In a recent decision, the Federal Circuit affirmed the International Trade Commission's finding of noninfringement with respect to one patent but reversed and remanded on another.  At issue was whether the defendant had imported chipsets that infringed five of the plaintiff's patents in violation of 19 U.S.C. § 1337.  The action was dismissed with regard to two of the patents, as any action related to those two patents must occur in Federal Court in California due to a forum selection clause.  Another patent is the subject of a separate appeal after an exclusion order was entered.  The Commission adopted an administrative law judge's determination of noninfringement with respect to the remaining two asserted patents.  

The Federal Circuit affirmed the determination of noninfringement for one patent, holding the patentee had presented insufficient evidence to show the accused devices necessarily infringed, and the patentee did not provide evidence of specific instances of direct infringement.  The court disagreed with the ALJ's claim construction with respect to the second patent.  The administrative law judge misinterpreted expert testimony on whether a control signal was required to be changeable and accordingly the court vacated the noninfringement finding with regard to one of the eight accused chips, but affirmed the finding of noninfringement with regard to the other seven even under the revised construction.

More on Broadcom Corp. v. Int'l Trade Comm'n after the jump.

[More]

In a decision last week, the Federal Circuit affirmed a district court's holding that a prior art patent was not enabling and thus did not anticipate the patent-in-suit.  Applying the In re Wands factors, the district court held undue experimentation would be required in order to produce the claimed invention based on the prior art's disclosure.

The Federal Circuit affirmed, and observed the asserted prior art was broad and general without sufficient direction to practice the claimed invention.  Moreover, the asserted prior art provided no working examples of the invention claimed in the patent-in-suit.  Finally, the court held the district court correctly placed the burden of proving non-enablement on the patentee, given the prior art reference was an issued U.S. Patent, but it was not necessary for the district court to specifically articulate its burden-shifting framework.

More on Impax Labs, Inc. v. Aventis Pharms Inc., after the jump.

[More]

In a recent decision, the Federal Circuit affirmed a jury's finding of infringement of two patents and the related injunction, but reversed the district court's claim construction and the concomitant finding of infringement regarding a third patent.  The court affirmed the district court's injunction despite the fact that the patentee licensed, rather than manufactured, the claimed inventions.  The injunction was affirmed largely due to the "structural nature of a design win market" typified in nascent technology designs where there are multiple standards competing for market domination, and the fact that the injunction did not take effect for 20 months after the jury verdict to permit time to develop and implement a design-around.  

In addition, the Federal Circuit rejected the defendant's contention that In re Seagate changed the evidentiary burden for proving intent in the context of inducing infringement.  The defendant argued that after Seagate, opinion of counsel evidence was no longer relevant to the question of intent for inducing or contributory infringement.  The court held the intent necessary for an inducement finding may still be inferred from "all the circumstances."  This has two requirements, as described in DSU Medical:  (1) the defendant intended to cause the acts that constitute direct infringement, and (2) the defendant knew or should have known its action would cause the direct infringement.  The court observed opinion of counsel evidence may reflect what the accused infringer knew or should have known, it remains relevant to the second prong of this analysis.  Further, the court stated it would be "unfair to allow opinion-of-counsel evidence to serve an exculpatory function . . . and not yet permit patentees to indentify failures to procure such advice as circumstantial evidence of intent to infringe."  

Here, the accused infringer obtained an invalidity opinion, but declined to waive privilege.  The Federal Circuit held it was not error for the district court to instruct the jury that the lack of an opinion could be relevant to the issue of intent.  The court also instructed the jury, consistent with Knorr-Bremse, that the lack of opinion was not grounds to assume the opinion would be unfavorable.  As such, the instructions as a whole comported with Federal Circuit precedent, and the instructions were proper.

More detail of Broadcom Corp. v. Qualcomm Inc. after the jump.

[More]

In a decision last week, the Federal Circuit reversed a district court's denial of judgment as a matter of law after a jury returned a verdict of infringement.  The Federal Circuit held the jury's verdict was not supported by substantial evidence, and that the plaintiffs' expert's opinions contradicted his factual testimony, and was thus incapable of supporting the jury's verdict of infringement.

Judge Newman dissented.  In her opinion, there was substantial evidence to support the verdict, and the district court properly denied the defendant's motion for judgment as a matter of law, and the majority improperly substituted its interpretation of the evidence for the jury's interpretation.

More detail of Johns Hopkins Univ. v. Datascope Corp. after the jump.

[More]

In a recent decision, the Federal Circuit vacated a stipulated judgment of noninfringement on claim construction grounds.  The construction issue dealt with the significance of a limitation that applied to an "at least one" element.  Specifically, the relevant claim required "at least one condylar element," where "the condylar element" had certain features.  The district court held the requirement applied to all condylar elements present in an apparatus, as it was undisputed that either one or two could be used.  Under this construction, it was undisputed there could be no infringement.

The Federal Circuit reversed.  The court held the features described for "the condylar element" could be infringed even if only one of two condylar elements had the claimed features.  The court noted that at least some of the objectives of the invention would still be met if one one of two elements had the claimed features.  The court also rejected an inventor's testimony to the contrary, noting such testimony "is still limited by the fact that an inventor understands the invention but may not understand the claims, which are typically drafted by the attorney prosecuting the patent application."  The court held such testimony as to the subjective intent of the inventor "is irrelevant to the issue of claim construction."

More detail of Howmedica Osteonics Corp. v. Wright Med. Tech., Inc. after the jump.

[More]

In a notice today, the USPTO announced a new trademark consistency initiative.  Under the new initiative, applicants who believe a substantive or procedural issue has been addressed in a "significantly different manner" in two applications may raise the issue for consistency review.  This is subject to four requirements:

1. the request is based on co-pending applications or an application and a registration owned by the same legal entity or a successor in interest (e.g., assignee);
2. the registration(s) involved was issued less than one year prior to the date of the request;
3. at least one of the applications in the request  is in a pre-publication status at the time of the request; and
4. the allegedly inconsistent treatment has already occurred.

While applicants are "encouraged" to raise the inconsistency issue with the examining attorney, they may now raise the issue for consistency review by providing a brief description of the inconsistent action and identification of the relevant applications.  The pilot program is scheduled to last for one year.

To read the full notice, click here.

In a recent decision, the Third Circuit vacated a district court's grant of summary judgment to the plaintiff in a § 43(a) false endorsement case, but affirmed the plaintiff's summary judgment win as to the state law right of publicity claims.  The dispute revolved around the National Football League's use of John Facenda's voice in a production regarding the making of the video game Madden NFL 06.  Many football fans remember Mr. Facenda's voice from NFL Films productions from the 1960s up to his death in 1984; he is sometimes referred to as "The Voice of God."   The district court granted summary judgment to Mr. Facenda's estate on both claims.

The Third Circuit affirmed the summary judgment on the right of publicity claim, but vacated it on the false endorsement claim.  On the right of publicity claim, the Third Circuit agreed with the district court that copyright law did not preempt state right of publicity law in this case.  This was because Mr. Facenda's voice was used in a commercial context, rather than an "expressive" context.  Interestingly, the court cited with approval discussion of the district court's opinion on this subject from a leading copyright treatise, Nimmer on Copyright.

On the issue of false endorsement, the Third Circuit agreed with the bulk of the district court's analysis, but vacated the summary judgment on the basis of issues of disputed fact.  In so doing, the court adopted a modified version of the Ninth Circuit's test in false endorsement cases, as the appropriate factors were a matter of first impression for the Third Circuit.  Interestingly, the court observed that "parties may not stipulate to forgoing a trial when genuine issues of material fact remain that prevent either side from succeeding on a motion for summary judgment."  This is in contrast to a recent Federal Circuit decision, where the court decided an appeal where the parties did make such a stipulation before the district court.

More detail of Facenda v. N.F.L. Films, Inc. after the jump.

[More]

In a decision yesterday, the Federal Circuit affirmed a district court's grant of judgment as a matter of law based on lack of standing for one patent and non-infringement of a second patent.  A jury awarded $1,538,056,702 in damages for infringement, but, as a result of the JMOL, the district court set aside the damages award.

The Federal Circuit affirmed.  The court agreed with the district court that the jury lacked substantial evidence to find the claims of the first patent in suit encompassed work that was solely owned by the plaintiff based on a Joint Development Agreement.  Instead, the court held that, in accordance with the terms of the agreement, the patent-in-suit was jointly owned by the plaintiff and a third party not involved in the suit.  Thus, the plaintiff lacked standing to sue in the absence of the other joint owner.

The court likewise affirmed the district court's finding that there was insufficient evidence of direct infringement to support the jury's determination of inducing infringement of the second patent.  There was no evidence that the accused method had actually been practiced by the accused product, and the plaintiff's expert testimony was to speculative to support a conclusion that the accused product necessarily infringed.

More detail of Lucent Techs., Inc. v. Gateway, Inc. after the jump.

[More]

In a recent decision, the Second Circuit affirmed a district court's summary judgment to the defendant in an antitrust case regarding trademark licensing.  The case involved the collective licensing setup of Major League Baseball Properties ("MLBP").  The plaintiff was a licensee of MLBP.  The court held the centralized licensing agent for all Major League Baseball teams did not violate § 1 of the Sherman Act.  

The plaintiff argued the agreement should be either per se illegal or subject to "quick look" rule of reason analysis.  The court rejected both of these contentions, instead applying traditional rule of reason analysis.  The court's lengthy opinion held that MLBP does not depress any collectibles market or violate antitrust provisions through its centralized licensing structure and equal apportionment of licensing revenue to each baseball club.

More on Major League Baseball Props., Inc. v. Salvino, Inc. after the jump.

[More]

In a recent decision, the Second Circuit affirmed a district court's decision in a trademark case not to enter an order pursuant to 15 U.S.C. § 1119.  § 1119 permits a court to enter an order regarding registrability and cancellation of marks at the USPTO.  The prevailing defendant asked the district court to order the USPTO to dismiss a related cancellation proceeding.  The party had not requested an order under § 1119 in its counterclaims, but instead sought it by way of a Rule 59(e) motion to amend the final judgment in the case.  The district court denied the motion, concluding the defendant could simply raise the issue as a matter of issue preclusion.

The Second Circuit affirmed.  The court held there was no abuse of discretion in denying the Rule 59(e) motion.  Further, the court noted § 1119 is permissive, such that the court was not required to grant such relief.

More detail of Empresa Cubana del Tabaco v. Culbro Corp. after the jump.

[More]