Steps of Information Manipulation or Lose Under § 101
MOBILE ACUITY LTD. v. BLIPPAR LTD. Before Lourie, Bryson, and Stark. Appeal from the United States District Court for the Central District of California. Summary: Patent claims that merely recite...
The On-Sale Bar Still Applies to the Products of Secret Processes
CELANESE INTERNATIONAL CORPORATION v. ITC Before Reyna, Mayer, and Cunningham. Appeal from the International Trade Commission. Summary: Process patent claims are invalid under the on-sale bar (35 U.S.C. § 102(a)(1))...