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NobelBiz alleged infringement of patents titled “System and method for modifying communication information” with identical specifications. The patents relate to “a method for processing a communication between a first party and a second party.” When a call originator contacts a call target, the system modifies the caller ID data “to provide a callback number or other contact information . . . that may be closer to or local to the Target.” The Federal Circuit reversed a jury verdict of infringement, stating that the district court erred in its claim construction. The intrinsic evidence better supports the defendants’ proposed construction: “outbound call” should be construed as a “call placed by an originator to a target.” View "NobelBiz, Inc. v. Global Connect, L.L.C." on Justia Law

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Parks was founded in the 1950s and was the first African-American-owned company to be publicly traded on the NYSE. Parks engaged in radio and television advertising, using a well-known slogan, “More Parks Sausages, Mom, Please.” Though the PARKS brand had likely developed prominence sufficient for common law trademark protection before 1970, the name was not registered in the Patent and Trademark Office until 1970. In the early 2000s, Parks failed to renew the registration. Following the death of its owner, the company had fallen on hard times and had licensed the production and sale of its products. In 2014, Tyson, the owner of the BALL PARK brand, launched a premium frankfurter product called PARK’S FINEST. Parks sued, alleging false advertising and trademark infringement. The district court determined that the false advertising claim was a repetition of the trademark claim and that the PARKS mark was too weak to merit protection against Tyson’s use of PARK’S FINEST. The Third Circuit affirmed. The fact that the PARKS mark has existed for a long time and that it enjoyed secondary meaning half a century ago cannot overcome the factors against Parks. There is almost no direct-to-consumer advertising; Parks has a minuscule market share, and there is practically no record of actual confusion. View "Parks LLC v. Tyson Foods Inc" on Justia Law

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Millennium developed the patented product for the treatment of oncology diseases, particularly multiple myeloma and mantle cell lymphoma. The product has the brand name Velcade®. Sandoz and others filed abbreviated new drug applications (ANDAs), admitting infringement and seeking to invalidate various claims of the 446 Patent. The district courts held that certain claims were invalid as obvious, 35 U.S.C. 103. In consolidated appeals, the Federal Circuit concluded that the district court erred and that invalidity was not established. Sandoz identified no reference or combination of references that show or suggest a reason to make the claimed compound. The district court clearly erred in its examination of the objective indicia of unexpected results and long-felt need. View "Millenium Pharmaceuticals, Inc. v. Sandoz, Inc." on Justia Law

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In this trademark infringement suit under the Lanham Act, furniture manufacturer Omnia admitted that it blatantly copied and began selling the same goods branded with the mark of its (now ex) business partner, retail furniture company Stone Creek. The district court granted judgment for Omnia. The panel reversed and held that Omnia's use of Stone Creek's mark was likely to cause confusion where placing an identical mark on identical goods creates a strong likelihood of confusion, especially when the mark was fanciful. Furthermore, Stone Creek also sells in overlapping market channels and other factors heighten the likelihood that consumers will be confused as to the origin of the furniture. The panel rejected Omnia's invocation of a common-law defense—known as the Tea Rose–Rectanus doctrine—that protects use of a mark in a remote geographic area when the use is in good faith. In this case, Omnia's knowledge of Stone Creek's prior use defeated any claim of good faith. Finally, the panel confirmed that a 1999 amendment to the trademark statutes did not sweep away the panel's precedent requiring that a plaintiff prove willfulness to justify an award of the defendant's profits. The panel remanded this issue for the district court to make such a determination. View "Stone Creek, Inc. v. Omnia Italian Design, Inc." on Justia Law

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Genband sells products and services that help telecommunications companies offer voice communications services over Internet Protocol networks (VoIP services) and owns patents related to its offerings. Metaswitch sells telecommunications products and services that compete with Genband’s offerings but was not a major competitor until recent years. After a jury found that Metaswitch infringed various claims of several of Genband’s patents and that those claims had not been proven invalid, Genband sought a permanent injunction. The district court denied the request, concluding that Genband had not established irreparable harm from the infringing activities by alleging that Metaswitch made competing sales. The court indicated that Genband was required to prove that “the patented features drive demand for the product.” The Federal Circuit vacated, reasoning that the district court may have relied on too stringent an interpretation of the requirement, for an injunction, that the allegedly irreparable harm is being caused by the infringement. The court stated that it could not be confident of the answer to the causation question under the standard properly governing the inquiry or whether there is any independent ground for finding no irreparable harm or otherwise denying an injunction. View "Genband US LLC v. Metaswitch Networks Corp." on Justia Law

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The Ninth Circuit reversed the grant of summary judgment for defendants in this trademark infringement suit regarding defendants' use of Marketquest's "All-in-One" and "The Write Choice" trademarks. The panel held that Marketquest's pleading was adequate to support a cause of action for trademark infringement under a reverse confusion theory of likely confusion; consideration of the intent factor in the likelihood of confusion analysis varies with the type of confusion being considered; the district court erred by granting summary judgment in favor of defendants based upon the fair use defense regarding their use of "All-in-One;" and the district court erred by applying the fair use analysis to defendants' use of "The Write Choice" after determining that Marketquest presented no evidence of likely confusion. View "Marketquest Group, Inc. v. BIC Corp." on Justia Law

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IPCom’s 830 patent describes and claims a method and system for handing over a mobile phone call from one base station to another base station. After IPCom sued HTC for infringement, HTC successfully requested that the U.S. Patent and Trademark Office conduct inter partes reexamination of claims 1, 5–26, and 28–37. In the first round, the Examiner concluded that the claims were patentable, but the Patent Trial and Appeal Board issued a new ground of rejection for claims 1 and 5–30. In the second round, IPCom amended claims 1, 5–26, and 28–37, but the Board found that these amended claims were obvious under 35 U.S.C. 103 in view of various combinations of prior art. The Federal Circuit concluded, under the circumstances of this case, the Board properly had the authority to consider the patentability of claims 31–37. In its first decision, the Board did not address whether claims 31–37 should be regarded as obvious, but those claims were amended after the first round. The court agreed with IPCom that the Board failed to conduct a proper claim construction of the “arrangement for reactivating the link” claim limitation and vacated the obviousness rejections based on that limitation. View "IPCom GmbH & Co. v. HTC Corp." on Justia Law

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AdjustaCam’s patent, which issued in 1999, discloses a camera clip that supports a camera both on a flat surface and when attached to a computer monitor. AdjutaCam’s infringement litigation against Newegg included a Markman order, indicating that AdjustaCam's suit was baseless, and extended expert discovery. Just before summary judgment briefing, AdjustaCam voluntarily dismissed its infringement claims against Newegg with prejudice. Newegg then sought attorneys’ fees under 35 U.S.C. 285. Following a remand in light of intervening Supreme Court precedent clarifying what constitutes an exceptional case, the district court again denied Newegg’s motion for fees. The Federal Circuit reversed. Based on the circumstances presented here, the wholesale reliance on the previous judge’s fact-finding was an abuse of discretion. The record points to this case as standing out from others with respect to the substantive strength of AdjustaCam’s litigating position. Where AdjustaCam may have filed a weak infringement lawsuit, accusing Newegg’s products of infringing the patent, AdjustaCam’s suit became baseless after the district court’s Markman order. View "AdjustaCam, LLC v. Newegg, Inc." on Justia Law

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The claims at issue involve testing methods for fetal aneuploidies, conditions in which a fetus either has an abnormally high number of chromosomes (e.g., Down’s syndrome) or an abnormally low number (e.g., Turner’s syndrome). Previously, physicians diagnosed fetal aneuploidies using invasive amniocentesis or chorionic villus sampling or less invasive methods, such as ultrasonography and biochemical marker detection that had suboptimal accuracy. In three interference proceedings between Stanford and Chinese University, the Patent Trial and Appeal Board found that Stanford’s claims were unpatentable for lack of written description. The Federal Circuit vacated, finding that the Board relied on improper evidence and did not cite other substantial evidence to support its key findings. Whether a patent claim satisfies the written description requirement, 35 U.S.C. 112, depends on whether the description clearly allows persons of ordinary skill in the art to recognize that the inventor invented what is claimed. On remand, the Board should examine whether a person of ordinary skill would have understood that the patent’s specification disclosed random MPS sequencing and would have known, as of the priority date, that the specification’s reference to Illumina products meant random MPS sequencing as recited in the claims, by examining the record evidence as to pre-filing date art-related facts on Illumina products. View "Stanford University v. Chinese University of Hong Kong" on Justia Law

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The patent, covering methods of treating hepatitis C by administering compounds having a specific chemical and stereochemical structure, issued on a final application filed on June 27, 2003, by the inventor, Storer. In an interference proceeding, Storer was initially declared the senior party based on the “S1” provisional application's June 28, 2002 filing date. Clark’s Application was filed September 12, 2007, with priority claimed to a provisional application filed on May 30, 2003. Both were filed before the effective date of the America Invents Act, which abolished the first-to-invent interference rule in favor of a first-to-file rule. Clark moved to deny Storer the priority date of the S1 application and to invalidate Storer’s claims, arguing that the S1 application did not enable compounds having the 2´F(down) substituent. Storer argued that these compounds were generically disclosed in the S1 application, and were readily obtained based on the disclosure in the S1 provisional and prior art. The Board awarded priority to Clark. The Federal Circuit affirmed; substantial evidence supports the Board’s finding that “a high amount of experimentation is necessary to synthesize” the target compound. The record showed sufficient variability and unpredictability to support a conclusion that Storer’s provisional application did not enable the interference subject matter. View "Storer v. Clark" on Justia Law