October 10, 2013

Federal Circuit Decisions for Week Ending Oct. 4, 2013

In re City of Houston, 2012-1418 (Oct. 1, 2013) (precedential) (3-0)

Key point:

  • A local government entity may not obtain a federal trademark registration for its official seal.

TECSEC, Inc. v. Int’l Business Machines Corp., 2012-1415 (Oct. 2, 2013) (precedential) (2-1)

Key points:

  • The mandate rule applies when the issues decided by the Federal Circuit in its Rule 36 judgment are clear. Collateral estoppel applies in the same situation if the issue being raised again was strictly necessary to the district court’s decision.
  • An element that is recited together with the word “means” may overcome the presumption that § 112, ¶ 6 applies if the element itself designates/indicates structure to skilled artisans.
  • For computer-implemented means-plus-function limitations, the specification should describe how the software operates to implement the recited functions to comply with § 112, ¶ 2.

Microsoft Corp. v. Int’l Trade Comm’n, 2012-1445, -1535 (Oct. 3, 2013) (precedential) (3-0)

Key points:

  • When a claim term is so general on its face, the context provided by the specification may be used to clarify the meaning of the claim term.
  • Domestic industry requirement for § 337 claims require evidence that the patent owner made a substantial domestic investment in the actual article that practices the patent.
  • The claim term “relating to” should not be interpreted as “based upon or determined by.”
  • The claim limitation “displaying … positioned in the proximity of …” does not by itself require deliberate positioning.

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