Non-Prior Art Evidence Helps Sink Three Patents in IPR Proceeding

Stephen G. Adrian | October 18, 2018

Yeda Research and Development v. Mylan Pharmaceuticals Inc.

October 12, 2018

Before Reyna, Bryson and Stoll.  Opinion by Reyna.


This precedential opinion highlights that use of non-prior art in an inter partes review (IPR) does not violate 35 U.S.C. § 311(b) (A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.)

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An Evidentiary Ruling and a Finding of Likelihood of Confusion Against a Pro Se Litigant’s Trademark

Miki Motohashi | October 15, 2018

Zheng Cai, DBA Tai Chi Green Tea Inc., v. Diamond Hong, Inc.

August 27, 2018

Before Prost, Wallach and Hughes.  Opinion by Wallach.


The United States Court of Appeals for the Federal Circuit (“CAFC”) reviewed the U.S. Patent and Trademark Office’s (“USPTO”) Trademark Trial and Appeal Board’s (“TTAB”) opinion of the cancellation of Zheng Cai, doing business as Tai Chi Green Tea Inc.’s (“Mr. Cai”, pro se appellant) trademark, petitioned by Diamond Hong, Inc. (“Diamond Hong”).  The court reviewed the three prongs of “DuPont factor” test and found the TTAB’s opinion regarding likelihood of confusion was correct.  Mr. Cai did not rebut the argument and the CAFC affirmed the TTAB’s opinion.

Japanese Summary


TTABでは、Diamond Hong社がTai Chi Green Tea Inc.社としてビジネスを行っているCai Zheng氏の所有する商標登録の取り消しを申立てた。TTABは申立てを認め、商標取り消し決定を下した。Cai氏は本人訴訟で取り消し決定を不服とし、CAFCに控訴した。Cai氏は当該商標はDiamond Hong社の商標との混同のおそれはないと反論したが、CAFCはDuPont factorsテストの3項目について再検討し、TTABの決定を支持した。

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NAI torpedoes own patent with faulty §120 priority

Michael Caridi | October 9, 2018

Natural Alternatives v. Iancu

October 1, 2018

Before Prost, Moore and Reyna.  Opinion by Prost.


Natural Alternatives International (“NAI”) asserted USP 8,067,381 (“the ‘381 patent” against Woodbolt Distributers, LLC (“Woodbolt”).  The ‘381 patent asserted priority back to a parent, USP 5,965,596 (“the ‘596 patent”) filed in 1997.  Woodbolt filed a request for inter partes reexamination asserting that the §120 priority chain was broken by an intermediate patents assertion of priority only to a provisional application filed in 2003.  The Examiner and Patent Board agreed and rejected the claims of the ‘381 patent in view of the ‘596 patent as prior art.  NAI appealed the Board’s decision.  The CAFC affirmed the Examiner and Board on the basis of faulty §120 priority.

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Parker Vision on Functional Claim Limitations

Stephen Parker | September 28, 2018

ParkerVision, Inc. v. Qualcomm Incorporated

September 13, 2018

Before O’Malley, Reyna and Taranto.  Precedential Opinion by O’Malley, joined by Reyna and Taranto.


Qualcomm filed three inter partes review proceedings challenging the validity of claims of ParkerVision’s U.S. Patent No. 6,091,940 (the ‘940 patent) based on obviousness.  ParkerVision appealed the PTAB’s decision holding apparatus claims of the ‘940 patent as being obvious, and Qualcomm cross-appealed the PTAB’s decision holding method claims of the ‘940 patent as being not obvious.   On the one hand, the CAFC affirmed that the apparatus  claims were invalid, denying ParkerVision’s argument that Qualcomm had not identified conditions in which the prior art device would operate to perform a function of generating “a plurality of harmonics” within the apparatus claim, explaining that only the capability to perform the function is required for an apparatus claim.  On the other hand, the CAFC affirmed that the method claims were not invalid, denying Qualcomm’s cross-appeal for failing to provide any argument or evidence as to why a person of ordinary skill would have selected operating conditions that would cause the prior art to perform the function of creating “a plurality of harmonics”  as claimed.

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