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...
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...
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...
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...
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...
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...
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...
The Patent Trial and Appeal Board Has Jurisdiction Over IPRs Challenging Expired Patents
APPLE INC. v. GESTURE TECHNOLOGY PARTNERS, LLC. Before Lourie, Dyk, and Hughes. Appeals from the United States Patent and Trademark Office. Summary: The Patent Trial and Appeal Board has jurisdiction over IPRs concerning...
A Published Patent Application Is IPR Prior Art as of Its Filing Date
LYNK LABS, INC. v. SAMSUNG ELECTRONICS CO., LTD. Before Lourie, Prost, and Stark Summary: In an IPR, a patent application is considered a “printed publication” as of the application’s filing...
Bound to Happen: Inherent Property Leaves No Question of Reasonable Expectation of Success
CYTIVA BIOPROCESS R&D AB V. JSR CORP. Before Prost, Taranto, and Hughes. Appeal from the Patent Trial and Appeal Board. Summary: A claim limitation merely reciting an inherent property or...
Platinum Cannot Stand on Speculation
PLATINUM OPTICS TECHNOLOGY INC., v. VIAVI SOLUTIONS INC.
Before Moore. Appeal from the Patent Trial and Appeal Board.
Summary: Standing based on potential infringement liability requires concrete plans for future activity which will create a substantial risk of future infringement or will likely lead to a patentee claiming infringement.
A Certification Mark May Be Famous for Any Reason and May Connote More Than the Product’s Place of Origin
BUREAU NATIONAL INTERPROFESSIONNEL DU COGNAC v. COLOGNE & COGNAC ENTERTAINMENT Before Lourie, Clevenger and Hughes. Appeal from the Trademark Trial and Appeal Board. Summary: Fame and likelihood of confusion analyses...
Repleading Dismissed Claims Does Not Nullify Underlying Dismissal Order
KOSS CORPORATION v. BOSE CORPORATION
Before Hughes, Stoll, and Cunningham. Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board.
Summary: Filing an amended complaint does not nullify a dismissal order that was not later vacated. Such an order merges into a final judgement for purposes of issue preclusion.
Responding to Preliminary Guidance Is the Core Purpose of the MTA Pilot Program
ZYXEL COMMUNICATIONS CORP. v. UNM RAINFOREST INNOVATIONS
Before Dyk, Prost, and Stark. Appeal from the Patent Trial and Appeal Board.
Summary: Because the PTAB’s MTA Pilot Program’s core purpose is to allow patent owners to address errors or deficiencies in motions to amend, the Board may exercise its discretion to allow reply briefing to correct such errors.
Estoppel Does Not Apply to Previously Issued Claims
SOFTVIEW LLC v. APPLE INC.
Before Bryson, Lourie, and Reyna. Appeal from the United States Patent and Trademark Office (“PTO”), Patent Trial and Appeal Board (“Board”).
Summary: Estoppel under 37 C.F.R. § 42.73(d)(3)(i) only applies to obtaining new or amended claims in the PTO and does not apply to maintaining already issued claims.
A Private Sale Is Not Sufficient for Public Disclosure Under 35 USC 102(b)(2)(B)
SANHO CORP. V. KAIJET TECHNOLOGY INTERNATIONAL LIMITED, INC.
Before Dyk, Clevenger, and Stoll. Appeal from the Patent Trial and Appeal Board.
Summary: An invention is not “publicly disclosed” under 35 USC 102(b)(2)(B) by the inventor’s private sale, even though a private sale may constitute an invalidating “public use” under 35 USC 102(a)(1).
Look Both Ways: A Two-Way Test to Determine Whether Pre- And Post-bar Date Claims Are Materially Different Applies in Interference Proceedings
Speck v. Bates
Before Dyk, Bryson, and Stoll.
Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board.
Summary: Comparing pre-Section 135 bar date claims to amended post-bar date claims in an interference proceeding requires comparing the two sets of claims to determine if either set contains material limitations not found in the other—a “two-way test.”
Minority Owners of a Trademark Registrant, Who Neither Use nor Possess Ownership Rights in the Mark, Cannot Seek Cancellation of Third-Party Trademark Registrations Based on Likelihood of Confusion
LUCA MCDERMOTT CATENA GIFT TRUST v. FRUCTUOSO-HOBBS SL
Before Lourie, Reyna, and Chen.
Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board.
Summary: Parties that own minority shares in the trademark registrant, but do not separately use or possess an ownership right in the trademark, are not entitled to seek cancellation of third-party registrations based on likelihood of confusion.
