Category: Civil Procedure  
By: Roy Rabindranath, Contributor
TitleABB Turbo Systems AG v. TurboUSA (Fed. Circ., Dec. 17, 2014).
Issue[…] the only issue we need to address is whether the district court erred in dismissing the trade-secret claim against TurboUSA and Willem Franken.
ABB Turbo, at * 6 (text added).
HoldingWe reverse [the district court’s ruling dismissing the trade-secret claim against the defendants], concluding that the district court relied on judgments about the merits that go beyond what is authorized at the complaint stage. We remand for further proceedings.
Id. at *2 (text added).
Category: Administrative Law  
By: Christian Hannon, Contributor
TitlePresident & Fellows of Harvard v. Lee, No. 2013-1628 (Fed. Cir. Oct. 29, 2014) (Non-Precedential).
Issue[Is there] evidence that [Harvard] had [not actually] paid the requisite terminal disclaimer fee [for U.S. Patent No. 5,087,571 (the '571 patent)] and that, as a result, the terminal disclaimer was not legally entered into the prosecution history for the ’571 patent and was therefore invalid.
President & Fellows of Harvard, at *4.
HoldingWe conclude that the evidence as a whole provides a rational basis for the PTO’s conclusion that the terminal disclaimer fee was paid. As such, we find that the district court properly concluded that the PTO’s decision was not arbitrary or capricious.
Id. at *9.
Category: 103 
 By: Michael Pierorazio, Contributor
TitleI/P Engine, Inc. v. AOL Inc., No. 2013-1307, -1313 (Fed. Cir. Aug. 15, 2014) (non-precedential).
[The Obviousness Determination] The Google Defendants argue that I/P Engine’s claimed invention is obvious as a matter of law because it simply combines content-based and collaborative filtering, two information filtering methods that were well-known in the art.
I/P Engine, Inc., at *8.
[The Jury’s Findings] I/P Engine points to the fact that the jury found that there were differences between the prior art and the claimed invention[…], and argues that on appeal “the only question is whether substantial evidence supports the jury’s findings.”[…].
Id. at *16 (internal citations omitted).
[Secondary Conditions] […] I/P Engine’s argument that the commercial success of Google’s accused advertising systems provides objective evidence of non-obviousness.
Id. at *18.
[The Obviousness Determination] [T]he prior art contained explicit statements describing the advantages of combining these two filtering techniques, and […] it would have been obvious to include a user’s query in the filtering process[…]. We […] hold that no reasonable jury could conclude otherwise.
I/P Engine, Inc., at *8 (internal citations omitted).
[The Jury’s Findings] [W]hile the jury made underlying determinations as to the differences between the asserted claims and the prior art, it did not address the ultimate legal conclusion as to obviousness. Thus, while the jury found that the prior art did not disclose all of the elements of the asserted claims[…], it never determined whether it would have been obvious to one skilled in the art to bridge any differences between the prior art and the claimed invention[…].
Id. at *17 (internal citations omitted).
[Secondary Conditions] We find no merit in I/P Engine’s argument that the commercial success of Google’s accused advertising systems provides objective evidence of non-obviousness. Evidence of commercial success, or other secondary considerations, is only significant if there is a nexus between the claimed invention and the commercial success. […]. Id. at *18 (footnote omitted)(internal citations omitted) )(internal quotation marks omitted). Accordingly, secondary considerations cannot overcome the strong prima facie case of obviousness[…]. Id. at *19 (footnote omitted)(internal citations omitted).
Category: Claim Construction 
By: Jesus Hernandez, Blog Editor/Contributor   
TitleFenner Inv., Ltd. v. Cellco Partnership, No. 2013-1640 (Fed. Cir. Feb. 12, 2015).
IssueThe district court’s definition of “personal identification number” is the issue on this appeal. Fenner argues that the district court erred by construing “personal identification number” as a number that is associated with the individual user and not with the device. Fenner argues that the plain meaning of “personal identification number” does not contain or require this limited definition,
Fenner Inv., Ltd., at *4.
HoldingWe affirm the judgment [since the written description and prosecution history describe the “personal identification number” to be associated with individual users, and the doctrine of claim differentiation may not expand construction beyond that which is taught by the specification].
Id. at *2(text added).
A Triumph of Genius,By: Ronald K. Fierstein

Review by Roland Casillas

With the amount of interesting facts that were packed into this book, it is hard to create a chronological summary of what developed throughout Edwin Land’s life and occupation. But, each chapter sheds new light into one of the largest legal battles of the century. The story develops a picture perfect company, Kodak, assisting a newly formed company, Polaroid, to create an innovative product that will change the face of photography.

Category: Claim Construction 
By: Jesus Hernandez, Blog Editor/Contributor  
TitlePacing Tech., LLC v. Garmin Int'l, Inc., No. 2014-1396 (Fed. Cir. Feb. 18, 2015).
IssueOn appeal, the parties dispute whether the asserted claims require the claimed devices to play back the pace information using a tempo, such as the beat of a song or flashes of light. This dispute turns on whether the preamble to claim 25 is limiting and on the construction of a “repetitive motion pacing system” as recited in the preamble.
Pacing Tech., LLC, at *4.
HoldingWe hold that the preamble to claim 25, which reads “[a] repetitive motion pacing system for pacing a user...,” is limiting [because the preamble terms “user” and “repetitive motion pacing system” limit the claims, and the embodiments discussed in the specification disavow an interpretation beyond that which is disclosed].
Id. at *5 (text added).

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