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Written By: David Youngkin

Staub Design, LLC, v. David John Carnivale (Fed. Cir. 2015)

Mr. Carnivale owned the registered trademark “THE AFFORDABLE HOUSE” and registered domain name www.affordablehouse.com in 1998.  Mr. Staub, in 2004, registered the domain name “www.theaffordablehouse.com”.  The question for the court was not of trademark infringement, but of validity. Also, questions of collateral estoppel and issue preclusion were included in further proceedings by the courts.

Category: Claim Construction 

Written By: Michael B. Pierorazio

Rotatable Technologies LLC owns Patent No. 6,326,978 for a selectively rotating window on a computer display having a frame and display portion. The issue before the Patent and Trademark Appeals Board was whether some limitations recited in the claims, “computer display window”, “display portion”, “toggling the window between two preselected orientations”, were properly defined within the Specification. The question now before the United States Court of Appeals for the Federal Circuit is whether or not to stand behind the Patent and Trademark Appeals Board’s decision.


Category: Licensing 

Written By: Justin Blaufeld

In  Brulotte v. Thys Co., 379 U.S. 29 (1964), the Supreme Court held that a patent holder cannot charge royalties for the use of his invention after its patent term has expired.  Over time, some have come to criticize this rule as an undue restraint on the right to contract.  For example, a patent holder may want to cover a portfolio of patents with one contract, or structure a royalty deal to provide for larger payments in the future in exchange for smaller payments today. The Supreme Court revisits Brulotte to decide whether or not the rulings of the past still hold true today.

 By: Jesus Hernandez, Blog Editor/Contributor 
TitleKennametal, Inc. v. Ingersoll Cutting Tool Co., No. 2014-1350 (Fed. Cir. March 25, 2015).
[Anticipation] Because all the limitations of Kennametal’s claim are specifically disclosed in Grab, the question for the purposes of anticipation is “whether the number of categories and components” disclosed in Grab is so large that the combination of ruthenium and PVD coatings “would not be immediately apparent to one of ordinary skill in the art.” Wrigley, 683 F.3d at 1361.
Kennametal, Inc., at *10.
[Obviousness] Kennametal claims that the Board failed to establish a prima facie case of obviousness. Because of the problems relating to cobalt capping, Kennametal contends, it would not have been obvious to combine ruthenium binders with PVD coating.
Id. at *13.
[Anticipation] Grab’s express “contemplat[ion]” of PVD coatings is sufficient evidence that a reasonable mind could find that a person of skill in the art, reading Grab’s claim 5, would immediately envisage applying a PVD coating. Grab col.4 l.59. Thus, substantial evidence supports the Board’s conclusion that Grab effectively teaches 15 combinations, of which one anticipates pending claim 1.
Id. at *11.
[Obviousness] [B]ecause a person of skill in the art reading Grab would readily envisage the combination of ruthenium binders and PVD coatings, it would have been obvious to that person that these two could be combined with a reasonable expectation of success. Substantial evidence supports the Board’s finding that this express teaching was not significantly undermined by the problem of cobalt capping, especially in view of the similar teaching of Leverenz.
Id. at *15.
Category: Administrative Law 
By: Jesus Hernandez, Blog Editor/Contributor 
TitleExela Pharama Sciences, LLC v. Lee, No. 2013-1206 (Fed. Cir. 26, 2015).
IssueThis appeal presents the question of whether a third party has the right to challenge, by way of the Administrative Procedure Act (APA), a ruling of the Patent and Trademark Office reviving a patent application that had become abandoned by failure to meet a filing schedule established by the Patent Cooperation Treaty and its implementing statute.
Exela Pharama Sciences, LLC, at *2.
HoldingWe affirm the dismissal, on the ground that PTO revival rulings are not subject to third party collateral challenge, thereby precluding review regardless of whether Exela’s claims were time-barred.
Id. at *3.

Category: Infringement 


By: Abby Lin, Contributor  

TitleAqua Shield v. Inter Pool Cover Team, No. 2014-1263 (Fed. Cir. Dec. 22, 2014).
[1] We deal here only with a challenge to the soundness of the district court’s particular use of IPC’s profits in its rationale.
Aqua, at *10.
[2] Aqua Shield appeals … the finding of no willfulness that led to the denial of enhanced damages and attorney's fees.
Id. at *2.
[1] Contrary to Aqua Shield’s broader contention, therefore, the district court did not err in considering IPC’s profits. But it did err in treating the profits IPC actually earned during the period of infringement as a royalty cap. That treatment incorrectly replaces the hypothetical inquiry into what the parties would have anticipated, looking forward when negotiating, with a backwardlooking inquiry into what turned out to have happened. See Interactive Pictures, 274 F.3d at 1385 (expectations govern, not actual results).
Id. at *10.
[2] [The district court improperly applied Seagate's two part terms for willfulness analysis by relying on EDNY's denial of Aqua Shield's motion for preliminary injunction based on personal jurisdiction and incomplete analysis on if IPC's design around was implemented. ] We therefore vacate the court’s decision that IPC did not willfully infringe and remand for an analysis that conforms to Seagate’s standard. 497 F.3d at 1371. We do not reach an ultimate conclusion ourselves. We observe, however, that Seagate’s first requirement focuses on whether the infringer’s defenses, as ultimately presented to the court, were reasonable. Bard, 682 F.3d at 1008. [...] we note that the objective baselessness of an infringer’s defenses, assessed on the litigation record, may have a strong bearing on whether the “objectively defined risk” of infringement “was either known or so obvious that it should have been known to the accused infringer.” Seagate, 497 F.3d at 1371 [...]
Id. at *14-15 (text added).




Category: Civil Procedure  
By: Jesus Hernandez, Blog Editor/Contributor 
TitleVersata Soft., Inc. v. Callidus Soft., No. 2014-1468 (Fed. Cir. Feb. 27, 2015).
Issue[The Fed. Cir. issued opinion on appeal, but joint petition to dismiss case submitted to the district court was not presented to CAFC until after opinion on underlying appeal issued] Due to the unique timing and sequence of events, we stayed issuance of the mandate and directed the parties to respond whether the circumstances require that we vacate our prior opinion.
Versata Soft., Inc., at *2 (text added).
HoldingBecause the parties’ voluntary and unconditional dismissal mooted the appeal before the release of our prior opinion, we vacate the opinion and dismiss the appeal.
Id. at *2.
Editor Note
This case vacates a previous CAFC precedential opinion issued on the merits of the case, and prior to the controversy being settled. Previous opinion available here.

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