Federal Circuit Patent Watch: Speculative harm did not warrant a preliminary injunction

Federal Circuit Patent Watch: Speculative harm did not warrant a preliminary injunction

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Precedential Federal Circuit Opinions  

1.  LG ELECTRONICS INC. v. IMMERVISION, INC. [OPINION]  (2021-2037, 2021-2038, 7/11/2022) (Newman, Stoll, Cunningham)

Stoll, J. Affirming Board decision in IPR finding that challenged claims, which relate to digital panoramic images, were not shown to be unpatentable. Petitioner relied on a portion of the prior art – Table 5 – which was subsequently shown to be erroneous. “It is undisputed that the aspheric coefficients in [Table 5] were erroneous… Therefore, the primary question before us is whether substantial evidence supports the Board’s fact finding that the error would have been apparent to a person of ordinary skill in the art such that the person would have disregarded the disclosure or corrected the error… The Board correctly identified several aspects of the disclosure in Table 5 that would alert the ordinarily skilled artisan that the disclosure was an obvious error of a typographical or similar nature.” Petitioner unsuccessfully argued that the erroneous portion of the prior art should be discounted only if the error would have been immediately recognizable to a person of ordinary skill. “Certainly, the amount of time it takes a skilled artisan to detect an error may be relevant to whether an error is, in fact, an apparent error under Yale. But this is just one factor for the fact finder to consider as part of the overall analysis.”

Newman, J. dissented in part.

2.  KONINKLIJKE PHILIPS N.V. v. THALES USA, INC. [OPINION]  (2021-2106, 7/13/2022) (Moore, Dyk, Chen)

Moore, C.J. Affirming denial of preliminary injunction that, if granted, would have barred plaintiff from pursuing action in the International Trade Commission (“ITC”). The “district court did not clearly err in finding that there was no evidence of likely irreparable harm and thus did not abuse its discretion in holding that [defendant] was not entitled to a preliminary injunction.” Defendant “did not present any evidence that it lost customers, had customers delay purchases, or struggled to acquire new business because of the ongoing ITC proceedings. [citation omitted]. Instead, it presented affidavits stating only that the threat of an ITC exclusion order caused several customers to ‘voice concerns’ and express doubt regarding [defendant’s] ability to deliver products. [citation omitted]. And during oral argument, it characterized its alleged harm as living under the ‘cloud on the business’ of a potential exclusion order and the potential loss of business that may occur if it loses at the ITC. [citation omitted]. This type of speculative harm does not justify the extraordinary relief of a preliminary injunction.”

WilmerHale represented amicus curiae ACT | The App Association.

3.  CAREDX, INC. v. NATERA, INC. [OPINION]  (2022-1027, 2022-1028, 7/18/2022) (Lourie, Bryson, Hughes)

Lourie, J. Affirming summary judgement of invalidity. Patents related to detecting organ transplant rejection were ineligible under 35 U.S.C. § 101. The “patents apply conventional measurement techniques to detect a natural phenomenon—the level of donor cfDNA and the likelihood of organ transplant rejection… Here, as in Ariosa, the claims boil down to collecting a bodily sample, analyzing the cfDNA using conventional techniques, including PCR, identifying naturally occurring DNA from the donor organ, and then using the natural correlation between heightened cfDNA levels and transplant health to identify a potential rejection, none of which was inventive. The claims here are equally as ineligible as those in Ariosa.” The Court also rejected patent owner’s argument that the conventionality inquiry applies only to step two of the Alice analysis. “On the contrary, and as the district court recognized, we have repeatedly analyzed conventionality at step one as well.”

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