Intellectual Property and Tech Law Reports

Ritchie v. Vast Res., Inc.

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And if more is required to make our point, there is the venerable case of Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248 (1851), cited approvingly in KSR Int’l Co. v. Teleflex Inc., supra, 550 U.S. at 406, 415, which denied patentability to an invention consisting of the substitution of a clay or porcelain knob for a metallic or wood knob in a doorknob (the doorknob itself, as distinct from the knob on the end of it, being an assemblage of knob, shank, and spindle). Other substitution cases in which patentability was denied on grounds of obviousness include Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1535–38 (Fed. Cir. 1983); Brunswick Corp. v. Champion Spark Plug Co., 689 F.2d 740, 749-50 (7th Cir. 1982), and Lyle/Carlstrom Associates, Inc. v. Manhattan Store Interiors, Inc., 635 F. Supp. 1371, 1381-83 (E.D.N.Y. 1986), aff’d, 824 F.2d 977 (Fed. Cir. 1987). These decisions, too, support our conclusion that the judgment must be reversed with instructions to dismiss the suit.
REVERSED

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Princo Corp. v. Int'l Trade Comm'n

Princo Corporation and Princo America Corporation (collectively “Princo”) appeal from a final order of the United States International Trade Commission (“Commission”). The Commission found that compact discs imported by Princo infringed claims of six patents asserted by U.S. Philips Corporation (“Philips”) and rejected Princo’s patent misuse defense. In re Certain Recordable Compact Discs & Rewritable Compact Discs, No. 337-TA-474, slip op. at 9 (Int’l Trade Comm’n Feb. 5, 2007) (“Final Determination”), available at 2007 WL 1256290 (public version).
On appeal, Princo contends that the Commission erred by failing to find misuse with respect to two aspects of Philips’s licensing practices: first, that Philips conditioned the license of Philips patents essential to the production of Orange Book compliant recordable compact discs upon the purchase of a license to an allegedly-nonessential Sony patent (the Lagadec patent), and second, that Philips allegedly agreed with Sony not to license the Lagadec patent as competing technology to the Orange Book. We affirm the Commission’s rejection of Princo’s misuse argument based on the first practice; we vacate and remand for further proceedings with regard to the second.

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Synthes v. GMReis

Synthes (U.S.A.) (“Synthes”) appeals the final judgment of the United States District Court for the Southern District of California dismissing without prejudice its suit for patent infringement against G.M. dos Reis Jr. Ind. Com de Equip. Medico (“GMReis”). Synthes (U.S.A.) v. G.M. dos Reis Jr. Ind. Com. de Equip. Medico, No. 07-CV-309-L(AJB), 2008 WL 789925 (S.D. Cal. Mar. 21, 2008). The court dismissed Synthes’s suit after it determined that it lacked personal jurisdiction over GMReis. For the reasons set forth in this opinion, we hold that the district court does have personal jurisdiction over GMReis. We therefore reverse the court’s judgment and remand the case to the court for further proceedings.

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Felix v. Am. Honda Motor Co., Inc.

This is a patent infringement case. Mark D. Felix (“Felix”) brought suit against American Honda Finance Corporation (d/b/a Honda Financial Services), American Honda Motor Company, Inc., Honda of America Manufacturing, Inc., Honda of Canada, Inc. (d/b/a Honda of Canada Manufacturing), Honda R & D Americas, Inc., and Honda Trading America Corporation (collectively, “Honda”), alleging that the In-Bed Trunk of Honda’s Ridgeline truck infringed claim 6 of Felix’s U.S. Patent No. 6,155,625 (the “’625 patent”). Following claim construction, the district court granted Honda’s motions for summary judgment of no literal infringement, Felix v. Am. Honda Motor Co., No. 05-2525-CM (D. Kan. Oct. 19, 2007) (“Literal Infringement Op.”), and no infringement under the doctrine of equivalents, Felix v. Am. Honda Motor Co., No. 05-2525-CM (D. Kan. Apr. 9, 2007) (“Equivalents Op.”). Because we conclude that the district court’s claim constructions were correct in all relevant respects, and because we agree with the district court that there was no literal infringement and that the doctrine of prosecution history estoppel precludes a finding of infringement by equivalents, we affirm.

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Takeda Pharm. Co., Ltd. v. Doll

The United States District Court for the District of Columbia held that later developments in the art may inform the “patentably distinct” determination for double patenting. Double patenting doctrines and case law permit this court to agree in part, but only to the extent that the subsequent developments predate the secondary application that triggers a double patenting rejection. Because genuine issues of fact cloud the date of availability of materially distinct processes, as well as the viability of those processes, this court vacates and remands.

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Aycock Eng'g, Inc. v. Airflite, Inc.

In 1970, Respondent-Appellant Aycock Engineering, Inc. (“Aycock Engineering”) applied for a service mark, which was registered at the United States Patent and Trademark Office (“USPTO”) in 1974 after examination. In 2007, however, the USPTO Trademark Trial and Appeal Board (“TTAB”) declared the registration void because it failed to meet the “use in commerce” element of the Lanham Act. Aycock Engineering now appeals the TTAB’s ruling. The question presented herein is whether the use in commerce requirement is met when an applicant uses a service mark in the preparatory stages of a service’s development, but never offers the service to the public. We hold that it is not.

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Dream Games of Ariz., Inc. v. PC Onsite

Dream Games of Arizona (“Dream Games”) prevailed in its lawsuit against PC Onsite for copyright infringement of “Fast Action Bingo,” an electronic video bingo game, and was awarded statutory damages. We must decide whether (1) the district court properly allowed the jury to see unprotectable elements of the game without identifying the protectable elements; (2) the jury should have been allowed to hear evidence that Fast Action Bingo was operated illegally in two states; (3) statutory damages were available to Dream Games despite the illegal operation; and (4) the district court erred in dismissing claims against PC Onsite’s majority owner for lack of evidence of direct infringement. We have jurisdiction, 28 U.S.C. § 1291, and we affirm the district court’s rulings.

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Rescuecom Corp. v. Google Inc.

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Beltronics USA, Inc. v. Midwest Inv. Dist., LLC

Defendants-Appellants are a consumer electronics company, its owners,and its trade names (collectively, “Midwest”). Plaintiff-Appellee (“Beltronics”) is a provider of aftermarket vehicle electronics, including radar detectors. Midwest appeals the district court’s order preliminarily enjoining it from selling Beltronics equipment not bearing an original Beltronics serial number label. See Lanham Act, § 34(a), 15 U.S.C. § 1116(a). We have jurisdiction under 28 U.S.C. § 1292(a)(1) and AFFIRM.

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TransCore, LP v. Electronic Transaction Consultants Corp.

TransCore, LP and TC License, Ltd. (collectively “TransCore”) appeal from a final judgment of the U.S. District Court for the Northern District of Texas that was entered upon the district court’s grant of summary judgment. See Transcore, LP v. Electronic Transaction Consultants Corp., No. 3:05-CV-2316-K, 2008 WL 2152027 (N.D. Tex. May 22, 2008). Specifically, the District Court found that TransCore’s patent infringement claims against Electronic Transaction Consultants Corp. (“ETC”) were barred by patent exhaustion, implied license and legal estoppel, in view of a settlement agreement between TransCore and the supplier of the products ETC installed, Mark IV. Because we agree with the district court and find that Mark IV’s sales were authorized and exhausted TransCore’s patent rights, thus barring TransCore’s claims against ETC, we affirm.

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