Puja Detjen, Partner

Publications & Media

Federal Circuit Decisions for Week Ending March 28, 2014

StoneEagle Services, Inc., v. David Gillman., No. 2013-1248 (March 26, 2014) (precedential) (3-0) Patent No. 7,792,686

Key Point:

  • Authoring or writing a patent or claiming ownership of the patent does not give rise to a controversy regarding the federal question of inventorship.

Novatek, Inc., v. The Sollami Company, No. 2013-1389 (March 26, 2014) (2-1) (non-precedential) Patent Nos. 7,883,155 and 6,371,567

Key point:

  • A term from the preamble, when relied upon during prosecution to distinguish over prior art and referred to as part of “the invention” in the specification, serves as a limitation which gives life, meaning, and vitality to the claims.

Stone Lion Capital Partners, L.P., v. Lion Capital LLP, No. 2013-1353 (March 26, 2014) (3-0) Trademark Application Serial No. 77551196

Key points:

  • The Board may give more weight to the dominant feature, “LION,” of a mark and less weight to an adjective “STONE” in determining a likelihood of confusion, so long as the ultimate conclusion of a likelihood of confusion is based on the entirety of the marks.
  • Trade channels and sophistication of purchasers set forth in an application, rather than current real-world conditions, must be considered in evaluating the DuPont factors.

Shire Development, LLC, v. Watson Pharmaceuticals, Inc., No. 2013-1409 (March 28, 2014) (precedential) (3-0) Patent No. 6,773,720

Key points:

  • Claim construction must reflect the ordinary and customary meaning of the terms in light of the patent’s description and a logical reading of the claims.
  • The construction of “inner lipophilic matrix” must focus on the lipophilic properties of an excipient in the matrix and a logical reading of the “inner lipophilic matrix” and “outer hydrophilic matrix” requires separation of the matrices.