Intellectual Property Law

Ninth Circuit: Heirs of "Pink Panther" coauthor do not retain interest in copyright in the films

Posted on June 25, 2008
In a decision last week, the Ninth Circuit affirmed the district court's grant of summary judgment in a copyright case, holding that a coauthor of a story treatment is not necessarily a coauthor of a motion picture produced based on that treatment, and the factors applied to determine coauthorship led to the conclusion that the coauthor of the treatment was not a coauthor of the motion picture...

First Circuit: District court's determination that "duck tour" is nongeneric doesn't hold water

Posted on June 24, 2008
In a lengthy decision last week, the First Circuit held a district court erred in finding the term "duck tour" nongeneric in the context of sightseeing tours on amphibious vehicles.  The district court, based largely on the nongenericness of this aspect of the parties' marks, found the plaintiff was likely to succeed in its infringement claims, and entered a preliminary injunction...

Claim construction and finding of noninfringement affirmed

Posted on June 20, 2008
In a decision Wednesday, the Federal Circuit affirmed a district court's claim construction and grant of summary judgment of non-infringement.  The patent holder's proposed claim interpretation relied heavily on means-plus-function language and an embodiment in the specification not covered by the claim construction...

Tenth Circuit: Digital model of car not separately copyrightable because no originality

Posted on June 19, 2008
In a decision this week, the Tenth Circuit affirmed a district court's grant of summary judgment in favor of the defendants in a copyright case, finding a digital work lacking sufficient originality to warrant copyright protection.  The works at issue were three-dimensional computer models of cars for use in advertisements...

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Ninth Circuit: Patent law terms in employment agreement should be given patent law definitions

Posted on June 19, 2008
In a recent decision, the Ninth Circuit held a district court's jury instructions regarding construction of the patent ownership provisions of an employment agreement erred in applying contract law rather than patent law.  The court determined that jury instructions defining the terms "conceive," "reduce to practice," and "Work of Dr...

Litigation misconduct and inequitable conduct lead to exceptional case, fees for defendant

Posted on June 18, 2008
In a decision yesterday, the Federal Circuit affirmed an award of attorneys' fees for a prevailing defendant in an infringement case.  The district court held the case was exceptional under § 285 because the patent holder had engaged in inequitable conduct (a finding previously affirmed), asserted frivolous claims, and engaged in litigation misconduct...

Three sentences insufficient to explain why a case is exceptional

Posted on June 17, 2008
In a decision yesterday, the Federal Circuit vacated an award of attorney fees under § 285.  The district court only provided a three-sentence explanation as to why the case was exceptional.  The Federal Circuit found this insufficient, as there was no explanation of the facts underlying the findings made by the court...

Eleventh Circuit: Unsolicited proposals insufficient to show intent to resume use of trademark

Posted on June 16, 2008
In a decision Friday, the Eleventh Circuit affirmed a district court's grant of summary judgment in favor of the defendant, finding the plaintiff had abandoned its trademarks.  Although the complaint consisted of both federal and state common law claims, the analysis ultimately came down to whether a valid Lanham Act claim existed, as the remaining claims were based on the alleged § 1125 claims...

Ninth Circuit: No statutory damages for continuing infringement that began before registration

Posted on June 16, 2008
In a decision last week, the Ninth Circuit reversed a district court's award of statutory damages for copyright infringement and affirmed the district court's default judgment award of attorney's fees for trademark infringement.  The plaintiff's copyright registration had an effective date of approximately one month after the first act of infringement, and nearly two years after first publication...

USPTO publishes two new proposed rules packages for trademark cases

Posted on June 12, 2008
Today's Federal Register brings with it two sets of proposed rule changes from the USPTO, both dealing with prosecution of trademark cases.The first, entitled "Changes in Requirements for Signature of Documents, Recognition of Representatives, and Establishing and Changing the Correspondence Address in Trademark Cases," addresses the requirements for powers of attorney and similar documents in trademark applications, and also requirements for applicants not represented by an attorney...

Legal owner responsible for timely payment of maintenance fees, equitable owner out of luck

Posted on June 11, 2008
In a decision yesterday, the Federal Circuit affirmed a district court's grant of summary judgment upholding the USPTO's denial of a request to reinstate a patent for failure to pay maintenance fees. The patentee had assigned his invention to his employer, who had subsequently allowed the patent to expire due to non-payment of the maintenance fee...

Patent litigation by the numbers

Posted on June 11, 2008
PricewaterhouseCoopers recently published its annual litigation study entitled 2008 Patent Litigation Study:  Damages awards, success rates and time-to-trial. The study examined a wide range of variables pertaining to patent litigation from 1995 to 2007...

Roundup of media coverage of Quanta v. LG decision

Posted on June 10, 2008
The media and legal blogs have begun to weigh in on yesterday's decision in Quanta Computer, Inc. v. LG Electronics, Inc. , holding method claims can be exhausted by the sale of a product substantially embodying the claim.  Click below for a sampling of the coverage from various sources...

USPTO publishes new rules for ex parte appeals before the BPAI

Posted on June 10, 2008
In today's Federal Register, the USPTO has posted revised rules of practice for ex parte appeals before the Board of Patent Appeals and Interferences.  These are the final version of the rules initially proposed nearly a year ago.  The rules were hinted at in a press release issued by the USPTO yesterday, and now we have the full details of the new rules...

Quanta v. LG: Method claims can be exhausted; harder to assert infringement later in distribution

Posted on June 09, 2008
The Supreme Court today decided Quanta Computer, Inc. v. LG Electronics, Inc., dealing with the doctrine of patent exhaustion (also called the first sale doctrine).  In a nutshell, the Court made it more difficult for patent holders to maintain a claim for infringement down the distribution chain of a product...

Today's opinion in Quanta v. LG now available

Posted on June 09, 2008
The opinion of the Court in Quanta Computer, Inc. v. LG Electronics, Inc. is now available here.Thanks to SCOTUSBlog for making a copy of the decision available online.Update (10:45):  The closing paragraph of the decision is a good, concise summary:The authorized sale of an article that substantially embodies a patent exhausts the patent holder’s rights and prevents the patent holder from invoking patent law to control postsale use of the article...

Suprme Court provides unanimous decision in Quanta v. LG: Federal Circuit reversed

Posted on June 09, 2008
This morning the Supreme Court decided Quanta v. LG, reversing the Federal Circuit's decision.  We'll post a link to the decision (written by Justice Thomas) as soon as it's available.

Partially does not include totally, judgment of noninfringement affirmed

Posted on June 05, 2008
In a decision yesterday, the Federal Circuit affirmed a district court's claim construction and its related judgment of noninfringement.  The court declined to import a meaning which went against the plain meaning of the disputed term, and stated if the patentee had intended such a meaning, it should have done so explicitly...

No lost profits when patent owned by parent but practiced by subsidiary

Posted on June 04, 2008
In a decision this week, the Federal Circuit affirmed a district court's grant of summary judgment in the damages phase of a patent infringement case denying recovery for lost profits.  The patentee's wholly-owned subsidiary actually practiced the claimed invention, but the subsidiary paid a standard license royalty to the patentee for use of the invention, and the subsidiary's profits did not "flow inexorably" to the patentee...

Claim construction from different case against different defendant applies in subsequent case

Posted on June 03, 2008
In a decision yesterday, the Federal Circuit affirmed a district court's construction of a patent claim in an infringement case. However, the court vacated the district court's grant of summary judgment of noninfringement and remanded. The Federal Circuit held that a prior interpretation of the claim in a suit against a different alleged infringer required the claim construction adopted by the district court...

USPTO proposes fee increases for Fiscal 2009

Posted on June 03, 2008
In a Federal Register notice today, the USPTO has proposed fee increases for its Fiscal Year 2009, which begins October 1, 2008.  The increases are based on the projected Consumer Price Index for the period ending September 30, 2008, which is 4%...

Tenth Circuit: No trademark infringement, unfair competition, or cybersquatting by parody sites

Posted on June 02, 2008
In a decision last week, the Tenth Circuit affirmed a district court's grant of summary judgment finding no trademark infringement, no unfair competition, and no cybersquatting.  The district court held, and the Tenth Circuit affirmed, that none of the three elements of a trademark infringement action was proven, namely that the mark was not protectable, the defendant's use was not in connection with goods or serivces, and that the successful parody showed there was no likely confusion...

Second prong of declaratory judgment jurisdiction test survived MedImmune

Posted on May 29, 2008
In a decision yesterday, the Federal Circuit affirmed a district court's grant of summary judgment of noninfringement and its related finding that the court had declaratory judgment jurisdiction.  The court, for the first time since the Supreme Court's MedImmune decision, addressed the second prong of its pre-MedImmune declaratory judgment test...

Fifth Circuit passes on eBay's applicability in trademark cases

Posted on May 29, 2008
In a decision last week, the Fifth Circuit affirmed a district court's conclusion it had subject matter jurisdiction over a trademark case, as well as its grant of a preliminary injunction.  While the activities giving rise to the claim of trademark infringement took place in Mexico, they had a "substantial effect" on United States commerce, and thus were within the court's subject matter jurisdiction...

Highlights from Drake Law School Summer Institute in Intellectual Property, Biotech, and Ag Sciences

Posted on May 21, 2008
The Drake University Law School Summer Institute in Intellectual Property, Biotechnology, and Agricultural Sciences was held in Johnston, Iowa on May 19-20.  The event, sponsored by Pioneer Hi-Bred International, addressed diverse topics including the impact of recent U...

New appeallate counsel insufficient reason to consider arguments not raised before district court

Posted on May 21, 2008
In a decision today, the Federal Circuit affirmed a district court's decision finding two claims of a patent anticipated.  The district court, adopting a magistrate judge's Report and Recommendation, held that the claims were invalid and granted summary judgment...

Eleventh Circuit combs over copyright law, idea-expression dichotomy in affirming noninfringement

Posted on May 16, 2008
In a decision this week, the Eleventh Circuit upheld the district court's decision granting summary judgment of no copyright infringement to individuals and entities associated with two Trump buildings and denying the plaintiff leave to file a third amended complaint...

Intrinsic evidence supported pre-Phillips claim construction; finding of noninfringement affirmed

Posted on May 15, 2008
In a decision yesterday, the Federal Circuit affirmed a district court's finding of noninfringement.  The only disputed issue was one of claim construction.  Although the district court issued its claim construction ruling before the Federal Circuit's Phillips decision and relied exclusively on a definition from a technical dictionary for its construction of the relevant term, the Federal Circuit still upheld the finding of noninfringement...

Priority claim contained in data sheet and appended via certificate of correction valid

Posted on May 15, 2008
In a decision yesterday, the Federal Circuit vacated a district court's denial of a preliminary injunction.  The district court denied the injunction on the basis of a substantial question of validity of the patent.  The accused infringer alleged the patent was invalid under 35 U...

No claim preclusion unless second accused product essentially the same as product in first suit

Posted on May 14, 2008
In a Tuesday decision, the Federal Circuit reversed a district court finding that a patent infringement suit was barred by claim preclusion.  At issue was whether a claim for patent infringement was barred under the doctrine of claim preclusion when that claim could have been brought in a prior case...

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