August 2010

Having departed from our usual genre to write seriously about Bilski, we now return to the humorous, the ridiculous, and the pathetic, and report on a case which would appeal to the Addams Family and the Munsters. (In the Matter of: Certain Caskets)

Every now and then, we take time from our primary function – entertaining our readers – to write about something of legal significance. This is one such instance.

From the "fact is stranger than fiction" department, we report on the bizarre case of a giant Japanese corporation suing a giant Taiwanese corporation in a court in Madison, Wisconsin. (Ricoh Company v. Quanta Computer Corp.)

Ricoh is an electronics manufacturer employing approximately 100,000 people, of whom over 40,000 are in the U.S. It produces, among other things, photocopiers, printers and digital cameras, with annual sales of about $20B.

The courtroom behavior of some people is just unbelievable. They do things you’d only expect to see on television – in a sitcom. (Sky Development, Inc. v. Vista View Development, Inc. et al.)

A few weeks ago, we wrote about a legal battle between bourbon and tequila. Today we are writing about a legal battle between two vodkas. Who says courtroom proceedings are boring and dry? (Zodiac Spirits Inc. et al. v. Moet Hennessy USA Inc. et al.)

Some few days ago, we wrote about Interactive Life Forms LLC, the sex toy manufacturer that filed a complaint with the International Trade Commission (I.T.C.) against more than two dozen companies that it accused of selling imported sex toys which infringe its patents. The I.T.C. voted to launch an investigation into this matter, no doubt to protect the jobs of Interactive’s production workers and product design personnel.

Proving that someone is reading our blog, one reader wrote in to inform us that we had overstated the holding in the below-identified case. We, therefore, reprint this blog post in amended form.

We have repeatedly advised our readers about proper royalty bases for damages calculations. Well, apparently some people are either not reading our blogs or can’t take advice. (LaserDynamics Inc. v. Quanta Computer, Inc. et al.)

Some time ago, we wrote a blog post concerning the travails of one Joel Tenenbaum. For those among our legion of faithful readers who are short of memory, Joel was sued by Sony BMG Music for using file-sharing software to download and share 30 songs in violation of their copyrights. We didn’t say “alleged” because, at trial, he admitted to these dastardly acts.

More than a year has passed since the C.A.F.C. handed down its Exergen decision, holding that inequitable conduct is akin to conventional fraud and, therefore, must be pled in considerable detail. Apparently, not everyone has gotten the message. (ACQIS LLC v. Appro International, Inc. et al.)

In the course of our extensive coverage of the spreading plague of patent false-marking suits, we opined that the courts were likely to focus on “standing” – or the lack thereof – as a means of reining in runaway trolls. Well, we were right. (Shizzle Pop, LLC v. Aviva Sports, Inc. et al. and United States of America, et al. v. WHAM-O, Inc.) (Yes, folks, a TWOFER.)

Sometimes an infringer (slimeball), having been dragged into court, does everything it can to obstruct the orderly progress of the litigation and, in the process, annoys the judge. Such tactics have their price. (ReedHycalog UK, Ltd. et al. v. Diamond Innovations Inc.)

Lawyers are always on the lookout for new ways to make a buck, as evidenced by the recent emergence of the "marking troll".

Newspapers, especially local or neighborhood newspapers, are wont to publish brief articles lauding local individuals or businesses, so-called “puff pieces.” The individuals or businesses are wont to copy these articles onto their websites, blogs, or other electronic forms of self-aggrandizement.

One would have thought that it is now well settled that joint infringement of a method claim, i.e. infringement where some of the steps are performed by one party and the remaining steps are performed by another party, can only occur when one of the parties exercises “control or direction” over the entire infringing process. Well, apparently not. (Golden Hour Data Systems, Inc. v. emsCharts, Inc. and Softtech LLC.)

Lest the reader think that IP law is boring and stodgy, we recount the recent Battle Of The Bras. (Plew v. Limited Brands Inc. et al.)

Katerina Plew is the inventor of a bra with multiple strap configurations. (For legal scholars who wish to really reach into this subject, see U.S.P.N. 6,733,362). Limited Brands is a company known to all by its nom de cleavage, Victoria’s Secret.

First, the government bailed out the auto industry. Now, it’s being asked to protect the domestic sex toy industry. (In the Matter of Certain Devices Having Elastomeric Gel and Components Thereof)

Sometimes you can make a decision which comes back to haunt you more than a century later. (Anheuser-Busch Inc. v. OHIM and Budejovicky Budvar NP)

Over the past few months, we have repeatedly written about the travails of Chris Botticella in his battles with Bimbo Bakeries (motto: we’re not just blonde receptionists).

What is a patentee to do when, locked in a costly battle to enforce its patent, a court construes its claim terms in an unfavorable manner? Well, the first thing, of course, is to settle the case. This will stop the “bleeding” (clientspeak for “paying the lawyers”).

The courts do not give litigants a second bite at the apple. If at first you don’t succeed, IT’S OVER. (Warren Katz v. Holland and Knight)

In 2004, Katz, an architect, retained H&K to represent him in a lawsuit alleging infringement of his copyright in certain townhouse designs. He settled the case for $10K.

A couple of years ago, the Supreme Court handed down its MedImmune decision, changing the declaratory judgment landscape in the patent world. Now, a scum-sucking infringer can bring a declaratory judgment action against a patentee who has the temerity to think about patent enforcement. The trademark community, apparently unaffected, continued on as before. Well, no longer! The courts are now applying MedImmune to trademark cases.

Occasionally (read: all too often), a lawsuit is brought which, after lengthy and expensive proceedings, is found to be “meritless,” or even “frivolous.” In such cases, the plaintiff and its law firm may be found liable for the costs incurred by the defendant. Well, no more. The putz plaintiff may be held liable, but NOT ITS LAW FIRM. (BDT Products Inc. v. Lexmark International Inc.)

The statute of limitations, with respect to false marking claims, is five years – for you obsessive-compulsive personalities, it’s set forth at 28 USC §2462. Suit is barred in respect of any act occurring outside the statute period. The critical question – especially if you’re a “marking troll” – is "when does the statute of limitations begin to run?"

Does it begin, for example, when the particular production run began, or when the false marking first occurred? Well, ponder no more, a court has provided the answer. (Seirus Innovative Accessories, Inc. v. Cabela’s, Inc.)

It is well settled that an issued U.S. patent is available to be cited as prior art as of “the filing date of the earliest U.S. application to which the patent is entitled.” What if the said patent application claimed the benefit of an earlier filed provisional patent application? Is the issued patent available as a prior art reference as of the filing date of the provisional application?

Surprisingly, this question has not been previously addressed by a court. Well, now the C.A.F.C. has decided the matter. (In re Giacomini)