When the Examiner Agrees With an Attorney’s Argument Presented in an Inter Partes Reexamination, But Cites to No Substantial Evidence, There is no Factual Basis for the Examiner’s Finding That Patent Claims are Unpatentable as Being

Icon Health v. Strava, (2016-1475) February 27, 2017.  Before Judges O’Malley (concurring-in part and dissenting-in-part), Reyna, and Wallach. Takeaway: In order to withstand a challenge on appeal, a determination by the PTAB that the claims of a patent would have been obvious must be supported by substantial evidence, and be …

District Court Correctly Analyzed Likelihood of Success and Irreparable Harm Elements When Granting Preliminary Injunction

TINNUS ENTERPRISES, LLC V. TELLEBRANDS CORP.: Jan. 24, 2017.  Before Moore, Wallach, and Stoll. Takeaway: Instruction manuals that teach a claim element can be used as circumstantial evidence of a customer’s direct infringement. Claim terms are not indefinite when the claims themselves provide parameters for determining whether the disputed limitation …

Graphical User Interface Improvements Without Pre-Electronic Analog Found Patent Eligible

TRADING TECHS. INT’L, INC. v. CQG, INC.: Jan. 18, 2017. Before Newman, O’Malley, Wallach. Takeaway: A new application or computer-implemented function is patent eligible when it is not simply the use of a computer to conduct a known process, but rather improves the whole system’s capability. Procedural Posture: Judge Coleman …

Federal Circuit Dismisses the Appeal of the PTAB’s Decision in an Inter Partes Review Because the Appellant Lacks Standing

PHIGENIX, INC. v. IMMUNOGEN, INC., No. 2016-1544 (Fed. Cir. January 9, 2017) (precedential).  On appeal from PTAB.  Before Dyk, Wallach, and Hughes. Procedural Posture: Appellant Phigenix sought IPR of U.S. Patent No. 8,337,856 (“the ’856 patent”), alleging obviousness in view of the provided prior art. In its final written decision, the …

Permanent Injunction is not Overly Broad Where the Plaintiff Would Not Enforce the Injunction Against Noninfringing Uses

UNITED CONSTRUCTION PRODUCTS  v. TILE TECH: Dec 15, 2016. Before Moore, Wallach, and Stoll.                                                             Takeaway: The plain language of the …