March 2011

One of the primary purposes of the Court of Appeals for the Federal Circuit (C.A.F.C.) is to ensure consistent claim construction results from the several district courts. Well, good luck on that! (American Piledriving Equipment, Inc. v. Geoquip, Inc. and American Piledriving Equipment, Inc. v. Bay Machinery Corporation)

Rule 8(a) of the Federal Rules of Civil Procedure requires that a complaint contain a “short and plain statement of the claim showing that the pleader is entitled to relief.” Seeking to add even more uncertainty to this already vague standard, the Supreme Court has held that, in order to survive a motion to dismiss, the complaint must state “more than labels and conclusions.” Clearly, neither of these statements provides much guidance. So, when should a defendant, in a patent infringement suit, move to dismiss on the grounds that the complaint is deficient?

Many's the man who spent the night sleeping on the sofa because his wife found a lipstick print on his shirt collar. Well, now we have the case of two liquor companies which find themselves in court because their competitor found lipstick prints on their vodka bottles. (JL Beverage Company LLC v. Fortune Brands Inc. and Jim Beam Brands Co.)

As any reader of our highly informative, yet readable and even witty book Essentials Of Intellectual Property is aware, infringement of a patent may be “direct” or “indirect.” Direct infringement occurs when the accused party “makes, offers to make, sells, offers to sell, uses, or imports” the patented invention.

Several months ago, we wrote of the legal battle between Robert Burck, a/k/a The Naked Cowboy, and Sandra Brodsky, a/k/a Sandy Kane, a/k/a The Naked Cowgirl. (See Legal Fight At The Times Square Corral.) Well good news, the two cowpersons have agreed to settle their differences.

Suing for infringement, only to have your patent held invalid is bad enough. Being ordered to pay the defendants’ attorneys’ fees makes it worse. (Old Reliable Wholesale, Inc. v. Cornell Corporation)

In legal battles pitting a patentee David against an accused infringer Goliath, there is a tendency to assume that the little guy is virtuously and reasonably enforcing its valid rights against a giant, evil scum-sucker. Well, not always. (TecSec, Inc. v. International Business Machines Corp. et al.)

Once upon a time, a patentee that prevailed in an infringement suit was awarded a permanent injunction barring the scum-sucking, bottom-feeding defendant from committing further dastardly acts of infringement. Automatic; no questions asked. Then, the Supreme Court, in its infinite wisdom, handed down its eBay decision, under which a patentee which does not practice the patented invention – an N.P.E. or, depending upon your point of view, a Patent Troll – is simply not going to receive an injunction.

We have written often of the plague of false marking suits which are yet another obstacle to manufacturing in America. Now, with great satisfaction, we can report that the lowlife plaintiffs – technically known as “relators” – who bring these suits are becoming an obstacle to each other. (Thomas A. Simonian v. Irwin Industrial Tool Company)

As we have written many times, a method claim including steps which are performed by different actors can only be infringed if one of the actors, known as the “mastermind,” controls the actions of all of the others. The reader will note the emphasis on “method claim.” Does this rule also apply to system claims? If the various structural components of a patented system are owned and operated by different parties, is anyone infringing the claim by “using” the system? Centillion Data Systems, LLC v. Qwest Communications International, Inc. et al.

As famously observed by sports reporter Mike Royko, that keen observer of the human condition, “the race is not always to the swift, not the fight to the strong, but that’s how you handicap them.” Translated into more common vernacular, "in a legal battle, bet on the special interests to ultimately prevail." (V Secret Catalogue Inc. v. Moseley et al.)

In a case which even we find bizarre, attorneys are seeking to defend their clients, accused of patent infringement, by alleging that other attorneys, from the same firm, were somehow “deficient” when they prosecuted the patents-in-suit. (Telematics Corp. v. Actsoft Inc. et al.)

As the reader should be aware by now, the MedImmune decision has drastically altered the landscape with respect to declaratory judgment actions. A specific threat of litigation by a patentee is no longer required to establish jurisdiction, and a declaratory judgment action can no longer be defeated by the simple stratagem of avoiding “magic words,” such as “litigation” and “infringement” in correspondence.

When a lawsuit has reached the point of name-calling and conspiracy accusations, it takes on the aspect of a sitcom. (Mattel, Inc. et al. v. MGA Entertainment, Inc.)

MGA is – at least for the present time – the owner of the line of BRATZ dolls. Mattel contends that the dolls were created by an MGA employee, Mr. Carter Bryant, at a time when he was still under contract to Mattel. Seeking to enforce its claim to ownership of BRATZ, Mattel sued MGA. The legal battle has now stretched on for seven (7) years.

As anyone who has read our informative yet witty book, Essentials Of Intellectual Property, should be aware, broad patent claims are good. However, claims which are too broad are not good. (MagSil Corp. et al. v. Seagate Technology, et al.)

It seems as if some lawyers just can’t take a hint from the court. (Rosenthal Collins Group, LLC v. Trading Technologies International, Inc.)

Trading Technologies is the owner of two patents relating to software that allows futures traders to enter orders electronically. Rosenthal filed a declaratory judgment action contending that its software product anticipated and, hence, invalidated these patents. Trading Technologies responded with a counterclaim alleging that Rosenthal infringed its patents.

Some firms, like some people, are apparently unable to learn from experience. (Casey’s General Stores Inc. v. Doctor’s Associates Inc.)

Doctor’s Associates is the owner of the Subway chain of sandwich shops. As anyone who is not comatose is aware, Subway promotes, and promotes, and promotes “footlong” sandwiches for “$5 dollars.”

Casey’s is the owner of a chain of convenience stores. Casey’s recently inaugurated a “made-to-order sub sandwich program.” Casey’s “offers and intends to continue to offer ‘footlong’ sandwiches … for a price point at or about $5 dollars.”

As readers should have discerned from our previous blog entries on the subject, we strongly disapprove of the recent deluge of lawsuits brought under 35 U.S.C. §292, the so-called “false marking statute.” It is, therefore, with great pleasure that we report on a district court decision finding this statute to be unconstitutional. (Unique Product Solutions, Ltd. v. Hy-Grade Valve, Inc.) On a further happy note, we present some startling, and gratifying, statistics compiled by the fine folks at Mayer Brown LLP.

As promised, we have continued to follow the fascinating case of Fairey et al. v. The Associated Press.

As any reader of our excellent book, Essentials Of Intellectual Property (just released in its new-and-improved second edition!), is undoubtedly aware, damages in a case of patent infringement may be based upon either the lost profits of the patentee or a reasonable royalty on the infringer’s sales of the infringing goods or services.

Sometimes, the failure to provide adequate training to support staff can have disastrous consequences. (Regents of the University of Minnesota v. David J. Kappos)

As everyone who watches television must be painfully aware, certain lawyers seek to recruit clients by advertising alleged product defects and soliciting anyone who believes that they might possibly have been injured by these products. Many of us in the law biz consider such promotion to be distasteful at best and recall a time when such activities were considered unethical, if not illegal.

If you’re a child, you can lie to your parents. If you’re married, you can lie to your spouse. It’s pretty much expected and seldom results in much more than the occasional spanking or night spent sleeping on the sofa. Lying in industry surveys and using the survey results in your advertising, however, can have serious repercussions – like being sued. (Unique Sports Products Inc. v. Ferrari Importing Co.)