Willamette Law Online

Intellectual Property

2011

( 19 summaries )

August

In re NTP, Inc.

Patents: Upon reexamination claims are to be given their broadest reasonable interpretation consistent with the specification in light of the specification as it would be interpreted by one of ordinary skill in the art; a printed publication qualifies as prior art if one of ordinary skill in the art would have located the source after a reasonable search; uncorroborated testimony cannot be relied upon to establish a prior reduction-to-practice or conception date.

(Filing Date: 08-01-2011)

In re NTP, Inc.

Patents: A patent cannot claim the priority date of a previous application if the patent introduces new subject matter; as of 2002, during reexamination an examiner can consider any “substantial new question of patentability” and there is no longer a presumption of full consideration of cited sources during initial examination.

(Filing Date: 08-01-2011)

CBT Flint Partners, LLC v. Return Path, Inc., and Cisco Ironport Systems, LLC

Patents: When an obvious error is present, a court must consider reasonable interpretations of a patent claim from the point of view of one skilled in the art.

(Filing Date: 08-10-2011)

MHL Tek, LLC v. Nissan Motor Co. and Nissan North America, Inc., and Hyundai Motor Co.

Patents: The scope of a patent assignment determines whether an assignee has the requisite standing to assert patent infringement.

(Filing Date: 08-10-2011)

Curington and Brooks v. UMG Recordings, Inc.

Copyright: Registration of a copyright is a precondition to filing a claim of copyright infringement, without which, the claim is subject to dismissal.

(Filing Date: 08-12-2011)

Cybersource Corporation v. Retail Decisions, Inc.

Patents: A method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible because computational methods that can be performed entirely in the human mind embody basic tools of scientific work that are free to all men and reserved exclusively to none.

(Filing Date: 08-16-2011)

Derek Seltzer v. Green Day, Inc.

Trademarks: An image must be used in commerce in order to qualify as a trademark under the Lanham Act.

(Filing Date: 08-18-2011)

Lorillard Tobacco Company v. Zoom Enterprises, Inc.

Trademarks: A trademark's dilution can be inferred when the junior and senior marks are identical and found on products being sold together.

(Filing Date: 08-18-2011)

AK Steel Corp. v. Donald Earley

Trade Secrets: When a plaintiff makes a claim of trade secret infringement they must specifically identify what the trade secret information is; conclusory statements about trade secret infringement will be put aside by the court.

(Filing Date: 08-19-2011)

August Technology Corporation and Rudolph Technologies, Inc. v. Camtek, Ltd.

Patents: In determining the claim construction of a term within a patent the court will consider a ambiguous term to be defined by language within the claim or preamble and will note distinctions within the language of the claim; in order to have an on sale bar the invention must have been conceived at the time of the offer for sale.

(Filing Date: 08-22-2011)

Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc.

Patents: To determine whether an interference is required between two patents under 35 U.S.C. § 291 the court should apply a “two-way test” requiring that each patent, if prior art, would anticipate or render obvious the other patent.

(Filing Date: 08-23-2011)

Unigene Laboratories, Inc. and Upsher-Smith Laboratories, Inc. v. Apotex, Inc. and Apotex Corp.

Patents: Obviousness requires the showing that a person of ordinary skill at the time of the invention would have selected and combined prior art elements in the normal course of research and development to yield the claimed invention.

(Filing Date: 08-25-2011)

Progressive Products, Inc. v. Swartz

Trade Secrets: A plaintiff must prove trade secrets were not available by proper means and that reasonable efforts were made to maintain the secrecy in order to prevail on a misappropriation claim.

(Filing Date: 08-26-2011)

Star Scientific, Inc. v. R.J. Reynolds Tobacco Company (a North Carolina Corporation) and R.J. Reynolds Tobacco Company (a New Jersey Corporation)

Patents: When claiming priority of a provisional application, the disclosure of best mode required is the best mode contemplated at the time of the provisional application; “a construed claim can be indefinite if the construction remains insolubly ambiguous, meaning it fails to provide sufficient clarity about the bounds of the claim to one skilled in the art,” but may be definite if “discerning the meaning is a formidable task and the conclusion may be one over which reasonable persons will disagree.”

(Filing Date: 08-26-2011)

In re Keisuke Aoyama, Kojiro Toyoshima, and Yoshitaka Ezaki

Patents: A lower court's decision may be affirmed on alternative grounds, but under 37 C.F.R. §41.50(b) a patent applicant may subsequently be allowed to amend claims or offer new evidence not previously of record to overcome the new ground of rejection.

(Filing Date: 08-29-2011)

Nielsen Co. v. Truck Ads, LLC

Copyright: In order for an item to qualify for a valid copyright it only needs to have a small amount of originality.

(Filing Date: 08-29-2011)

Kim Seng Co. v. J & A Imps., Inc.

Copyright: In order for a plaintiff to prevail on a copyright infringement claim, the item in question must be creative or original enough to qualify for copyright protection.

(Filing Date: 08-30-2011)

AIA Engineering Limited and Vega Industries, Ltd., Inc. v. Magotteaux International S/A and Magotteaux, Inc.

Patents: Impermissible recapture under 35 U.S.C. §251 is not implicated unless a patentee attempts to regain subject matter deliberately surrendered during the original patent prosecution.

(Filing Date: 08-31-2011)

Classen Immunotherapies, Inc. v. Biogen IDEC

Patents: Inclusion of a physical step may allow an otherwise ineligible process, machine, manufacture, or composition of matter to pass the §101 threshold and remain patent-eligible.

(Filing Date: 08-31-2011)

( 12 summaries )

September

Eliyahou Harari, Robert D. Norman, and Sanjay Mehrotra v. Roger Lee and Fernando Gonzalez, and Andrei Mihnea, Jeffrey Kessenich, and Chun Chen

Patents: Unequivocal language may be used to incorporate the disclosure of a previous patent application.

(Filing Date: 09-01-2011)

Habersham Plantation Corporation v. Art & Frame Direct, Inc.

Trademarks: Court granted summary judgment because plaintiff failed to provide proof of actual confusion.

(Filing Date: 09-08-2011)

Markem-Imaje Corporation v. Zipher LTD. and Videojet Technologies, Inc.

Patents: Patent claims need not recite every component necessary to enable operation of a working device, though a device will only operate if certain elements are included, that is not grounds to incorporate those elements into the construction.

(Filing Date: 09-09-2011)

Ultramercial, LLC and Ultramercial, Inc. v. Hulu, LLC and WildTangent, Inc.

Patents: With the exceptions of laws of nature, physical phenomena, and abstract ideas, the court should determine patentability of subject matter based on 35 U.S.C. §§ 102, 103, and 112 rather than 35 U.S.C. § 101; The application of an abstract idea may be patentable subject matter.

(Filing Date: 09-15-2011)

In re Phyllis Leithem, Charles A. Kremers, W. Paul Harrell, Stephen Lewis, Karl D. Sears, Quan He, and Peter R. Abitz

Patents: Applicants must have an opportunity to respond to the thrust of a patentability rejection.

(Filing Date: 09-19-2011)

Ditocco v. Riordan

Copyright: Defendant's novels and movie adaptation about a teen demigod descended from Poseidon were not substantially similar to the Plaintiffs novels about a teenage boy descended from Perseus as a matter of law.

(Filing Date: 09-20-2011)

Remark, LLC v. Adell Broadcasting Company

Trademarks: Trademark infringement can only occur when the goods themselves confuse the public as to their origins, not when the copyrighted material therein is incorporated into a good.

(Filing Date: 09-20-2011)

Monsanto Company and Monsanto Technology LLC v. Vernon Hugh Bowman

Patents: When dealing with self-replicating technology, the doctrine of patent exhaustion does not bar an infringement action.

(Filing Date: 09-21-2011)

Cordance Corporation v. Amazon.com, Inc.

Patents: A general jury verdict of invalidity will be upheld when there is sufficient evidence to support alternative theories of invalidity.

(Filing Date: 09-23-2011)

Marine Polymer Technologies, Inc. v. HemCon Inc.

Patents: PATENTS; INTERVENING RIGHTS (Doctrine of equitable intervening rights protects an accused infringer's ability to make, sell, offer to sell, or use particular items that are covered by a reexamined patent, provided that the items are of the same type that the accused infringer had made, purchased, or used before the reexamination.)

(Filing Date: 09-26-2011)

Apple Inc. v. Psystar Corp.

Copyright: COPYRIGHT; MISUSE (It is not misuse when a copyright holder limits the right to use their work.)

(Filing Date: 09-28-2011)

Cordis Corp. v. Boston Scientific

Patents: Patent infringement analysis is a two-step inquiry: first, the court determines the scope and meaning of the patent claims asserted, and then the properly construed claims are compared to the allegedly infringing device.

(Filing Date: 09-28-2011)

( 10 summaries )

October

Bettcher Industries, Inc. v. Bunzl USA, Inc., and Bunzl Processor Distribution, LLC

Patents: Estoppel under 35 U.S.C. § 315 only applies after all appeal rights have been exhausted; inherency argument of infringement is only applicable where prior art necessarily functions as the challenged patent.

(Filing Date: 10-03-2011)

John Mezzalingua Associate, Inc. v. International Trade Commission

Patents: The domestic industry requirement of section 337 of 19 U.S.C. § 1337 can be fulfilled in any one of three ways: 1. significant investment in plant and equipment; 2. significant employment of labor or capital; or 3. substantial investment in its exploitation, including engineering, research and development, or licensing.

(Filing Date: 10-04-2011)

In Re Stepan Company

Patents: A rejection by the Board of Patent Appeals and Interferences based on new grounds not considered by the examiner cannot be the final judicial ruling.

(Filing Date: 10-05-2011)

Atlantic Research Marketing Systems, Inc. v. Stephen P. Troy Jr. and Troy Industries, Inc.

Patents: A patent must contain “a written description of the invention, and of the manner and process of making and using it, in such full clear, concise, and exact terms as to enable any person skilled in the art … to make and use the same” and it must “reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.”

(Filing Date: 10-06-2011)

IGT v. Bally Gaming International, Inc., Bally Technologies, inc., and Bally Gaming, Inc.

Patents: The rules of claim construction include: 1. “The words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history,” unless the patentee “clearly set[s] forth a definition of the disputed claim term other than its plain and ordinary meaning;” 2. The “claim language must be construed in the context of the claim in which it appears;” and 3. “A claim is only indefinite if it is not amenable to construction or is insolubly ambiguous.”

(Filing Date: 10-06-2011)

Absolute Software, Inc. and Absolute Software Corporation v. Stealth Signal, Inc. and Computer Security Products, Inc.

Patents: A patentee's consistent use of the phrase "present invention" or "this invention" does not always limit the scope of the entire invention, particularly where other intrinsic evidence does not support applying the limitation to the entire patent.

(Filing Date: 10-11-2011)

Tianrui Group Company Ltd. v. ITC

Trade Secrets: Under the Tariff Act, when the divulgement of a trade secret occurs extraterritorially U.S. Trade Secret law can still be applied.

(Filing Date: 10-11-2011)

Robert Bosch LLC v. Pylon Manufacturing Corp., LLC

Patents: A presumption of irreparable harm no longer applies when determining whether injunctive relief is appropriate in a suit for patent infringement.

(Filing Date: 10-13-2011)

Field Turf Builders, LLC v. Fieldturf USA, Inc.

Trade Secrets: One cannot claim a trade secret if it was not maintained as a secret.

(Filing Date: 10-14-2011)

Streck, Inc. v. Research and Diagnostic Systems, Inc.

Patents: For purposes of determining priority of an invention, to establish an actual reduction to practice, it is necessary to show that the claimant had possession of the subject matter and that it was shown or known to work for its intended purpose.

(Filing Date: 10-20-2011)

( 5 summaries )

November

Lorillard Tobacco Company vs. Hamden, Inc.

Trademarks: When counterfeit products are sold in direct competition with a product they will be found to have a significant impact on interstate commerce.

(Filing Date: 10-21-2011)

Typhoon Touch Technologies, Inc. v. Dell, Inc.

Patents: For computer-implemented procedures, the actual computer code does not need to appear in the specification, the algorithm may be described in words sufficient to allow one of ordinary skill in the art to implement the algorithm.

(Filing Date: 11-04-2011)

Michael S. Powell v. The Home Depot U.S.A., Inc.

Patents: “A willful infringement determination requires” that “a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement” and if that is met that the “objectively-defined risk was either known or so obvious that it should have been known to the accused infringer”

(Filing Date: 11-14-2011)

Belair v. MGA Entertainment, Inc.

Copyright: In order to succeed in a copyright infringement action, a plaintiff must show a substantial similarity exists between the defendant’s work and the protected elements of the plaintiff’s work.

(Filing Date: 11-16-2011)

American Express Marketing and Development Corp. and American Express Travel Related Services Co. Inc. v. Black Card LLC

Trademarks: Even if a plaintiff has a registered trademark, the trademark can be cancelled if it is found that the mark is not inherently distinctive and lacks secondary meaning.

(Filing Date: 11-17-2011)

( 10 summaries )

December

In Re Construction Equipment Company

Patents: Determining either what a reference teaches, or whether a person having ordinary skill in the art would have reason to combine prior art references is a question of fact.

(Filing Date: 02-08-2011)

Olem Shoe Corp. v. Washington Shoe Co.

Trademarks: If a member of the public is not able to identify the plaintiff’s products with the plaintiff, then even if the defendant creates identical products they would not cause confusion for the public.

(Filing Date: 12-01-2011)

Teva Pharmaceuticals Industries Ltd. v. AstraZeneca Pharmaceuticals

Patents: Conception occurs when the inventor has a specific, settled idea, a particular solution to the problem at hand, but the inventor need not understand precisely why his invention works in order to achieve an actual reduction to practice.

(Filing Date: 12-01-2011)

AvidAir Helicopter Supply, Inc. v. Rolls-Royce Corp.

Trade Secrets: A trade secret does not exist for neither its novelty nor its unavailability, so much as for the reasonable efforts taken in securing the secret's secrecy, and the economic value derived from it.

(Filing Date: 12-13-2011)

UMG Recordings, Inc. v. Shelter Capital Partners, LLC

Copyright: if a provider of web hosting service has no actual knowledge or awareness of copyright infringement and the plaintiff never specifies what content is copyright infringing, the provider will be able to claim safe harbor under statute 512.

(Filing Date: 12-20-2011)

Norwood Promotional Products v. Kustomkoozies and Liddle

Trademarks: The continued use of a trademarked image after a failed attempt to terminate a licensing agreement does not constitute trademark infringement.

(Filing Date: 12-21-2011)

The Scooter Store, Inc. v. SpinLife.com

Trademarks: Generic terms have no trademark significance and therefore are not entitled to protection against trademark infringement.

(Filing Date: 12-21-2011)

Fancaster, Inc. v. Comcast Corp.

Trademarks: In order to prevail in a trademark infringement case, the plaintiff must provide sufficient evidence to prove a likelihood of confusion; it is not enough to just allege that there is an infringement.

(Filing Date: 12-22-2011)

A To Z Machining Service, LLC v. National Storm Shelter, LLC

Copyright: Plaintiff must have a valid copyright registration before filing for copyright infringement; preregistration is not a registered work within the meaning of 17 U.S.C. §411.)

(Filing Date: 12-29-2011)

Universal Furniture International, Inc. v. Paul Frankel

Copyright: To be found personally liable for a violation of the Lanham Act plaintiff must show that defendant, themselves, falsely designated the origin of plaintiff’s property.

(Filing Date: 12-29-2011)