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Touchcom, Inc. v. Bereskin & Parr

Touchcom, Inc. and Touchcom Technologies, Inc. (collectively “Touchcom”) appeal from the final judgment of the United States District Court for the Eastern District of Virginia dismissing Touchcom’s malpractice suit against the law firm of Bereskin & Parr (“B&P”) and attorney H. Samuel Frost. Touchcom, Inc. v. Bereskin & Parr, No. 07-CV-114, slip op. at 1 (E.D. Va. Feb. 4, 2008). The district court dismissed Touchcom’s suit for lack of personal jurisdiction. Because the court erred in determining that it did not have personal jurisdiction over B&P and Frost, we reverse.

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Janky v. Lake County Convention and Visitors Bureau

For these reasons, the judgment is REVERSED and the case REMANDED so that summary judgment can be entered in favor of the Bureau, and for such further proceedings that may be necessary.

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Patent backlog clogs recovery

Agency’s inability to keep pace undermines American innovation, competitiveness

First of two parts

Alexandria, Va. — On a campus of boxy office buildings nine miles outside Washington, D.C., some 6,300 patent examiners hold the nation's economic future in their hands.

The next Google. The next iPhone. The next Viagra.

All could be fueled by inventions awaiting the 20 years of protection afforded by a U.S. patent - if only the patent examiners could catch up.

But they can't. The federal system of granting patents to businesses and entrepreneurs has become overwhelmed by the growing volume and complexity of the applications it receives, creating a massive backlog that by its own reckoning could take at least six years to get under control, the Journal Sentinel has found.

Amid the worst downturn since the Great Depression, the U.S. Patent and Trademark Office could be seen as a way to jump-start the economy. Instead, it sits on applications for years, placing inventors at risk of losing their ideas to savvy competitors at home and abroad.

The agency took 3.5 years, on average, for each patent it issued in 2008, a Journal Sentinel analysis of patent data shows. That's more than twice the agency's benchmark of 18 months to deal with a patent request.

The total number of applications waiting for approval, more than 1.2 million, nearly tripled from 10 years earlier.

The Journal Sentinel also found:

• Under a practice that Congress authorized a decade ago, the Patent Office publishes applications on its Web site 18 months after the inventor files them, outlining each innovation in detail regardless of whether an examiner has begun considering the application. The system invites competitors anywhere in the world to steal ideas.

• For more than a dozen years starting in 1992, Congress siphoned off a total of $752 million in fees from the Patent Office to pay for unrelated federal projects, decimating the agency's ability to hire and train new examiners.

• As its backlog grew, the Patent Office began rejecting applications at an unprecedented pace. Where seven of 10 applications led to patents less than a decade ago, fewer than half are approved today - a shift that a federal appeals judge termed "suspicious." The same judge calls the agency "practically dysfunctional."

• Staff turnover has become epidemic. Experts say it takes at least three years for a patent examiner to gain competence, and yet one examiner has been quitting on average for every two the agency hires.

• Patent activity, a widely accepted barometer of innovation, is showing exponential growth in increasingly competitive economies such as China, South Korea and India. As developing economies strive to commercialize and protect their technologies throughout the world, they add tremendously to the U.S. Patent Office's workload.

• In many cases, applications languish so long that the technology they seek to protect becomes obsolete, or a product loses the interest of investors who could give it a chance at commercial success. "Patents are becoming commercially irrelevant to product life cycles," said John White, a patent attorney and former examiner.

For an American start-up company, a patent application is often the only asset, which creates a Catch-22: Start-ups often need a patent in order to get funding; yet without that funding, entrepreneurs can't afford the mounting fees and legal costs to keep the patent application alive or to fend off infringers.

Full story.

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In re McNeil-PPC, Inc.

McNeil-PPC, Inc. appeals rejections of claims as obvious. The Director of the U.S. Patent and Trademark Office ("PTO") seeks dismissal of McNeil's appeal as untimely. Because we determine that McNeil's appeal is timely, we reach the merits and, because the Board of Patent Appeals and Interferences findings about the disclosures of a prior art patent application are not supported by substantial evidence, we reverse the claim rejections.

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Wavetronic v. EIS Electronic Integrated Systems

Wavetronix LLC (“Wavetronix”) brought this patent infringement action against EIS Electronic Integrated Systems (“EIS”). The patent in suit is United States Patent No. 6,556,916 (“the ’916 patent”), entitled “System and Method for Identification of Traffic Lane Positions.” Wavetronix and EIS both develop systems for monitoring the flow of automobile traffic on thoroughfares. Wavetronix accuses the automatic setup feature of EIS’s Remote Traffic Microwave Sensor (“RTMS”) X3 monitoring device of infringing one independent claim and several dependent claims of the ’916 patent, literally or under the doctrine of equivalents.

The district court granted summary judgment of non-infringement to EIS. Wavetronix appeals the judgment of non-infringement, and EIS cross-appeals dismissal of its counterclaims of invalidity and unenforceability. We conclude that summary judgment of non-infringement is proper, and we affirm the district court’s judgment.

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Blackboard, Inc. v. Desire2Learn

Blackboard Inc. is the market leader in providing educational institutions with course management software that allows interaction between students and teachers over the Internet. Desire2Learn Inc. is Blackboard’s primary commercial competitor. This appeal arises from an action by Blackboard against Desire2Learn for infringement of Blackboard’s U.S. Patent No. 6,988,138 (“the ’138 patent”), which claims an Internet-based educational support system and related methods.

The ’138 patent is not the inventors’ first work in the field of education-support software. In 1996, while they were college students, several of the same inventors developed a software product called CourseInfo 1.5, which allowed for online management of information relating to individual courses. In the CourseInfo system, each course had its own website, and students and instructors would log in to each course separately. In 1999, the inventors merged their company with Blackboard. Another prior art course management system, which was available by 1997, is the Serf system, developed by a professor at the University of Delaware. Like CourseInfo 1.5, the Serf system provided a way for students and teachers to interact through the Internet.

Upon issuance of the ’138 patent, Blackboard filed an infringement action against Desire2Learn in the United States District Court for the Eastern District of Texas. After a Markman hearing, the district court entered partial summary judgment forDesire2Learn, holding claims 1-35 of the patent invalid for indefiniteness. The court then conducted a jury trial that addressed whether Desire2Learn had infringed claims 36-38 of the patent; Desire2Learn asserted by way of defense that those claims were anticipated and would have been obvious in light of prior art that predated the patent’s priority date of 1999.
An important issue at trial was whether the asserted claims of the ’138 patent required that a person using the claimed method be able to use a “single login” to access multiple courses and multiple roles in those courses. Blackboard touted its method as allowing a person to use a single login to obtain access to all the courses of interest to that person and to obtain different levels of access to the course materials depending on that person’s role in each course. For example, Blackboard asserted that its claimed method would allow a graduate student who was a student in one course and a teacher in another to use a single login to obtain access to both courses and to obtain access to the materials for each course according to the graduate student’s role in each.


At trial, Blackboard took the position that the method of claims 36-38 required that the user have the capacity to access multiple courses and multiple roles through a single login. Desire2Learn took the position that Blackboard’s claims did not require such access through a single login, and that the claims were therefore invalid in light of the prior art. The jury found that claims 36-38 were neither anticipated nor obvious, and that Desire2Learn had infringed those claims.


Desire2Learn then filed motions for judgment as a matter of law (“JMOL”), contending that claims 36-38 were invalid for both anticipation and obviousness. The court denied the motions. In so doing, the court agreed with Blackboard that the asserted claims required that the recited method permit access to multiple courses and roles through a single login.


In appeal No. 2008-1368, Desire2Learn argues that claims 36-38 are invalid in light of the prior art and that its system does not infringe those claims. In appeal No. 2008-1396, Blackboard cross-appeals from the district court’s ruling, on summary judgment, that claims 1-35 are indefinite. In a separate appeal, No. 2008-1548, Blackboard appeals from the district court’s denial of an award of costs related to certain discovery expenses.

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PFS Distribution Co. v. Raduechel

PFS Distribution Company (PFS Distribution) and Pilgrim’s Pride Corporation (Pilgrim’s Pride) (collectively, PFS) sued Darrell Raduechel (Raduechel) and Barry Spain (Spain) for breach of fiduciary duties and copyright infringement in connection with the formation and operation of Raduechel’s and Spain’s company, D&B Solutions, Inc. (D&B Solutions). PFS also sued Raduechel; Spain; D&B Solutions; John Pothoven (Pothoven); Richard Donohue (Donohue) and Theobald Donohue & Thompson, P.C. (TD&T) (collectively, Accounting Defendants); and Steven Hicks (Hicks) and MidWestOne Bank and Trust (MidWestOne) (collectively, Banking Defendants) for civil conspiracy, constructive trust and unjust enrichment, misappropriation of trade secrets, and aiding and abetting. D&B Solutions was also added to PFS’s copyright infringement claim. Raduechel counterclaimed against PFS for payment of a salary bonus.

The district court1 dismissed Raduechel’s counterclaim, and granted summary judgment to PFS on the issue of Raduechel’s and Spain’s liability for breach of fiduciary duties and misappropriation of trade secrets. The district court left for trial the remaining claims, as well as the issues of causation and damages for Raduechel’s and Spain’s breach of fiduciary duties and misappropriation of trade secrets. A jury returned a verdict in favor of all defendants on all of PFS’s remaining claims. PFS then moved for equitable relief and a new trial. The district court denied both motions.

PFS now challenges the district court’s (1) denial of PFS’s motion for a new trial; (2) jury instructions on the civil conspiracy, and aiding and abetting claims; (3) expert witness rulings; and (4) denial of equitable relief. Raduechel cross appeals the district court’s dismissal of his counterclaim, and Raduechel and Spain challenge the district court’s summary judgment ruling. We affirm.

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George & Co., LLC v. Imagination Entm't Ltd.

On May 21, 2007, George and Company, LLC (George) brought this trademark infringement action against Imagination Entertainment Limited, Imagination Holdings PTY Limited, and Imagination DVD, Incorporated (collectively Imagination), claiming that Imagination infringed upon George’s trademark rights in "LCR" and "LEFT CENTER RIGHT." The district court granted summary judgment in favor of Imagination. George appeals, and we now affirm.

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Rescuecom Corp. v. Google

Appeal by Plaintiff Rescuecom Corp. from the judgment of the United States District Court for the Northern District of New York (Mordue, Chief Judge), dismissing Rescuecom’s action against Google Inc. for trademark infringement, false designation of origin, and dilution under the Lanham Act, 15 U.S.C. § 1114 & 1125, pursuant to Federal Rules of Civil Procedure 12(b)(6) for failure to state a claim for relief, on the grounds that Google did not use Rescuecom’s trademark in commerce within the meaning of the Lanham Act. The Court of Appeals (Leval, J.) vacates and remands. The Complaint’s allegations that Google’s recommendation and sale of Rescuecom’s mark to Google’s advertisers, so as to trigger the appearance of their advertisements and links in a manner likely to cause consumer confusion when a Google user launches a search of Rescuecom’s trademark, properly alleges a claim under the Lanham Act.

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