Federal Circuit Reaffirms the Board’s Decision to Terminate a Reexamination As to Only Litigated Claims in a Civil Action

IN RE AFFINITY LABS OF TEXAS, LLC: May 5, 2017. Before Taranto, Chen, Stoll. Takeaway: The estoppel provision under 35 U.S.C. 317(b) does not extend to all parties and all claims, but rather only to an inter partes requester that was a party to the civil action (or its privies) …

Federal Circuit Affirms the PTAB’s Decision Finding the Patent Claims Unpatentable as Obvious Where the Patent Owner Did Not Demonstrate that the Board Violated the Administrative Procedure Act Requirements of Notice and an Opportunity to Respond

NOVARTIS AG, MITSUBISHI PHARMA CORP., v. TORRENT PHARM. LTD.:  April 12, 2017. Before Taranto, Chen, and Stoll. (precedential). Takeaways: The Patent Trial and Appeal Board did not violate the requirements of notice and an opportunity to respond found in the Administrative Procedure Act when it relied on a prior art …

Induced Infringement Requires the Inducer to Successfully Communicate With and Induce a Third-Party Direct Infringer

POWER INTEGRATIONS v. FAIRCHILD SEMICONDUCTOR: Dec. 12, 2016. Before Prose, Schall, Chen.                                                              Takeaway: A party cannot be liable for induced infringement where it does not successfully communicate with and induce a third-party direct infringer. Where a finding of infringement by equivalence would entirely vitiate a particular claimed element, such …

A Claimed Solution That Merely Aids in Mental Translation Instead of Computer Efficacy is Not an Inventive Concept Under Alice

Authored by Rose Cordero Prey, Michael Block, Jean Dassie and Vaibhav Sharma SYNOPSIS v. MENTOR GRAPHICS: Oct. 17, 2016. Before Lourie, Moore, Chen. The Takeaway: Claims directed to the abstract idea of translating a functional description of a logic circuit used in computers into a hardware component description of the logic …

Federal Circuit Agrees with District Court in a Dispute over Inventorship of Patents Directed to Removal of Volatile Fuel Vapors from Storage Tanks

Authored by Rose Cordero Prey, Ksenia Takhistova and William Uhr VAPOR POINT LLC V. MOORHEAD, Nos. 2015-1801, 2015-2003 (Fed. Cir. Aug. 10, 2016) (precedential).  On appeal from S.D. Tex. Before O’Malley, Chen, and Stoll. Per curiam. Procedural Posture: Plaintiff Vapor Point sued seeking recognition of two individual plaintiffs, Mr. Nathan …