PTAB Cannot Treat Pre-AIA Means-Plus-Function Limitations As Purely Functional Under the Broadest Reasonable Interpretation Standard

IPCOM GMBH & CO. v. HTC CORPORATION: July 7, 2017. Before Prost, Clevenger, Chen. Takeaway: Pre-AIA §112 ¶ 6 (means-plus-function) claim construction analysis requires that the Board not only identify the particular claimed function, but also identify the corresponding structure, material, or acts that perform that function in the specification. …

Expenses Incurred by Government Attorneys during a 35 U.S.C. § 145 Appeal Can Be Recovered by the USPTO

NANTKWEST, INC. v. MATAL: June 23, 2017.  Before Prost, Dyk, and Stoll.   Takeaway: Expenses incurred by USPTO during a 35 U.S.C. § 145 appeal include a pro-rata share of the incurred attorneys’ fees. The American Rule denying attorneys’ fees to the prevailing party does not apply when applicable statute specifically and …

Enablement from a Provisional Application Must Be Supported by the Disclosure and Not Require Undue Experimentation by a Person Having Ordinary Skill in the Art

STORER v. CLARK: June 21, 2017.  Before Prost, Newman, and Dyk.   Takeaway: In order for a non-provisional patent application to be enabled by the provisional patent application from which it takes priority, the disclosure in the provisional patent application must enable one having ordinary skill to produce the claimed …

Federal Circuit Orders Google Patent Case Transferred from E.D. Tex.

IN RE GOOGLE: Feb. 21, 2017. Before Prost, Lourie, and Linn (dissenting). Takeaway: On a motion to transfer, the existence of related, co-pending litigations does not automatically outweigh all other factors and considerations in the transfer analysis. Procedural Posture: Google petitioned the CAFC for a writ of mandamus following denial …

Federal Circuit Affirms Induced Infringement and No Validity of the Asserted Patent, the Inducement Being Determined in Accordance with an Interim En Banc Decision by the Court

    ELI LILLY AND CO. v. TEVA PARENTERAL MEDICINES, INC., No. 2015-2067 (Fed. Cir. January 12, 2017) (precedential).  On appeal from S.D. Ind. Before Prost, Newman, and Dyk. Procedural Posture: Plaintiff Eli Lily filed a Hatch-Waxman lawsuit against a group of generic pharmaceutical companies, including Teva, to prevent Defendants from …