Previous month:
September 2010
Next month:
November 2010

Solvay SA v. Honeywell

This is a patent case. It arises out of a suit by Solvay S.A. (“Solvay”) against Honeywell Specialty Materials LLC and Honeywell International, Inc. (collectively, “Honeywell”) in the United States District Court for the District of Delaware for infringement of U.S. Patent No. 6,730,817 (“the '817 patent”) owned by Solvay. Solvay now appeals the final judgment of the district court in favor of Honeywell dismissing Solvay’s suit. The court’s judgment in favor of Honeywell was based on two rulings on summary judgment. First, the court held that al-though asserted claims 1, 5, 7, 10, and 11 of the '817 patent were infringed, they are invalid under 35 U.S.C. § 102(g)(2) because Honeywell was a prior inventor of the subject matter of the claims who had not abandoned, suppressed, or concealed its invention. Solvay, S.A. v. Honeywell Specialty Materials LLC, 591 F. Supp. 2d 729 (D. Del. 2008) (“Invalidity Ruling”). Second, the court held that asserted claims 12-18, 21, and 22 of the '817 patent were not infringed by Honeywell. Solvay, S.A. v. Honeywell Specialty Materials LLC, 591 F. Supp. 2d 724 (D. Del. 2008) (“Non-infringement Ruling”).


For the reasons set forth below, we hold that the dis-trict court erred in ruling claims 1, 5, 7, 10, and 11 of the '817 patent invalid. We do so because we conclude that Honeywell was not a prior inventor for purposes of § 102(g)(2). We also hold, however, that the district court did not err in its rulings that claims 1, 5, 7, 10, and 11 of the '817 patent were infringed and that claims 12-18, 21, and 22 were not infringed. The judgment of the district court is therefore affirmed-in-part and reversed-in-part. The case is remanded to the district court for further proceedings consistent with this opinion.

Download Solvay SA v. Honeywell

Please visit Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Muffin Man Enjoined from Working at Hostess

3rd Circuit applies the "substantial threat" test to trade secret case.

By Kayleigh Roberts

Published on 10/1/2010

Chris Botticella accepted an offer to join Hostess Inc. as vice president of bakery operations for eastern Texas in October 2009. He didn’t get around to informing his then-employer, competitor Bimbo Bakeries USA Inc., until January 2010.

[. . .]

"I have no doubt that his behavior had a lot to do with this," says James Gehrke, an associate at Gehrke and Associates and blogger for the firm’s Intellectual Property and Tech Law Reports blog.

Read the full article at Inside Counsel

Please visit Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Teva Pharm., USA, Inc. v. Eisai Co. Ltd.

This is a declaratory judgment action arising under the Hatch-Waxman Act. We must decide whether the district court properly dismissed the case for lack of jurisdiction, specifically, lack of a justiciable controversy under Article III of the United States Constitution.


Teva Pharmaceuticals, Inc. (“Teva”) seeks to manufacture and market a generic version of the drug donepezil hydrochloride (“donepezil”), an approved treatment for Alzheimer’s disease. Eisai Co. and Eisai Medical Research, Inc. (collectively “Eisai”) hold the approved New Drug Application (“NDA”) for donepezil, which Eisai currently markets as Aricept®. Eisai also owns the five patents listed for Aricept® in the Orange Book. Teva requests a declaratory judgment that its generic version of donepezil does not infringe four of these Orange Book patents, Patent Nos. 5,985,864 (“’864 patent”); 6,140,321 (“’321 patent”); 6,245,911 (“’911 patent”); and 6,372,760 (“’760 patent”), (collectively the “DJ patents”).
Aside from the value of such a judgment in itself, a finding of noninfringement has special significance to generic drug manufacturers like Teva under the Hatch-Waxman Act. To market a generic version of a previously-approved drug, manufacturers must file and receive approval of an Abbreviated New Drug Application (“ANDA”). In conjunction with an ANDA, manufacturers must also submit a certification with respect to each of the drug’s Orange Book patents. The first manufacturer to file what is called a “Paragraph IV Certification” for a given Orange Book patent is entitled to 180 days of generic marketing exclusivity. Until the first-filer’s exclusivity period has run, the FDA may not approve ANDA applications by other manufacturers who have filed Paragraph IV certifications for that same patent. The first-filer’s exclusivity period can be triggered by either the (1) commercial marketing of the drug by the first Paragraph IV filer or (2) entry of a court judgment finding that patent invalid or not infringed, whichever happens first. A subsequent Paragraph IV filer can thus trigger the first-filer’s exclusivity period by obtaining a court judgment.


Teva is a subsequent Paragraph IV filer. This case turns on whether a subsequent Paragraph IV filer has a legally cognizable interest in when the first-filer’s exclusivity period begins, such that delay in triggering that period qualifies as “injury-in-fact” for the purposes of Article III.


In this case, the alleged injury-in-fact stems from a pending ANDA filed by Gate Pharmaceuticals (“Gate ANDA” or “second ANDA”), an unincorporated division of Teva. FDA approval of the Gate ANDA has been delayed indefinitely because the exclusivity period of the first-filer, a company called Ranbaxy Laboratories Ltd. (“Ranbaxy”), has not been triggered. Before the district court, patent owner Eisai argued that Teva failed to establish the existence of an Article III controversy. The district court agreed and dismissed the case for lack of jurisdiction. In finding that Teva failed to allege a controversy of sufficient immediacy and reality for Article III purposes, the district court relied in part on a preliminary injunction entered against Teva and Gate in a separate, still-pending patent infringement action regarding Patent No. 4,895,841 (“’841 patent”).


Teva appeals the dismissal of its declaratory judgment action and argues the case should proceed. We agree. Under this court’s decision in Caraco Pharmaceutical Laboratories, Ltd. v. Forest Laboratories, Inc., 527 F.3d 1278 (Fed. Cir. 2008), Teva has alleged a sufficiently concrete injury fairly traceable to Eisai’s actions. Further, the injury can be redressed by the requested relief: a declaratory judgment of noninfringement would trigger the first-filer’s exclusivity period, which currently blocks FDA approval of the Gate ANDA. The district court’s decision is reversed and the case remanded for further proceedings consistent with this opinion.

Download Teva Pharm., USA, Inc. v. Eisai Co. Ltd.

Please visit Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Federal Treasury Enterprise Sojuzplodoimport v. Spirits Int'l. N.V.

Plaintiffs-appellants appeals from a final judgment of the United States District Court for the Southern District of New York (Daniels, J.) dismissing claims alleging violations of the Lanham Act and common law. In this opinion, we reject the district court’s conclusion that plaintiff was barred from challenging the validity of the assignment of the trademarks at issue in federal court because those trademarks had become “incontestable” pursuant to 15 U.S.C. § 1065. Accordingly, we vacate and remand with regards to plaintiff’s trademark, misappropriation, and unfair competition claims. In a summary order filed contemporaneously with this opinion, we affirm the district court’s dismissal of plaintiff’s fraud and unjust enrichment claims.

Download Federal Treasury Enterprise Sojuzplodoimport v. Spirits Int'l. N.V.

Please visit Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

In re Chippendales USA, Inc.

Appellant Chippendales USA, Inc. (“Chippendales”), appeals a decision of the Trademark Trial and Appeal Board (“the Board”). The Board affirmed the examining attorney’s refusal to register the “Cuffs & Collar Mark” as inherently distinctive. We affirm.

Download In re Chippendales USA, Inc.

Please visit Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Beverly Stayart v. Yahoo

Like many, Beverly Stayart was curious about what she would find when she put her name into a search engine. In this case it was Yahoo. To her dismay, the comprehensive search results eventually contained links to websites and advertisements that she found shameful. She then sued Yahoo and the other defendants alleging trademark infringement and a host of state law claims. The district court dismissed her complaint, finding she lacked standing under the Lanham Act to sue for trademark infringement. She appeals, and because we agree that Stayart lacks standing under the Lanham Act, we affirm.

Download Beverly Stayart v. Yahoo

Please visit Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

MGE UPS Sys. Inc. v. GE Csmr. & Indus. Inc.

The original opinion in this case was issued by the panel on July 20, 2010. Treating the petition for rehearing en banc as one for panel rehearing, we GRANT the petition in part, withdraw our previous opinion (612 F.3d 760 (5th Cir. 2010)), and substitute the following.

MGE UPS Systems, Inc. (“MGE”) appeals the district court’s Federal Rule of Civil Procedure 50(a) dismissal of its Digital Millennium Copyright Act (“DMCA”) claim against Power Maintenance International, Inc. (“PMI”); General Electric Company (“GE”); GE Consumer and Industrial, Inc.; and GE Industrial Systems, Inc. (collectively, “GE/PMI”). MGE also appeals the district court’s denial of prejudgment interest on MGE’s damages award. GE/PMI cross-appeals on four grounds: (1) whether the district court erred in dismissing GE/PMI’s Rule 50(a) motion because MGE failed to present evidence of damages, or in the alternative, whether the district court erred in dismissing GE/PMI’s Rule 50(b) motion because the $4.6 million jury award was not a reasonable calculation of damages; (2) whether MGE impermissibly double-recovered damages; (3) whether the parties had a tolling agreement in place that permitted MGE to recover damages prior to December 17, 2001; and (4) whether the district court erred in granting MGE injunctive relief against GE/PMI.

Download MGE UPS Sys. Inc. v. GE Csmr. & Indus. Inc.

Please visit Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

United States v. American Society of Composers, Authors and Publisher

American Society of Composers, Authors and Publishers(“ASCAP”) appeals the district court’s ruling that a download of a digital file containing a musical work does not constitute a public performance of that work. Yahoo! Inc. and RealNetworks, Inc. (collectively, the “Internet Companies”) cross-appeal the district court’s assessment of the fees for the blanket licenses they seek to perform musical works in the ASCAP repertory.

We affirm the district court’s ruling that a download of a musical work does not constitute a public performance of that work, but we vacate the district court’s assessment of fees for the blanket ASCAP licenses sought by the Internet Companies and remand for further proceedings in light of this opinion. AFFIRMED in part, VACATED in part, and REMANDED.

Download United States v. American Society of Composers, Authors and Publishers et

Please visit Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.