October 2, 2017

Federal Circuit Court Decisions For Week Ending August 11, 2017

Personal Audio, LLC. v. Electronic Frontier Foundation, No. 2016-1123 (August 7, 2017) (precedential 3-0) Patent No. 8,112,504

Key point(s):

  • Article III standing requirement applies to appellants from a PTAB decision, not appellee
  • Non-profit organization representing public interest is not constitutionally excluded from appearing as appellee in court to defend a PTAB decision.

In Re: I.AM.Symbolic, LLC, No. 2016-1507, 2016-1508, 2016-1509 (August 8, 2017) (precedential, 3-0) Trademark “I AM”

Key point(s):

  • Language limiting goods to those “associated with … will.i.am” found meaningless in distinguishing the mark over previously registered marks.

Romag Fasteners, Inc. v. Fossil, Inc., No. 2016-1115, 2016-1116, 2016-1842 (August 9, 2017) (Precedential 3-0) Patent No. 5,722,126 and Trademark No. 2,095,367

Key point(s):

  • The Octane standard for determining an exceptional case should apply to the Lanham Act in the Second Circuit.
  • The prevailing party’s conduct should be considered in the totality of circumstances in determining attorney’s fees.

AIA America, Inc. v. Avid Radiopharmaceuticals, No. 2016-2647 (August 10, 2017) (Precedential 3-0) Patent Nos. 5,455,169 (‘169 patent) and 7,538,258

Key point(s):

  • Attorney’s fees under §285 are equitable in nature and do not invoke the Seventh Amendment right to a jury trial.
  • A trial court can make additional findings not precluded by the jury’s verdict when deciding equitable issues.

Amgen Inc., v. Hospira, Inc., No. 2016-2179 (August 10, 2017) (Precedential 3-0)

Key point(s):

  • Lack of immediate appeal over orders denying discovery of BPCIA paragraph (l)(2)(A) information does not render such orders “effectively unreviewable” or distinguish them from run-of-the-mill discovery disputes.
  • Reasonableness requirement of paragraph (l)(3)(A) does not preclude a sponsor from listing a patent for which an applicant has not provided information under paragraph (l)(2)(A).

In re North Carolina Lottery, No. 2016-2558 (August 10, 2017) (Precedential 3-0) Trademark “First Tuesday”

Key point(s):

  • Explanatory text on specimen can be considered to determine descriptiveness of mark.

Piccone v. Matal, No. 2016-1544 (August 11, 2017) (Precedential, Per Curiam)

Key point(s):

  • Trial court’s denial of a request for reconsideration based on testimony evidence taken prior to oral argument on the motion to dismiss was not an abuse of discretion.

Related Team:

Jason C. Huang