scott eads
Feb 26, 2019

Fresh From the Bench: Latest Federal Circuit Court Cases


Coda Development S.R.O. v. Goodyear Tire & Rubber Co., Appeal No. 2018-1028 (Fed. Cir. Feb. 22, 2019)

In an appeal from a district court dismissal of a case seeking correction of inventorship, the Federal Circuit reversed and remanded the case for further proceedings, and directed the district court to accept a proposed amended complaint.

The case concerns self-inflating tires (SIT), an industry in which Coda was a front-runner.  Coda pitched its ideas to Goodyear.  The case provides a succinct summary of the events that followed:

     The complaint describes Goodyear’s prior failures with inflation technology. It also describes
     two meetings with Goodyear representatives—both arranged at Goodyear’s initiative and
     attended by Mr. Benedict, Goodyear’s point-person on SIT technology.

Read more.


Dr. Falk Pharma GmbH v. Generico, LLC, Appeal Nos. 2017-2312, 2017-2636, 2018-1320, 2018-2097 (Fed. Cir. 2019)

The Federal Circuit granted motions to disqualify counsel in several cases on appeal from district court and Patent Trial and Appeal Board proceedings.  During the course of the proceedings, two attorneys representing Mylan Pharmaceuticals, Inc. changed firms, continuing to represent Mylan in the related actions.  However, the new firm was also engaged in a concurrent trademark representation for a corporate affiliate of two parties in the appeal, both adverse to Mylan.  In addition to finding that the firm's engagement letter with the affiliate expressly created a client relationship with the two adverse entities, the Court also found that the two adverse entities were sufficiently interrelated with the firm's client to give rise to an affiliate conflict.  In making the latter determination, finding no applicable framework in the precedent of the relevant regional circuits, the Court applied a two-factor test from the Second Circuit, examining the degree of operational commonality between the affiliated entities, and the extent to which they were financially interdependent.

The opinion can be found here.

Written by: Scott D. Eads and Nika Aldrich, Schwabe Williamson & Wyatt

Contributors: Jason Wrubleski