Intellectual Property Law

Patent ownership may change by operation of law, including operation of foreign law

Posted on March 31, 2008
In a decision today, the Federal Circuit vacated a district court's dismissal of a case for lack of standing on the basis of insufficient evidence of patent ownership.  The inventor of the patent died intestate as the only owner of the patent...

Patent for better mousetrap obvious, secondary indicia could not rebut "strong prima facie case"

Posted on March 31, 2008
In a decision Friday, the Federal Circuit addressed the issue of post-KSR obviousness and fraudulent misrepresentation. Regarding obviousness, the court held that the secondary indicia of nonobviousness simply could not overcome a "textbook case" of claims involving "a combination of familiar elements according to known methods that does no more than yield predictable results...

Patentee cannot recapture claim scope disavowed during prosecution to prove infringement

Posted on March 24, 2008
In a decision Friday, the Federal Circuit affirmed a district court's claim construction and its concomitant grant of summary judgment of noninfringement, as well as its denial of attorney fees under § 285.  The district court held the patentee had, during prosecution of the patent at issue, made a clear and unmistakable disavowal of claim scope, and as a result, under the doctrine of prosecution disclaimer, the accused devices could not fall within the scope of the claims...

§ 271(e) safe harbor applies to both product and method claims in ITC proceedings

Posted on March 19, 2008
In a ruling today, the Federal Circuit affirmed in part a decision by the International Trade Commission (ITC) concerning the application of 19 U.S.C. § 1337 and 35 U.S.C. § 271(e)(1) to imported products and products imported produced via a patented process...

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USPTO to modify requirements for withdrawal from representation effective May 12

Posted on March 18, 2008
In a notice released yesterday, the USPTO announced that it will be changing the requirements for an attorney or agent to withdraw from representation of a client in a patent matter before the Office.  Currently, the requirements for withdrawal are covered by 37 C...

15 different amendments proposed to Senate version of Patent Reform Act of 2007

Posted on March 14, 2008
The Patent Reform Act of 2007 (S.1145) keeps plodding along in the Senate.  Just over a month after the Senate Judiciary Committee released its report on the bill, there have now been 15 amendments circulated for possible consideration when the full Senate takes up the bill, with the potential for more to come before the bill is actually considered...

Section 121 safe harbor applies only to divisional, not continuation-in-part; later patent invalid

Posted on March 12, 2008
In a decision last week, the Federal Circuit construed the scope of § 121's allowances for subsequent patent applications directed toward nonelected inventions in response to a restriction requirement.  There were three patents at issue, one directed to pharmaceutical compounds, one to compositions containing those compounds, and a third covering methods of suing the compounds...

Second Circuit: Famous marks doctrine doesn't support NY unfair competition claim

Posted on March 05, 2008
In a recent decision, the Second Circuit decided the one outstanding issue from a case it had previously decided in March 2007 (previously blogged here), namely whether the "famous marks" doctrine the court held Congress has not yet incorporated into federal trademark law might support a New York common law claim for unfair competition...

Second Circuit: Statements made in settlement discussions admissible to prove estoppel

Posted on March 05, 2008
In a decision yesterday, the Second Circuit affirmed a jury's findings in a trademark infringement case between Polo Ralph Lauren and the U.S. Polo Association.  The jury found that one of the USPA's four marks was likely to cause confusion...

When DJ and infringement suits both filed, transfer factors determine appropriate forum

Posted on March 05, 2008
In a decision Friday, the Federal Circuit decided a case addressing the requirements for a declaratory judgment action post-MedImmune.  The court reversed and remanded a district court's decision that there was no declaratory judgment jurisdiction applying the pre-MedImmune reasonable apprehension of suit standard rejected by the Supreme Court...

Ninth Circuit: "Exclusive" license from only one copyright co-owner really a nonexclusive license

Posted on March 05, 2008
In a decision last week, the Ninth Circuit affirmed a district court's dismissal of a copyright infringement claim for lack of standing, as well as several related claims.  The plaintiff obtained an "exclusive" license for one of the exclusive rights from a single co-owner of several copyrighted works...

Dependent claim can be construed to be broader than independent claim based on prosecution history

Posted on March 03, 2008
In a decision last week, the Federal Circuit held a district court construed 1 of 2 claim terms correctly, and incorrectly concluded that prosecution history estoppel barred application of the doctrine of equivalents to a third claim term because the narrowing amendment was only tangentially related to the equivalent at issue...

Fifth Circuit affirms injunction against trademark infringement in Saudi Arabia

Posted on February 29, 2008
In a recent decision, the Fifth Circuit affirmed a district court's finding of infringement and disgorgement of profits, but increased the amount of profits awarded because the defendant failed to provide evidence of its costs to reduce the award...

Eleventh Circuit: One-Satisfaction Rule Applies to Copyright Infringement Awards

Posted on February 28, 2008
In a decision this week, the Eleventh Circuit reversed the decision of a district court, holding the "one-satisfaction rule" does apply to infringement claims under the Copyright Act.This appeal arose out of a jury award to copyright plaintiff of almost $1...

Post-verdict infringement royalty must take into account changed bargaining position of parties

Posted on February 28, 2008
In a decision Tuesday, the Federal Circuit addressed the issuance, stay, and subsequent dissolution of a permanent injunction.  Further, the court addressed how damages should be allocated from infringement during a stay.  The district court took the jury's reasonable royalty for pre-verdict infringement and trebled it to determine the applicable post-verdict royalty...

Seventh Circuit: Operating agreement permitted license of marks, so no trademark infringement

Posted on February 25, 2008
In its second trademark decision Friday, the Seventh Circuit clarified what is required for a party to be authorized to use another entity's trademarks.  In this case, the plaintiff—one of four founders of two LLC's designed to manage and control a restaurant in Chicago—alleged trademark infringement against the three other co-founders based on the co-founders' use of the trademarks and trade dress of the two LLC's in similar restaurants in New York and Las Vegas...

Seventh Circuit: Sanction of no damages for improper witness contact too severe compared to harm

Posted on February 25, 2008
In a decision Friday, the Seventh Circuit affirmed a jury verdict of trademark infringement, but reversed the district court's ruling holding the plaintiff had forfeited damages because of improper conduct towards a prospective witness. The court dealt with whether the burden of proof for the sanction was by clear and convincing evidence or as the district court concluded, by a mere preponderance of the evidence...

On-sale bar cannot be avoided by experimentation conducted by patentee's customer

Posted on February 25, 2008
In a decision Thursday, the Federal Circuit provided additional guidance on the on-sale bar of § 102(b).  In the case, the patentee developed a series of prototypes that were then sold to its customer, who then experimented with the prototypes and requested modifications to the prototypes...

Another preliminary injunction vacated on appeal, this time because of claim construction

Posted on February 22, 2008
For a second time this week, the Federal Circuit vacated a preliminary injunction entered by a district court.  This time, the court found the district court's claim construction too broad, and under the courts revised, narrower construction, found that the plaintiffs were not likely to succeed on the merits of the case...

Seventh Circuit: Dismissal with prejudice makes defendant "prevailing party" and eligible for fees

Posted on February 21, 2008
In a decision yesterday, the Seventh Circuit clarified what is required for a party to be considered a "prevailing party" in a copyright case, and therefore be eligible for an award of attorneys' fees under § 505.  In this case, the plaintiff asked for a voluntary dismissal without prejudice under Rule 41(a)(2), as the case had been pending for over a year...

Seizure of goods with counterfeit marks not an "embargo," so no CIT jurisdiction to challenge fine

Posted on February 21, 2008
In a decision this week, the Federal Circuit vacated the decision of the Court of International Trade (CIT) and remanded with instructions to dismiss the plaintiff's complaint for lack of subject matter jurisdiction.The case arose out of a civil fine levied against the plaintiff for importation of counterfeit goods...

Post-KSR obviousness arguments cast sufficient "doubt" on validity to vacate preliminary injunction

Posted on February 20, 2008
In a decision yesterday, the Federal Circuit vacated a preliminary injunction entered in the Northern District of Ohio enjoining the selling and copying of a product used to practice a method claimed in a patent.  In doing so, the Federal Circuit utilized of the traditional four–factor test for preliminary injunctions and specifically analyzed the first factor, likelihood of success on the merits...

USPTO proposes rules requiring deposit of biological material before publication of application

Posted on February 20, 2008
In today's Federal Register, the USPTO proposes rules that will alter when a deposit of biological material is required to be made when such a deposit is used to satisfy the requirements of 35 U.S.C. § 112.  Specifically, the proposed rule will require that a deposit, if necessary, be made before the application is published...

Federal Circuit to consider overruling State Street en banc

Posted on February 15, 2008
The Federal Circuit has, on its own motion, decided to hear a case en banc regarding the scope of patentable subject matter under § 101.  The case, In re Bilski (No. 2007-1130), was argued before a panel of the court on October 1, 2007, and deals with the patentability of methods that involve only mental steps...

Discovery needed to determine effect of employment agreement on patent ownership, but no jury trial

Posted on February 14, 2008
In a decision yesterday, the Federal Circuit remanded a case for further discovery, finding that the district court abused its discretion by denying jurisdictional discovery regarding patent ownership due to the "central relevance" of the information...

Request to stay injunction pending appeal may also be considered notice of appeal; estoppel bars DOE

Posted on February 12, 2008
In a decision yesterday, the Federal Circuit reversed a jury's verdict of infringement under the doctrine of equivalents.  The court had previously vacated-in-part and reversed-in-part the district court's earlier summary judgment of infringement, the result of which was the jury trial conducted by the district court...

Tenth Circuit: 1-800-SKI-VAIL does not infringe VAIL service mark

Posted on February 12, 2008
In a decision last week, the Tenth Circuit affirmed a district court's ruling in a trademark case in favor of the defendant, finding the defendant's use of the vanity telephone number "1-800-SKI-VAIL" for marketing services relating to the ski industry was not likely to be confused with the Plaintiff's service mark registration for "VAIL" encompassing the gamut of commercial recreational activities and accompanying amenities available in and around the Town of Vail, Colorado...

No en banc rehearing for case holding "signals" not patentable subject matter

Posted on February 11, 2008
In a precedential order today, the Federal Circuit denied a petition for rehearing en banc in In re Nuijten.  In that case, a panel of the court held that claims drawn to a "signal" did not fall into any of the statutory categories of patentable subject matter and were thus unpatentable under § 101...

All versions of MPEP now available on USPTO website

Posted on February 08, 2008
The USPTO has now made available all prior editions of the Manual of Patent Examining Procedure on its website here.  This is great news for those who have ever had to try to track down a version of the MPEP that was more than about 10 years old, as they had not previously been easily accessible online.

Motions for summary judgment in claim and continuation rules case taken under advisement

Posted on February 08, 2008
We've just received word that the hearing on the motions for summary judgment in the consolidated cases challenging the USPTO's claim and continuation rules has concluded, and the motions have been taken under advisement.  So, no ruling from the bench today, and no hint as to when a ruling might be expected.

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