The Federal Circuit Upholds the C.D. California’s Vacatur of Infringement Under the Doctrine of Equivalents Based on the Ensnarement Doctrine

Jang v. Boston Scientific Corp., Case Nos. 2016-1275, 2016-1575, Sept. 29, 2017, Before Prost, O’Malley, and Chen   Take Away: In asserting the doctrine of equivalents, a hypothetical claim proposed by the patentee to prove that the asserted equivalents do not ensnare the prior art, must not be narrower than the …

Federal Circuit Reverses PTAB’s Determination of Invalidity Due to an Unreasonably Broad Claim Construction

In re Smith International Inc., September 26, 2017, Case No. 2016-2303, Before Lourie, Reyna, and Hughes.   Take Away: The meaning of a claim term may be narrowed by description in the specification, even absent an express definition. Procedural Posture: Smith International (“Smith”) appealed a final written decision by the …

Granting Writ of Mandamus, CAFC Finds District Court’s Interpretation of “Regular and Established Place of Business” in Venue Analysis Was an Abuse of Discretion. Judge Gilstrap Directed to Transfer Case.

In Re: Cray Inc.: Sept. 21, 2017.  Before Lourie, Reyna, and Stoll.   Takeaway: The home of an employee who works remotely is not sufficient to establish venue as a regular and established place of business of a defendant. Procedural Posture: Defendant Cray Inc. petitioned the CAFC for a writ of …

PTAB Decision Finding Inventor’s Testimony of Conception Not Corroborated Not Supported by Substantial Evidence

NFC Tech., LLC, Appellant v. Joseph Matal, Performing the Functions & Duties of the Under Sec’y of Commerce for Intellectual Prop. & Dir., U.S. Patent & Trademark Office, Intervenor: Sept. 20, 2017.  Before Newman, Lourie, and Hughes.   Takeaway: The sufficiency of evidence corroborating an inventor’s testimony of conception of …

PTAB Erred by Relying on Inherency in Making Obviousness Determination Without Finding that the Limitation at Issue was Necessarily Present

SOUTHWIRE V. CERRO WIRE: Sep. 8, 2017. Before Lourie, Moore, and Hughes.   Takeaways: The Federal Circuit held that the Patent Trial and Appeal Board erred in relying on inherency in making a determination of obviousness, because PTAB did not find that the Summers reference necessarily would achieve a 30% reduction …