January 16, 2014

Federal Circuit Decisions for Week Ending January 10, 2014

Gutier v. Hugo Boss Trade Mark Management Gmbh, No. 2013-1481 (January 8, 2014) (non-precedential), Trademark Reg. Nos. 2,909,091 and 2,921,574

Key points:

  • Affidavits regarding use of a mark and incontestability of the mark that are filed with the USPTO are not examined for substance or merit, and cannot invalidate a district court’s order to cancel a mark.
  • An agreement allowing use of a mark does not entitle a party to registration of the mark.

Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC, No. 2013-1199 (January 8, 2014) (precedential) Design Patent No. D555,070

Key points:

  • Cancellation of claims in a design application, even in response to a restriction requirement, surrenders equivalents that are within the scope of the cancelled claims.
  • The scope of such surrender is limited to the cancelled claims, and does not include the full range of features between the allowed claims and the cancelled claims.

Motorola Mobility LLC v. ITC, No. 2012-1666 (January 10, 2014) (non-precedential) Patent No. 6,272,333

Key point:

  • While the indefinite article “a” may allow the recited element to be plural, the further context of the claim may require that the recited element is singular.

Nazomi Communications, Inc. v. Nokia Corp., 2013-1165 (January 10, 2014) (precedential) Patent Nos. 7,080,362 and 7,225,436

Key points:

  • Computer apparatus claims that recite hardware with specific functionality may be construed to cover hardware and software that configures the hardware to perform the specific functions.
  • A hardware device that must have certain software installed to perform claimed functions does not infringe if the software is not installed.

Related Team:

Aaron Perkins