February 2011

The “preamble,” or introductory, part of a patent claim is the portion of the claim preceding the “transition” words “comprising” or “consisting of.” Do the terms of the preamble constitute limitations of the claim? Like so much of the law, "it depends." (American Medical Systems, Inc. and Laserscope v. Biolitec, Inc.)

Wouldn’t it be great, from a patentee’s perspective, if infringement could be proven without the bother and expense of comparing the asserted patent claims with an accused product? Well, good news patentees; now in some circumstances you can! (Fujitsu Limited, LG Electronics, Inc. and U.S. Philips Corporation v. Netgear Inc.)

As the reader should be well aware by now, false marking is the marking of a patent number on an “unpatented article.” Heretofore, most such cases have involved expired patents. Occasionally, mismarking has been found where the marked patent did not cover the article on which it appeared or where the marked patent had previously been adjudicated as invalid. Fine; so what about a patent that was found not to be invalid, but unenforceable? Does marking an article with the number of such a patent constitute false marking? (Promote Innovation LLC v. Medtronic, Inc.)

For some reason, it appears that the folks who make tequila can’t get along with the folks who make bourbon. Some time ago, we wrote about the ongoing and increasingly bitter trademark dispute between Maker’s Mark (bourbon) and Jose Cuervo (tequila). Now, we have another Battle Of The Booze, this time between Jim Beam Brands Co. (bourbon) and Tequila Cuervo La Rojena SA de CV (tequila).

Occasionally, the timing of behavior is crucial. (Power Integrations, Inc. v. Fairchild Semiconductor International, Inc. et al.)

Sometime ago, we wrote about a U.S. patent being enforced in Puerto Rico – yes, Puerto Rico is part of the United States. Now, we write about a U.S. patent which is not being enforced in an Indian reservation, in Oklahoma, because the reservation is a separate nation and, in that respect, not part of the United States. (Specialty House Of Creation, Incorporated v. Quapaw Tribe Of Oklahoma, a federally recognized Indian nation)

Sometimes a lawsuit is nothing more than an effort by the plaintiff to remedy its own lack of foresight. (United States of America v. American Society Of Composers, Authors And Publishers, In the matter of Applications of Realnetworks, Inc. and Yahoo! Inc.)

The world is changing. Orange juice isn’t just for breakfast anymore and Chippendales dancers are no longer “adult entertainment” just for women. (In Re Chippendales USA, Inc.)

Before we recount the fascinating Chippendales’ saga, a brief lesson in trademark law is in order. Trademarks and service marks may be divided into four classes or categories, based upon their “inherent distinctiveness”: (1) “arbitrary” or “fanciful,” (2) “suggestive,” (3) “descriptive,” and (4) “generic.”

If, as the saying goes, a lawyer who represents himself has a fool for a client, what can be said about a layman who represents himself in prosecuting a number of lawsuits against alleged infringers of his patent?

Samy Gharb is the inventor of a “Security System With A Mobile Telephone.” Through the services of a respectable IP law firm (Burns, Doane, Swecker & Mathis, LLP), he secured a patent on his invention, which issued in April 2003. So far, so good.