In Re FORNEY INDUSTRIES, INC.
Before Dyk, O’Malley, and Chen. Appeal from the Trademark Trial and Appeal Board.

Summary: Multi-colored marks may be inherently distinctive when used on product packaging.

BASF CORPORATION v. SNF HOLDING COMPANY
Before Lourie, Moore, and Chen. Appeal from the United States District Court for the Southern District of Georgia.

Summary: A third party’s sale of products made by a secret process may not create a bar to another inventor patenting the process under pre-AIA § 102, unless the essential features of the claimed process are embodied in a product sold or offered for sale before the critical date.

KEITH MANUFACTURING CO. v. BUTTERFIELD

Before Taranto, Clevenger, and Hughes. Appeal from the United States District Court for the District of Oregon.

Summary: A voluntary dismissal with prejudice under Rule 41(a) does not preclude consideration of attorney’s fees under Rule 54(d).

MYCO INDUSTRIES, INC. v. BLEPHEX, LLC

Before Newman, O’Malley, and Taranto. Appeal from the U.S. District Court for the Eastern District of Michigan

Summary: Enjoining a patentee from making statements about potential patent infringement requires a finding of bad faith.

ARTHREX, INC. v. SMITH & NEPHEW, INC.
Before Prost, Newman, Lourie, Dyk, Moore, O’Malley, Reyna, Wallach, Taranto, Chen, Hughes, and Stoll. Petition for rehearing en banc of a panel decision of an appeal from the Patent and Trial Appeal Board.

Summary: A judicial fix to a constitutional infirmity of a statute was proper when the solution solved the constitutional problem while preserving the remainder of the statute and minimizing disruption to the system set up by the statute. A prospective judicial fix does not remedy past harm, and granting a new hearing was an appropriate remedy for cases that remain open.

ALLEN V. COOPER

Before Kagan, Roberts, Alito, Sotomayor, Gorsuch, Kavanaugh, Thomas, Breyer, and Ginsburg. Appeal from the Fourth Circuit.

Summary: States cannot be sued for copyright infringement as the Copyright Remedy Clarification Act’s abrogation of State sovereign immunity was invalid under the Eleventh Amendment and § 5 of the Fourteenth Amendment.

On March 3, 2020, Exact Sciences announced completion of its acquisition of Paradigm Diagnostics, Inc. and Viomics, Inc., privately held companies based in Phoenix, AZ. According to Exact Sciences, Paradigm and Viomics together provide a differentiated late-stage therapy selection test and deep competencies in sequencing and biomarker discovery, extending Exact Sciences’ lab testing and research and development capabilities.

FACEBOOK, INC., V. WINDY CITY INNOVATIONS LLC

Before Prost, Plager, and O’Malley. Appeal from the Patent Trial and Appeal Board.

Summary: An IPR petitioner may not join itself to an earlier IPR in which it was already a party, and may not add new claims or issues to the earlier IPR through such joinder.

ILLUMINA, INC. v. ARIOSA DIAGNOSTICS, INC.

Before Lourie, Moore, and Reyna. Appeal from the Northern District of California.

Summary: Use of a natural phenomenon in a method of preparation claim found patent eligible under § 101.

HAFCO FOUNDRY AND MACHINE CO. v. GMS MINE REPAIR

Before Newman, Chen, and Stoll. Opinion filed per curiam. Appeal from the Southern District of West Virginia.

Summary: Objections to jury instructions should be timely made at trial in order to be preserved for appeal at the Federal Circuit.