TECHTRONIC INDUSTRIES CO. LTD. v. ITC
Before Lourie, Dyk, and Wallach. Appeal from the U.S. International Trade Commission.

Summary: Consistent description in the specification of a particular embodiment as the inventive aspect solving a problem in the prior art may amount to disavowal of claim scope, even in the absence of an express concession excluding alternative embodiments.

PETER V. NANTKWEST, INC.

Before Sotomayor, Roberts, Ginsburg, Breyer, Alito, Kagan, Gorsuch, and Kavanaugh. Appeal from the Federal Circuit on rehearing en banc.

Summary: A patent applicant appealing an adverse decision of the Patent Trial and Appeal Board (“PTAB”) under 35 U.S.C. § 145 in a civil action in District Court is not required to pay the Patent and Trademark Office’s (“PTO”) attorneys’ and paralegals’ pro rata salaries.

Johnstech International sued JF Microtechnology for infringing its patent related to semiconductor contactors for testing integrated circuits. Both companies compete for sales of semiconductor test contactors.

Western Plastics sued Dubose Strapping for infringing a patent covering a material for wrapping rolls of metal coil. Both parties compete in the metal industry and sell a similar wrap.

The U.S. Patent and Trademark Office (USPTO) allows for a trademark application to be filed on an “Intent to Use” basis to establish a priority date before the mark is actually “used in commerce.” However, such use in commerce must happen before the trademark application will register with the USPTO. If your company markets medical devices or related goods that require regulatory approval, the use in commerce requirement presents unique issues.

PLASTIC OMNIUM ADVANCED INNOVATION AND RESEARCH V. DONGHEE AMERICA, INC.

Before Reyna, Newman, and Clevenger. Appeal from the U.S. District Court for the District of Delaware.

Summary: The patentee’s lexicography of “parison” excluded the allegedly infringing product even though the alleged infringer’s product literature specifically described a “parison.”

Before Reyna, Hughes, and Stoll. Appeal from the Patent Trial and Appeal Board.

TQ DELTA, LLC v. CISCO SYSTEMS, INC.

Summary: Findings of fact at the PTAB must be supported by substantial evidence, and conclusory expert testimony, without supporting evidence, is not substantial evidence.

In April 2019, outdoor apparel company Patagonia, Inc. sued Anheuser-Busch, LLC in the District Court for the Central District of California. Patagonia brought eight claims against the Anheuser-Busch brand “Patagonia Brewing Co.” The claims included trademark infringement, trademark dilution, false designation of origin, and actions to cancel several trademark registrations.

IN RE: IPR LICENSING, INC.,

Before O’Malley, Newman, and Taranto. Appeal from the Patent Trial and Appeal Board.

Summary: Establishing a motivation to combine two references for an obviousness determination in an IPR requires evidentiary support, and may not rely on evidence from non-instituted grounds.

Prosecution History Estoppel Bars Infringement Claim Under Doctrine of Equivalents

PHARMA TECH SOLUTIONS, INC. v. LIFESCAN, INC.
Before Moore, Reyna, and Stoll. Appeal from the United States District Court for the District of Nevada.

Summary: Claims for infringement under the doctrine of equivalents will be barred by prosecution history estoppel where plaintiff had both: (i) amended their claims, surrendering the claim scope subsequently occupied by defendant and (ii) clearly and unambiguously disclaimed such claim scope in office action responses, in an apparent effort to achieve patentability.