October 2010

For those of our readers who are enamored of the “all-you-can-eat” restaurant experience – you know who you are and, generally, the rest of us know too – a recent case may be of particular interest. (Darden Concepts, Inc. et al. v. Briad Restaurant Group, LLC et al.)

Frequently, the biggest obstacle to patentability is the requirement of “nonobviousness.” All too often, a patent examiner will invoke the talismanic “KSR,” while rejecting claims as obvious in light of prior art references combined on the basis of “common sense.” Well, this abhorrent practice may be coming to an end. (In re Ravi Vaidyanathan)

Some weeks ago, we wrote about the qualifications to testify as an expert witness (see The Case of the Inexpert Expert). An expert needs “knowledge, skill, experience, training or education.” However, unless the proffered expert is also an acknowledged psychic, there are some subjects on which even the most technically proficient individual may not testify. (Bone Care International LLC et al. v. Pentech Pharmaceuticals, Inc. et al.)

So, you saved a bundle of money by buying your computer software on eBay. Got a great deal, right? Maybe, maybe not. (Vernor v. Autodesk, Inc.)

In June the Supreme Court handed down its non-decision in the famous – or infamous, depending upon your point of view – Bilski case. Ever since then, patent attorneys and patent owners have been trying to figure out exactly what the decision means. It has been suggested that subsequent decisions by the C.A.F.C. will clarify the matter.

It is not often that we encounter the confluence of law, politics and entertainment. When we do, we’ve just got to write about it. To quote that great philosopher and social commentator, Jay Leno, “you can’t buy material like this.” (Naked Cowboy v. Sandra Brodsky)

“Literal infringement of a means-plus-function limitation requires that the relevant structure in the accused device perform the identical function recited in the claim and be identical or equivalent to the corresponding structure in the specification. A structure in the accused device constitutes an equivalent to the corresponding structure in the patent only if the accused structure performs the identical function ‘in substantially the same way, with substantially the same result.’” Is that clear? To some folks, at least, no!

Litigation, like politics, sometimes devolves into name-calling. However, unlike politics, litigation is subject to control by a responsible adult, namely the judge. Prior to trial, each party submits to the judge a multitude of requests that evidence – deemed by its opponent to be critical to its case – is, in fact, improper for one or more reasons and, hence, should be excluded. These requests are known in the law biz as “motions in limine.” Recently, a judge granted one such motion, ruling that certain terms are improper and could not be presented to a jury.

Patent owners, suing for infringement of their patents, routinely include an allegation that the defendant’s actions were “willful” and demand treble damages as recompense for this dastardly conduct. Sometimes, however, the circumstances are such as to make the patent owner look, at best, foolish. (Advanced Fiber Technologies Trust v. J&L Fiber Services, Inc.)

In a patent infringement case, damages begin to accrue when the accused infringer (the “scum-sucker”) is given notice of the infringement. Notice may be “actual” – a letter, an email, a slap in the face – or it may be “constructive.” Constructive notice occurs when the patentee (the “good guy”) or a licensee markets a product marked with the number of the patent.

“There has been a failure to communicate.” In the classic movie, Cool Hand Luke, this failure resulted in the death of the character played by Paul Newman. More recently, such a failure resulted in the loss, to society, of a critically needed new product. I refer, of course, to the musical toilet. LG Home Products, LLC v. Townsend And Townsend And Crew LLP et al.

An argument, even a possibly very good argument, which is presented too late, is often of no benefit. (Marine Polymer Technologies, Inc. v. HemCon, Inc.)