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October 2013
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Starbucks Corp. v. Wolfe's Borough Coffee, Inc.

This is an appeal by the plaintiffs from a decision of the United States District Court for the Southern District of New York (Swain, J.) following a second remand from this Court. The District Court concluded that plaintiffs have failed to prove that defendant’s use of its “Mister Charbucks” and “Charbucks Blend” marks is likely to dilute plaintiffs’ famous “Starbucks” marks, and denied injunctive relief. We hold that the District Court did not clearly err in any of its factual determinations, including its evaluation of the six non‐exclusive factors bearing on whether a mark is likely to cause dilution by blurring, enumerated in the Federal Trademark Dilution Act of 1995, as amended by the Trademark Dilution 1 Revision Act of 2006. See 15 U.S.C. § 1125(c)(2)(B)(i)–(vi). Balancing those factors de novo, we agree with the District Court that plaintiffs have failed to demonstrate a likelihood of dilution by blurring. Accordingly, we AFFIRM.

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Apple, Inv. v. Samsung Elecs. Co.

Apple Inc. appeals from an order of the U.S. District Court for the Northern District of California denying Apple’s request for a permanent injunction against Samsung Electronics Company, Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC (collectively, “Samsung”). See Apple Inc. v. Samsung Elecs. Co., 909 F. Supp. 2d 1147 (N.D. Cal. 2012) (“Injunction Order”). Apple sought to enjoin Samsung’s infringement of several of Apple’s design and utility patents, as well as Samsung’s dilution of Apple’s iPhone trade dress. We affirm the denial of injunctive relief with respect to Apple’s design patents and trade dress. However, we vacate the denial of injunctive relief with respect to Apple’s utility patents and remand for further proceedings.

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Ohio Willow Wood Co. v. ALPS South, LLC

This suit was filed by The Ohio Willow Wood Company (“OWW”) against Alps South, LLC (“Alps”) for infringement of United States Patent No. 5,830,237 (the “’237 patent”). The United States District Court for the Southern District of Ohio granted summary judgment that: (1) OWW was collaterally estopped from challenging the invalidity of claims 1, 2, 4, 15, 16, and 20 of the ’237 patent; (2) claims 18, 19, 21, 22, and 23 of the ’237 patent were invalid for obviousness; and (3) Alps failed to raise a genuine issue of material fact with respect to inequitable conduct. We affirm on the issues of collateral estoppel and obviousness, but reverse and remand on the issue of inequitable conduct.

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Kraft Foods Grp. Brands LLC v. Cracker Barrel Old Country Store, Inc.

We have doubts about the probative significance of the Poret survey. But the similarity of logos and of products, and of the channels of distribution (and the advertising overlap) if CBOCS is allowed to sell its products through grocery stores under its Cracker Barrel logo, and the availability to the company of alternatives to grocery stores for reaching a large consumer public under the logo, provide adequate support for the issuance of the preliminary injunction. The judgment is therefore AFFIRMED.

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Sanofi-Aventis v. Pfizer, Inc.

Sanofi-Aventis (“Sanofi”) appeals the decision of the United States Patent and Trademark Office (“PTO”) Board of Patent Appeals and Interferences (“the Board”),2 awarding priority of invention to Pfizer Inc. (“Pfizer”) based on the following interference count:

Count 3. The isolated protein of 6,268,480 claim 4;

OR The isolated polynucleotide of 5,710,023 claim 1, selection (b) (an isolated polynucleotide comprising a nucleotide sequence of SEQ ID NO:3 from nucleotide 103 to nucleotide 1242).

Nucleotides 103 to 1242 constitute the protein-encoding portion of the complementary deoxyribonucleic acid (“cDNA”) for the human interleukin-13 receptor binding chain (“IL-13bc”).

The parties disagree as to the dispositive question in the interference. As summarized by Pfizer, the question is “who first had in hand the actual isolated DNA of the count and appreciated its IL-13bc function.” Pfizer Br. 1. As summarized by Sanofi, the question is “the date each party first knew the complete sequence” of nucleotides 103 to 1242. Sanofi Br. 4. The Board agreed with Pfizer that possession and appreciation of the actual isolated DNA is the dispositive question for priority of conception for an interference count directed to the isolated DNA, and on that basis awarded priority to Pfizer. 

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Lifescan Scotland, Ltd. v. Shasta Tech., LLC

Defendants Shasta Technologies, LLC; Conductive Technologies, Inc.; Instacare Corp.; and Pharmatech Solutions, Inc. (collectively, “Shasta”) appeal from a decision of the United States District Court for the Northern District of California granting a preliminary injunction in favor of Plaintiffs LifeScan Scotland, Ltd. and LifeScan, Inc. (“LifeScan”). The injunction prohibited Shasta from making, using, or selling its blood glucose test strips. The district court found that the making, using, or selling of Shasta’s strips likely indirectly infringes LifeScan’s U.S. Patent No. 7,250,105 (“the ’105 patent”). Because we agree that Shasta has established that it has a patent exhaustion defense, we reverse.

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Integrated Tech. Corp. v. Rudolph Tech., Inc.

Rudolph Technologies, Inc. (Rudolph) appeals from the district court’s judgment that it infringes U.S. Patent No. 6,118,894 (’894 patent). Rudolph challenges the court’s denial of its motion for judgment as a matter of law (JMOL) that prosecution history estoppel bars the application of the doctrine of equivalents. Rudolph also challenges the award of damages, the court’s determination that this was an exceptional case under 35 U.S.C. § 285, and that Rudolph failed to prove laches. We hold that prosecution history estoppel precludes the application of the doctrine of equivalents and therefore reverse the judgment of infringement under the doctrine of equivalents. We also reverse the willfulness finding predicated on that judgment and vacate the corresponding award of enhanced damages.1 We affirm the award of damages for literal infringement. We vacate the award of attorneys’ fees and costs and remand because we find that the court’s exceptional case analysis relied in part on the willfulness finding. Finally, we hold that the court did not abuse its discretion in finding no laches.

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Seven Arts v. Content Media

The panel affirmed the dismissal of a copyright infringement claim as barred by the Copyright Act’s threeyear statute of limitations in a case in which the plaintiff sought to establish ownership of copyrights in several motion pictures.

Agreeing with the Second and Sixth Circuits, the panel held that an untimely ownership claim will bar a claim for copyright infringement where the gravamen of the dispute is ownership, at least where, as here, the parties are in a close relationship. The panel held that because it was apparent from the complaint that the defendant clearly and expressly repudiated the plaintiff’s ownership of the copyrights more than three years before the plaintiff brought suit, the district court properly dismissed the complaint.

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Synthes USA LLV v. Spinal Kintetics, Inc.

Synthes USA, LLC and DePuy Synthes Products, LLC (collectively, “Synthes”)1 appeal from a jury verdict finding that Spinal Kinetics, Inc. (“SK”) did not infringe claims 29–31 (“asserted claims”) of U.S. Patent No. 7,429,270 (“the ’270 patent”) and that the claims were invalid for lack of written description. SK cross-appeals contending that the district court erred in denying SK’s motion for fees under 35 U.S.C. § 285. Both appeals are timely, and we have jurisdiction under 28 U.S.C. § 1295(a)(1). For the reasons below, we affirm the jury verdict of invalidity for lack of written description and affirm the district court’s denial of SK’s request for attorneys’ fees.

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Randall Mfg. v. Rea

FG Products owns U.S. Patent No. 7,214,017, which is directed to moveable bulkheads for partitioning cargo space in a shipping container. FG’s competitor, Randall Manufacturing, requested inter partes reexamination of the ’017 patent, and the Patent and Trademark Office examiner rejected a number of FG’s claims as obvious over a combination of four prior-art references. On appeal, the Board of Patent Appeals and Interferences (now the Patent Trial and Appeal Board) reversed, unable to discern any reason that one of ordinary skill in the art would have been motivated to combine the cited references. Randall appeals the Board’s determination to this court. Because the Board failed to consider a wealth of well-documented knowledge that is highly material to evaluating the motivation to combine references to arrive at the claimed invention, we vacate the Board’s decision and remand the matter.

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