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April 2010
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Orion IP, LLC. v. Hyundai

Hyundai Motor America (“Hyundai”) appeals from the United States District Court for the Eastern District of Texas’s (the “district court’s”) ruling of no unenforceability for inequitable conduct and denial of Hyundai’s motion for judgment as a matter of law (“JMOL”) and a new trial. The district court denied the JMOL motion by finding inter alia that (1) U.S. Patent No. 5,367,627 (the “’627 patent”) was not invalid on anticipation or obviousness grounds; and that (2) it was not error (i) to instruct the jury that the critical date was November 10, 1988, (ii) to fail to instruct the jury that an inventor’s own secret commercial use could invalidate the patent under § 102(b), and (iii) to fail to explicitly instruct the jury that obviousness can be based on a single reference. We reverse the district court’s denial of judgment as a matter of law on validity because there is insufficient evidence to support the jury’s verdict of no anticipation. However, because the district court did not abuse its discretion in its analysis of the inequitable conduct counterclaim, we affirm the judgment of no unenforceability.

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R.C. Olmstead, Inc. v. CU Interface, LLC

R.C. Olmstead appeals the district court’s grant of summary judgment to defendants in this copyright and trade secret infringement case brought by one provider of credit union software against the developer of a competing credit union software. Olmstead challenges several of the district court’s discovery rulings, which Olmstead argues unfairly inhibited its ability to prove its claims. Among other things, the district court rejected plaintiff’s inadequate expert report under F.R.C.P. 26, and refused to draw adverse inferences based on a third party’s destruction of evidence. The district court granted summary judgment for defendant CUI after determining that Olmstead had failed to raise a genuine issue of material fact as to whether CUI created its software by copying Olmstead’s software, and that Olmstead’s end use product was not a trade secret. Because the district court did not abuse its discretion with respect to its subsidiary rulings, and because Olmstead did not create a genuine issue of material fact with respect to either the copyright claim or the trade secret claim, the district court properly granted summary judgment.

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VICTORIA’S SECRET STORES, INC. v. VICTOR MOSELEY, dba Victor’s Little Secret

In this trademark “dilution by tarnishment” case, brought under the Trademark Dilution Revision Act of 2006, the question is whether the plaintiff, an international lingerie company that uses the trade name designation “Victoria’s Secret” has a valid suit for injunctive relief against the use of the name “Victor’s Little Secret” or “Victor’s Secret” by the defendants, a small retail store in a mall in Elizabethtown, Kentucky, that sells assorted merchandise, including “sex toys” and other sexually oriented products. The District Court issued the injunction. Since then the shop has been operating under the name of “Cathy’s Little Secret.” The District Court concluded that even though the two parties do not compete in the same market, the “Victor’s Little Secret” mark — because it is sex related — disparages and tends to reduce the positive associations and the “selling power” of the “Victoria’s Secret” mark. The question is whether the plaintiff’s case meets the definitions and standards for “dilution by tarnishment” set out in the new Act which amended the old Act, i.e., the Federal Trademark Dilution Act of 1995.

The new Act was expressly intended to overrule the Supreme Court interpretation of the old Act in this very same case, Moseley v. V Secret Catalog, Inc., 537 U.S. 418 (2003), rev’g 259 F.3d 464 (6th Cir. 2001), aff’g 54 U.S.P.Q.2d 1092 (W.D. Ky. 2000). The Supreme Court reversed a panel of this Court that had affirmed an injunction against “Victor’s Little Secret” issued by the District Court. On remand to the District Court from the Supreme Court after the 2003 reversal, no new evidence was introduced, and the District Court reconsidered the case based on the same evidence but used the new language in the new Act which overrules the Supreme Court in this case. We will first brief the Supreme Court opinion and the reasons Congress overruled the Supreme Court in this case. We will then outline our understanding of the new standards for measuring trademark “dilution by tarnishment” and apply them to this case. We conclude that the new Act creates a kind of rebuttable presumption, or at least a very strong inference, that a new mark used to sell sex related products is likely to tarnish a famous mark if there is a clear semantic association between the two. That presumption has not been rebutted in this case.

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Patent snafus cost U.S. $6.4 billion yearly

Researchers compute loss from hobbled innovation

By John Schmid of the Journal Sentinel Posted: May 22, 2010

The United States wastes at least $6.4 billion each year in "forgone innovation" - legitimate technologies that cannot get licensed and start-ups that cannot get funding - because of backlogs and dysfunction at the U.S. Patent and Trademark Office, the agency that's supposed to protect and encourage innovation in America.

That figure, enough to provide an average round of venture capital funding to more than 1,000 start-up companies each year, comes from the first-ever effort to quantify the economic damage inflicted by the chronic delays at the Patent Office. It was calculated by London Economics, a British research group commissioned by the British patent office to study the impact of patent backlogs around the world.

The group's report notes that backlogs are becoming common globally as companies seek simultaneous protection of each of their ideas across Europe, Asia, the U.S. and Canada.

Full story.

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Fred Beverages, Inc. v. Fred's Capital Mgmt. Co.

This case presents an appeal from a Trademark Trial and Appeal Board (“TTAB”) decision denying a motion for leave to amend a pending petition to cancel a trademark. The TTAB found that Fred Beverages, Incorporated, failed to perfect its Motion for Leave to Amend the Petition for Cancellation because it did not submit the cancellation fee corresponding to the product classes it sought to add through the desired amendment. Because we conclude that the TTAB’s denial of the Motion for Leave on the stated grounds was arbitrary and capricious, we reverse the decision of the TTAB and remand for further proceedings consistent with this opinion.

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Alfred E. Mann Found. for Scientific Research v. Cochlear Corp.

The Alfred E. Mann Foundation for Scientific Research (“AMF”) is a research organization interested in developing new medical technologies, including cochlear implants. Cochlear Corporation and Cochlear Ltd. (collectively, “Cochlear”) are companies that build cochlear implants for use in human patients. AMF sued Cochlear for patent infringement, and the district court dismissed the case for lack of standing to sue. At issue is a 2004 agreement between AMF and Advanced Bionics (“AB”), another company that builds cochlear implants, granting AB an exclusive license to the patents that AMF later accused Cochlear of infringing. Cochlear contends, and the district court held, that this agreement was a virtual assignment of the patents-in-suit to AB, giving AB the sole right to sue for infringement of those patents. We find that AMF is the owner of the patents-in-suit because it retained substantial rights in the patents, including the right to sue for infringement if AB declines to do so. Accordingly, we reverse the district court’s holding that AMF lacked standing to sue, and we remand for proceedings consistent with this opinion.

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Taltech Ltd. v. Esquel Enter. Ltd.

Taltech Limited and TAL Apparel Limited (collectively “TAL”) appeal the supplemental judgment of the United States District Court for the Western District of Washington reinstating its July 13, 2007, judgment, awarding attorney fees and costs under 35 U.S.C. § 285, and post-judgment interest at the rate allowable at the time of the earlier judgment. Taltech Ltd. v. Esquel Enters. Ltd., 609 F. Supp. 2d 1195, 1211 (W.D. Wash. 2009) (Taltech). We affirm the award of attorney fees and costs, and reverse the post-judgment interest rate.

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Photocure ASA v. Kappos

This case concerns the applicability of the statute governing patent term extension, 35 U.S.C. §156, to the drug product having as its active ingredient the chemical compound methyl aminolevulinate hydrochloride (“MAL hydrochloride”), brand name Metvixia®. The Director of the United States Patent and Trademark Office (PTO) denied the extension, and Photocure sought review in the district court under the Administrative Procedure Act, 5 U.S.C. §702. The United States District Court for the Eastern District of Virginia held that the PTO’s ruling was “not in accordance with law,” and that the patent on MAL hydrochloride is subject to term extension. The Director appeals, stating that the district court did not correctly define or apply the statutory terms “drug product” and “active ingredient.” We affirm the decision of the district court.

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Patent Rights Prot. Group, LLC v. Video Gaming Tech., Inc.

Patent Rights Protection Group, LLC (“Patent Rights”) appeals an order of the United States District Court for the District of Nevada granting SPEC International, Inc.’s (“SPEC”) and Video Gaming Technologies, Inc.’s (“VGT”) motions to dismiss for lack of personal jurisdiction and denying Patent Rights’ request for jurisdictional discovery. Because the district court erred in concluding that exercising personal jurisdiction over SPEC and VGT would be unreasonable and abused its discretion in denying jurisdictional discovery on this basis, we vacate and remand.

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Ortho-McNeil Pharm., Inc. v. Lupin Pharm., Inc.

Lupin Pharmaceuticals, Inc. and Lupin Ltd. (together “Lupin”) appeal the judgment of the United States District Court for the District of New Jersey, sustaining the extension of the term of United States Patent No. 5,053,407 (“the ’407 patent”), assigned to Daiichi Sankyo Co. and exclusively licensed to Ortho-McNeil Pharmaceutical, Inc. and Ortho-McNeil, Inc. (collectively “Ortho”).1 The ’407 patent is directed to an enantiomer of a racemic compound that had previously been approved by the Food and Drug Administration (FDA). On cross-motions for summary judgment, the district court agreed with the positions of the Patent and Trademark Office (PTO) and the FDA, and held that the statutory requirements for term extension were met for the ’407 patent.

The district court enjoined Lupin from infringement during the extended term of the patent. We affirm the district court’s judgment.

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