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Sirona’s 006 patent “relates to a method for producing a drill assistance device,” a drill template, “to precisely place a pilot hole for a tooth implant, wherein the pilot hole for the tooth implant is aligned relative to the teeth that still remain in the jaw.” The specification discloses taking X-ray images of the jaw and taking a three-dimensional optical image of the visible surfaces of the jaw and teeth. These images are compiled into “measured data records” and correlated. From this correlation, the position for the implant is determined and a drill template is prepared. On inter partes review, the Patent Trial and Appeal Board found claims 1–8 of unpatentable as obvious, 35 U.S.C. 103, over the combination of a German Patent (Bannuscher) and a U.S. Patent (Truppe), and denied Sirona’s contingent motion to amend the claims. The Board found patentable claims 9–10. The Federal Circuit affirmed in part. Substantial evidence supports that claims 1–8 would have been obvious over the combination of Bannuscher and Truppe; the Board’s unpatentability determination did not deviate from the grounds alleged in the petition. Petitioners failed to demonstrate claims 9–10 were unpatentable. The court vacated the denial of the contingent motion to amend and remanded. View "Sirona Dental Systems GMBH v. Institut Straumann AG" on Justia Law

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FastShip’s patents, entitled “Monohull Fast Sealift or Semi-Planing Monohull Ship,” relate to a “fast ship whose hull design in combination with a waterjet propulsion system permits, for ships of about 25,000 to 30,000 tons displacement with a cargo carrying capacity of 5,000 tons, transoceanic transit speeds of up to 40 to 50 knots in high or adverse sea states.” FastShip sued the government, alleging patent infringement under 28 U.S.C. 1498. FastShip alleged that the Navy’s Freedom-class Littoral Combat Ships, LCS-1 and LCS-3, infringed various claims. Following the Court of Federal Claims’ opinion construing various terms, the government successfully moved for partial summary judgment, arguing that the LCS3 was not “manufactured” by or for the government within the meaning of section 1498 before the patents expired. The court held that LCS-1 infringed the claims and awarded FastShip $6,449,585.82 in damages plus interest. The Federal Circuit affirmed, modifying the damages award. The court interpreted “manufactured” in section 1498 in accordance with its plain meaning, such that a product is “manufactured” when it is made to include each limitation of the thing invented and is therefore suitable for use; although other portions of LCS-3 had been completed, the “waterjet” and “hull” limitations had not been completed before the patent’s expiration. View "FastShip, LLC v. United States" on Justia Law

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More than 95% of the world’s bourbon comes from Kentucky. One distiller, Colonel Edmund Haynes Taylor, Jr., was called “the most remarkable man to enter the whiskey industry during the post-Civil War years.” Taylor built the Old Taylor Distillery in 1887 in Woodford County, to resemble a medieval limestone castle. The distillery fell into financial ruin and changed hands several times after the Colonel’s death. Production ceased in 1972. In 2014, Peristyle purchased the Old Taylor distillery, planning to renovate and resume bourbon production there. Peristyle renamed the property “Castle & Key” and intends to do business under that name, including marketing its bourbons and whiskeys. During the renovation period, the company regularly referred to its location at “the Former Old Taylor Distillery” or simply “Old Taylor.” Sazerac, which owns the trademark rights to “Old Taylor” and “Colonel E.H. Taylor” and produces bourbons under both names, sued Peristyle, alleging trademark infringement, unfair competition, and false advertising under the Lanham Act as well as common law trademark infringement, unfair competition, and passing-off violations. The Sixth Circuit affirmed summary judgment in favor of Peristyle, which used the Old Taylor name descriptively and in good faith, qualifying for shelter under the Lanham Act’s fair use defense, 15 U.S.C. 1115(b)(4). View "Sazerac Brands, LLC v. Peristyle, LLC" on Justia Law

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Stone sued Cook in the Eastern District of Texas, alleging infringement of the 327 patent, which relates to a basket-type medical device used to remove stones from biological systems. Venue was transferred to the Southern District of Indiana. Cook deposed the patent’s inventor, who stated, regarding the addition of the “sheath movement element” in claim 1 to overcome an examiner’s rejection, “I realize there is nothing novel about it.” Cook then petitioned the Patent and Trademark Office for inter partes review of all claims. Following the institution of IPR, one of Stone’s managing members offered to license the 327 patent to Cook for $150,000.00 but negotiations broke down. The Patent Board canceled all of the patent’s claims. Following a dismissal with prejudice, the court denied Cook’s motion for attorney fees, 35 U.S.C. 285. The Federal Circuit affirmed, agreeing the case was not “exceptional” and that Stone lacked any type of “clear notice” of the 327 patent’s invalidity by service of Cook’s invalidity contentions. While one might view Stone’s litigating position as weak given the inventor’s deposition testimony regarding the novelty and origin of claim 1’s sheath handle element, exceptionality is not assessed by a strong or even correct litigating position. View "Stone Basket Innovations, LLC v. Cook Medical LLC" on Justia Law

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Medtronic manufactures surgical systems and tools used in spinal surgeries. Spine surgeon Dr. Barry sued Medtronic for patent infringement. Medtronic then petitioned for, and the Patent Board instituted, inter partes review (IPR) proceedings for all claims in both patents. The Board concluded that Medtronic had not proven that the challenged patent claims are unpatentable. The Federal Circuit affirmed in part. Substantial evidence supports that the challenged claims would not have been obvious over two references. The court vacated the Board’s conclusion that certain other references, including a video entitled “Thoracic Pedicle Screws for Idiopathic Scoliosis” and slides entitled “Free Hand Thoracic Screw Placement and Clinical Use in Scoliosis and Kyphosis Surgery” were not prior art because the Board did not fully consider all the factors for determining whether they were publicly accessible. The court noted that the Supreme Court recently held that the statute does not permit a partial institution leading to a partial final written decision and that the final written decisions relating to this appeal do not address every ground raised in the petitions, so the Board will consider the previously non-considered grounds on remand. View "Medtronic, Inc. v. Barry" on Justia Law

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PGS’s patent describes and claims methods and systems for performing “marine seismic surveying” to determine the structure of earth formations below the seabed. WesternGeco, a competitor of PGS’s, filed three petitions requesting inter partes reviews (IPRs) of claims 1– 38 of the patent. The Patent Trial and Appeal Board instituted three IPRs, but it specified for review only some of the claims WesternGeco challenged and only some of the grounds for WesternGeco’s challenges. The Board ruled partly for PGS and partly for WesternGeco on the reviewed claims and grounds. The Federal Circuit affirmed that certain claims of the patent are unpatentable for obviousness. Although precedent now makes clear that the Board erred in limiting the scope of the IPRs it instituted and hence the scope of its final written decisions, the court found that it had jurisdiction to address the merits of the Board’s final written decisions without reviving the “non-instituted” claims and grounds. View "PGS Geophysical AS v. Iancu" on Justia Law

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Plaintiffs, members of a musical group called "Sly Slick & Wicked," filed suit alleging that Dynatone and others collected royalties from the sampling of their song, "Sho' Nuff" in 2013 and that plaintiffs were entitled to those royalty payments. The Second Circuit held that the district court erred in concluding that a repudiation of plaintiffs' claims with respect to the original terms constituted a repudiation of the renewal terms. In this case, plaintiffs did not have reasonable notice that defendants had filed a registration in the capacity of employer for hire. Therefore, the registration did not constitute effective repudiation, triggering an obligation for plaintiffs to bring suit. Accordingly, the court vacated this portion of the judgment. The court affirmed the district court's dismissal of plaintiffs' state law accounting claim for failure to allege a fiduciary duty. Therefore, the court remanded for further proceedings as to plaintiffs' renewal term copyright claims. View "Wilson v. Dynatone Publishing Co." on Justia Law

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The Ninth Circuit reversed the district court's grant of summary judgment for McKeon in a trademark infringement action alleging that McKeon's green ear plugs infringed Moldex's green earplugs. The panel held that the existence or nonexistence of alternative designs was probative of functionality or nonfunctionality, and thus evidence of alternative colors must be considered in deciding the functionality of Moldex's mark. The panel held that there was a material dispute of material facts as to whether Moldex's bright green color earplugs was functional. Therefore, the panel remanded for the district court to consider McKeon's arguments both that Moldex's green color lacked secondary meaning and that there was no likelihood of confusion, and then if necessary go to trial. View "Moldex-Metric, Inc. v. McKeon Products, Inc." on Justia Law

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The Zeroclick patents relate to modifications to the graphical user interfaces of devices such as computers and mobile phones, modifications that allow the interfaces to be controlled using pre-defined pointer or touch movements instead of mouse clicks. The claimed invention contemplates updating existing user interface programs by using a two-step method recited in claims 2 and 52 of the 691 patent, or by making two configuration changes to the user interface code as recited in claim 19 of the 443 patent. In Zeroclick’s suit against Apple, the district court found the asserted claims invalid for indefiniteness. The Federal Circuit vacated. The district court failed to undertake the relevant inquiry and make related factual findings to support its conclusion that the asserted claims recited means-plus-function terms, 35 U.S.C. 112. Given that “[t]he basic concept behind both of the patents-in-suit is relatively simple,” a person of ordinary skill in the art could reasonably discern from the claim language that the words “program” and “user interface code” are used not as generic terms or black box recitations of structure or abstractions, but rather as specific references to conventional graphical user interface programs or code, existing in prior art at the time of the inventions. View "Zeroclick, LLC v. Apple Inc." on Justia Law

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In 2010, the inventors filed the 989 Patent Application as part of the national stage of the Patent Cooperation Treaty, 35 U.S.C. 371. The application is directed to improved methods and apparatuses for “microwave vacuum-drying of organic materials, such as food products and medicinal plants.” It describes dehydrating organic material, such as fruits and berries, by placing the material in a container, transferring the container to a vacuum chamber, and rotating the container as it moves through the vacuum chamber while applying microwave radiation to the organic material. The Patent Board affirmed an examiner’s obviousness rejection of the claims. The Federal Circuit vacated, finding that the Board failed to consider arguments in applicants’ reply brief that were properly made in response to the examiner’s answer. The court directed the Board to consider arguments on whether the divider walls in the containers are a part of the claimed structure of the tumbling limitation under 35 U.S.C. 112 and whether a structural identity rejection can be used to find a prima facie case of obviousness for method claims. View "In Re: Durance" on Justia Law