In re C.E Shepard Company, L.P., No. 2023-1308_ (August 1, 2024) (nonprecedential), Application to Register “Modular Gabion Systems”

Key point(s):

• International websites published in English and directed towards the United States market can be evidence supporting a finding that a U.S. mark is generic.
• Customer affidavits not representative of the market and advertising expenditures with no evidence competitors spent on advertising hold little weight in proving acquired distinctiveness.

Voice Tech Corp. v. Unified Patents LLC, No. 2022-2163 (August 1, 2024) (precedential) (3-0), Patent No. 10,491,679

Key point(s):

• A party’s choice to not re-raise an argument in the party’s request for re-hearing to the Board does not, in and of itself, forfeit the argument for review by the Federal Circuit.
• If a petition identifies an interpretation, argument, or theory via cross-reference related to prior art and/or claim terms, it will not be considered a new argument or theory and the Board may entertain the interpretation, argument, or theory.

Koss Corporation v. Vidal, No. 2022-2091 (July 31, 2024) (nonprecedential), Patent Nos. 10,506,325 and 10,491,982

Key point:

• When there is evidence, in the form of publicly available information, that a POSITA would combine references in an obviousness rejection to overcome any alleged design or operational issues raised by the Patent Owner, the Patent Owner may want to consider a “teaching away” argument in attempt to overcome the obviousness rejection.

Sanho Corp. v. Kaijet Technology International Limited, Inc., No. 2023-1336 (July 31, 2024) (precedential)(3-0), Patent Nos. 10,572,429

Key point(s):

• The terms “publicly disclosed” and “disclosed” found in AIA § 102 have different meanings, and protect inventors in different scenarios.
• A private sale of an item is not a public disclosure in regard to § 102(b)(2)(B).

3G Licensing, S.A. v. Honeywell International Inc., No. 2023-1137 (July 31, 2024) (nonprecedential), Patent Nos. 7,551,625

Key point(s):

• If a patentee asserts a definition of a term, there must be clear intent to redefine the term in a different way than what is publicly available. Absent clear intent and no clear redefinition, the courts may use extrinsic evidence to define the term in question.
• Arguments that are “untimely” (e.g., set forth in a Sur-Reply rather than a Patent Owner Response), are permissible if the patent owner provides evidence as to why the argument was not made previously.

Ridge Corp. v. Kirk National Lease Co., No. 2024-1138 (July 31, 2024) (nonprecedential), Patent No. 9,151,084

Key point:

• Failing to transfer the right to sue to an exclusive licensee and retaining the right to sue means the licensee is not a “patentee” and cannot file suit in its own name alone.