August 18, 2023

Federal Circuit Summary for Week Ending August 18, 2023

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One-E-Way, Inc. v. Apple Inc, No. 2022-2020 (August 14, 2023) (nonprecedential); Patent Nos. 10,129,627; 10,468,047
Key point(s):
  • An agreed-upon claim construction does not necessarily result in agreement about the meaning of the words in the agreed-upon construction
Fleet Engineers, Inc., v. Mudguard Technologies, LLC, No. 2022-2001, 2022-2076 (August 15, 2023) (nonprecedential); Patent No. 8,146,949; RE44,755
Key point(s):
  • A district court’s refusal to allow testimony from a witness who was not identified until after discovery closed is not an abuse of discretion.
  • A motion for judgment as a matter of law (JMOL) is not appropriate for overturning a jury’s findings of fact.
Bad Elf, LLC, v. Flex Ltd., No. 2022-1839 (August 14, 2023) (nonprecedential)
Key point(s):
  • Third-party registrations can be used to show that a mark is conceptually weak.
Steuben Foods, Inc., v. Katherine K. Vidal, No. 2022-1083 (August 16, 2023) (nonprecedential); Patent No. 6,945,013
Key point(s):
  • Claim construction for terms must be consistent with how those terms are recognized.
In re Universal Electronics, Inc., No. 2022-1716 (August 15, 2023) (nonprecedential); Application Nos. 12/645,037 and 16/279,095
Key point(s):
  • A court’s element by element approach to rejecting the claims is valid when said approach is embedded in prosecution history.
Universal Electronics, Inc. v. Roku, 2021-1992, 2021-1993, 2021-1994 (August 18, 2023) (nonprecedential); Patent Nos. 7,589,642; 8,004,389; 9,911,325
Key point(s):
  • Disclaimer of a legal right must be explicit.
Incept LLC, v. Palette Life Sciences Inc., 2021-2063, 2021-2065 (August 16, 2023) (precedential) (3-0) (Newman concurring and dissenting in part) Patent Nos. 8,257,723; 7,744,913
Key point(s):
  • Teaching away requires that the reference criticize, discredit, or discourage investigation into the claimed invention.
  • Free samples and replacements do not demonstrate commercial success.


Related Team:

Grant Davis


Keith Taboada