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Fireball Frenzy: When First Registering a Mark, Genericness of a Mark Is Determined at the Time of Registration

BULLSHINE DISTILLERY LLC v. SAZERAC BRANDS, LLC - Before Moore, Reyna and Taranto. Appeal from the Trademark Trial and Appeal Board. In assessing genericness, the TTAB considers how the mark was understood at the time of...more

Collateral Estoppel Does Not Apply When the Prior Proceeding Applies a Lower Burden of Proof

Because there are different burdens of proof in IPRs and district court, collateral estoppel does not preclude a patent owner from asserting claims that are immaterially different from claims canceled in an IPR....more

AIA Patents May Not Be Challenged in Interference Proceedings

SNIPR Technologies Ltd v. Rockefeller University - Before Chen, Wallach, and Hughes. Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board. Summary: Patents whose priority is governed...more

Performing Claimed Features Faster Than Humans by Using Generic Computers Is Not Sufficient as an Improvement to Computer...

Trinity Info Media, L.L.C. v. Covalent INC. Before STOLL, BRYSON, and CUNNINGHAM.  Appeal from the United States District Court for the Central District of California. Summary: Patents directed to connecting users...more

Patent Directed to System for Controlling Access to Drugs Is Not Listable in the Orange Book

JAZZ PHARMACEUTICALS, INC. v. AVADEL CNS PHARMACEUTICALS, LLC - Before Lourie, Reyna, and Taranto. Appeal from the United States District Court for the District of Delaware. Summary: A patent directed to a system to reduce...more

Evidence of Actual Physician Practice is Relevant in Determination of Direct Infringement

GENENTECH, INC. V. SANDOZ INC. Before Newman, Lourie, and Prost. Appeal from the United States District Court for the District of Delaware. Summary: The district court did not clearly err in considering evidence of...more

The Statutory Presumption of Validity of a Federally Registered Trade Dress Applies Even Where the Trademark Examiner May Not Have...

SOCLEAN, INC. v. SUNSET HEALTHCARE SOLUTIONS, INC. Before Newman, Lourie, and Prost.  Appeal from the United States District Court for the District of Massachusetts. Summary: A trademark is entitled to a statutory...more

Federal Circuit Denies Mandamus Regarding Venue Dispute With Remote Workers

IN RE: MONOLITHIC POWER SYSTEMS, INC. - Before Lourie, Chen, and Stark. Per Curiam, Lourie Dissenting. On Petition for Writ of Mandamus from the United States District Court for the Western District of Texas....more

Duplicative-Litigation Doctrine: Proper Motion Practice Is Essential to Avoid Dismissal of Duplicative Complaints

ARENDI S.A.R.L. v. LG ELECTRONICS INC. - Before Prost, Chen, and Stoll. Appeal from the U.S. District Court for the District of Delaware. - Summary: Under the duplicative-litigation doctrine, a party cannot maintain two...more

Motive Matters – Forum Shopping Can Lead To Attorneys’ Fees

Summary: Courts may use their inherent equitable powers to award attorneys’ fees for bad faith conduct....more

Is Evidence of Generic Industry Skepticism Enough to Preclude a Finding of a Motivation to Combine?

AURIS HEALTH, INC., v. INTUITIVE SURGICAL OPERATIONS, INC., Before Dyk, Prost, and Reyna. Appeal from the Patent Trial and Appeal Board (PTAB). Summary: Evidence of generic industry skepticism cannot, by itself, form...more

Required Testing as Part of an Offer for Sale Does Not Preclude a Finding of a Commercial Sale for On-Sale Bar Defense

SUNOCO PARTNERS MARKETING v. U.S. VENTURE, INC. Before Prost, Reyna, and Stoll. Appeal from the United States District Court for the Northern District of Illinois. Summary: References to testing in an offer for sale...more

Effects of Proximity, Plurals, and Passive Voice for Claim Construction

APPLE INC. v. MPH TECHNOLOGIES OY - Before Moore, Prost, and Taranto. Appeal from Patent Trial and Appeal Board. Summary: The proximity of concepts in a claim may link the concepts together and affect the plain meaning...more

Written Description: What Is the Proper “Dosage” to Satisfy This Requirement?

BIOGEN INTERNATIONAL GMBH V. MYLAN PHARMACEUTICALS INC. Before O’Malley, Reyna, and Hughes. Appeal from the United States District Court for the Northern District of West Virginia. Summary: A specification may not...more

Federal Circuit Holds That the PTAB Does Not Have an Impermissible Incentive to Institute IPRs

MOBILITY WORKX, LLC v. UNIFIED PATENTS, LLC Before Newman, Schall, and Dyk. Appeal from the Patent Trial and Appeal Board. Summary: Fee-funded structure of AIA review proceedings does not violate due process....more

Patentee Failed to Apportion Licenses to Bundled Patents to Establish Royalties

OMEGA PATENTS, LLC v. CALAMP CORPORATION - Before Prost, Dyk, and Hughes. Appeal from the United States District Court for the Middle District of Florida. Summary: Licensing policies that allow use of any or all of a...more

One Abstract Idea + Another Abstract Idea = An Abstract Idea

In Re PERSONALWEB TECHNOLOGIES LLC - Before Prost, Lourie, and Reyna. Appeal from the District Court for the Northern District of California. A patent directed to a medley of mental processes with no inventive concept...more

Copying From a Copyrighted Computer Program May Be Fair Use to the Extent Needed to Promote Adoption of the Use of Accrued Talents...

GOOGLE LLC V. ORACLE AMERICA, INC. Before the United States Supreme Court (Opinion by Justice Breyer) on Writ of Certiorari to the United States Court of Appeals for the Federal Circuit. Summary: Where use of...more

You Missed a Spot: The PTAB Should Consider All Presented Arguments and Evidence in Obviousness Determinations

CANFIELD SCIENTIFIC, INC. v. MELANOSCAN, LLC - Before Newman, Dyk, and Reyna. Appeal from the Patent Trial and Appeal Board. Summary: The PTAB’s refusal to consider presented arguments and evidence can be a...more

No Simulating Alice Requirements: Application of Abstract Ideas Alone Cannot Transform Patent Ineligible Subject Matter

SIMIO, LLC V. FLEXSIM SOFTWARE PRODUCTS, INC. Before Prost, Clevenger, and Stoll. Appeal from the United States District Court for the District of Utah. Summary: A claim whose only inventive concept is the applications...more

Venue in Hatch-Waxman Cases Tied to Acts of ANDA Submission

VALEANT PHARMACEUTICALS v. MYLAN PHARMACEUTICALS - Before Newman, O’Malley, and Taranto. Appeal from the District Court of New Jersey - Summary: Venue in Hatch-Waxman cases is proper only in districts where actions...more

Lexmark Framework to Determine Eligibility to Bring Statutory Causes of Actions Applies to Trademark Cancellation Proceedings

CORCAMORE, LLC v. SFM, LLC - Before Reyna, Chen, and Hughes. On appeal from the Trademark Trial and Appeal Board. Summary: Whether a party has satisfied the requirements to bring a petition for trademark cancellation...more

Federal Circuit Has Jurisdiction to Review Joinder Decisions in IPRs

FACEBOOK, INC., V. WINDY CITY INNOVATIONS LLC Before Prost, Plager, and O’Malley.  Appeal from the Patent Trial and Appeal Board. Summary:  The Federal Circuit has jurisdiction to review challenges to the Board's joinder...more

Eleventh Amendment Protects States From Involuntary Joinder in Patent Suits

Gensetix, Inc. v. Baylor College of Medicine - Before Newman, O’Malley, and Taranto. Appeal from the U.S. District Court for the Southern District of Texas. Summary: A state can invoke sovereign immunity under the...more

A Mark Styled "Generic.Com" May Be Trademark Eligible

Before the Supreme Court of the United States. On Writ of Certiorari from the United States Court of Appeals for the Fourth Circuit. Summary: A term styled "generic.com" is not necessarily generic and can be eligible for...more

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