Posts Tagged: Chief Judge Sharon Prost


Court affirms TTAB refusal to register ‘FIRST TUESDAY’ trademark for NC Lottery

In re N.C. Lottery, Appellant North Carolina Lottery (“N.C. Lottery”) sought to register the mark “FIRST TUESDAY” in connection with lottery services and games to …

Music Artist will.i.am Cannot Trademark “I Am”

In re i.am.symbolic, llc, William Adams, better known by his stage name “will.i.am”, was refused registration of a Trademark for “I AM” on …

Where parties dispute proper scope of claims, Board must provide an explicit claim construction

The Board declined to provide a construction of “settling speed” and determined that the claims were not invalid as anticipated. Homeland appealed... When parties dispute the proper …

Federal Circuit invalidates another patent upheld at PTAB after IPR

The Federal Circuit issued a decision in Homeland Housewares, LLC v. Whirlpool Corporation, which ought to be completely unnerving to every owner of a U.S. patent …

Federal Circuit says Will.i.am not allowed to trademark I AM

William Adams is the well-known front man for the music group The Black Eyed Peas and is known as will.i.am. Adams’ company – i.am.symbolic, …
By Gene Quinn
14 days ago 0

Further Study Does Not Undermine Reasonable Expectation of Success; ‘Absolute Predictability’ is Not Required

A reasonable expectation of success in combining references to obtain the claimed invention does not require absolute certainty or predictability. As a result, an invention is not …

Federal Circuit declares Regeneron patent unenforceable due to inequitable conduct

The Federal Circuit issued a decision in Regeneron Pharmaceuticals, Inc. v. Merus N.V. upholding the determination that the patent owned by biotech firm Regeneron was unenforceable. …
By Steve Brachmann & Gene Quinn
22 days ago 0

PTAB’s Claim Construction Regarding Means-Plus-Function Limitation Was Erroneous

The Federal Circuit vacated and remanded the Board’s finding of obviousness of certain challenged claims based on a means-plus-function limitation, affirmed the Board’s finding of …

Generic Examples of Claimed Compounds Do Not Satisfy Enablement Requirement

On June 21, 2017, In Storer v. Clark, the Federal Circuit affirmed a Patent Trial and Appeal Board’s interference decision, which awarded priority to Clark’s pending application (…

PTAB Appellants Must Pay USPTO’s Attorneys’ Fees Regardless of Outcome of Appeal

In Nantkwest v. Matal, the Federal Circuit reversed the Eastern District of Virginia’s denial of the USPTO’s request for attorneys’ fees in connection with Nantkwest’…

CAFC: Exclusive license must include provisions establishing minimum contacts for personal jurisdiction

In New World International v. Ford Global Techs, FGTL sued New World for patent infringement in Michigan. New World countersued in Texas, seeking a declaratory judgment that …

Federal Circuit Reverses and Remands District Court’s Refusal to Award Attorney Fees

Rothschild sued ADS for patent infringement of Rothschild’s patent related to a home security system. The district court granted Rothschild’s motion to dismiss and denied …

Cisco Successfully Invalidates Patent for Lack of Written Description

Cisco challenged Cirrex’s patent via inter partes reexamination, asserting a lack of written description. The Board affirmed the Examiner’s findings, that the patent, as amended, …

Federal Circuit Refuses to Overturn District Court’s Award of Attorney Fees to Dow

The Court disagreed that the district court’s sole basis for finding exceptional circumstances was that NOVA filed an action in equity. The Court noted that the …

En Banc Federal Circuit Dodges PTAB Constitutionality

Patlex, which dealt with reexamination of applications by an examiner — not by an Article I tribunal — could be considered a next step beyond McCormick. MCM, however, simply …
By Gene Quinn
3 months ago 38