Fresh From the Bench: Latest Federal Circuit Court Cases
CASE OF THE WEEK
SimpleAir, Inc. v. Google LLC, Appeal No. 2016-2738 (Fed. Cir. 2018)
In SimpleAir, Inc. v Google LLC, the Federal Circuit vacated a district court’s motion to dismiss pursuant to Rule 12(b)(6). The District Court had held that claim preclusion and the Kessler doctrine barred SimpleAir’s complaint concerning a continuation patent based on a judgement of noninfringement in Google’s favor for a previously adjudicated parent patent.
During prosecution of the continuation, SimpleAir filed a terminal disclaimer in response to an office action asserting that the continuation and the parent patent were not patentably distinct, and therefore the continuation was subject to a double patenting rejection. After submitting the terminal disclaimer, the continuation issued and SimpleAir asserted it in a new lawsuit against Google. Google filed a motion to dismiss based on issue preclusion and the Kessler doctrine, arguing that the previous lawsuit over the parent patent barred assertion of the continuation.
ALSO THIS WEEK
Steuben Foods, Inc. v. Nestle USA. Inc., Appeal No. 17-1290 (Fed. Cir. 2018)
In an appeal from an inter partes review, the Court addressed whether the PTAB had erred in its claim construction and its finding that the patent at issue was obvious. The Court affirmed the PTAB’s decision, holding that its construction of “sterilant concentrations levels” was not overly broad. A narrower construction, it held, would have restricted the claim term to a specific embodiment disclosed in the specification. The Court also affirmed the PTAB’s finding that claims were unpatentable as obvious, in part based on that construction.
Nestle USA Inc. v. Steuben Foods, Inc., Appeal No. 17-1193 (Fed. Cir. 2018)
In an appeal from a separate inter partes review, the Court addressed the effect of collateral estoppel when the disputed term has already been construed in an appeal involving a related patent. The Court held that, because the two patents at issue provided identical lexicography for the disputed term, collateral estoppel applied to the construction of the disputed claim term.
Hologic, Inc. v. Smith & Nephew, Inc., Covidien LP, Appeal No. 17-1389 (Fed. Cir. 2018)
In an appeal from the United States Patent and Trademark Office, the Court addressed whether the Patent Trial and Appeal Board (PTAB) erred in its finding that an earlier-filed PCT application had sufficient written description to make it a priority document instead of an invalidating obviousness reference. The Court affirmed that the patent at issue was entitled to claim priority to the earlier filed PCT application, and as such, the PCT application is not prior art under pre-AIA Section 102(b). The Court also affirmed the PTAB’s reversal of a corresponding obviousness rejection.
Written by:
Scott D. Eads and Nika F. Aldrich, Schwabe, Williamson & Wyatt
Contributors:
Cristin Wagner, Karri Kuenzli Bradley, and Michael A. Cofield