June 18, 2014

Federal Circuit Decisions for Week Ending June 6, 2014

Empresa Cubana Del Tabaco v. General Cigar Co., No. 2013-1465 (June 4, 2014) (precedential, 3-0) Trademark Cancellation No. 92025859

Key points:

  • Even if an injunction barring a party’s use of a mark would result in an impermissible property transfer to a second party, another party can petition to cancel the mark.
  • Claim preclusion does not bar a petition for cancellation based upon an earlier infringement proceeding.

Eastcott v. Hasselblad USA, Inc., No. 2013-1050 -1051 (June 4, 2014) (non-precedential) Patent No. 5,592,331

Key points:

  • To support summary judgment of infringement under the doctrine of equivalents, evidence must be presented on a limitation-by-limitation basis. Generalized testimony as to the overall similarity between the claims and the accused infringer’s product or process will not suffice.
  • Under the Second Circuit’s rules, a sanctioned attorney must receive specific notice of the conduct alleged to be sanctionable, the standard by which that conduct will be assessed, and an opportunity to be heard on that matter.

Krauser v. BioHorizons, Inc., No. 2013-1461 (June 4, 2014) (precedential, 3-0) Patent Nos. 5,316,476, 5,415,545, and 5,964,766

Key points:

  • A claim of patent ownership does not give rise to federal subject matter jurisdiction.
  • A claim that federal patent law preempts plaintiff’s claims is, by itself, insufficient to give rise to federal subject matter jurisdiction.

In re Rambus, Inc., No. 2013-1192 (June 4, 2014) (precedential, 3-0) Patent No. 6,426,916

Key points:

  • Claims of an expired patent that are undergoing reexamination are reviewed under the Phillips claim construction standard, rather than broadest reasonable interpretation.
  • For anticipation, a “value” cannot “represent” an “amount of time” if there are additional factors that necessarily impact, or represent, the “amount of time.”

Consumer Watchdog v. Wisconsin Alumni Research Foundation, No. 2013-1377 (June 4, 2014) (precedential, 3-0) Patent No. 7,029,913

Key points:

  • The procedural right allowing a third party requester to appeal inter partes reexamination decisions favorable to patentability does give rise to Article III standing.
  • Although Article III standing is not required to appear before the USPTO, such standing is required to seek review of USPTO decisions in Federal court.

In re Reijers, No. 2014-1052 (June 5, 2014) (non-precedential) Application No. 11/718,322

Key point:

  • In the absence of an express disclosure, gas flows ejected from openings in a conduit necessarily would blow liquid from food product, inherently disclosing these limitations.

Source Vagabond Systems Ltd. v. Hydrapak, Inc., No. 2013-1270 -1387 (June 5, 2014) (precedential, 3-0) Patent No. 7,648,276

Key points:

  • The words of a claim are generally given their ordinary and customary meaning; words may not be added to claims to change the unambiguous meaning of the claim.
  • A court may not redraft claims to make them operable or to sustain their validity.

Nassau Precision Casting Co. v. Acushnet Company, No. 2013-1410 (June 6, 2014) (non-precedential) Patent No. 5,486,000

Key point:

  • A method claim may be infringed by a design process as well as a manufacturing process.

STC.UNM v. Intel Corporation, No. 2013-1241 (June 6, 2014) (precedential, 2-1) Patent No. 6,042,998

Key points:

  • The substantive requirement that all patent owners join in a patent infringement suit trumps the involuntary joinder rules of Fed. R. Civ. P. 19(a).
  • Absent two narrow exceptions, a patent co-owner normally cannot be involuntarily joined in a patent infringement suit.

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