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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

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

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

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

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

Examiner Amendments Can Trigger Prosecution History Estoppel

Amgen, Inc. v. Amneal Pharmas. LLC et al - Before Newman, Lourie, and Taranto.  Appeal from the U.S. District Court for the District of Delaware. Summary: An examiner amendment may give rise to prosecution history...more

Federal Circuit Rejects Claim Construction That Improperly Narrowed the Claim

CISCO SYSTEMS, INC. v. TQ DELTA, LLC - Before Newman, Linn, and Wallach. Appeal from Patent Trial and Appeal Board. Summary: It is improper to read limitations from a preferred embodiment described in the specification...more

A Claimed Method Fails to Satisfy Written Description If It Is Not Described as a Whole

QUAKE v. LO - Before Reyna, Chen, and Hughes. Appeal from the Patent Trial and Appeal Board (“PTAB”). Summary: A claimed method must be expressly described as a whole in order to satisfy the written description...more

Standing to Appeal IPR Denied Where Petitioner Failed to Provide Evidence of Competitive Harm and Economic Loss

GENERAL ELECTRIC CO. V. UNITED TECHNOLOGIES CORP. Before Reyna, Taranto, and Hughes. Appeal from the Patent and Trial Appeal Board. Summary: A petitioner who loses an IPR must proffer specific evidence of competitive...more

A Single Prior Art Reference Can Render a Patent Obvious

GAME AND TECHNOLOGY CO., LTD. v. ACTIVISION BLIZZARD INC. Before Prost, Lourie, and Wallach. Appeal from the Patent Trial and Appeal Board (PTAB). Summary: A single prior art reference can render a patent obvious if it...more

Continental Circuits LLC v. Intel Corporation

Federal Circuit Summaries - Before Lourie, Linn, and Taranto. Appeal from the United States District Court for the District of Arizona. Summary: Reading a process limitation into a product claim is improper where the...more

Supernus Pharmaceuticals, Inc. Et Al. v. Iancu

Federal Circuit Summary - Before Dyk, Schall, and Reyna. Appeal from U.S. District Court for the Eastern District of Virginia. Summary: The USPTO is only authorized to reduce Patent Term Adjustment (PTA) for applicant...more

Apple Ordered to Pay $506 Million to the University of Wisconsin for Infringing its Computer Processor Chip Patent

Patent Judgments & Awards - Wisconsin Alumni Research Found. V. Apple, Inc., No. 14-CV-062-WMC (W.D. Wisc.) On July 25, 2017, a federal court in Wisconsin ordered Apple to pay a whopping $506 million for infringement of...more

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