Spotlight on Upcoming Oral Arguments – June 2016

Tuesday June 7, 2016

Unwired Planet v. Google, No. 15-1812, Courtroom 402

Unwired Planet appeals the PTAB’s holding that the challenged patent qualifies for CBM review and is unpatentable under the abstract ideas exception to § 101. Unwired Planet argues that the patent is not a financial patent, but instead concerns “a method of limiting access to a mobile telephone user’s location information using a specific type of subscriber profile.” It also argues that it does not claim an abstract idea but rather provides a concrete and limited solution to privacy concerns resulting from the availability of location-based services on mobile phones and wireless communication devices.

Wednesday June 8, 2016

Christian Faith Fellowship v. Adidas, No. 16-1296, Courtroom 402

Christian Faith Fellowship (“CFF”) appeals the TTAB’s decision cancelling its two trademark registrations (1) for the mark ADD A ZERO and (2) for the stylized design of the phrase ADD A ZERO. The TTAB determined that CFF’s nonuse of the marks in commerce before the filing dates of CFF’s use-based applications justified cancellation. CFF argues that the sale of two hats bearing the marks to an out-of-state customer is sufficient as a “use in commerce” under the Lanham Act and that the Board should not have dismissed the sale as de minimis.

Thursday June 9, 2016

Synopsys v. Mentor Graphics, No. 15-1599, Courtroom 201

In this appeal, the Federal Circuit will consider whether arguably novel methods that enable a computer to synthesize a human designer’s descriptions of the operational characteristics of complex logic circuits into a netlist without requiring the designer to have detailed knowledge of the logic circuits or specify the hardware components for implementing those circuits are ineligible mental processes under § 101 because they could be performed with pencil and paper. Synopsys argues that the novelty of the method supports a finding that it is not an abstract idea and, alternatively, the novelty of the method steps provides the inventive concept to make the claims patent eligible.

Mentor Graphics v. EVE-USA, No. 15-1470, Courtroom 201

In this appeal, the Federal Circuit will consider whether patent infringement damages based on lost profits requires apportionment to only the patented features unless the patentee satisfies the “entire market value rule.” Several amici, including HP, Netgear, Oracle America, and Safeway, argue that the Federal Circuit should require apportionment of lost profits damages and should either abolish the entire market value rule or at least confirm that the entire market value rule only applies where the patented features are the entire basis for customer demand of the final product.

The court will also consider the issues of assignor estoppel and willful infringement because the inventor assigned the patent to Mentor while under Mentor’s employ and is now an executive at Synopsys, who acquired EVE-USA, voiding the licensing agreement between Mentor and EVE-USA.

Friday June 10, 2016

In re Zhang, No. 15-1995, Courtroom 201

This appeal asks the Federal Circuit to consider whether the written description requirement necessitates that the original disclosure provide a basis for a negative limitation in a claim. The PTO argues the written description requirement was not met in Zhang’s application, which claimed non-coated yarn, because the language “non-coated” was never set forth in the specification as originally filed.

*Caroline Herald is a Law Clerk at Finnegan
**Tyler Latcham was a Summer Associate at Finnegan