The Votes Are In: Highly Descriptive Marks Are Difficult to Protect
HERITAGE ALLIANCE V. AMERICAN POLICY ROUNDTABLE Before Prost, Taranto, and Stark. Appeal from the Trademark Trial and Appeal Board. Summary: Continuous-use evidence is not necessarily prima facie evidence of acquired...
Hard to Stomach: Things You Say to Prosecute a Patent Can and Will Be Used Against You
AZURITY PHARMACEUTICALS, INC. v. ALKEM LABORATORIES LTD. Before Murphy, Moore, and Chen. Appeal from the United States District Court for the District of Delaware. Summary: Arguments and amendments made during...
Fireball Frenzy: When First Registering a Mark, Genericness of a Mark Is Determined at the Time of Registration
BULLSHINE DISTILLERY LLC v. SAZERAC BRANDS, LLC Before Moore, Reyna and Taranto. Appeal from the Trademark Trial and Appeal Board. Summary: In assessing genericness, the TTAB considers how the mark...
No Error: The Board Committed No Procedural Error by Relying on Evidence Outside of the Prior Art Reference
SAGE PRODUCTS, LLC v. STEWART [OPINION] Before Reyna, Cunningham, and Stark. Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board. Summary: The Board did not...
Traffix Jam – Technical Functionality Prevents Trademark Protection for the Color Pink
CERAMTEC GMBH v. COORSTEK BIOCERAMICS LLC Before Lourie, Taranto, and Stark. Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board. Summary: A utility patent may...
Zoned Out: The Zone of Natural Expansion Doctrine Can Only Be Used Defensively
DOLLAR FINANCIAL GROUP, INC. v. BRITTEX FINANCIAL, INC. [OPINION] Before Prost, Taranto, and Hughes. Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board. Summary: The...
Claims Reciting Material Properties of a Claimed Composition Withstand § 101 Scrutiny
US SYNTHETIC CORP. v. INTERNATIONAL TRADE COMMISSION Before Dyk, Chen, and Stoll. Appeal from the U.S. International Trade Commission. Summary: The Federal Circuit found claims reciting magnetic properties of a...
Inaction Can Lead To Argument Forfeiture on Appeal
ALIVECOR, INC. v. APPLE INC. Before Hughes, Linn, and Stark. Appeal from Patent Trial and Appeal Board Summary: A party in a PTAB proceeding forfeits the ability to challenge an...
Domestic Marketing and Distribution of an Imported Product May Satisfy the Economic Prong of the Domestic-Industry Requirement
LASHIFY, INC. V. ITC Before Prost, Taranto, and Chen. Appeal from the U.S. International Trade Commission. Summary: Warehousing, quality control, distribution, sales, and marketing expenses incurred in connection with an imported...
Limits of Inherent Anticipation in Product-By-Process Claims
RESTEM, LLC v. JADI CELL, LLC Before Moore, Schall, and Taranto. Appeal from the Patent Trial and Appeal Board. Summary: Inherency in product-by-process claims requires the prior art process to...
Argument Forfeited When Raised for the First Time Fourteen Months After an Appeal
ODYSSEY LOGISTICS & TECHNOLOGY CORP. v. STEWART Before Dyk, Reyna, and Stoll. Appeal from the United States District Court for the Eastern District of Virginia. Summary: A patent applicant forfeited...
An Obvious Solution to an Unknown Problem?
IMMUNOGEN, INC. v. STEWART Before Lourie, Dyk, and Prost. Appeal from the United States District Court for the Eastern District of Virginia. Summary: A solution to a problem can...
Jepson Claim Preamble Requires Written Description Support for Conventional Aspects of the Invention
IN RE: XENCOR, INC. Before Hughes, Stark, and Schroeder (sitting by designation). Appeal from the U.S. Patent and Trademark Office, Patent Trial and Appeal Board. Summary: To provide adequate written...
IPR Standing Arguments Not Presented to the Board Are Forfeited
APPLE INC. v. GESTURE TECHNOLOGY PARTNERS, LLC Before Moore, Prost, and Stoll. Appeal from the Patent Trial And Appeal Board. Summary: A patent owner forfeits its argument that an IPR...
The Board Must Provide Reasoned Explanation When Discarding Material, Unrebutted Evidence
CQV CO., LTD. v. MERCK PATENT GMBH Before Cunningham, Chen, and Mayer. Appeal from the Patent Trial and Appeal Board. Summary: The Board erred by failing to explain why it discarded...
Where Method Claim Steps Are Connected by “And,” a Covered Method Must Perform Each Step
SIERRA WIRELESS, ULC V. SISVEL S.P.A. Before Moore, Schall, and Taranto. Appeal from the Patent Trial and Appeal Board. Summary: The Board erred by finding method-claim steps connected by “and” to...
Pulling the Cord on Unstated Claims Limitations
IQRIS TECHNOLOGIES LLC v. POINT BLANK ENTERPRISES, INC. Before Lourie, Linn, and Stoll. Appeal from the United States District Court for the Southern District of Florida Summary: The district court...
Federal Circuit’s Lashify Decision Expands “Domestic Industry” at the International Trade Commission
Lashify, Inc. v. International Trade Commission Before: Prost, Taranto, and Chen. Appeal from ITC Investigation. Summary: The Federal Circuit expands the economic prong of the domestic-industry analysis to include domestic...
Collateral Estoppel Does Not Apply When the Prior Proceeding Applies a Lower Burden of Proof
KROY IP HOLDINGS, LLC v. GROUPON, INC. Before Prost, Reyna, and Taranto. Appeal from the U.S. District Court for the District of Delaware. Summary: Because there are different burdens of proof...
New Trial Granted Because “Nearly All” of the Defendant’s Noninfringement Evidence Was Untimely
TRUDELL MED. INT’L INC. V. D R BURTON HEALTHCARE, LLC Before Moore, Chen, and Stoll. Appeal from the U.S. District Court for the Eastern District of North Carolina. Summary: The...
Every Word Counts: Specification Naming Conventions Can Limit Claim Scope
HD SILICON SOLUTIONS LLC v. MICROCHIP TECHNOLOGY INC. Before: Lourie, Stoll, and Cunningham. Appeal from the Patent Trial and Appeal Board. Summary: A patent’s specification established a naming convention that applied...
