A District Court Must Provide An Adequate Reason For Its Denial Of A Preliminary Injunction Motion

The district court stayed the entire infringement litigation—involving a total of five asserted patents—in light of the pending inter partes review of the three originally asserted patents. After the PTAB instituted the review of the original patents, plaintiff moved to lift the stay only as to the two later-asserted patents and moved for a preliminary injunction based on the infringement of the two later-asserted patents.  Read more>>

A Novel And Nonobvious Combination Of Known Features May Be Sufficient For A Motion To Amend Claims In An IPR

In an inter partes review, the Patent Trial and Appeal Board, in addition to finding the challenged claims to be obvious, denied the patent owner’s motion to amend—solely because the patent owner and its expert had failed to address “whether each newly added feature in each proposed claim, as distinct from the claimed combination of features, was independently known in the art.”  Read more>>

Affirmative Defense of Assignment Was Waived in this Inventorship Action

Vapor Point sued NanoVapor to add two of Vaper Point’s employees, who had previously worked at NanoVapor, as inventors on two of NanoVapor’s patents. NanoVapor asserted a number of counterclaims and affirmative defenses, including an equitable defense that the Vapor Point’s employees had an obligation to assign their invention to NanoVapor.  Read more>>

District Court Has No Obligation To Further Construe Terms Contained Within A Claim Construction

The Federal Circuit affirmed the district court’s denial of GPNE’s post-trial motions following the jury’s verdict of non-infringement.  The patents-at-issue are directed to a two-way paging system which operates independently from a telephone system.  The claims referred to the devices on the network as “nodes,” and the district court construed the term “nodes” to mean a “pager with two-way data communications capability that transmits wireless data communications on a paging system that operates independently from a telephone network.”  Read more>>

Electric Power Grid Data Patent Claims Are Not Directed To Patent Eligible Subject Matter Under Section 101

The Federal Circuit affirmed the district court’s grant of summary judgment that Electric Power’s claims are invalid under Section 101 for being directed to patent ineligible subject matter.  The claims are directed to “performing real-time performance monitoring of an electric power grid by collecting data from multiple data sources, analyzing the data, and displaying the results.”  Read more>>

Federal Circuit Remands Halo Case To District Court For Further Findings Consistent With The Supreme Court’s Opinion

This case returned to the Federal Circuit from the Supreme Court following the Supreme Court’s decision rejecting the Seagate test for enhanced damages under Section 284 as being unduly rigid and impermissibly encumbering the statutory grant of discretion to district courts.  Because the Federal Circuit had applied the Seagate test previously, and because that test was no longer applicable, the Federal Circuit restated the reasoning on the infringement and validity issues and remanded to the district court for further proceedings consistent with the Supreme Court’s opinion on enhanced damages.  Read more>>

Markush Group Claim Element Was Closed To Non-Listed Resins, But Covered Blends Of The Listed Resins

The patent-at-issue related to multi-layer, thermoplastic stretch wrap films.  The independent claims of the patent included an element of “five identifiable inner layers, with each layer being selected from the group consisting of . . .” five possible layer resin materials.  Read more>>

Original Filed Claims Are Part Of The Specification And Can Provide Written Description Support For Subsequently Added Claims

The district court granted defendants’ motion for summary judgment of invalidity based on lack of written description, under § 112(1). It reasoned that the invention disclosed in the specification was “limited to sorting and storing prescription containers by patient name and slot availability,” and accordingly, “without including a limitation to address the storage by patient name, the claims are simply too broad to be valid.”  Read more>>

PTAB Erred By Applying The Broadest Reasonable Interpretation To A Patent That Had Expired

This case involved an appeal of an ex parte reexamination of a patent that expired during the reexamination proceedings.  Here, after the examiner issued a final rejection, but before consideration by the PTAB.  During reexamination, the PTO applies the broadest reasonable interpretation standard for claim construction while the patent is in force.  Read more>>

PTAB’s Conclusory Finding Could Not Support Its Holding Of Invalidity As It Lacked Sufficient Reasoning

The patent-at-issue relates to spinal surgery involving implanting an artificial implant between two adjacent vertebrae from a patient’s side.  The PTAB, in an IPR proceeding, found claims to be invalid as being obvious.  Warsaw challenges the PTAB’s factual findings regarding the teachings of the prior art as well as its finding of a motivation to combine references.  Read more>>

The Federal Circuit Grants En Banc Review Of PTAB’s Procedures To Amend Claims During Post-Grant Proceedings

In an order granting the petition for rehearing en banc, the Federal Circuit vacated its previous panel decision in In re: Aqua Products, Inc., 823 F.3d 1369 (Fed. Cir. 2016), and asked the parties—Appellant Aqua Products and the Intervenor, the Director of the USPTO—to brief the following issues: Read more>>

“Common Sense” Can Be Invoked In An Obviousness Analysis, Even Potentially To Supply A Missing Limitation, But “Common Sense” Must Be Supported By Evidence And Reasoned Explanation

This case involved an appeal of an inter parte review decision in which the Board invalidated certain claims of a patent, because it found that the missing limitation in the prior art of record could be supplied by common sense.  The Federal Circuit, however, found the Board’s presumption that adding the missing claim limitation would be “common sense” was conclusory and unsupported by substantial evidence, and consequently, it reversed the Board’s finding of obviousness. Read more>>