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November 2009
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i4i Ltd. P'ship v. Microsoft Corp

This is a patent infringement case about an invention for editing custom XML, a computer language. The owner of the patent, i4i Limited Partnership (“i4i”), brought suit against Microsoft Corporation (“Microsoft”), alleging that the custom XML editor in certain versions of Microsoft Word (“Word”), Microsoft’s word-processing software, infringed i4i’s patent. After a seven-day trial, the jury found Microsoft liable for willful infringement. The jury rejected Microsoft’s argument that the patent was invalid, and awarded $200 million in damages to i4i. The district court denied Microsoft’s motions for judgment as a matter of law and motions for a new trial, finding that Microsoft had waived its right to challenge, among other things, the validity of the patent based on all but one piece of prior art and the sufficiency of the evidence supporting the jury’s damage award. Although statutorily authorized to triple the jury’s damages award because of Microsoft’s willful infringement, the district court awarded only $40 million in additional damages. It also granted i4i’s motion for a permanent injunction. This injunction, which this court stayed pending the outcome of this appeal, is narrow. i4i Ltd. v. Microsoft Corp., No. 2009-1504 (Fed. Cir. Sept. 3, 2009). It does not affect copies of Word sold or licensed before the injunction goes into effect. Thus, users who bought or licensed Word before the injunction becomes effective will still be able to use the infringing custom XML editor, and receive technical support from Microsoft. After its effective date, the injunction prohibits Microsoft from selling, offering to sell, importing, or using copies of Word with the infringing custom XML editor. Microsoft is also prohibited from instructing or assisting new customers in the custom XML editor’s use.

On appeal, Microsoft challenges the jury verdict and injunction on multiple grounds. Because this case went to trial and we are in large part reviewing what the jury found, our review is limited and deferential. We affirm the issuance of the permanent injunction, though we modify its effective date to accord with the evidence. In all other respects, we affirm for the reasons set forth below.

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Congress deals funding blow to Patent Office

Budget strips $100 million provision for backlogged agency

By John Schmid of the Journal Sentinel

Posted: Dec. 29, 2009

The $1.1 trillion spending bill that Congress passed this month bankrolls thousands of pet projects: the World Food Prize in Iowa, a farmers market in Kentucky, and a 12-mile bike path in Michigan, among many others.

And to pay for a fraction of its largesse, Congress added one late change to the budget: It slapped a restrictive spending ceiling on the U.S. Patent and Trademark Office, further cramping an agency that was already incapacitated by more than a decade of congressional raids on its fees. 

Full story.

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Int'l Seaway Trading Corp. v. Walgreens Corp.

Plaintiff-Appellant International Seaway Trading Corporation (“Seaway”) filed suit against Walgreens Corporation (“Walgreens”) and Touchsport Footwear USA, Inc. (“Touchsport”) claiming infringement of Seaway’s patents, U.S. Design Patents Nos. D529,263 (“the ’263 patent”), D545,032 (“the ’032 patent”), and D545,033 (“the ’033 patent”). The district court granted summary judgment for defendants, finding that the claims of the asserted patents were invalid under 35 U.S.C. § 102 as anticipated by a patent assigned to Crocs, Inc. (“Crocs”), U.S. Design Patent No. D517,789 (“the Crocs ’789 patent”). Int’l Seaway Trading Corp. v. Walgreens Corp., 599 F. Supp. 2d 1307, 1319 (S.D. Fla. 2009).

On appeal, Seaway contends that the district court erred by basing its invalidity determination solely on the ordinary observer test and by failing to apply the point of novelty test. We agree with the district court that the point of novelty test should not be utilized for anticipation, and that only the ordinary observer test applies. However, while we conclude that the exterior appearance of the patented designs would be substantially similar to the prior art in the eyes of an ordinary observer, we conclude that the district court erred in failing to compare the insoles of the patents-in-suit with the prior art from the perspective of the ordinary observer. Accordingly, we affirm-in-part, vacate-in-part, and remand.

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Intellectual Sci. & Tech., Inc. v. Sony Elec., Inc.

In this patent case, the United States District Court for the Eastern District of Michigan granted summary judgment of non-infringement in favor of defendants. See Intellectual Sci. & Tech., Inc. v. Sony Elecs., Inc., Nos. 06-10406, -10409, -10412, 2008 WL 5068823 (E.D. Mich. Nov. 24, 2008). Because the district court correctly determined that plaintiff did not show that any genuine issue of material fact prevents summary judgment, this court affirms.

Download Intellectual Sci. & Tech., Inc. v. Sony Elec., Inc.

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Source Search Tech., LLC v. LendingTree, LLC

The United States District Court for the District of New Jersey held that the asserted claims of U.S. Patent No. 5,758,328 (“’328 patent”) were infringed but invalid on obviousness grounds. See Source Search Techs., LLC v. LendingTree, LLC, Case No. 04-CV-4420 DRD, 2007 WL 1302443 (D.N.J. May 2, 2007) (“Summary Judgment on Infringement”). Because genuine issues of material fact bar summary judgment on both obviousness and infringement, this court vacates and remands.

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Tyco Healthcare Group LP v. Ethicon Endo-Surgery, Inc.

Tyco Healthcare Group LP (“Tyco Healthcare”) appeals the dismissal of its patent infringement suit against Ethicon Endo-Surgery, Inc. (“Ethicon”). The district court dismissed without prejudice the infringement suit because Tyco Healthcare had failed to prove ownership of the asserted patents, and thus lacked standing to sue. Ethicon cross-appeals, arguing that the dismissal should have been with prejudice. We affirm the district court’s decision to dismiss without prejudice.

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Starbucks Corp. v. Wolfe's Borough Coffee, Inc.

Plaintiffs-appellants, Starbucks Corporation and Starbucks U.S. Brands, LLC (together, “Starbucks”), appeal from a judgment entered on June 5, 2008, in the United States District Court for the Southern District of New York (Swain, J.), following a bench trial, in favor of defendant-appellee, Wolfe’s Borough Coffee, Inc., d/b/a Black Bear Micro Roastery (“Black Bear”). The District Court found that Starbucks failed to demonstrate entitlement to relief on its (1) federal trademark infringement, dilution, and unfair competition claims brought pursuant to the Lanham Act, 15 U.S.C. §§ 1114(1), 1125, 1127; (2) state trademark dilution claims brought pursuant to New York Gen. Bus. Law § 360-l; and (3) unfair competition claim under New York common law. We vacate, in part, the District Court’s decision and remand for further proceedings on the issue of whether Starbucks demonstrated a likelihood of dilution by “blurring” under federal trademark law. In all other respects, the judgment of the learned District Court is affirmed.

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Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp.

Ultimax Cement Manufacturing Corporation, Hassan Kunbargi, and KA Group (collectively “Ultimax”) appeal from the judgment of the United States District Court for the Central District of California granting summary judgment of noninfringement, invalidity, laches, and indefiniteness relating to certain claims of U.S. Patents 4,957,556 (“the ’556 patent”); 6,113,684 (“the ’684 patent”); and 6,406,534 (“the ’534 patent”), as well as the court’s grant of summary judgment that no trade secret was violated, its failure to disqualify the law firm representing CTS Cement Manufacturing Corporation (doing business as CTS Cement Manufacturing Company) and its codefendants(collectively “CTS”), and its denial of leave to amend the complaint. CTS cross-appeals from the court’s denial of its motion to make the case exceptional and to award attorney fees and sanctions.6 Heartland Cement Sales Company (“Heartland”) supports Ultimax in opposing CTS’s cross-appeal. We affirm in part, dismiss in part, vacate in part, reverse in part, and remand.

Download Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp.

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Perfect Web Tech., Inc. v. InfoUSA, Inc.

Perfect Web Technologies, Inc. (“Perfect Web”) appeals a summary judgment order holding that the asserted claims of its U.S. Patent No. 6,631,400 (“’400 patent”) are invalid. Perfect Web Techs., Inc. v. InfoUSA, Inc., No. 07-CV-80286 (S.D. Fla. Oct. 24, 2008) (“Opinion”). Because we agree with the district court that the asserted claims would have been obvious, we affirm.

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Lahoti v. VeriCheck, Inc.

David Lahoti appeals the district court’s bench trial judgment that his use of the “VeriCheck” Georgia state service mark owned by Vericheck, Inc. violated the Anti- Cybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. § 1125(d), the Lanham Act, 15 U.S.C. §§ 1051 et seq., the Washington Consumer Protection Act (“WCPA”), Wash. Rev. Code § 19.86, and various Washington common law doctrines. Lahoti, who has previously been found liable for cybersquatting activities, obtained the domain name “vericheck. com,” but did not use the website to offer any goods or services. We conclude that the district court’s factual decision that the “VeriCheck” mark was a distinctive, legally protectable mark under the ACPA and federal trademark law was based in part on reasoning contrary to federal trademark law and based in part on reasoning that could support the district court’s conclusion. Because we believe the district court should decide the issue of distinctiveness in light of the principles we explain, we vacate the district court’s opinion and remand for further proceedings not inconsistent with this opinion.

Download Lahoti v. VeriCheck, Inc., No. 08-35001

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