Fresh From the Bench: Latest Precedential Patent Cases
CASE OF THE WEEK
LKQ Corporation v. GM Global Technology Operations LLC, Appeal No. 2021-2348 (Fed. Cir. May 21, 2024)
In a rare en banc opinion, the Federal Circuit overruled decades of prior precedent concerning the standard to evaluate the obviousness of design patents. The Court created a new standard relying on principles adapted from utility patent jurisprudence.
At issue was the Rosen/Durling test, which takes its name from In re Rosen, 673 F.2d 388, 391 (CCPA 1982) and Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100, 103 (Fed. Cir. 1996). In re Rosen requires that, before one can begin to combine prior art designs, one must find a single reference, “a something in existence, the design characteristics of which are basically the same as the claimed design.” For example, in Rosen, the design was for a table. The closest piece of prior art was a desk, and the Patent Office found the table design obvious over the desk.
ALSO THIS WEEK
Ulrich Speck v. Brian L. Bates, Appeal No. 2023-1147 (Fed. Cir. May 23, 2024)
In a patent interference proceeding under pre-AIA law, the Federal Circuit clarified the test for determining whether a party had been claiming “substantially the same invention” for purposes of invoking an exception to the time bar provisions of 35 U.S.C. § 135(b)(1), making clear that to be “substantially the same,” post-critical date claims must be neither materially narrower than nor materially broader than pre-critical date claims.
Core Optical Technologies, LLC v. Nokia Corporation, Appeal Nos. 2023-1001, -1002, -1003 (Fed. Cir. May 21, 2024)
Also this week, the Federal Circuit reversed the District Court for the Central District of California’s summary judgment to Nokia, because an ambiguous assignment agreement created a genuine dispute of material fact as to who owned an asserted patent.
Dragon Intellectual Property LLC v. Dish Network L.L.C., Appeal Nos. 2022-1621, -1622, -1777,-1779 (Fed. Cir. May 20, 2024)
In an appeal from the United States District Court for the District of Delaware, the Federal Circuit addressed a number of issues related to Dish’s motion for attorney’s fees, including (1) whether the district court had erred in finding that these cases were “exceptional” under § 285; (2) whether the district court erred in denying attorney’s fees during the IPR proceedings; and (3) whether the district court erred in denying to hold Dragon’s counsel jointly and severally liable for fees.
Editors:
Nika Aldrich, IP Litigation Group Leader, Schwabe, Williamson & Wyatt
Jason A. Wrubleski, Shareholder
Contributors:
Tyler Hall, Shareholder
Brittani Gambrell, Associate