September 10, 2018

Federal Circuit Court Decisions For Week Ending August 31, 2018

Zheng Cai v. Diamond Hong, Inc., Nos. 2018-1688 (August 27, 2018) (Precedential) (3-0) TTAB 92062714

Key points:

  • Although the TBMP does not have the force of law, the TBMP is accorded a degree of deference, especially relating to evidentiary matters.
  • Likelihood of confusion is likely to be found with a registered mark that covers identical goods as the mark at issue and is similar to the mark at issue.

Ericsson Inc. v. Intellectual Ventures I LLC, No. 2017-1521 (August 27, 2018) (Precedential) (3-0), U.S. Patent No. 5,602,831

Key points:

  • The PTAB has discretion to reject arguments raised for the first time in reply.
  • Citing no new evidence and expanding upon the same argument made in a petition for inter partes review does not constitute a new theory, which the PTAB may decline to consider.

In re Villena, No. 2017-2069 (August 29, 2018) (Nonprecedential), U.S. Patent Application No. 13/294,044

Key point:

  • A fundamental economic practice executed using computer technology is most likely patent-ineligible subject matter.

Barkan Wireless Access Technologies, LP v. Cellco Partnership, No. 2017-2264 (August 29, 2018) (Nonprecedential) U.S. Patent Nos. 8,559,369 and 9,042,306

Key point:

  • An express definition of a term must “evince a clear intent” in the specification.

Emerson Electric Co. v. SIPCO LLC, No. 2017-1866 (August 29, 2018) (Nonprecedential) U.S. Patent No. 8,013,732

Key point:

  • Where the PTAB issues opinions on the same technical issue between the same parties on identical facts, and reaches opposite results without explanation, the Federal Circuit vacates and remands the later finding for further consideration.

Wavetronix LLC v. Smart Microwave Sensors GMBH, No. 2017-2328 (August 31, 2018) (Nonprecedential) U.S. Patent No. 6,693,557

Key point:

  • Express disclosures in a prior art reference may constitute substantial evidence to support a finding of a motivation to combine.

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