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.
“It is insanity to repeatedly do the same thing and expect a different result.” (Albert Einstein) This applies to the law as well as to physics. (Alaska Stock LLC v. Houghton Mifflin Harcourt Publishing Company et al.)
Sometimes a little, overlooked detail can bite you where you sit. (Gordon-Darby Systems, Inc. v. Applus Technologies, Inc.)
If a claim in a reissued or re-examined patent is not “substantially identical” in scope to the same claim in the underlying, previously issued patent, a defense of “intervening rights” may arise with respect to infringement of that claim. In other words, if an amendment results in a substantial change in claim scope, the patentee may not be entitled to damages despite the infringement of the amended claim. This is well-settled law.
“… infringement requires a party to perform … each and every step … of a claimed method … where the actions of multiple parties combine to perform the steps of a claimed method, the claim is directly infringed if one party exercises ‘control or direction’ over the entire process such that every step is attributable to the controlling party, i.e. the ‘mastermind’ … instructing users on the use of … [a computer-implemented] method constitute[s] insufficient evidence of control to establish … infringement.” This is WELL ESTABLISHED law.
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.