Designer’s Connection with Paris Insufficient to Overcome a Section 2(e)(3) Refusal
| October 24, 2012
In re Miracle Tuesday, LLC
October 4, 2012
Panel: Rader, Linn, O’Malley. Opinion by O’Malley
Summary
The U.S. Court of Appeals for the Federal Circuit affirmed the decision of the Trademark Trial and Appeal Board (“the Board”), refusing to register the mark JPK PARIS 75 and design on the grounds that it is primarily geographically deceptively misdescriptive under Section 2(e)(3) of the Lanham Act, 15 U.S.C. § 1052(e)(3). While the CAFC does not endorse a rule that the goods need to be manufactured in the named place to originate there, there must be some other direct connection between the goods and the place identified in the mark. In this case, the CAFC found there is no evidence of a current connection between the goods and Paris.
商標審判は、商標「JPK PARIS 75」は、「産地について誤信を生じさせる商標（primarily geographically deceptively misdescriptive）」であると認定し、CAFCは、これを支持した。 CAFCは、商品がその産地にて製造される必要があるとは示さなかったものの、商品とその産地には直接的な関係が必要であると示した。本件では、商品とパリに直接的な関係が存在するという証拠はなかった
Tags: geographical indication > geographically misdescriptive > Trademark
Apple is bit at CAFC: The Court reversed and remanded a preliminary injunction obtained at the District Court against Samsung’s Galaxy Nexus Smartphone
| October 17, 2012
Apple Inc. v. Samsung Electronics, Ltd. et al.
Decided: October 11, 2012
Panel: Prost, Moore, and Reyna. Opinion by Prost.
Summary
The CAFC reversed the District Court’s finding that there was irreparable harm to Apple by allowing sales of the Galaxy Nexus. The CAFC held that there was an insufficient causal nexus between the claimed invention and the sales of the product. The Court also addressed Apple’s likelihood of success to interject claim construction.
Tags: claim construction > galaxy nexus > injunction > irreparable harm > likelihood of success > nexus > preliminary injunction > smartphone
Saved by Therasense: Deliberate decision to withhold references not found where art was cited in foreign counterpart and domestic co-pending applications
| October 10, 2012
1st Media v. Electronic Arts et al.
Decided September 13, 2012
Panel: Rader, Linn and Wallach. Opinion by Rader.
Summary
This case demonstrates how Therasense has changed the inequitable conduct analysis. Although the individual inventor and sole practitioner knew of references which were probably material, and did not submit the references, this is now insufficient to demonstrate inequitable conduct. It must additionally be shown that there was a specific decision to withhold the documents from the USPTO, in order to show an intent to deceive. This can be demonstrated, for example, by selective disclosure. However, no such evidence was presented, and thus an intent to deceive, the first part of the inequitable conduct analysis, was not found.
Tags: IDS > inequitable conduct > information disclosure statement > intent to deceive > Supplemental Examination
Like prior art patents, potentially anticipatory non-patent printed publications are presumed to be enabling
| October 5, 2012
In re Antor Media Corporation
July 27, 2012
Panel: Rader, Lourie and Bryson. Opinion by Lourie.
Summary
Antor Media Corp. appeals from the decision of the Board of Patent Appeals and Interferences rejecting on reexamination the claims of its patent as anticipated and obvious over four prior art references. The prior art references include three printed publications and one U.S. patent. The Board found that two of the printed publications anticipated the claims in Antor’s patent. Here, Antor argues that since the printed publications are not enabling, they could not have anticipated the claims. Antor further argues that unlike prior art patents, prior art printed publications are not presumptively enabling. The principal issue on appeal is therefore whether the presumption that prior art patents are enabling can be logically extended to printed publications. The Federal Circuit answers that it can, holding that a prior art printed publication cited by an examiner is presumptively enabling barring any showing to the contrary by a patent applicant or patentee.
Tags: anticipation > enablement > non-enablement > non-patent literature > prior art
Belkin v. Kappos: PTO’s Determination of the threshold issue in Reexamination is not appealable
| October 3, 2012
Belkin International, Inc. et al. v. David Kappos, Director, USPTO, et al.
Decided: October 2, 2012
Panel: Rader, Lourie and Wallach. Opinion by Lourie.
Summary:
This decision results from a pre-AIA appeal in an inter partes reexamination proceeding. The issue in this appeal is whether a prior determination that an argument based on a given reference does not raise a substantial new question of patentability (“SNQ”) as to a claim when such an SNQ was raised with respect to certain other prior art is appealable. The CAFC held that this determination is not appealable and that the proper course of action is to timely petition the Director to review the determination.
