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November 2016
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D'agostino v. Mastercard International. Inc.

This case involves method claims of two patents that disclose processes for generating limited-use transaction codes to be given to a merchant by a customer for the purchase of goods and services, an objective being to enhance security for the customer by withholding the customer’s credit card number from the merchant and using the transaction code to complete the transaction instead. In two inter partes review proceedings, the Patent Trial and Appeal Board of the United States Patent and Trademark Office decided that the disputed claims are unpatentable for anticipation and obviousness. Because the Board’s decisions rest on an unreasonable claim interpretation, we vacate the decisions and remand for further proceedings.

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United Construction Products, Inc. v. Tile Tech, Inc.

Tile Tech, Inc. (‘Tile Tech”) appeals the decision of the U.S. District Court for the Central District of California (“District Court”) granting default judgment and a permanent injunction to United Construction Products, Inc., doing business as Bison Innovative Products (“United”), on claims of patent infringement and unfair competition. See United Constr. Prods., Inc. v. Tile Tech, Inc., No. 2:14- cv-08570-R-VBK, 2015 WL 7776795, at *6−8 (C.D. Cal. Dec. 1, 2015). We affirm.

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U.S. Water Services, Inc. v. Novozymes

U.S. Water Services, Inc. and Roy Johnson (together, “U.S. Water”) sued Novozymes A/S and Novozymes North America, Inc. (together, “Novozymes”) in the U.S. District Court for the Western District of Wisconsin (“District Court”), alleging indirect infringement of U.S. Patent Nos. 8,415,137 (“the ’137 patent”) and 8,609,399 (“the ’399 patent”) (together, “the Patents-in-Suit”). Novozymes counterclaimed for declaratory judgment of noninfringement, invalidity, and inequitable conduct. The parties later filed cross-motions for summary judgment. The District Court granted Novozymes’s Motion in part, finding claims 1, 6, and 12–13 of the ’137 patent and claims 1–2, 5–12, 16–22, 25, 28–32, and 34–35 of the ’399 patent (collectively, “the Asserted Claims”) invalid as inherently anticipated by various prior art references. U.S. Water Servs., Inc. v. Novozymes A/S, 120 F. Supp. 3d 861, 868–82 (W.D. Wis. 2015). However, the District Court denied Novozymes’s Motion as to inequitable conduct by U.S. Water. Id. at 882–83. U.S. Water appeals the District Court’s anticipation finding. Novozymes cross-appeals the District Court’s finding of no inequitable conduct. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1) (2012). We vacate-in-part, affirm-in-part, and remand for further proceedings consistent with this opinion.

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Medgraph, Inc. v. Medtronic, Inc.

Medgraph, Inc. (“Medgraph”) appeals from the decision of the United States District Court for the Western District of New York, dismissing with prejudice Medgraph’s claims of infringement of U.S. Patent 5,974,124 (“the ’124 patent”) and U.S. Patent 6,122,351 (“the ’351 patent”) (collectively, the “asserted patents”) against Medtronic, Inc. (“Medtronic”). See Medgraph, Inc. v. Medtronic, Inc., 111 F. Supp. 3d 346, 348 (W.D.N.Y. 2015) (“Decision”). For the reasons that follow, we affirm.

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Power Integrations, Inc. v. Fairchild Semiconductor International, Inc.

This appeal follows a ten-day jury trial in the District of Delaware that resulted in verdicts that (1) Power Integrations Inc.’s U.S. Patent Nos. 7,110,270 and 7,834,605 were neither anticipated nor obvious and were not directly or indirectly infringed by Fairchild Semiconductor International, Inc., Fairchild Semiconductor Corporation, and Fairchild (Taiwan) Corporation (collectively, Fairchild); (2) Power Integrations’ U.S. Patent Nos. 6,107,851 and 6,249,876 were not anticipated and were directly and indirectly infringed by Fairchild; (3) Fairchild’s U.S. Patent No. 7,259,972 was not obvious, was infringed by Power Integrations under the doctrine of equivalents, but was not literally infringed or indirectly infringed by Power Integrations; and (4) Fairchild’s U.S. Patent No. 7,352,595 was not anticipated and was not infringed by Power Integrations. Following trial, the district court granted Power Integrations’ motion for judgment as a matter of law (JMOL) that Fairchild directly infringed the ’605 patent, but denied the parties’ other JMOL motions and motions for a new trial. Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 935 F. Supp. 2d 747 (D. Del. 2013) (JMOL Decision). The court subsequently granted Power Integrations’ motion for a permanent injunction and denied Fairchild’s motion for a permanent injunction. Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., No. 1:08-cv-00309- LPS, 2014 WL 2960035 (D. Del. June 30, 2014) (Permanent Injunction Order); Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., No. 1:08-cv-00309- LPS (D. Del. June 16, 2014) (Dkt. No. 790). The district court entered final judgment as to liability on January 13, 2015. Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., No. 1:08-cv-00309-LPS (D. Del. Jan. 13, 2015) (Dkt. No. 819). All damages claims were bifurcated by the district court and remain pending.

Fairchild appeals and Power Integrations cross appeals various decisions from the district court. We hold as follows:

• The jury’s verdict that the asserted claims of the ’876 patent were not anticipated by Martin or Wang is affirmed.

• Because the district court’s jury instruction incorrectly stated the law on inducement, the jury’s verdict that Fairchild induced infringement of the asserted claims of the ’876 and ’851 patents is vacated.

• The jury’s verdict that the asserted claims of the ’605 patent were not anticipated by Maige is reversed.

• The district court’s construction that the asserted claims of the ’972 patent require “sampling a voltage from the auxiliary winding of the transformer when the transformer is discharging” is affirmed.

• The jury’s verdict that the asserted claims of the ’972 patent would not have been obvious in view of Majid5 is affirmed.

• The jury’s verdict that Power Integrations infringed the asserted claims of the ’972 patent under the doctrine of equivalents is reversed.

• The district court’s grant of Power Integrations’ motion for a permanent injunction is vacated in view of the above holdings.

• The district court’s denial of Fairchild’s motion for a permanent injunction is moot in view of the above holdings.

In sum, we affirm-in-part, reverse-in-part, and vacate-in-part the final judgment entered by the district court and remand for further proceedings.

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Kibler v. Hall

Lee Jason Kibler, a disc jockey, brought federal trademark infringement, related state law, and federal trademark dilution claims against Robert Bryson Hall, II, a rapper, and professional entities supporting Hall’s work. The district court granted summary judgment to defendants on all claims. Kibler has appealed that judgment, requiring us to answer two questions. First, has Kibler provided evidence sufficient to find that relevant consumers are likely to confuse the sources of his and Hall’s products? Second, has Kibler provided evidence sufficient to find that Hall has diluted Kibler’s mark? We conclude no and thus affirm the grant of summary judgment.

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JobDiva, Inc.

In this trademark case, we must decide whether JobDiva, Inc. used its marks in connection with personnel placement and recruitment services, or whether the Trademark Trial and Appeal Board correctly held that JobDiva failed to do so because it used its marks on software offerings, without more. The Board required JobDiva to prove that it used its marks on more than just software because its software sales alone could not, in the Board’s view, constitute personnel and recruitment services. We disagree with the Board’s approach. The proper question is whether JobDiva, through its software, performed personnel placement and recruitment services and whether consumers would associate JobDiva’s registered marks with personnel placement and recruitment services, regardless of whether the steps of the service were performed by software. Because the Board must visit that question in the first instance, we vacate its decision and remand for further consideration.

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In re: Nuvasive, Inc.

Appellant NuVasive, Inc. (“NuVasive”) appeals the final written decision of the U.S. Patent and Trademark Office’s (“USPTO”) Patent Trial and Appeal Board (“PTAB”), finding claims 1–14, 19–20, and 23–27 of U.S. Patent No. 8,361,156 (“the ’156 patent”) invalid as obvious. See Medtronic, Inc. v. NuVasive, Inc., No. IPR2013- 00506, 2015 WL 996352, at *2 (P.T.A.B. Feb. 11, 2015). We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A) (2012). We vacate and remand.

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Asetek Danmark A/S v. CMI USA Inc.

In January 2013, Asetek Danmark A/S sued two parties—Cooler Master USA, Inc., which a month later became CMI USA Inc.; and Cooler Master Co., Ltd., a Taiwanese company—in the Northern District of California, asserting infringement of two of Asetek’s patents, U.S. Patent Nos. 8,240,362 and 8,245,764. All of the accused products are branded “Cooler Master.” A few months before trial, by stipulation, Asetek dismissed with prejudice its claims against the Taiwanese company (hereafter “Cooler Master”). Asetek’s claims of infringement by CMI USA (hereafter “CMI”), and CMI’s invalidity counterclaims, were tried partly to a jury and partly to the court. Asetek prevailed and received a judgment of infringement, and of no invalidity, plus a damages award against CMI of $404,941, based on a 14.5% royalty rate. The district court also entered an injunction covering the specific “Cooler Master” products found to infringe. The injunction runs not only against CMI but also against Cooler Master—which was not then a party (though it later intervened and became one) and which was not adjudicated liable for infringement.

We affirm the district court’s rulings on infringement, invalidity, and damages. We remand as to part of the injunction, i.e., insofar as the injunction reaches conduct by Cooler Master (regarding the covered products) that goes beyond abetting a new violation by CMI. The governing standards for reaching such conduct by persons not adjudicated liable for the underlying wrong, reflected in Federal Rule of Civil Procedure 65(d), are highly fact specific. In this case, a determination of the propriety of the injunction’s reach would benefit from further findings and, if sought and needed, further record development.

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Samsung Electronics Co. v. Apple Inc.

Section 289 of the Patent Act makes it unlawful to manufacture or sell an “article of manufacture” to which a patented design or a colorable imitation thereof has been applied and makes an infringer liable to the patent holder “to the extent of his total profit.” 35 U. S. C. §289. As relevant here, a jury found that various smartphones manufactured by petitioners (collectively, Samsung) infringed design patents owned by respondent Apple Inc. that covered a rectangular front face with rounded edges and a grid of colorful icons on a black screen. Apple was awarded $399 million in damages—Samsung’s entire profit from the sale of its infringing smartphones. The Federal Circuit affirmed the damages award, rejecting Samsung’s argument that damages should be limited because the relevant articles of manufacture were the front face or screen rather than the entire smartphone. The court reasoned that such a limit was not required because the components of Samsung’s smartphones were not sold separately to ordinary consumers and thus were not distinct articles of manufacture.

Held: In the case of a multicomponent product, the relevant “article of manufacture” for arriving at a §289 damages award need not be the end product sold to the consumer but may be only a component of that product. Pp. 4–9.

(a) The statutory text resolves the issue here. An “article of manufacture,” which is simply a thing made by hand or machine, encompasses both a product sold to a consumer and a component of that product. This reading is consistent with §171(a) of the Patent Act, which makes certain “design[s] for an article of manufacture” eligible for design patent protection, and which has been understood by the Patent Office and the courts to permit a design patent that extends to only a component of a multicomponent product, see, e.g., Ex parte Adams, 84 Off. Gaz. Pat. Office 311; Application of Zahn, 617 F. 2d 261, 268 (CCPA). This reading is also consistent with the Court’s reading of the term “manufacture” in §101, which makes “any new and useful . . . manufacture” eligible for utility patent protection. See Diamond v. Chakrabarty, 447 U. S. 303 . Pp. 4–7.

(b) Because the term “article of manufacture” is broad enough to embrace both a product sold to a consumer and a component of that product, whether sold separately or not, the Federal Circuit’s narrower reading cannot be squared with §289’s text. Absent adequate briefing by the parties, this Court declines to resolve whether the relevant article of manufacture for each design patent at issue here is the smartphone or a particular smartphone component. Doing so is not necessary to resolve the question presented, and the Federal Circuit may address any remaining issues on remand. Pp. 7–8.

786 F. 3d 983, reversed and remanded.

Sotomayor, J., delivered the opinion for a unanimous Court.

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