June 30, 2023

Federal Circuit Summary for Week Ending June 30, 2023

Spireon, Inc. v. Flex LTD, No. 2022-1578 (June 26, 2023) (precedential) (3-0) 
Key point(s):
  • In likelihood of confusion analysis composite marks cannot be disregarded when the mark in question is a composite mark itself.
  • The burden for showing non-use of identical marks for identical goods rests on the opposer.
Medytox, Inc. v. Galderma S.A., No. 2022-1165; (June 27, 2023) (precedential) (3-0); Patent No. 10, 143, 728
Key point(s):
  • Patent owners who have requested Preliminary Guidance under the Pilot Program concerning motion to amend practice must be given an opportunity to be heard before the final decision.
  • The Primary Guidance under the Pilot Program concerning motion to amend practice is non-binding.
Tehrani v. Hamilton Technologies, No. 2022-1732; (June 28, 2023) (nonprecedential); Patent No. 7,802, 571
Key point(s):
  • Obviousness requires a Patent Owner to show what a combination of references do not collectively contain, not point out missing individual limitations in each reference.
Tubular Rollers, LLC. V. Maximus Oilfield Products, LLC., No. 2021-2319; (June 28, 2023) (nonprecedential); Patent Nos. 9,057,224, 9,291,009, and 9,598,915
Key point(s):
  • Inferences from the prosecution history on issues that were not argued cannot be made.
  • A construction may render dependent claims meaningless with adequate support from the specification or the prosecution history.
Prisua Engineering Corp. v. Samsung Electronics America, Inc., No. 21-1960; (June 30, 2023) (nonprecedential); Patent No. 8,650, 591
Key point(s):
  • Determinations of the features disclosed by prior art references were affirmed because the PTAB was entitled to rely on the testimony of the parties’ experts.

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Andrew Ashton