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) …

Patent Claiming Antidote for Acetaminophen Overdoses Not Invalid as Either Derived From Another or Obvious Over the Prior Art

CUMBERLAND PHARMS. INC. v. MYLAN INSTITUTIONAL LLC:  Jan. 26, 2017.   Before Moore, Reyna, and Taranto. Takeaway: To prove that a claimed invention was derived from another, a defendant must show that the specific invention was previously conceived by someone else and then communicated to the named inventor. There is no …

Prior Art Disclosing a “Chain of Stores” Does Not Anticipate a Patent Limited to a “Single Merchant”

D’AGOSTINO v. MASTERCARD INTERNATIONAL: Dec. 22, 2016. Before Taranto, Linn, and Stoll. Takeaway: A patent with a “single merchant” limitation is not anticipated by a prior art reference that disclosed an embodiment directed to a “chain of stores.” Procedural Posture: On appeal from the PTAB’s decision in an IPR finding …

Plaintiff Unable to Meet Relaxed Standard Under Akamai for Direct Infringement of Method Claims

MEDGRAPH v. MEDTRONIC: Dec 13, 2016. Before Lourie, Plager, and Taranto.  Takeaway: Under Akamai V, infringement of a method claim requires the plaintiff to show that the defendant conditioned the use of, or receipt of a benefit from, defendant’s system on the performance of all of plaintiff’s method steps. Procedural …

Federal Circuit Affirms Obviousness of Audible Caller ID Claims in Inter Partes Reexam

Authored by Rose Cordero Prey, Jonathan Thomas, and William Uhr CLASSCO, INC. V. APPLE, INC., No. 2015-1853 (Fed. Cir. Sep. 22, 2016) (precedential).  On appeal from the PTAB. Before Taranto, Bryson, and Stoll. Procedural Posture: Patentee appealed from a decision of the Board affirming an examiner’s rejection of certain claims …