Brand Protection

Publications & Media

Federal Circuit Court Decisions For Week Ending December 16, 2016

Melchior. v. Hilite International, Inc., No. 2015-1932, December 12, 2016 (Nonprecedential) Patent Nos. 5,645,017; 5,649,506; and 5,507,254

Key point(s):

  • Prior art cannot be distinguished on the ground that it lacks features that are not claim limitations. 

In re JobDiva, Inc., No. 2015-1960, December 12, 2016 (Precedential) (3-0) Trademark Registration Nos. 2851917 and 3013235

Key point(s):

  • A company may be considered to be rendering a recited service even when the service is performed by the company’s software.

Power Integrations, Inc. v. Fairchild Semiconductor International, Inc.,, Nos. 2015-1329, -1388, December 12, 2016 (Precedential) (3-0); Patent Nos. 7,110,270; 7,834,605; 6,107,851; 6,249,876 and 8,302,356

Key point(s):

  • To prove inducement, it is not enough that an alleged inducer committed acts intended to result in direct infringement by a third party and a third party directly infringed. Inducement also requires proof of actual inducement, such as successful communication between the alleged inducer and the third-party direct infringer. 

Emerald Cities Collaborative, Inc. v. Sheri Jean Roese, Nos. 2016-1703, December 13, 2016 (Nonprecedential)

Key point(s):

  • Relinquishing immediate control and ownership of an intent-to-use trademark application in a manner “tantamount to an assignment” renders the registration invalid.

Medgraph, Inc. v. Medtronic, Inc., No. 2015-2019, December 13, 2016 (Precedential) (3-0) Patent Nos. 5,974,124 and 6,122,351

Key point(s):

  • A finding of direct infringement requires that all steps of the claim are performed by or attributable to a single entity.
  • While Akamai broadened the circumstances in which other’s acts may be attributed to an accused infringer in cases of divided infringement, remand to the district court was unnecessary because the evidence indisputably shows Medtronic did not condition doctor’s or patient’s use of their system on performance of all the claimed steps of Medgraph’s patents.

United Construction Products, Inc., D/B/A Bison Innovative Products v. Tile Tech, Inc., No. 2016-1392, December 15, 2016 (Precedential) (3-0) Patent No. 8,302,356

Key point(s):

  • A district court has broad discretion to enter a default judgment and permanent injunction when the dilatory actions of one party are the fault of the party or its attorney.

U.S. Water Services, Inc. v. Novozymes A/S, Novozymes North America, Inc., Nos. 2015-1950, -1967, December 15, 2016 (Precedential) (3-0) Patent Nos. 8,415,137, 8,609,399

Key point(s):

  • In order for a reference to inherently anticipate a claim limitation, the reference must always result in the claim limitation being present or occurring.