Firebug runs into “one big world full of no” at the Federal Circuit

Firebug v Stride Rite Appeal Nos. 2019-1622, 2019-1623, Fed. Cir. June 25, 2020 Shoes by Firebug (“Firebug”) owns US Patent Nos. 8,992,038 (“‘038 patent”) and 9,301,574 (“‘574 patent”), directed to improved illumination systems for footwear.  Specifically, both patents describe footwear comprising a sole and three-layer upper – including a liner, interfacing layer and light diffusing […]

SCOTUS denies cert in three cases alleging post-grant proceedings violate the Takings clause of the 5th amendment

SCOTUS Order List 22JUN2020 Celgene Corp. v. Peter, Enzo Life Sciences v. Becton, Dickinson & Co., and Collabo Innovations v. Sony Corp. Dang, that sounded like a reasonable argument too!

Federal Circuit provides illustrative application of InTouch Techs

In support of the proposition that “The obviousness inquiry does not merely ask whether a skilled artisan could combine the references, but instead asks whether “they would have been motivated to do so.”  InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014).  I have often used Belden Inc. v Berk-Tek […]

Inequitable conduct defense fails after PTAB denies IPR institution based upon allegedly “but-for” material reference

Jaguar-v.-Bentley-EDVA-Apr-30-2020 Concurrent with the litigation it filed in the Eastern District of Virginia, Bentley Motors (“Bentley”) filed a petition for IPR with the PTAB based on certain prior art referred to by the Court as “the Porsche 959 prior art.”  The day before its reply brief was due in the litigation, PTAB denied institution of […]

Eastern District of Wisconsin finds sausage tray obvious using “common sense”on summary judgment motion for noninfringement

Johnsonville v Klement, 2020 WL 1492983 (E.D. Wis. Mar 27, 2020). Johnsonville owns USD 633,754, directed to the ornamental design of a sausage tray, wherein the only solid line features are the curved end walls.  Fig. 12 of the ‘754 patent is illustrative:           Johnsonville sued Klement alleging infringement of the […]

While declining to adopt a “bright-line test that mental processes capable of being performed by fish are not patent eligible”

The Federal Circuit nonetheless determines that claims directed to a method of fishing are directed to an abstract idea.  In re Rudy, Appeal No. 2019-2301, Fed. Cir., April 24, 2020. But kudos to the pro se inventor’s persistence.  The application at issue – USSN 07/425,360 – was filed in October 21, 1989 and has thus […]

“Configured to” is not indefinite, even if subject to multiple interpretations

So held the Federal Circuit in Nevro Corp. v. Boston Scientific, Appeal Nos. 2018-2220, 2018-2349, Fed. Cir., April 9, 2020, while similarly throwing a lifeline to “parathesia-free” (rejecting BSC’s argument that the claims are indefinite because infringement can only be determined after using the device or performing the method), “means for generating” and “therapy signal”. […]

Federal Circuit reverses PTAB, citing “erroneous interpretation” of claim language and “misunderstanding” of precedent

Tech Con Prod v Light Science, Appeal No. 2019-1361, Fed. Cir. April 8, 2020. Lighting Science Group Corp. (“LSG”) owns US patent no. 8,201,968 (the “‘968 patent”) directed to retrofit LED light fixtures that accommodate a variety of housing shapes and sizes, while yet maintaining a low profile when installed.  To this end, the claim […]

License drafters beware – patents may be subject to implied license if grandparents and uncles are expressly licensed

Cheetah v AT&T, Appeal No. 2019-1264, Fed. Cir., February 6, 2020. Cheetah Omni LLC (“Cheetah”) sued AT&T for patent infringement, and Ciena Communications intervened, as a manufacturer and supplier of allegedly infringing parts to AT&T.  AT&T and Ciena filed for summary judgement based on the allegation that the patent allegedly infringed was part of a […]

Color marks on packaging can be inherently distinctive – In re Forney

In re Forney Industries, Appeal No. 2019-1073, Fed. Cir. April 8, 2020. Forney applied for a trademark for packaging based on use in commerce, with a showing of acquired distinctiveness.  In its application, Forney described its mark as a “color mark” consisting of a solid black stripe, with the color yellow underneath, transitioning to the […]