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Merchant &amp; Gould’s Appellate Group provides clients with specialized experience in appellate advocacy. &nbsp;The attorneys in Merchant &amp; Gould’s Appellate Group have extensive experience with appellate advocacy in a broad spectrum of legal areas and technologies. &nbsp;Our attorneys have successfully handled numerous patent appeals at the Federal Circuit and appeals on a wide range of other intellectual property cases, including copyright, trademark, right of publicity, and trade secrets in circuit courts across the country. &nbsp;Merchant &amp; Gould’s Appellate Group includes attorneys who have extensive experience both in private practice as well as attorneys who formerly served as judicial law clerks to federal circuit court judges. &nbsp;

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Merchant &amp; Gould’s Appellate Group provides clients with specialized experience in appellate advocacy. &nbsp;The attorneys in Merchant &amp; Gould’s Appellate Group have extensive experience with appellate advocacy in a broad spectrum of legal areas and technologies. &nbsp;Our attorneys have successfully handled numerous patent appeals at the Federal Circuit and appeals on a wide range of other intellectual property cases, including copyright, trademark, right of publicity, and trade secrets in circuit courts across the country. &nbsp;Merchant &amp; Gould’s Appellate Group includes attorneys who have extensive experience both in private practice as well as attorneys who formerly served as judicial law clerks to federal circuit court judges. &nbsp;

The attorneys in Merchant &amp; Gould’s Appellate Group consult at all stages of trial and post-trial proceedings. &nbsp;At the trial stage, our attorneys look ahead to spot, preserve, and ensure an appropriate record is developed for potential post-trial appeal issues. &nbsp;After trial, we assist with post-trial motions to assure that issues are properly preserved and presented, all with a potential future appeal in mind. &nbsp;Attorneys from Merchant &amp; Gould’s Appellate Group are also often engaged to handle post-trial proceedings and appeals for cases in which the firm was not previously involved. &nbsp;In these cases, clients look to our attorneys for their specialized knowledge and insight into the appeal process—a process that is quite different in strategy, procedure, and execution from the trial court proceedings. &nbsp;In each of these instances, our attorneys use their extensive knowledge of intellectual property law and appellate practice to identify and frame the relevant legal and factual issues and engage in all aspects of appellate advocacy and amicus representation.

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The attorneys in Merchant &amp; Gould’s Appellate Group consult at all stages of trial and post-trial proceedings. &nbsp;At the trial stage, our attorneys look ahead to spot, preserve, and ensure an appropriate record is developed for potential post-trial appeal issues. &nbsp;After trial, we assist with post-trial motions to assure that issues are properly preserved and presented, all with a potential future appeal in mind. &nbsp;Attorneys from Merchant &amp; Gould’s Appellate Group are also often engaged to handle post-trial proceedings and appeals for cases in which the firm was not previously involved. &nbsp;In these cases, clients look to our attorneys for their specialized knowledge and insight into the appeal process—a process that is quite different in strategy, procedure, and execution from the trial court proceedings. &nbsp;In each of these instances, our attorneys use their extensive knowledge of intellectual property law and appellate practice to identify and frame the relevant legal and factual issues and engage in all aspects of appellate advocacy and amicus representation.

The attorneys in Merchant &amp; Gould’s Appellate Group carefully monitor developments in intellectual property law and stay current on relevant appellate issues in a variety of ways. &nbsp;Our attorneys regularly write articles and lecture on important appellate topics. &nbsp;Members of our Appellate Group also regularly provide internal presentations on significant and recent Federal Circuit court decisions to other attorneys in the firm. &nbsp;And the Firm’s Whitepaper project focuses on providing the firm’s attorneys and clients with current information on important and emerging legal issues.

The attorneys in Merchant &amp; Gould’s Appellate Group carefully monitor developments in intellectual property law and stay current on relevant appellate issues in a variety of ways. &nbsp;Our attorneys regularly write articles and lecture on important appellate topics. &nbsp;Members of our Appellate Group also regularly provide internal presentations on significant and recent Federal Circuit court decisions to other attorneys in the firm. &nbsp;And the Firm’s Whitepaper project focuses on providing the firm’s attorneys and clients with current information on important and emerging legal issues.

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<h2 class="wp-block-heading" id="ip-case-updates-blog">IP Case Updates Blog</h2>

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Heather S. Chatterton

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Lindsey Blog Test 4

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 Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/22-1631.OPINION.9-12-2023_2188913.pdf">Apple Inc. v. Corephotonics, Ltd., Nos. 2022-1350, -1351 (Sept. 11, 2023)</a>, vacating and remanding two final written decisions of the Patent Trial and Appeal Board holding Apple had not shown the challenged claims of U.S. Patent No. 10,225,479 were unpatentable as obvious.
Corephotonics owns the ’479 patent, which is directed to the creation of “portrait photos” using a cellphone-sized digital camera by combining images taken by a wide lens and a tele lens to create a fused still image. Apple filed two petitions for inter partes review, both challenging claims of the ’479 patent as obvious. In the first proceeding, the Board adopted a claim construction requiring the fused image to maintain both Wide perspective and Wide position point of view (POV) and determined the prior art did not disclose maintaining both. In the second proceeding, the Board focused on an error in the calculation conducted by Apple’s expert to support its nonobviousness determination. Apple appealed.
The Federal Circuit vacated and remanded. On the claim construction issue presented in the first proceeding, the Court held that the intrinsic evidence aligned better with Apple’s proposed construction, which required the fused image to maintain Wide perspective POV or Wide position POV, but not both. Accordingly, the Court vacated and remanded the Board’s final written decision in the first proceeding. 
In reviewing the Board’s determination in the second proceeding, the Court focused on Apple’s assertion that the Board’s decision violated the Administrative Procedure Act’s requirements concerning notice and opportunity to be heard. The Court explained that the APA requires the Board to “base its decision on arguments that were advanced by a party, and to which the opposing party was given a chance to respond.” The Court concluded that the Board’s decision on patentability was focused almost entirely on typographical errors in Apple’s expert’s declaration, “that neither party asserted were material to the claimed invention—and only one of which Corephotonics even identified as an error.” The Court held that the Board’s failure to explain why it found these errors meaningful in the patentability analysis, particularly where the parties’ arguments had “focused entirely on questions of manufacturability and scalability,” did not comport with the notice requirements of the APA. Accordingly, the Court vacated and remanded the Board’s final written decision in the second proceeding as well.
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CAFC Reiterates APA Notice Requirement

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Recently, the U.S. Court of Appeals for the Fifth Circuit issued an opinion in <a href="https://www.ca5.uscourts.gov/opinions/pub/22/22-40376-CV0.pdf">Whirlpool Corp. et al. v. Shenzhen Sanlida Electrical Technology Co. et al., No. 22-40376 (August 25, 2023)</a>, affirming the district court’s grant of a preliminary injunction enjoining sales of Shenzhen’s allegedly infringing stand mixers.
Whirlpool filed suit against Shenzhen in the Eastern District of Texas alleging that kitchen stand mixers sold by Shenzhen, through primarily online channels, infringe Whirlpool’s trademark and trade dress rights in its iconic KitchenAid stand mixer. Along with its complaint, Whirlpool filed a motion for preliminary injunction to stop the sale of the allegedly infringing mixers. The district court granted the preliminary injunction after a hearing attended by both parties. Shenzhen appealed. 
The Fifth Circuit affirmed. On appeal, Shenzhen had raised three main arguments: (1) the district court lacked personal jurisdiction over Shenzhen due to lack of completed service; (2) Whirlpool’s trademarks are functional; and (3) there is no likelihood of confusion.
The Court rejected Shenzhen’s first argument as being inconsistent with both the plain language of Rule 65 and the Circuit’s past precedent holding that Rule 65(a) does not require service of process on, but only notice to, the adverse party. As there was no dispute that Shenzhen received sufficient notice of the motion for preliminary injunction, the Court found no error.
The Court then assessed functionality under the tests laid out in the TrafFix Devices and Smack Apparel cases. Under TrafFix Devices, the Court found there was no showing in the record that the exterior styling of the KitchenAid mixer was “essential to the use or purpose” of or had any effect on the cost, quality, or function of the mixer itself. Under Smack Apparel, the Court found that the presence of competing products with other designs cut against Shenzhen’s argument because those other designs are all “equally usable” if less aesthetically pleasing. Thus, the Court found no clear error in the district court’s finding of no functionality.
Finally, on likelihood of confusion the Court held that the existence of a “debate” regarding the similarities and differences between the KitchenAid and allegedly infringing products was not enough to hold the district court clearly erred in determining the factor went in Whirlpool’s favor.
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Fifth Circuit Affirms PI in Stand Mixer Trade Dress Case

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Recently, the U.S. Court of Appeals for the Federal Circuit issued a decision in Lite-Netics, LLC v. Nu Tsai Capital LLC et al, 2023-1146 (Feb. 17, 2023), reversing a preliminary injunction entered against the patentee enjoining communications about the lawsuit.
Lite-Netics, LLC owned two patents (Nos. 7,549,779 and 8,128,264) claiming inventions to magnetic holiday lights, which included a magnetic backing to permit attachments to metal surfaces.  It sued Nu Tsai Capital LLC, d/b/a Holiday Bright Lights (HBL), for alleged patent infringement based on HBL’s sale of magnetic holiday string lights sold under the name “Magnetic Cord”.  Lite-Netics sent two cease and desist letters to third parties, both before and after filing suit.
In its first cease and desist letter, sent to Lite-Netics’ customers (some of whom were also HBL customers) about allegedly infringement products, Lite-Netics did not mention HBL at all.  Rather, it merely notified customers of “recent attempts by other companies to make and sell similar products” to those protected by the asserted patents.  In its second cease and desist letter, sent after the lawsuit against HBL was filed, Lite-Netics noted the patent infringement lawsuit filed against HBL to “stop it from ‘making and selling infringing products’” and noted it was actively considering joining additional companies selling HBL products in the lawsuit.
Following the second letter, HBL filed a motion to dismiss and asserted various counterclaims arising under state law.  It also filed a motion for a temporary restraining order and for a preliminary injunction prohibiting further statements by Lite-Netics accusing HBL of infringement or suggesting HBL customers might be subject to suit.  The district court issued the TRO and, after an evidentiary hearing, granted the preliminary injunction. Lite-Netics appealed.
The Federal Circuit relied on previous authority for the proposition that federal patent law “preempts state-law tort liability for a patentholder’s good faith conduct in communications asserting infringement of its patent and warning about potential litigation,” and that such preemption only fails where “claims are based on a showing of ‘bad faith’ action in asserting infringement.”  This requirement showing of bad faith rests, partly, on First Amendment principles.  Turning to the patents and communications at issue, the Court engaged in a partial claim construction and doctrine of equivalents analysis and determined Lite-Netics’ patent claims were not objectively baseless.  Accordingly, the Court vacated the district court’s order granting the preliminary injunction and remanded the case for further proceedings. 
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CAFC Vacates Preliminary Injunction Prohibiting Patent-Related Speech

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Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/22-1578.OPINION.6-26-2023_2147741.pdf">Spireon, Inc. v. Flex Ltd., No. 2022-1578 (June 26, 2023)</a>, vacating and remanding the Trademark Trial and Appeal Board’s decision sustaining Flex’s opposition to the registration of Spireon’s FL FLEX mark.
Spireon filed a trademark application seeking registration for the mark FL FLEX, and Flex opposed registration on the grounds of priority and likelihood of confusion with Flex’s previously registered marks: FLEX, FLEX (stylized), and FLEX PULSE. Using the DuPont factors, the Board considered whether confusion was likely. The Board addressed the strength of Flex’s marks and considered the similarity of the marks analyzing Spireon’s FL FLEX against FLEX, FLEX (stylized), and mistakenly, “FLEX PLUS” rather than “FLEX PULSE.” It found the marks to be highly similar, concluding that the first DuPont factor supported a finding of likelihood of confusion. Additionally, the Board found that the goods and services were related or complementary and that the trade channels and classes of consumers overlapped. Based on the foregoing analysis, the Board sustained Flex’s opposition, finding a likelihood of confusion between the marks.
The Federal Circuit vacated and remanded. The Court held that the Board erred in analyzing conceptual strength under the first DuPont factor rather than the sixth factor. The Court also concluded that the Board erred in its analysis of conceptual strength by discounting composite third-party registrations, explaining that composite third-party registrations are relevant to the question of whether the shared segment (“flex”) has a commonly understood descriptive or suggestive meaning. The Court further held that the Board compounded the aforementioned error by providing no weight to Spireon’s argument that “flex” is suggestive because it is a shortened form of the term “flexible.” The Court also noted that Flex, as opposer, failed to show that identical marks for identical goods were not used in the marketplace. The Court stated that on remand Flex should be given the opportunity to make such a showing, and if Flex fails to establish non-use, the commercial strength of the Flex marks must be considered weak as to Spireon’s non-identical mark. Lastly, the Court noted that the Board erred in its analysis by comparing FL FLEX to FLEX PLUS rather than FLEX PULSE.
Coauthored by Will Schultz & Melissa Quirin.
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CAFC Vacates TTAB Decision Regarding Likelihood of Confusion Analysis

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DU Test Blog

Recently, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/23-2032.OPINION.9-18-2024_2386574.pdf">Astellas Pharma, Inc. v. Sandoz Inc., No. 2023-2032 (Sept. 18, 2024)</a>, vacating and remanding the district court’s sua sponte finding of invalidity under 35 U.S.C. § 101.



Sandoz sued Astella and other generic drug manufacturers for infringement of U.S. Patent No. 10,842,780, directed to a sustained-release pharmaceutical composition. Sandoz’s invalidity contentions asserted invalidity under 35 U.S.C. §§ 102, 103, and 112, but not under 35 U.S.C. § 101. Sandoz further limited its invalidity defenses before trial, and neither party addressed patent eligibility at trial. In addressing Sandoz’s enablement defense in post-trial briefing, Astella described the inventive concept of the ’780 Patent as “discovering the dissolution rate that would address the food effect and achieving it using previously known formulation technology.” Relying on Astella’s description, the district court sua sponte ruled that the asserted claims were directed to a law of nature and were invalid under 35 U.S.C. § 101.



The Federal Circuit vacated and remanded. The Court emphasized the long-standing principle of party presentation, i.e., the parties frame the issues for decision while the court decides those issues. Although the Court recognized that the party presentation principle is “supple, not ironclad,” it held that finding a patent invalid on a ground not raised by any party was an abuse of discretion. The Court explained that “[o]ne cornerstone” of patent litigation is a patent’s presumption of validity. This means that patent eligibility is not a threshold question that a court is required to determine; instead, a court must only determine whether the patent challenger has met its burden of establishing invalidity on the grounds raised in the litigation. The Court vacated and remanded for adjudication of the issues properly raised by the parties.



The Court denied Astella’s request that the case be reassigned on remand. The Court noted that reassignment is “an exceptional remedy” and explained that errors relating to the propriety of a district court’s analysis do not warrant reassignment. The Court explained that while the district court had expressed personal frustration regarding the pharmaceutical industry, those comments were directed to the entire industry (brand and generic manufacturers), and there was no indication that the judge “cannot resolve the outstanding issues impartially and fairly.”

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