Carleton Clauss, Partner

Publications & Media

Federal Circuit Decisions for Week Ending December 12, 2014

Tomita Tech. LLC v. Nintendo Co., LTD., Case No. 2014-1244 (December 8, 2014) (nonprecedential) (3-0), Patent No. 7,417,664

Key point(s):

  • If only one corresponding structure to perform the function of “means for” claim language is disclosed in the specification, the claim scope is limited to that structure plus its equivalents.

Japanese Foundation for Cancer Research v. Lee,  Case Nos. 2013-1678 and 2014-1014 (December 9, 2014) (precedential) (3-0) Patent No. 6,194,187

Key point(s):

  • The USPTO is given deference to interpret its own procedures and regulations so long as it does not act arbitrarily or capriciously.
  • A certificate of correction under 35 U.S.C. § 255 cannot be used to withdraw a terminal disclaimer erroneously filed because of a miscommunication between the client and attorney of record.

In re Khayrallah,  Case No. 2014-1382 (December 9, 2014) (nonprecedential) Patent App. No. 11/517,533

Key point(s):

  • When a claim term is described broadly in the specification, that broad description applies to its use in the claims in the absence of explicit limiting language.

In re Franciscan Vineyards, Inc.,  Case No. 2014-1269 (December 9, 2014) (nonprecedential)

Key point(s):

  • Evidence that a mark owner and an applicant for a mark are competitors in a foreign jurisdiction is not evidence that the goods or services of the mark owner and the applicant are related in the United States.