September 29, 2014

Federal Circuit Decisions for Week Ending September 20, 2014

Longshore v. Retail Royalty Company, No. 2014-1448 (September 15, 2014) (nonprecedential) (3-0)

Key point(s):

  • The class and categories specified on the trademark application and registration determines the scope of the good/services covered by the contested mark, and where the mark is directed to similar goods in similar trade channels, greater dissimilarity in a mark is required.

Jang v. Boston Scientific Co., No. 2014-134, (September 19, 2014) (precedential) (3-0), Patent Nos. 5,922,021 and 5,954,743

Key point(s):

  • The Federal Circuit has jurisdiction in contract cases where the contract claim requires resolution of underlying patent infringement issues.
  • The Federal Circuit grants interlocutory review in patent cases only rarely.

Virnetx, Inc v. Cisco Systems, Inc., No. 2013-1489, (September 16, 2014) (precedential) (3-0), Patents No. 6,502,135 and 7,418,504

Key point(s):

  • Damages for a multi-component device with many non-infringing features, where the smallest salable use is the device, cannot be based on the value of the entire device, but rather must be based on the value attributable to the patented feature.

STC. UNM v. Intel Corp., No. 2013-1241 (September 17, 2014) (precedential) (5-4), Patent No. 6,042,998

Key point(s):

  • All co-owners to a patent must join as plaintiffs in an infringement suit.
  • Patent co-owners cannot be involuntarily joined in a lawsuit.

SCA Hygiene Products v. First Quality Baby Products, No. 2013-1564 (September 17, 2014) (precedential) (3-0), Patent No. 6,375,646

Key point(s):

  • Laches prejudice results from the delay and no reliance is needed.
  • Prejudice under equitable estoppel requires reliance on the misleading communication.

In re Taiwan Union Technology Corp., No. 2014-144 (September 19, 2014) (nonprecedential) (3-0), Patent Nos. 6,509,414, 7,897,258, and 8,022,140

Key point(s):

  • Mandamus relief is discretionary and not available simply to relieve a party of the burden of having to go through trial except in extraordinary circumstances.

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