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Home - Merchant & Gould P.C.

For over a century, Merchant &amp; Gould has earned a reputation as exceptional trial attorneys. Our litigators represent companies in the U.S. and globally, leading the way in a world that thrives on technology and innovation.

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Our trial attorneys litigate for clients ranging from Fortune 100 companies to start-up entrepreneurs. We try cases on all intellectual property issues, including patent, trademark, and copyright infringement, brand protection, trade secret misappropriation, and contract disputes, and from virtually every industry, including automotive, biotechnology, computer technology, semiconductor, and software. We also have deep experience as lead counsel in <a href="https://www.merchantgould.com/industries/pharmaceuticals/">Hatch-Waxman Act litigation</a> and in <a href="https://www.merchantgould.com/practices/itc-section-337-investigations/">Section 337 investigations before the International Trade Commission (ITC)</a>.

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Merchant has over 50 litigation professionals&nbsp;and 125 years of experience solely in intellectual property.&nbsp;Our focus on IP means everyone on our trial teams, from our paralegals and support staff to senior trial counsel, has extensive IP trial and litigation experience. These structural efficiencies, coupled with our cost structure, mean we provide top IP litigation representation at a high level of value. This includes venues at the state court, federal district court, the Court of Appeals for the Federal Circuit, and the ITC.

As an intellectual property boutique, we have the technical strength in house to support every matter. Attorneys from across our firm frequently collaborate on matters to support our clients with the highest level of expertise. Our attorneys bring an inherent global perspective and use creative strategies designed to expand on the potential of new ideas and to capitalize on opportunities that exceed our clients’ toughest expectations.

Denver

Los Angeles

Partner

James W. Beard

New York

Jonathan Berschadsky

Atlanta

Jeffrey D. Blake

Washington, D.C. Area

Of Counsel

B. Jefferson Boggs

Minneapolis

Associate

Bridget Greene

Eric R. Chad

Joseph W. Dubis, Ph.D.

Michael A. Erbele

Ryan J. Fletcher, Ph.D.

Kristen M. Souther

Peter A. Gergely

Joshua  A. Hartman

Thomas R. Johnson

Scott  W. Johnston

Lindsay Jones

Heather J. Kliebenstein

Andrew O. Larsen, Ph.D.

Thomas  J. Leach

River E. Lord

Knoxville

Ian  G. McFarland

Litigation Paralegal

Jeremy L. Miller

Elisabeth “Bette”  S. Muirhead

John P. Olson

William D. Schultz

Peter S. Selness

Rhett A. Sexton

Scott P. Shaw

Christopher  J. Sorenson

Taylor R. Stemler

Paige  S. Stradley

Sophia I. Vogeler

Partner & Chief Diversity Officer

John T. Winemiller, Ph.D.

Tong Wu

Zachary W. Zadow

Leighton Zhao

Rachel Zimmerman Scobie

Elizabeth Harwood Pierce

John “Jack” A. Clifford

Benjamin L. Dooley

Alana L. LeFebvre

Katherine F. K. Mares

Marra M. Clay

Eric W. Schweibenz

Donald R. McPhail

Alexander B. Englehart

John S. Kern

Shih-Ching (Evi) Li

Law Clerk

Edward J. Choi

Mitchell J. Gross

Melissa A. Quirin

John F. Presper

Technical Advisor/Patent Agent

Jianping (James) Wu

Hanjun Liu

Emma G. Schultz

Breanna Blask

Michael Fu

Liz A. Enstad

Monique L. Kreutz

Shannon M. Maney

Hannah R. Montgomery

Morgan E. Pietz

Boston

Kevin R. Mosier

Lisa M. Tittemore

Robert M. Asher

Lawrence M. Green

Kerry L. Timbers

James Beard joins as partner in Litigation Practice Group.



Merchant &amp; Gould is pleased to announce that James Beard joined the firm’s Denver office as a partner on Jan. 10.



As an IP trial lawyer, James brings more than 10 years of experience to the Litigation Practice Group, representing high-technology household names and Fortune 500 companies in computer hardware and software, electronics, consumer products, biotechnology and medical device industries.&nbsp; He works on all stages of litigation, from general advice and pre-litigation counseling through complex discovery, motion practice, trials, and appeals.&nbsp; Prior to joining Merchant &amp; Gould, James worked at Sherman &amp; Howard in Denver, as well as Kirkland &amp; Ellis in San Francisco.



“James is an excellent addition to our Litigation Practice Group, as we continue expand our capabilities in Denver and across the firm,” said Chris Leonard, Managing Partner and CEO of Merchant &amp; Gould.&nbsp; “He has experience in some of Colorado’s most innovative industries, spanning a range of technologies. We are excited to have him join us.”

Merchant & Gould Hires Attorney, as Denver Office Grows

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in The Best Lawyers in America: Ones to Watch 2021 Edition. 



These awards are recognitions given to attorneys who are earlier in their careers for outstanding professional excellence in private practice in the United States. Our &#8220;Ones to Watch&#8221; recipients typically have been in practice for 5-9 years.



Our methodology for determining these awards remains the same as it did when Best Lawyers was founded almost 40 years ago: peer-review. Lawyers are the best resource to provide feedback on the caliber of work performed by their peers.



MINNEAPOLIS, MN Joseph W. Dubis Ph.D.&nbsp;– Intellectual Property Law



Paige S. Stradley&nbsp;– Litigation &#8211; Intellectual Property



Michael A. Erbele&nbsp;&nbsp;– Technology Law

Merchant & Gould Attorneys Named by Best Lawyers as the Best Lawyers in America: Ones to Watch 2021 Edition

Merchant &amp; Gould was ranked in five National Tier and six Metropolitan categories in the 2022 edition of U.S. News – Best Lawyers® “Best Law Firms,” recognized for professional excellence with consistently impressive ratings from clients and peers.



Achieving a high ranking is a special distinction that marks a unique combination of excellence and breadth of experience. Ranked firms, presented in three tiers, are recognized on a national and regional-based scale. Firms that received a tier designation reflect the highest level of respect a firm can earn among other leading lawyers and clients from the same communities and practice areas. Merchant &amp; Gould ranked in the following National and Metropolitan categories:



<h2 class="wp-block-heading">National Tier 1</h2>



Patent Law



<h2 class="wp-block-heading">National Tier 2</h2>



Litigation &#8211; Intellectual Property Litigation &#8211; Patent



<h2 class="wp-block-heading">National Tier 3</h2>



Copyright Law Trademark Law



<h2 class="wp-block-heading">Metropolitan Tier 1 &#8212; Minneapolis</h2>



Copyright Law Litigation &#8211; Intellectual Property Litigation &#8211; Patent Patent Law Trademark Law



<h2 class="wp-block-heading">Metropolitan Tier 3 – Atlanta</h2>



Patent Law



To be eligible for a ranking, a firm must first have a lawyer recognized in The Best Lawyers in America®, which recognizes 6 percent of lawyers practicing in the United States, and also receive consensus on some of the following factors: firm-wide work, the size and coverage of a firm in a specific area, historical analysis, research surrounding the firm’s overall scope and areas of expertise.



The 2022 rankings incorporate more than 8.2 million evaluations of more than 115,000 individual leading lawyers from more than 22,000 firms. More than 2,000 firms received a national law firm ranking this year.

Merchant & Gould Recognized on U.S. News – Best Lawyers® “Best Law Firms” List with Rankings in 11 National and Metropolitan Categories

Merchant &amp; Gould is pleased to announce that Minneapolis partner <a href="/people/rachel-zimmerman-scobie/">Rachel Zimmerman Scobie</a> has been named leader and chair of the firm’s Litigation Practice Group, effective Jan. 1, 2022. She replaces <a href="/people/heather-j-kliebenstein/">Heather Kliebenstein</a> who chaired the Litigation Practice for five years.



Rachel, who is now in her 20th year with the firm, will guide attorneys across Merchant &amp; Gould’s seven offices in the firm’s robust and diverse litigation work. With more than 50 litigators and litigation support team members, the firm’s preeminent litigation team has been representing U.S. and global clients in patent infringement, trademark infringement, and other complex intellectual property disputes for nearly a century.



“Rachel’s experience, deep thinking and insight will steer the Litigation Practice Group toward successful outcomes for our clients and help guide the firm’s next phase of growth. She represents our seasoned litigation team with confident strength and knowledge,” said Christopher J. Leonard, Managing Director and CEO of Merchant &amp; Gould. “Our primary goal is to help our clients reach their objectives and get back to business, and Rachel’s leadership and commitment will help us do just that.” 



Rachel is an experienced, first-chair trial lawyer who has handled all aspects of complex intellectual property disputes from investigation and preparation of the complaint through trial, post-trial, and appeal. She also has significant experience handling appellate-level disputes, a practice to which she brings valuable experience as a former clerk for U.S. Court of Appeals Judge James B. Loken. Rachel has been responsible for matters in various state and federal courts and agencies throughout the United States, and in arbitration.&nbsp;



Leading up to her role as chair of the Litigation Practice Group, Rachel has been involved with several other firm committees. &nbsp;Among other roles, she has served as a chair of the Recruiting and Retention Committee, the Appellate Group, and the Diversity, Equity and Inclusion (DEI) Task Force, and has served on the Technology Committee.



Congratulations, Rachel!

Rachel Zimmerman Scobie Named Chair of Merchant & Gould’s Litigation Practice Group

Merchant &amp; Gould is pleased to announce that <a href="/people/james-w-beard/">James W. Beard</a>, a Denver partner, and <a href="/people/joseph-w-dubis/">Joe Dubis</a>, a Minneapolis associate, have been named Litigation Paralegal Co-Supervisors, effective Jan. 1, 2022. They replace <a href="/people/william-d-schultz/">Will Schultz</a> who served as Supervisor for more than five years. 



James and Joe will manage the firm’s Litigation Paralegals across Merchant &amp; Gould’s seven offices and oversee their work on depositions, witness preparation, exhibits, court preparation and research, as well as reviewing docketing and case file management procedures. &nbsp;They will also coordinate communication with and development of the group, helping the team as it implements new technologies.&nbsp; With more than 50 litigators and litigation support team members, the firm’s Litigation Practice Group has extensive IP trial and litigation experience.&nbsp;&nbsp;



“In their co-supervisor roles, James and Joe combine their litigation knowledge with their attention to detail and management skills to supervise this very important paralegal team with the Litigation Practice Group. Together, they bring their leadership and insight to the team,” said Christopher J. Leonard, Managing Director and CEO of Merchant &amp; Gould.



While his practice involves all facets of intellectual property law, James focuses on patent, copyright, and trademark and trade dress litigation for clients from a diverse range of industries. He works in all stages of litigation, from general advice and counseling to complex discovery, trials and appeals.



Joe practices all areas of intellectual property litigation proceedings including patent, copyright, and trademark litigation; appellate work; and post grant proceedings. Joseph’s motivation to become a lawyer was partly to help bridge the gap between inventors, scientists, and developers and the intellectual property protection they deserve. Since beginning as a litigation associate, Joe has developed extensive skills in the field of copyright disgorgement remedies.



Congratulations, James and Joe!

James Beard and Joe Dubis Named Litigation Paralegal Co-Supervisors

Responds to business and legal issues regarding third-party copying and infringement



Merchant &amp; Gould has formalized the launch of a business consulting group, the M&amp;G Integrator™ Program, offering product and service companies a new way to protect their brands in the fast-paced online marketplace. The group’s business-minded approach merges Merchant &amp; Gould’s deep-rooted IP strategies with its proprietary, patent-pending InnovaShield Brand Protection Index for a new way of practicing this type of IP law, expanding the firm’s capabilities at a critical time when third-party infringement is increasing rapidly and companies are eager to mitigate risk.



The M&amp;G Integrator Program complements the firm’s Internet Cybersecurity &amp; E-Commerce (ICE) Practice; serves clients in every industry; and balances timely business strategies with a critical legal lens. As a global law firm that has focused on intellectual property and technology law for more than 120 years, Merchant &amp; Gould has deep experience that cuts across all technology fields. Merchant &amp; Gould is uniquely structured and experienced to pioneer this solution and risk-assessing index within the industry.



“We are in a global economy with infringement issues that have always been there; but that have recently been exposed by the pandemic’s accelerated reliance on online marketplaces and by the rapid growth of Web3, including blockchain technology, NFTs, and the metaverse platform.  More than ever, it’s time to deal with these issues, assess risk, and understand what can be done,” said <a href="/people/william-d-schultz/">William D. Schultz</a>, partner in Merchant &amp; Gould’s Minneapolis office and leader of the M&amp;G Integrator Program.



Using Merchant &amp; Gould’s patent-pending InnovaShield Brand Protection Index, the M&amp;G Integrator Program quantifies a company’s risk and creates a strategic roadmap to address that risk. Visual analyses and reports establish a customized plan that addresses and helps overcome specific risks in the most cost-effective, efficient and consumer-driven manner.&nbsp; The ultimate goal is to give clients the broadest coverage of protection for their brands and, most importantly, for their consumer customers.



“Risk impacts businesses in many ways: in the products and services you develop; business partners you choose; and the distribution channels you use. We become part of a client’s team, bridging the gap between research and development, marketing, management, distribution and legal counsel, to help identify and mitigate the impact of risk in every way,” added Schultz, who is also the co-inventor of Merchant &amp; Gould’s patent-pending InnovaShield Brand Protection Index, as well as personal Web3 patents that relate to smart contract-verification software in the NFT space and digital-story collaboration. “While no risk can be eliminated completely, it can be improved with a tailored and strategic approach from a team who deeply understands the complexity – and who knows how to &nbsp;shield innovation from third-party infringers aiming to steal a company’s investments.”



Merchant &amp; Gould’s specialized Minneapolis team will steer the M&amp;G Integrator Program, while working with attorneys across the firm’s seven offices and tapping into the firm’s unique mix of IP, online and business experience.&nbsp;



<h2 class="wp-block-heading">About InnovaShield Brand Protection Index</h2>



The InnovaShield Brand Protection Index is calculated, based on the following effective equation: 



InnovaShield Brand Protection Index = Area of Projection – Risk.



Coverage comes from four factor areas: 1) intellectual property protection; 2) enforcement; 3) policies and programs; and 4) strategic coordination.  Similarly, risk depends on what, where, why, and how a company is selling or offering its products or services. Merchant &amp; Gould’s proprietary algorithm drives the inquiry, analysis and diagnosis.



<figure class="wp-block-image size-large"><img loading="lazy" decoding="async" width="1024" height="250" src="https://admin.merchantgould.com/wp-content/uploads/2023/03/integrator-graphics-1024x250.png" alt="integrator-graphics" class="wp-image-21161" srcset="https://admin.merchantgould.com/wp-content/uploads/2023/03/integrator-graphics-1024x250.png 1024w, https://admin.merchantgould.com/wp-content/uploads/2023/03/integrator-graphics-300x73.png 300w, https://admin.merchantgould.com/wp-content/uploads/2023/03/integrator-graphics-768x188.png 768w, https://admin.merchantgould.com/wp-content/uploads/2023/03/integrator-graphics.png 1920w" sizes="auto, (max-width: 1024px) 100vw, 1024px" /></figure>



<figure class="wp-block-table"><table><tbody><tr><td>
<ul>
<li>Question driven</li>
<li>Accessible user interface</li>
</ul>
</td><td>
<ul>
<li>Patent-pending software</li>
<li>Deep industry experience</li>
</ul>
</td><td>
<ul>
<li>Customized report</li>
<li>Tangible recommendations</li>
<li>Trajectory hypotheticals</li>
</ul>
</td></tr></tbody></table></figure>

Merchant & Gould Launches Business Consulting Group, Advising Clients Across Industries on Risk Mitigation and Protection

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

Merchant &amp; Gould is pleased to announce that Atlanta partner <a href="https://www.merchantgould.com/people/jeffrey-d-blake/">Jeffrey D. Blake</a> has been named co-chair of the firm’s <a href="https://www.merchantgould.com/practices/litigation/">Litigation Practice Group</a>, effective November 1, 2023. In this new role, Jeff joins Rachel Zimmerman Scobie, who has been chairing and leading the litigation group since January 1, 2022.



Jeff, who is now in his 12th year with the firm, will help guide Merchant &amp; Gould’s experienced team of trial attorneys, who litigate on behalf of clients ranging from Fortune 100 companies to start-up entrepreneurs. With almost 50 attorneys and litigation support team members, the firm’s preeminent litigation team has 115 years of experience trying cases on a full range of intellectual property issues, including patent infringement, trademark infringement, copyright infringement, trade secret misappropriation, and contract disputes.



More than ever, as the Litigation Practice Group continues to expand, a co-leadership arrangement is well-timed for guiding the firm and its premier clients. Together, Rachel and Jeff demonstrate a well-balanced leadership team in this fast-growing practice group.



“Jeff and I look forward to working together to build upon the Litigation Practice Group’s long and successful history of trying and litigating intellectual property cases,” said Rachel. “Jeff’s extensive trial experience and keen insight will help position the group for continued success protecting the technological innovations of and defending against IP claims against our clients.”



Jeff’s practice involves all aspects of intellectual property litigation and counseling. His experience includes representation of clients in all manner of technologies, including microprocessor hardware and software, semiconductor circuitry, network security, residential construction products, commercial wire and cable products, telephony, and automotive airbag deployment software. Jeff also represents his clients extensively in inter partes review (IPR) proceedings. In addition, Jeff has litigated multiple copyright infringement actions, negotiated the licensing of patent portfolios, and provided product clearance evaluations and opinions.



Congratulations, Jeff!

Jeffrey D. Blake Named Co-Chair of Merchant & Gould’s Litigation Practice Group

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.



Tags:

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

Merchant &amp; Gould P.C., a national technology and trial law firm, is pleased to announce a crucial victory for our clients TYC Brother Co., Ltd. and Genera Corp. before the U.S. International Trade Commission (ITC). In a pair of investigations concerning design patents related to automotive lamps, the ITC found no violation of section 337 by TYC Brother and Genera based on Complainants Hyundai’s and Kia’s failure to satisfy the ITC’s domestic industry requirement.



Merchant and its co-counsel Holland Law LLP were retained to defend TYC Brother and Genera against twin complaints filed with the ITC by automotive manufacturers Hyundai and Kia. The complaints asserted a combined 41 design patents against TYC Brother and Genera’s replacement headlights and taillights and sought orders that would have stopped all imports and domestic sales of those products.



An early evidentiary hearing was ordered under the ITC&#8217;s early disposition pilot program to determine whether the complainants satisfied the ITC’s domestic industry requirement. These investigations are the only ones to date for which the pilot program has been used.



Merchant identified numerous flaws in the complainants’ domestic industry evidence and analysis and developed a comprehensive record supporting our clients&#8217; positions. Following the ALJ’s initial determination, Merchant obtained full review by the ITC and submitted extensive briefing.



After considerable deliberations, the ITC agreed with Merchant, concluding that the complainants failed to satisfy the domestic industry requirement as to all 41 asserted patents. As a result, the ITC terminated the investigations with findings of no violation by TYC Brother and Genera, enabling their accused lamps to remain available to U.S. consumers, securing their access to high-value replacement parts.



&#8220;We are thrilled with the ITC&#8217;s ruling in favor of our clients, TYC Brother Co., Ltd. and Genera Corp. From the outset, we were confident in our case and in the merits of our clients&#8217; position. This outcome underscores the importance of thorough domestic industry analysis in section 337 investigations. And it is a significant win, both for the Respondents and for U.S. consumers who will continue to have access to high-quality, affordable automotive parts,&#8221; said Josh Hartman, Lead Counsel at Merchant &amp; Gould.&nbsp;

ITC Rules in Favor of TYC Brother Co., Ltd., and Genera Corp., Represented by Merchant & Gould

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



<ol class="wp-block-list" 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

Last week, the U.S. Supreme Court issued a decision in <a href="https://www.supremecourt.gov/opinions/23pdf/22-1078_4gci.pdf">Warner Chappell Music, Inc., et al. v. Sherman Nealy, et al., No. 22–1078 (May 9, 2024)</a>, holding that damages may be recovered under Copyright Act for conduct occurring greater than three years prior to filing suit.



In 2018, Sherman Nealy sued Warner Chappell Music in the Southern District of Florida for the unauthorized use of music created in the mid-1980s with former collaborator Tony Butler. While Nealy was serving prison terms, Butler entered into a license agreement with Warner Chappell Music for music created by Nealy and Butler, eventually landing it in popular songs by modern artists such as Flo Rida, the Black Eyed Peas, and Kid Sister. &nbsp;



Under the Copyright Act, claims must be brought within three years of accrual. 17 U.S.C. § 507(b). The Eleventh Circuit applies the discovery rule to assessing compliance with the Copyright Act’s statute of limitations. Under the discovery rule, accrual occurs when a claim is discovered or should have been discovered by the exercise of due diligence. Relying on precedent from the Second Circuit, the district court held that even if Nealy’s claims were timely filed under the discovery rule, monetary relief on those claims is “limited” to “the three years prior to the filing” of the action. Nealy appealed, and the Eleventh Circuit reversed, holding that a plaintiff with a timely claim under the discovery rule may obtain “retrospective relief for [an] infringement” even if it “occurr[ed] more than three years before the lawsuit’s filing.”



The Supreme Court granted certiorari to answer the question “[w]hether, under the discovery accrual rule applied by the circuit courts,” a copyright plaintiff “can recover damages for acts that allegedly occurred more than three years before the filing of a lawsuit.” For purposes of deciding the question under review, the Court assumed that, but declined to decide whether, the discovery rule should apply to statute of limitations assessments in copyright actions. On the question under review, the Court affirmed the decision of the Eleventh Circuit, noting that the “time-to-sue prescription” in the Copyright Act establishes no separate time limit for the recovery of damages. The Court further noted that the contrary view espoused by the Second Circuit would gut the efficacy and purpose of the discovery rule by allowing a plaintiff to sue for past infringements while denying them damages.

Supreme Court Upholds Eleventh Circuit’s Rejection of Three-Year Damages Bar on Timely Copyright Claim

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 Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/24-1137.OPINION.6-17-2024_2334858.pdf">Insulet Corp. v. EOFlow, Co., 2024-1137 (June 17, 2024)</a>, reversing and remanding a district court’s grant of a preliminary injunction in a trade secrets case. Insulet, a maker of insulin pump patches, sought a preliminary injunction against competitor EOFlow, alleging misappropriation of trade secrets under the Defend Trade Secrets Act (DTSA). The district court granted the preliminary injunction, broadly enjoining EOFlow from manufacturing, marketing, or selling any product designed, developed, or manufactured using Insulet’s alleged trade secrets. EOFlow appealed.



The Federal Circuit reversed, holding the district court abused its discretion in granting the “extraordinary remedy” of a preliminary injunction. Writing for the panel, Judge Lourie explained that “establishing entitlement to such injunctive relief still requires a showing of the existence of a trade secret and misappropriation, as well as the satisfaction of the usual, established factors justifying the grant of a preliminary injunction.” The Court held the district court failed to properly analyze several key factors.



First, the Court determined that the district court ignored the DTSA’s 3-year statute of limitations in assessing Insulet’s likelihood of success on the merits. The Court noted that “if the statute of limitations for filing a DTSA claim had expired, Insulet’s claims would be time-barred and therefore would have no chance for success.”



Second, the Court determined that the district court failed to identify the trade secret with specificity, explaining that the district court “advanced a hazy grouping of information that the court did not probe with particularity to determine what, if anything, was deserving of trade secret protection.” Further, the district court did not assess whether the alleged trade secrets were ascertainable through public means like reverse engineering or patent disclosures. In addition, the district court failed to evaluate the independent economic value of the purported trade secrets.



Third, the Court found error in the irreparable harm analysis, rejecting the district court’s reliance on a potential acquisition of EOFlow by Medtronic as grounds for irreparable injury. The Court emphasized that generalized fears of larger competitors or theoretical sales remediable by damages do not constitute irreparable harm. While not foreclosing Insulet&#8217;s ability to ultimately succeed on its claims, the Court concluded Insulet had not shown a likelihood of success warranting a preliminary injunction.



Coauthored by Jeffrey Blake &amp; Alara Kucukseyhan.

Federal Circuit Tightens Standards for Trade Secret Preliminary Injunctions

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 class="wp-block-list">
<li>Jeffrey D. Blake 
<ul class="wp-block-list">
<li>Patent Law</li>
</ul>
</li>
</ul>



Minneapolis, MN



<ul class="wp-block-list">
<li>John A. Clifford 
<ul class="wp-block-list">
<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 class="wp-block-list">
<li>Litigation &#8211; Intellectual Property</li>



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



<li>Thomas R. Johnson 
<ul class="wp-block-list">
<li>Advertising Law</li>



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



<li>Scott W. Johnston 
<ul class="wp-block-list">
<li>Litigation &#8211; Intellectual Property</li>



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



<li>Heather J. Kliebenstein 
<ul class="wp-block-list">
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>



<li>Thomas J. Leach 
<ul class="wp-block-list">
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>



<li>Brent E. Routman 
<ul class="wp-block-list">
<li>Advertising Law</li>
</ul>
</li>



<li>Christopher J. Schulte 
<ul class="wp-block-list">
<li>Litigation &#8211; Intellectual Property</li>



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



<li>William D. Schultz 
<ul class="wp-block-list">
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>



<li>Christopher J. Sorenson 
<ul class="wp-block-list">
<li>Litigation &#8211; Intellectual Property</li>



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



<li>Anthony R. Zeuli 
<ul class="wp-block-list">
<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 class="wp-block-list">
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>
</ul>



New York, NY



<ul class="wp-block-list">
<li>Peter A. Gergely 
<ul class="wp-block-list">
<li>Litigation &#8211; Intellectual Property</li>



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



Alexandria, VA



<ul class="wp-block-list">
<li>John S. Kern 
<ul class="wp-block-list">
<li>Litigation &#8211; Patent</li>



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



<li>Daniel J. Pereira 
<ul class="wp-block-list">
<li>Biotechnology and Life Sciences Practice</li>



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



<li>Eric W. Schweibenz 
<ul class="wp-block-list">
<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 Best Lawyers in America: Ones to Watch 2025 Edition.



These awards are recognitions given to attorneys who are earlier in their careers for outstanding professional excellence in private practice in the United States. Our &#8220;Ones to Watch&#8221; recipients typically have been in practice for 5-9 years.



Our methodology for determining these awards remains the same as it did when Best Lawyers was founded almost 40 years ago: peer-review. Lawyers are the best resource to provide feedback on the caliber of work performed by their peers.



Minneapolis, MN



<ul class="wp-block-list">
<li>Joseph W. Dubis Ph.D. 
<ul class="wp-block-list">
<li>Intellectual Property Law</li>



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



<li>Michael A. Erbele
<ul class="wp-block-list">
<li>Intellectual Property Law</li>



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



<li>Technology Law</li>
</ul>
</li>



<li>Paige S. Stradley 
<ul class="wp-block-list">
<li>Intellectual Property Law</li>



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

Merchant & Gould Attorneys Recognized in the Best Lawyers: Ones to Watch® in America 2025 Edition

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 class="wp-block-list">
<li>Jeffery D. Blake
<ul class="wp-block-list">
<li>Patent Law</li>
</ul>
</li>
</ul>



Minneapolis, MN



<ul class="wp-block-list">
<li>John A. Clifford
<ul class="wp-block-list">
<li>Litigation- Intellectual Property</li>



<li>Patent Law</li>



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



<li>Andrew S. Ehard
<ul class="wp-block-list">
<li>Litigation- Intellectual Property</li>



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



<li>Scott W. Johnston


<ul class="wp-block-list">
<li>Litigation- Intellectual Property, </li>
</ul>



<ul class="wp-block-list">
<li>Trademark Law</li>
</ul>
</li>



<li>Heather J Kliebenstein
<ul class="wp-block-list">
<li>Litigation- Intellectual Property </li>
</ul>
</li>



<li>Thomas J. Leach
<ul class="wp-block-list">
<li>Litigation- Intellectual Property</li>
</ul>
</li>



<li>Brent E. Routman
<ul class="wp-block-list">
<li>Advertising Law</li>
</ul>
</li>



<li>Christopher J. Schulte
<ul class="wp-block-list">
<li>Litigation &#8211; Intellectual Property</li>



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



<li>William D. Schultz
<ul class="wp-block-list">
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>



<li>Christopher J. Sorenson
<ul class="wp-block-list">
<li>Litigation &#8211; Intellectual Property</li>



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



<li>Anthony R. Zeuli
<ul class="wp-block-list">
<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 class="wp-block-list">
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>
</ul>



New York, NY



<ul class="wp-block-list">
<li>Peter A. Gergely
<ul class="wp-block-list">
<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 class="wp-block-list">
<li>Jeffery D. Blake
<ul class="wp-block-list">
<li>Patent Law</li>
</ul>
</li>
</ul>



Minneapolis, MN



<ul class="wp-block-list">
<li>John A. Clifford
<ul class="wp-block-list">
<li>Litigation- Intellectual Property</li>



<li>Patent Law</li>



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



<li>Andrew S. Ehard
<ul class="wp-block-list">
<li>Litigation- Intellectual Property</li>



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



<li>Scott W. Johnston




<ul class="wp-block-list">
<li>Litigation- Intellectual Property, </li>
</ul>



<ul class="wp-block-list">
<li>Trademark Law</li>
</ul>
</li>



<li>Heather J Kliebenstein
<ul class="wp-block-list">
<li>Litigation- Intellectual Property </li>
</ul>
</li>



<li>Thomas J. Leach
<ul class="wp-block-list">
<li>Litigation- Intellectual Property</li>
</ul>
</li>



<li>Brent E. Routman
<ul class="wp-block-list">
<li>Advertising Law</li>
</ul>
</li>



<li>Christopher J. Schulte
<ul class="wp-block-list">
<li>Litigation &#8211; Intellectual Property</li>



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



<li>William D. Schultz
<ul class="wp-block-list">
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>



<li>Christopher J. Sorenson
<ul class="wp-block-list">
<li>Litigation &#8211; Intellectual Property</li>



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



<li>Anthony R. Zeuli
<ul class="wp-block-list">
<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 class="wp-block-list">
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>
</ul>



New York, NY



<ul class="wp-block-list">
<li>Peter A. Gergely
<ul class="wp-block-list">
<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 class="wp-block-list">
<li>Jeffery D. Blake
<ul class="wp-block-list">
<li>Patent Law</li>
</ul>
</li>
</ul>



Minneapolis, MN



<ul class="wp-block-list">
<li>John A. Clifford
<ul class="wp-block-list">
<li>Litigation- Intellectual Property</li>



<li>Patent Law</li>



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



<li>Andrew S. Ehard
<ul class="wp-block-list">
<li>Litigation- Intellectual Property</li>



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



<li>Scott W. Johnston






<ul class="wp-block-list">
<li>Litigation- Intellectual Property, </li>
</ul>



<ul class="wp-block-list">
<li>Trademark Law</li>
</ul>
</li>



<li>Thomas R. Johnson
<ul class="wp-block-list">
<li>Advertising Law</li>
</ul>
</li>



<li>Heather J Kliebenstein
<ul class="wp-block-list">
<li>Litigation- Intellectual Property </li>
</ul>
</li>



<li>Thomas J. Leach
<ul class="wp-block-list">
<li>Litigation- Intellectual Property</li>
</ul>
</li>



<li>Brent E. Routman
<ul class="wp-block-list">
<li>Advertising Law</li>
</ul>
</li>



<li>Christopher J. Schulte
<ul class="wp-block-list">
<li>Litigation &#8211; Intellectual Property</li>



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



<li>William D. Schultz
<ul class="wp-block-list">
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>



<li>Christopher J. Sorenson
<ul class="wp-block-list">
<li>Litigation &#8211; Intellectual Property</li>



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



<li>Anthony R. Zeuli
<ul class="wp-block-list">
<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 class="wp-block-list">
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>
</ul>



New York, NY



<ul class="wp-block-list">
<li>Peter A. Gergely
<ul class="wp-block-list">
<li>Litigation &#8211; Intellectual Property</li>



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

Merchant & Gould Attorneys Recognized by Best Lawyers® in 2024 in America.

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in Best Lawyers in America: Ones to Watch 2022 Edition.



These awards are recognitions given to attorneys who are earlier in their careers for outstanding professional excellence in private practice in the United States. Our &#8220;Ones to Watch&#8221; recipients typically have been in practice for 5-9 years.



Our methodology for determining these awards remains the same as it did when Best Lawyers was founded almost 40 years ago: peer-review. Lawyers are the best resource to provide feedback on the caliber of work performed by their peers.



Minneapolis, MN



<ul class="wp-block-list">
<li>Joseph W. Dubis Ph.D. 
<ul class="wp-block-list">
<li>Intellectual Property Law</li>



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



<li>Michael A. Erbele
<ul class="wp-block-list">
<li>Technology Law</li>
</ul>
</li>



<li>Paige S. Stradley 
<ul class="wp-block-list">
<li>Intellectual Property Law</li>



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

Merchant & Gould Attorneys Recognized in the Best Lawyers: Ones to Watch® in America 2022 Edition

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in Best Lawyers in America: Ones to Watch 2023 Edition.



These awards are recognitions given to attorneys who are earlier in their careers for outstanding professional excellence in private practice in the United States. Our &#8220;Ones to Watch&#8221; recipients typically have been in practice for 5-9 years.



Our methodology for determining these awards remains the same as it did when Best Lawyers was founded almost 40 years ago: peer-review. Lawyers are the best resource to provide feedback on the caliber of work performed by their peers.



Minneapolis, MN



<ul class="wp-block-list">
<li>Joseph W. Dubis Ph.D. 
<ul class="wp-block-list">
<li>Intellectual Property Law</li>



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



<li>Michael A. Erbele
<ul class="wp-block-list">
<li>Technology Law</li>
</ul>
</li>



<li>Paige S. Stradley 
<ul class="wp-block-list">
<li>Intellectual Property Law</li>



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

Merchant & Gould Attorneys Recognized in the Best Lawyers: Ones to Watch® in America 2023 Edition

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.

CAFC Affirms PTAB’s Use of Extrinsic Evidence to Understand Term in Prior Art Reference

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/23-1573.OPINION.4-29-2025_2506094.pdf">In re: PT Medisafe Technologies, No. 2023-1573 (April 29, 2025)</a>, affirming a decision from the Trademark Trial and Appeal Board rejecting the registration of a color mark for medical examination gloves.  



Medisafe had sought to register a particular shade of dark green (Pantone 3285c) as a color mark for its chloroprene examination gloves. The examining attorney, however, refused registration on the grounds that the proposed color mark was generic, relying on the test established in H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 990 (Fed. Cir. 1986). That two-part test requires a determination of the genus of goods or services at issue and an evaluation of whether the term sought to be registered is understood by the relevant public to refer to that genus.



On appeal, the Board affirmed the examining attorney. The Board applied a modified version of the Marvin Ginn test that it had developed for evaluating color marks in Milwaukee Electric Tool Corp. v. Freud America, Inc., 2019 WL 6522400 (TTAB Dec. 2, 2019), which requires a determination of whether the color is so common within the relevant genus that consumers would primarily associate it with the genus rather than with the specific goods or services. Medisafe appealed.



The Federal Circuit affirmed. Expressly adopting the Board’s Milwaukee Electric test, the Court found that Medisafe’s proposed color mark was generic. More specifically, the Court first rejected Medisafe’s narrower definition of the relevant genus, which would have limited it to only gloves sold to authorized resellers rather than the general public, and then found that substantial evidence supported the Board’s determination that Medisafe’s color mark was “so common in the…medical examination glove industry that it cannot identify a single source” and is therefore generic. The Court also rejected Medisafe’s argument that its proposed color mark had acquired distinctiveness.



Finally, the Court rejected Medisafe’s argument that the Board bore the burden of proof and was required to show by clear and convincing evidence that the mark was generic, noting that the Court has never held that an examining attorney must find genericness by clear and convincing evidence.

CAFC Affirms Rejection of Color Mark for Medical Gloves

Recently, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://www.cafc.uscourts.gov/opinions-orders/23-2211.OPINION.5-23-2025_2519843.pdf">Sigray, Inc. v. Carl Zeiss X-Ray Microscopy, Inc., No. 23-2211</a> (May 23, 2025), reviewing a decision by the Patent Trial and Appeal Board concerning the validity of U.S. Patent No. 7,400,704.



The &#8216;704 patent claims an X-ray imaging system that incorporates projection magnification to enlarge images generated by X-ray beams. Sigray filed a petition for inter partes review (IPR), challenging all claims of the ‘704 patent based on prior art, specifically the Jorgensen reference. The Board initially found that Sigray demonstrated a reasonable likelihood that at least one claim was unpatentable and instituted the IPR, but it ultimately declined to hold any of the asserted claims unpatentable.



Sigray appealed only with respect to the Board’s determination that claims 1–6 were not unpatentable. In particular, Sigray contested the Board&#8217;s decision that claims 1, 3, and 4 were not anticipated by the Jorgenson reference and that claims 1–6 were not obvious over Jorgensen, either alone or in combination with other references. Jorgenson describes using an X-ray beam to image rodent organs and references a process known as collimation, which has the potential to reduce beam divergence and, consequently, magnification. There was no dispute that Jorgenson explicitly disclosed all elements of claim 1, except for the projection magnification limitation: “a magnification of the projection X ray stage . . . between 1 and 10 times.”



The Court considered whether Jorgenson inherently disclosed a diverging X-ray beam producing magnifications within the claimed range. The Court noted that the Board impermissibly narrowed the scope of claim 1 in determining that Sigray “fail[ed] to show that the . . . X-ray beam in Jorgensen diverges enough to result in projection magnification ‘between 1 and 10 times’,” implicitly construing “between 1 and 10” to exclude small amounts of magnification. The Board’s narrowing construction and the evidence of some divergence disclosed in Jorgenson led the Court to ultimately reverse the Board&#8217;s decision concerning the lack of anticipation of claims 1, 3, and 4, finding that Jorgensen disclosed all elements of claim 1 and dependent claims 3 and 4. However, the Court did not make a final determination on the validity of claims 2, 5, and 6, and remanded the case to the Board for further proceedings to assess whether these claims would have been obvious in light of the Court&#8217;s opinion.

CAFC Reverses and Remands to PTAB Due to Impermissible Narrowing of Claim Scope in IPR

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Optis Cellular Technology, LLC v. Apple, Inc., Nos. 2022-1904, -1925 (June 16, 2025), vacating a $300,000,000 damages award because the verdict form violated Apple’s Seventh Amendment rights.



Optis sued Apple for infringing several standard-essential patents (SEPs) covering technology central to the LTE standard used in cell tower communications. Optis alleged various Apple cellular-enabled products, including iPhones, iPads, and watches, implemented the LTE standard in an infringing manner. The case went to a jury trial, and both parties requested a verdict form addressing infringement on a patent-by-patent basis. The district court, however, provided the jury with a single infringement question asking if Apple infringed any of the asserted patents. The jury returned a verdict finding the patents not invalid, finding that Apple willfully infringed one or more of the asserted patents, and awarding $506,200,000 in reasonable royalty damages.



In post-trial motions, Apple argued the jury should have heard evidence of Optis’s obligation to license the asserted SEPs on fair, reasonable, and nondiscriminatory (FRAND) terms. The district court agreed and granted Apple’s motion for a new trial on damages. On retrial, the jury issued a damages award of $300,000,000. Apple appealed, arguing among other things that the single infringement question violated its Seventh Amendment right to jury unanimity.



The Federal Circuit vacated and remanded. First, the Court held that the single infringement question violated Apple’s right to jury unanimity. The Court explained that each asserted patent raises an independent cause of action, and the form erred in requiring an affirmative answer to the infringement question even if the jurors did not all agree on which of the asserted patents were infringed. Next, for the sake of efficiency, the Court addressed some of Apple’s additional arguments so that all errors could be addressed on remand. Specifically, the Court reversed the district court’s decision on summary judgment that that certain claims were not directed to an abstract idea and remanded for consideration of Step 2 of the Alice test. The Court also reversed the district court’s holding on whether an element in one of the asserted claims invoked § 112 ¶ 6, but it affirmed the district court’s construction of an element of a different claim. Finally, the Court reversed the district court’s decision to admit evidence of a prior Apple settlement agreement and expert testimony concerning the same.



This blog post was co-authored by Rachel Scobie &amp; Grace Neumann.

CAFC Vacates Damages Award over Unconstitutional Verdict Form

Last week, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in <a href="https://www.cafc.uscourts.gov/opinions-orders/24-2191.OPINION.7-17-2025_2546100.pdf">Top Brand LLC v. Cozy Comfort Co. LLC, No. 2024-2191 (July 17, 2025)</a>, reversing the district court’s denial of Top’s motion for judgment as a matter of law (“JMOL”) that it did not infringe Cozy’s design patent and trademarks.



Cozy accused Top of infringing its design patent on the ornamental design of an oversized hooded sweatshirt with an elevated “marsupial” pocket. Top responded by seeking a declaratory judgment, and Cozy counterclaimed for design patent infringement and infringement of trademarks on “THE COMFY” for wearable throws and related online services. A jury found that Top infringed the design patent and trademarks, and the district court denied Top’s JMOL motion. Top appealed. The Federal Circuit reversed. Regarding design patent infringement, the Court first rejected Cozy’s argument that Top waived its claim construction challenge by not objecting to the jury instructions because Top’s claim construction and summary judgment briefs asserted the same position it raised on appeal. The Court next explained that the doctrine of prosecution history disclaimer, including by amendment and by argument, applies to design patents. Applying the doctrine, the Court concluded that Cozy surrendered claim scope during prosecution in distinguishing prior art based on the size, shape, and position of the marsupial pocket, such that it could not rely on similarities between the claimed design’s and the accused product’s pockets to prove infringement. Because Cozy failed to rely on any other similarities, the Court determined that JMOL of noninfringement should have been granted.



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As for the trademarks, the Court applied the Ninth Circuit’s Sleekcraft test to assess whether a likelihood of confusion existed between Cozy’s “THE COMFY” marks and Top’s use of the word “Comfy” on its website to advertise competing blanket throws. First, the Court explained Cozy’s marks are entitled to weak protection because their dominant part, “COMFY,” is descriptive or highly suggestive of blanket throws and related services. Second, the Court observed that the evidence showed only that Top had used “Comfy”—not “THECOMFY”—and did so descriptively rather than as a source-identifier. Finally, the Court rejected Cozy’s supposed evidence of actual confusion because it was not tied to Top’s use of “Comfy.” The Court therefore concluded that no reasonable jury could have found trademark infringement.



This blog post was co-authored by Chris Grable and Joshua Hartman.

CAFC Holds That Prosecution History Disclaimer Applies to Design Patents

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/23-1715.OPINION.7-28-2025_2550316.pdf">Jiaxing Super Lighting Electric Appliance Co. v. CH Lighting Technology Co., No. 23-1715 (July 28, 2025)</a>, partially undoing a district court win for LED-lamp maker Super Lighting and sending the case back for a second round.



Super Lighting sued CH Lighting for infringing three patents directed to LED tube lamp technology. Before trial, CH Lighting admitted to infringing two of the patents (the “tube” patents), but challenged them as anticipated under the AIA’s on-sale bar. The case was tried in the Western District of Texas, where the district court excluded some of CH Lighting’s evidence and granted judgment as a matter of law (JMOL) that the tube patents were not invalid. The jury found the third patent (the “circuit” patent) infringed and not invalid and awarded damages for all three patents. CH Lighting appealed.



The Federal Circuit reversed the JMOL on the tube patents, affirmed the verdict on the circuit patent, and vacated the damages award. First, regarding the tube patents, the Court held that the district court abused its discretion by excluding key evidence, including testimony of an executive who would have authenticated specification sheets showing the accused tubes were offered for sale before the tube patents’ 2015 effective filing dates and an internal Super Lighting presentation depicting pre-priority Cree and Philips tubes. Because the grant of JMOL relied the absence of this evidence, the Court reversed the grant of JMOL and ordered a new trial on the validity of the tube patents. Second, regarding the circuit patent, the Court held that substantial evidence supported the jury’s findings. Third, regarding damages, the Court held that because the jury returned a single damages figure for all three patents, the Court’s reversal of JMOL on the tube patents supported the grant of a new trial on damages. The Court further instructed the district court on remand to carefully evaluate the reliability of Super Lighting’s damages expert in light of the recent en banc decision in EcoFactor. In particular, the Court reminded the district court that “expert testimony should be excluded when it fails to allocate license fees among the licensed patents covered by an agreement.” The case now returns to the Western District of Texas for a new trial on the tube patents’ validity and on damages.

CAFC Orders New Trial on Validity and Damages in LED Lighting Case

On August 12, 2025, Judge Alsup of the Northern District of California denied Anthropic’s request to certify for early appellate review the court’s June 23, 2025, summary judgment ruling in Bartz et al. v. Anthropic PBC, 2025 U.S. Dist. LEXIS 154870 (N.D. Cal. Aug. 12, 2025).



In the June 23 order, the Court held that training an AI model on lawfully acquired and digitized books was transformative and thus a protected fair use, emphasizing that the purpose of the training is to teach the model rather than to serve as a substitute for the books themselves. At the same time, the Court drew a clear boundary: Anthropic’s ingestion of pirated works from shadow libraries was not fair use. Judge Alsup noted that the wholesale downloading and permanent storage of millions of unauthorized works exceeded permissible use and posed serious risks of market harm. The June 23 ruling therefore split the claims—finding fair use for training on lawfully obtained materials, while sending to trial the claims related to copying and maintaining the pirated library.



Anthropic sought immediate appellate review of whether its use and storage of pirated books could be considered fair use, but the Court refused. Judge Alsup emphasized that the Ninth Circuit should not weigh in until a full factual record has been developed at trial. He also criticized Anthropic for “refus[ing] to come clean” about its acquisition and use of the pirated works, finding that those facts should be presented to, and weighed by, a jury.



Trial is currently set for December 1, 2025. The key issues will include whether the use and storage of pirated books can qualify as fair use and how to measure potential damages in the AI context.

District Court Refuses to Certify Fair Use Decision for Early Appellate Review

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/24-1039.OPINION.9-24-2025_2577864.pdf">Finesse Wireless LLC v. AT&amp;T Mobility LLC, No. 24-1039 (Sept. 24, 2025)</a>, reversing the district court’s denial of judgment as a matter of law (JMOL) of noninfringement and vacating the jury’s award of over $160 million in damages.



Finesse sued AT&amp;T for infringement of two patents relating to methods of reducing interference in radios. Finesse’s first patent claims a method of reducing intermodulation product (IMP) interference by sampling “signals of interest” and “interference generating signals,” isolating the two signal types, and cancelling out the interference generating signals. Finesse’s second patent claims a method of reducing IMP interference by creating IMP cancellation signals through seven digital multiplications of three signals.



At trial, regarding the first patent, Finesse’s infringement expert testified that he mapped the signals of interest to a downlink transmit reference and mapped the interference generating signals to a modeled passive intermodulation products (PIM) path. The expert later changed his testimony to identify “x1” and “x2” but did not explicitly map “x1” and “x2” to the signals of interest and interference generating signals. Regarding the second patent, Finesse’s expert testified that the accused radios performs the claims multiplications but relied on a document identifying only three multiplications.



AT&amp;T moved for JMOL. The district court denied the motion, ruling for the first patent that there was sufficient evidence that the accused radios’ receivers sample both the “signals of interest” and “interference generating signals” and therefore infringe Finesse’s patent. For the second patent, the district court denied JMOL in part because the three multiplications corresponded to some of the seven claimed multiplications.



The Federal Circuit reversed. On the first patent, the Court reversed because the expert testimony was unclear. The Court held that even if the expert mapped x1 and x2 to the signals of interest and interference generating signals, he did not explain his contradictory testimony, and his testimony was insufficient to support the jury’s verdict. On the second patent, the Court reversed because neither the expert nor the document indicated how the three multiplications mapped onto the seven multiplications. Therefore, no reasonable jury could have found that the accused radios practiced the seven claimed multiplications.

CAFC Reverses District Court Denial of JMOL in Radio Interference Patent Case

Last week, the U.S. Court of Appeals for the Second Circuit issued a precedential opinion in <a href="https://cases.justia.com/federal/appellate-courts/ca2/24-2196/24-2196-2025-10-06.pdf?ts=1759766412&amp;utm_source=chatgpt.com">Santos v. Kimmel, No. 24-2196 (Oct. 6, 2025)</a>, affirming the Southern District of New York’s Rule 12(b)(6) dismissal of former Congressman George Santos’s copyright claims against Jimmy Kimmel, ABC, and Disney.



The suit arose after Kimmel, using fictitious names, submitted requests to Santos for video messages through Cameo, an online platform where fans purchase personalized messages from celebrities. Santos fulfilled the requests, and Kimmel aired the videos on his show as part of a “Will Santos Say It?” segment. Santos sued the defendants for copyright infringement and other claims. The district court dismissed the complaint for failure to state a claim, holding that the copyright claims were barred by the fair use doctrine and the remaining claims were either preempted or insufficiently pled.



The Second Circuit affirmed. The Court held that the fair use doctrine barred Santos’s claims on the face of the complaint. The Court agreed with the district court that Kimmel’s use was transformative, finding Kimmel’s purpose was to comment on the willingness of Santos to say absurd things for money. The Court rejected Santos’s argument that, because this was also his original purpose in creating the videos, the use was not transformative. The Court explained that whether a secondary use is transformative turns on what a reasonable observer thinks the work conveys, not the parties’ subjective intent. Santos acknowledged that a reasonable person would view the videos as conveying encouragement and hope, a purpose distinct from Kimmel’s commentary and criticism.



The Court also rejected Santos’s argument that Kimmel’s alleged deception in procuring the videos negated fair use. Citing Supreme Court guidance, it explained that allegations of bad faith do not defeat fair use where the use is otherwise transformative and does not aim to supplant the original. As to the latter, the Court concluded Santos had not suffered market harm because the complaint itself foreclosed any plausible allegation of market substitution: late-night parody does not compete with Cameo’s market for personalized greetings, and creators do not license criticism of their own works. The Court determined the remaining fair use factors also favored defendants or were neutral.



Because the allegedly infringing segments and the videos were incorporated into the pleadings, the Court reiterated that fair use can be resolved at the pleading stage and affirmed dismissal.

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