Court Affirmed PTAB Finding that the Claims Are Covered Business Method Claims and Would Have Been Obvious

SightSound Technologies, LLC v. Apple Inc.

The court affirmed the PTAB’s finding that SightSound’s patents were invalid as being obvious in connection with Apple’s requested Covered Business Method (CBM) review.  SightSound first argued that the PTAB erred by initiating the proceedings to include the issue of obviousness, even though Apple did not explicitly raise the issue of obviousness.  Read More>>

Court Affirms PTAB’s Denial of Motion to Amend Claim During IPR Proceeding

Prolitec, Inc. v. Scentair Technologies, Inc.

The court affirmed the PTAB’s construction of three claim terms in an IPR proceeding under the broadest reasonable interpretation standard, and, under those constructions, held that the claims at issue were invalid as being anticipated.  Read More>>

Court Reversed Infringement Verdict Where the Patentee’s Expert’s Testimony Did Not Provide Substantial Evidence of Infringement

Commil USA, LLC v. Cisco Systems, Inc.

On remand from the Supreme Court (which held that a defendant’s belief that a patent is invalid is not a defense to induced infringement), the court addressed Cisco’s remaining non-infringement arguments which the court declined to address in its previous opinion.  The court held that neither Cisco nor its customers directly infringed the claim at issue.  Read More>>

Damages Award Vacated Where District Court Failed To Account for the Fact that the Patent Is a Standard Essential Patent

Commonwealth Scientific and Industrial Research Organisation v. Cisco Systems, Inc.

This is an appeal from a bench trial on the sole issue of damages for a patent covering a standard in the wireless communications field that is practiced on chips that are used in wireless products.  The district court, relying on the parties’ negotiations and on a 2004 Rate Card, and applying the Georgia-Pacific factors, awarded over $16 million in damages.  Read More>>

District Court’s Construction of the Term “Virtual Machine” Was Erroneous and the Patentee Waived Any Non-Infringement Argument Under the Correct Construction

Cardsoft, LLC v. Verifone, Inc.

On remand from the Supreme Court to determine the correct construction of the claim term “virtual machine” in light of Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 U.S. 831, 841-42 (2015), the court held that the district court’s construction was incorrect, and, under the proper construction, there was no infringement.  Read More>>

Inter Partes Review Proceedings Are Held to be Constitutional and Need not be Tried to a Jury in an Article III Court

MCM Portfolio LLC v. Hewlett-Packard Co.

The patent owner MCM appealed the PTAB’s holding in an inter partes review proceeding that the claims of the patent were invalid as being obvious on three grounds.  First, MCM contends that the PTAB erred by instituting the IPR over MCM’s argument that the requestor HP was in privity with Pandigital whom MCM had sued more than one year earlier.  Read More>>

Patentee Disavowed Claim Scope of Subject Matter it Disparaged Repeatedly in the Patent Specification

Openwave Systems, Inc. v. Apple Inc.

The Federal Circuit affirmed the district court’s construction for the claim term “mobile device” to exclude devices that contain “computer modules.”  Although the specification describes an embodiment in which the mobile device does not employ a computer module and although this single reference will not lead to a disavowal of claim scope, the remainder of the specification is “rife with remarks that disparage, and, therefore, disclaim mobile devices that incorporate computer modules.”  Read More>>

Printed Matter Doctrine Did Not Apply to Claims Requiring Selection of “Web Assets”

In re: DiStefano, III

The court reversed the finding of anticipation, because the patent examiner misapplied the “printed matter doctrine.”  Under the doctrine, if a claim limitation covers the content of printed matter that is not functionally or structurally related to the physical substrate holding the printed matter, such printed matter is not given any patentable weight, i.e., it cannot be relied upon to establish patentability.  Read More>>

PTAB Correctly Refused to Allow an IPR Petitioner to Add Relevant, Supplemental Information Within One Month of the Grant of the IPR Under §42.123(a)

Redline Detection, LLC v. Star Envirotech, Inc.

The court affirmed the district court’s denial of Redline’s motion to submit four new exhibits—an expert declaration, CV, and two pieces of prior art—that was filed less than one month after the trial in the IPR had been instituted.  Under 37 C.F.R. §42.123(a), a party to an IPR may file a motion to submit supplemental information in accordance with the requirements that the request is made within one month of the date that the trial is instituted and that the supplemental information is relevant to a claim for which the trial has been instituted.  Read More>>

PTAB Finding of Obviousness Affirmed

South Alabama Medical Science Foundation v. Gnosis S.P.A.

In a companion case to Merck v. Gnosis, decided on the same day, South Alabama makes essentially the same arguments why the PTAB erred by finding that the claims at issue would have been obvious.  The court did find error in the PTAB’s assessment of licensing evidence as lacking a nexus for the purposes of showing objective indicia of non-obviousness, because the nexus should have been between the patent and the licensing activity itself.  Read More>>

PTAB Finding of Obviousness in IPR Affirmed Under Substantial Evidence Standard of Review

Merck & Cie. v. Gnosis S.P.A.

The court affirmed the PTAB’s finding that Merck’s claims were obvious over the prior art.  The court, applying the substantial evidence standard of review to the PTAB’s decision, held that the “because of the close similarity of purpose and disclosure between two references, a person of ordinary skill in the art would have been motivated to combine those references to arrive at the claimed invention.  Read More>>