October 25, 2016

Federal Circuit Court Decisions For Week Ending October 7, 2016

In re Light (October 7, 2016) (non-precedential), Trademark Application Nos.: 76/293,326 & 76/293,327

Key point(s):

  • Proposed marks cannot function as a mark if proposed mark is merely informational
  • Distinctiveness cannot overcome a rejection for failure to function as a mark

Apple Inc. v. Samsung Electronic, et al. (October 7, 2016) (10-3; en banc) (precedential) Patent Nos. 8,074,172; 8,046,721; and 5,946,647

Key point(s):

  • The appellate court cannot reverse a claim construction ruling based on extra-record extrinsic evidence if that construction was agreed upon by the parties and not appealed
  • Strong objective indicia of non-obviousness can powerfully weigh in favor of validity

Related Team:

Keith Taboada