Publications & Media

Federal Circuit Court Decisions For Week Ending September 14, 2018

In re Detroit Athletic Co., 2017-2361 (September 10, 2018) (precedential 3-0), Trademark Application for “Detroit Athletic Co.”

Key point(s):

  • In a likelihood of confusion analysis, the mark must be considered “in its entirety, including the disclaimed portion.”
  • The non-source identifying nature of the words “Co.” and “Club” and the disclaimers thereof constituted rational reasons for giving those terms less weight in the confusion analysis.

Orexo AB, v. Actavis Elizabeth, LLC, No. 2017-1333 (September 10, 2018) (precedential 3-0), Patent No. 8,940,330

Key point(s):

  • A patent directed to replacing sublingual tablets with oral film for possible administering advantage is insufficient to suggest a different drug structure and its advantages.
  • Clinical studies showing 66% improved bioavailability of a formulation is more than a trivial “degree” of improved results to support a secondary consideration argument.

Ixi Ip, LLC, v. Samsung Electronics Col, LTD., No. 2017-1665 (September 10, 2018) (precedential 3-0), Patent No. 7,039,033

Key point(s):

  • Issues relating to a motivation to combine prior art references and a reasonable expectation of success are both questions of fact.
  • Expert testimony and corroboration by a secondary reference supports a finding that a primary reference implicitly disclosed a claim limitation.

Regents of the University of California v. Broad Institute, Inc., No. 2017-1901 (September 10, 2018) (precedential 3-0), Patent Application No. 13/842,859

Key point(s):

  • Lack of reasonable expectation of success supports a conclusion that claims to the use of CRISPR in non-cellular environment did not render obvious claims to the use of CRISPR in eukaryotes.

Acorda Therapeutics, Inc., v. Alkermes Pharma Ireland Limited, No. 2017-2078, 2017-2134 (September 10, 2018) (precedential 2-1), Patent No. 8,007,826, 8,663,685, 8,354,437, 8,440,703

Key point(s):

  • A POSITA can look to references, consider their limits, and draw reasonable inferences about the likelihood of success.
  • A blocking patent owned or licensed by the patentee of a later invention may discount the value of evidence of commercial success of the later invention.

ParkerVision, Inc. vs. Qualcomm Incorporated, Nos. 2017-2012, 2017-2013, 2017-2014, 2017-2074 (September 13, 218) (3-0) (precedential) Patent No. 6,091,940

Key point(s):

  • A claim merely capable of performing a claimed function can be found to be anticipated or obvious in light of a reference that is reasonably capable of performing the claimed function. However, a claim that requires actual performance of a claimed function requires a motivation to actually perform the claimed function with the prior art.

Nobel Biocare Services AG v. Instradent USA, Inc., No. 2017-2256 (September 13, 2018) (precedential) (3-0) Patent No. 8,714,977

Key point:

  • Uncorroborated witness testimony, alone, is not sufficient to invalidate a patent.