July 6, 2018

Federal Circuit Court Decisions For Week Ending June 22, 2018

In Re Wang, No. 2017-1827 (June 20, 2018) (non-precedential), Patent Application No. 13/219,680

Key point(s):

  • Under Section 101, patent eligible subject matter (other than process claims) must exist in physical or tangible form. Eligible processes include a new use of a known process, machine, composition of matter, or material

Sirona Dental Systems Gmbh v. Institut Straumann Ag., Nos. 2017-1341, 2017-1403 (June 19, 2018) (precedential, 3-0) U.S. Patent No. 6,319,006 (’006 Patent)

Key point(s):

  • The Board can invalidate narrower dependent claims based on the invalidity of an independent claim if no separate validity arguments are raised for the dependent claims.
  • After Aqua Products, the Petitioner has the burden of showing unpatentability of claims presented by the Patent Owner in a motion to amend.
  • The Board need not consider grounds of unpatentability not raised in an IPR petition.

PGS Geophysical AS v. Iancu, No. 2017-1582 (June 18, 2018) (non-precedential) U.S. Patent No. 6,026,059 (’059 Patent)

Key point(s):

  • When a claim limitation has multiple antecedent recitations, the limitation may apply equally to each previous recitation so long as such an interpretation is not inconsistent with the specification or claims—it is not necessarily the first recitation that controls the interpretation.
  • Board’s partial institution decision is a waivable error despite SAS.

Royal Crown Company, Inc.. v. The Coca-Cola Company, Nos. 2016-2375 (June 20, 2018) (precedential, 3-0) – Re applications for Beverage Trademarks using “ZERO”

Key point(s):

  • A term can be generic for a genus of goods or services if the relevant public understands the term to refer to a key aspect of that genus.
  • In assessing acquired distinctiveness, the Board must make an express finding of the mark’s descriptiveness on the scale ranging from generic to merely descriptive, and it must explain how its assessment of the evidentiary record reflects that finding.

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