December 17, 2021

Federal Circuit Summaries For Week Ending December 17, 2021

Sunbio Corp. v. Biogrand Co., Ltd., No. 2021-1433, (December 14, 2021) (nonprecedential); Trademark No. 4,932,313

Key point:

• To establish ownership of a mark through use by a “related company,” the party claiming ownership must prove that it controls the related company’s use of the mark with respect to the nature and quality of the goods and services.

Alpek Polyester, S.A. DE C.V. v. Polymetrix, S.A. DE C.V. , No. 2021-1706, (December 16, 2021) (nonprecedential); Patent Nos. 7,790,840, 7,868,125, and 7,192,545

Key points:

• The deposition testimony of a third-party corporate representative is admissible only if the witness has the personal knowledge required by Federal Rule of Evidence (FRE) 602.
• Intent and causation are two required separate elements of induced infringement.

KOM Software, Inc. v. Netapp, Inc., No. 2021-1181, (December 17, 2021) (nonprecedential); Patent Nos. 7,076,624, 7,536,524, 8,234,477, and 9,361,243

Key point:

• Failing to dispute substantive allegations of motivation to combine barred the patentee from challenging PTAB findings based on motivation to combine.

KOM Software, Inc. v. NetApp, Inc., No. 2020-2345, (December 16, 2021) (nonprecedential); Patent No. 6,438,642

Key point:

• Prior art reference and expert testimony formed sufficient substantial evidence to support PTAB’s obviousness finding in an IPR.

KOM Software, Inc. v. NetApp, Inc., No. 2021-1005, (December 16, 2021) (nonprecedential); Patent No. 7,392,234

Key point:

• The Board properly rejected a proposed construction not supported by the specification or prosecution history, and more narrow than a term’s plain meaning.

KOM Software, Inc. v. NetApp, Inc., No. 2021-1075, (December 17, 2021) (nonprecedential); Patent No. 6,654,864

Key points:

• Prior art references that disclose performing actions over an entire object may be used against a claim element that recites performing actions over a portion of an object.
• When the USPTO does not clearly indicate that a ground for unpatentability is based on anticipation or obviousness, the Federal Circuit will uphold such a decision if the USPTO’s path (of analysis or rejection) may reasonably be discerned.

Sky Int’l. AG v. Sky Cinemas LLC., No. 2021-1575 (November 22, 2019) (nonprecedential); Trademark Application No. 86/481,934

Key points:

• The “natural zone of expansion” doctrine grants a senior user of a mark superior rights as to any goods or services that purchasers might reasonably expect to emanate from it in the normal expansion of its business under the mark.
• Whether goods or services fall within a senior users’ natural zone of expansion must be determined by circumstances prevailing at the time the junior user began using its mark.

Related Team:

Susan E. Powley

Of Counsel