PTAB’s Adoption of Petitioner’s Arguments Regarding Modification of a Prior Art Reference Held Minimally Sufficient to Support its Obviousness Determination

IGNITE USA, LLC v. CAMELBAK PRODS., LLC: October 12, 2017 (non-precedential). Before Prost, Wallach, and Taranto.   Takeaway: PTAB’s adoption of Petitioner’s obviousness arguments in its opinion was “sufficient, if minimally,” to explain the connection between its factual findings and legal conclusion of obviousness. Procedural Posture: CamelBak Products, LLC petitioned for …

Even Groundbreaking Medical Discoveries May Not Be Patentable

THE CLEVELAND CLINIC FOUNDATION, CLEVELAND HEARTLAB, INC., v. TRUE HEALTH DIAGNOSTICS LLC: No. 2016-1766; June 16, 2017.  Before Lourie, Reyna, and Wallach. Takeaway: Patent claims directed to observing a law of nature are patent-ineligible subject matter even if based on a valuable discovery. Service providers cannot be liable for contributory infringement if …

The District Court Properly Exercised Subject Matter Jurisdiction and Granted Summary Judgment Notwithstanding the Plaintiff’s Execution of a Covenant not to Sue that Appeared to be Unconditional

ARCELORMITTAL V. AK STEEL CORP.:  May 16, 2017. Before Hughes (majority), Wallach (dissent), and Moore.   Takeaway: CAFC affirmed the district court’s ruling that it had the subject matter jurisdiction necessary to deny plaintiff’s motion to dismiss and grant summary judgment of invalidity. CAFC found that a facially unconditional covenant not …

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 …