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December 2014
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Held: Whether two trademarks may be tacked for purposes of determining priority is a question for the jury. Pp. 3–8.

(a) Lower courts have held that two marks may be tacked when they are considered to be “legal equivalents,” i.e., they “create the same, continuing commercial impression.” Van Dyne-Crotty, Inc. v. Wear-Guard Corp. 926 F. 2d 1156, 1159. And “commercial impression” “must be viewed through the eyes of a consumer.” DuoProSS Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F. 3d 1247, 1253. When the relevant question is how an ordinary person or community would make an assessment, the jury is generally the decisionmaker that ought to provide the fact-intensive answer. See, e.g., United States v. Gaudin, 515 U. S. 506, 512. Pp. 3–5.

(b) Each of petitioner’s four arguments in support of its view that tacking is a question of law to be resolved by a judge is unpersuasive. First, it may be true that the “legal equivalents” test involves a legal standard, but such “ ‘mixed question[s] of law and fact,’ [have] typically been resolved by juries.” Gaudin, 515 U. S., at 512. And any concern that a jury may improperly apply the relevant legal standard can be remedied by crafting careful jury instructions. Second, petitioner offers no support for its claim that tacking determinations create new law in a unique way that requires those determinations to be reserved for judges. Third, petitioner worries that the predictability required for a functioning trademark system will be absent if tacking questions are assigned to juries, but offers no reason why trademark tacking should be treated differently from the tort, contract, and criminal justice systems, where juries answer often-dispositive factual questions or make dispositive applications of legal standards to facts. Finally, in arguing that judges have historically resolved tacking disputes, petitioner points to cases arising in the contexts of bench trials, summary judgment, and the like, in which it is undisputed that judges may resolve tacking disputes. Pp. 5–8.

735 F. 3d. 1158, affirmed.



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Held: When reviewing a district court’s resolution of subsidiary factual matters made in the course of its construction of a patent claim, the Federal Circuit must apply a “clear error,” not a de novo, standard of review. Pp. 4–16.

(a) Federal Rule of Civil Procedure 52(a)(6) states that a court of appeals “must not . . . set aside” a district court’s “[f]indings of fact” unless they are “clearly erroneous.” It sets out a “clear command,”Anderson v. Bessemer City, 470 U. S. 564, 574, and “does not make exceptions or . . . exclude certain categories of factual findings” from the court of appeals’ obligation, Pullman-Standard v. Swint, 456 U. S. 273, 287. The Rule thus applies to both subsidiary and ultimate facts. Ibid. And the function of an appeals court reviewing the findings of a “ ‘district court sitting without a jury . . . is not to decide factual issues de novo.’” Anderson, supra, at 573. Even if exceptions to the Rule were permissible, there is no convincing ground for creating an exception here. Markman v. Westview Instruments, Inc., 517 U. S. 370, neither created, nor argued for, such an exception. There, the Court held that the ultimate question of claim construction is for the judge, not the jury, id., at 372, but it did not thereby create an exception from the ordinary rule governing appellate review of factual matters. Instead, the Court pointed out that a judge, in construing a patent claim, is engaged in much the same task as the judge would be in construing other written instruments, such as deeds, contracts, or tariffs. Id., at 384, 386, 388, 389. Construction of written instruments often presents a “question solely of law,” at least when the words in those instruments are “used in their ordinary meaning.” Great Northern R. Co. v. Merchants Elevator Co., 259 U. S. 285, 291. But if a written instrument uses “technical words or phrases not commonly understood,” id., at 292, those words may give rise to a factual dispute. If so, extrinsic evidence may help to “establish a usage of trade or locality.” Ibid. And in that circumstance, the “determination of the matter of fact” will “preced[e]” the “function of construction.” Ibid.

The Markman Court also recognized that courts will sometimes have to resolve subsidiary factual disputes in patent construction; Rule 52 requires appellate courts to review such disputes under the “clearly erroneous” standard. Application of this standard is further supported by precedent and by practical considerations. Clear error review is “particularly” important in patent cases because a district court judge who has presided over, and listened to, the entire proceeding has a comparatively greater opportunity to gain the necessary “familiarity with specific scientific problems and principles,” Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U. S. 605, 610, than an appeals court judge who must read a written transcript or perhaps just those portions referenced by the parties. Pp. 4–8.

(b) Arguments to the contrary are unavailing. Sandoz claims that separating “factual” from “legal” questions may be difficult and, like the Federal Circuit, posits that it is simpler for the appellate court to review the entirety of the district court’s claim construction de novo than to apply two separate standards. But courts of appeals have long been able to separate factual from legal matters, see, e.g., First Options of Chicago, Inc. v. Kaplan, 514 U. S. 938, 947–948, and the Federal Circuit’s efforts to treat factual findings and legal conclusions similarly have brought with them their own complexities. As for Sandoz’s argument that “clear error” review will bring about less uniformity, neither the Circuit nor Sandoz has shown that divergent claim construction stemming from divergent findings of fact on subsidiary matters should occur more than occasionally. Pp. 8–11.

(c) This leaves the question of how the clear error standard should be applied when reviewing subsidiary factfinding in patent claim construction. When the district court reviews only evidence intrinsic to the patent, the judge’s determination is solely a determination of law, and the court of appeals will review that construction de novo. However, where the district court needs to consult extrinsic evidence in order to understand, for example, the background science or the meaning of a term in the relevant art during the relevant time period, and where those subsidiary facts are in dispute, courts will need to make subsidiary factual findings about the extrinsic evidence. The district judge, after deciding the factual dispute, will then interpret the patent claim in light of the facts as he has found them. The ultimate construction of the claim is a legal conclusion that the appellate court can review de novo. But to overturn the judge’s resolution of an underlying factual dispute, the appellate court must find that the judge, in respect to those factual findings, has made a clear error. Pp. 11–14.

(d) Here, for example, the District Court made a factual finding, crediting Teva’s expert’s account, and thereby rejecting Sandoz’s expert’s contrary explanation, about how a skilled artisan would understand the way in which a curve created from chromatogram data reflects molecular weights. Based on that factual finding, the District Court reached the legal conclusion that figure 1 did not undermine Teva’s argument that molecular weight referred to the first method of calculating molecular weight. When the Federal Circuit reviewed the District Court’s decision, it did not accept Teva’s expert’s explanation, and it failed to accept that explanation without finding that the District Court’s contrary determination was “clearly erroneous.” The Federal Circuit erred in failing to review this factual finding only for clear error. Teva asserts that there are two additional instances in which the Federal Circuit rejected the District Court’s factual findings without concluding that they were clearly erroneous; those matters are left for the Federal Circuit to consider on remand. Pp. 14– 16.

723 F. 3d 1363, vacated and remanded.


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NeoroRepair, Inc. v. Nath Law Group

The question before this court is whether a California state court malpractice case involving patent law representation was properly removed to a federal court. Under the principles of Gunn v. Minton, 133 S. Ct. 1059 (2013), it was not.

Plaintiff-appellant NeuroRepair, Inc. (“NeuroRepair”) appeals from a final judgment of the United States District Court for the Southern District of California granting partial summary judgment in favor of defendantsappellees The Nath Law Group and Robert P. Cogan (collectively, “Defendants”) on July 12, 2011, as well as the district court’s orders (1) denying NeuroRepair’s motion for reconsideration on August 19, 2011, (2) granting Defendants’ motion in limine with respect to lost licensing opportunity of March 12, 2012, (3) entering judgment on September 26, 2012, in favor of Defendants, and (4) denying NeuroRepair’s motion for reconsideration on July 1, 2013, and all related post-judgment costs. Based on Gunn v. Minton, this court vacates and remands the district court’s judgments with instructions to remand the case to California state court.

This court “[has] jurisdiction to decide whether the district court had jurisdiction under [28 U.S.C.] § 1338.” C.R. Bard, Inc. v. Schwartz, 716 F.2d 874, 878 (Fed. Cir. 1983); see also Scherbatskoy v. Halliburton Co., 125 F.3d 288, 291 (5th Cir. 1997) (finding the “right to determine if a district court has jurisdiction under [§] 1338” is a power that “concurrently exists with [the Federal Circuit and] the regional circuits”); Shaw v. Gwatney, 795 F.2d 1351, 1353 n.2 (8th Cir. 1986) (A federal appellate court carries out “traditional and inherent functions [such] as determining its own jurisdiction and supervising the exercise of jurisdiction by the district courts below it.”); cf. Maddox v. Merit Sys. Prot. Bd., 759 F.2d 9, 10 (Fed. Cir. 1985) (“If the MSPB does not have jurisdiction, then neither do we, except to the extent that we always have the inherent power to determine our own jurisdiction and that of the board.”).

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Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs., Inc.

W.L. Gore & Associates, Inc. (“Gore”) appeals from the judgment of the United States District Court for the District of Arizona of willfulness in the infringement of U.S. Patent No. 6,436,135 (“’135 patent”). For the reasons stated below, we affirm.

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Delano Farms Co. v. Cal. Table Grape Comm'n

This appeal involves a challenge to the validity of two plant patents for varieties of table grapes developed by the U.S. Department of Agriculture (“USDA”) and licensed to the California Table Grape Commission. The plaintiffs filed suit against the USDA and the California Table Grape Commission, seeking to invalidate the patents on the ground that the two grape varieties were in public use more than one year before the applications for both plant patents were filed, and that the patents are therefore invalid under the public use bar of 35 U.S.C. § 102(b) (2006).

The United States District Court for the Eastern District of California initially ruled that sovereign immunity barred this action against the USDA, and that the case could not go forward without the USDA as a party. On appeal, we reversed the district court’s ruling as to the sovereign immunity issue, holding that the Administrative Procedure Act waives sovereign immunity for purposes of an action such as this one. Delano Farms Co. v. Cal. Table Grape Comm’n, 655 F.3d 1337 (Fed. Cir. 2011).

On remand, the district court granted partial summary judgment for the defendants on matters that are not at issue on appeal. The court held a bench trial on the remaining question whether the actions of two individuals who obtained samples of the two patented plant varieties in an unauthorized manner and planted them in their own fields constituted an invalidating public use of the plant varieties. The district court found that the actions of those individuals did not constitute a public use of the two plant varieties and therefore rejected the plaintiffs’ challenge to the patents. We affirm.

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In re: Newbridge Cutlery Co.

The Newbridge Cutlery Company (the “applicant”) appeals from the decision of the Trademark Trial and Appeal Board (the “Board”) affirming the Trademark Examiner’s refusal to register applicant’s NEWBRIDGE HOME mark as being primarily geographically descriptive. See In re The Newbridge Cutlery Co. T/A Newbridge Silverware, Serial No. 79094236, available at 2013 WL 3001454 (T.T.A.B. Apr. 29, 2013) (“Board’s Decision”). Because substantial evidence fails to support the Examiner’s refusal, we reverse and remand.

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Pom Wonderful v. Hubbard

The panel reversed the district court’s order denying a motion for a preliminary injunction in a trademark infringement action under the Lanham Act.

The panel held that the district court abused its discretion in finding that Pom Wonderful, owner of the “POM” standard character mark, was unlikely to demonstrate a likelihood of consumer confusion and therefore was unlikely to succeed on the merits of its claim regarding defendants’ use of the word “p4m” on their pomegranate-flavored drink.

The panel remanded with instructions that the district court consider whether, in light of the panel’s decision, Pom Wonderful met its burden of proving the other elements for a preliminary injunction.

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Fleming v. Escort, Inc.

The district court in this case refused to disturb a jury verdict concerning two reissue patents. The jury found for the patentee on infringement and validity as to most of the asserted claims, but it invalidated five claims. The patentee, Hoyt Fleming, appeals the five invalidity determinations, arguing that (1) the testimony offered to establish invalidity was insufficiently specific to support the verdict; (2) there was insufficient corroboration of the prior invention relied on for the invalidity determinations; and (3) the prior invention, if it existed, was abandoned, suppressed, or concealed, disqualifying it from invalidating the claims. The adjudicated infringers, Escort, Inc., and Beltronics USA, Inc. (collectively, Escort), crossappeal on the ground that all of the asserted claims are invalid because Fleming’s reason for seeking reissue did not meet the “error” precondition for obtaining reissue. We affirm.

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Content Extraction & Transmission, LLC v. Wells Fargo Bank

Content Extraction and Transmission LLC and its principals (collectively, CET) appeal from the grant of a motion to dismiss under Rule 12(b)(6) of the Federal Rules of Civil Procedure (FRCP), in which the United States District Court for the District of New Jersey held that the claims of CET’s asserted patents are invalid as patent-ineligible under 35 U.S.C. § 101. Cross-appellant Diebold, Inc. (Diebold) appeals from the district court’s dismissal of its tortious interference and Racketeer Influenced and Corrupt Organizations Act (RICO) claims against CET in a related action. We affirm the district court’s dismissal of both CET’s and Diebold’s claims.

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Aqua Shield v. Interpool Pool Cover Team

Aqua Shield sued Inter Pool Cover Team, Alukov Hz spol. s.r.o., Alukov spol. s.r.o., and Pool & Spa Enclosures (collectively, IPC) for infringement of U.S. Patent No. 6,637,160. Aqua Shield won summary judgment that IPC infringed and that no claim was invalid. A bench trial led eventually to determinations that Aqua Shield was entitled to damages in the form of a royalty of $10,800 and that IPC had not been willful in its infringement. Aqua Shield appeals the amount of the royalty award and the finding of no willfulness that led to the denial of enhanced damages and attorney’s fees. For the reasons set forth below, we vacate the district court’s decision on those issues, affirm on one narrow infringement issue also raised by Aqua Shield, and remand for further proceedings consistent with this opinion.

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