Surnames are registrable on Principal Register with sufficient evidence of acquired distinctiveness
| December 19, 2018
Schlafly, et al. v. Saint Louis Brewery, LLC
November 26, 2018
Before Newman, Mayer, and Stoll. Opinion by Newman.
Summary
A surname can be registered as a trademark on the Principal Register upon showing of acquired distinctiveness.
名字から成る商標は、識別性を獲得していれば、主登録簿へ登録することが可能である。
Tags: 15 U.S.C. Section 1052(f) > acquired distinctiveness > secondary meaning > Section 2(f) of the Lanham Act
In widely watched biotech case, skepticism by others in the art and other factors give rise to a lack of a reasonable expectation of success, and thus a lack of interference-in-fact
| December 17, 2018
Regents of the University of California et al. v. Broad Institute, Inc., et al.
September 21, 2018
Before Prost, Schall and Moore. Opinion by Moore.
Summary
The CAFC upheld the PTAB’s decision of the lack of an interference-in-fact between UC’s claims generically directed to the CRISPR-Cas9 gene editing system in any context and Broad’s claims directed to the CRISPR-Cas9 system in eukaryotes specifically. The CAFC affirmed the PTAB’s weighing of substantial evidence with respect to the likelihood of success of one skilled in the art based on UC’s claims, in view of statements by the inventors and experts, as well as the details of other gene editing system. The CAFC dismissed UC’s arguments regarding an alleged “specific instructions” test and evidence of simultaneous invention.
To narrow, or not to narrow a claim without lexicography or disavowal in a patent specification: the U.S. Supreme Court is asked to answer the question.
| December 11, 2018
Cave Consulting Group, LLC v. OptumInsight, Inc., 725 Fed. App’x 988 (Fed. Cir. 2018) (nonprecedential) (Case No. 2017-1060)
March 21, 2018 (Rehearing Denied: August 14, 2018; Petition for A Writ of Certiorari Filed: November 2, 2018)
Before Lourie, Dyk and Taranto, Circuit Judges. Court opinion by Lourie.
Summary
In a nonprecedential opinion, in view of the specification’s consistently limiting description, the Federal Circuit reversed the district court’s claim construction of “weighted episode of care statistics” recited in a disputed independent claim as including direct standardization where some of dependent claims specifically provide that the calculating of weighted episode of care statistics utilizes direct standardization. Accordingly, the Court vacated the judgment of infringement and award of damages because the error in the claim construction is dispositive of the infringement issue based on undisputed facts. A petition for a writ of certiorari has been filed to ask the U.S. Supreme Court if narrowing claims without lexicography or disavowal in a patent specification may be justified.
Foreign manufacturer’s intent to induce infringement in the U.S. inferred from large worldwide market share
| December 7, 2018
Enplas Display Device Corp. v. Seoul Semiconductor Co.
November 19, 2018
Before Newman, Hughes, and Stoll. Opinion by Stoll.
Summary:
The CAFC affirmed the district court’s judgment of no invalidity and of induced infringement, although it vacated most of the damages award. The induced infringement issue was a “close question” because there was no direct evidence that Enplas actually knew that certain lenses it was selling outside the U.S. would be incorporated into TVs sold in the U.S. But the court held that based mainly on Enplas’ large worldwide market share and in the context of its previous relationship with SSC, there was enough circumstantial evidence to meet the specific intent requirement.
A Tale of Two Printed Publications
| November 8, 2018
GoPro, Inc. v. Contour IP Holding LLC;
November 1, 2018
Before Reyna, Wallach, and Hughes. Opinion by Lourie.
and
Acceleration Bay LLC v. Activision Blizzard, Inc.
November 6, 2018
Before Prost, Moore, and Reyna. Opinion by Moore.
Summary
It was a flexible standard. It was a narrow standard. It was a sales catalog at a trade show that those of ordinary skill in the relevant art may not have attended. It was a technical report uploaded to a university subject matter-specific library website. The Federal Circuit determined that the sales catalog was a prior art “printed publications” within the scope of 35 U.S.C. 102, but not the technical report.
Spreadsheet Tabs Survive Alice Test of Patent Subject Matter Eligibility
| November 2, 2018
Data Engine Technologies LLC v. Google LLC
October 9, 2018
Before Reyna, Bryson, Stoll. Opinion by Stoll.
Summary:
This case is about patent claims to spreadsheet functionality. On an appeal from a grant of a motion for judgement on the pleadings for lack of patent-eligible subject matter, the Court of Appeals for the Federal Circuit reversed-in-part finding some of the claims patent eligible. Specifically, the claims reciting a “spreadsheet page identifier being displayed as an image of a notebook tab” were held as not being directed to an abstract idea. However, claims that more generally recite identifying and storing electronic spreadsheet pages and claims that recite methods that allow electronic spreadsheet users to track their changes were held as invalid under § 101 because they fail step one of Alice as being abstract, and they fail step two of Alice because they merely recite the method of implementing the abstract idea itself.
The Patent-Ineligibility trend continues to be infectious…
| October 29, 2018
Roche Molecular Systems, Inc. v. Cepheid
October 9, 2018
Before O’Malley, Reyna and Hughes. Opinion by Reyna. Concurring opinion by O’Malley.
Summary:
The contended patent, U.S. Patent No. 5,643,723 (‘723 patent), owned by Roche is directed to methods for detecting the pathogenic bacterium Mycobacterium tuberculosis (MTB). Prior to the priority date, the general methods of detection were slow (could take three to eight weeks), and they had limitations in that they could not identify if a patient has an antibiotic-resistant strain. The standard of care at the time was treatment with the antibiotic rifampin. However, outbreaks resulted due to delays in diagnosing and reporting of the rifampin-resistant tuberculosis. In 1994, rpoB became a prime candidate for studying rifampin resistance in MTB.
The inventors of the ‘723 patent sequenced the rpoB gene in MTB and discovered that that the rpoB gene in MTB contains eleven “position-specific” “signature nucleotides” (i.e., naturally occurring single nucleotide mutations) that are only present in MTB but not in other bacteria. Based on these eleven MTB-specific signature nucleotides, the Roche inventors devised a diagnostic test that could (1) identify whether or not a biological sample contains MTB, and (2) if MTB is present, predict whether that MTB is a strain that is resistant to rifampin treatment.
Non-Prior Art Evidence Helps Sink Three Patents in IPR Proceeding
| October 18, 2018
Yeda Research and Development v. Mylan Pharmaceuticals Inc.
October 12, 2018
Before Reyna, Bryson and Stoll. Opinion by Reyna.
Summary
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.)
An Evidentiary Ruling and a Finding of Likelihood of Confusion Against a Pro Se Litigant’s Trademark
| 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.
Summary
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
連邦巡回区控訴裁判所(CAFC)における本判決は、米国特許庁商標部審判部(TTAB)による商標登録取り消し決定に対する控訴判決である。
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。
Tags: “DuPont Factors” Test > Likelihood of Confusion under 15 U.S.C. § 1052(d)
NAI torpedoes own patent with faulty §120 priority
| October 9, 2018
Natural Alternatives v. Iancu
October 1, 2018
Before Prost, Moore and Reyna. Opinion by Prost.
Summary:
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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