Litigation + Dispute Resolution

Publications & Media

Federal Circuit Court Decisions For Week Ending November 17, 2017

In re Latindo, No. 2017-1292 (Nov. 13, 2017) (per curiam) (non-precedential)

Key point(s):

  • When determining the meaning of two marks, it is the marks themselves, as set forth in the application and cited registration, not extrinsic evidence, which determines likelihood of confusion.
  • Trade dress may not be used to prove that the commercial impressions of two marks are different, since the trade dress may be changed at any time.

Promega Corp. v. Life Techs. Corp., Nos. 2013-1011, -1029, -1376 (Nov. 13, 2017) (precedential, 3-0) Reissue Patent No. 37,984

Key point(s):

  • A patent owner may waive its right to a damages award when it deliberately abandons valid theories of recovery in a singular pursuit of an ultimately invalid damages theory.

In re Lorkovic, No. 2017-1678 (Nov. 13, 2017) (nonprecedential) US. Pat. App. No. 11/384,662

Key point(s):

  • Obviousness can be founded on applying computer and internet technology to replace older electronics.

Amgen Inc. v. Apotex Inc., No. 2017-1010 (Nov. 13, 2017) (nonprecedential) Patent No. 8,952,138

Key point(s):

  • Statements made in prelitigation letters are party admissions and therefore have some probative weight.

In re Micron Tech., Inc., No. 2017-1738 (Nov. 15, 2017) (precedential, 3-0)

Key point(s):

  • In addition to the waiver rule of 12(g)(2) and (h)(1)(A) available to courts to deny venue objections, district courts can reject a venue defense under the discretionary framework of Dietz.

In Re Thomas, No. 2017-1100 (Nov. 17, 2017) (nonprecedential) Patent App. No. 12/878,199

Key point(s):

  • The act of filing a Board appeal alone does not entitle an application to de novo review.
  • Once the examiner establishes a prima facie case of anticipation, the burden shifts to the applicant to rebut the rejection with specific reasons why the claims and the prior art are different.

Mexichem Amanco Holding v. Honeywell Int’l, Nos. 2016-2084, 2016-2085, 2017-1050 (Nov. 17, 2017) (nonprecedential) Patent Nos. 7,524,805; 7,825,081; and 8,148,317

Key point(s):

  • When a patentee explicitly defines a claim term in the patent specification, the patentee’s definition controls.

Cobra Int’l, Inc. v. BCNY Int’l, Inc., Nos. 2016-2103, 2016-2173, 2016-2635 (Nov. 17, 2017) (per curiam) (non-precedential) Patent No. 5,821,858

Key point(s):

  • It is within the district court’s discretion to deny a motion for leave to amend for failure to establish good cause due to the party’s lack of diligence. (Eleventh Circuit law).
  • A district court cannot reach the merits of infringement when there is a missing co-owner of the patent. (Federal Circuit law).