Federal Circuit Review – Issue 60 – July 23, 2015

Each week in the federal circuit review, we succinctly summarize the preceding week of Federal Circuit precedential patent opinions. We provide the pertinent facts, issues, and holdings. Our Review allows you to keep abreast of the Federal Circuit’s activities – important for everyone concerned with intellectual property. We welcome any feedback you may provide.

– Joe Robinson, Bob Schaffer, John Morrissett and Tinh Nguyen




Proposed Rejections to Claims Added During Inter Partes Reexamination Are Not Evaluated for Substantial New Question of Patentability

Airbus S.A.S., v. Firepass Corp., No. 2014-1808, 2015 U.S. App. LEXIS 12340 (Fed. Cir. Jul. 17, 2015) (Lourie, J.). Click Here for a copy of the opinion.

Firepass sued Airbus for infringement of U.S. Patent No. 6,418,752, which covers hypoxic compositions for preventing and extinguishing fires. Subsequently, Airbus filed a request for inter partes reexamination of the ‘752 patent, proposing that some claims were anticipated under § 102 by each of three references. The PTO granted the request in part, finding that only one of these references, known as “Kotilar,” presented a substantial new question of patentability.

Firepass added four new claims during reexamination. Airbus responded by proposing rejections under 35 U.S.C. § 103 for the new claims, arguing they are over Kotliar in view of the other previously cited references, known as “AFWAL 2060” and “Knight.” However, the Examiner found that the combination of Kotilar, AFWAL 2060 and Knight “did not present a substantial new question of patentability.” The Examiner instead rejected the claims under § 112, ¶ 1 for inadequate written description. Firepass appealed the § 112 rejection and Airbus cross-appealed the dismissal of its § 103 challenge to the new claims.

The Patent Trial and Appeal Board (PTAB) dismissed Airbus’s cross-appeal for lack of jurisdiction because “the determination of a ‘lack of a substantial new question of patentability is not a favorable decision on patentability’” as required by the statute for a third party requester to appeal. The PTAB also reversed the Examiner’s § 112, ¶ 1 rejections. Airbus requested a rehearing, which the Board denied. The Board confirmed that the dismissal of Airbus’s cross-appeal was based on the Examiner’s determination that the new claims “raised no substantial new question of patentability.”

The Federal Circuit reversed. The Court agreed that determining whether prior art references raise a substantial new question of patentability is not itself a patentability decision. Once reexamination has been instituted, § 314 provides that the proceeding “be conducted according to the procedures established for initial examination under the provisions of sections 132 and 133.” Thus, a reexamination proceeds in the same way as the prosecution of a regular application, which does not require an Examiner “to evaluate proposed rejections to new claims added during reexamination for a substantial new question of patentability.” The Examiner erred in evaluating whether Knight and AFWAL 2060 raised a substantial new question of patentability when applied to new claims, presented after reexamination was under way. The Examiner’s erroneous evaluation could not bar Airbus’ cross-appeal to the PTAB.

In addition, the Court found that Airbus’s use of the AFWAL 2060 and Knight references “is necessary to rebut a response of the patent owner,” i.e., the addition of new claims. Because the Board incorrectly dismissed Airbus’s cross-appeal for lack of jurisdiction, the Court vacated and remanded.


Likelihood-of-Confusion Requires Full Consideration of Strengths and Weaknesses of Existing Mark

Juice Generation, Inc., v. GS Enterprises LLC , No. 2014-1853, 2015 U.S. App. LEXIS 12456 (Fed. Cir. Jul. 20, 2015) (Taranto, J.). Click Here for a copy of the opinion.

Juice Generation operates a chain of juice bars in New York City and applied to register a trademark consisting of “PEACE LOVE AND JUICE” and a design for use with its bar services. GS Enterprises (“GSE”) opposed this application, contending that the mark was likely to cause confusion with its own family of “PEACE & LOVE” trademarks, registered for restaurant services. The Trademark Trial and Appeal Board (“TTAB”) agreed with GSE that the marks were too similar and rejected Juice Generation’s application. Juice Generation appealed.

The Federal Circuit vacated and remanded the TTAB’s decision. The Court found that the TTAB gave inadequate consideration to the strengths and weaknesses of GSE’s marks. Specifically, the extent of third party use of phrases similar to “Peace & Love” (e.g., “Peace Love and Pizza” and “Peace Love and Popcorn”) should have been further considered in evaluating the strength of GSE’s marks. Here, such widespread third party use and registrations supports Juice Generation’s argument that “Peace & Love” carries a suggestive or descriptive connotation in the food service industry, and is weak for that reason. Further, the TTAB failed to compare Juice Generation’s three-word mark in its entirety against the two-word combination in GSE’s marks, instead focusing on the common use of “PEACE” & “LOVE.”   “While the [TTAB] may properly afford more or less weight to particular components of a mark for appropriate reasons, it must still view the mark as a whole.” Accordingly, the cases was remanded for the TTAB to provide adequate consideration of Juice Generation’s mark as a whole, along with consideration of evidence of third party use.


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