Sometimes an infringer (slimeball), having been dragged into court, does everything it can to obstruct the orderly progress of the litigation and, in the process, annoys the judge. Such tactics have their price. (ReedHycalog UK, Ltd. et al. v. Diamond Innovations Inc.)
Lawyers are always on the lookout for new ways to make a buck, as evidenced by the recent emergence of the "marking troll".
Newspapers, especially local or neighborhood newspapers, are wont to publish brief articles lauding local individuals or businesses, so-called “puff pieces.” The individuals or businesses are wont to copy these articles onto their websites, blogs, or other electronic forms of self-aggrandizement.
One would have thought that it is now well settled that joint infringement of a method claim, i.e. infringement where some of the steps are performed by one party and the remaining steps are performed by another party, can only occur when one of the parties exercises “control or direction” over the entire infringing process. Well, apparently not. (Golden Hour Data Systems, Inc. v. emsCharts, Inc. and Softtech LLC.)
Lest the reader think that IP law is boring and stodgy, we recount the recent Battle Of The Bras. (Plew v. Limited Brands Inc. et al.)
Katerina Plew is the inventor of a bra with multiple strap configurations. (For legal scholars who wish to really reach into this subject, see U.S.P.N. 6,733,362). Limited Brands is a company known to all by its nom de cleavage, Victoria’s Secret.
First, the government bailed out the auto industry. Now, it’s being asked to protect the domestic sex toy industry. (In the Matter of Certain Devices Having Elastomeric Gel and Components Thereof)
Sometimes you can make a decision which comes back to haunt you more than a century later. (Anheuser-Busch Inc. v. OHIM and Budejovicky Budvar NP)
Over the past few months, we have repeatedly written about the travails of Chris Botticella in his battles with Bimbo Bakeries (motto: we’re not just blonde receptionists).
What is a patentee to do when, locked in a costly battle to enforce its patent, a court construes its claim terms in an unfavorable manner? Well, the first thing, of course, is to settle the case. This will stop the “bleeding” (clientspeak for “paying the lawyers”).
The courts do not give litigants a second bite at the apple. If at first you don’t succeed, IT’S OVER. (Warren Katz v. Holland and Knight)
In 2004, Katz, an architect, retained H&K to represent him in a lawsuit alleging infringement of his copyright in certain townhouse designs. He settled the case for $10K.
A couple of years ago, the Supreme Court handed down its MedImmune decision, changing the declaratory judgment landscape in the patent world. Now, a scum-sucking infringer can bring a declaratory judgment action against a patentee who has the temerity to think about patent enforcement. The trademark community, apparently unaffected, continued on as before. Well, no longer! The courts are now applying MedImmune to trademark cases.
Occasionally (read: all too often), a lawsuit is brought which, after lengthy and expensive proceedings, is found to be “meritless,” or even “frivolous.” In such cases, the plaintiff and its law firm may be found liable for the costs incurred by the defendant. Well, no more. The putz plaintiff may be held liable, but NOT ITS LAW FIRM. (BDT Products Inc. v. Lexmark International Inc.)
The statute of limitations, with respect to false marking claims, is five years – for you obsessive-compulsive personalities, it’s set forth at 28 USC §2462. Suit is barred in respect of any act occurring outside the statute period. The critical question – especially if you’re a “marking troll” – is "when does the statute of limitations begin to run?"
Does it begin, for example, when the particular production run began, or when the false marking first occurred? Well, ponder no more, a court has provided the answer. (Seirus Innovative Accessories, Inc. v. Cabela’s, Inc.)
It is well settled that an issued U.S. patent is available to be cited as prior art as of “the filing date of the earliest U.S. application to which the patent is entitled.” What if the said patent application claimed the benefit of an earlier filed provisional patent application? Is the issued patent available as a prior art reference as of the filing date of the provisional application?
Surprisingly, this question has not been previously addressed by a court. Well, now the C.A.F.C. has decided the matter. (In re Giacomini)
A few weeks ago, we wrote of the false marking case of Pequignot v. Solo Cup Co. (See A Vanishing Opportunity?). We noted that the appellate judges seemed to be telegraphing their punch during oral arguments on the appeal. In particular, we referred to the suggestion, by one of the judges, that the false marking statute was criminal in nature, whereby intent must be proved “beyond a reasonable doubt.”
We have previously commented upon the shabby treatment accorded small, non-practicing entities (NPEs) by the courts. Well, we are now able to report that, in at least one respect, large corporations are being treated in like manner to small ones. A large corporation, seeking to enforce a patent which it does not practice, i.e. a large NPE, gets the same short shrift as a small NPE. (Pitney Bowes Inc. et al. v. Zumbox, Inc.)
By this time, the reader really should be aware that joint infringement of a method claim requires that one party – known as the “mastermind” (we are not making this up) – must control the actions of any and all other parties – known as the “chumps” – involved in performing other steps of the claimed method.
Use of another party’s trademark, in connection with the sale of your goods, is likely trademark infringement. What about use of another party’s trademark as part of your internet domain name – is that an infringement? Maybe not. (Toyota Motor Sales, USA v. Farzad Tabari and Lisa Tabari d/b/a Fast Imports)
Many legal cases present a conflict between right and wrong, between good and evil, or between morality and avarice. Now, we have a case which presents the conflict between bourbon and tequila. (Maker’s Mark Distillery, Inc. v. Diageo North America Inc. et al.)
Copyright registration is a prerequisite to filing suit for copyright infringement. The question is, ‘when is a copyright registered’? Is registration effective upon the filing of an application for registration, or when a registration issues? Surprisingly, this question has remained unanswered – until now. (Cosmetic Ideas, Inc. v. IAC/Interactive Corp., et al.)
The ways in which things are used change over time. For example, “orange juice – it isn’t just for breakfast anymore.” Well, now the insanity defense isn’t just for serial killers and child molesters – it’s being used by accused patent infringers. (Karyn McGaughey, et al. v. Bayer Corporation, et al.)