Tag Archives: Federal Circuit

Trademark and Patent Applicants Opting for a District Court Appeal Must Pay PTO’s Attorney Fees

On June 23, 2017, the Federal Circuit held that, whether they win or lose, patent applicants who appeal adverse PTAB decisions directly to a district court must pay the PTO’s attorneys’ fees.

Patent applicants seeking judicial review of Board decisions have two options under the America Invents Act: appeal to the Federal Circuit under 35 U.S.C. § 141, or to the Eastern District of Virginia under 35 U.S.C. § 145.  Appeals taken under Section 145 offer certain benefits to the applicant, such as allowing discovery and the introduction of further evidence.  Section 145 also provides that applicants must pay “[a]ll the expenses of the proceeding.”  When Dr. Hans Klingemann’s patent application directed to a method of treating cancer was rejected as obvious, Nantkwest, the assignee of the application, appealed under Section 145.  After prevailing on the merits, the Director of the PTO moved for expert and attorneys’ fees, citing the “all expenses” provision of the statute. Continue reading

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One Sale Meets the Lanham Act’s “Use In Commerce” Requirement

On November 14, 2016, the Federal Circuit held that a single sale of two hats is sufficient to meet the Lanham Act’s “use in commerce” requirement for trademark registration, potentially contravening longstanding jurisprudence on “token use.”

Christian Faith Fellowship Church began selling caps and shirts emblazoned with the phrase “Add A Zero” in January 2005.  In February of the same year, the Church made one sale of two ADD A ZERO-marked hats to an out-of-state resident, and in March, the Church applied for federal registration of the ADD A ZERO mark.  Continue reading

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Federal Circuit Finds Foreign Lawsuits Did Not Avoid a Laches Bar

On February 16, 2016, in a patent case that could have implications on the trademark side, the Federal Circuit ruled that the pursuit of foreign enforcement actions were not sufficient to avoid a successful laches defense by a U.S.-based defendant.

Hedwig Lismont is a Belgian citizen who claimed to have developed a method for manufacturing goods covered by a German Patent which issued in 1998 and a U.S. Patent which issued in 2002. Both the German Patent and U.S. Patent in question are owned by German manufacturing company Alexander Binzel Schweisstechnik Gmbh & Co. KG (Binzel-Germany). Between October 2000 and at least 2009, Mr. Lismont filed two litigations in Germany, as well as separate due process actions in the German Federal Constitutional Court and the European Court of Human Rights related to his inventorship claim for the German patent. On October 31, 2012, twelve years after initiating the first litigation in Germany, Mr. Lismont filed his claim to correct inventorship of the U.S. Patent in the Eastern District of Virginia. Binzel-Germany filed a motion for summary judgment asserting Mr. Lismont’s ’patent inventorship claim was barred by laches.

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