Brand Protection

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Federal Circuit Court Decisions For Week Ending November 6, 2015

Tse v. Apple Inc.., No. 2015-1639 (November 5, 2015) (Nonprecedential); Patent No. 6,665,797

Key points:

  • The doctrine of collateral estoppel applies if (1) the issue sought to be precluded from relitigation is identical to the issue decided in the earlier proceeding; (2) the issue was actually litigated in the former proceeding; (3) the issue was necessarily decided in the former proceeding; and (4) the person against whom collateral estoppel is asserted was a party, or in privity with a party, to the earlier proceeding.
  • A prior judgment of invalidity will have collateral estoppel effect unless the patentee can show it did not have a full and fair opportunity to litigate in the prior case.

Yufa v. Hach Ultra Analytics, Inc., No. 2015-1626 (November 5, 2015) (Nonprecedential); Patent Nos. 6,034,769 and 6,346,983

Key Points:

  • Issue preclusion barred litigation of infringement in a second action after a district court granted summary judgment of noninfringement based on prosecution history estoppel in a first action.

Belden Inc. v. Berk-Tek LLC, Nos. 2014-1575 and 2014-1576 (November 5, 2015) (Precedential) (3-0); Patent No. 6,074,503

Key Points:

  • A petition for IPR can survive without submission of a declaration in support of the positions asserted in the petition.
  • A petitioner in an IPR can reply to a Patent Owner’s Statement and provide a declaration in response to the patent owner’s position even if the Petition was not supported by a declaration.
  • A Reply and supporting declaration can only respond to arguments raised by the patent owner.

In re Taylor., No. 2015-1582 (November 6, 2015) (Nonprecedential); Patent No. 7,582,597

Key Points:

  • When, as by a recitation of ranges or otherwise, a claim covers