A decision from the Federal Circuit clarified how the USPTO should analyze evidence of fame under the fifth DuPont factor. The decision sheds light on how fashion brands can establish that their marks are famous through advertising, advertising channels, and references to the brand in popular culture.
Before Reyna, Taranto, and Stoll. Appeal from the PTAB.
Toro petitioned for IPR of an MTD Products patent relating to lawnmowers. MTD argued the term “mechanical control assembly” was a means-plus-function term. The Board concluded the disputed phrase was primarily functional, but that a personal skilled in the art would have understood the term to denote structure based on the specification and prosecution history. Thus, the Board determined the term was not a means-plus-function term and held the challenged claims were obvious.
Acantha LLC sued Depuy Synthes Sales Inc. and DePuy Synthes Products, Inc., alleging that Depuy’s Vectra and Zero-P VA products infringe U.S. Reissued Patent No. RE 43,008. The patent relates to an orthopedic implant used for joining bone segments.
A jury found that all accused products infringed and awarded over $8.2 million in damages. Depuy moved for judgment as a matter of law that it did not infringe.
IRIDESCENT NETWORKS, INC. v. AT&T MOBILITY, LLC
Before Prost, Reyna and Taranto. Appeal from the U.S. District Court for the Eastern District of Texas
Iridescent sued AT&T and Ericsson for infringement of a patent relating to network communication that provides guaranteed bandwidth, while minimizing data delay and loss.
Ajinomoto Co., Inc. vs. CH Cheiljedang Corp. (2018-1590, 2018-1629)
In a pair of cross-appeals from the International Trade Commission, the Federal Circuit affirmed the Commission’s ruling that one of CJ CheilJedang Corp.’s engineered bacterial strains infringed Ajinomoto’s patent, while another strain did not infringe.
Ajinomoto’s patent claim is related to methods of cultivating E. coli bacteria that have been genetically engineered to increase their production of aromatic L-amino acids during fermentation. The claim recites, among other limitations, (1) a protein that “consists of the sequence of SEQ ID NO: 2” and (2) enhancing the activity of the protein by “replacing the native promoter [for the protein] … with a more potent promoter.”
ELI LILLY AND COMPANY v. HOSPIRA, INC.
Before Lourie, Moore, and Taranto. Appeal from the District Court for the Southern District of Indiana.
Summary: A narrowing claim amendment does not necessarily surrender all equivalents of the claim element if the prosecution history shows that an equivalent is merely tangentially related to the amendment.
GENETIC VETERINARY SCIENCES v. LABOKLIN GMBH & CO. KG
Before Wallach, Hughes, and Stoll. Appeal from the Eastern District of Virginia.
Summary: (1) If a foreign entity is not subject to jurisdiction in any state’s courts of general jurisdiction, but the claims against the entity arise under federal law and the exercise of jurisdiction comports with due process then personal jurisdiction may exist over a foreign entity in any federal court in the U.S. (2) A foreign sovereign that obtains a U.S. patent, engages in licensing the patent and/or threatens enforcement of the patent may be subject to jurisdiction of U.S. courts under the “commercial activity” exception to the doctrine of sovereign immunity.
On July 8, 2019, NBA player Giannis Antetokounmpo filed suit in the Southern District of New York for trademark infringement and counterfeiting of his GREEK FREAK trademarks in connection with clothing bearing his likeness. Antetokounmpo plays for the Milwaukee Bucks and was recently voted the NBA’s 2019 MVP. He is a household name to basketball fans and has adopted the nickname “GREEK FREAK,” an homage to Antetokounmpo’s home country of Greece.
Before Dyk, Moore, and Taranto. Appeal from the ITC.
Ajinomoto filed a complaint against CJ America, Inc. with the International Trade Commission (“ITC”), alleging that CJ used several strains of E-coli bacteria to make products imported into the United States that infringed its patent. The ITC determined that two of CJ’s E-coli strains infringed the asserted patent under the doctrine of equivalents. The ITC found that Ajinomoto did not surrender the equivalent during prosecution because the “tangential relation” exception applied. CJ appealed.
ATEN INTERNATIONAL CO., LTD. v. UNICLASS TECHNOLOGY CO., LTD
Before Moore, Wallach, and Taranto. Appeal from the United States District Court for the Central District of California.
Summary: When a reference is available in the same year as the critical date, the defendant must show the reference was available before the critical date to establish the reference as prior art.
