by
Honeywell’s 366 patent is directed to the use of 1,1,1,2-tetrafluoropropene, an unsaturated hydrofluorocarbon compound, and a polyalkylene glycol lubricant in heat transfer systems, such as air conditioning equipment. In merged inter partes examinations, an examiner rejected several claims under 35 U.S.C. 103. The Patent Trial and Appeal Board affirmed. The Federal Circuit vacated. The Board erred: by improperly relying on inherency to find obviousness and in its analysis of motivation to combine the references; in dismissing Honeywell’s evidence of unpredictability in the art when it stated that one of ordinary skill would no more have expected failure than success in combining the references; and in relying on a new grounds for rejection. View "Honeywell International, Inc. v. Mexichem Amanco Holding S.A." on Justia Law

by
Regeneron accused Merus of infringing the 018 patent. The district court issued an opinion construing various terms and declared one term indefinite. Merus asserted a counterclaim of unenforceability due to inequitable conduct. It argued that during prosecution of the patent, Regeneron’s patent prosecutors withheld four references that were cited in a third-party submission in related U.S. patent prosecution and in European opposition briefs, were but-for material, and were withheld by Regeneron with the specific intent to deceive. There was no dispute that Regeneron knew of the Withheld References during prosecution. Regeneron argued that the references were not but-for material, that they were cumulative of references actually relied-on during prosecution, and that Regeneron did not have any specific intent to deceive. The Federal Circuit affirmed the district court, which had “exhaustively detailed Regeneron’s discovery misconduct" throughout the litigation and sanctioned Regeneron by drawing an adverse inference of specific intent to deceive the PTO. The court noted Regeneron’s repeated violations of discovery orders and improper secreting of relevant and non-privileged documents. Regeneron committed inequitable conduct, rendering the patent unenforceable. View "Regeneron Pharmaceuticals, Inc. v. Merus N.V." on Justia Law

by
Kerry is the CEO of KEI, the son of Dale Earnhardt (a professional race car driver who died in 2001), and the stepson of Teresa. KEI's ventures include the EARNHARDT COLLECTION lifestyle brand. KEI licensed that mark to Schumacher for use in connection with custom home design and construction. Teresa, Dale's widow, owns trademark registrations and common law rights containing the mark DALE EARNHARDT in connection with various goods and services and has sold licensed merchandise totaling millions of dollars since 2001. Teresa filed notices of opposition to KEI's trademark application. The Trademark Board found that Teresa did not establish a likelihood of confusion and that EARNHARDT COLLECTION is not primarily merely a surname, 15 U.S.C. 1052(e)(4). The Board found that “collection” is “not the common descriptive or generic name” for KEI’s goods and services. The Federal Circuit vacated. The Board's decision could be understood as finding that “collection” is neither generic nor merely descriptive of KEI’s goods and services, and adding “collection” to “Earnhardt” alters the surname significance of Earnhardt in the mark as a whole; it could be understood as finding that a mark consisting of a surname and a merely descriptive term is registrable as a matter of law if the descriptive term is not generic. View "Earnhardt v. Kerry Earnhardt, Inc." on Justia Law

by
The specifications of the three Soft Gel patents describe a method for dissolving CoQ10. The patented inventions include a composition, a soft gelatin capsule, and a method of making such a soft gelatin capsule, each involving a solution of CoQ10 dissolved in a monoterpene. CoQ10, also called ubiquinone, is a coenzyme, i.e., a chemical compound that is required for the biological activity of certain proteins and is necessary for certain metabolic processes and for the production of cellular energy; it has a secondary role as an antioxidant. In clinical trials, CoQ10 has been shown to be effective in regulating blood pressure and cholesterol levels, improving cardiovascular health, and “thwarting various diseases such as certain types of cancers.” It is “sparingly soluble in hydrophilic solvents such as water.” According to the patents, at the time of the inventions, most solvents that were used to administer CoQ10 in liquid form could dissolve, at most, only about 5 to 10 percent of the CoQ10. Jarrow requested inter partes reexaminations of the three Soft Gel patents. The Patent Board invalidated several claims. The Federal Circuit affirmed, finding the claims invalid as obvious in light of prior references, 35 U.S.C. 103(a). View "Soft Gel Technologies, Inc. v. Jarrow Formulas, Inc." on Justia Law

by
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

by
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

by
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

by
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

by
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

by
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