Posts Tagged: "Chief Judge Sharon Prost"

the Federal Circuit also upheld a controversial ruling of the PTAB, which determined that the United States has standing to bring a CBM challenge. Legally speaking, the United States, or in this case the United States Postal Service, is considered a “person” within the meaning of AIA § 18(a)(1)(B). To put this into perspective, despite the fact that the America Invents Act (AIA) does not specifically identify the United States as qualifying to be considered a “person” under AIA § 18(a)(1)(B), and despite the fact that the United States Supreme Court has unequivocally ruled that a sovereign such as the United States government is not a “person” absent an explicit statement of intent by Congress, the Federal Circuit (over a convincing and persuasive dissent from Judge Newman) decided that the United States federal government can challenge patents issued by the United States federal government in a post grant CBM proceeding.

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 market the introduction of new scratch-off lottery games on the first Tuesday of every month. The Trademark Trial and Appeal Board denied the registration and N.C. Lottery appealed… The Court affirmed the Board’s decision refusing to register FIRST TUESDAY.

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 the ground of a likelihood of confusion with registered marks. The Federal Circuit affirmed the Trademark Trial and Appeal Board… Identical registrations for the same or similar goods may present overwhelming evidence of likelihood of confusion, regardless of other factors supporting registration.

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 scope of claims, the Board must provide an explicit claim construction. The Court may construe the claims de novo. When comparing prior art evidence to properly construed claims, the Court may disregard expert testimony if it is plainly inconsistent with the written record, even if the testimony was unrebutted.

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 grant. Hearing an appeal from a decision of the Patent Trial and Appeal Board (PTAB), the panel voted 2-1 in favor of Homeland Housewares and overturned a final written decision that had confirmed that challenged claims from a Whirlpool patent were valid. So even when a patent owner manages to escape the clutches of the PTAB and prevails no patent is ever truly safe any longer. A dissent was filed by Judge Newman, who chastised the majority for rewriting the claims of the patent in a way that more broadly stated the invention than did the patentee.

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, llc – already owns trademarks on WILL.I.AM for certain goods and services, and also the mark I AM (typed drawing) for clothing in class 25. The trademark examining attorney refused registration of the standard character trademark I AM on the ground of likelihood of confusion with existing registered trademarks. The Trademark Trial and Appeal Board affirmed. Because the TTAB did not err in its likelihood of confusion conclusion the Federal Circuit, in an opinion by Judge Lourie (joined by Chief Judge Prost and Judge Schall) affirmed.

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 non-obvious simply because persons of ordinary skill in the art continues to study aspects of the claimed invention after an initial disclosure. Rather, conducting additional or follow-up studies can be strong evidence that success is expected or likely.

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. The decision affirmed a lower court’s finding based on Regeneron’s inequitable conduct during prosecution of the patent at the U.S. Patent and Trademark Office (USPTO), which was the result of the withholding of references from the USPTO that had but-for materiality. The patent, which the Federal Circuit deemed unenforceable, is U.S. Patent No. 8502018, titled Methods of Modifying Eukaryotic Cells.

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 obviousness as to other challenged claims and affirmed the Board’s findings that the prior art discloses all other limitations of the challenged claims on appeal… In a patentability determination, the Board must identify the structure of a means-plus-function limitation disclosed in the specification; it is insufficient to merely disagree with patentee’s arguments. Additionally, if a practitioner reopens prosecution and amends claims during inter partes reexamination, additional prior art can be cited against the amended claims.

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 (filed May 30, 2003) over Storer’s issued patent. The Court found that Storer’s earlier provisional application (filed June 28, 2002) did not enable the subject matter of Storer’s interfering claims… To satisfy the enablement requirement, applicants should provide either explicit examples of claimed compounds or direction or guidance on how to synthesize the claimed compounds. Disclosing generic structures or general approaches to synthesis does not by itself satisfy the enablement requirement for specific compounds. A known precursor does not enable synthesis of a claimed compound if the application does not disclose the precursor or how to convert it into to a claimed compound.

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’s district court appeal of the PTAB rejection of its patent application. At issue was the correct interpretation of Section 145 of the Patent Act, namely the language “[a]ll of the expenses of the proceeding.” The Court held that Section 145 of the Patent Act requires the appellant to pay the USPTO’s attorneys’ fees, regardless of the outcome of the case.

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 FGTL’s patents are invalid and were not infringed. FGTL moved to dismiss the Texas action for lack of personal jurisdiction. New World argued that Texas had specific personal jurisdiction over the declaratory judgment action, because LKQ, FGTL’s exclusive licensee, had sent multiple cease and desist letters to New World in Texas. These letters and the exclusive license between LKQ and FGTL was alleged to be sufficient minimum contacts by FGTL with Texas. The district court disagreed and dismissed the declaratory judgment action for lack of personal jurisdiction. New World appealed, and the Court affirmed.

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 ADS’s cross-motion for attorney fees, finding that Rothschild did not engage in conduct sufficient to make the action exceptional under 35 U.S.C. § 285. ADS appealed, and the Court reversed and remanded. The Court found that the district court abused its discretion citing three reasons.

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, contained both patentable and unpatentable claims. On appeal, the Federal Circuit affirmed in part and reversed in part, holding that all of the claims are unpatentable for lack of written description.

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 district court also relied on the substantive weakness of NOVA’s position, which can independently support an exceptional-case determination. It is the substantive strength of a party’s litigating position that can lead to an exceptional case determination not correctness or success of that position. For instance, NOVA’s allegations of fraud were supported exclusively by conflicting testimony, a fact going to the strength of the action.