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Merchant &amp; Gould’s Appellate Group provides clients with specialized experience in appellate advocacy. &nbsp;The attorneys in Merchant &amp; Gould’s Appellate Group have extensive experience with appellate advocacy in a broad spectrum of legal areas and technologies. &nbsp;Our attorneys have successfully handled numerous patent appeals at the Federal Circuit and appeals on a wide range of other intellectual property cases, including copyright, trademark, right of publicity, and trade secrets in circuit courts across the country. &nbsp;Merchant &amp; Gould’s Appellate Group includes attorneys who have extensive experience both in private practice as well as attorneys who formerly served as judicial law clerks to federal circuit court judges. &nbsp;

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The attorneys in Merchant &amp; Gould’s Appellate Group consult at all stages of trial and post-trial proceedings. &nbsp;At the trial stage, our attorneys look ahead to spot, preserve, and ensure an appropriate record is developed for potential post-trial appeal issues. &nbsp;After trial, we assist with post-trial motions to assure that issues are properly preserved and presented, all with a potential future appeal in mind. &nbsp;Attorneys from Merchant &amp; Gould’s Appellate Group are also often engaged to handle post-trial proceedings and appeals for cases in which the firm was not previously involved. &nbsp;In these cases, clients look to our attorneys for their specialized knowledge and insight into the appeal process—a process that is quite different in strategy, procedure, and execution from the trial court proceedings. &nbsp;In each of these instances, our attorneys use their extensive knowledge of intellectual property law and appellate practice to identify and frame the relevant legal and factual issues and engage in all aspects of appellate advocacy and amicus representation.

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The attorneys in Merchant &amp; Gould’s Appellate Group carefully monitor developments in intellectual property law and stay current on relevant appellate issues in a variety of ways. &nbsp;Our attorneys regularly write articles and lecture on important appellate topics. &nbsp;Members of our Appellate Group also regularly provide internal presentations on significant and recent Federal Circuit court decisions to other attorneys in the firm. &nbsp;And the Firm’s Whitepaper project focuses on providing the firm’s attorneys and clients with current information on important and emerging legal issues.

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Rachel Zimmerman Scobie

Elizabeth Harwood Pierce

Marra M. Clay

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Last week, the United States Court of Appeals for the Federal Circuit issued its opinion in&nbsp;<a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-1732.Opinion.2-13-2019.pdf" target="_blank" rel="noopener">Trading Technologies International, Inc. v.&nbsp;IBG LLC</a>, &nbsp;2017-2323&nbsp;(April 30, 2019). The Patent Trial and Appeal Board instituted a petition filed by IBG for covered business method (“CBM”) review of U.S. Patent No. 7,783,556, which “relates to displaying market information on a screen.” In a final written decision, the Board held all claims of the ’556 patent addressed patent ineligible subject matter and were, therefore, invalid under 35 U.S.C. § 101. The patent owner, Trading Technologies, appealed.&nbsp;
The Federal Circuit affirmed. The Court first concluded the ’556 patent was eligible for CBM review. Trading Technologies argued the ’556 patent was ineligible for CBM review because it claimed a technological invention, an express statutory exception to the CBM review process. The Court disagreed, explaining the ’556 patent merely provides “a trader with new or different information in an existing trading screen,” which “is not a technical solution to a technical problem.” Instead, the Court stated, “it focuses on improving the trader, not the functioning of the computer.”&nbsp;
The Court also affirmed the Board’s decision on the merits of the § 101 analysis. Applying&nbsp;Alice&nbsp;step one, the Court concluded the claims are directed to a patent-ineligible concept because the claimed advance over the prior art—providing a trader with additional financial information to facilitate trades—is an abstract idea. The Court explained that steps, such as “identifying a long or short position taken by a user” or “computing by the computing device a plurality of values” representing “a profit or loss if the long or short position is closed at a price level,” merely automated manual processes using a generic computer. Turning to&nbsp;Alice&nbsp;step two, the Court held the claims failed to recite any inventive concept: “Even if no trading screen had previously displayed P&amp;L values, ‘a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.’”
The Court refused to consider Trading Technologies’ argument that the CBM review procedure is unconstitutional under the Seventh Amendment, Article III, the Due Process Clause, and the Takings Clause. Because these constitutional challenges were addressed in only four conclusory sentences in Trading Technologies’ brief, the Court held they were waived.
</div>

CAFC Affirms PTAB § 101 Invalidity Holding in CBM Review

CAFC Designates Informational Matter Doctrine Decision Precedential

CAFC Reverses PTAB’s Printed Publication Decision

Last week, the U.S. Court of Appeals for the Fourth Circuit issued a precedential decision in <a href="https://www.ca4.uscourts.gov/opinions/211168.P.pdf">Sony Music Entertainment v. Cox Communications, Inc., No. 21-1168 (Feb. 20, 2024)</a>, affirming Cox’s liability for contributory copyright infringement but reversing a vicarious infringement verdict, vacating a $1&nbsp;billion statutory damages award, and remanding for a new trial on damages.



The Fourth Circuit previously determined that Cox, an internet service provider, could be held liable for its subscribers’ infringement between 2013 and 2014 because it failed to implement a sufficient anti-piracy program as required under the Digital Millennium Copyright Act’s safe harbor provision. BMG Rts. Mgmt. (US) LLC v. Cox Commc’ns, Inc., 881 F.3d 293 (4th Cir. 2018). Cox received more than 160,000 infringement notices from Plaintiffs’ representative but terminated only 32&nbsp;subscribers under its Acceptable Use Policy. Back in the trial court, a jury found Cox willfully liable for vicarious and contributory infringement of 10,017 copyrighted works and awarded statutory damages of roughly $100,000&nbsp;per work, totaling $1&nbsp;billion for both theories combined. Cox appealed.



The Fourth Circuit affirmed the contributory infringement verdict. The Court explained that substantial evidence supported a determination that Cox continued to provide the internet service necessary for online infringement to certain repeat infringers despite a substantial certainty that those subscribers would continue infringing Plaintiffs’ copyrights.



However, the Court reversed the jury’s finding of vicarious infringement because the evidence failed to show that Cox directly profited from its subscribers’ infringement. The Court explained that the price of Cox’s monthly fee depended on the amount of accessible data, not on the nature of the data use. Thus, while Cox benefitted by continuing to collect fees from repeat infringers, it did not have a direct financial interest in their infringement because the fee remained static regardless of subscribers’ online activities. The Court noted that the relatively data-intensive nature of the infringing conduct did not show that any infringer paid for more data specifically to infringe because many legitimate online activities are also data-intensive.



The Court vacated the combined statutory damages award and remanded for a new trial on damages. The jury calculated a single award considering the circumstances underlying both theories. The Court concluded that the erroneous finding that Cox directly benefitted from the infringement likely influenced the jury’s exercise of its wide discretion necessitating a new trial on damages limited to contributory infringement.

4th Circuit Vacates and Remands $1 Billion Copyright Damages Award

Last week, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in <a href="https://cafc.uscourts.gov/opinions-orders/22-1391.OPINION.2-26-2024_2276014.pdf">Freshub, Inc. v. Amazon.com, Inc., No. 22-1391 (Feb. 26, 2024)</a>, affirming the district court’s judgment of noninfringement and no inequitable conduct.



Freshub sued Amazon.com and several of its subsidiaries for infringing Freshub’s patents on voice-processing technology. Freshub asserted that Amazon’s consumer devices, such as the Amazon Echo, infringed the asserted claims when used to create and maintain a shopping list associated with the user. After trial, the jury returned a verdict of noninfringement of all asserted claims. Freshub’s post-trial motion for judgment as a matter of law was denied, as was its motion for a new trial. Amazon had asserted an affirmative defense of inequitable conduct, alleging a petition to revive the parent application following its abandonment falsely stated that the abandonment was unintentional when it was in fact intentional. The district court held a bench trial and concluded Amazon had failed to prove inequitable conduct because it had not offered clear and convincing evidence of the falsity of the representation or intent to deceive. Freshub appealed and Amazon cross-appealed.



The Federal Circuit affirmed. On Freshub’s argument for judgment as a matter of law, the Court concluded that substantial evidence supported the jury’s verdict based on the claimed requirement that the system “identify an item corresponding to the text” and “add the identified item to a list.” Noting the claim element was not construed, the Court concluded that a reasonable understanding of the “identify an item” language is that it refers to a specific purchasable item. The Court explained that there was evidence in the record that the Amazon Alexa shopping list feature is programmed to add words to the list whether or not there exists a purchasable item corresponding to the user’s words. Therefore, a reasonable jury could have found noninfringement on that basis. On Freshub’s argument for a new trial, the Court held the district court did not abuse its discretion in denying the motion because none of the alleged errors rose to the level of requiring a new trial. Finally, on Amazon’s inequitable conduct defense, the Court concluded Amazon had shown no reversible error in the district court’s rejection of the same. The Court explained that, while the evidence presented was susceptible to multiple interpretations, the district court’s finding of no deceptive intent was not clearly erroneous.

CAFC Affirms Judgment that Amazon Shopping List Feature Does Not Infringe

On March 1, 2024, the U.S. District Court for the Southern District of Florida issued an opinion in Earth, Wind &amp; Fire IP, LLC v. Substantial Music Group LLC, 23-20884-CIV-MORENO granting Plaintiff Earth, Wind &amp; Fire IP’s motion for summary judgment. The ruling found the tribute group’s name “Earth, Wind &amp; Fire Legacy Reunion” to be deceptive and misleading.



Earth, Wind &amp; Fire’s hit song “Shining Star” reached number 1 on Billboard’s Hot 100 in 1975. The band had six other hits in the top 10. Earth, Wind &amp; Fire has continued to tour under a license with Plaintiff Earth, Wind &amp; Fire IP, a holding company controlled by band founder Maurice White’s sons. Plaintiff owns the trademark rights to the trademark EARTH WIND &amp; FIRE.



The dispute began when promoters Substantial Music Group LLC and Stellar Communications, Inc. formed a tribute band using the names “Earth Wind &amp; Fire Legacy Reunion” and “The Legacy Reunion of Earth, Wind &amp; Fire.” The promoters used the original band’s “Phoenix” logo mark as part of their promotions. The tribute band included one-time Earth, Wind &amp; Fire guitarist, Richard Smith.



In 2019, Plaintiff demanded that the promoters stop use of the band name and logo. In response the tribute band’s name was changed to “Legacy Reunion of Earth Wind &amp; Fire Alumni.” Over Plaintiff’s protest, Defendants continued to use the name, which led to the lawsuit.



Both sides moved for summary judgment. Plaintiff argued the promoters were liable for trademark infringement, false designation of origin, and false advertising under the Lanham Act. The promoters argued use of the EARTH WIND &amp; FIRE mark was fair use under the nominative fair use doctrine and Plaintiff’s claims were barred by equitable defenses.



The Court granted Plaintiff’s motion, holding that the trademark was strong, that the tribute band’s name was “quite similar” to the trademark, that the services were similar. The Court rejected the promoters’ fair use defense. In assessing three prongs of nominative fair use, the Court found the original band’s name was not “readily identifiable” without use of the trademark, a factor in the promoters’ favor. The Court also found in the promoters’ favor that the trademark was reasonably necessary to use to identify the original band’s services. The promoters failed, however, to establish that their use would not suggest sponsorship by the trademark owner. The Court also rejected promoters’ other equitable defenses.



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Earth, Wind & Fire Band Prevails in Trademark Suit Against Tribute Band

Recently, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Maxell, Ltd. v. Amperex Technology Ltd., No. 2023-1194 (March 6, 2024), reversing a claim construction ruling by Judge Albright of the Western District of Texas. Maxell owns U.S. Patent No. 9,077,035 (the ’035 patent), directed to rechargeable lithium-ion batteries. Maxell filed an infringement lawsuit against Amperex, a Chinese manufacturer of lithium-ion batteries. In response, Amperex asserted that claim 1 of the ’035 patent was invalid as indefinite.



The claim at issue requires at least two lithium-containing transition metal oxides, represented by formulas including a transition metal element M1. The relevant claim limitations read:



<ol type="1">
<li>“M1&nbsp;represents at least one transition metal element selected from Co, Ni and Mn.”</li>
</ol>



<ol type="1" start="2">
<li>“Wherein the content of Co in the transition metal M1&nbsp;of the formulae (1) and (2) is from 30% by mole to 100% by mole.”</li>
</ol>



Following claim construction, Judge Albright’s Markman order found claim 1 to be indefinite because “the plain language of [claim 1] recites a contradiction.” That is: “[t]he first part of the claim recites a Markush group where [cobalt] is not necessarily required to be in the claimed compound while the second part of the claim recites that [cobalt] is necessarily required. For an element to simultaneously be optional and required is a contradiction on its face.” Judge Albright entered partial final judgment on claim 1 in favor of Amperex. Maxell appealed.



The Federal Circuit reversed and remanded. The Court found that claim 1 was not indefinite because the limitations in question were consistent. The Court held “[i]f there are two requirements, and it is possible to meet both, there is no contradiction.” The Court determined that limitation 2 narrowed limitation 1 rather than contradicting it. The first limitation states one requirement, i.e., a transition metal containing cobalt, nickel, or manganese. The second limitation states that the transition metal element must contain 30% to 100% cobalt by mole. Thus, it was completely possible for a transition metal element to meet both requirements.



The Court further noted that narrowing does not imply contradiction when it is done through dependent claims. Relying on Amperex’s concession at oral argument, the Court determined that there would be no contradiction if limitation 2 was written as a dependent claim. Accordingly, the Court reversed Judge Albright’s indefiniteness finding and remanded.

Federal Circuit Reverses Texas District Court’s Indefiniteness Finding

On March 18, 2024, the U.S. District Court for the District of Delaware issued an opinion in <a href="https://www.ded.uscourts.gov/sites/ded/files/opinions/21-1338.pdf">Puma Biotechnology, Inc v. AstraZeneca Pharmaceuticals LP et al, 1:21-cv-1338-MFK</a> granting AstraZeneca&#8217;s motion for pre-issuance damages.



The parties are pharmaceutical companies that commercialize drugs to treat cancer and other illnesses. The suit is trying to block sales of AstraZeneca&#8217;s drug Tagrisso (osimertinib) to treat lung cancer, which AstraZeneca has been selling since 2015. Wyeth has an exclusive license with Puma for developing and commercializing Wyeth&#8217;s drug Nerlynx (neratinib) for treating breast cancer and is currently in clinical trials for treating lung cancer. The patents-in-suit (10,603,314 and 10,596,162) claim a method of treating a certain form of non-small cell lung cancer.



AstraZeneca moved for summary judgement on a variety of issues, including standing, invalidity, non-infringement, and pre-issuance damages, which the court denied with the exception of the pre-issuance damages.



Wyeth argued that a narrow exception exists to the general rule that patent owners can only collect damages for patent infringement that occurs during a patent term. The proposed exception comes from the &#8220;provisional rights&#8221; codified at 35 U.S.C. § 154(d), where a patent owner has the right to obtain a reasonable royalty from:



any person who, during the period beginning on the date of publication of the application for such patent . . . and ending on the date the patent is issued:



(A)(i) makes, uses, offers for sale, or sells in the United States the invention as claimed in the published patent application or imports such an invention into the United States; or



(ii) if the invention as claimed in the published patent application is a process, uses, offers for sale, or sells in the United States or imports into the United States products made by that process as claimed in the published patent application. &nbsp;



&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; 35 U.S.C. § 154(d)(1) (emphasis added).



The parties recognized and agreed that § 154(d) does not explicitly include a provision incorporating the induced infringement language of § 271(b); however, Wyeth argued that section 154(d) does not need to expressly mention induced infringement. The court disagreed based on the plain text of § 271(b) being directed to induced infringement of a patent while § 154(d) only extends rights to certain conduct specifically enumerated and not to all post-issuance patent rights. Therefore, the statute does not authorize pre-issuance damages for induced infringement.

Third Circuit Affirms No Pre-Issuance Damages for Induced Infringement

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/22-1998.OPINION.3-27-2024_2292085.pdf">Virtek Vision International ULC v. Assembly Guidance Systems, Inc. (d/b/a Aligned Vision), Nos. 2022-1998, -2022 (Mar. 27, 2024)</a>, overturning a Patent Trial and Appeal Board determination that certain claims of Virtek’s challenged patent, were unpatentable, while affirming the patentability of other claims.



Virtek’s challenged patent focuses on aligning a laser projector with a work surface, purportedly improving efficiency. Aligned Vision challenged the patent’s validity through Inter Partes Review on four grounds. Claim 1 of the patent involves identifying reflective targets on a work surface in a three-dimensional coordinate system. Keitler and Bridges, references cited for grounds 1 and 3, lack this feature, relying instead on determining the angular direction of targets. Aligned Vision cited Briggs for the 3D coordinate system, and the Board agreed that the combination rendered the challenged claims obvious because Briggs mentions both use of 3D coordinates and angular directions. As for grounds 2 and 4, the Board held there was no motivation to combine the asserted references and, therefore, the challenged claims were not unpatentable on those grounds. Virtek appealed and Aligned Vision cross-appealed.



The Federal Circuit reversed as to the appeal and affirmed as to the cross-appeal. On the appeal of grounds 1 and 3, the Court explained that mere acknowledgment of different options in prior art does not justify their combination without a reason for combining them. The Court held the Board erred in relying on the fact that both measurement systems were known in the prior art because that fact alone does not suffice to explain why a skilled artisan would have been motivated to substitute one for the other. The Court also highlighted the absence of arguments in the petition articulating an alleged motivation, such as common sense or market pressure.



On the cross-appeal addressing grounds 2 and 4, the Court rejected Aligned Vision’s assertion that the Board erred in finding no motivation to combine. The Court noted that, although on appeal Aligned Vision argued the motivation to combine the references is a matter of “common sense,” Aligned Vision did not argue or present evidence concerning common sense to the Board. The Court held that the arguments Aligned Vision made to the Board, which focused on the fact that the claim elements were known in the prior art, were insufficient.&nbsp;

CAFC Addresses Inadequate Motivation to Combine Prior Art References

<h2 class="wp-block-heading">Five new hires bring decades of experience, leadership and innovation</h2>



Merchant &amp; Gould welcomes Daniel J. Pereira, Ph.D., John S. Kern, Eric W. Schweibenz, and Donald R. McPhail, as Partners and Alexander B. Englehart, as Of Counsel in its Washington D.C. Area office. The new additions will expand Merchant &amp; Gould’s capabilities in handling International Trade Commission (ITC) cases, complex IP litigation, post-grant proceedings, patent prosecution, and strategic IP portfolio management, as well as increase its presence in Japan, China, Taiwan and Korea.



“We are continually investing in serving our client base worldwide, and this group will deepen our bench nationally and increase our existing presence in Japan, China, Taiwan and Korea,” said Heather Kliebenstein, Managing Director and Partner at Merchant &amp; Gould. “Each of these experienced attorneys brings the right cross-culture experience and technical background that we want at Merchant &amp; Gould.”



All five hires look forward to continuing their work in the D.C. area, serving clients worldwide. Merchant &amp; Gould’s long-standing reputation for stability, creative legal solutions, collaboration and technologically advanced systems attracted the latest hires.&nbsp;



“Transitioning to Merchant &amp; Gould was the right move for us and our clients. We are excited to join such a dynamic firm that has superior technical strength, advanced internal systems and processes, extensive trial experience, and breadth of knowledge in all areas of intellectual property,” said Pereira. Dr. Pereira most recently served as the Managing Partner and previously led the Chemical Practice Group at Oblon. Mr. Kern and Mr. Schweibenz formerly led the Electrical/Mechanical and Litigation Practice Groups, respectively.



One of the oldest full-service intellectual property and trial law firms in America, Merchant &amp; Gould evolves with technology, just like its client base. Through harnessing and pioneering advanced legal solutions, they have established themselves as an indispensable partner in delivering exceptional legal guidance and service to their clients.



“When we look to add new talent to our team at Merchant &amp; Gould, we want to find people who have the right mindset — forward-thinking, collaborative and client-focused,” Kliebenstein shared. “Each of these attorneys embodies those values and will carry our firm’s legacy forward.”

Strategic Power Move: Merchant & Gould Lures Quintet of Highly-Experienced Attorneys to Supercharge DC Office and Accelerate Asia Expansion

Last week, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in <a href="https://cafc.uscourts.gov/opinions-orders/22-1905.OPINION.4-12-2024_2300689.pdf">Luv n&#8217; care, Ltd. v. Laurain, No. 2022-1905 (Apr. 12, 2024)</a>, affirming the district court’s judgment that unclean hands barred recovery on all counterclaims.



Luv n’ care, Ltd. and Nouri Hakim (collectively “LNC”) sued Lindsey Laurain and Eazy-PZ, LLC (collectively “EZPZ”) for acts of unfair competition and sought declaratory judgment that EZPZ’s U.S. Design Patent No. D745,327 and U.S. Patent No. 9,462,903 are invalid, unenforceable, and not infringed. EZPZ filed counterclaims for infringement of the ‘327 and ‘903 patents as well as copyright, trademark, and trade dress infringement, acts of unfair competition, and unjust enrichment. The district court found that the doctrine of unclean hands barred EZPZ from seeking relief on all counterclaims. &nbsp;



The Federal Circuit affirmed. The Court found no clear error in the district court’s finding that EZPZ engaged in unconscionable conduct with respect to its claim of infringement of the ‘903 patent which bore a necessary and immediate connection to all EZPZ’s counterclaims. First, the Court held that the record supported the district court’s finding that EZPZ “by deceit and reprehensible conduct attempted to gain an unfair advantage” resulting in “loss of confidence in [EZPZ’s] candor.” EZPZ failed to disclose relevant patent applications related to the ‘903 patent until after close of discovery and dispositive motion practice without providing good faith justification, attempted to prevent LNC from discovering relevant prior art searches, and EZPZ witnesses purposefully gave false testimony.



Second, the Court held that the record supported a finding that EZPZ’s conduct bore an “immediate and necessary” connection to EZPZ’s claim of infringement of the ‘903 patent. One undisclosed patent application was directly relevant to a disputed claim term in the ‘903 patent, the prior art searches may have supported a finding that EZPZ located key references prior to filing the patent application leading to the ‘903 patent, and false testimony by EZPZ witnesses deprived LNC of material information relevant to its litigation strategy.



Finally, the Court held that the record supported a finding that EZPZ’s conduct bore an “immediate and necessary” connection to its remaining counterclaims. The district court held that “[t]he [c]ourt’s loss of confidence in a party’s candor cannot be overcome with respect to other theories of recovery” and the Federal Circuit found no clear error. Accordingly, EZPZ is barred from seeking recovery on all counterclaims.

CAFC Affirms Judgment that Unclean Hands Barred Recovery on all Counterclaims

Last week, the U.S. Court of Appeals for the Second Circuit issued an opinion in <a href="https://ww3.ca2.uscourts.gov/decisions/isysquery/363bbecd-6931-4b1f-8ba4-35e322d251bb/1/doc/23-325_opn.pdf">City of New York v. Henriquez, No. 23-325-cv (April 16, 2024)</a>, vacating the district court’s grant of a preliminary injunction against the Fire Department of New York (“FDNY”).



In 2011-2012, appellant Juan Henriquez, a rescue paramedic with FDNY, began to organize conferences geared toward civilian emergency responders called “Medical Special Operations Conferences” or “MSOC” (collectively, the “marks”). Initially, Henriquez collaborated with FDNY, but by 2018 he asked FDNY to remove references to the marks from its website. In 2019, Henriquez sought federal registration of the marks. While his application was initially rejected because the PTO found the marks merely descriptive, Henriquez ultimately succeeded in obtaining registration in 2020 after attesting he had been using the marks on a substantially exclusive and continuous basis for at least five years.



FDNY, also claiming rights in the marks, asked Henriquez to stop using them in 2019, before eventually bringing suit in the Eastern District of New York to cancel Henriquez’s registration. Henriquez countersued for trademark infringement and sought a preliminary injunction, which the district court granted. FDNY appealed.



On appeal, the Second Circuit held that the district court committed legal error by overestimating the strength of the marks and finding them to be suggestive, rather than descriptive. Because the Court found this legal error was central to the district court’s decision, it held the issuance of the preliminary injunction was an abuse of discretion.



The Court held that the district court made three missteps in evaluating the marks’ strength under the Polaroid factors. First, the district court ignored Henriquez’s own implicit concessions that the marks are descriptive. Second, the district court misunderstood the PTO’s determination. The district court presumed the marks were inherently distinctive, citing the principle that registration without proof of secondary meaning creates such a presumption. Here, however, the PTO determined the marks were merely descriptive, and only registered them after receiving evidence of secondary meaning, so the proper presumption is that they are inherently descriptive with acquired secondary meaning. Finally, the district court failed to properly consider whether the intended audience—prospective MSOC attendees—would consider the marks descriptive. Ultimately, the Court determined the marks are weak and entitled to only “extremely narrow” protection. Because Henriquez did not rely on any other Polaroid factors to defend the preliminary injunction, the Court vacated and remanded.

Second Circuit Vacates Preliminary Injunction in Trademark Case

Recently, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/23-1142.OPINION.4-30-2024_2310031.pdf">Araujo v. Framboise Holdings Inc., No. 2023-1142 (April 30, 2024)</a>, affirming the Trademark Trial and Appeal Board’s refusal to register Araujo’s standard character mark #TODECACHO.



On December 3, 2019, Araujo filed a trademark application to register #TODECACHO as a standard character mark for hair combs. Framboise Holdings, Inc. filed an opposition asserting that Araujo’s mark would likely cause confusion with Framboise’s #TODECACHO design mark. Framboise alleged ownership of its design mark based on prior use of the mark in the United States in connection with various hair products beginning as early as March 24, 2017. Relying on a declaration from the Director of Framboise, the Board held that Framboise had met its burden to establish prior use by a preponderance of the evidence and that the declaration alone was sufficient to prove prior use because it was clear, convincing, and uncontradicted. Finding an earlier priority date for Framboise, the Board found a likelihood of confusion between the two marks, sustained the opposition, and refused registration of Araujo’s mark.



The Federal Circuit affirmed. On appeal, Araujo argued the Board’s finding that Framboise established prior use of the #TODECACHO design mark was not supported by substantial evidence because the Board relied on the testimony of a single interested witness whose declaration comprised merely naked general assertions of prior use. The Court disagreed, holding the Board’s determination that Framboise established its prior use of the #TODECACHO design mark was supported by substantial evidence. The declaration at issue was based on an individual’s personal knowledge and the records maintained by Framboise, provided a list of products and a specific date the design mark was used in connection therewith, and provided representative examples of the mark as displayed on products in stores in the United States. Araujo did not offer any evidence to dispute Framboise’s prior use and declined to depose the Framboise director. The Court concluded that when presented with the employee declaration and nothing to contradict it, a reasonable mind could conclude that Framboise had established its priority date by a preponderance of the evidence.

Federal Circuit Affirms Trademark Board’s Finding of Prior Use Based on Employee Declaration

This month, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in <a href="https://cafc.uscourts.gov/opinions-orders/22-1649.OPINION.5-8-2024_2314572.pdf">Zircon Corp. v. ITC, No. 2022-1649 (May 8, 2024)</a>, affirming the U.S. International Trade Commission’s (“ITC”) final determination of no violation of 19 U.S.C. §&nbsp;1337 (“section 337”) based on Zircon’s failure to satisfy the statute’s domestic industry requirement.



Zircon filed a complaint with the ITC alleging respondents Stanley Black &amp; Decker, Inc. and Black &amp; Decker (U.S.) Inc. infringed three patents related to electronic stud finders, and the ITC instituted an investigation. During the evidentiary hearing before an administrative law judge (“ALJ”), Zircon contended that it satisfied the domestic industry requirement’s economic prong based on U.S. investments related to 53 stud finder products, most of which practiced some but not all of the asserted patents. Zircon further contended that these investments were significant based on the aggregate amount for all 53 products and did not allocate investments to particular products, product groups, or patents. The ALJ found that these aggregated investments precluded analysis of the investments as to each asserted patent, such that Zircon failed to satisfy the domestic industry requirement. The ITC affirmed that finding, and Zircon appealed.



The Federal Circuit affirmed. It observed that section 337 requires proof of a domestic industry based on significant or substantial investment “relating to articles protected by the patent” at issue. 19 U.S.C. §&nbsp;1337(a)(2). The Court explained that under this language and prior precedent, where different products or product groups practice different asserted patents, separate domestic industries must be established for each product or group. The Court distinguished prior cases that concerned products that all practiced the same asserted patents or that predated the 1988 amendments to section 337, which adopted the current statutory language. The Court also concluded that a declaration from Zircon’s executive providing a revenue-based per-patent breakdown was not at issue because Zircon failed to appeal both the ALJ’s decision excluding it and the ITC’s decision finding Zircon abandoned its right to rely on it. Finally, the Court affirmed the ITC’s finding that uncorroborated testimony from the Zircon executive relating to research and development investments related to one asserted patent was unreliable and failed to satisfy the domestic industry requirement as to that patent.

CAFC Affirms ITC’s Finding of No Violation Due to Complainant’s Failure to Satisfy Domestic Industry Requirement

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/23-1101.OPINION.6-3-2024_2327090.pdf">EcoFactor, Inc. v. Google LLC, 2023-1101 (June 3, 2023)</a>, affirming a judgment of infringement and dismissing three issues raised by Google on appeal.



EcoFactor sued Google alleging that Google’s Nest smart thermostats infringed U.S. Patent No. 8,738,327, which relates to the operation of smart thermostats. The district court denied Google’s motion for summary judgment, which argued that certain claims of the ’327 patent were invalid as directed towards ineligible subject matter. The district court also denied Google’s pretrial motion to exclude the opinion of EcoFactor’s damages expert. After trial, the jury returned a verdict of infringement and awarded damages. The district court denied Google’s post-trial motions for judgment of non-infringement as a matter of law and for a new trial on damages. Google appealed.



The Federal Circuit affirmed. Disposing of Google’s first issue, the Court held that the district court’s denial of summary judgment was not appealable because trial on the merits of the ineligibility issue had been held. Google had not appealed the jury’s verdict that the ’327 patent did not claim ineligible subject matter.



Next, the Court found that the evidence at trial was sufficient to support the jury’s finding that the ’327 patent’s limitation of “receiv[ing] temperature measurements from inside the structure” was met by the accused products. Expert testimony, statements on Google’s webpages, and the accused products’ source code evidenced the products measure temperature inside customer homes, not just inside the thermostat housing, as Google had contended on appeal.



Finally, the Court concluded that a new trial on damages was not warranted, because the opinion of EcoFactor’s expert regarding a hypothetical negotiation was sufficiently reliable. This finding was based on EcoFactor’s expert’s consideration of three EcoFactor license agreements, which provided for a payment of a lump sum amount based on a stated royalty rate—the same royalty rate employed in the expert’s damages calculation—and corroborating testimony of EcoFactor’s CEO. Despite the license agreements pertaining to interrelated EcoFactor patents not at issue, the Court found that EcoFactor’s expert showed the license agreements to be economically comparable to the hypothetical negotiation by citing evidence of market pressures and Google’s profit which could be attributed to the patent at issue. Judge Prost dissented from the majority’s decision on damages, finding EcoFactor’s expert’s method of deriving a royalty rate from the lump-sum licenses unreliable.



Coauthored by Elizabeth Harwood &amp; Emily Threatt.

Federal Circuit Affirms Judgment that Google Smart Thermostat Feature Infringes

Last week, the U.S. Supreme Court issued an opinion in <a href="https://www.supremecourt.gov/opinions/23pdf/22-451_7m58.pdf">Loper Bright Enterprises v. Raimondo, Case No. 22-451</a>, and <a href="https://www.supremecourt.gov/opinions/23pdf/22-451_7m58.pdf">Relentless&nbsp;v.&nbsp;Department of Commerce, Case No. 22-1219 (June 28, 2024)</a>, overturning Chevron U.S.A. v. Natural Resources Defense Council, Inc., 467 U.S. 837, 2778 (1984), and holding Chevron deference could not be squared with the Administrative Procedure Act (APA).



For 40 years, Chevron required courts to defer to an administrative agency’s interpretation of law when deciding challenges to regulations promulgated by the agency. Under Chevron’s two-step analysis, a court first determined if Congress had spoken clearly about the issue of law presented. If it had, the issue was settled. If it had not, the court must defer to the agency’s interpretation, even if this differed from its own interpretation, so long as it was a “permissible” construction of the law at issue.



Both cases decided last week involved a rule promulgated by the National Marines Fisheries Service (NMFS) interpreting the Magnuson-Stevens Fishery Conservation and Management Act (MSA). The rule required some fishing boats to engage and pay for a government-certified third-party observer when fishing for Atlantic herring. The petitioners claimed the NMFS exceeded its authority under the MSA when it issued the rule. The district court granted summary judgment for the Government, and the Court of Appeals for the D.C. Circuit affirmed, because the NMFS’s interpretation of the MSA was owed deference under Chevron.



The Supreme Court disagreed, holding that statutory interpretation was the province of the judicial branch, not the executive branch. The APA requires the “reviewing court,” not agencies, to “decide all relevant questions of law,” including statutory interpretation. 5 U.S.C § 706. Given this mandate, the Court held, Chevron deference “cannot be reconciled with the APA.” Writing for the 6-3 majority, Chief Justice Roberts explained, “[i]t … makes no sense to speak of a ‘permissible’ interpretation that is not the one the court, applying all relevant interpretive tools, concludes is best.” Writing for the minority, Justice Kagan decried the decision as a massive transfer of power: “It is now ‘the courts (rather than the agency)’ that will wield power when Congress has left an area of interpretive discretion.”



Going forward, courts may still look to agency interpretations for guidance, but they are no longer bound by them. While the decision overrules Chevron, it leaves all statutory interpretations previously decided under the Chevron framework intact.



Coauthored by John Winemiller &amp; Korben Smart.

Supreme Court Overrules Chevron

Recently, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in <a href="https://cafc.uscourts.gov/opinions-orders/22-2275.OPINION.6-21-2024_2337276.pdf">Beteiro, LLC v. DraftKings Inc. (Jun. 21, 2024)</a>, holding that the asserted patents failed the Alice test on patentable subject matter and were therefore invalid under 35 U.S.C. § 101.



Beteiro’s patents related to methods for facilitating remote gambling and allowing a user to participate in live gambling via a communication device. The asserted claims covered a method for processing remote bets by detecting gambling activity information, generating and transmitting a message to a user, receiving a bet and location message, determining the bet&#8217;s legality based on location, and processing the bet accordingly. Beteiro filed suit against Draft Kings and other defendants based on their provision of mobile gambling and event wagering services. Draft Kings and the other defendants moved to dismiss under Rule 12(b)(6), arguing the asserted patent claims were directed to nonpatentable subject matter. The district court granted the motions. Beteiro appealed.



Reviewing de novo, the Federal Circuit affirmed. The Court found that under the first step of the Alice test the claims were directed to the abstract idea of exchanging information concerning a bet and allowing or disallowing the bet based on the user’s location. Beteiro argued the claims were tied to technological improvements for remote gambling; an argument the Court rejected. The claims, it found, featured several signs of abstractness and broadly recited generic steps using result-focused functional language reflecting fundamental and long-standing economic principles.



The Court also found the patents failed to transform the abstract idea into something more under the second step of Alice because the asserted claims simply described conventional business practices executed by generic computer components. Beteiro contended that its complaint raised a genuine issue as to whether GPS on a mobile phone was conventional technology in 2002, the earliest claimed priority date of the asserted patents. But the patents repeatedly referred to the conventional use of GPS in several types of computers and failed to describe any transformational differences in equipping a mobile phone with GPS. Having found the claims were directed to an abstract idea and that they failed to transform the idea into something more, the Court affirmed the dismissal of Beteiro’s suit.



Coauthored by Ian McFarland &amp; Taylor McCarty.

CAFC Affirms Dismissal for Nonpatentable Subject Matter in DraftKings Suit

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/24-1324.OPINION.7-12-2024_2349134.pdf">Natera, Inc. v. NeoGenomics Laboratories, Inc. (July 12, 2024)</a>, affirming the U.S. District Court for the Middle District of North Carolina’s grant of a preliminary injunction.



Natera, Inc. (“Natera”) and NeoGenomics Laboratories, Inc. (“NeoGenomics”) are manufacturers of products used for early cancer detection. One method of detection analyzes DNA fragments in the body. Natera owns two patents related to this method, U.S. Patent No. 11,519,035 (“the ’035 Patent”) and U.S. Patent No. 11,530,454 (“the ’454 Patent”) (collectively, the Natera Patents”). Natera’s product, Signatera, is covered by the Natera Patents. NeoGenomics offers a competing product, RaDaR. Both Signatera and RaDaR are “tumor-informed” (as opposed to “tumor-naïve”) tests designed from a patient’s genetic information based on a tissue biopsy of the patient’s tumor.



Natera sued NeoGenomics alleging infringement of the Natera Patents. Natera also moved for a preliminary injunction. The district court granted the preliminary injunction, finding that Natera made the requisite showing, including demonstrating likelihood of success on the merits of its ’035 Patent infringment claim. The preliminary injunction enjoined NeoGenomics from making, using, selling, or offering for sale RaDaR, and from promoting, advertising, marketing, servicing, distributing, or supplying RaDaR. It created a carveout for patients already using RaDaR, in-process or finalized research projects, and clinical trials. NeoGenomics appealed, arguing the district court erred in its (1) treatment of claim construction, (2) obviousness analysis; (3) irreparable harm analysis; and (4) evaluation of the public interest.



The Federal Circuit affirmed. First, the Court determined the district court did not err by evaluating the likelihood of success on infringement before an explicit claim construction. Second, the Court determined the district court did not demand more than is required at the preliminary injunction stage when it rejected NeoGenomics’ obviousness argument, which was supported by only four paragraphs with “no meaningful supporting documentation” or articulated motivation to combine. Third, the Court rejected NeoGenomic’s assertion the district court relied on a categorical rule that irreparable harm exists where the parties are in direct competition. Rather, the district court did not err in relying on Natera’s unwillingness to license the patent, potential lost partnerships, business relationships, and ongoing business, among other factors. Finally, the Court rejected NeoGenomic’s arguments on public interest, which alleged the superior quality of its RaDaR product vis-à-vis Natera’s Signatera product.



Coauthored by Gabrielle Kiefer &amp; Tucker Bender.

Federal Circuit Affirms Grant of Preliminary Injunction Against Cancer-Detection Product

Last week, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in <a href="https://cafc.uscourts.gov/opinions-orders/23-1272.OPINION.7-23-2024_2355065.pdf">ZyXEL Communication Corp. v. UNM Rainforest Innovations, No. 2023-1272 (July 22, 2024)</a>, reversing-in-part, affirming-in-part, and remanding for further consideration of UNM’s substitute claims.



ZyXEL initiated an inter partes review proceeding for U.S. Patent No. 8,265,096 (the “’096 Patent”), which is owned by UNM. The claims of the ’096 Patent relate to methods of organizing information being transmitted across time and frequency to “allow simultaneous transmission of data from different users without interference from one [an]other.” In addition to opposing ZyXEL’s arguments, UNM presented substitute claims via a motion to amend, and sought preliminary guidance from the PTAB pursuant to the Motion to Amend Pilot Program. The motion to amend identified written description support for the new limitations but did not address written description support for the original ones. The PTAB issued preliminary guidance identifying this deficiency. UNM filed a reply identifying the written description support for the original limitations.



In a final written decision, the PTAB cancelled all challenged claims on grounds of obviousness except for Claim 8. As to Claim 8, the PTAB found ZyXEL failed to show sufficient motivation to combine the asserted prior art references. The PTAB also granted UNM’s motion to amend. ZyXEL appealed, and UNM cross-appealed.



On ZyXEL’s appeal, the Federal Circuit reversed as to Claim 8 and affirmed the PTAB’s ruling on the motion to amend. Specifically, the Court found the ruling on Claim 8 was not supported by substantial evidence because the motivation to combine was present in the prior art references themselves. As to the substitute claims, the Court rejected ZyXEL’s argument that the PTAB improperly allowed UNM to identify written description support in a reply brief. The Court explained that the very purpose of the MTA Pilot Program is to provide preliminary guidance to patent owners so errors in the original motion may be corrected. Additionally, ZyXEL had failed to establish prejudice. Based on its ruling that Claim 8 is invalid as obvious, however, the Court remanded the matter to the PTAB to determine whether the substitute claims are invalid as obvious on grounds of collateral estoppel or by exercise of the PTAB’s discretion to reassess the issue. On UNM’s cross-appeal, the Court affirmed the PTAB’s ruling that the challenged claims are invalid as obvious.



Coauthored by Marra Clay &amp; Jack Goldberg.

CAFC Affirms PTAB’S Application of USPTO’S Motion to Amend Pilot Program

Last week, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in <a href="https://cafc.uscourts.gov/opinions-orders/23-1336.OPINION.7-31-2024_2359524.pdf">Sanho Corp. v. Kaijet Tech. Int’l Ltd., No. 23-1336 (Fed. Cir. 2024)</a>, affirming the PTAB’s decision that a private sale was not a “public disclosure” under 35 U.S.C. § 102(b)(2)(B).



Kaijet Technology International Limited filed a petition for inter partes review challenging as obvious most claims of U.S. Patent No. 10,572,429 owned by Sanho Corporation. Each obviousness combination relied on U.S. Patent Publication No. 2018/0165053 (“Kuo”). Although the effective filing date of Kuo predated the priority date of the ’429 patent, Sanho argued Kuo was not prior art because the inventor of the ’429 patent “publicly disclosed” the relevant subject matter through a private sale prior to the effective filing date of Kuo.



Under 35 U.S.C. § 102(b)(2)(B), a disclosure is not prior art where “the subject matter disclosed had . . . been publicly disclosed by the inventor” prior to the effective filing date of the disclosure. The PTAB concluded the private sale at issue was not a “public disclosure” and found claims 1-6 and 13-17 of the ’429 patent unpatentable as obvious over Kuo. Sanho appealed, contending the phrase “publicly disclosed” incorporates all the same disclosures as §&nbsp;102(a)(1) including “on sale” and “public use.”



On appeal, the Federal Circuit considered “whether a non-confidential but otherwise private sale results in” public disclosure under § 102(b)(2)(B). First, the Court found that according to the plain language of the statute, “publicly disclosed” has a different meaning than “disclosed.” Thus, not all disclosures that fall within § 102(a)(1) are public disclosures and placing an invention “on sale” may result in a disclosure under § 102(a)(1) without constituting a public disclosure under § 102(b)(2)(B). Second, the Court looked to the purpose of the statute finding that, to serve the objectives underlying patent protection, “publicly disclosed” means the invention was made available to the public. Third, the Court found the legislative history supports a finding that an invention must be available to the public to be “publicly disclosed.”



Applying this construction, the Court found the private sale at issue was not a public disclosure because there was no evidence the subject matter of the invention was made available to the public. In fact, there was no evidence the invention was ever manufactured or delivered. Thus, the Board did not err in determining Kuo was prior art.

CAFC Affirms PTAB Decision Holding Private Sale Is Not a “Public Disclosure” Under 35 U.S.C. § 102(b)(2)(B)

Yesterday, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in <a href="https://cafc.uscourts.gov/opinions-orders/22-1827.OPINION.8-12-2024_2365402.pdf">Celanese Intl. Corp. v. Intl. Trade Comm’n, No. 22-01827 (August 12, 2024)</a>, which affirmed a finding of the International Trade Commission that the appellant’s asserted patent claims were invalid under the on-sale bar.&nbsp;



In the proceedings below, it was undisputed that Celanese’s patented process was in secret use in Europe before the critical date, and that Celanese had sold products made using the patented process in the United States before the critical date.&nbsp; While the patentee did not dispute that sales of products made using a secret process would preclude patentability, it argued that under the AIA the sales did not trigger the on-sale bar.



Celanese contended that when it enacted the AIA, Congress intended to alter the on-sale bar, based on changes in the text of Section 102 and other AIA sections, and selected portions of the legislative history.&nbsp; As its gating argument, the patentee argued that the use of the phrase “claimed invention” rather than the use of “invention” in the pre-AIA provision indicated a narrower scope to the on-sale bar.&nbsp; The Federal Circuit rejected the argument, finding instead that the addition of the word “claimed” did not support the foundational change advanced by Celanese and represented only a “clerical refinement of terminology.”&nbsp;



The Federal Circuit next rejected Celanese’s suggestion that the grace period for “disclosure” of the invention of Section 102(b)(1) limited Section 102(a) to sales of the patented invention itself, noting that the sales at issue did not fall under the grace period and declining to construe the additional language.&nbsp; Arguments directed to the specific species of infringement and defenses under Sections 271 and 273 were dismissed as presenting “scant merit.”



Celanese’s final argument—that the Senate’s intent to exclude private sales from the on-sale bar was demonstrated in a colloquy from the Senate’s discussion of the bill—fared no better.&nbsp; The Federal Circuit noted that individual legislators’ views do not establish congressional intent, and concluded that pre-AIA precedent left Celanese’s patents invalid based on sales of products made using the patented method.

CAFC Confirms Pre-AIA Precedent Applies to AIA: Patent on Secret Process Invalid Based On Sales of Product

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in&nbsp;The Best Lawyers in America©&nbsp;2025.



Best Lawyers compiles lists of outstanding attorneys by conducting peer-reviewed surveys in which lawyers confidentially evaluate their colleagues. Since lawyers are not permitted to purchase their rankings or pay a fee to participate, a Best Lawyers listing is considered an unbiased honor.



Atlanta, GA



<ul>
<li>Jeffrey D. Blake 
<ul>
<li>Patent Law</li>
</ul>
</li>
</ul>



Minneapolis, MN



<ul>
<li>John A. Clifford 
<ul>
<li>Advertising Law</li>



<li>Litigation &#8211; Intellectual Property</li>



<li>Patent Law</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Andrew S. Ehard 
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Thomas R. Johnson 
<ul>
<li>Advertising Law</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>



<li>Scott W. Johnston 
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Heather J. Kliebenstein 
<ul>
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>



<li>Thomas J. Leach 
<ul>
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>



<li>Brent E. Routman 
<ul>
<li>Advertising Law</li>
</ul>
</li>



<li>Christopher J. Schulte 
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>



<li>William D. Schultz 
<ul>
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>



<li>Christopher J. Sorenson 
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>



<li>Anthony R. Zeuli 
<ul>
<li>Copyright Law</li>



<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>



<li>Patent Law</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Rachel Zimmerman Scobie 
<ul>
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>
</ul>



New York, NY



<ul>
<li>Peter A. Gergely 
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>
</ul>



Alexandria, VA



<ul>
<li>John S. Kern 
<ul>
<li>Litigation &#8211; Patent</li>



<li>Patent Law</li>
</ul>
</li>



<li>Daniel J. Pereira 
<ul>
<li>Biotechnology and Life Sciences Practice</li>



<li>Patent Law</li>
</ul>
</li>



<li>Eric W. Schweibenz 
<ul>
<li>Patent Law</li>
</ul>
</li>
</ul>

Merchant & Gould Attorneys Recognized by Best Lawyers® in 2025 in America.

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in&nbsp;The Best Lawyers in America©&nbsp;2022.



Best Lawyers&nbsp;compiles lists of outstanding attorneys by conducting peer-reviewed surveys in which lawyers confidentially evaluate their colleagues. Since lawyers are not permitted to purchase their rankings or pay a fee to participate, a&nbsp;Best Lawyers&nbsp;listing is considered an unbiased honor.



Atlanta, GA



<ul>
<li>Jeffery D. Blake
<ul>
<li>Patent Law</li>
</ul>
</li>
</ul>



Minneapolis, MN



<ul>
<li>John A. Clifford
<ul>
<li>Litigation- Intellectual Property</li>



<li>Patent Law</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Andrew S. Ehard
<ul>
<li>Litigation- Intellectual Property</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Scott W. Johnston


<ul>
<li>Litigation- Intellectual Property, </li>
</ul>



<ul>
<li>Trademark Law</li>
</ul>
</li>



<li>Heather J Kliebenstein
<ul>
<li>Litigation- Intellectual Property </li>
</ul>
</li>



<li>Thomas J. Leach
<ul>
<li>Litigation- Intellectual Property</li>
</ul>
</li>



<li>Brent E. Routman
<ul>
<li>Advertising Law</li>
</ul>
</li>



<li>Christopher J. Schulte
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>



<li>William D. Schultz
<ul>
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>



<li>Christopher J. Sorenson
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>



<li>Anthony R. Zeuli
<ul>
<li>Copyright Law</li>



<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>



<li>Patent Law</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Rachel Zimmerman Scobie
<ul>
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>
</ul>



New York, NY



<ul>
<li>Peter A. Gergely
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>
</ul>

Merchant & Gould Attorneys Recognized by Best Lawyers® in 2022 in America.

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in The Best Lawyers in America© 2023.



Best Lawyers&nbsp;compiles lists of outstanding attorneys by conducting peer-reviewed surveys in which lawyers confidentially evaluate their colleagues. Since lawyers are not permitted to purchase their rankings or pay a fee to participate, a&nbsp;Best Lawyers&nbsp;listing is considered an unbiased honor.



Atlanta, GA



<ul>
<li>Jeffery D. Blake
<ul>
<li>Patent Law</li>
</ul>
</li>
</ul>



Minneapolis, MN



<ul>
<li>John A. Clifford
<ul>
<li>Litigation- Intellectual Property</li>



<li>Patent Law</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Andrew S. Ehard
<ul>
<li>Litigation- Intellectual Property</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Scott W. Johnston




<ul>
<li>Litigation- Intellectual Property, </li>
</ul>



<ul>
<li>Trademark Law</li>
</ul>
</li>



<li>Heather J Kliebenstein
<ul>
<li>Litigation- Intellectual Property </li>
</ul>
</li>



<li>Thomas J. Leach
<ul>
<li>Litigation- Intellectual Property</li>
</ul>
</li>



<li>Brent E. Routman
<ul>
<li>Advertising Law</li>
</ul>
</li>



<li>Christopher J. Schulte
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>



<li>William D. Schultz
<ul>
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>



<li>Christopher J. Sorenson
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>



<li>Anthony R. Zeuli
<ul>
<li>Copyright Law</li>



<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>



<li>Patent Law</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Rachel Zimmerman Scobie
<ul>
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>
</ul>



New York, NY



<ul>
<li>Peter A. Gergely
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>
</ul>

Merchant & Gould Attorneys Recognized by Best Lawyers® in 2023 in America.

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in&nbsp;The Best Lawyers in America©&nbsp;2024.



Best Lawyers&nbsp;compiles lists of outstanding attorneys by conducting peer-reviewed surveys in which lawyers confidentially evaluate their colleagues. Since lawyers are not permitted to purchase their rankings or pay a fee to participate, a&nbsp;Best Lawyers&nbsp;listing is considered an unbiased honor.



Atlanta, GA



<ul>
<li>Jeffery D. Blake
<ul>
<li>Patent Law</li>
</ul>
</li>
</ul>



Minneapolis, MN



<ul>
<li>John A. Clifford
<ul>
<li>Litigation- Intellectual Property</li>



<li>Patent Law</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Andrew S. Ehard
<ul>
<li>Litigation- Intellectual Property</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Scott W. Johnston






<ul>
<li>Litigation- Intellectual Property, </li>
</ul>



<ul>
<li>Trademark Law</li>
</ul>
</li>



<li>Thomas R. Johnson
<ul>
<li>Advertising Law</li>
</ul>
</li>



<li>Heather J Kliebenstein
<ul>
<li>Litigation- Intellectual Property </li>
</ul>
</li>



<li>Thomas J. Leach
<ul>
<li>Litigation- Intellectual Property</li>
</ul>
</li>



<li>Brent E. Routman
<ul>
<li>Advertising Law</li>
</ul>
</li>



<li>Christopher J. Schulte
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>



<li>William D. Schultz
<ul>
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>



<li>Christopher J. Sorenson
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>



<li>Anthony R. Zeuli
<ul>
<li>Copyright Law</li>



<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>



<li>Patent Law</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Rachel Zimmerman Scobie
<ul>
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>
</ul>



New York, NY



<ul>
<li>Peter A. Gergely
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>
</ul>

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Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/24-1398.OPINION.9-16-2024_2384927.pdf">Vascular Sols. LLC v. Medtronic, Inc, No. 2024-1398 (Sept. 9, 2024)</a>, vacating the District Court for the District of Minnesota’s claim construction ruling that Vascular Solutions’ patents were invalid for indefiniteness.



Vascular Solutions sued Medtronic in 2019, alleging that Medtronic infringed forty claims across seven patents: U.S. Patent Nos. 8,048,032; 8,142,413; RE45,380; RE45,760; RE45,776; RE46,116; and RE47,379. The district court conducted claim construction proceedings across ten of the asserted claims, seeking to construe the term “substantially rigid portion/segment.” In doing so, the court divided the claims into two mutually exclusive groups based on their descriptions of the “substantially rigid portion.” Medtronic asked the court to find the claim term indefinite because Vascular Solutions’ construction would cause the same device to simultaneously infringe both groups, which the court had held were mutually exclusive. The district court agreed, finding all of the claims indefinite.



The Federal Circuit reversed, explaining that the district court erred by determining that the two groups of claims were mutually exclusive and, therefore, indefinite. The Court explained that claims can vary in how they describe disclosed subject matter, and independent claims are not required to be entirely consistent with each other. The Court determined that because the district court erroneously found the categories of claims “mutually exclusive,” it forced itself into concluding that the claims were indefinite.



The Court further held that the term “substantially rigid portion/segment” is a functional limitation, which in this context only needs to be rigid enough to allow the device to be advanced within a guide catheter. While the Court held that this term should be construed consistently across the various asserted patents, it also determined that the precise boundary of the term need not be specified by the district court’s construction. As a result, the Court vacated and remanded to the district court, instructing the district court that the asserted claims were not necessarily mutually exclusive and that the term “substantially rigid portion/segment” does not have to have a consistent boundary across different independent claims.

Federal Circuit Reverses District Court’s Indefiniteness Ruling

Recently, the United States Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/24-1515.OPINION.10-24-2024_2408080.pdf">Telefonaktiebolaget LM Ericsson v. Lenovo (United States), Inc., No. 2024-1515, 2024 U.S. App. LEXIS 26863 (Fed. Cir. Oct. 24, 2024)</a>, vacating a district court’s denial of a motion for an antisuit injunction.



The European Telecommunications Standards Institute (“ETSI”) has a policy through which standard-essential patent (“SEP”) holders make a declaration that SEPs can be licensed under “fair, reasonable[,] and non-discriminatory” terms (a “FRAND commitment”). Parties have an obligation to negotiate such a license in good faith. Lenovo and Ericsson each made a FRAND commitment. Ericsson filed the instant action against Lenovo alleging: that Lenovo infringed Ericsson’s patents, that Lenovo breached its duty to negotiate its FRAND commitment in good faith, and that Ericsson complied with its FRAND obligations to Lenovo. Ericsson also asked the district court to set the FRAND rate for a global cross-license if Ericsson’s offer was inconsistent with its FRAND obligations. After Ericsson was granted foreign injunctions, Lenovo moved the district court to enter an antisuit injunction that would prohibit Ericsson from enforcing its injunctions. The district court denied the motion and Lenovo appealed.



The Federal Circuit reversed. The Court discussed the framework outlined by the Ninth Circuit in Microsoft Corp. v. Motorola, Inc., 696 F.3d 872 (9th Cir. 2012). For the purposes of the appeal at issue, the Court noted that it only needed to resolve the first threshold part of the framework, which assesses whether the parties and the issues would be the same between the foreign and domestic suits and whether the domestic suit would be dispositive of the foreign action to be enjoined.



The Court held that this dispositive requirement was met. It explained that Ericsson’s FRAND commitment required Ericsson to comply with its obligation to negotiate in good faith, an issue before the district court, before it was able to pursue SEP-based injunctive relief. The Court rejected Ericsson’s argument that for the domestic suit to be dispositive of the foreign action it needed to resolve the entire foreign action rather than just the injunction. The Court explained that the availability of the injunction was central to the “dispositive” analysis even though it depends on the potential that a party prevails in the domestic suit rather than the entire foreign proceeding. The Court remanded the case.

Injunctive Relief Availability for SEPs Dependent on Breach of Contract Claims

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/23-1529.OPINION.11-22-2024_2424080.pdf">Healthier Choices Mgmt. Corp. v. Philip Morris Prods. S.A., No. 2023-1529 (Nov. 22, 2024)</a>, affirming the Patent Trial and Appeal Board’s denial of a motion to amend in an inter partes review (IPR) proceeding.



Philip Morris filed an IPR petition, challenging the claims of Healthier Choices’ U.S. Patent No. 10,561,170, which were directed to an improved electronic pipe. Healthier Choices filed a motion to amend the claims of the patent, seeking to add additional limitations. The Board denied the motion to amend for failing to comply with the written description requirement. Specifically, the Board found that the patent lacked written description support for the new “ambient air inlet” term, which was construed to exclude air passage through a first pipe section of the device. Healthier Choices appealed.



The Federal Circuit affirmed, noting that neither the original claim language nor the written description in the patent explicitly excluded the presence of an ambient air hole in the first pipe section. The Court held the exclusionary claim construction to be a “negative limitation,” which needed to be clearly supported by an express statement in the patent specification. The Court found that the specification of Healthier Choices’ patent did not exclude the existence of an ambient air hole in the first pipe section. The description of the figures in the patent indicated that an air inlet could be located in the external wall of the casing, allowing ambient air to enter the first chamber. The Court found that this description contradicted Healthier Choices’ argument that the patent excluded air passage through the first pipe section.



The Court also held that testimony from a skilled artisan regarding the probability of the exclusion of an element is insufficient if the specification itself is silent on the matter. Thus, the Court concluded that Healthier Choices had not established that skilled artisans would necessarily understand the exclusion of an air passage through the first pipe section because it was not mentioned in the patent. Based on these findings, the Court held that substantial evidence supported the Board&#8217;s determination that there was no written description support for an inlet that directs ambient air while excluding air passage through the first pipe section. The Court affirmed the Board’s denial of the motion to amend.

CAFC Affirms PTAB’s Motion to Amend Denial for Lack of Written Description Support

Recently, the U.S. Court of Appeals for the Federal Circuit reversed a dismissal of a patent infringement lawsuit because the district court did not conduct sufficient claim construction proceedings.



The Oct. 18 decision in UTTO Inc. v. Metrotech Corp. is significant because it specifically authorizes district courts to dismiss patent infringement lawsuits without a separate Markman hearing, but only when the meaning of a claim term is clear and case-dispositive, such that no additional claim construction proceedings are necessary.



Case Background



UTTO sued Metrotech for patent infringement. The patent was directed to methods for detecting and identifying &#8220;buried assets,&#8221; i.e., underground utility lines using a networked mobile computing device. Claim 1 included two key limitations: &#8220;receiving … a group of buried asset data points corresponding to a particular buried asset&#8221; and &#8220;generating, based on the group of buried asset data points, a two-dimensional area comprising the buffer zone.&#8221;



UTTO also moved for a preliminary injunction, which Metrotech opposed. Metrotech also moved to dismiss the complaint under Rule 12(b)(6) of the Federal Rules of Civil Procedure for failure to state a claim upon which relief could be granted. The motion for preliminary injunction was denied because UTTO failed to show a likelihood of success on the merits of infringement.



In its ruling, the U.S. District Court for the Northern District of California construed the term &#8220;group of buried asset data points&#8221; to require &#8220;two or more&#8221; buried asset data points for each buried asset. While acknowledging that the specification referred in two places to &#8220;one or more buried assets data points&#8221; for a given buried asset, it stated that those references occurred &#8220;[o]nly twice&#8221; and &#8220;neither supports the ordinary reading of the claim language itself.&#8221;



Subsequently, the district court dismissed the first, second and third amended complaints, relying on its claim construction from its denial of the motion for preliminary injunction. UTTO appealed.



The Federal Circuit Ruling



The Federal Circuit reversed.



UTTO argued that district courts may never engage in claim construction in deciding a motion to dismiss. UTTO also substantively challenged the district court&#8217;s claim construction. The Federal Circuit held that district courts can construe claims on a motion to dismiss without a separate Markman hearing. The court noted that both claim construction and Rule 12(b)(6 dismissals are questions of law, and that claim construction can often be performed based on intrinsic evidence alone, i.e., the claim language and specification itself. In such cases, a Rule 12(b)(6) dismissal may be appropriate.



As to the scope of necessary claim construction proceedings, the court noted that district courts have wide latitude. Indeed, &#8220;[a]s long as the trial court construes the claims to the extent necessary to determine whether the accused device infringes, the court may approach the task in any way that it deems best&#8221; and &#8220;sometimes a claim&#8217;s meaning may be so clear on the only point that is ultimately material to deciding the dismissal motion that no additional process is necessary.&#8221;



Applying these rules, the court held that further claim construction proceedings were necessary. The third amended complaint alleged that &#8220;[a] &#8216;group&#8217; in the mathematical or computing sense of the word could refer to a single set of data upon which operations are performed.&#8221;



In opposing the motion to dismiss, UTTO indicated its intent to present additional supporting materials at an upcoming claim construction proceeding, which had not been abrogated or altered. And by that time, the parties had filed a joint claim construction statement, including UTTO&#8217;s submission of several pieces of supporting extrinsic evidence: encyclopedia articles, founder testimony and an expert report. Moreover, UTTO had filed its opening claim construction brief elaborating on its arguments and the extrinsic evidence.



The Federal Circuit held that the third amended complaint raised a dispute as to whether a relevant artisan would understand &#8220;group of buried asset data points … in light of a recognized meaning of &#8216;group&#8217; in mathematics to mean one or more, not two or more.&#8221;



First, the court noted that the term was not so &#8220;plain&#8221; that to give it a contrary construction would require redefinition or disclaimer and that while &#8220;group&#8221; presumptively implies two or more, that presumption can be overcome. Next, the court emphasized that the specification referred in two places to using the claimed method with &#8220;one or more&#8221; buried asset points, which was dismissed by the district court as being used &#8220;only twice.&#8221;



The court stated, &#8220;[I]t is not clear why twice is not enough to support what may be a permissible but, if unusual and non-presumptive, meaning of the expression.&#8221; The court also identified a third specification passage supporting UTTO&#8217;s proposed construction.



Finally, the court noted that, on remand, extrinsic evidence may be appropriate to construe the claims, in particular that the invention may work with only one data point as alleged in the third amended complaint. The court therefore vacated and remanded for further claim construction proceedings, noting that it was not deciding if the district court&#8217;s claim construction was correct.



Takeaways



The decision is significant because it recognized that district courts are authorized to dismiss patent infringement lawsuits under Rule 12(b)(6) without conducting a separate Markman hearing if the claim language is clear and would be dispositive of the issue of infringement.



As shown in UTTO, however, this rule does not apply in cases where the claim language is susceptible to different meanings, in particular where extrinsic evidence, including but not limited to expert testimony, may be relevant to the meaning of a claim term.



In future practice, defendants will likely cite UTTO to argue for early dismissals based on an undisputed case-dispositive meaning of a claim as applied to an accused instrumentality. Plaintiffs will likely make their complaints lengthier to include anticipated claim construction arguments and cite UTTO for the proposition that early dismissal is case-specific and inappropriate where the claim language is susceptible to different meanings, where extrinsic evidence is relevant, and/or where the structure or operation of the accused instrumentality is disputed.

What Fed. Circ. Ruling Means For Patent Case Dismissals

Recently, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://www.cafc.uscourts.gov/opinions-orders/23-1841.OPINION.3-24-2025_2486454.pdf">Wash World Inc. v. Belanger Inc., No. 2023-1841 (Mar. 24, 2025)</a>.



Belanger manufactures car washes and owns U.S. Patent No. 8,602,041 for a spray car wash system. Wash World, another car wash system manufacturer, sought a declaratory judgment that its “Razor EDGE” car wash system did not infringe the ’041 Patent. Belanger counterclaimed for infringement.



During claim construction, the district court sided with Belanger and held that two claim terms—“outer cushioning sleeve” and “predefined wash area”—did not require construction. The case proceeded to a jury trial, where Belanger’s damages expert presented a convoyed sales lost profits theory. The jury returned a verdict that Wash World’s Razor EDGE car wash system infringed several claims of the ’041 Patent and awarded Belanger, inter alia, lost profit damages of $9.8 million, which included $2.6 million in lost profits for auxiliary products. Wash World moved for judgment of a matter of law of noninfringement and, alternatively, for a new trial or remittitur of the damages award. The district court denied the motions and Wash World appealed.



The Federal Circuit affirmed-in-part, reversed-in-part, and vacated-in-part. On Wash World’s challenge to the district court’s claim construction ruling, the Court held the alternative constructions Wash World advanced on appeal, which differed from those presented to the district court, were forfeited. The Court explained that while “a party is not always confined to the precise wording of the constructions it advanced below,” and may present “new or additional arguments” in support of the scope of its claim constructions, such arguments must still “incorporate an understanding of the parties’ dispute that has developed through the course of litigation.” Here, Wash World’s arguments on appeal were too far removed from its district court arguments. Accordingly, the Court affirmed on infringement. The Court agreed with Wash World, however, that the district court abused its discretion by entering judgment on the jury’s damages award. Specifically, the Court held that the district court should not have allowed the $2.6 million the jury awarded in connection with auxiliary products. Notably, even though Belanger chose to bundle certain components in its car wash “packages,” these additional components bore no functional relationship to the patented system, which is required to support convoyed sales damages. Accordingly, the Court vacated and remanded the damages judgment with instruction to remit the $2.6 million.

CAFC Vacates Jury’s Lost Profits Damages Award and Remits Convoyed Sales

Last week, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in <a href="https://www.cafc.uscourts.gov/opinions-orders/23-1178.OPINION.4-3-2025_2493030.pdf">In re: Forest, No. 23-1178 (Apr. 3, 2025)</a>, dismissing for lack of jurisdiction an appeal from the Patent Trial and Appeal Board’s decision affirming an examiner’s rejection of certain claims of an individual inventor’s pending patent application.



By way of background, Mr. Donald Forest filed U.S. Patent Application No. 15/391,116 (’116 application) in 2016.&nbsp; But the ‘116 application claimed priority to an earlier application filed in 1995—meaning that if the ’116 application were to issue as a patent, its expiration date would be twenty years later, in 2015.&nbsp; In other words, the patent would already be expired on the day it issued.&nbsp; In view of this timeline, the USPTO argued that Mr. Forest’s appeal should be dismissed for lack of jurisdiction.&nbsp; In particular, the USPTO argued that Mr. Forest had no personal stake in the appeal because he could not be granted any enforceable rights by a patent grant with zero term. In response, Mr. Forest argued that he would still acquire “provisional rights” under 35 U.S.C. § 154(d) if the Patent Office issued him an expired patent, and therefore he had a personal stake in the appeal.



The Federal Circuit agreed with the USPTO and dismissed Mr. Forest’s appeal.&nbsp; Under 35 U.S.C. § 154(d), a patent grant confers limited “provisional rights” in addition to the exclusionary rights that exist during the patent’s term. Specifically, a patentee whose application was previously published has the right to obtain a reasonable royalty from the time the application is published until the patent issues. Mr. Forest argued that under the plain language of the statute, he should still be able to enforce provisional rights during the time between when his application is published and the time when the application issues as a patent—even if the patent would already be expired (and thus not carry any exclusionary rights) at the time it issued.&nbsp; The Court analyzed the statute and legislative history and concluded that Mr. Forest’s reading was incorrect.&nbsp; Rather, the Court held, provisional rights are granted only when a patent would issue with exclusionary rights (i.e., would issue before its expiration date).&nbsp; The Court, therefore, dismissed Mr. Forest’s appeal because he would not be entitled to any rights—exclusionary or provisional—based on any patent that issued on his ‘116 application.

CAFC Dismisses Individual Inventor’s Appeal for Lack of Jurisdiction

Recently, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://www.cafc.uscourts.gov/opinions-orders/24-1155.OPINION.4-9-2025_2495686.pdf">Heritage All. v. Am. Pol&#8217;y Roundtable, No. 2024-1155 (Apr. 9, 2025)</a>. 



Heritage uses the marks &#8220;iVoterGuide&#8221; and &#8220;iVoterGuide.com&#8221; in connection with online voter guides. In 2019, the American Policy Roundtable (APR) sought to register the marks &#8220;iVoters&#8221; and &#8220;iVoters.com&#8221; related to websites that offer information on public policy and political issues. Heritage had prior use of its marks and opposed the marks’ registration pursuant to 15 U.S.C. § 1052(d) stating that APR’s proposed marks would likely be confused with Heritage’s marks.



The Trademark Trial and Appeal Board found that Heritage&#8217;s marks were not protectable because they were highly descriptive. The Board also determined that the marks had not acquired distinctiveness. The Board dismissed the opposition. Heritage appealed.



The Federal Circuit affirmed, rejecting Heritage’s argument that the Board erred in finding its marks to be highly descriptive and in rejecting its evidence of acquired distinctiveness. Specifically, Heritage asserted that the Board erred by only analyzing the components of the marks individually instead of as a whole. The Court noted that considering the entirety of a mark does not prohibit considering its components. It held that the combination of the components of Heritage’s marks directly conveyed its product, which was providing a voter guide on the Internet.



The Court also affirmed the Board’s finding that Heritage failed to provide sufficient evidence of acquired distinctiveness. The Court explained that acquired distinctiveness determinations are fact specific and can be guided by the factors outlined in Converse, Inc. v. Int&#8217;l Trade Comm&#8217;n, 909 F.3d 1110, 1120 (Fed. Cir. 2018). It held that, under 15 U.S.C. § 1052(f), continuous use of a mark for over five years gives the Board the discretion, but does not require it, to accept the use as prima facie evidence of acquired distinctiveness. The Court held the Board had reasonable evidentiary grounds for declining to rely on Heritage&#8217;s five-year prior-use evidence due to the marks’ highly descriptive nature. The Court also determined that the declarations provided by Heritage were of little weight, as they were conclusory and came from volunteers associated with Heritage.

CAFC Affirms TTAB Dismissal of Opposition

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://www.cafc.uscourts.gov/opinions-orders/23-1603.OPINION.4-15-2025_2498701.pdf">Sage Products, LLC v. Stewart, No. 2023-1603 (Apr. 15, 2025)</a>, affirming the final written decisions of the Patent Trial and Appeal Board invalidating the challenged claims of U.S. Patent Nos. 10,398,642 and 10,688,067.



The patents-in-suit relate to “sterilized” chlorhexidine antiseptics. As construed by the Board, an antiseptic is sterilized if it has been subjected to a suitable sterilization process such that sterility can be validated. The Board invalidated the challenged claims in view of the ChloraPrep Public Assessment Report (“PAR”), which is a publication from the UK’s regulatory equivalent to the FDA evaluating ChloraPrep. The PAR describes ChloraPrep as “sterile” but does not identify the processes by which ChloraPrep is “sterilized.” The Board referred to UK industry standards for sterility to determine the meaning of “sterile” within the PAR.



Sage argued that when the PAR was written, the pharmaceutical industry mistakenly believed that antiseptics such as ChloraPrep were properly sterilized and discovered sterilization issues prior to the invention. Specifically, the US version of ChloraPrep was no longer considered sterile. Sage argued that it was improper for the Board to consider the UK sterility regulations to determine what sterilization techniques would have been used in the PAR because (1) a POSA would not have been familiar with the UK industry standards and (2) the UK industry standards were not included as part of the ground asserted in the petition for inter partes review.



The Federal Circuit affirmed. First, the Court credited the Board’s factual findings that the UK version of ChloraPrep was subject to suitable sterilization processes within the meaning of the patents. The Court also credited the Board’s factual findings that a POSA would have been familiar with the regulatory regimes for products in their industry and the differences in regulation across different countries. Finally, the Court held that it was proper for the Board to determine what a POSA would understand “sterile” to mean in the PAR by reference to extrinsic evidence not presented in the grounds of the petition.

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