Willamette Law Online

(82 summaries)

Eric Knudson

Intellectual Property

TitleExcerptFilling Date
Carnegie Mellon Univ. v. Marvell Tech. Group, Ltd.Patents: Although the facts used by the jury to conclude that Marvell willfully infringed Carnegie's patents also satisfied many of the Reed factors the size of the jury’s damage award in relation to Marvell’s market capitalization and cash reserves justified limiting the enhanced damages multiplier to 1.23.(03-31-2014)
Worlds, Inc. v. Activision Blizzard, Inc.Patents: When Worlds, Inc. submitted its patent applications, it did not contain the required reference to its earlier filed provisional application and was not entitled to the priority date of the provisional application. Without that earlier priority date, Worlds invention was in public use more than one year before the priority date of its patent.(03-13-2014)
Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp.Patents: Lighting Ballast's argument that the assessment of expert testimony and other factual questions, which are often raised during claim construction, justified a more deferential standard of appellate review did not provide a compelling justification for abandoning the current de novo standard applied to claim construction appeals. (02-21-2014)
Butamax Advanced Biofuels LLC v. Gevo, Inc.Patents: The definition in Butamax’s patent specification stating that the KARI polypeptide used a specific an electron donor did not mean that Butamax was acting as its own lexicographer and intending to limit the term to only cover use of the specific donor when both it and an alternate donor were within the ordinary meaning of the term at the time the patent was issued and where both the preferred embodiment and Enzyme Commission number listed in the patent permitted either electron donor to be used. (02-18-2014)
Videoshare, LLC v. YouTube, LLCPatents: VideoShare’s covenant not to sue YouTube for infringement of its patent divested the court of subject matter jurisdiction over YouTube’s counterclaim for a declaratory judgment of patent invalidity. (02-01-2014)
N5 Techs. LLC v. Capital One Bank, N.A.Patents: Literal infringement was not found when the accused method did not practice each limitation in the asserted claim. Further a statement by an expert pertaining to patent validity was insufficiently probative of the issue of infringement under the doctrine of equivalence. (01-30-2014)
Harel v. K.K. Int'l Trading Corp.Patents: The visual distinctions between the drawing in the design patent application and the allegedly infringing lighter design demonstrated that, as a matter of law, the challenged lighter design was non-infringing.(01-10-2014)
Motorola Mobility LLC, v. Int’l. Trade Com’nPatents: Apple’s method of communicating changes in its devices’ registry of applications capable of receiving push notifications to a network did not infringe Motorola’s patent covering a method of communicating changes in the registry of installed applications to a network.(01-10-2014)
Nazomi Communs., Inc. v. Nokia Corp.Patents: Because Western Digital’s MyBook hard drives and Sling Media’s Slingbox did not ship with the software required to enable native processing of Java programs, they did not infringe Nazomi’s patents directed toward a hardware-software combination capable of directly running Java programs.(01-10-2014)
CreAgri, Inc. v. Pinnaclife, Inc.Patents: Where a patent's description amounts only to a wish or plan to achieve the claimed invention the description does not meet the written description requirement and the patent is invalid.(12-18-2013)
Wolf Run Hollow, LLC v. State Farm Bank, F.S.B.Patents: The allegation that State Farm Bank operated a secure online portal did not provide a reasonable inference of patent infringement.(11-26-2013)
Deckers Outdoor Corp. v. ShoeScandal.com LLCPatents: When determining the amount of damages that was appropriate for patent infringement where the infringing party failed to respond to the proceeding, the court used the median average industry profits to determine pre-interest damages. (11-25-2013)
Piggy Pushers, LLC v. Skidders Footwear, Inc.Patents: Whether a claim’s preamble limits the claim’s scope is determined on a case by case basis, considering the claim as a whole and the invention described in the patent. Where the preamble’s terms state a fundamental characteristic of the invention, the preamble limits the claims. (11-08-2013)
Fuzzysharp Techs., Inc. v. Intel Corp.Patents: A patent is invalid for claiming ineligible subject matter where the patent claims an abstract idea and then requires the use of conventional post-solution actives that are not varied by the output of the abstract idea.(11-07-2013)
Unitrac LLC v. U.S.Patents: A cause of action for a patent taking arose when the allegedly infringing instrument was first available for use.(10-18-2013)
L-3 Communs. Corp. v. Sony Corp. Patents: A physical embodiment of the invention was required to show actual reduction to practice.(10-16-2013)
Sunovion Pharms. v. Teva Pharms.Patents: When a generic manufacturer’s Abbreviated New Drug Application falls within the scope of a valid patent claim, the generic manufacturer infringes that claim. A certification by the generic manufacturer that it will not, despite the terms of its ANDA, manufacture an infringing product is insufficient to avoid a holding that the ANDA infringes the patent as a matter of law.(09-26-2013)
Wawrzynski v H.J. Heinz Co.Patents: The America Invents Act gives the Federal Circuit jurisdiction over civil actions where a party asserts a compulsory counterclaim related to patents when the civil action began after the effective date of the act. (09-06-2013)
Accenture Global Servs., GMBH v. Guidewire Software, Inc.Patents: Where a system claim only limits the environment where the method step are implemented, it does not offer a meaningful limitation.(09-05-2013)
Hamilton Beach Brands, Inc. v. Sunbeam Prods.Patents: A patent is invalid due to the on-sale bar if, prior to its critical date, an embodiment of the patented subject matter is the subject of a commercial offer for sale, and the invent was ready for patenting.(08-14-2013)
Helferich Patent Licensing, LLC v. New York Times Co.Patents: The defense of patent exhaustion requires that the patented product be sold in a licensed product that sufficiently embodies the patent. The defense prevents the patentee from pursuing infringement claims against the users of that product.(08-14-2013)
Leo Pharm. Prods. Ltd. v. ReaPatents: The Patent and Trademark Office should construe patent terms in the broadest sense that remains consistent with the patent specifications.(08-12-2013)
Gevo, Inc. v. Butamax Advanced Biofuels LLCPatents: The doctrine of ensnarement will prevent a party from arguing infringement under the doctrine of equivalents when the broader coverage used to show infringement would bring prior art within the coverage of the patent.(07-26-2013)
E-LYNXX Corp. v. InnerWorkings, Inc.Patents: When a patentee intentionally choses narrower language in order to overcome unpatentability issues, it will be estopped from later arguing for the a broader interpretation under the doctrine of equivalents.(07-25-2013)
Robert Bosch LLC v. Trico Prods. Corp.Patents: A party may be joined as a defendant in a challenge of inventorship action where it retains an interest in the subject patents.(07-24-2013)
Cephalon, Inc. v. Mylan Pharms. Inc.Patents: Indirect infringement can be shown by demonstrating that an accused infringer knew or should have known that its actions would induce infringement of a patent.(07-22-2013)
Fresenius USA, Inc. v. Baxter Int'l, Inc.Patents: In order for a final court decision to be sufficiently final that PTO claim cancellation will not remove the patentee's ability to maintain its lawsuit, there must be nothing left for the court to do but execute its judgment. Where damages are on appeal, the decision is not sufficiently final.(07-02-2013)
Innovus Prime, LLC v. Panasonic Corp. & Panasonic Corp. of N. Am., Inc.Patents: When a patent is assigned, the assignee takes the patent subject to all prior license agreements whether it has notice of the agreement or not.(07-02-2013)
St. Clair Intellectual Prop. Consultants, Inc. v. Acer, Inc.Patents: A presumption of laches arises when the delay between actual or constructive notice of potential infringement and the filing of a lawsuit exceeds six years.(07-02-2013)
Best Med. Int'l, Inc. v. Accuray, IncPatents: The Local Patent Rules for the Western District of Pennsylvania require a patentee to promptly specify whether it is seeking relief for literal infringement or whether the accused device infringes under the doctrine of equivalents. If the latter theory is used, there must be sufficient detail, beyond the wording of the patent itself, to provide the accused infringer with notice of infringement.(07-01-2013)
MDS (Can.), Inc. v. RAD Source Techs., Inc.Patents: Error was not found when a district court found that a contract relinquishing rights to use a patent was not breached when the relinquishing party developed and used similar new technology.(07-01-2013)
Magna Mirrors of Am. v. 3M Co.Patents: The defense of equitable estoppel provides a complete defense for alleged patent infringement. (06-14-2013)
Masimo Corp. v. Philips Elecs. N. Am. Corp.Patents: Where an accused infringer presents reasonable defenses for its alleged infringement, it will defeat a claim of willful infringement.(06-14-2013)
Assn. For Molecular Pathology v. Myriad Genetics, Inc.Patents: Isolated sections of naturally occurring DNA, without more, are products of nature and are not eligible for patent protection.(06-13-2013)
Promega Corp. v. Applied Biosystems, LLCPatents: An earlier patent application can serve as potentially invalidating prior art if both patents were not completely owned by the same person or organization at the time of invention.(06-12-2013)
Rembrandt Social Media, LP v. Facebook, Inc.Patents: The lawsuit filed against an alleged indirect infringer can be used to demonstrate knowledge of the subject patent's existence, however, when the lawsuit is the basis of the accused infringer's knowledge the patentee is limited to recovering post-filing damages.(06-12-2013)
Organic Seed Farmers & Trade Assn. v. Monsanto Co.Patents: There is no judicable case or controversy where a patent holder makes binding assurances that it will not sued a party for patent infringement and that party fails to allege circumstances that place it beyond the scope of those assurances.(06-10-2013)
Keurig, Inc. v. JBR, Inc.Patents: Infringement of design patents is analyzed under the ordinary observer test, which considers whether the ordinary observer, giving the usual attention of a purchaser, would be deceived into purchasing the accused design believing it to be the patented design. (05-24-2013)
Allergan, Inc. v. Sandoz, Inc.Patents: A patent claim is invalid for obviousness where prior art suggests the efficacy of the chemical combination found in the claim and where the prior art provides a motivation to make the combination.(05-01-2013)
Mud Buddy, LLC v. Gator Tail, LLCPatents: A patent claim is invalid by anticipation when each and every limitation of the claim is contained in prior art. The party alleging invalidity has the burden of producing clear and convincing evidence of anticipation, however, to defeat a motion for summary judgement the patent-holder must also produce some evidence showing there is a material issue of fact.(05-01-2013)
Kimberly-Clark Worldwide, Inc. v. First Quality Baby Prods., LLCPatents: To be entitled to pre-complaint damages for patent infringement, the patent-holder must provide the accused infringer with either actual or constructive notice. A contractual requirement that obligates a licensee to mark implementing products with the patent number provides sufficient evidence that the patent-holder made reasonable efforts to ensure compliance with the marking requirement such that the patent-holder can survive a motion for summary judgment. (04-30-2013)
Troy v. Samson Mfg. Corp.Patents: To show prior actual reduction-to-practice, a party must show that it (1) was first to construct an embodiment that met every element of the challenged claim, and (2) that the embodiment operated for its intended purpose.(04-30-2013)
Taylor v. Taylor Made Plastics, Inc.Patents: To have standing, all co-owners of a patent must be joined as parties. Ownership of a patent is determined according state law.(04-29-2013)
Allied Mach. & Eng'g Corp. v. Competitive Carbide, Inc.Patents: Where a third party complaint against inventor/patent assignor is based on the defense of invalidity, rather than a cause of action, and the inventor's rights in the patent have been assigned to another party, the third party plaintiff and defendant do not have adverse legal interests sufficient to survive a motion to dismiss under Fed. R. Civ. P. 12(b)(1).(03-22-2013)
Anvik Corp. v. Nikon Precision, Inc.Patents: A reasonable finder of fact could have found that an inventor did not have a preferred method for practicing the invention based on extrinsic evidence, thus the best mode requirement was improperly determined by summary judgment.(03-22-2013)
Kimberly-Clark Worldwide, Inc. v. First Quality Baby Prods., LLCPatents: Because a new claim contained more material than the original claim, the claim was enlarged and the patent was invalid.(03-19-2013)
Interactive Fitness Holdings, LLC v. Icon Health & Fitness, Inc.Patents: When a patent differs from prior art by only a single limitation, the patent is invalid by anticipation if that limitation is covered by other prior art.(02-25-2013)
Microsoft Corp. v. Motorola, Inc.Patents: The disclosure of an algorithm for a similar, but different, structure from which a person skilled in the art could derive the undisclosed algorithm is not adequate disclosure, and the limitation containing the undisclosed algorithm is therefore invalid for indefiniteness.(02-06-2013)
Skyline Zipline Global, LLC v. DomeckPatents: A device that is the antithesis of a patented product does not infringe the original patent.(02-06-2013)
CleanCut, LLC v. Rug Doctor, Inc.Patents: Objective willfulness exists where the patentee shows that “the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.”(02-04-2013)
Alberts v. KapposPatents: If the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art, then the patent is obvious.(01-18-2013)
Parallel Networks, LLC v. Abercrombie & Fitch Co.Patents: To demonstrate literal infringement, the plaintiff must show that the defendant infringed every claim limitation.(01-16-2013)
C. W. Zumbiel Co., Inc. v. KapposPatents: A patent claim's preamble is a limitation if it is essential to understand limitations or terms in the claim body.(12-27-2012)
In re Fenofibrate Patent LitigationPatents: When a patent claim calls for a quantity “between” two numbers, it should be construed to cover only that specific range and it should not be read to cover “a range between two values which are themselves ranges.” (12-27-2012)
In re YamazakiPatents: Once a patent has issued subject to the terms of a terminal disclaimer, the Patent and Trademark Office is foreclosed from later reissuing the patent with a term greater than that for which the patent was originally issued. (12-06-2012)
Pregis Corp. v. KapposPatents: Because the Patent Act provides sufficient administrative and judicial relief for third parties injured by wrongly issued patents, the APA cannot be used to provide competitors in a patent dispute with an alternative means to obtain relief.(12-06-2012)
Brandywine Commun. Tech, LLC v. Casio Computer Co. Ltd.Patents: To state a valid claim for contributory infringement, a plaintiff must plead facts suggesting the defendant both knew of the existence of the relevant patent at the time of the infringement, and that the product has no substantial non-infringing uses.(12-05-2012)
Metso Minerals Indus., Inc. v. Johnson Crushers Intl., Inc.Patents: When the difference between subject matter patented and prior art is such that the solution patented would have been obvious to a person skilled in the art, the patent is invalid for obviousness.(12-04-2012)
Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc.Patents: When a court determines that a patent presents a prima facie case of obviousness, a presumption of invalidity for obviousness is raised. That presumption, however, can be rebutted by strong, objective evidence showing that the patent is nonobvious.(11-15-2012)
Hor v. ChuPatents: The time period for asserting the defense of laches against an inventorship claim is measured from the date the patent was issued, not from the date the patent application was filed.(11-14-2012)
Norgren, Inc. v. ITCPatents: The possibility of drawing inconsistent conclusions from the evidence does not mean an administrative agency's conclusion was not supported by substantial evidence. (11-14-2012)
Brandywine Commun. Tech., Inc. v. T-Mobile USA, Inc.Patents: Where knowledge is an essential element of a patent infringement claim, the defendant must have been aware of the patent's existence before litigation was instigated in order for that element to be satisfied. (10-24-2012)
Flo Healthcare Solutions, LLC v. KapposPatents: To rebut the presumption that a limitation is not a means-plus-function limitation, the patentee must show that the limitation is essentially “devoid of anything that can be construed as structure.”(10-23-2012)
Belkin Intl., Inc. v. KapposPatents: The Director's determination that prior art does not raise substantial new questions of patentability is final and nonappealable.(10-02-2012)
Libya v. MiskiTrademarks: To establish a protected right in a descriptive mark, a party must demonstrate, with survey data or other evidence, that the mark has obtained secondary meaning in the marketplace. (09-06-2012)
Suntree Tech., Inc. v. Ecosense Intl., Inc.Trademarks: A plaintiff must establish that the defendant not only used its protected mark, or one confusingly similar to it, but also that it was likely to confuse consumers as to source of the product or service.(09-05-2012)
Chicago Bldg. Design P.C. v. Mongolian House, Inc.Copyright: Although the courts should be reluctant to resolve religious property disputes, they may do so if the dispute can be resolved without consideration of doctrinal or other religious matters. (08-02-2012)
Chicago Bldg. Design P.C. v. Mongolian House, Inc.Copyright: A claim for copyright infringement must be brought within 3 years of a party receiving notice (actual or inquiry) of a completed claim.(07-31-2012)
Dish Network, L.L.C. v. AlejandriCopyright: To demonstrate circumvention of access controls, the plaintiff must show: (1) the defendant distributed the technology, and (2) that the technology was designed to circumvent access control systems and has only limited alternative uses.(07-30-2012)
Loughlin v. LingPatents: If a patent application is entitled to receive the benefit of an earlier effective date under 35 U.S.C. § 120, the earlier date is that application’s filing date for determining whether any of that application's claims offend the one year time restraint in 35 U.S.C. § 135(b)(2).(07-11-2012)
In re MouttetPatents: When a patent claims a structure already known, differing only in the substitution of one known element for another, it must do more than yield the predictable result of that substitution to avoid rejection for obviousness. (06-26-2012)
WesternGeco LLC v. Ion Geophysical Corp.Patents: An infringing system is made at the place where it is assembled for use, while it is used at the place where it is put into operation. (06-26-2012)
Hollmer v. HarariPatents: When inquiring into the continuity of multiple patent applications, the adequacy of an incorporation by reference is determined by the reasonable person of ordinary skill in the art standard.(06-07-2012)
In re Bill of Lading Transmission and Processing System Patent LitigationPatents: A complaint that meets the requirements of a relevant sample form in the Appendix to the Federal Rules of Civil Procedure cannot be dismissed for failing to meet the requirements established under the Twombly line of cases.(06-07-2012)
In re Baxter Intl., Inc.Patents: Because of the lower standard of proof used in PTO reexaminations, the PTO is not bound by validity decisions of the courts on the same patent claims, especially when the PTO considers evidence not presented to the court when it reached its decision.(05-17-2012)
Layne Christensen Co. v. Bro-Tech Corp.Patents: To demonstrate willful infringement, a patentee must show the infringer acted despite an objectively high likelihood it was infringing a valid patent and that the infringer either knew, or the risk was so obvious that it should have known, of the risk it was infringing a valid patent.(05-16-2012)
OSI Pharm., Inc. v. Mylan Pharm., Inc.Patents: To invalidate a patent on grounds of anticipation or obviousness, an alleged infringer must demonstrate that the patent is invalid with clear and convincing evidence.(05-01-2012)
Warner Chilcott Laboratories Ir., Ltd. v. Impax Laboratories, Inc.Patents: Patent infringement cannot be shown where the alleged infringers do not directly apply, and accepted testing method do not show the presence of, the patented substance.(04-30-2012)
Aventis Pharma S.A. v. Hospira, Inc.Patents: Intentionally withholding prior art material to the patent's subject matter from the Patent and Trademark Office will render a patent unenforceable for inequitable conduct. (04-09-2012)
Noah Systems, Inc. v. Intuit Inc.Patents: Failure to disclose all of the algorithms necessary for the claimed functions will be treated as if no algorithm was disclosed at all.(04-09-2012)
Merit Homes, LLC v. Joseph Carl Homes, LLCCopyright: A nonexclusive license can be granted without a written conveyance.(03-27-2012)
Poindexter v. EMI Record Group, Inc.Copyright: Only the owner of the copyright has standing to assert a claim for its infringement, and assignment of the right to sue to a non-owner is insufficient to confer standing.(03-27-2012)