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May 2009
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Zino Davidoff SA v. CVS Corp.

Defendant appeals from a preliminary injunction ordered by the United States District Court for the Southern District of New York (Karas, J.), which enjoined defendant, inter alia, from selling plaintiff’s trademarked products with the unique production code removed. The Court of Appeals (Leval, J.) affirms. Because the production codes play an important role in helping the trademark owner to guard against counterfeits and protect the reputation of the mark, the district court properly found that its unauthorized removal by a seller could justify a finding of trademark infringement.

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Ortho-McNeil Pharmaceutical, Inc. v. Mylan Laboratories, Inc.

Defendants-Appellants Mylan Laboratories and Mylan Pharmaceuticals (collectively “Mylan”) appeal from the district court’s order awarding approximately $1.3 million in costs to Plaintiff-Appellee Daiichi Pharmaceutical Co. (“Daiichi”) under 28 U.S.C. § 1920 and Federal Rule of Civil Procedure 54(d). We affirm-in-part, vacate-in-part, and remand.

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Univ. of Pittsburgh v. Varian Medical Systems, Inc.

The University of Pittsburgh (“Pitt”) appeals the final judgment of the United States District Court for the Western District of Pennsylvania dismissing with prejudice its patent infringement action for lack of standing. Judgment, Univ. of Pittsburgh v. Varian Med. Sys., Inc., No.07-CV-0491 (W.D. Penn. June 16, 2008). Varian Medical Systems, Inc. (“Varian”) cross appeals the district court’s denial of its motions for sanctions and attorney fees. We need not decide whether a dismissal was warranted in this case because we hold the district court erred in dismissing the claims “with prejudice.” Thus, we vacate the dismissal and remand with instructions to designate the dismissal as “without prejudice.”

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Larson v. Correct Craft

Plaintiff-Appellant Borden Larson appeals from decisions by the United States District Court for the Middle District of Florida that granted summary judgment in favor of Defendants-Appellees Correct Craft, Inc. (“Correct Craft”), William Snook, and Robert Todd. Larson originally filed suit in Florida state court, alleging multiple fraud-based claims under state law, seeking rescission of several patent assignments he executed, and requesting declaratory judgments concerning the parties’ respective rights to the patents at issue. Correct Craft removed the case to federal court on the ground that the declaratory-judgment counts, although nominally pleaded under Florida law, were in substance claims to correct inventorship under 35 U.S.C. § 256. At oral argument, we raised the question of whether the district court properly exercised federal-question jurisdiction pursuant to 28 U.S.C. § 1338(a), and we permitted the parties to submit supplemental briefing on this jurisdictional issue.

As we explain below, Larson has no concrete financial interest in the correction of the patents in this case because he has assigned away all of his patent rights, and he claims no purely reputational interest in the patents. Thus, unless and until Larson obtains equitable relief that restores his ownership rights, he has no standing to bring a stand-alone action under § 256. Because his § 256 cause of action was the only basis for removal from state court, it follows that the district court had no basis for exercising subject-matter jurisdiction over the case, and so we lack jurisdiction to reach the merits of Larson’s appeal. Accordingly, we vacate the judgment of the district court and remand with instructions.

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Agilent Tech., Inc. v. Affymetrix

The United States District Court for the Northern District of California reviewed an interference action that Agilent Technologies, Inc. (Agilent) brought under 35 U.S.C. § 146 against Affymetrix, Inc. (Affymetrix). The district court sustained the decision of the Board of Patent Appeals and Interferences (the Board) and awarded priority to Affymetrix. Agilent Techs. v. Affymetrix, Inc., No. C-06-05958 (N.D. Cal. June 13, 2008) (SJ Order). Because the district court erred with regard to claim construction, improperly denied Agilent’s motion for summary judgment with regard to written description under § 112 ¶ 1, and improperly granted Affymetrix’s cross-motion on the same issue, this court reverses.

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Titan Tire Corp. v. Case New Holland

In this design patent case, in which the patentee sought a preliminary injunction, we first clarify the requirements for such an injunction. We then determine, in light of that clarification and the evidence before the trial court, whether that court was correct in denying the sought-for relief. Because we conclude that under the applicable legal standard the trial court did not abuse its discretion in denying the injunction, we affirm. 

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Depuy Spine, Inc. v. Medtronic Sofamor Danek

Medtronic Sofamor Danek, Inc. and Medtronic Sofamor Danek USA, Inc. (collectively “Medtronic”) appeal from a final judgment of the United States District Court for the District of Massachusetts. DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., No. 01-CV-10165 (D. Mass. Dec. 11, 2007). The district court denied Medtronic’s ensnarement defense after a jury found that Medtronic had infringed U.S. Patent No. 5,207,678 (“the ’678 patent”) under the doctrine of equivalents and awarded $226.3 million in lost-profit damages to DePuy Spine, Inc. and Biedermann Motech GmbH (collectively “DePuy”). DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 526 F. Supp. 2d 162 (D. Mass. 2007) (“Ensnarement Order”). The district court also found that Medtronic had engaged in litigation misconduct, for which the court awarded DePuy $425,375 in attorney fees under 35 U.S.C. § 285 and imposed a further $10 million sanction against Medtronic under the court’s inherent authority. Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 534 F. Supp. 2d 224 (D. Mass. 2007) (“Sanctions Order”). DePuy cross-appeals from the grant of Medtronic’s motion for judgment as a matter of law (“JMOL”) of no willful infringement and from the denial of DePuy’s motion for new trial on reasonable royalty damages.

Because the district court correctly denied Medtronic’s ensnarement defense and correctly denied Medtronic’s motion for JMOL on lost profits of patented pedicle screws, we affirm the damages award as to those products. However, we reduce the damages award insofar as the lost profits were based partly on lost sales of unpatented “pull-through” products, which neither compete nor function with the patented invention. We also reverse the award of attorney fees and the imposition of sanctions, which were predicated on a legal error involving the application of the reverse doctrine of equivalents. Finally, we conclude that the district court correctly determined that Medtronic was entitled to JMOL of no willfulness, and that it did not abuse its discretion in denying DePuy’s motion for new trial on royalty damages. Thus, we affirm-in-part, reverse-in-part, and remand for calculation of post-judgment interest.

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