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October 2010
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Ji v. Bose Corporation

In three consolidated appeals, arising out of the improper use of a model's image to package and promote a home entertainment system, district court's judgment is affirmed where: 1) a new trial on damages is not warranted as plaintiff has not shown that the district court's order partially granting her motion to compel constituted an abuse of discretion, nor has she shown that the district court's omission of her proposed instruction constituted plain error or that it likely altered the damages award; 2) defendants have waived their claim that trial on plaintiff's right-to-publicity and privacy claims should never have taken place in the first instance; and 3) the district court's decision to deny defendant's request for attorneys' fees under section 1117(a), as well as defendant's request for fees under section 1927, was well within the bounds of its discretion. 

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Tiffany v. eBay Tossed Out at High Court

by Lee Ross | November 29, 2010

If you're thinking of buying Tiffany jewelry on eBay you might want to know there's a good chance the diamond ring or silver necklace you're looking at is fake. Tiffany knows it. And so does eBay. But that fact apparently didn't sway the Supreme Court which Monday decided against hearing arguments in a dispute over eBay's obligation to stop online auctions of bogus Tiffany jewelry.

The nearly two-century old retailer claims eBay violates federal trademark law by allowing its merchandise to be sold even with the knowledge that many items are illegitimate.

Lower courts have sided with the online marketplace powerhouse concluding that Supreme Court precedents only require eBay to remove listings it specifically knows is auctioning bogus merchandise. Judges have determined that a generalized knowledge of impropriety is insufficient. Monday's high court decision effectively affirms that judgment.

Full story.

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Microsoft Gets U.S. Supreme Court Hearing in I4i Case Over Word Software

By Greg Stohr - Nov 29, 2010

The U.S. Supreme Court will consider making some patents more vulnerable to legal challenge, agreeing to hear Microsoft Corp.’s appeal in a case that forced changes in the company’s Word software and may cost it $300 million.

Microsoft, fighting a verdict won by closely held I4i LP, says the federal appeals court that handles patent cases is making it too hard for those accused of infringement to argue that a patent never should have been issued and is invalid.

The world’s largest software maker has support in its appeal from more than a dozen publicly traded companies, including Apple Inc. and Google Inc. Apple told the justices that the patent system “is tilting out of balance,” giving disproportionate power to people who secure patents of questionable legitimacy.

Full story.

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Hyatt v. Kappos

Under the patent laws, a patent applicant who is dis-satisfied with the decision of the Board of Patent Appeals and Interferences (Board) regarding his application may choose one of two paths. The applicant may appeal the Board’s decision to the Court of Appeals for the Federal Circuit, which will review the Board’s decision on the record that was before the U.S. Patent and Trademark Office (Patent Office). Alternatively, the applicant may file a civil action in district court, and the court will determine whether the applicant “is entitled to receive a patent for his invention . . . as the facts in the case may appear.” 35 U.S.C. § 145. This case presents the issue of what limitations exist on an applicant’s right to introduce new evidence in a § 145 civil action.


We have characterized this civil action as a “hybrid” action. It is not an appeal; the language of § 145 expressly distinguishes its civil action from a direct appeal, and the Supreme Court has recognized that an applicant may introduce new evidence before the district court that was not presented to the Patent Office. However, it is also not an entirely de novo proceeding. Issues that were not considered by the Patent Office cannot be raised with the district court in most circumstances, and if no new evidence is introduced, the court reviews the action on the administrative record, subject to the court/agency standard of review. The particular significance of a § 145 civil action is that it affords an applicant the opportunity to introduce new evidence after the close of the administrative proceedings—and once an applicant introduces new evidence on an issue, the district court reviews that issue de novo. Thus, an applicant’s ability to introduce new evidence is the hallmark of a § 145 action. It is the primary factor that distinguishes a civil action under § 145 from an appeal.

We hold that 35 U.S.C. § 145 imposes no limitation on an applicant’s right to introduce new evidence before the district court, apart from the evidentiary limitations applicable to all civil actions contained in the Federal Rules of Evidence and Federal Rules of Civil Procedure. In doing so, we reject the Director’s proposal that only “new evidence that could not reasonably have been provided to the agency in the first instance” is admissible in a § 145 action. Dir. Br. at 8. While the proceedings before the Patent Office do not limit the admissibility of new evidence in the district court, they may be considered by the district court if they cast doubt on the reliability of late-produced evidence, as with inconsistent statements or new recollections of previously forgotten events. As with any evidence introduced in a civil action, the district court as fact finder may give less weight to evidence introduced by an applicant in a § 145 action if the district court questions its credibility or reliability. Because the district court abused its discretion when it excluded Mr. Hyatt’s declaration under the wrong legal standard, we vacate the decision of the district court and remand.

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NUANCE COMMUNICATIONS V. ABBYY SOFTWARE HOUSE

Nuance Communications, Inc. (“Nuance”) filed this patent infringement action against Abbyy USA Software House (“Abbyy USA”). After obtaining discovery from Abbyy USA, Nuance filed an Amended Complaint naming as defendants Abbyy Production LLC (“Abbyy Production”), a corporation organized under the laws of the Russian Federation, and Abbyy Software, Ltd. (“Abbyy Software”), a corporation organized under the laws of the Republic of Cyprus. Abbyy Production and Abbyy Software (collectively, “the Abbyy defendants”) thereafter filed a motion to dismiss for lack of personal jurisdiction and improper service of process, which was granted by the United States District Court for the Northern District of California without an evidentiary hearing or further discovery. Nuance Commc’ns Inc. v. Abbyy Software House, No. 08-02912, 2009 WL 2707390 (N.D. Cal. Aug. 25, 2009).


Nuance appeals the dismissal of Abbyy Production and Abbyy Software. Because Abbyy Production purpose-fully directed activities at residents of California, because Nuance’s claims for patent infringement arise out of those activities, and because the assertion of personal jurisdiction is reasonable and fair, this court reverses the district court’s dismissal of Abbyy Production on personal jurisdiction grounds. Because the record calls for further discovery on these jurisdiction questions, this court vacates the dismissal of Abbyy Software and remands. This court also determines that the district court erred by dismissing the case for improper service of process.

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A123 SYSTEMS V. HYDRO-QUEBEC

A123 Systems, Inc. (“A123”) appeals from the final de-cision of the United States District Court for the District of Massachusetts denying A123’s motion to reopen and dismissing its declaratory judgment action against Hydro-Quebec (“HQ”). A123 Sys., Inc. v. Hydro-Quebec, 657 F. Supp. 2d 276 (D. Mass. 2009). We affirm.

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CANCER RESEARCH TECHNOLOGY AND SCHERING V. BARR LABORATORIES

Cancer Research Technology Limited and Schering Corporation (collectively, “Cancer Research”) appeal from the final decision of the United States District Court for the District of Delaware holding U.S. Patent 5,260,291 (“the ’291 patent”) unenforceable for prosecution laches and inequitable conduct. Cancer Research Tech. v. Barr Labs., Inc., 679 F. Supp. 2d 560 (D. Del. 2010). We reverse.

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ABRAXIS BIOSCIENCE V. NAVINTA

Appellant Navinta LLC appeals from a final judgment of the United States District Court for the District of New Jersey finding, inter alia, that Navinta’s Abbreviated New Drug Application (“ANDA”) product would directly in-fringe claims 1-3 of U.S. Patent No. 4,870,086 (the “’086 patent”) and contribute to and induce infringement of claim 6 of the ’086 patent. In addition, the district court found that Navinta’s ANDA product would contribute to and induce infringement of claims 1 and 9 of U.S. Patent No. 5,670,524 (the “’524 patent”) and claim 1 of U.S. Patent No. 5,834,489 (the “’489 patent”), both disclosing methods of using low concentrations of ropivacaine hydro-chloride to treat pain. See Abraxis Bioscience, Inc. v. Navinta, LLC, 640 F. Supp. 2d 553, 569-92 (D.N.J. 2009). Because the district court erred in failing to dismiss Abraxis Bioscience, Inc.’s (“Abraxis’s”) action for lack of standing, we vacate the judgment below.

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What U.S. Can Teach Europe About Patents

By Ben Rooney, Technology Editor, The Wall Street Journal Europe

When David Willetts, U.K. science minister, said at last week’s announcement of Britain’s high-tech hub that he was looking at the U.S. patent regime as a possible model for revising English law, there was an audible intake of breath.

Followers of the U.S. technology space are all too familiar with the sue and counter-sue warfare that has broken out among America’s tech giants, graphically illustrated in Who’s Suing Whom on the very elegant Information is Beautiful site.

Is this really what we want? “Most people would do anything but use the U.S. system as the system to follow,” said Andy Millmore, head of litigation at London-based Harbottle and Lewis.

What almost all patent lawyers do agree is that the European system is in need of reform — though it isn’t for want of trying. “When I started in law some 25 years ago everyone was very excited about reform. It was predicted it would happen in three years. We are still waiting,” said Mr. Millmore.

Full story.

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Finjan, Inc. v. Secure Computing Corp.

This is a patent infringement case involving “proactive scanning” technology for computer security. Finjan, Inc. sued Secure Computing Corporation (“Secure”), Cyberguard Corporation, and Webwasher AG (collectively “Defendants”) in the District Court for the District of Delaware for infringement of U.S. Patents No. 6,092,194 (“’194 patent”), No. 6,804,780 (“’780 patent”), and No. 7,058,822 (“’822 patent”). Defendants counterclaimed against Finjan for infringement of U.S. Patents No. 6,357,010 (“’010 patent”) and No. 7,185,361 (“’361 patent”). A jury found that none of the patents was invalid, that Finjan did not infringe Defendants’ patents, and that Defendants willfully infringed all asserted claims of Finjan’s patents. The district court awarded damages to Finjan, enhanced the award under 35 U.S.C. § 284, and imposed a permanent injunction against Defendants.

Defendants appeal infringement and damages. Finjan cross-appeals denial of damages for the period between the entry of judgment and the entry of the injunction. We affirm the verdict of infringement on the asserted “system” and “storage medium” claims, but reverse the verdict of infringement on the asserted method claims. We also affirm the damages award, but remand for determination of post-judgment, pre-injunction damages.

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