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December 2015
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Ethicon Endo-Surgery, Inc. v. Covidien

Ethicon Endo-Surgery, Inc. (“Ethicon”) owns U.S. Patent No. 8,317,070 (“the ’070 patent”). Covidien LP (“Covidien”) petitioned the United States Patent and Trademark Office (“PTO”) for inter partes review of claims 1–14 of the ’070 patent. The PTO, through a panel of the Patent Trial and Appeals Board (“PTAB” or “Board”), granted the petition. On the merits, the same Board panel found all challenged claims invalid as obvious over the prior art. Ethicon appeals, asserting that the Board’s final decision is invalid because the same Board panel made both the decision to institute and the final decision. Ethicon also asserts that the Board erred in finding the claims obvious.

We first hold that 35 U.S.C. § 314(d) does not preclude us from hearing Ethicon’s challenge to the authority of the Board to render a final decision. On the merits we hold that neither the statute nor the Constitution precludes the same panel of the Board that made the decision to institute inter partes review from making the final determination. We also find no error in the Board’s determination that the ’070 patent claims would have been obvious over the prior art. Accordingly, we affirm. 

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LFP IP, LLC v. Hustler Cincinnati, Inc.

This appeal marks the latest chapter in a long-running business dispute between two siblings: Jimmy and Larry Flynt. At issue is whether the district court erred in modifying a 2011 permanent injunction that prohibited Jimmy (and his associated entities) from using trademarks owned by Larry (and his associated entities), including a trademark featuring their shared last name: Flynt. Because the district court appropriately adjusted its injunction to respond to changed circumstances and because trademark law permits one sibling to develop a trademark in a personal name, we affirm.

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Peter Kiewit Sons', Inc. v. West

This appeal arises out of a trademark infringement suit filed by Peter Kiewit Sons’, Inc., in which the district court first entered a default against the defendants as a sanction for discovery abuses, and then proceeded to enter default judgment against defendant Steven West in the amount of $913,099.46. On appeal, West argues that the district court abused its discretion in denying West’s multiple motions to postpone the hearing on damages, and that it erred in calculating the damages award. We have jurisdiction under 28 U.S.C. § 1291 and, finding no error in the district court’s rulings, we affirm.

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Wi-LAN, Inc. v. Apple Inc.

Wi-LAN, Inc. (“Wi-LAN”) is the assignee of U.S. Patent No. RE37,802 (“’802 patent”), which concerns a wireless data communication technique called “MultiCode Direct-Sequence Spread Spectrum” (MC-DSSS). WiLAN asserts that the patented technique is embodied in several modern wireless communications standards.

On February 2, 2011, Wi-LAN sued Apple Inc. (“Apple”) and other technology companies in the United States District Court for the Eastern District of Texas for infringing claims 1 and 10 of the ’802 patent by manufacturing and selling products complying with various widearea communication standards. A jury found that Apple did not infringe and that the claims are invalid. The district court denied Wi-LAN’s motion for judgment as a matter of law (“JMOL”) and for a new trial with respect to infringement, but it granted Wi-LAN’s motion for JMOL of no invalidity.

Wi-LAN appeals the trial court’s denial of JMOL and its motion for a new trial on infringement, and Apple cross-appeals the grant of JMOL of no invalidity. Because the jury’s verdict of non-infringement was supported by substantial evidence, we affirm the district court’s denial of JMOL as to non-infringement. Because the trial court’s JMOL determination of no invalidity was based on a postverdict reconstruction of the claims, we reverse the district court’s grant of JMOL of no invalidity.

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In re: Urbanski

Gregory E. Urbanski and Kevin W. Lang (collectively, “Urbanski”) appeal from the decision of the United States Patent and Trademark Office (“PTO”) Patent Trial and Appeal Board (the “Board”) affirming the Examiner’s rejection of claims 43–50 and 52–68 of U.S. Patent Application 11/170,614 (the “ ’614 application”) as unpatentable under 35 U.S.C. § 103(a) (2006).1 See Ex Parte Urbanski, No. 2013-002044, slip op. at 3, 11 (P.T.A.B. Oct. 9, 2014) (“Board Decision”); Joint App. (“J.A.”) 2–15. Because the Board did not err in concluding that the claims of the ’614 application would have been obvious over the cited references, we affirm.

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Fed. Treasury Enter. Sojuzplodoimport v. Spirits Int’l B.V.

Rival claims to the “Stolichnaya” trademarks have been asserted by successors in interest to a Soviet enterprise and by an agency of the Russian Federation.  The principal issue is whether the agency of the Russian Federation has been endowed by that government with rights and powers that support standing under section 32(1) of the Lanham Act.  The question has been here before.  We conclude that the United States District court for the Southern District of New York (Scheindlin, J.) erred in considering whether the asserted basis for standing to pursue the section 32(1) claims was valid under Russian law, but that the district court correctly dismissed all of the other claims as barred by res judicata and laches.

Affirmed in part and vacated and remanded in part.

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Savant Homes v. Collins

Plaintiff Savant Home, Inc. (“Savant”) is a custom home designer and builder. It holds a registered copyright to a floor plan of a three-bedroom ranch house (“Anders Plan”). Savant built a model house embodying that plan in Windsor, Colorado (“Savant house”). In June 2009, Ron and Tammie Wagner toured the Savant house and hired builder Douglas Collins and his firm, Douglas Consulting, LLC (jointly, “Collins”) to build a house. Collins, in turn, contracted with Stewart King to design the house. After Collins and Mr. King completed the Wagners’ house, Ms. Wagner hired them to build a second house.

Savant sued all of the foregoing parties for copyright infringement, contributory copyright infringement, civil conspiracy, trade dress infringement, and other claims. It alleged that Defendants copied the Anders Plan by building the two houses (“accused houses”). The district court granted Defendants summary judgment, and Savant appeals.

Exercising jurisdiction under 28 U.S.C. § 1291, we affirm.

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Redline Detection, LLC v. STAR Envirotech, Inc.

Appellant Redline Detection, LLC (“Redline”) appeals the inter partes review (“IPR”) decision of the United States Patent and Trademark Office’s (“USPTO” or “the Office”) Patent Trial and Appeal Board (“the PTAB” or “the Board”), which denied Redline’s motion to submit supplemental information under 37 C.F.R. § 42.123(a) (2012) and found Redline failed to show that claims 9 and 10 of U.S. Patent No. 6,526,808 (the “’808 patent”) would have been obvious. See Redline Detection, LLC v. Star Envirotech, Inc., IPR2013-00106, 2014 WL 2995050 (P.T.A.B. June 30, 2014) (J.A. 36–75) (“Final Decision”). For the reasons set forth below, we affirm.

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Commil USA, LLC v. Cisco Sys., Inc.

This case returns to us on remand from the Supreme Court. See Commil USA, LLC v. Cisco Sys., Inc., 135 S. Ct. 1920 (2015). While our previous opinion had remanded this case to the district court for a new trial, Commil USA, LLC v. Cisco Sys., Inc., 720 F.3d 1361, 1372 (Fed. Cir. 2013), when we received the case back from the Supreme Court we granted Cisco’s request to retain the case and address Cisco’s remaining non-infringement arguments which we had declined to address in our previous opinion. ECF No. 101. We now conclude that substantial evidence does not support the jury’s finding that Cisco’s devices, when used, perform the “running” step of the asserted claims. The district court’s judgment is therefore reversed.

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Adobe Systems, Inc. v. Christenson

Affirming the district court’s summary judgment in a copyright infringement case, the panel held that, while the copyright holder bears the ultimate burden of establishing infringement, the party raising a first sale defense bears an initial burden with respect to the defense.

The first sale doctrine provides that, once a copy of a work is lawfully sold or transferred, the new owner has the right to sell or otherwise dispose of that copy without the copyright owner’s permission. Adobe Systems, Inc., claimed infringement of its software. The panel held that Adobe established its registered copyrights in the software, and the defendant carried his burden of showing that he lawfully acquired genuine copies. Adobe, however, failed to produce license agreements or other evidence to show that it retained title to the software when the copies were first transferred. The panel held that the district court did not abuse its discretion in excluding evidence purporting to document the licenses, and general testimony and generic licensing templates were insufficient to meet Adobe’s burden.

The panel held that the nominative fair use defense barred Adobe’s trademark infringement claim.

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