June 23, 2017

Federal Circuit Court Decisions For Week Ending June 9, 2017

Checkpoint Systems, Inc. v. All-Tag Security S.A., No. 2016-1397, (June 5, 2017) (Precedential) (3-0)U.S. Patent No. 4,876,555

Key point(s):

  • While an improper motive for bringing an infringement action may be a factor in an exceptionalcase finding, motivation to enforce a statutory patent right by bringing suit based on a reasonablebelief in infringement is not an improper motive.

Rothschild Connected Devices Innovations, LLC v. Guardian Protection Services, Inc. No. 2016-2521, (June 5, 2017) (Precedential) (3-0) U.S. Patent No. 8,788,090

Key point(s):

  • Moving to dismiss an infringement action under Rule 11(c)(2) may avoid Rule 11 sanctions, butmay not preclude an exceptional case finding resulting in attorney fees for the patentee.

Crossroads Systems, Inc. v. Cisco Systems, Inc., No’s. 2016-2017; 2016-2026; 2016-2027, (June 6, 2017) (Non-precedential) U.S. Patent Nos. 6,245,035, 7,934,041 and 7,051,147

Key point(s):

  • Broadest reasonable interpretation can include elements in prior art references that functionsimilarly to the claimed elements.

Secure Axcess, LLC v. PNC Bank National Association, No. 2016-1353, (June 6, 2017) (Precedential) (6-5) U.S. Patent No. 7,163,191 (Order denying rehearing en banc)

Key point(s):

  • A financial aspect must be found in the claims for a patent to be eligible for CBM review.

SKKY, Inc. v. Mindgeek S.A.R.L., No. 2016-2018, (June 7, 2017) (Precedential) (3-0) U.S. Patent No. 7,548,875

Key point(s):

  • Although the word “means” in a claim term carries a presumption of invoking §112(6), thepresumption may be overcome if the full term recites structure, not functionality.

Sheila Lyons, DVM v. The American College of Veterinary Sports Medicine and Rehabilitation, No. 2016-2055, (June 8, 2017) (Precedential) (3-0) Trademark Registration No. 3,088,963

Key point(s):

  • Ownership of a mark, if the mark is determined not to be personal, is determined by who controlsthe quality of the service the mark represents.

New World International, Inc. v. Ford Global Technologies, LLC, No. 2016-2097, (June 8, 2017) (Precedential) (3-0) U.S. Patent Nos. D489,299; D501,685

Key points:

  • Cease and desist letters alone are not sufficient to establish the fair play and substantial justicenecessary for personal jurisdiction over a nonresident defendant in a declaratory judgment ofnoninfringement or invalidity of a patent.

Credit Acceptance Corp. v. Westlake Services, No. 2016-2001, (June 9, 2017) (Precedential) (3-0) U.S. Patent No. 6,950,807

Key point(s):

  • The Federal Circuit has jurisdiction to review the PTAB’s estoppel determination under 35 U.S.C.§325(e)(1).
  • 35 U.S.C. §325(e)(1) does not apply in a subsequent proceeding to claims upon which the PTABdeclined to institute review.
  • System claims that use computers as tools to permit automation of previously manual processing ofloan applications, and provide software that allows computers to supplant and enhance existing series of manual processes, are not patent-eligible under §101.

Joel L. Beling, DBA Supa Characters PTY LTD v. Ennis, Inc., No. 2016-1542, (June 9, 2017) (Non-precedential) (Trademark Opposition No. 91203884)

Key point(s):

  • An appeal by a prevailing party must prove that a case or controversy exists or the appeal mustbe dismissed.

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