Tag Archives: federal circuit

No Wrong Notes: Federal Circuit’s Piano Factory Decision Holds TTAB in Tune with Arthrex

This blog previously reported[1] that on June 21, 2021, the Supreme Court issued its landmark decision in United States v. Arthrex, Inc., holding – in Chief Justice Roberts’ 5-4 opinion – that “the unreviewable authority wielded by [administrative patent judges, or APJs] during inter partes review [IPR] is incompatible with their appointment by the Secretary … Continue Reading

Federal Circuit Takes Judicial Notice of Wayback Machine Evidence of Prior Art

By Andrew Samuels on August 31, 2021 Posted in Patents

In its Aug. 17 decision in Valve Corporation v. Ironburg Inventions Ltd., the Federal Circuit appears to have cleared the way for district courts to take judicial notice of Wayback Machine captures as evidence of prior-art printed publications. As many readers of this blog will know, the Wayback Machine is an online digital archive of … Continue Reading

Federal Circuit Clarifies Standard For Bringing a Cancellation Proceeding under 15 U.S.C. § 1064

By Kevin Bovard on December 2, 2020 Posted in Trademark

In a recent decision, Corcamore, LLC v. SFM, LLC, 978 F.3d 1298 (Fed. Cir. 2020), the Court of Appeals for the Federal Circuit clarified the standard for maintaining a petition to cancel a trademark registration under §1064 of the Lanham Act. The Federal Circuit noted that while these questions are often framed as questions of … Continue Reading

CAFC Holds the Lack of a Property Interest in a Trademark Does Not Prevent the Commencement of a Cancellation Proceeding

By Robert Horowitz on August 10, 2020 Posted in Trademark

The Court of Appeals for the Federal Circuit (“CAFC”), in a 2-1 vote, held in Australian Therapeutic Supplies Pty., Ltd. v. Naked TM, LLC, Appeal No. 2019-1567 (Fed.Cir. July 27, 2020) (accessible at http://www.cafc.uscourts.gov/node/26425), that a property interest in a mark is unnecessary for a cancellation petitioner to establish a statutory right to commence a … Continue Reading

Child Artists, Rejoice: Federal Circuit Affirms Noninfringement and Invalidity Judgments Against Designer of Chalk Holders

By Robert Razzano on June 4, 2020 Posted in Patent

The COVID-19 pandemic has caused sweeping changes to our daily lives and the way we interact with one another. Many of these changes have been rather unwelcome. But one pleasant change I have noticed is a significant increase in driveway chalk art. Children across the country now can rest easy knowing they have not infringed … Continue Reading

Something on Which Even Patent Litigators Can Agree: McRO v. Bandai, Inc. Clarifies the Framework for Enablement Challenges and for Enablement Defenses

By Aaron Rabinowitz on June 1, 2020 Posted in Patent

In McRO, Inc. v. Bandai Namco, Inc. et al., No. 2019-1557, __ F.3d __ (Fed. Cir. May 20, 2020), the Federal Circuit reversed a judgment of invalidity and in doing so provided needed clarity concerning the application of the enablement requirement. This guidance is useful to patent owners and patent challengers, as the decision explains … Continue Reading

Federal Circuit’s COVID-19 Response Brings Public Telephonic Oral Arguments and Patent Cases Decided on the Briefs

By John Murphy on April 13, 2020 Posted in Patent

The Federal Circuit’s April court week, held amid the COVID-19 pandemic, was like no other in the court’s history. Instead of hearing 12 oral arguments per day in its three courtrooms, the Circuit held a handful of telephonic oral arguments and decided the great majority of this month’s cases on the briefs. As a side … Continue Reading

Federal Circuit Holds Lack of Efficacy Data Defeats ‘Substantial Evidence’ Showing of a Reasonable Expectation of Success Needed To Support PTAB’S Finding of Obviousness

By Scott Feldmann on October 7, 2019 Posted in Patent

In a precedential opinion, the Federal Circuit reversed a Patent Trial and Appeal Board (PTAB) finding of obviousness invalidating a patent’s method claims for administering a drug for treating non-small cell lung (NSCLC) cancer.[1] The PTAB found that it would have been obvious to combine pharmaceutical references. The Federal Circuit, however, noted that the “asserted … Continue Reading

Proving That a Negative Claim Limitation Is Disclosed by the Prior Art: Takeaways From Two Recent Federal Circuit Opinions

By Mark Einsiedel on September 25, 2019 Posted in Patent

Occasionally, a patentee will seek to define its invention with claims that recite a negative claim limitation – a specialized category of claim element that recites an element that is expressly and deliberately excluded.[1] By way of example, a claim directed to a stool with the limitation that the stool is “devoid of a backrest … Continue Reading

Precedential Opinion Stressing That Design Patents Cover Articles of Manufacture

By Tayan Patel on September 18, 2019 Posted in Patent

In a case of first impression, the Federal Circuit held that “claim language can limit the scope of a design patent where the claim language supplies the only instance of an article of manufacture that appears nowhere in the figures.” Curver Luxembourg, SARL v. Home Expressions Inc., No. 2018-2214 (Fed. Cir. Sept. 12, 2019). … Continue Reading

Federal Circuit Confirms the Value of Design Patents Covering Replacement Parts

By Lisa N. Collins and Erin Caldwell on September 5, 2019 Posted in Patent

On July 23, 2019, the Federal Circuit departed from its utility patent-focused docket to deliver a precedential opinion relating to design patents in Auto. Body Parts Ass’n v. Ford Global Techns., LLC. At issue were the validity and enforceability of design patents on automotive repair and replacement parts. The case arose from a filing by … Continue Reading

Supreme Court Unshrouds the ‘On Sale’ Bar as Applied to Secret Sales

By Erin Caldwell on January 25, 2019 Posted in Federal Circuit, Patent

This week, the Supreme Court issued a decision holding that a secret sale qualifies as prior art. At issue was whether the America Invents Act (AIA) changed the “on sale” bar to patentability to exempt secret sales as prior art.[1] The case, Helsinn Healthcare v. Teva Pharmaceuticals USA, arose out of agreements entered into by … Continue Reading

The Federal Circuit Weighs In on Evidentiary Considerations for Famous Marks and Analyzes Third-Party Usage

By Jason Oliver on December 18, 2018 Posted in Trademark

The Court of Appeals for the Federal Circuit recently held that the Trademark Trial and Appeal Board (TTAB) erred in concluding that there is no likelihood of confusion between Omaha Steaks International’s registered trademarks and Greater Omaha Packing Company’s (Greater Omaha) GREATER OMAHA PROVIDING THE HIGHEST QUALITY BEEF trademark. Most significantly, the Federal Circuit held … Continue Reading

Federal Circuit Appears to Narrow the Exceptions to 35 U.S.C. § 101

By Allen Sokal on March 13, 2017 Posted in Patent

Unquestionably, the narrower a patent’s claims, the more likely they are to pass muster under 35 U.S.C. § 101. But if you have an invention with broad applicability, how broadly can you claim it without running into eligibility problems? The answer, both literally and figuratively: the sky’s the limit. In Thales Visionix Inc. v. United States, … Continue Reading

Amdocs Highlights Panel Dependency of §101 Decisions at Federal Circuit

By Michael Stein on November 2, 2016 Posted in Federal Circuit, Patent

In Amdocs v. Openet Telecom, the Federal Circuit reversed a district court ruling that the claims of several patents were invalid under 35 USC § 101.[1] Judge Plager authored the opinion for the court, and he was joined by Judge Newman. Judge Reyna authored a lengthy dissent objecting to the overall approach taken by the … Continue Reading

Patent Exhaustion Case Could Have Enormous Impact on Multinational Businesses

By Michael Stein on October 18, 2016 Posted in Federal Circuit, Patent

Earlier this year, the Federal Circuit ruled en banc in Lexmark v. Impression,[1] the most significant exhaustion ruling since the Supreme Court’s Quanta decision.[2] In response to Impression’s cert. petition, the Supreme Court called for the views of the Solicitor General. The U.S. has now filed its brief, recommending cert. be granted on both questions. … Continue Reading

A Split Panel of the Federal Circuit Debates the Standards for Definiteness

By Allen Sokal on October 3, 2016 Posted in Federal Circuit, Patent

In Cox Communications, Inc. v. Sprint Communications Co. LP, Appeal No. 2016-1013 (Fed. Cir. Sept. 23, 2016), the panel, consisting of Chief Judge Prost (authoring the opinion) and Judges Newman and Bryson, unanimously reversed the district court’s summary judgment of invalidity for indefiniteness under 35 U.S.C. § 112, para. 2. But Judge Newman vigorously rejected the … Continue Reading

Federal Circuit Holds PTAB Unreasonable in Denying Motion to Amend

By Allen Sokal on September 2, 2016 Posted in Federal Circuit

In Veritas Technologies LLC v. Veeam Software Corp., Appeal No. 2015-1894 (Fed. Cir. Aug. 30, 2016), the Federal Circuit affirmed the PTAB’s conclusion of obviousness but vacated its denial of a conditional motion to amend and remanded for the PTAB to address the patentability of the substitute claims. The patent owner, Veritas, argued for a … Continue Reading

Federal Circuit Provides Guidance on Use of Common Sense in Obviousness Analysis

By Sarah Dukmen on August 15, 2016 Posted in Federal Circuit, Patent

Last week, in Arendi S.A.R.L. v. Apple, the Federal Circuit reversed a Patent Trial and Appeal Board (PTAB) finding of invalidity in an inter partes review that relied on “common sense” to supply a claim limitation that was not disclosed by the prior art. When used to support a finding of obviousness, common sense is … Continue Reading

Federal Circuit Provides Additional Guidance in Reversing Holding of Patent-Ineligibility of Biotech Invention

By Allen Sokal on July 7, 2016 Posted in Patent

Although it is not yet a bright line, the Federal Circuit has considerably decreased the fuzziness of the distinction between patent-eligible and patent-ineligible inventions, at least where the exception to 35 U.S.C. § 101 is a law of nature. In Rapid Litigation Management Ltd. v. Cellzdirect, Inc., Appeal No. 2015-1570 (Fed. Cir. July 5, 2016), the … Continue Reading

Apportioning for the Standard When Valuing Standards-Essential Patents

By Kevin Flynn on June 8, 2016 Posted in Federal Circuit, Patent

Commonwealth Scientific and Industrial Research Organisation (CSIRO), a national research organization of Australia, recently filed a petition for certiorari with the Supreme Court. CSIRO presents the following question: Is the Federal Circuit’s promulgation of rigid legal rules to control the weight to be given by the trier of fact to evidence of patent infringement damages … Continue Reading

Upcoming Federal Circuit Decision Presents Opportunity for Clarification of Patentable Subject Matter

By Brendan Clark on February 25, 2016 Posted in Federal Circuit, Patent

Since Alice,[1] consistently defining the bounds of statutory subject matter in computer arts confounds even the most experienced attorneys. E-commerce software combining visual elements of multiple parties’ websites is patent eligible,[2] but a motion-tracking system claiming inertial sensors is not.[3] While the results have cut sharply against patent holders asserting or prosecuting software properties, legal … Continue Reading