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Claim Terms That Have No Plain Meaning Can Only Be Construed As Broadly As Provided in the Specification

Indacon, Inc. v. Facebook, Inc.

Following the district court’s constructions for four claims terms, the parties stipulated to non-infringement, and the district court entered final judgment in favor of Facebook.  On appeal, the Federal Circuit affirmed the district court’s constructions.  Read more>>

Court Finds Substantial Evidence of Inducement to Infringe Where the Defendant’s Asserted Belief in Non-Infringement Was Unreasonable

Warsaw Orthopedic, Inc. v. NuVasive, Inc.

The Federal Circuit addressed this case following vacatur and remand from the Supreme Court for further consideration in light of Commil v. Cisco.  The issue for the Federal Circuit on remand was whether NuVasive had proven that Medtronic Sofamar Danek (MSD) induced infringement of NuVasive’s patent.  Read more>>

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Federal Circuit Affirms PTAB’s Finding of a Motivation to Combine, Even Though Substantial Redesign and Reconstruction Was Needed to Arrive at the Claimed Combination

Allied Erecting and Dismantling Co., Inc. v. Genesis Attachments, LLC

The Federal Circuit affirmed the PTAB’s finding in an inter partes reexamination that the claims of Allied’s patent, US 7,121,489, which is directed to heavy machinery tools, are obvious. The Federal Circuit rejected Allied’s argument that because “the modification of Caterpillar [a prior art reference] in view of Ogawa [another prior art reference] would [] result in substantial redesign and reconstruction,” the PTAB erred in finding the motivation to combine those references. Read more>>

Federal Circuit Clarifies that the PTAB May Rely on Additional Evidence, Not Present in the Petition or Institution Decision, During the IPR Proceeding

Genzyme Therapeutic Prods. L.P. v. Biomarin Pharm. Inc.

The Federal Circuit affirmed PTAB’s decisions in two IPR proceedings that found the claims of two patents to be invalid as being obvious. Biomarin requested an IPR on Genzyme’s two patents, US 7,351,410 and 7,655,226, directed to methods for treating Pompe's disease on obviousness grounds. Read more>>

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Federal Circuit Holds that a Continuation Patent Application Filed on the Date of Issuance of an Earlier-Filed Application is Entitled to the Filing Date of the Earlier-Filed Application Under Section 120

Immersion Corporation v. HTC Corporation

This case involved the single issue of whether, under 35 U.S.C. § 120, a continuation patent application that is filed on the same day that the underlying parent patent issues is “filed before the patenting” of the earlier application, and therefore entitled to the filing date of the earlier application, rather than its own filing date. Read more>>

Judge Newman Criticizes PTO Procedure of Having the PTAB Decide Whether to Institute an IPR and Then Also Decide the Merits

Ethicon Endo-Surgery, Inc. v. Covidien LP

Judge Newman dissents from the denial of Ethicon’s petition for rehearing en banc.  Judge Newman criticizes the PTO’s rule-making authority which, pursuant to 37 C.F.R. § 42.4(a), assigns the decision of whether to institute an IPR to the PTAB, the same entity which decides the merits of the IPR.  The statute gave the Director the responsibility of deciding whether to institute an IPR and the PTAB the responsibility of deciding the merits of the IPR.   Read more>>

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