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Sep 17, 2019
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Fresh From the Bench: Latest Federal Circuit Court Cases

CASE OF THE WEEK

Curver Luxembourg, SARL v. Home Expressions Inc., Appeal No. 2018-2214 (Fed. Cir. Sept. 12, 2019)

In a significant case in the field of design patents, the Federal Circuit clarified the scope of design patent infringement and held that a 60 year old precedent was no longer good law.

The design patent at issue is titled “Pattern for a Chair” and claims an “ornamental design for a pattern for a chair” as follows:

 

 

 

 

 

 

 

 

 

 

The original title was “FURNITURE (PART OF)” and the claim was drafted with similar language. During prosecution, the examiner objected to the title because it failed to identify a “particular article” for the design. The patentee amended the patent to the current title and claims concerning a “chair.”

Read more.

ALSO THIS WEEK

Henny Penny Corporation v. Frymaster LLC, Appeal No. 2018-1596 (Fed. Cir. Sept. 12, 2019)

In this case, the Court affirmed an inter partes review decision of the Patent Trial and Appeal Board holding challenged claims not unpatentable as obvious. The Court found that the Board did not abuse its discretion in declining to consider argument that a primary reference alone rendered the challenged claims obvious, where the issue was raised for the first time in Petitioner’s Reply based on an alleged admission by Patent Owner’s expert in post-institution deposition testimony. The Court also found the decision on obviousness supported by substantial evidence, where the Board weighed advantages and disadvantages of the asserted combination in assessing whether a skilled artisan would have been motivated to make such a combination. The Court also affirmed the Board’s presumption of nexus for secondary considerations of non-obviousness where the challenged claims were commensurate in scope with a product feature that received industry praise, i.e. “a system for measuring the state of degradation of cooking oils or fats in a deep fryer,” holding that nexus did not require such praise to be “precisely limited to the point of novelty of the claimed combination.”

The opinion can be found here.

Intellectual Ventures I LLC v. Capital One Financial Corporation, Appeal No. 2018-1367 (Fed. Cir. Sept. 10, 2019)

In this appeal from the District of Maryland, the Federal Circuit addresses issues relating to various antitrust-related counterclaims brought by Capital One in a patent infringement matter brought by Intellectual Ventures (“IV”). Specifically, at the district court, Capital One alleged that IV was liable for monopolization in violation of the Sherman Act and unlawful acquisition of assets under the Clayton Act (said assets being a large patent portfolio relating to commercial banking practices) by implementing a scheme through sham infringement litigation to increase its pricing power in the relevant market. The district court granted summary judgment against Capital One, in part on grounds of collateral estoppel based on nearly identical arguments Capital One made in a different district court against IV. The Federal Circuit affirmed, holding that Capital One failed to properly characterize the relevant market in both cases and agreed that Capital One was collaterally estopped from bringing its claims.

The opinion can be found here.

Written by: Scott D. Eads and Nika Aldrich, Schwabe Williamson & Wyatt

Contributors: Jason Wrubleski and Erin Forbes