Tuesday, January 8, 2019
Automotive Body Parts Ass’n v. Ford Global Technologies LLC, No. 18-1613, Courtroom 203
The Automotive Body Parts Association (“ABPA”) appeals from an Eastern District of Michigan decision granting summary judgment for Ford. The district court held that Ford’s design patents directed to the exterior of an F-150 truck hood and F-150 headlamp were not invalid under 35 U.S.C. § 171 because the claimed designs are ornamental, not functional.
ABPA argues that the claimed designs are functional and that the design is dictated by the need for the parts to “mate and match” with the other F-150 parts. ABPA argues that the claimed designs are necessary to work with the combination of other F-150 parts both when originally sold as part of the F-150 truck and when purchased as a repair/replacement part. Alternatively, ABPA argues that the authorized sale of the F-150 truck exhausts the patent rights in the claimed designs and creates an implied license allowing the purchaser to repair the F-150 truck by purchasing repair/replacement parts that embody the claimed designs. In response, Ford contends that there are many ways to design components that will fit on the F-150 truck and work with the other F-150 parts. Ford argues that the claimed designs are ornamental because there are numerous alternative designs for the hood and headlamp, and therefore, the claimed designs are not the “only possible form” of the articles that could perform the necessary function. With respect to ABPA’s exhaustion argument, Ford argues that the sale of the F-150 truck only exhausts the rights to the specific parts attached to the vehicle purchased by the consumer. Ford contends that the sale does not impact its rights in new hoods and headlamps that are available for sale as repair/replacement parts.
Wednesday, January 9, 2019
Prism Technologies LLC v. Sprint Spectrum L.P., No. 18-1108, Courtroom 402
Prism appeals a District of Nebraska decision granting Sprint’s request for relief from judgment under Fed. R. Civ. P. 60(b). This appeal arises as a result of two actions involving Prism and the asserted patents. In the first action, Prism proceeded to trial against Sprint with a subset of the asserted claims. A final judgment was entered in favor of Prism in June 2015 and the judgment was upheld on appeal. In May 2017, Prism filed a motion to enforce the June 2015 judgment. In the second action, Prism asserted the same claims against T-Mobile but proceeded to trial with a different subset of the asserted claims. On appeal, the Federal Circuit found the claims asserted against T-Mobile invalid under 35 U.S.C. § 101. While Prism’s motion to enforce the 2015 judgment was pending, Sprint moved for relief from Judgment under Fed. R. Civ. P. 60(b) in light of the T-Mobile decision. The district court granted Sprint’s motion finding that the T-Mobile decision collaterally estops Prism from recovering from Sprint.
Prisms contends that Sprint cannot establish exceptional circumstances to justify setting aside the June 2015 judgment when it intentionally decided not to pursue an invalidity defense at trial. Moreover, Prism argues that the T-Mobile decision applies only to the claims asserted at trial in that action, not the claims asserted at trial in the Sprint action. Conversely, Sprint argues that the intervening invalidity decision constitutes an “exceptional circumstance” that justifies setting aside the judgment under Fed. R. Civ. P. 60(b). Sprint contends that this is true even though it did not challenge validity at trial. Sprint further argues that the claims invalidated in the T-Mobile action include those asserted against Sprint. Sprint asserts that Prism asserted the same set of claims against both Sprint and T-Mobile and that the invalidity decision applies to all of the asserted claims, not just the subset that proceeded to trial.
Thursday, January 10, 2019
Cleveland Clinic Foundation v. True Health Diagnostics LLC, No. 18-1218, Courtroom 201
Cleveland Clinic Foundation (“CCF”) appeals from an Eastern District of Virginia decision granting True Health’s 12(b)(6) motion to dismiss. The patents at issue are directed to laboratory methods for detecting myeloperoxidase in the blood of patients with cardiovascular disease. The district court held that the patents were invalid under 35 U.S.C. § 101 as directed to a patent-ineligible law of nature.
CCF argues that the district court erred in granting True Health’s motion because there were many material facts in dispute, which the district court acknowledged, and CCF pled sufficient facts to establish patent eligibility. CCF further argues that the district court incorrectly applied the two-step Alice test because it ignored evidence in the record about the state of the art and refused to acknowledge the science behind the groundbreaking discoveries that led to the claimed methods. True Health argues that any factual disputes were immaterial because any factual issues relevant to the Alice test were resolved by the patentees’ admissions in the specification and prosecution history. True Health further argues that the district court correctly applied the Alice test and that the claims are directed to the natural correlation between atherosclerotic cardiovascular disease and elevated myeloperoxidase levels.
Friday, January 11, 2019
In Re Siny Corp., No. 18-1077, Courtroom 402
Siny appeals the TTAB’s refusal to register the mark CASALANA. Siny filed the application based on use in commerce under 15 U.S.C. § 1051(a). In connection with their application, Siny submitted a print-out of a webpage as their specimen of use. The webpage included the mark below an image of a product and included the text “for sales information” followed by a telephone number and an e-mail address which would allow potential customers to place an order. The TTAB found that the specimen of use submitted by Siny was merely advertising material and did not constitute a “display associated with the goods.”
Siny argues that the TTAB ignored the broad definition of “use in commerce” and concentrated on specific criteria, such as lack of pricing and shipping information on the specimen. Moreover, Siny argues that the Board’s requirement that a specimen of use have the capability to independently effectuate a sale is unsupported by the plain language of the Trademark Act and ignores Federal Circuit precedent that rejected a bright line rule for specimen of use requirements. In response, the PTO argues that the TTAB did not apply a bright line rule and maintains that Siny’s specimen is merely advertising that does not show use of the CASALANA mark in commerce. The PTO argues that a web printout can satisfy the requirement if the printout is a point of sale display, but Siny’s printout does not satisfy that requirement.