Firebug runs into “one big world full of no” at the Federal Circuit

Firebug v Stride Rite Appeal Nos. 2019-1622, 2019-1623, Fed. Cir. June 25, 2020 Shoes by Firebug (“Firebug”) owns US Patent Nos. 8,992,038 (“‘038 patent”) and 9,301,574 (“‘574 patent”), directed to improved illumination systems for footwear.  Specifically, both patents describe footwear comprising a sole and three-layer upper – including a liner, interfacing layer and light diffusing […]

Federal Circuit provides illustrative application of InTouch Techs

In support of the proposition that “The obviousness inquiry does not merely ask whether a skilled artisan could combine the references, but instead asks whether “they would have been motivated to do so.”  InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014).  I have often used Belden Inc. v Berk-Tek […]

While declining to adopt a “bright-line test that mental processes capable of being performed by fish are not patent eligible”

The Federal Circuit nonetheless determines that claims directed to a method of fishing are directed to an abstract idea.  In re Rudy, Appeal No. 2019-2301, Fed. Cir., April 24, 2020. But kudos to the pro se inventor’s persistence.  The application at issue – USSN 07/425,360 – was filed in October 21, 1989 and has thus […]

“Configured to” is not indefinite, even if subject to multiple interpretations

So held the Federal Circuit in Nevro Corp. v. Boston Scientific, Appeal Nos. 2018-2220, 2018-2349, Fed. Cir., April 9, 2020, while similarly throwing a lifeline to “parathesia-free” (rejecting BSC’s argument that the claims are indefinite because infringement can only be determined after using the device or performing the method), “means for generating” and “therapy signal”. […]

Federal Circuit reverses PTAB, citing “erroneous interpretation” of claim language and “misunderstanding” of precedent

Tech Con Prod v Light Science, Appeal No. 2019-1361, Fed. Cir. April 8, 2020. Lighting Science Group Corp. (“LSG”) owns US patent no. 8,201,968 (the “‘968 patent”) directed to retrofit LED light fixtures that accommodate a variety of housing shapes and sizes, while yet maintaining a low profile when installed.  To this end, the claim […]

License drafters beware – patents may be subject to implied license if grandparents and uncles are expressly licensed

Cheetah v AT&T, Appeal No. 2019-1264, Fed. Cir., February 6, 2020. Cheetah Omni LLC (“Cheetah”) sued AT&T for patent infringement, and Ciena Communications intervened, as a manufacturer and supplier of allegedly infringing parts to AT&T.  AT&T and Ciena filed for summary judgement based on the allegation that the patent allegedly infringed was part of a […]

Genentech v. Iancu – another reminder that narrower, but valid, claims are preferable to broader, but invalid ones

Genentech v. Iancu, Appeal Nos. 2019-1263, 2019-1267, Fed. Cir., March 26, 2020. Genentech owns US Patent Nos 7,846,441 and 7,892,549, directed to the treatment of cancer with a combination of an antibody and a taxoid, without anthracycline.  The patents share a specification, and the claims of each require that the combination be administered in an amount […]

BASF patent gets a second chance at the Federal Circuit

basf-corp-v-snf-holding-company, Appeal No. 2019-1243, Fed. Cir. April 8, 2020. BASF owns US patent 5,633,329 (the “‘329 patent”), directed to an process of preparing super absorbing polymers, which have a tendancy to stick to the walls of the reactor in which they are manufactured.  The ‘329 patent claims a method of making the polymers, using a […]

Chalk holder that looks like a pencil a four time loser at the Federal Circuit

Lanard Toys v Dolgencorp, Appeal No. 2019-1781, Fed. Cir. May 14, 2020 Lanard Toys makes and sells the “Lanard Chalk Pencil”, a chalk holder that looks like a pencil.  Lanard obtained Design patent D671,167 directed to the ornamental features of the chalk holder, and also owns copyright Reg. Va 1-794-458.  Lanard began selling their Chalk […]

UPDATE – Federal Circuit denies HZNP’s request for en banc review

In HZNP Medicines LLC et al. v Actavis Laboratories UT, Inc., 940 F.3d 680 (Fed. Cir. 2019), a Federal Circuit panel affirmed the district court’s holding that the transitional phrase “consisting essentially of” rendered the claims at issue indefinite.  See, my previous post here –  On February 25, 2020, the Federal Circuit denied HZNP’s […]