A mark found to be disparaging.
| May 28, 2014
In re Geller
May 13, 2014
Panel: Newman, O’Malley, Wallach. Opinion by Wallach
Summary
The CAFC affirmed the Trademark Trial and Appeal Board’s refusal to register the mark STOP THE ISLAMISATION OF AMERICA in connection with the services of “understanding and preventing terrorism” because the mark may be disparaging to American Muslims pursuant to § 2(a) of the Trademark Act.
米国連邦巡回裁判所（CAFC）は、STOP THE ISLAMISATION OF AMERICA商標の出願は、米国商標法第2条(a)に基き、米国のイスラム教徒に対して中傷的（disparaging）であるとして、登録を却下した商標審判部（TTAB）の判断を支持した。
“Exceptional” Case for Attorney Fees under §285 is Determined with Simple Equitable Discretion by District Court Applying Preponderance of Evidence Standard.
| May 23, 2014
Octane Fitness, LLC v. Icon Health & Fitness (S. Ct. 2014)
April 29, 2014
Justice Sotomayor
Summary
Regarding “exceptional” cases under §285 to award attorney fees, CAFC previously followed the Brooks Furniture standard that a case is “exceptional” under §285 only “when there has been some material inappropriate conduct in litigation, such as willful infringement, fraud or inequitable conduct in procuring the patent, misconduct during litigation, vexatious or unjustified litigation, conduct that violates FRCP 11” etc. and that absent misconduct in litigation or in securing the patent, fees “may be imposed only if both (1) the litigation is brought in subjective bad faith, and (2) the litigation is objectively baseless.”
The Supreme Court held that the Brooks Furniture standard is unduly rigid, and it impermissibly encumbers the statutory grant of discretion to district courts. The Supreme Court held that the “exceptional” case for attorney fees in §285 simply means that the case stands out from others with respect to the substantive strength of a party’s position or the unreasonable manner in which the litigation was conducted and district courts may determine whether a case is “exceptional” with their equitable discretion, considering the totality of the circumstances. The Supreme Court rejected the Federal Circuit’s requirement of “clear and convincing evidence” for the entitlement to fees under §285, and held that the standard is a preponderance of the evidence standard.
米国特許法285条の弁護士費用賠償が認められる「例外的」事件に関して、CAFCはBrooks Furniture判決において、「故意侵害、フロード、不公正行為、訴訟中の不正行為などの不適正行為があったか、そのような不適正行為がない場合は、(1)訴訟が悪意で提訴され、(2)客観的に見て訴訟の根拠のないものである場合に限るとしていた。
米国最高裁は、Brooks Furniture基準は不当に限定的であり、地裁の裁量を制限しているとした。そして、285条の「例外的」事件とは、単純に、訴訟当事者の立場の強さまたは、訴訟での非常識な振舞いなどにより他の事件から際立っているということであり、地裁は全体的な状況を考慮して裁量で決定すべきであるとした。また、最高裁は、「例外的」事件の立証基準も、CAFCのいう「明白で説得力のある証拠」ではなく、一般の民事事件の基準と同じ「証拠の優越」であるとした。
CAFC holds “Dolly the Sheep” claims ineligible, but leaves door open to claims reciting clones “markedly different” from nature
| May 21, 2014
In Re Roslin Institute (Edinburgh)
May 8, 2014
Panel: Dyk, Moore, Wallach. Opinion by Dyk.
Summary
Although the method of creating a cloned animal was patent eligible, the CAFC held that claims directed to the clone itself were not patent-eligible. The court further holds that simply because something is made by man is insufficient to render it patent-eligible, absent a showing that the claimed composition is markedly different from that found in nature. Although a cloned animal may have some differences from the DNA donor animal, unless these differences are claimed, the CAFC will not consider them.
CAFC Makes Sure Pre- And Post-Issuance §112 Indefiniteness Are Distinct In Anticipation Of Nautilus, Inc. V. Biosig Instruments, Inc. Decision By SCOTUS.
| May 14, 2014
In Re Thomas G. Packard (2013-1204)
May 6, 2014
Panel: O’MALLEY, PLAGER, and TARANTO, Per Curiam. Concurrance by PLAGER.
Summary:
Packard appealed an affirmed 35 U.S.C. §112 (b) rejection by PTAB on the basis that the Board had used an inappropriately strict standard of “unclear” in finding the claims indefinite. Packard argued that an “insolubly ambiguous” judicial standard should have been applied. The CAFC affirmed the PTAB with plenty of dicta that pre-issuance indefiniteness at the USPTO is distinct from post-issuance indefiniteness at the judicial level.
Once again, the plain meaning controls.
| May 9, 2014
GE Lighting Solutions, LLC v. AgiLight, Inc.
May 2, 2014
Panel: Rader (Chief Judge), Moore (Author), and Reyna
Appeal from U.S. District Court for the Northern District of Ohio.
Summary
GE Lighting Solutions, LLC (GE) appealed the district court’s grant of summary judgment that AgiLight, Inc.’s (AgiLight) accused products and processes do not infringe asserted claims of GE’s U.S. Patent Nos. 7,160,140, 7,520,771, 7,832,896, and 7,633,055. The issues mostly involved claim construction. After resolving the claim construction issues, the CAFC reversed and remanded the grant of summary judgment with regard to the ’140, ’771 and ’896 patents and affirmed the grant of summary judgment with regard to the ’055 patent.
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Reexamined patent claims are assumed to be subset of original patent claims unless proven otherwise, for application of res judicata (claim preclusion).
| April 24, 2014
Senju Pharmaceutical Co., Ltd., Kyorin Pharmaceutical Co., Ltd., and Allergan, Inc. v. Apotex Inc. and Apotex Corp.
March 31, 2014
Panel: Newman, Plager (author) and O’Malley (dissent).
Background: Appeal from U.S. District Court for the District of Delaware.
Senju Pharmaceutical Co., Ltd. and Kyorin Pharmaceutical Co., Ltd. (collectively referred to as “Senju”) jointly own U.S. Patent No. 6,333,045 for aqueous pharmaceutical formulations of the antibiotic Gatifloxacin. Allergan is the exclusive licensee under this patent for ophthalmic uses, and produces under license eye drops for treating the “pink eye” infection. The eye drop formulation contains disodium edetate (EDTA) which improves passage of the antibiotic through the cornea of the eye.
Apotex Inc. is a Canadian generic drug manufacturer which plans to formulate an ophthalmic solution containing the antibiotic, to be marketed by Apotex Corp. which is based in the U.S. Following the procedure enacted under the Hatch-Waxman Act, Apotex (referring collectively to Apotex, Inc. and Apotex, Corp.) filed with the FDA in July 2007 an Abbreviated New Drug Application (ANDA) for a generic version of the ophthalmic drug containing the antibiotic. Also under this procedure, Apotex filed a patent certification with the FDA and notified Senju about the certification. [This notice is required when the ANDA applicant certifies that a patent named in the New Drug Application (NDA) for the original drug is “invalid, unenforceable, or will not be infringed by the manufacture, use, or sale” of the generic drug. After receiving the notice, the NDA holder may sue the ANDA applicant for patent infringement under the provisions of 35 USC §271(e)(2)(A).] As would be expected, Senju filed suit against Apotex, alleging infringement of claims 1-3 and 6-9 of the patent.
Reexamination Bites Another Patent Owner
| April 16, 2014
In Re Teles AG Informationstechnologien and Sigram Schindler Beteiligungsgesellschaft MBH
Decided April 4, 2014,
Before Dyk, Moore, and Wallach. Opinion by Dyk
Summary:
This precedential decision illustrates a number of strategies that a patent owner may need to consider when an unfavorable decision is rendered by the Board of Patent Appeals and Interferences (now Patent Trial and Appeal Board) during a reexamination proceeding. Although an appeal to the Federal Circuit is most commonly pursued by a patent applicant, why would a patent owner consider an appeal to the U.S. District Court for the District of Columbia? In addition, this decision illustrates that while a broad claim construction may be desirable to ensnare infringers, a broad claim construction can also come back to bite the patent owner in a way to render claims invalid over the prior art.
The Court Gives Roadmap to Patent Trolls on How to Obtain Lucrative Settlements from Customers without Declaratory Judgment Recourse from Manufacturers.
| April 11, 2014
Microsoft v. DataTern, Inc. and SAP v. DataTern, Inc. (Precedential Opinion).
April 4, 2014
Before Chief Judge Rader, Prost and Moore. Opinion by Moore. Opinion dissenting-in-part by Rader.
Summary
DataTern, Inc., a company established to exploit IP opportunities (aka patent troll), sued hundreds of customers of Microsoft and SAP alleging infringement of its’ patents for a software product that facilitates interfacing of object-oriented applications with relational databases, seeking lucrative settlements from consumers disinterested in combating a full patent lawsuit without suing Microsoft and SAP. Despite DataTern’s effort to avoid litigation with Microsoft and SAP, who as manufacturers of the products were well equipped and interested to seek legal recourse, Microsoft and SAP successfully filed declaratory judgment actions in New York district court and were awarded summary judgments for non-infringement. DataTern appealed to the CAFC. Although the CAFC affirmed the district court’s decision, as explained in the dissenting-in-part opinion of Chief Judge Rader, the CAFC’s opinion “creates a roadmap [for patent troll’s] to avoid declaratory judgment” actions by taking steps to ensure that their claim charts presented to allegedly infringing customers reference only customer activity and not activity of the product manufacturers.
Tags: claim charts > claim construction > contributory infringement > Declaratory judgment > inducement > subject matter jurisdiction
The term “receiver” connotes sufficiently definite structure to avoid interpretation under §112, sixth paragraph
| February 7, 2014
EnOcean Gmbh v. Face International Corporation
Decided January 31, 2014
Before Radar, Lourie and Prost. Opinion by Prost
Summary
Face’s patent (USP 7,084,529) issued in 2006, having claims directed to a self-powered switch. EnOcean owns the rights to U.S. Patent Application No. 10/304,121, also having claims directed to a self-powered switch. The EnOcean ‘121 application claims priority back to a German application filed on May 24, 2000. Face’s priority only goes back to 2001. After Face’s patent issued, EnOcean amended the claims in the ‘121 application to match those of the ‘529 patent, and requested an interference.
In the interference proceeding, EnOcean identified a set of prior art references, including published PCT Application No. PCT/GB01/00901 to Burrow, that invalidated the Face’s ‘529 patent as obvious. However, the prior art date of the Burrow reference is March 5, 2001, which is an intervening date between the US filing date of EnOcean’s application (November 25, 2002) and the filing date of the German priority application (May 24, 2000).
The Board of Patent Appeals and Interferences (“Board”) treated the amended claims in EnOcean’s application reciting a “receiver” as means-plus-function claims, and, as such, found that these claims were not supported by the German priority application because the priority document did not describe the structure corresponding to the “receiver”. The Board found that these claims were not entitled to the earlier priority date of the German application, and that these claims were invalid as obvious over the same combination of prior art that invalidated Face’s patent.
EnOcean appealed. The CAFC held that the Board erred in treating certain of EnOcean’s claims as means-plus-function claims.
In case of first impression, the CAFC determines that the principles of prosecution history estoppel apply to design patents.
| January 31, 2014
Pacific Coast Marine v. Malibu Boats, LLC
Decided January 8, 2014
Before Dyk, Mayer, and Chen. Opinion by Dyk.
Summary
Bach’s original design patent application included multiple embodiments of a marine windshield. The Examiner issued a restriction requirement, in response to which Bach elected the first embodiment, canceled the other four, and filed a divisional for the third embodiment only. After the patent issued, Bach assigned it to Pacific Coast, which sued Malibu Boats for infringement. The Malibu Boats windshield differed slightly from the patented embodiment, as well as the non-elected embodiments. The district court granted Malibu Boats’ motion for partial summary judgment of non-infringement on the grounds of prosecution history estoppel, finding that “that, during prosecution, the applicant had surrendered the designs reflected in the canceled figures and amended the claim ‘in order to obtain the patent.’” The CAFC reversed, holding that although “there was a surrender of claim scope during prosecution,” the accused design was not “within the scope of the surrender.”
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