While these seven 2022 Federal Circuit lawsuits weren’t high-profile and didn’t come with billions of dollars in damages, they do have an important element.
[To the tune of Rudolph]:
Look Mayo When Markman When Alice When dummy;
Juno When axle (American) and Amgen When Teva.
But do you remember some of the lesser-publicized Federal Circuit decisions that may be important to your business?
I didn’t think so. (This may be exaggerated, but it depends on how much you read and what you remember.)
Neither did I, so I searched last year’s Federal Circuit precedent opinion to find an opinion that may contain an important nugget. .
These are those decisions.
Kyocera Senco Industrial Tools, Inc. vs. ITC22 F.4th 1369 (Fed. Cir. Jan. 21, 2022)
Experts play a large role in patent litigation.of Kyocera This case suggests the existence of a nuclear weapon that could kill the expert and kill the client’s case. This case was about an electric nailer. This is a tool that roofers and formers carry around to drive in far more nails than they can manually drive. The relevant specialists had expertise in the more general area of fastening tools, but not in the specific area of power nailers.In this case, it doesn’t mean that your expert has to be fully competent in your technology, but you should always be able to take advantage of the discussion if your opponent’s expert has an adjacent technical background. Make it. Future tactics include quoting Kyocera And convince the judge that the opposing expert is too far. It’s hard to believe that the Federal Circuit will repeat this ruling often, but it can be a deadly tool for any patent litigator.
Divan LLC v. Target, Inc.28 F.4th 1360 (Fed. Cir. 24 March 2022)
For those who practice with software, Devon It can be an important means and function decision. This is because software is primarily described (and claimed) by the functions it performs at runtime, and purely functional claim limitations in apparatus/system claims should be subject to means-plus-function treatment. This may limit certain limitations to computers running specific algorithms described in patents (See WMS Games), which can be very narrow. Alternatively, if the patent does not describe such an algorithm (which is common, since drafters often unintentionally fall into means-plus-function land), the claim is invalid.
Devon In at least one context, the general software terms “code” and “application” (as modified by certain functional languages) imply enough structure to avoid construction as means-plus-function terms. ing (See zero click) — based in part on unrebutted testimony by patentee experts. The court reached a similar conclusion with respect to the term “system,” although it was the only substantive term in the preamble. This decision is important, as many software claims use similar language, and will likely be invalidated indefinitely if found to be subject to means-plus-function treatment.
Niazi Licensing Corp. v. St. Jude Medical SC, Inc.30 F.4th 1339 (Fed. Cir. 11 April 2022)
While we speak of uncertainty, it can arise in many ways. For example, not only means-plus-function restrictions that have no corresponding structure, Subjective Claim terms—Most famously, the term “aesthetically pleasing,” digitization It dates back to 2005. Niazi Earlier this year, the Federal Circuit ruled that the flexible terms “resilient” and “flexible” are less subjective. Rather, records provided objective boundaries within which the skilled craftsman could identify its extent.[t]His term is broad, but not uncertain. This is because opponents suggest patent This is a good example for rights holders.
Intuitive Surgical, Inc. v. Ethicon LLC25 F.4th 1035 (Fed. Cir. 11 Feb. 2022)
Let’s talk briefly about post-grant. It is said that most of the front and center issues were hammered out. intuitive This issue was not central, as it was only caused by certain actions by the United States Patent and Trademark Office (USPTO). Specifically, two inter partes reviews (IPRs) were filed against the patent on the same day, but rather than decide them simultaneously, the USPTO decided on only one and then on 35 USC § 315(e)(1). The Federal Circuit agreed that the USPTO effectively changed his two parallel IPRs into a sequential IPR, and finally he could dismiss one. Keep this decision in mind if you have a complex IPR that doesn’t fit within the page limit and you want to split it in two.
California Institute of Technology v. Broadcom Ltd.25 F.4th 976 (Fed.Cir.Feb. 4, 2022)
The Federal Circuit applied the presumption to the extraterritorial application of US patents.Supreme Court changed it western geoco, 271(f)(2) infringement case.Since then, little progress has been made to identify how much western geoco § 271(a) expanded the more general area of infringement.of Caltech vs. Broadcom, the Federal Circuit at least affirmed the district court’s refusal to direct the jury that there is a presumption of extraterritoriality for patent damages. were either foreigners or domestics. This is a big problem. This is because so many innovation-related activities take place in the United States and are then manufactured, sold, and used outside the United States. western geoco Overturn the underlying law and possibly create a new postwestern geoco local law.
Auris Health, Inc. vs. Intuitive Surgical Operations, Inc.32 F.4th 1154 (Fed. Cir. 29 April 2022)
Now that IPR dominates the Federal Circuit’s IP docket, I can’t help but cite the ubiquitous obviousness decisions. Auris It is a case of (indirectly) objective indications of non-obviousness. The Board of Patent Appeals found that the claims had not been proven invalid because of the skepticism of the technology.i.e., at the time of its invention, physicians were not enthusiastic about the emerging field of robotic surgery. But the Court of Appeals for the Federal Circuit ruled 2-1 that skepticism was too prevalent to prevent such evidence from finding motives for the merger. Gaining weight required directing skepticism towards the specific robotic surgery problem and solution in this case. It’s not a more general question about the field of invention.
Cupp Computing AS v. Trend Micro Inc.__ F.4th __ (Fed. Cir. Nov. 16, 2022)
This simple case has been enthusiastic from the press and preceded a fundamental point the court had previously made in its unprecedented opinion—i.e.., “The Board need not accept the claims of the patent owner as disclaimers in determining the merits of those claims.” It has long been the norm for prosecution (a commendable goal) because it encouraged modifications to do so. Here, the Federal Circuit recognizes the IPR’s goal of allowing the USPTO to “reconsider” its decisions, and recognizes the need to discourage efforts by patentees to “reshape” their claims. Recognized. In particular, IPR disclaimers are binding in subsequent litigation, so in most cases they can hurt but not help the patent owner.
A warm cup of cocoa, a cozy fire, and snuggling up to family is comforting in the knowledge that you know more about your profession than you did 10 minutes ago. What could be a better gift than that?
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