Intellectual Property Law

Inducement not shown when accused product can work in an infringing way but doesn't have to

Posted on October 07, 2008
In a recent decision, the Federal Circuit affirmed the International Trade Commission's finding of noninfringement with respect to one patent but reversed and remanded on another.  At issue was whether the defendant had imported chipsets that infringed five of the plaintiff's patents in violation of 19 U...

General disclosure in prior art not enabling for specific pharmaceutical compound's use in treatment

Posted on October 07, 2008
In a decision last week, the Federal Circuit affirmed a district court's holding that a prior art patent was not enabling and thus did not anticipate the patent-in-suit.  Applying the In re Wands factors, the district court held undue experimentation would be required in order to produce the claimed invention based on the prior art's disclosure...

Advice of counsel evidence still relevant to intent to induce infringement

Posted on October 06, 2008
In a recent decision, the Federal Circuit affirmed a jury's finding of infringement of two patents and the related injunction, but reversed the district court's claim construction and the concomitant finding of infringement regarding a third patent...

Expert's internally inconsistent testimony could not support jury's infringement verdict

Posted on October 06, 2008
In a decision last week, the Federal Circuit reversed a district court's denial of judgment as a matter of law after a jury returned a verdict of infringement.  The Federal Circuit held the jury's verdict was not supported by substantial evidence, and that the plaintiffs' expert's opinions contradicted his factual testimony, and was thus incapable of supporting the jury's verdict of infringement...

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Inventor testimony regarding intent during patent prosecution irrelevant to claim construction

Posted on September 29, 2008
In a recent decision, the Federal Circuit vacated a stipulated judgment of noninfringement on claim construction grounds.  The construction issue dealt with the significance of a limitation that applied to an "at least one" element.  Specifically, the relevant claim required "at least one condylar element," where "the condylar element" had certain features...

USPTO announces trademark consistency pilot program

Posted on September 29, 2008
In a notice today, the USPTO announced a new trademark consistency initiative.  Under the new initiative, applicants who believe a substantive or procedural issue has been addressed in a "significantly different manner" in two applications may raise the issue for consistency review...

Third Circuit: False endorsement claims use modified likelihood of confusion analysis

Posted on September 29, 2008
In a recent decision, the Third Circuit vacated a district court's grant of summary judgment to the plaintiff in a § 43(a) false endorsement case, but affirmed the plaintiff's summary judgment win as to the state law right of publicity claims...

Federal Circuit affirms district court's decision setting aside $1.5 billion infringement verdict

Posted on September 26, 2008
In a decision yesterday, the Federal Circuit affirmed a district court's grant of judgment as a matter of law based on lack of standing for one patent and non-infringement of a second patent.  A jury awarded $1,538,056,702 in damages for infringement, but, as a result of the JMOL, the district court set aside the damages award...

Second Circuit: MLB collective trademark licensing does not violate Sherman Act

Posted on September 26, 2008
In a recent decision, the Second Circuit affirmed a district court's summary judgment to the defendant in an antitrust case regarding trademark licensing.  The case involved the collective licensing setup of Major League Baseball Properties ("MLBP")...

Second Circuit: If you want a court to order the USPTO, ask in your pleadings, not after you win

Posted on September 25, 2008
In a recent decision, the Second Circuit affirmed a district court's decision in a trademark case not to enter an order pursuant to 15 U.S.C. § 1119.  § 1119 permits a court to enter an order regarding registrability and cancellation of marks at the USPTO...

Ninth Circuit: Absent evidence of intent to the contrary, custom software purchaser retains license

Posted on September 25, 2008
In a recent decision, the Ninth Circuit affirmed a district court's decision that a software developer's delivery of customized software includes a grant of an unlimited, non-exclusive, implied license to use, modify, and retain the source code of the programs in the absence of written agreements to the contrary...

When factual inquiries underlying obviousness determination disputed, summary judgment improper

Posted on September 25, 2008
In a decision Friday, the Federal Circuit affirmed a district court's summary judgment of no anticipation, no invalidity for failure to comply with the written description requirement, and infringement, but reversed the district court's summary judgment of no invalidity based on obviousness...

Patent exhaustion does not create a cuse of action; dismissal affirmed

Posted on September 24, 2008
In a decision last week, the Federal Circuit affirmed a district court's decision dismissing a case for lack of subject matter jurisdiction.  The plaintiff brought suit when it believed the patent holder had fraudulently concealed a second licensee of the same patents...

Eleventh Circuit: No DJ jurisdiction in copyright case when copyright unregistered

Posted on September 24, 2008
In a recent decision, the Eleventh Circuit vacated a district court's grant of summary judgment in a copyright infringement declaratory judgment action.  The court determined that the district court was without subject matter jurisdiction to entertain the alleged infringer's declaratory judgment action...

Assertions of infringment at trade show sufficient to confer personal jurisdiction in DJ action

Posted on September 24, 2008
In a recent decision, the Federal Circuit reversed a district court's order dismissing a case for lack of personal jurisdiction.  The plaintiff brought a declaratory judgment action against the defendant patent holder in Washington.  After sending a letter accusing the plaintiff of infringing two patents, the patent holder attempted to get the plaintiff's display removed from a trade show in Seattle and told potential customers the plaintiff had copied their patent...

Improper revival cannot be raised as grounds for invalidity in an infringement action

Posted on September 23, 2008
In a decision yesterday, the Federal Circuit reversed a district court's summary judgment of invalidity.  The district court held that the application that led to the patent-in-suit was abandoned, and the USPTO improperly revived it, rendering the patent invalid...

Seventh Circuit: Several likelihood of confusion factors favored plaintiff, no summary judgment

Posted on September 22, 2008
The Seventh Circuit recently reversed a district court's summary judgment for the defendant in a trademark infringement case.  The district court held no reasonable fact finder could find the marks likely to be confused.On appeal, the Seventh Circuit reminded us that the test for likelihood of confusion is not simply whether consumers will confuse two marks, but whether upon viewing the junior mark a consumer will be likely to associate the product or service with the source of the products or services of the senior mark...

En banc Federal Circuit scraps point of novelty test for design patent infringement

Posted on September 22, 2008
In an en banc decision this morning, the Federal Circuit has unanimously held that the "point of novelty" test for design patent infringement should no longer be applied.  As stated by the court:[W]e hold that the "point of novelty" test should no longer be used in the analysis of a claim of design patent infringement...

Seventh Circuit reverses trademark damages award in default judgment because wrong standard applied

Posted on September 22, 2008
The Seventh Circuit recently reversed the amount of damages in a district court's entry of default judgment in a trademark infringement dispute.  At issue was whether the Plaintiff was entitled to additional relief on the grounds that the district court applied the wrong standard to its claim for an accounting of profits...

Disclosure of gene from one bacterial source cannot support claims to gene from any bacterial source

Posted on September 22, 2008
In a recent decision, the Federal Circuit affirmed a district court's grant of summary judgment of non-infringement and invalidity of various claims of three patents.  The district court held no genuine issue of fact existed regarding noninfringement or invalidity under the written description requirement...

Demonstration of product at trade show didn't meet all claim limitations; no personal jurisdiction

Posted on September 17, 2008
In a decision Tuesday, the Federal Circuit affirmed the dismissal of a patent infringement claim for lack of personal jurisdiction.  The alleged infringer showed the allegedly infringing product at a trade show in DC, which led the plaintiff to file suit there...

Prior court decision of no invalidity based on prior art reference doesn't bar reexamination

Posted on September 17, 2008
The Federal Circuit recently construed the scope of the revised reexamination statute, 35 U.S.C. § 303, specifically what is required for a "substantial new question of patentability."  In this case, the relevant reference was cited during the initial examination of the application that led to the patent under reexamination, but as a supporting reference...

Patent claims not at issue at trial can't be found invalid, even if mentioned in complaint

Posted on September 15, 2008
In a recent decision, the Federal Circuit reversed much of a district court's finding of willful infringement of a plaintiff's patents, tortious interference with the plaintiff's business relationships, and invalidity of the defendant's patents...

Covenant not to sue removes jurisdiction despite lingering Hatch-Waxman exclusivity issues

Posted on September 15, 2008
In a recent decision, the Federal Circuit affirmed a district court's decision involving declaratory judgment jurisdiction in the context of abbreviated new drug applications (ANDAs) and a related covenant-not-to-sue involving one patent at issue...

Tenth Circuit: District court's internally inconsistent findings lead to remand

Posted on September 12, 2008
In a decision last week, the Tenth Circuit reversed a district court's ruling of no trademark infringement.  The district court, applying the Tenth Circuit's six likelihood of confusion factors, initially stated that three factors favored the plaintiffs, two were neutral, and one favored the defendants, but in its conclusion, stated that only one factor favored the plaintiff, with the remainder of the factors neutral or favoring the defendants...

Ninth Circuit: First sale doctrine doesn't apply to goods purchased abroad and imported to US

Posted on September 10, 2008
In a decision last week, the Ninth Circuit reversed a district court's grant of summary judgment to a copyright defendant on the basis of the "first sale" doctrine, codified at 17 U.S.C. § 109(a).  The defendant obtained the products bearing the copyright from a third party who legally purchased them outside the United States...

No evidence of intent to deceive, no inequitable conduct

Posted on September 10, 2008
In a recent decision, the Federal Circuit reversed a district court's grant of summary judgment of inequitable conduct against the patentee.  At issue was whether the patentee's failure to disclose a letter describing an aspect of the prior art constituted inequitable conduct...

First Circuit: Don't expect to win on appeal if you admit 7 of 8 likelihood of confusion factors

Posted on September 02, 2008
In a decision Friday, the First Circuit affirmed a district court's summary judgment of trademark infringement and an associated award of the defendant's profits and attorney fees to the plaintiff.  The defendant used the plaintiff's registered marks in both the metatags of its website as well as in white text on a white background in the body of the site in an effort to cause consumers searching for the plaintiff's marks on an internet search engine to be more likely to go to the defendant's website instead...

Clinical trials necessary to determine invention works for intended purpose

Posted on August 27, 2008
In a recent decision, the Federal Circuit affirmed a district court's ruling in favor of AstraZeneca, holding that the generic drug manufacturers Apotex and Impax Laboratories infringed patents for the popular heartburn medication Prilosec® (generic form omeprazole) in filing abbreviated new drug applications (ANDAs)...

Federal Circuit: The difference between substantial cure and full cure is not insubstantial

Posted on August 22, 2008
In a decision yesterday, the Federal Circuit affirmed a grant of summary judgment of anticipation and obviousness.  While the court disagreed with the district court's conclusion that the prior art expressly anticipated the asserted claims as a matter of law, the court did conclude that the prior art inherently disclosed the relevant limitations as a matter of law...

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