Federal Case Summaries
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Great Concepts v. Chutter — Federal Circuit Rules Fraudulent Incontestability Declaration Cannot Cancel a Trademark Registration

The Federal Circuit reversed the TTAB’s cancellation of Great Concepts’ DANTANNA’S restaurant trademark, holding that filing a fraudulent Section 15 incontestability declaration does not give the Board authority to cancel the underlying registration — fraud after registration has l

Federal Circuit
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Finjan v. SonicWall — Federal Circuit Vacates Collateral Estoppel Invalidity, Affirms Non-Infringement on Stipulated Claim Construction

The Federal Circuit vacated an invalidity judgment against Finjan’s cybersecurity patents that had been based on collateral estoppel from a since-vacated case, while affirming non-infringement on claim construction grounds and excluding Finjan’s damages expert for inadequate apportionmen

Federal Circuit
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Sisvel International v. Sierra Wireless — Federal Circuit Clarifies When Expert Testimony Can Establish Structure for Means-Plus-Function Claims

The Federal Circuit held that the PTAB erred in categorically excluding expert testimony on the structure of computer-implemented means-plus-function claim limitations when the specification identifies named software protocols, clarifying a two-track framework for evaluating such claims.

Federal Circuit
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Columbia Sportswear v. Seirus — Federal Circuit Rules Design Patent Comparison Prior Art Must Match the Same Article of Manufacture

In a precedent-setting design patent case, the Federal Circuit held that comparison prior art used to defend against infringement must be drawn from the same article of manufacture claimed in the design patent — prior art from a different type of product cannot be used to confuse the ordinary observ

Federal Circuit
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Sisvel International v. Sierra Wireless — Federal Circuit Affirms PTAB’s Denial of Motion to Amend for Broader Substitute Claims

The Federal Circuit affirmed PTAB’s denial of a motion to amend patent claims in IPR, holding that proposed substitute claims were broader than original claims in at least some respects, and that claims broader in any respect cannot be substituted regardless of narrowing in others.

Federal Circuit
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Volvo Penta v. Brunswick — Federal Circuit Vacates PTAB Obviousness Finding for Failure to Properly Weigh Secondary Considerations

The Federal Circuit vacated the PTAB’s finding that Volvo Penta’s stern drive patent was obvious, holding that the Board improperly dismissed evidence of secondary considerations—including copying, commercial success, and industry praise—when competitors’ own recognition that the p

Federal Circuit
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Axonics v. Medtronic — Federal Circuit Holds PTAB Must Allow Petitioner to Respond to New Claim Constructions Raised Post-Institution

The Federal Circuit vacated two PTAB decisions, holding that when a patent owner introduces a new claim construction for the first time in its post-institution response, the petitioner must be given a fair opportunity to introduce new arguments and evidence under that construction in its reply.

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United Therapeutics v. Liquidia Technologies — Federal Circuit Upholds Treprostinil Patents, Clarifies Enablement for Treatment Method Claims

The Federal Circuit affirmed that United Therapeutics’ patents covering inhaled treprostinil for pulmonary hypertension satisfy enablement and written description requirements, holding that method-of-treatment claims need not separately address every disease variant in the specification.

Federal Circuit
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Axonics v. Medtronic — Federal Circuit Vacates PTAB Obviousness Decision for Applying Overly Narrow Motivation-to-Combine Test

The Federal Circuit vacated the PTAB’s IPR decisions upholding Medtronic’s sacral nerve stimulation patents, finding the Board committed a fundamental error by limiting the motivation-to-combine inquiry to the specific application context of the primary reference rather than the full cla

Federal Circuit
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Inguran v. ABS Global — Federal Circuit Holds Judgment on Direct Infringement Does Not Preclude Later Induced Infringement Suit

The Federal Circuit reversed the dismissal of an induced patent infringement suit on res judicata grounds, holding that a prior judgment on direct infringement claims does not preclude a subsequent suit for induced infringement when the induced infringement claims are based on different operative fa

Federal Circuit
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Parus Holdings v. Google — Federal Circuit Holds PTAB May Disregard Evidence Incorporated by Reference in Violation of Procedural Rules

The Federal Circuit affirmed PTAB’s decision to disregard Parus Holdings’ evidence in IPR proceedings, holding that a patent owner’s attempt to incorporate arguments by reference through voluminous exhibits violates PTAB procedural rules and the APA does not require the Board to ov

Federal Circuit
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Yita v. MacNeil IP — Federal Circuit Reverses PTAB’s Reliance on Secondary Considerations Tied Only to Known Prior Art Feature

The Federal Circuit reversed the PTAB’s reliance on commercial success as a secondary consideration of nonobviousness for car floor mat patents, holding that evidence of commercial success must be linked to the claimed combination as a whole, not to a single feature that was already present in

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