June 2010

Jerry Seinfeld’s TV show may be funny – at least to some folks – but his wife’s cookbook was serious business. (Missy Chase Lapine, The Sneaky Chef, Inc. v. Jessica Seinfeld, Jerry Seinfeld, Harpercollins Publishers, Inc. and Departure Productions, Inc.)

As the reader may (read: “should”) know, Patent Office rules impose a duty of candor and good faith upon “all individuals associated with” the filing and prosecution of a patent application.

While perseverance in the face of adversity is deemed admirable, if carried to the extreme, it becomes a pathological inability to face reality and accept defeat. Unfortunately, some people are unable to discern where the one ends and the other begins. When this lack of judgment occurs in the legal arena, the courts may be called upon to put a stop to the matter. (Allegra Hemphill v. Kimberly-Clark Corporation and Proctor & Gamble Company)

A patent is invalid if it is shown to be “obvious” in view of a combination of prior art references (35 USC §103). Patentees, of course, will argue that the proposed combination of references is the product of “impermissible hindsight.” In support of such arguments, the patentees will point to “secondary indicia of patentability.”

Some time ago, we wrote about developments in the International Trade Commission (I.T.C.) (see "New Opportunities Or How To Circumvent e-Bay"). Specifically, we commented on the newly relaxed requirements for standing to bring an action in the I.T.C. The Commission has determined that the “domestic industry requirement” can now be satisfied by “licensing” activities.

“Whoever … sells … a component of a patented machine … constituting a material part of the [patented] invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article … of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.” 35 USC §271(b)

Superficially, “means plus function” claims are wonderfully broad. Such claims describe a function and claim an unspecified “means” for accomplishing that function. Thus, they appear to cover any structure which performs the recited function. Well, they DON’T! The Courts have repeatedly handed down decisions which should have made this abundantly clear; but, some folks have not gotten the message. (Sybase, Inc. v. Vertica Systems, Inc.)

As many of our readers may be aware, certain misguided individuals have been downloading copyrighted music without the permission of (read: without paying) the copyright owners. You know who you are. However, because these scofflaws have been hiding behind anonymous IP addresses, their identities were not known to the offended copyright owners – until now. (Arista Records v. Doe 3)

Many laypersons (note use of politically correct term “layPERSONS”) have complained that lawyer’s bills are outrageous. Well, now we have a federal judge who agrees with them. (AstraZeneca AB et al. v. Dr. Reddy’s Laboratories, Ltd. et al.)

AstraZeneca sued Dr. Reddy’s for patent infringement. AstraZeneca lost and was ordered to pay Dr. Reddy’s legal bills. Undaunted, AstraZeneca appealed – and lost again.

Some time ago, we wrote of Bimbo Bakeries USA Inc. and their efforts to prevent a former employee, Chris Botticella, from working for Hostess, Inc. As we previously noted, Mr. Botticella is allegedly in possession of secret information relating to the creation of the highly advertised “nooks and crannies” in Thomas’ English Muffins.

Lawyers who file frivolous claims may be sanctioned by the court (“sanctioned” is legalese for “ordered to pay money to the opposing party”). The question, of course, is which claims are frivolous.

The applicable rule of civil procedure – for all you anal retentive types, it’s F.R.C.P. 11 – states that “sanctions are appropriate when … the party files a pleading that is based on a legal theory that has no reasonable chance of success and that cannot be advanced as a reasonable argument to change existing law …"

It may be debated whether size is important. Be that as it may, the ability to boast about size is clearly VERY important – at least to the folks at Subway. Yes, the same people whose television spokesman claims to have lost hundreds of pounds eating their sandwiches has now claimed trademark, i.e. exclusive rights to use of the term FOOTLONG in connection with sandwiches.

Much criticism has been levied at lobbyists and “special interests.” Well, some of them have apparently taken time from their socially significant efforts defending wayward politicians and negligent oil companies and coal mine operators to quietly work at amending the U.S. trademark law. The fruits of their efforts can be seen in a recent decision of the U.S. Court of Appeals For The Sixth Circuit, V Secret Catalogue Inc. et al. v. Moseley et al.