May 24, 2024

Federal Circuit Summary for Week Ending May 24, 2024

Dragon Intellectual Property LLC. v. Dish Network L.L.C., Nos. 22-1621, 2022-1777 (May 20, 2024) (precedential) (3-0 (Parts I and II.B)) (2-1 (Part II.A)); Patent No. 5,930,444

Key point:

  • Section 285 does include fee-shifting with respect to inter partes review proceedings and any fee awards are not recoverable from counsel of record

LKQ Corp. v. GM Global Tech. Operations LLC, No. 2021-2348 (May 21, 2024) (precedential) (en banc) (10-0); Patent No. D797,625

Key point(s):

  • The long-standing Rosen-Durling test for obviousness for design patents is vacated
  • Design and utility patents now have the same conditions for patentability

Daedalus Blue LLC v. Vidal, No. 2023-1312 (May 21, 2024) (nonprecedential); Patent No. 8,572,612

Key point:

  • In construing claim terms, it was not error to start with general-purpose extrinsic evidence, and then turn to the specification

Core Optical Techs., LLC v. Nokia Corp., Nos. 2023-1001, 2023-1002, 2023-1003 (May 21, 2024) (precedential) (2-1); Patent No. 6,782,211

Key point:

  • An invention agreement with ambiguous language requires the court to determine the construction to be placed on the ambiguous language by applying standard rules of contract interpretation

Google LLC v. Sonos, Inc., Nos. 2023-1259 (May 23, 2024) (nonprecedential); Patent No. 10,229,586

Key point:

  • Motivations to combine do not need to be articulated on a claim-by-claim basis when the proposed motivation logically applies to all of the claims at issue

Luca McDermott Catena Gift Trust v. Fructusoso-Hobbs SL, Nos. 2023-1383 (May 23, 2024) (precedential) (3-0); Trademark Nos. 6,229,243 and 6,390,072

Key point(s):

  • A minority interest holder in the owner of a mark is not entitled to seek cancellation of allegedly infringing marks under § 1064 because the minority interest holder does not personally use nor possess an individual ownership right in the allegedly infringed mark
  • An alleged diminishment in value to a minority owner’s interest in the owner of a registered mark is too remote of an injury to satisfy the proximate cause requirement for a cause of action under § 1064

Speck v. Bates, Nos. 2023-1147 (May 23, 2024) (precedential) (3-0); Patent No. 8,258,305

Key point(s):

  • A two-way test applies for determining whether claims are “substantially the same” under 135(b)(1) (pre-AIA)
  • The same two-way test should apply to derivation proceedings because the same provisions appear in 35 U.S.C. 135(b) (AIA)

Related Team:

Jordan Brown