Ideas on Intellectual Property Law
Showing 225–240 of 336 results
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Forewarned is forearmed? Doctrine of equivalents tested
August / September 2014
Newsletter: Ideas on Intellectual Property Law
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Word count: 401
Abstract: The doctrine of equivalents prevents would-be infringers from avoiding liability by making only minor changes to a patented invention. But what if a so-called equivalent was foreseeable at the time of the patent application, and the patentee still didn’t include it in the patent? The district court held that foreseeability didn’t preclude the application of the doctrine of equivalents, but nonetheless granted judgment of noninfringement. This article discusses the appeals court’s decision that the lower court was correct on the first point, but not the second. Ring & Pinion Service Inc. v. ARB Corporation, No. 2013-1238, Feb. 19, 2014 (Fed. Cir.)
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Expert testimony needed on patent indefiniteness claims
August / September 2014
Newsletter: Ideas on Intellectual Property Law
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Word count: 487
Abstract: When a district court finds that expert evidence is unnecessary to supporting a patent invalidity argument, most plaintiffs would probably think they’re off the hook. But this article examines a case in which an appeals court found that expert testimony was indeed necessary for determining infringement liability. The court’s ruling is a strong reminder that attorney argument won’t suffice when evidence is necessary. As the court noted, it can’t be assumed that, without evidence, a general purpose judge can ascertain the view of experts in the field. Elcommerce.com v. SAP AG, 2011-1369, Feb. 24, 2014 (Fed. Cir.)
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Watch out, copyright holders! Release of conference call transcript deemed not infringement
August / September 2014
Newsletter: Ideas on Intellectual Property Law
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Word count: 630
Abstract: Several hours after a Swiss company released its earnings report, it held a conference call with a group of financial analysts (as permitted by Swiss law). No journalists or press organizations were invited, and the analysts were informed that no recordings for publication were permitted. Nonetheless, a financial information provider obtained a recording and transcript and made both available, without alteration or editorial commentary, to subscribers to its online financial research service. This article examines why an appeals court decided that this constituted fair use. The Swatch Group Mgmt. Services Ltd. v. Bloomberg L.P., Nos. 12–2412–cv, 12–2645–cv, Jan. 27, 2014 (Fed. Cir.)
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MJ scores again – Basketball legend taking a shot at grocery store’s ad campaign
August / September 2014
Newsletter: Ideas on Intellectual Property Law
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Word count: 970
Abstract: When a Chicago-area grocery store chain used legendary Chicago Bulls player Michael Jordan’s identity in its advertising campaign, he responded with a $5 million lawsuit alleging violations of a number of laws. The ad congratulated Jordan on his Hall of Fame induction but included the chain’s logo and marketing slogan. In court, the chain claimed that this was noncommercial speech protected by the First Amendment. An appeals court ultimately ruled that the case could proceed, determining that the ad was nonprotected commercial speech. This article examines the court’s reasoning and, in a sidebar, its clarification of the proper use of the “inextricably intertwined” doctrine. Jordan v. Jewel Food Stores, Inc. and SuperValu Inc., No. 12-1992, Feb. 19, 2014 (7th Cir.)
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Dude, can you copyright a hookah?
June / July 2014
Newsletter: Ideas on Intellectual Property Law
Price: $225.00, Subscriber Price: $157.50
Word count: 427
Abstract: A manufacturer of hookahs alleged that a rival company infringed its copyright by selling hookahs identical in shape but that didn’t include the same images. At issue for the appeals court was the idea of conceptual “separability”: Did distinctiveness of shape affect separability? This article explains that the court determined “no,” but only after deferring to the relevant Copyright Office interpretations. Inhale, Inc. v. Starbuzz Tobacco, Inc., No. 12-56331, Jan. 9, 2014 (9th Cir.)
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Sins of omission – Inequitable conduct case turns on undisclosed information
June / July 2014
Newsletter: Ideas on Intellectual Property Law
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Word count: 618
Abstract: So-called “inequitable conduct” during the patent application process can undermine the enforceability of that patent. But bad information isn’t always the problem; “sins of omission” can come back to haunt applicants as well. This article discusses an infringement case in which the defendant supported its arguments with testimony from an executive from another company. When it was later discovered that the plaintiff had withheld evidence that corroborated that testimony, the appellate court sent the case back to the district court to determine whether the plaintiff’s withholding was material, as well as whether it acted with the intent to deceive the U.S. Patent and Trademark Office. The Ohio Willow Wood Co. v. Alps South, LLC, Nos. 2012-1642, 2013-1024, Nov. 15, 2013 (Fed. Cir.)
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Inventive patent requires both hardware and software
June / July 2014
Newsletter: Ideas on Intellectual Property Law
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Word count: 551
Abstract: In these technology-oriented times, it seems that more and more patents claiming computer-related inventions are being filed. But, when looking to nip infringers in the bud, holders of such patents will need to take care in drafting claims. Specifically, they should include separate claim sets to hardware, software, and a combination of hardware and software to cover all variations of the alleged infringing product. This article explains why a plaintiff who failed to do so lost its case. Nazomi Communications, Inc. v. Nokia Corp, No. 2013-1165, Jan. 10, 2014 (Fed. Cir.)
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A new spin on preliminary injunctions – Trademark holders now face a tougher standard
June / July 2014
Newsletter: Ideas on Intellectual Property Law
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Word count: 941
Abstract: The federal appeals court recently held that a trademark owner seeking a preliminary injunction against an alleged infringer must first show that it will suffer irreparable harm in the absence of an injunction. This holding will stand even if the owner has already established a likelihood of succeeding on its infringement claim. Although the decision reverses long-standing precedent, it wasn’t totally unexpected after recent rulings by the U.S. Supreme Court. This article examines the arguments in this case involving the name of a ’50s vocal group. Although the ruling favored the defendant, a sidebar notes that the court did reject the latter’s claim that the plaintiff had abandoned the trademark. Herb Reed Enterprises, LLC v. Florida Entertainment Mgmt., No. 12-16868, Dec. 2, 2013 (9th Cir.) eBay Inc. v. MercExchange, L.L.C., No. 05-130, May 15, 2006 (U.S. Supreme Court) Winter v. Natural Resources Defense Council, Inc., No. 07-1239, Nov. 12,…
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Requirements for criminal copyright violations clarified
April / May 2014
Newsletter: Ideas on Intellectual Property Law
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Word count: 438
Abstract: Not surprisingly, the level of guilt necessary to prove a criminal copyright violation is higher than that needed to establish civil liability for copyright infringement. But to precisely what lengths must the government go to secure a conviction? Some clarification was provided last fall in a case in which a plaintiff, having been sentenced for counterfeiting CDs and DVDs, argued to an appeals court that the district court had improperly instructed the jury on the meaning of the terms “willfulness” and “knowledge” under the relevant statutes. This article describes why the appellate court agreed, concluding that the instructions weren’t harmless errors. U.S. v. Liu, No. 10-10613, Oct. 1, 2013 (9th Cir.)
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Hard to swallow: Starbucks’ trademark dilution claim
April / May 2014
Newsletter: Ideas on Intellectual Property Law
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Word count: 618
Abstract: This past November, the U.S. Court of Appeals for the Second Circuit ruled that coffee giant Starbucks wasn’t entitled to a preliminary injunction prohibiting the use of a competitor’s product names. This article explains why the Second Circuit affirmed a district court’s finding that the marks were only minimally similar, and why the circuit court determined that a survey Starbucks used in support of its trademark dilution claim was fundamentally flawed. Starbucks Corp. v. Wolfe’s Borough Coffee Inc. d/b/a Black Bear Micro Roastery, No. 12‐364‐cv, Nov. 15, 2013 (2nd Cir.)Abstract: This past November, the U.S. Court of Appeals for the Second Circuit ruled that coffee giant Starbucks wasn’t entitled to a preliminary injunction prohibiting the use of a competitor’s product names. This article explains why the Second Circuit affirmed a district court’s finding that the marks were only minimally similar, and why the circuit court determined that a survey…
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Does patent exhaustion require a sale?
April / May 2014
Newsletter: Ideas on Intellectual Property Law
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Word count: 519
Abstract: It’s well-settled law that the authorized sale of a patented item will exhaust the patentee’s rights in that particular item. Until recently, however, it’s been unclear whether the patent exhaustion doctrine applies to items distributed for free. This article looks at one case in which a divided U.S. Court of Appeals for the Federal Circuit tackled the matter head on. At issue was whether the rights in a device were exhausted when it was given away in hopes that doing so would spur sales of a complementary item. LifeScan Scotland, Ltd. v. Shasta Technologies, LLC, No. 2013-1271, Nov. 4, 2013 (Fed. Cir.)
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Egregious misconduct – Examining the behavior behind an unenforceable patent
April / May 2014
Newsletter: Ideas on Intellectual Property Law
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Word count: 926
Abstract: In 2011, the U.S. Court of Appeals for the Federal Circuit ruled that certain acts of “egregious misconduct” by a patent applicant can eventually render a subsequently issued patent unenforceable. This article examines one recent case that provided a clear example of this. When a telecommunications company sued another for patent infringement, the court held that the patents were unenforceable because the inventor had submitted to the U.S. Patent and Trademark Office a declaration with false statements. A sidebar looks at a different case with a different result. Intellect Wireless, Inc. v. HTC Corp., No. 2012-1658, Oct. 9, 2013 (Fed. Cir.) Therasense, Inc. v. Becton, Dickinson & Co., Nos. 2008-1511, -1512, -1513, -1514, -1595, May 25, 2011 (Fed. Cir.) Network Signatures, Inc. v. State Farm Mutual Automobile Insurance, 2012-1492, Sept. 24, 2013 (Fed. Cir.)
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The missing link? Tenth Circuit weighs in on keyword advertising
February / March 2014
Newsletter: Ideas on Intellectual Property Law
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Word count: 428
Abstract: The battle over the trademark implications of Google’s AdWords advertising program has been playing out in the courts for years. But a recent appeals court ruling may have dealt a death blow to the hopes of mark owners fighting to prevent competitors from using their marks as keywords to trigger-sponsored ads. This article explains why the court agreed with the district court that no likelihood of confusion existed in this case. 1-800 Contacts, Inc. v. Lens.com, No. 11-4114, 11-4204, 12-4022, July 16, 2013 (10th Cir.)
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Bam! Pow! Smash! The demise of a comic book artist’s copyright
February / March 2014
Newsletter: Ideas on Intellectual Property Law
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Word count: 619
Abstract: The heirs of an artist who had created several comic book heroes served various entities of the publisher with notices purporting to exercise statutory termination rights under the Copyright Act. The publisher claimed that the heirs had no termination rights because all of the drawings were “made for hire” for the company. The question was whether this was true, since it would entitle the employer to be the author for purposes of copyright ownership. This article looks at the appeals court’s application of the “instance and expense test” to make this determination. Marvel Characters, Inc. v. Kirby, No. 11-3333-cv, Aug. 8, 2013 (2nd Cir.)
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Learning a tough lesson on how to write patent descriptions
February / March 2014
Newsletter: Ideas on Intellectual Property Law
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Word count: 509
Abstract: In one recent case, the holder of a patent on some modified enzymes learned a tough lesson on how to write a patent description. The U.S. Court of Appeals for the Federal Circuit determined that the plaintiff’s 2000 application didn’t adequately demonstrate that, by the filing date, it had invented and possessed the particular variant enzymes that it claimed almost a decade later. The case shows that it’s not enough to list the various claims one hopes an invention will end up with; it’s necessary to show current possession of such an invention. Novozymes A/S v. DuPont Nutrition Biosciences APS, No. 2012-1433, July 22, 2013 (Fed. Cir.)
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Patent obviousness analysis fails with Federal Circuit
February / March 2014
Newsletter: Ideas on Intellectual Property Law
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Word count: 925
Abstract: One company holding a design patent for “the ornamental design for a slipper” sued another for patent infringement. The district court found the patent invalid because the design was obvious from prior art. But the Federal Circuit found that that court had made multiple errors in its obviousness analysis. This article describes those mistakes, while a sidebar notes that the appeals court also found fault with the district court’s judgment that the patent was invalid because the design was primarily functional rather than primarily ornamental. High Point Design LLC v. Buyer’s Direct, Inc., No. 2012-1455, Sept. 11, 2013 (Fed. Cir.)