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August 2012
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October 2012

MEDTRONIC INC. V. BOSTON SCIENTIFIC CORP.

Medtronic, Inc. (“Medtronic”) filed a complaint in the United States District Court for the District of Delaware seeking declaratory judgment of noninfringement and invalidity of Mirowski Family Ventures, LLC’s (“MFV”) U.S. Reissue Patents No. RE38,119 (“RE’119 Patent”) and No. RE39,897 (“RE’897 Patent”). The district court entered judgment of noninfringement in favor of Medtronic and judgment of validity and enforceability in favor of MFV. Medtronic, Inc. v. Boston Scientific Corp., No. 07-CV-0823 (D. Del. Mar. 30, 2011). MFV appeals the district court’s judgment of noninfringement and Medtronic cross appeals the district court’s claim construction on which its judgment of validity is based. Because the district court relied on a legally incorrect allocation of the burden of proof to find noninfringement in the limited circumstances of this case and incorrectly construed the claim terms in question, this court vacates and remands.

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OUTSIDE THE BOX INNOVATIONS, LLC. V. TRAVEL CADDY, INC.

This declaratory judgment patent suit was filed by Outside the Box Innovations, LLC, doing business as Union Rich USA (herein “Union Rich”) against Travel Caddy, Inc. and its distributor/sales agent for Travel Caddy’s patented tool carry cases, Rooster Products (doing business as The Rooster Group). The issues, duly presented by claim and counterclaim, were infringement, patent validity, enforceability, and unfair competition.

The United States District Court for the Northern District of Georgia held that Travel Caddy’s United States Patent No. 6,823,992 (the ’992 patent) and its continuation Patent No. 6,991,104 (the ’104 patent) are unenforceable in their entirety, based on inequitable conduct in the United States Patent and Trademark Office (PTO). The district court sustained the validity of claims 5, 12, 23, and 30 of the ’104 patent, but held the other claims of the ’104 patent and all the claims of the ’992 patent invalid on the ground of obviousness. The court held on summary judgment that the version of the Union Rich tool carry case called the Electricians Carryalls (Electricians Bag I) infringes various patent claims, but that a modified version called Electricians Bag II and the tool carry case called Heavy-Duty ProTool Bag do not infringe. The court also dismissed Union Rich’s unfair-competition claims against Travel Caddy. On Travel Caddy’s appeal, we reverse the judgment of unenforceability based on inequitable conduct, vacate the rulings of invalidity, affirm the rulings of noninfringement, and remand for further proceedings.

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IN RE DROGE

Peter Droge, Nicole Christ, and Elke Lorbach (collectively, Droge) appeal from the decision by the Board of Patent Appeals and Interferences (Board) affirming the rejection of claims 29, 30, 32-39, 43-51, and 58 of U.S. Patent Application No. 10/082,772 (’772 application) as obvious under 35 U.S.C. § 103. Because the Board correctly held that the claims would have been obvious over the prior art, we affirm.

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Patent Office tries "Stack Overflow for patents" to find prior art

New site allows the general public to submit evidence of patent invalidity.

by Timothy B. Lee - Sept 20 2012

The United States Patent and Trademark Office (USPTO) hopes to improve patent quality by soliciting greater feedback from the general public about pending patents. Last year's America Invents Act included a provision requiring the Patent Office to accept submissions from the general public about patent validity, especially concerning "prior art"—evidence that the subject of a particular patent application had been previously invented by someone else.

In addition to allowing third parties to submit information directly to patent examiners, the USPTO has also worked with Stack Exchange, the company behind the popular programming Q&A website Stack Overflow, to create a new site called Ask Patents. (Stack Exchange is a syndication partner of Ars Technica.) Examiners or others looking for prior art can post questions about a specific application, and members of the general public can respond with evidence that an applicant was not the first to invent the subject matter of the application.

Full story.

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1ST MEDIA, LLC. V. ELECTRONIC ARTS, INC.

1st Media, LLC (“1st Media”) is the assignee of U.S. Patent No. 5,464,946 (“’946 Patent”) and appeals from the United States District Court for the District of Nevada’s dismissal of 1st Media’s complaint alleging infringement of the ’946 Patent by Electronic Arts, Inc., Harmonix Music Systems, Inc., Viacom Inc., and Sony Computer Entertainment America LLC (collectively “Appellees”). 1st Media v. doPi Karaoke, Inc., No. 07-cv-1589 (Apr. 23, 2010) (“1st Media”). The court found that during prosecution of the ’946 Patent, the named inventor, Dr. Scott Lewis (“Lewis”), and his attorney, Joseph Sawyer (“Sawyer”), withheld from the United States Patent and Trademark Office (“PTO”) three material references and information about PTO rejections in two related prosecutions, thereby committing inequitable conduct and rendering the ’946 Patent unenforceable. Because the record contains no evidence of a deliberate decision to withhold those references from the PTO as required under Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc), and because Appellees admit that the record is complete, this court reverses.

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K-Tech, Inc. v. Vita-Mix Corp.

Vita-Mix Corporation (“Vita-Mix”) appeals from the district court’s final judgment in which the court concluded that Vita-Mix infringed the asserted claims of two United States patents, K-TEC, Inc. v. Vita-Mix Corp., Case No. 2:06-CV-0108, 2010 WL 1417862 (D. Utah Apr. 6, 2010) (“Infringement Order”), that two prior art references were not analogous art for the purposes of an obviousness analysis, K-TEC, Inc. v. Vita-Mix Corp., 729 F. Supp. 2d 1312 (D. Utah 2010) (“Analogous Art Order”), that substantial evidence supported the jury’s findings that the asserted claims were not proved invalid, that Vita-Mix’s infringement was willful, and that K-TEC, Inc. (“K-TEC”) was entitled to approximately $11 million in reasonable royalty and lost profits damages, K-TEC, Inc. v. Vita-Mix Corp., 765 F. Supp. 2d 1304 (D. Utah 2011) (“JMOL Opinion”). On appeal, Vita-Mix challenges those conclusions in addition to other rulings made by the district court during trial. Because the district court did not err in any respect and the jury’s findings were properly supported, we affirm.

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Mirror Worlds, LLC. v. Apple, Inc.

This is an appeal from an infringement suit brought by Mirror Worlds, LLC (“Mirror Worlds”), against Apple, Inc. (“Apple”), to enforce various claims of three patents: U.S. Patent 6,006,227 (“’227 patent”); U.S. Patent 6,638,313 (“’313 patent”); and U.S. Patent 6,725,427 (“’427 patent”). The jury returned a verdict in favor of Mirror Worlds and awarded $208.5 million in damages. In separate rulings—one at the end of Mirror Worlds’ case in chief and another after the jury verdict—the district court entered judgment as a matter of law in Apple’s favor, finding that Apple was not liable as a matter of law for infringement of any of the asserted patent claims and vacating the damages verdict. See Mirror Worlds, LLC v. Apple, Inc., 784 F. Supp. 2d 703 (E.D. Tex. 2011). Because we conclude that the district court did not err in entering judgment as a matter of law, we affirm.

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Santarus, Inc. v. Par Pharm., Inc.

Appeal and cross-appeal are taken from the judgment of the United States District Court for the District of Delaware. 1 Plaintiff Santarus, Inc. is the exclusive licensee of patents on specified formulations of benzimidazole proton pump inhibitors (PPI) – a class of chemical compounds that inhibit gastric acid secretion and help prevent and treat stomach acid-related diseases and disorders. The patents are for the inventions of Dr. Jeffrey Phillips, and are assigned to the University of Missouri. Santarus provides the PPI product omeprazole in the formulations covered by the Phillips patents, with the brand name Zegerid®.

Defendant Par Pharmaceutical, Inc. filed an Abbrevi-ated New Drug Application (ANDA) for FDA approval to sell a generic counterpart of the Santarus Zegerid® products, invoking the Hatch-Waxman Act (the Drug Price Competi-tion and Patent Term Restoration Act of 1984), which established a procedure called a “Paragraph IV certifica-tion,” 21 U.S.C. § 355(j)(2)(A)(vii)(IV), whereby an entity that seeks to market a generic counterpart of a patented drug product or method of use, before the patent has ex-pired, may challenge the patent before actually marketing the drug. Thus the parties are here litigating the issues of infringement, validity, and enforceability of the Phillips patents.

The district court found that Par’s ANDA products in-fringe the Phillips patents, but held all of the asserted claims invalid on the ground of obviousness, 35 U.S.C § 103. The court also held certain claims invalid on the ground of inadequate written description, 35 U.S.C. § 112. On the defense of unenforceability, the district court held that there was not inequitable conduct by Dr. Phillips, the University of Missouri, or their counsel in procuring the patents. Each side appeals the rulings adverse to it, except that Par does not appeal the finding of infringement. We conclude that the district court erred by holding that some of the thirty-six asserted claims would have been obvious over the prior art; these rulings are reversed. The court’s other rulings are affirmed.

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Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc.

Fashion designer Christian Louboutin brings this appeal from an August 10, 2011 order of the United States District Court for the Southern District of New York (Victor Marrero, Judge) denying a motion for a preliminary injunction against alleged trademark infringement by Yves Saint Laurent, a competing fashion house (“YSL”). The District Court found that Louboutin’s trademark was likely not enforceable and declined to enter a preliminary injunction against YSL’s use of the trademark.

We conclude that the District Court’s holding that a single color can never serve as a trademark in the fashion industry, Christian Louboutin S.A. v. Yves Saint Laurent Am., Inc., 778 F. Supp. 2d 445, 451, 457 (S.D.N.Y. 2011), is inconsistent with the Supreme Court’s decision in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 162 (1995), and that the District Court therefore erred by resting its denial of Louboutin’s preliminary injunction motion on that ground. We further conclude that Louboutin’s trademark, consisting of a red, lacquered outsole on a high fashion woman’s shoe, has acquired limited “secondary meaning” as a distinctive symbol that identifies the Louboutin brand. As explained below, pursuant to Section 37 of the Lanham Act, 15 U.S.C. § 1119 we limit the trademark to uses in which the red outsole contrasts with the color of the remainder of the shoe. We conclude that the trademark, as thus modified, is entitled to trademark protection. Because Louboutin sought to enjoin YSL from using a red sole as part of a monochrome red shoe, we affirm in part the order of the District Court insofar as it declined to enjoin the use of red lacquered outsoles in all situations. However, we reverse in part the order of the District Court insofar as it purported to deny trademark protection to Louboutin’s use of contrasting red lacquered outsoles. We enter judgment accordingly, and we remand for further proceedings with regard to YSL’s counterclaims.

Affirmed in part, reversed in part, and remanded.

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Contour Design, Inc. v. Chance Mold Steel Co., Ltd.

In this trade secret misappropriation and breach of contract case, defendant Chance Mold Steel Co. (“Chance”) appeals from a permanent injunction and from a jury award of damages. The injunction, based on a finding of contract breach, prohibits Chance from selling, displaying, manufacturing, or assisting others in manufacturing a number of ergonomic computer mouse products. We use the shorthand “selling” or “sale” to refer to the injunction’s operative terms. The injunction barred sale of specific products that were materially identical to products Chance had previously manufactured for Contour Design, Inc. (“Contour”) and a new product (not previously manufactured for Contour) known as the ErgoRoller.

Chance challenges the scope of the injunction, arguing that the ErgoRoller should not be enjoined, and the duration of the injunction with respect to the other products. Chance also contends that the jury improperly awarded lost profits damages. We reverse the injunction as applied to the ErgoRoller. We affirm the scope of the injunction as applied to the other enjoined products, and we affirm the damages award.

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