Last Month at the Federal Circuit
Last Month at the Federal Circuit

January 2015

Patent App[eals]® includes PDFs of all patent-related Federal Circuit decisions dating back to 2001.  A user can search on keywords, judges, dates of decisions, lower court from which the case was appealed, case name, case number, and whether or not a case was heard en banc.  In addition, if the decision was summarized in Last Month at the Federal Circuit, the Finnegan case summary is included.

Federal Circuit Clarifies Inherency Doctrine in Reversing Obviousness Determination
No. 14-1391 (Fed. Cir. Dec. 3, 2014)
[Appealed from D. Md., Judge Blake]

Royalty for a Standard Essential Patent Should Be Based on Added Value of the Patented Invention to the Standard

[Appealed from E.D. Tex., Judge Davis]

Prior Reduction to Practice Is Not Necessary Under § 103 for Prior Art with Prior Conception
Nos. 13-1324, -1381 (Fed. Cir. Dec. 4, 2014)
[Appealed from D. Conn., Judge Arterton]

Claims Patent Eligible Under § 101 Where Claimed Solution to Technological Problem Is Rooted in Computer Technology

[Appealed from E.D. Tex., Judge Gilstrap]

Assignment to Other Party Is Valid If It States Consideration on Its Face, Even If Assignor Subsequently Found Not to Be Inventor
No. 14-1186 (Fed. Cir. Dec. 5, 2014)
[Appealed from N.D. Ill., Judge Tharp Jr.]

No DJ Jurisdiction Before Filing of FDA Application for Biosimilar Product

[Appealed from N.D. Cal., Judge Chesney]

Mistake in Filing a Terminal Disclaimer Is Not a “Mistake of a Clerical or Typographical Nature” That May Be Corrected Under 35 U.S.C. § 255

[Appealed from E.D. Va., Judge Trenga]

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Shipment of Single Important Component to Party’s Own Foreign Manufacturing Facility Constitutes Inducement Under § 271(f)(1)
Nos. 13-1011, -1029, -1376
(Fed. Cir. Dec. 15, 2014)
[Appealed from W.D. Wis., Chief Judge Crabb]

TTAB Erred in Refusing to Register TAKETEN Mark Based on Likelihood of Confusion with TAKE 10! Mark
No. 14-1009
(Fed. Cir. Dec. 16, 2014)
[Appealed from TTAB]

Trade Secret Misappropriation Claim Cannot Be Dismissed as Time-Barred or Factually Implausible Merely Because Misappropriations Occurred Repeatedly over Twenty Years
No. 14-1356 (Fed. Cir. Dec. 17, 2014)
[Appealed from S.D. Fla., Judge Moore]

Synthesized DNA Primers Identical to Natural DNA and Conventional Methods of Comparing DNA Sequences Are Patent Ineligible

[Appealed from D. Utah, Judge Shelby]

District Court Erred in Treating Actual Profits as Cap for Royalty Damages

[Appealed from D. Utah, Chief Judge Stewart]

Claims Directed to Document Data Extraction Technology Not Patent Eligible Under § 101
Nos. 13-1588, -1589, 14-1112, -1687
(Fed. Cir. Dec. 23, 2014)
[Appealed from D.N.J., Judge Shipp]

Erroneous Understanding of Written Description and Claims Constituted Sufficient “Error” for Reissue, Regardless of What Triggered Recognition of the Error

[Appealed from D. Idaho, Chief Judge Winmill]

AIA America Invents Act
ALJ Administrative Law Judge
ANDA Abbreviated New Drug Application
APA Administrative Procedures Act
APJ Administrative Patent Judge
Board Patent Trial and Appeal Board (formerly the Board of Patent Appeals and Interferences)
Commissioner Commissioner of Patents and Trademarks
CIP Continuation-in-Part
DJ Declaratory Judgment
DOE Doctrine of Equivalents
FDA Food and Drug Administration
IDS Information Disclosure Statement
ITC International Trade Commission
JMOL Judgment as a Matter of Law
MPEP Manual of Patent Examining Procedure
NDA New Drug Application
PCT Patent Cooperation Treaty
PTO United States Patent and Trademark Office
SJ Summary Judgment
TTAB Trademark Trial and Appeal Board
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