Posts Tagged: "Judge Alvin Schall"

The Court vacated the judgment against Mankes and remanded the case for further consideration. Because the law was in a state of flux, the Plaintiff pled facts that arguably would have supported an infringement theory under the law applicable when it was filed. The plaintiff could not have known the facts necessary to support a complaint under the law as it exists now. Because of this, the Court declined to affirm or reverse, and instead remanded the case to the district court for reconsideration under the new standards. Presumably, this would also give the Plaintiff an opportunity to amend the complaint.

The Court affirmed the Board’s finding that one Figure and certain passages in the description of the reference disclosed a limited number of elements and suggested combining them in a manner that anticipated the system claimed by Blue Calypso. Thus, “a reference may still anticipate if that reference teaches that the disclosed components or functionalities may be combined and one of skill in the art would be able to implement the combination.” This was an anticipation, without resort to obviousness, because the reference sufficiently disclosed making the combination, though not expressed a single embodiment or example.

Imaginal appealed, arguing that the district court improperly construed the disputed claim language, because: because it: (1) ignored the written description and claim language; (2) relied too heavily on general purpose dictionary definitions; and (3) improperly excluded a preferred embodiment. The Federal Circuit disagreed. It held that nothing in the patent claims or specification restricted the vision guidance system to only one particular system that is excluded from the claims (“without”). Accordingly, the Federal Circuit affirmed.

While Dome’s argument against obviousness based on Tanaka teaching away was plausible, it was not sufficient to overcome the district court’s factual findings that a person of ordinary skill would have been motivated to combine the identified prior art to arrive at the claimed invention. Accordingly, the Federal Circuit affirmed.

Applying KSR, the Federal Circuit concluded that combining elements from the cited prior art would have yielded a predictable result, namely the system fan would activate periodically following the end of a heating or cooling cycle as claimed in the ‘017 patent. The Court further found motivation or rationale for combining the references in the nature of the problem addressed. The Federal Circuit also rejected ABT’s arguments regarding the objective evidence of nonobviousness, namely commercial success and long felt need.