THE CHAMBERLAIN GROUP, INC. v. ONE WORLD TECHNOLOGIES, INC.

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

Summary: New arguments may be raised during PTAB oral hearings so long as they clarify an earlier position, are responsive to arguments presented in the opponent’s reply, and do not raise entirely new issues or evidence.

FOX FACTORY, INC. v. SRAM, LLC
Before Prost, Wallach, and Hughes. Appeal from the Patent Trial and Appeal Board (PTAB).

Summary: When a commercial product contains unclaimed features, a presumption of nexus between the claims and secondary consideration evidence can be assumed only if unclaimed features of the commercial product do not materially impact the functionality of the product.

AMGEN INC. v. HOSPIRA, INC.

Before Moore, Bryson, and Chen. Appeal from the United States District Court for the District of Delaware.

Summary: Biological engineering activity that would otherwise constitute patent infringement is protected under a safe harbor, if the activity is solely for uses reasonably related to submitting information to the FDA. Where the patent covers a method of manufacture, the relevant safe harbor inquiry is whether the act of manufacture is solely for submitting information to the FDA. The relevant inquiry is not whether the products of the manufacture are for uses related to submitting information to the FDA.

BLACKBIRD TECH LLC v. HEALTH IN MOTION LLC

Before Wallach, Prost, and Hughes. Appeal from U.S. District Court for the Central District of California.

Summary: The Federal Circuit affirmed a finding that a frivolous patent case was exceptional and an award of more than $360,000 in attorney fees after Plaintiff persisted with the case for nineteen months and then dismissed the case with prejudice before trial.

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.”