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Federal Circuit Patent Updates - October 2017

October 2017

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Mastermine Software, Inc. v. Microsoft Corporation (No. 2016-2465, 10/30/17) (Newman, O'Malley, Stoll)

October 30, 2017 4:23 PM

Stoll, J. Affirming judgment of noninfringement but reversing judgment of invalidity for indefiniteness. The claims did not improperly claim both an apparatus and a method of using the apparatus; “the claims merely use permissible functional language to describe the capabilities of the claimed system[;] it is clear that infringement occurs when one makes, uses, offers to sell, or sells the claimed system.”

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

Merck Sharp & Dohme Corp. v. Hospira, Inc. (No. 2017-1115, 10/26/17) (Newman, Lourie, Hughes)

October 26, 2017 10:47 AM

Lourie, J. Affirming judgment that claims to a process for preparing an antibiotic compound were invalid as obvious. Although the claimed process steps may have been a novel solution, that solution “constitutes nothing more than conventional manufacturing steps that implement principles disclosed in the prior art.” Regarding proof of commercial success of a patented invention when the patented product or process is also covered by other patents, “multiple patents do not necessarily detract from evidence of commercial success of a product or process, which speaks to the merits of the invention, not to how many patents are owned by a patentee.” “[D]evelopers of new compounds often obtain a package of patents protecting the product, including compound, formulation, use, and process patents. Often such patents result from Patent Office restriction requirements relating to the technicalities of patent classifications and rulings that various aspects of claiming an invention cannot be claimed in the same patent. Or they may result from continuing improvements in a product or process. … Commercial success is thus a fact-specific inquiry that may be relevant to an inference of nonobviousness, even given the existence of other relevant  patents.” Newman, J., dissented.

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Smart Systems Innovations, LLC v. Chicago Transit Authority (No. 2016-1233, 10/18/17) (Reyna, Linn, Wallach)

October 18, 2017 11:08 AM

Wallach, J. Affirming district court's judgment on the pleadings that four patents were directed to unpatentable subject matter. The claims were directed to the implementation of open-payment fare systems in mass transit networks. Linn, J. dissented on the issue of whether the claims were directed to an abstract idea.

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

Secured Mail Solutions LLC v. Universal Wilde, Inc. (No. 2016-1728, 10/16/17) (Prost, Clevenger, Reyna)

October 16, 2017 4:17 PM

Reyna, J. Affirming district court's dismissal of seven patents as directed to unpatentable subject matter. The method claims directed to mail processing were to an abstract idea accomplished using conventional technology.

WilmerHale represented the defendant-appellee.

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

Organik Kimya AS v. Rohm and Haas Company (No. 2015-1983, -2001, 10/11/17) (Prost, Newman, Taranto)

October 11, 2017 12:41 PM

Newman, J. Affirming PTAB decision that claims direct to processes for preparing polymers were not obvious.  

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

Owens Corning v. Fast Felt Corporation (No. 2016-2613, 10/11/17) (Newman, Dyk, Taranto)

October 11, 2017 9:50 AM

Taranto, J. Reversing decision of non-obviousness in IPR where PTAB's implicit claim construction was not the broadest reasonable construction.  

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

Amgen Inc. v. Sanofi (No. 2017-1480, 10/5/17) (Prost, Taranto, Hughes)

October 5, 2017 3:51 PM

Prost, J. Reversing-in-part and remanding for new trial on written description and enablement. Also affirming JMOL of non-obviousness and vacating injunction. “[T]he use of post-priority-date evidence to show that a patent does not disclose a representative number of species of a claimed genus is proper. It was this legal error for the district court to categorically preclude all of Appellants' post-priority-date evidence of [the accused product] and other antibodies. Accordingly, we reverse the district court's decision and remand for a new trial on written description.” The Court also found a jury instruction regarding written description to be improper.

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

Aqua Products, Inc. v. Matal (No. 2015-1177, 10/4/17) (Prost, Newman, Lourie, Dyk, Moore, O'Malley, Reyna, Wallach, Taranto, Chen, Hughes)

October 4, 2017 12:36 PM

O'Malley, J. Vacating prior panel decision and remanding for the Board to assess the patentability of proposed substitute claims without placing the burden of persuasion on the patent owner. “Upon review of the statutory scheme, we believe that § 316(e) unambiguously requires the petitioner to prove all propositions of unpatentability, including for amended claims. This conclusion is dictated by the plain language of § 316(e), is supported by the entirety of the statutory scheme of which it is a part, and is reaffirmed by reference to relevant legislative history. Because a majority of the judges participating in this en banc proceeding believe the statute is ambiguous on this point, we conclude in the alternative that there is no interpretation of the statute by the Director of the Patent and Trademark Office (“PTO”) to which this court must defer under Chevron, U.SA. Inc. v. Natural Resources Defense Council, Inc. [citation omitted]. And we believe that, in the absence of any required deference, the most reasonable reading of the AIA is one that places the burden of persuasion with respect to the patentability of amended claims on the petitioner. [footnote overruling prior decisions omitted] Finally, we believe that the Board must consider the entirety of the record before it when assessing the patentability of amended claims under § 316(e) and must justify any conclusions of unpatentability with respect to amended claims based on that record… The only legal conclusions that support and define the judgment of the court are:  (1) the PTO has not adopted a rule placing the burden of persuasion with respect to the patentability of amended claims on the patent owner that is entitled to deference; and (2) in the absence of anything that might be entitled to deference, the PTO may not place that burden on the patentee.”

Separate opinions filed by Judges Moore and Reyna. Dissenting opinions filed by Judges Taranto and Hughes.

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