Blog entries

USPTO Announces Exhibitors at the Trademark Expo

Mon, 29 Aug 2011 06:00:00 +0100

The US Patent and Trademark Office (USPTO) has announced which exhibitors will attend the 2011 National Trademark Exp on October 14 – 15 at the USPTO headquarters in Alexandria, Va. The event is designed to educate the public about the value of trademarks in the global marketplace.

The Expo this will highlight such themes as “Unusual Trademarks” and the “Evolution of Marks,” and will include educational workshops, costumed characters and exhibitsRead More...

Plaintiff having read publications about prior art not enough to prove inequitable conduct

Fri, 26 Aug 2011 06:00:00 +0100

A recent case reported in Docket Navigator illustrates that a party must be very specific when alleging inequitable conduct.

In the case, Fred Hutchinson Cancer Research Center, et al. vs. Biopet Vet Lab, Inc., et. al., the plaintiff alleged infringement of a dog breed identification system. The defendant countered by filing a claim of fraud and inequitable conduct, alleging that plaintiff submitted false oaths upon which the US Patent and Trademark Office (USPTO) relied whRead More...

‘Entire Market Rule’ only valid if patented invention creates entire product demand

Wed, 24 Aug 2011 06:00:00 +0100

A recent case reported in the Docket Navigator underscores the principle that the “Entire Market Value Rule” can only be used to establish reasonable royalty payments when the patented feature generated the entire market demand for the product.

The case, Schindler Elevator Corporation et. al. vs. Otis Elevator Co., was heard by the U.S. District Court for the Southern District of NY. In that case, the defendant sought to exclude testimony from the plaintiff’s witnRead More...

Court deems inventor’s ‘Claim of Conception Date’ insufficient

Mon, 22 Aug 2011 06:00:00 +0100

A recent case reported in the Docket Report confirms that a plaintiff cannot simply claim that an invention was conceived prior to another entity’s patent being issued. Rather concrete proof of the invention’s conception prior to the patent’s issue date is required.

The case Northpoint Technology, Ltd. V. DirecTV, Inc., et al. involves an alleged patent infringement over the satellite dishes and equipment that accompanies a satellite subscriber. The deRead More...

Many methods suitable for assessing potential damages in patent infringement case

Fri, 19 Aug 2011 06:00:00 +0100

As reported in Docket Navigator, a recent court case illustrates that there are many acceptable methods for conducting a “hypothetical negotiation” to determine potential damages in a patent infringement case.

The case, Lucent Technologies Inc. vs. Microsoft Corp., was heard before the US District Court for the Southern District of California. One of the issues debated was whether the plaintiff could exclude the defendant’s damages expert (Robert Mnookin) Read More...

Voluntary dismissal of earlier case does not preclude separate filing years later

Tara Williams — Wed, 17 Aug 2011 06:00:00 +0100

As reported in Docket Navigator, when one party voluntarily dismisses an action, that does not prevent the same or similar action from being heard by the original court.

The case, ClearCorrect, Inc. vs. Align Technologies, Inc., was heard before the US District Court, Southern District of Texas, Houston Division. The case dates back to February 2009, when ClearCorrect sought a declaratory judgment stating that it did not infringe on Align Technology’s patents for a clear aligRead More...

Court: Licensors can’t claim damages under ‘Accelerated Market Entry’ Theory

Tara Williams — Mon, 15 Aug 2011 06:00:00 +0100

In a recent case reported in Docket Navigator, the US District Court for the District of New Mexico found that the theory of “Accelerated Market Entry” (AME) damages does not apply to royalty payments.

The AME theory awards damages for compensation for lost sales after the patent’s expiration based on a defendant’s entry into “the market at a level accelerated by its earlier infringement.”

The case, STC.UNM vs. Intel Corp., involved fiRead More...

Location of witnesses, discovery ‘outdated and irrelevant’ in venue transfer requests

Tara Williams — Fri, 12 Aug 2011 06:00:00 +0100

As reported in Docket Navigator, the US District Court for the District of Delaware has ruled that two key justifications for transfer of venue requests – location of witnesses and discovery documentation – are largely “irrelevant” in this age of electronic technology.

The case, XPRT Ventures, LLC vs. eBay Inc. et al., involves a transfer of venue request by the defendants from Delaware to the Northern District of California. All of the parties to this suit Read More...

Supreme Court: Under Bayh-Done patents still belong to inventors not employers

Tara Williams — Wed, 10 Aug 2011 06:00:00 +0100

On June 6, 2011, the US Supreme Court held in a 7-2 vote that the University and Small-Business Patent Procedures Act of 1980 (Bayh-Dole Act) did not change the long-stating law that awards patent rights to inventors rather then their employers.

The Bayh-Dole Act allocates intellectual property (IP) rights between the federal government and federally-funded contractors. It allows a university, small-business or non-profit institution to elect to pursue ownership of an invenRead More...

Baseless request for sanctions can backfire

Tara Williams — Mon, 25 Jul 2011 06:00:00 +0100

As reported in Docket Navigator, baseless claims for sanctions can backfire, leading to sanctions against the party which made the baseless claims.

The case, OptiGen LLC vs. Animal Genetics, Inc., involved a method for testing for a hereditary retinal disease that leads to blindness in dogs. The plaintiff alleged that the defendant committed direct patent infringement, induced infringement by others and practiced unfair competition. In response, the defendant made a motiRead More...

Court orders installation of Integrated Development Environment (IDE) for source code review

Tara Williams — Fri, 22 Jul 2011 06:00:00 +0100

As reported in Docket Navigator, a recent case required a defendant to load various technologies onto a computer to allow the challenging party to review its source code.

The case, SFA Systems, LLC vs. Big Machines, Inc., et al., was heard by before the US District Court, Eastern District of Texas, Tyler Division. In that case, SFA Systems filed an Emergency Motion to Compel Compliance with a protective order against one of the defendants, Hyundai Motor America, Inc., who opposed tRead More...

USPTO and Swedish Patent and Registration Office to partner on pilot project

Tara Williams — Thu, 21 Jul 2011 06:00:00 +0100

The U.S. Patent and Trademark Office (USPTO) announced a new pilot project for the Patent Prosecution Highway with the Swedish Patent and Registration Office (PRV) based on Patent Cooperation Treaty (PCT) work products (PCT-PPH pilot program). PPH will permit each office to benefit from the PCT work previously done by the other office, which reduces the examination workload and improves patent quality.

The expedited examination in each office allows applicants to obtain correspoRead More...

Court explains factors in lifting TRO in patent infringement case

Tara Williams — Wed, 20 Jul 2011 06:00:00 +0100

As reported in the Docket Navigator, many issues come into play when a court decides to lift a Temporary Restraining Order (TRO) related to an intellectual property case.

In the case IN RE: Cylobenzaprine Hydrochloride Extended-Release Capsule Patent Litigation, the defendants, Mylan Pharmaceuticals, Inc. and Mylan Inc., had requested reconsideration of a previous court order in which the US District Court for the District of Delaware had issued a TRO against the manufacturing, useRead More...

USPTO studies Therasense court case to assess impacts on practice, procedure

Tara Williams — Tue, 19 Jul 2011 06:00:00 +0100

Case involves issues of inequitable conduct

The U.S. Patent and Trademark Office (USPTO) is studying the important en banc decision by the U.S. Court of Appeals for the Federal Circuit in the case of Therasense v. Becton, Dickinson to assess how it may impact agency practices and procedures.

The Therasense decision reviews the standards for inequitable conduct, including the materialityRead More...

USPTO unveils U.S. government-wide Intellectual Property (IP) training database

Tara Williams — Mon, 18 Jul 2011 06:00:00 +0100

New database includes all U.S. government agencies’ training program data

The U.S. Patent and Trademark Office (USPTO), in cooperation with the Office of the Intellectual Property Enforcement Coordinator (IPEC), launched an online database where U.S. government agencies are now posting information about the Intellectual Property Rights (IPR) training programs they conduct around the world.

The Global Read More...

Transfer of venue decision need not await ITC ruling

Tara Williams — Fri, 15 Jul 2011 06:00:00 +0100

As reported in Docket Navigator, a transfer of venue request can be considered even if an International Trade Commission (ITC) proceeding is pending or in process.

The case, Microsoft Corp. vs. TiVo Inc., involves patents related to interactive television technology. On Jan. 24, 3011, the plaintiff Microsoft filed the instant action against TiVo. On the same day, Microsoft filed a companion suit with the International Trade Commission (ITC) asserting the same patent rights against Read More...

Plaintiff’s conduct alleviates Court’s concern about possible ‘cost of defense’ strategy

Tara Williams — Thu, 14 Jul 2011 06:00:00 +0100

As indicated in a recent issue of Docket Navigator, even Courts that are suspicious of questionable infringement claims against multiple defendants may change their minds based on the plaintiffs’ previously admirable conduct.

In the case, Uniloc USA, Inc., et al. vs. Engrasp, Inc., et. al., the plaintiff filed claims in seven cases with 95 cumulative defendants. The US District Court for the Eastern District of Texas , Tyler Division, immediately registered suspicion abRead More...

California court confirms ‘first to file’ rule in false marking case

Tara Williams — Wed, 13 Jul 2011 06:00:00 +0100

A recent case reported on in Docket Navigator underscores the fact that only one party can bring a false patent marking claim on the same product, and that right goes to the party which first files the legal suit (the “first-to-file” rule).

The case, Champion Laboratories, Inc. vs. Parker-Hannifin Corp. et al, was heard by the US District Court, Eastern District of California. In that case, the plaintiff alleged violations of the False Marking Statue, the LanhamRead More...

Court orders production of in-bound and out-bound licenses, but not cross licenses

Tara Williams — Tue, 12 Jul 2011 06:00:00 +0100

A recent case reported in Docket Navigator shows that evidence must be very closely related to the issue at hand before a court will compel its production.

In the case, Auburn University vs. International Business Machines, Corp. (IBM), the plaintiff made a Motion to Compel production of items related to “in-bound,” “out-bound” and “cross” licenses. The defendant countered by making its own Motion to Compel concerning the value the plRead More...

USPTO Announces Full First Action Interview Pilot Program

Tara Williams — Mon, 11 Jul 2011 06:00:00 +0100

The US Patent and Trademark Office (USPTO) announced the Full First Action Interview Pilot Program, an expansion of the existing Enhanced First Action Interview Pilot The US Patent and Trademark Office (USPTO) announced the Full First Action Interview Pilot Program, an expansion of the existing Enhanced First Action Interview Pilot Program to include all utility applications in all technology areas and filing dates. As with the previous First Action Interview pilot programs (which included thRead More...