December 2010

Sometimes a patent claim is drafted in such a way that, as a practical matter, it can’t be infringed. Without such direct infringement, there can be no indirect infringement, i.e. no contributory infringement, nor any inducement to infringe. Sometimes this annoying little detail escapes patentees eager to enforce their patents. Moreover, some patentees seem to confuse the possibility an item was used in an infringing manner with actual infringement. (PrivaCash, Inc. v. American Express Company et al.)

In its recent landmark Bilski non-decision, the Supreme Court held that the now-famous “machine-or-transformation test” (MOTT), although “a useful and important clue,” is not the sole test for determining the patentability of process claims. Fortunately for the legion of lawyers who will now earn vast sums of money litigating the question, the Court did not indicate what other test might apply. Well, to the chagrin of the lawyers, the Court Of Appeals For The Federal Circuit (CAFC) has now stepped in to fill the vacuum.

For some time we have been writing about lawsuits alleging that a manufacturer has “mismarked” its products. Generally, these cases involve venerable products formerly covered by patents which are now expired. If the manufacturer neglects to remove the expired patent numbers from the product, ZAP, they get sued by some “marking troll.” As the reader may have discerned, we disapprove of such lawsuits. Now, however, we have come across a claim of mismarking of which we most heartily approve. (Polytree (Hong Kong) Co., Ltd., et al. v. Forests Manufacturing, Ltd.)

By now, every “non-practicing entity” (NPE) in the country must be aware of the impact of the Supreme Court’s eBay decision, compelling the courts to apply the dreaded “four-factor” test to determine whether a prevailing patentee is entitled to an injunction barring further infringement by the scum-sucking defendant. In case anyone has been comatose for the past year and is unaware of the implications of this decision, I will briefly summarize – if you’re an NPE, the courts will NOT grant you an injunction.

Having just written a blog about one church suing another church for servicemark infringement (see God Is On Our Side), we now find an entrepreneur suing a porn website for infringement of a copyright on an article about a church. (Righthaven LLC v. Hush-Hush Entertainment, Inc. et al.)

From the ridiculous to the sublime. Last week we wrote about a lawsuit alleging, inter alia, infringement and dilution of the trademark HUSTLER, used in respect of nudie bars (see All You Ever Wanted to Know About HUSTLER - And More). This week we report on a lawsuit alleging infringement and dilution of two servicemarks used in respect of “religious services or works.” (Episcopal Diocese Of Fort Worth v. The Rt. Rev. Jack Leo Iker).

Some people turn mean after too much liquor. Others, apparently, turn mean after too much litigation. (Maker’s Mark Distillery, Inc. v. Casa Cuervo, S.A. de C.V. et al.)

Some weeks ago, we wrote about Batesville Services, Inc. (see Protecting Domestic Industry), the high-tech casket company locked in a dispute with Ataudes Aguilares SRL, a Mexican casket company which had imported 14 (yes, 14) caskets into Puerto Rico.

Today we learn a lesson about overreaching and its possible consequences.

An attractive young model and two sets of bungling attorneys – sounds like the makings of a TV sitcom; but in actuality, it was a comedy played out in a courtroom. Ting Ji v. Bose Corporation and White/Packert Inc.

Today we write about a company that truly knows no shame. Having defrauded a supplier and its own customers – and, incidentally, trampling on the intellectual property rights of both – it now compounds its shame. Rather than quietly pay the penalty – which it had negotiated with the offended supplier – it seeks to have the penalty paid by its insurance carrier. Hartford Casualty Insurance Company et al. v. SoftwareMedia.Com., Inc. et al.

Sometimes a defendant need not actually present its defense in order to prevail. Sometimes the plaintiff seemingly goes out of its way to destroy its own case. Advanced Magnetic Closures, Inc. et al. v. Rome Fastener Corporation et al.

Advanced Magnetic sued Rome, alleging infringement of a patent directed to magnetic snap fasteners commonly used in women’s handbags. The patent-in-suit identified Irving Bauer, the president of Advanced Magnetic, as the sole inventor.

One would think that Facebook, the great facilitator of social interaction, could take a joke. Well, apparently not. (Lamebook LLC v. Facebook Inc.)

Some families fight at the Thanksgiving table; others take their fight to court. (L.F.P. IP, LLC and L.F.P. Inc. and Larry C. Flynt vs. Hustler Cincinnati, Inc. and Jimmy R. Flynt)

This is the latest chapter in the continuing saga of The Travails Of Kiwi Camara and his unending efforts to defeat the forces of the record industry and make recorded music available to all, at no cost – record companies and recording artists be damned.

Recently we wrote of a case (see A Lack of Control) wherein the method claims of the patent-in-suit were found to be not infringed because, in the Court’s analysis, “the claims require multiple actors … and … there is no dispute that the parties involved do not control or direct each other’s actions …” Well, now we have another case, from a different court, decided only 13 days later, which seemingly comes to the opposite result. (Kenexa BrassRing Inc. v. Taleo Corporation et al.)

All too often, patent cases are dry, tedious and just plain BORING. Occasionally, however, we encounter a case which provides “excitement” and “stimulation” and, ultimately, “satisfaction” – or at least the patented invention does such. (Hassex, Inc. and New Frontier Technologies Corporation v. Internet Services, LLC, Inc. and WMM Holdings, LLC.)

You may dream the impossible dream, but you can’t patent the impossible invention. (Mformation Technologies, Inc. v. Research In Motion Limited, et al.)

Mformation sued R.I.M., alleging infringement of a patent directed to “the remote management of wireless devices, such as smartphones.” In its defense, R.I.M. filed a blizzard (lawyerly hyperbole meaning “four”) of summary judgment motions, two of which are highly technical and fact-specific – and boring. The other two are more widely applicable and, hence, are the subject of this blog.

Some time ago, we wrote of Jammie Thomas (now Jammie Thomas-Rasset) and her attorney, Kiwi Camara (still Kiwi Camara), who are locked in apparently unending combat with Capitol Records, Inc. et al. As the reader may remember, in October 2007 Ms. Thomas-Rasset was found guilty of illegally – and willfully – downloading 24 songs (see previous blogs, The Cost Of Free Music and Damned If They Do, Damned If They Don’t).

By now the reader should be aware that a method claim of a patent is only infringed when ALL of the steps are performed by a single party – known in the trade as the “scum-sucker.” If different claim steps are performed by different parties, infringement occurs only when the actions of ALL of the parties are controlled or directed by a single entity – known in the law as the “mastermind.” Fine; so what constitutes the necessary “control or direction,” especially in the context of methods practiced on the internet? (Zamora Radio, LLC v. Last.FM, Ltd., et al.)

There has been a long-standing practice that a suit filed in the Eastern District of Texas stayed in the Eastern District of Texas. Well, no longer. There are limits, although they are apparently only recognized by the appellate court. (In Re Microsoft Corp.)

We have written several blogs about legal malpractice cases – cases wherein clients sue their former attorneys, alleging negligence and malpractice. Of late, such cases have become so common as to no longer merit comment. A recent case, however, has caught our attention because, as far as we can determine, the only negligence and malpractice in this sorry affair was committed by the plaintiffs’ new attorneys when they drafted the complaint alleging negligence and malpractice on the part of the plaintiffs’ former attorneys.

Some time ago, we wrote (see Of Special Interests) about Victor Moseley, the owner of a store – formerly known as “Victor’s Little Secret” – which sells what have been described by one officious intermeddler as “cheap, tawdry, salacious and unwholesome” goods, namely “sexy lingerie, crotchless panties and other related items.”

Some time ago, we recounted the sad history of a trademark dispute between Maker’s Mark Distillery – producers of fine bourbon – and Diageo North America Inc. – purveyors of outrageously overpriced tequila. Briefly stated, Maker’s Mark had sued Diageo, alleging infringement and dilution of the assertedly famous Maker’s Mark trademark, namely the “red dripping wax seal” on the tops of the Maker’s Mark bottles.

It is a “century-old axiom of patent law … that a product which would literally infringe if later in time anticipates if earlier.” Some patentees overlook this axiom – to their everlasting regret. (Teva Pharmaceutical Industries Ltd. v. AstraZeneca Pharmaceuticals LP et al.)