Fresh From the Bench: Latest Federal Circuit Court Cases

Welcome to the new look of Fresh from the Bench, Schwabe’s weekly roundup of precedential intellectual property decisions from the Court of Appeals for the Federal Circuit. We are pleased to take over the editor responsibilities from Pete Heuser, who started this newsletter and has dutifully managed it over the years.

Each week we will feature a Case of the Week, with an extended write-up of a significant, precedential decision issued by the Court. That will be followed by short synopses of any other precedential decisions issued that week. This week, the Federal Circuit issued only one precedential decision, which we have summarized below.

We hope you find this resource helpful. Should you have any comments or questions, please do email them along at any time.

Scott and Nika

CASE OF THE WEEK

Paice LLC, The Abell Foundation, Inc. v. Ford Motor Company (Fed. Cir. Feb. 1, 2018)

In Paice LLC, The Abell Foundation, Inc. v. Ford Motor Company, the Federal Circuit vacated the Patent Trial and Appeal Board’s (PTAB) obviousness determination following inter partes review (IPR) proceedings related to patents for hybrid vehicles. The decision was the latest in several legal disputes between Ford Motor Company, Paice LLC, and Abell Foundation, Inc. (a Baltimore philanthropic organization and Paice investor).

A key issue in the case was the priority date for the patent claims. The asserted prior art preceded the patent’s application date, but the patent claimed priority to an earlier-filed application (the “’817 application”), which predated the prior art. The court noted “[f]or claims to be entitled to a priority date of an earlier-filed application, the application must provide adequate written description support for the later-claimed limitations.”

The ’817 application itself did not provide written description support for the asserted claims. But it purported to incorporate another patent (“Severinsky”) by reference, and Paice asserted that the ’817 application, with Severinsky included, provided the necessary written description support for the claims at issue. Thus, a critical issue was the extent to which Severinsky was incorporated by reference.

Weekly contributor Angela Addae