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 …

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) …

Lack of Meaningful Competition Between the Parties Weighed Against Conclusion of Irreparable Harm, Leading to Denial of Permanent Injunction

Nichia Corp. v. Everlight Americas, INC., No. 2016-1585, 2016-1618 (Fed. Cir. April 28, 2017) (precedential).  On appeal from E.D. Tex.  Before Reyna, Hughes and Stoll. Takeaway: Lack of meaningful competition between the parties weighs against conclusion of irreparable harm. Procedural Posture: Nichia, the owner of U.S. Patent Nos. 8,530,250, 7,432,589, …

Claims Directed to Encoding and Decoding Image Data Held Patent-Ineligible

RecogniCorp, LLC v. Nintendo Co., Ltd., No. 2016-1499 (Fed. Cir. April 28, 2017) (precedential).  On appeal from W. D. Wash. Before Lourie, Reyna, and Stoll. Takeaway: Adding one abstract idea (mathematical equation) to another abstract idea (encoding and decoding) does not render the claim non-abstract. A claim directed to an abstract …

Shoulder Replacement Apparatus Not Anticipated by Prior Art Requiring Modification to Satisfy Claim Language

IN RE: CHUDIK: March 27, 2017. Before Dyk, Reyna, and Stoll. Takeaway: A prior art reference that must be distorted from its obvious design does not anticipate claims. Procedural Posture: In an appeal from the USPTO where the PTAB affirmed the examiner’s rejection of Chudik’s claims as anticipated by two …