September 2010

It had been opined that the decision in Stauffer, and the similar decisions in Shizzle Pop and WHAM-O, would bring an end, or at least a diminution, to the stream of “false marking” lawsuits. All of these cases were dismissed on the grounds that the plaintiff lacked standing to sue.

As we have previously noted (here, for example), whatever else you may want to say about the folks at Microsoft, they certainly are not quitters. Now, their perseverance has raised an issue which is of paramount importance to all patent owners, but which has gone largely unnoticed – until now.

Sometimes it seems that attorneys file motions for summary judgment as a matter of routine, without seriously considering the probability of success. (Bright Response, LLC v. Google Inc., et al.)

From time to time, large corporations get together to discuss topics of mutual interest, such as creative accounting, the creation of worthless securities, sending jobs to low-wage foreign countries, circumventing the anti-trust laws, and defeating righteous claims of patent infringement. It is this last topic that we shall briefly address here.

Of late, there has developed something of a fad of clients suing their attorneys. Typically in cases involving patents, the clients seek to recover the profits they allegedly would have made but for the alleged misconduct of the attorneys. When this occurs, the claimed damages can reach truly impressive levels. (Nomir Medical Technologies Inc. v. McDermott, Will & Emery)

What happens when decisions of the U.S. Supreme Court conflict with the Federal Rules of Civil Procedure (F.R.C.P.)? (Automated Transactions, LLC v. First Niagara Financial Group, Inc. et al.)

Several years ago, there was a flurry of lawsuits, brought by companies accused of patent infringement, against their liability insurance carriers. The accused infringers were seeking a declaration that their commercial general liability (CGL) insurance policies covered their legal fees in defending a patent infringement lawsuit, and any damages if the slimeballs were found guilty.

Sometimes there is simply no substitute for a true “expert.” (Byrne v. Wood, Herron & Evans, LLP et al.)

Mae West famously inquired, “[w]hat’s a gal got to do to get a drink around here?” The response, if any, is not recorded. In a recent case, a New York based company has demanded, “what’s a trademark infringer got to do to be subject to personal jurisdiction here?” To this, the Court of Appeals for the Second Circuit has responded. (Chloe, A Division Of Richemont North America, Inc. et al. v. Queen Bee Of Beverly Hills LLC et al.)

An increasingly common tactic among those accused of patent infringement is to seek re-examination of the subject patent or patents. This may occur even while litigation is proceeding in a district court, leading to the possibility that a jury finds the patent valid and infringed while the Patent Office, shortly thereafter, finds the same patent invalid. What happens then? (Flexiteek Americas, Inc. et al. v. Plasteak, Inc. et al.)

Zorro is not the only one who is concerned about making his mark.

As the reader may (read: should) be aware, a patentee who practices the patented invention is “entitled to damages from the time when it either began marking its products in compliance with 35 USC §287(a) or when it actually notified [the infringer] of its infringement, whichever was earlier … or when, from the character of the article, this cannot be done by fixing to it, or to the package wherein one or more of them is contained, a label containing … [such] notice.”¹