CAFC emphasizes “would have motivation” in obviousness determinations from Inter Partes Reviews

Michael Caridi | November 11, 2015

Belden, Inc. v. Berk-Tek, LLC

November 5, 2015

CAFC Panel and opinion author: Before Newman, Dyk and Taranto. Opinion by Taranto


In an appeal from an Inter Partes Review, the CAFC rejected all claims of the ‘503 patent as being obvious over the prior art, emphasizing that the test for obviousness focuses on whether the skilled artisan would have a motivation to modify or combine the prior art disclosures to reach the claimed invention. The Court further upheld the authority of the Board to allow for consideration of a late filed Declaration by the Petitioner.

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Digital data is not considered “article” within the meaning of Section 337

Kumiko Ide | November 11, 2015

Clearcorrect Operating, LLC, et al. v. ITC, et al.

November 10, 2015

Judges: Prost, Newman, O’Malley
Majority opinion by Prost
Concurring opinion by O’Malley
Dissenting opinion by Newman


The Congress enacted 19 U.S.C. §1337 (“Section 337”) to regulate international commerce, intending it to be an enforcement statute to stop at the border the entry of goods, i.e., articles, that are involved in unfair trade practices. In this case, the purported “article” found to have been imported was digital data that was transferred electronically. The CAFC’s majority opinion concluded that digital data is not considered “article” covered by Section 337, and therefore, ITC does not have jurisdiction over the case.

19 U.S.C. §1337(337条)は、侵害製品等、不公正な貿易に関わる製品を国境において差し止めることを目的とする、通商を規制する法律である。本件において、ITCは、電子的に米国内に輸入されたデジタルデータは特許を侵害しているため、337条違反が行われたと認定した。しかし、CAFCは、電子データは、337条の「製品(article)」の定義には当てはまらないとして、国境を越えて輸入された電子データは、ITCの管轄下ではないと結論付けた。

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Timeliness of IPR petition under §315(b) is an issue of whether to initiate the proceeding, and Board’s determination is nonappealable under §314(d), and the court cannot review it.

Sadao Kinashi | October 21, 2015

Achates Reference v. Apple Inc.,

September 30, 2015

CAFC Panel and Opinion Author: PROST, LOURIE and LINN (Author)


The patentee, Achates sued QuickOffice and others for patent infringement. One year later, Achates joined Apple as a codefendant. Several months later, Apple filed petitions for IPR in USPTO against each of the patents. Achates argued that Apple had a relationship with QuickOffice based on their blank indemnification agreement and that such relationship caused Apple’s petitions for IPR to be time-barred under 35 U.S.C. § 315(b). CAFC held that timeliness of the petition for IPR under §315(b) is an issue of whether to initiate the proceeding, and Board’s determination is nonappealable under §314(d), and the court cannot review it.

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A guide for the international patent attorney: how to read the recent CAFC en banc decision on laches–a viable defense against patent infringement, for the time being

Le-Nhung McLeland | October 19, 2015

SCA Hygiene Products Aktiebolag v. First Quality Products, LLC

September 18, 2015

Introductory note from the author of this review: When I read this decision, it struck me that the legal analysis is based on concepts and distinctions which may not be clearly appreciated by someone not familiar with the “common law” tradition, the co-existence of remedies “at law” and remedies in “equity”, and the underlying principle of “separation of powers” in the federal government in the U.S. This en banc decision is very important, so there have been already numerous reports on the decision. I hope to contribute, in the form of the interspersed “notes” below, background information which may shed more light on the decision for our international colleagues. Le-Nhung McLeland

En banc decision: Opinion for court by Prost, joined by Newman, Lourie, Dyk, O’Malley, and Reyna. Opinion concurring-in-part, dissenting-in-part by Hughes, joined by Moore, Wallach, Taranto, and Chen. Judge Stoll did not participate in decision.

Note: Twenty three “amicus curiae” briefs were received in this case, which is a measure of its importance. The briefs were submitted on behalf of patent professional associations, as well as a broad range of corporations including Hewlett-Packard, Intel Corporation, Xerox Corporation, Johnson & Johnson, AT&T Mobility II LLC, T-Mobile USA, Roche Molecular Systems, Harley-Davidson Motor Company, and Rockwell Automation, Inc. The en banc majority refers to some of these briefs, in the body of the opinion or in footnotes.

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