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.

GAME AND TECH. CO., LTD. v. WARGAMING GROUP LTD.

Before Dyk, Plager, and Stoll. Appeal from the Patent Trial and Appeal Board.

Summary: The Board, applying Fed. R. Civ. P. 4, must independently determine whether service of a complaint was properly effectuated for purposes of the IPR time bar set forth in § 315(b) and should normally do so before institution.

KONINKLIJKE KPN N.V. v. GEMALTO M2M GMBH

Before Dyk, Chen, and Stoll. Appeal from the District of Delaware.

Summary: Claims directed to improving the functionality of one tool that is part of a system do not necessarily need to recite how that tool is applied in the overall system in order to constitute a technological improvement that is patent eligible.

COLUMBIA SPORTSWEAR v. SEIRUS INNOVATIVE ACCESSORIES
Before Lourie, Moore, and Stoll. Appeal from the U.S. District Court for Southern District of California.
Summary: An accused infringer’s use of ornamental logos can and should be considered as one factor when analyzing design patent infringement.