Previous month:
November 2012
Next month:
January 2013

CW ZUMBIEL V. KAPPOS

This appeal arises out of the United States Patent and Trademark Office’s (“PTO”) inter partes reexamination of United States Patent No. 6,715,639 (“the ’639 patent”), assigned to Graphic Packaging International, Inc. (“Graphic”), and challenged by third-party requester C.W. Zumbiel Co., Inc. (“Zumbiel”). Because the Board of Patent Appeals and Interferences’s (“Board”) obviousness and nonobviousness determinations were correct, they are affirmed.

Download CW ZUMBIEL V. KAPPOS

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

IGT v. Alliance Gaming Corp.

type of casino gaming machine containing a secondary bonus game incorporating a spinning wheel. IGT sued Alliance Gaming Corp., Bally Gaming International, Inc., and Bally Gaming, Inc. (collectively, “Bally”) for infringement of these patents, and Bally counterclaimed under state and federal antitrust laws. The district court denied the motions for summary judgment on the antitrust issues, granted the motions that the patents were invalid and not infringed, and certified the patent issues for interlocutory appeal. This court affirmed. On remand, the district court granted summary judgment against Bally on its antitrust counterclaims. Because the undisputed facts are insufficient to establish the existence of a relevant antitrust market in wheel games, we affirm.

Download IGT v. Alliance Gaming Corp.

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

Intel Corp. v. Negotiated Data Solutions, Inc.

Negotiated Data Solutions, Inc. (“N-Data”) appeals from the district court’s grant of summary judgment of license and noninfringement in favor of Intel Corp. (“Intel”). Intel Corp. v. Negotiated Data Solutions, LLC, No. 2:11-cv-247 (E.D. Tx. May 9, 2011). Because Intel is licensed to practice the patents-in-suit pursuant to a licensing agreement with N-Data’s predecessor in interest, National Semiconductor Corp. (“National”), this court affirms.

Download Intel Corp. v. Negotiated Data Solutions, Inc.

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

Slesinger, Inc. v. Disney Enterprises, Inc.

The Trademark Trial and Appeal Board (“Board”) dismissed with prejudice Stephen Slesinger, Inc.’s (“Slesinger” or “SSI”) challenge to the trademark rights related to A.A. Milne’s literary work featuring Winniethe- Pooh and other characters owned by Disney Enterprises, Inc. (“Disney”). During the course of the parties’ dispute, Slesinger filed twelve opposition and cancellation proceedings with the Board consolidated under Stephen Slesinger, Inc. v. Disney Enter., Inc., 98 U.S.P.Q.2d 1890 (T.T.A.B. 2011) (the “Consolidated Proceedings”). Because the Board properly barred Slesinger’s proceeding, granted summary judgment, and dismissed the case due to collateral estoppel, this court affirms.

Download Slesinger, Inc. v. Disney Enterprises, Inc.

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

Washington Shoe Co. v. A-Z Sporting Goods Inc.

The panel reversed the dismissal of a copyright infringement action for lack of personal jurisdiction.

Applying the State of Washington’s long-arm statute, which extends jurisdiction over a defendant to the fullest extent permitted by the Due Process Clause, the panel held that an Arkansas retailer was subject to personal jurisdiction in Washington even though its only relevant contact with the state was a claim that it willfully violated a copyright held by a Washington corporation. The panel held that the plaintiff made a prima facie showing that the Arkansas retailer purposefully directed its activities at the forum state because it engaged in intentional acts expressly aimed at Washington, causing harm that it knew was likely to be suffered in that state. The panel concluded that the retailer’s alleged infringement of the plaintiff’s copyright, and its knowledge of both the existence of the copyright and the forum of the copyright holder, was sufficient “individual targeting” to satisfy the “express aiming” requirement.

Download Washington Shoe Co. v. A-Z Sporting Goods Inc.

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

Remark, LLC v. Adell Broad. Corp.

Remark advertises radio stations with television commercials featuring women lip-syncing radio content. When Adell ran similar ads for television station WADL, Remark threatened to sue. The parties appeared to resolve this initial tempest through a settlement. Adell tried to back out of the settlement, however, prompting Remark to follow through on its threat and to sue to enforce the settlement. The district court determined that Adell had breached the settlement and granted Remark summary judgment. We affirm.

Download Remark, LLC v. Adell Broad. Corp.

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

Miller's Ale House, Inc. v. Boynton Carolina Ale House

“[T]here is no better friend to any merchant than a fair competitor.” Intellectual property law walks a fine line in its quest to preserve such fair competition. On the one hand, it respects the policy of free copying and the free economic competition such copying encourages. See 1 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 1:2 (4th ed. 2012). On the other hand, it creates a set of exceptions—such as patents, trademarks, and copyrights— that protect consumers from deception and confusion. See id. §§ 1:2, 2:2. Thus, trademark law allows merchants to label their products with source-identifying marks and to protect those marks from infringement, see id. § 2:2, while at the same time maintaining competition by disallowing trademarks in generic terms, see Blau Plumbing, Inc. v. S.O.S. Fix-It, Inc., 781 F.2d 604, 609 (7th Cir. 1986) (“To allow a firm to use as a trademark a generic word . . . would make it difficult for competitors to market their own brands of the same product.”).

We are called on today to determine whether Miller’s Ale House, Inc. (“Miller’s”), a restaurant chain with a location in Boynton Beach, Florida, has common law trademark rights in the term “ale house” and trade dress rights in the interior decoration of its restaurants and, if so, whether its competitor, Boynton Carolina Ale House, LLC, (“Boynton Carolina”), violated Section 43(a) of the Trademark Act of 1946 (the “Lanham Act”), 15 U.S.C. § 1125(a) (2006), and the Copyright Act § 106, 17 U.S.C. § 106, when it adopted a name, decor, and a floor plan similar to Miller’s own.

The United States District Court for the Southern District of Florida granted summary judgment in favor of Boynton Carolina on all claims. Miller’s, appealing the court’s ruling, argues that the court erred as a matter of law in finding its trademark infringement claim barred by issue preclusion, in finding its trade dress not to be inherently distinctive, and in finding its and Boynton Carolina’s floor plans not to be substantially similar. We find no error in the challenged rulings and affirm.

Download Miller's Ale House, Inc. v. Boynton Carolina Ale House

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

Presidio Components, Inc. v. Am. Tech. Ceramics, Inc.

After a trial, the United States District Court for the Southern District of California denied American Technical Ceramics Corporation’s (“ATC”) motions for judgment as a matter of law (“JMOL”) and in the alternative a new trial on validity and infringement of U.S. Patent No. 6,816,356 (“the ’356 patent”). Presidio Components, Inc. v. Am. Technical Ceramics Corp., 723 F. Supp. 2d 1284 (S.D. Cal. 2010); Presidio Components, Inc. v. Am. Technical Ceramics Corp., No. 3:08-CV-00335, 2010 WL 3070370 (S.D. Cal. Aug. 5, 2010) (“Post-JMOL Order”). ATC appeals these decisions. Presidio Components, Inc. (“Presidio”) cross-appeals the district court’s denial of a permanent injunction, JMOL on willfulness, and its ongoing royalty rate and false marking determinations. Presidio, 723 F. Supp. 2d 1284; Post-JMOL Order, 2010 WL 3070370. This court affirms the vast majority of the district court’s determinations set forth in its comprehensive and attentive opinions with the exception of its finding of no irreparable injury, the related denial of a permanent injunction, and the ongoing royalty determination. This court also vacates the district court’s false marking judgment due to an intervening change in law. For the reasons below, this court affirms-in-part, vacates in-part, and remands.

Download Presidio Components, Inc. v. Am. Tech. Ceramics, Inc.

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

In re Fox

Marsha Fox appeals from a decision of the Trademark Trial and Appeal Board (“Board”) affirming the refusal of the examiner to register her mark. The Board concluded that the mark was unregistrable under 15 U.S.C. § 1052(a). We affirm, holding that a mark that creates a double entendre falls within the proscription of § 1052(a) where, as here, one of its meanings is clearly vulgar.

Download In re Fox

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

ASTRAZENECA V. AUROBINDO

This patent litigation arises under the Hatch-Waxman Act, 21 U.S.C. §355, whereby producers of generic pharmaceutical products are authorized to challenge the patent status of a federally registered and approved drug product, before the generic producer has obtained approval to sell its counterpart of the approved product. The generic litigant who succeeds in eliminating the drug patent is granted a 180-day period of exclusivity against other potential providers of the generic product. 21 U.S.C. §355(j)(5)(B)(iv).

The drug product here at issue is the “statin” having the brand name Crestor®, which is federally approved for use in control of cholesterol and for treatment of atherosclerosis. In suit is United States Reissue Patent No. 37,314 (“the ’314 patent”), which is a reissue of United States Patent No. 5,260,440 (“the ’440 patent”). The patentee is Shionogi Seiyaku Kabushiki Kaisha (“Shionogi”) and the exclusive licensee is Astrazeneca UK and its United States subsidiary IPR Pharmaceuticals Inc. (collectively “Plaintiffs”).

The active ingredient of Crestor® is the calcium salt of a chemical compound whose common name is rosuvastatin, of the following structural formula: [Figure] rosuvastatin

Rosuvastatin is one of several statin products that lower cholesterol production in the liver by inhibiting the enzyme HMG-CoA reductase. Scientists working at the Shionogi laboratory in Japan were conducting research in search of a statin with reduced side effects as compared with the statin products that were then known. In the course of this research, in 1991 they discovered rosuvastatin and its beneficial properties. Patents were obtained in Japan and other countries, including the ’314 patent in the United States.

Federal approval for sale and use in the United States was granted on August 12, 2003, after over two decades of development. The product was highly successful, due to its superior efficacy in lowering low-density (LDL) cholesterol and elevating high-density (HDL) cholesterol, and its reduced side effects, as compared with other commercial statins. See Peter H. Jones et al., Comparison of the Efficacy and Safety of Rosuvastatin Versus Atorvastatin, Simvastatin, and Pravastatin Across Doses (STELLAR Trial), 92 Am. J. Cardiology 152 (2003).

Several generic producers initiated a challenge to the ’314 patent by filing an Abbreviated New Drug Application (ANDA) accompanied by a Paragraph IV certification, 21 U.S.C. §355(j)(2)(A)(vii)(IV). An ANDA permits a generic producer to market a drug product based on the federal approval obtained by the original registrant. Submission of an ANDA constitutes a statutory act of infringement pursuant to §271(e)(2) of the Patent Act, which provides:

It shall be an act of infringement to submit an application under [section 355(j) of title 21] . . . for a drug claimed in a patent or the use of which is claimed in a patent . . . if the purpose of such submission is to obtain approval under such Act to engage in the commercial manufacture, use, or sale of a drug, veterinary biological product, or biological product claimed in a patent or the use of which is claimed in a patent before the expiration of such patent. 35 U.S.C. §271(e)(2)(A). If the challenge to the patent fails, the ANDA cannot be approved until expiration of the patent. 35 U.S.C. §271(e)(4)(A).

The infringement suits against the several generic challengers were consolidated in the United States District Court for the District of Delaware. The Defendants are Aurobindo Pharma Ltd., Mylan Pharmaceuticals Inc., Apotex Corp., Cobalt Pharmaceuticals Inc. and Cobalt Laboratories Inc., Sun Pharmaceutical Industries, Ltd., Teva Pharmaceuticals USA, Inc., Par Pharmaceuticals, Inc., and Sandoz, Inc. The Defendants argued that the ’314 patent is invalid on the ground of obviousness and improper reissue, and that the patent is unenforceable for inequitable conduct in the Patent and Trademark Office (“PTO”).

The district court ruled that the ’314 patent is valid, enforceable, and infringed.1 The Defendants all admitted infringement, except for Apotex Corp. All of the Defendants appeal the rulings of validity and enforceability.

Download ASTRAZENECA V. AUROBINDO

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