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January 2009
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OBX-Stock, Inc. v. Bicast

James Douglas, the founder of OBX-Stock, Inc., cleverly invented "OBX" as an abbreviation for the "Outer Banks" of North Carolina. OBX-Stock began using the letters OBX on oval stickers for automobiles to indicate that the automobile was from or had visited the Outer Banks. The letters were also attached to souvenirs and other sundries to indicate that they were sold at the Outer Banks. OBX-Stock has been successful in making money selling products with the OBX letters affixed to them, and it obtained trademark registrations from the Patent and Trademark Office for "OBX" for use in connection with a range of goods and services. Nonetheless, today, virtually every kind of business advertising at the Outer Banks identifies the Outer Banks geographical area with the "OBX" abbreviation. When Bicast, Inc., began selling stickers with the text "OB Xtreme," OBX-Stock commenced this trademark infringement action, requesting an injunction prohibiting the defendant from using "OB Xtreme" and demanding damages. The district court granted summary judgment in favor of Bicast, finding that "OBX" was either generic or a descriptive mark without secondary meaning and therefore was not a valid trademark, but the court declined to order cancellation of the trademark registrations. We affirm.

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Eli Lilly and Co. v. Teva Pharm

Finding that Teva Pharmaceuticals USA, Inc., (“Teva”) “recast its product more than eighteen months after it provided the original sample to Lilly and only eight months before trial is set to commence,” the United States District Court for the Southern District of Indiana extended the statutory thirty-month stay of 21 U.S.C. § 355(j)(5)(B)(iii) (2003), preventing the U.S. Food and Drug Administration (“FDA”) from finally approving Teva’s Abbreviated New Drug Application (“ANDA”). Eli Lilly & Co. v. Teva Pharms. USA, Inc., No. 1:06-cv-1017, 2008 WL 4809963, at *4-5 (S.D. Ind. Dec. 29, 2008) (“Extension Order”). Because the trial court did not abuse its discretion, this court affirms.

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La Resolana Architects PA v. Reno, Inc.

Plaintiff-Appellant La Resolana Architects, PA, (“La Resolana”) brought an action against Reno, Inc., its president Lance Clay (collectively “Reno, Inc.”), Southwest Investment Trust, and its president Gary Plante (collectively “SWIT”) for copyright infringement, violation of the Lanham Act, and violation of the New Mexico Unfair Trade Practices Act (“UTPA”). After a bench trial, the district court entered judgment in favor of the defendants on all counts. We conclude that the district court did not clearly err in determining that La Resolana failed to establish copying as a matter of fact. Therefore, exercising jurisdiction pursuant to 28 U.S.C. § 1291, we AFFIRM.

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Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc.

Limited Brands, Inc., Bath & Body Works, Inc., Henri Bendel, Inc., and Bath & Body Works, Inc. doing business as The White Barn Candle Co. (collectively, “Limited”) appeal from the final judgment of the United States District Court for the Northern District of Illinois granting summary judgment of validity and infringement of U.S. Patent 6,457,969 (“the ’969 patent”), awarding damages, and denying a motion for reconsideration. See Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 553 F. Supp. 2d 939 (N.D. Ill. 2008); Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 514 F. Supp. 2d 1051 (N.D. Ill. 2007); Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., No. 05-CV-3684 (N.D. Ill. June 30, 2006) (document 137) (“Validity Motion”); Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., No. 05-CV-3684 (N.D. Ill. June 28, 2006) (document 139) (“Infringement Opinion”); U.S. Can Co. v. Limited Brands, Inc., No. 05-CV-3684, 2006 WL 1049581 (N.D. Ill. Apr. 19, 2006) (“Claim Construction Opinion”). Because the court erred as a matter of law in failing to find claims 1 and 5 of the ’969 patent to have been obvious and in finding infringement of those claims, we reverse.

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Sud-Chemie, Inc. v. Multisorb

Desiccant containers are frequently used to maintain a dry environment for products during storage or shipping. Some desiccants function by absorbing water vapor and undergoing a phase change into liquid form. Leakage of the liquid from the desiccant container would defeat the purpose of the desiccant and could damage either the products that are being maintained in a dry environment or the container in which the products are being shipped. For that reason, it is important that desiccant containers used in that manner be permeable to water vapor but impermeable to liquid water, and water, and that they have strong, leak-proof seals, so that the seals will not fail even if a substantial volume of liquid collects inside the container.

Süd-Chemie, Inc., owns U.S. Patent No. 5,743,942 (“the ’942 patent”), which is directed to a desiccant container made from a water-vapor-permeable, multilayered packaging material. The packaging material recited by the ’942 patent consists of two films: a microporous film and a laminate film. The two films are heat-sealed to each other around the edges to form a closed container for the desiccant material that is placed within. Süd-Chemie manufactures commercial desiccant containers covered by the ’942 patent.

According to the ’942 patent, many prior art desiccant packages sought to solve the problem of water leakage from the package by creating seals from films coated with adhesives and sealed together with heat sealers. ’942 patent, col. 1, ll. 61-64. In contrast, the ’942 patent sought to solve the leakage problem by requiring the use of packaging films that are not coated with adhesives but that are “compatible” with each other. The ’942 patent explains that when they are sealed together with a heat sealer, uncoated but compatible film materials form stronger seals than adhesive-coated films. In addition, they are less costly and can be sealed using conventional high-throughput heat-sealing machines that cannot readily be used with adhesive-coated films. Id. at col. 3, ll. 16-28. Claim 1 of the ’942 patent, which is the only independent claim, reads as follows:

A desiccant container comprising a desiccant material surrounded by a laminated, water vapor permeable desiccant packaging material, wherein said packaging material comprises an uncoated microporous film having an inner and outer surface heat sealed to an uncoated laminate film having an inner and outer surface, wherein the uncoated microporous film comprises a different composition from the uncoated laminate film, wherein wherein edges of the inner surface of the uncoated microporous film are sealed to edges of the inner surface of the uncoated laminate film, and wherein the inner surface of the uncoated microporous film and the inner surface of the uncoated laminate film are comprised of compatible polymeric materials.

Defendant Multisorb manufactures and sells TranSorb desiccant bags, which are also designed and marketed to protect cargo from moisture damage during shipment. In 2003 Süd-Chemie brought suit against Multisorb in the United States District Court for the Western District of Kentucky, alleging that Multisorb’s TranSorb product line infringes the ’942 patent. After the district court issued an order construing the disputed terms of claim 1, the parties filed cross-motions for summary judgment on the issues of infringement and validity.

The central issue with respect to validity was whether a prior art patent, U.S. Patent No. 4,487,791 (“Komatsu”), rendered the ’942 patent invalid for obviousness. The Komatsu patent is directed to an oxygen-absorbing package in which an oxygen-absorbing material is surrounded by a gas-permeable packaging material. The packaging material in Komatsu consists of a microporous film and a laminate film sealed together with a conventional heat-sealing machine. Komatsu, col. 1, ll. 6-8, 57-61. The district court found that the polymeric microporous and laminate films disclosed by Komatsu were identical to those described in the ’942 patent and that both patents taught heat sealing the films using conventional high-speed packaging equipment. The court therefore concluded that “the Komatsu patent taught the same container as the ’942 patent, with the exception of the absorbent material disposed between the layers.” According to the district court, the ’942 patent simply substituted a desiccant material for an oxygen-absorbing material. Citing the Supreme Court’s decision in KSR International Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007), the court held that the substitution of one absorbing material for another would have been obvious to a person of skill in the art of atmospheric packaging. The district court therefore granted summary judgment that the ’942 patent was invalid for obviousness in view of the prior art Komatsu patent. Süd-Chemie appeals that decision to this court.

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Comedy Club, Inc. v. Improv West

On June 13, 1999, Comedy Club, Inc. and Al Copeland Investments, Inc. (collectively “CCI”) executed a Trademark License Agreement (“Trademark Agreement”) with Improv West Associates (“Improv West”) that granted CCI an exclusive nationwide license to use Improv West’s trademarks. A few years later, CCI breached the agreement and sought to protect its interests in the trademarks in federal district court by filing a declaratory judgment action. After a complex procedural history, the parties were left with an arbitration award and two district court orders, one order compelling the parties to arbitrate, and another order confirming the arbitration award. CCI appealed both district court orders. We have jurisdiction under 28 U.S.C. § 1291.

In a prior opinion, published at 514 F.3d 883, we determined that we lacked jurisdiction to review the district court’s order compelling arbitration. We affirmed in part and vacated in part the district court’s order confirming the arbitration award. The Supreme Court vacated that opinion and remanded this case to us for reconsideration in light of Hall Street Associates L.L.C. v. Matel, Inc., 128 S. Ct. 1396 (2008). We determine that Hall Street Associates does not undermine our prior precedent, Kyocera Corp. v. Prudential- Bache T. Servs., 341 F.3d 987 (9th Cir. 2003) (en banc). As a result, in this circuit, an arbitrator’s manifest disregard of the law remains a valid ground for vacatur of an arbitration award under § 10(a)(4) of the Federal Arbitration Act. Therefore, we adhere to the outcome in our prior decision.

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