On Thursday, one of Google’s patent applications was published by the USPTO, revealing to the public Google’s game advertising technology. This application (U.S. Patent Application Publication No. US2007/0072676, entitled “Using information from user-video game interactions to target advertisements, such as advertisements to be served in video games for example”), discloses technology whereby “[e]mbodiments consistent with the present invention allow information about a person's interests and gaming behavior to be determined by monitoring their online gaming activities (and perhaps making inferences from such activities),” and whereby “[s]uch information may be used to improve ad targeting.” The first claim of this application claims a computer-implemented method comprising “generating an ad request, wherein the ad request includes video game information,” transmitting the request to a server, determining “at least one ad responsive to the ad request using at least the video game information included in the ad request,” transmitting the ad to a video game apparatus, and rendering the ad in a video game played by the game apparatus. According to the patent application, “it would be useful to improve in-game advertising,” with the possible improvements of being able to “provide more useful and relevant ads” and to “increase advertising revenues.” Several examples of this technology are disclosed in the application, including the example of a user playing a driving simulation game, whereby “if it is found that the player is mostly racing with a BMW and generally German automobiles throughout the saved racing games on the memory card, then it might be inferred that the user is a BWM and German automobile aficionado, and may find ads for such cars useful.”

U.S. Patent Application Publication No. US2007/0072676: LINK
WebProNews.com Article: LINK
SEO by the Sea Article: LINK

A long standing dispute regarding the use of excerpts of James Joyce’s works has settled, giving limited use rights to a professor who sought to use the works. According to the RTE Entertainment article (link below), Carol Shloss, an Acting Professor of English at Stanford University, first sought to quote excerpts from “Finnegans Wake” and other writings of Joyce 16 years ago, and the Joyce estate subsequently refused her requests. Prof. Shloss prepared a thesis to defend her position that Lucia Joyce, James Joyce’s daughter who suffered from schizophrenia and later died in a mental institution, was the “creative muse” behind “Finnegans Wake.” After years of not coming to an agreement, and after attempts by Joyce’s estate to prohibit Prof. Shloss from using these materials, Prof. Shloss filed two actions for declaratory and injunctive relief (in June, 2006 and January, 2007) under 17 U.S.C. § 101 and 28 U.S.C. § 2201. As a result of the settlement of the dispute, and according to the RTE article linked below, Prof. Shloss obtained permission to create a revised appendix to her book , which was initially published without certain documentary evidence "including quotations from letters exchanged between [James] Joyce and his daughter and quotations from [James] Joyce's notebooks describing his observation about Lucia.” Links to the actual Settlement Agreement and the Stanford Law School Center for Internet and Society Blog referencing this dispute are also provided below.

RTE Entertainment Article: LINK
Prof. Carol Shloss’s Stanford Webpage: LINK
Stanford Law School Center for Internet and Society Blog Article: LINK
Copy of Settlement Agreement: LINK
Stanford Law School Press Release: LINK
Wikipedia Entry for “James Joyce”: LINK
17 U.S.C. § 101: LINK
28 U.S.C. § 2201: LINK

According to the New York Newsday article (link below), the Katonah Village Improvement Society (KVIS) of Katonah, New York, has expressed its displeasure with Martha Stewart’s pending trademark applications, and it may decide within the next couple of weeks whether or not to oppose her trademark efforts. In 2000, Martha Stewart purchased a 150+ acre estate in Katonah, New York, and soon thereafter in 2005, Martha Stewart Living Omnimedia, Inc. filed several trademark applications for the mark “KATONAH.” These applications, namely U.S. Trademark Application Serial Nos. 78727049, 78727052, 78727055, 78727061, 78727068 and 78727070, each seek to protect the word mark “KATONAH” but no design format of the word. Two of the applications (namely 78727055 and 78727070) seeking to protect the word for flooring, ceramic tiles, carpet, area rugs, wallpaper, and the like, were abandoned last November. The remaining applications seek to protect KATONAH for use for indoor lighting, interior and exterior paints, various home furnishings and accessories, furniture, window blinds, and the like. According to the Newsday article linked below, the KVIS is considering opposing the applications in part because local business owners “are concerned about whether they will be able to use the hamlet name for their product lines if Stewart owns the trademark.” The KVIS has voted to set aside $200 towards legal costs if it decides to move forward with the oppositions.

New York Newsday Article: LINK
Katonah Village Improvement Society Website: LINK
Martha Stewart Living Omnimedia, Inc. Website: LINK
U.S. Trademark Application Serial No. 78727049: LINK
U.S. Trademark Application Serial No. 78727052: LINK
U.S. Trademark Application Serial No. 78727055: LINK
U.S. Trademark Application Serial No. 78727061: LINK
U.S. Trademark Application Serial No. 78727068: LINK
U.S. Trademark Application Serial No. 78727070: LINK

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). My goal is to post new cases on a weekly basis. This posting covers the final three patent cases that were appealed from the district court level and decided by the Federal Circuit during the 12th calendar week of 2007. All opinions are precedential unless otherwise indicated.

Liebel-Flarsheim Company, et al. v. Medrad, Inc. (03/22/2007): appeal of grant of summary judgments of patent invalidity, infringement, and correct inventorship designation (affirmed invalidity, remaining issues moot); discussion of two patents relating to a front-loaded fluid injector for delivering contrast agents (U.S. Patent No. 5,456,669, entitled “Method of front loading an injector and injecting fluid into animals therewith,” and U.S. Patent No. 5,658,261, entitled “Disposable front loadable syringe”) and two patents relating to a computer-controlled injector with a retractable syringe plunger (U.S. Patent Nos. 5,662,612 and 5,928,197, both entitled “Controlling plunger drives for fluid injections in animals”); claims deemed invalid for lack of enablement because the full scope of the claims were not enabled; background of the specification actually taught away from the scope of the claims; “the applicant’s specification must enable one of ordinary skill in the art to practice the full scope of the claimed invention”; “the burden of showing invalidity is “especially difficult” when the prior art reference was before the examiner during prosecution”; patents deemed invalid for anticipation

Pfizer, Inc. v. Apotex, Inc. (formerly known as TorPharm, Inc.) (03/22/2007): appeal of finding of infringement (dismissing declaratory action for patent invalidity and unenforceability) and injunction against selling a generic version of a drug prior to a set date (reversed); discussion of patent relating to a composition to treat hypertension and vasospastic angina (U.S. Patent No. 4,879,303, entitled “Pharmaceutically acceptable salts”); plaintiff developed and sold a specific salt of the compound claimed in the patent; prima facie showing of obviousness by challenger of a patent because “the patent examiner initially rejected the claims to [the specific salt of the compound] for obviousness” is an incorrect statement of the law; discussion of the four Graham factors for obviousness; regarding secondary considerations, superior properties must be unexpected with evidence to demonstrate the same; “[a]lthough secondary considerations must be taken into account, they do not necessarily control the obviousness conclusion”; patent claims held to be invalid for obviousness for a different reason, namely because the challenger of the patent "introduced clear and convincing evidence that a skilled artisan would have had a reasonable expectation of success with the besylate salt form of [the compound] at the time the invention was made"

RFR Industries, Inc. v. Rex-Hide Industries, Inc. v. Century Steps, Inc. (03/23/2007, non-precedential): appeal of district court’s determination that plaintiff cannot recover infringement damages from defendant, defendant’s grant of attorneys fees, and the permanent injunction against plaintiff from pursuing certain claims in arbitration and ordering all future related actions to be filed by plaintiff in a particular court (affirm-, reverse-, and vacate-in-part and remand); discussion of patents relating to a railway system using a rubber product (U.S. Patent No. 5,577,662) and a method of installing the rubber product (U.S. Patent No. 5,535,947) (both entitled “Embedded railway track system”); indemnification for patent infringement by sales contract and settlement agreement, recovery of attorneys’ fees from provision in settlement agreement; vacated attorneys’ fees recovery due to costs incurred by defendants to establish their indemnification position; reversed permanent injunction and allowed future claims to be handled by arbitration

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). My goal is to post new cases on a weekly basis. This posting covers the first three patent cases that were appealed from the district court level and decided by the Federal Circuit during the 12th calendar week of 2007. All opinions are precedential unless otherwise indicated.

Cellco Partnership (doing business as Verizon Wireless) v. Broadcom Corp. (03/19/2007, non-precedential): review of whether or not the district court abused its discretion when dismissing a declaratory action (no abuse of discretion); trial courts have “unique and substantial discretion” in determining whether or not to decide case where they have declaratory judgment jurisdiction; no abuse of discretion by trial court in dismissing case because of judicial efficiency and because the party filing the declaratory judgment action “has not shown sufficient harm to require immediate resolution of its case” prior to the conclusion of other proceedings

Cross Medical Products, Inc. v. Medtronic Sofamor Danek, Inc., et al. (03/20/2007): appeal of second issued permanent injunction for infringement under doctrine of equivalents but not for direct infringement (reversed grant of summary judgment of infringement, lower court should grant defendant’s motion for summary judgment of non-infringement, and other issues addressed herein); discussion of patent relating to polyaxial bone screws (U.S. Patent No. 5,474,555, “Spinal implant system”), prosecution history estoppel “prevents a patentee from recapturing under the doctrine of equivalents subject matter surrendered during prosecution to obtain a patent,” amendments to overcome 35 U.S.C. § 112 rejections may give rise to estoppel, no literal infringement and no infringement under the doctrine of equivalents because of Festo, defendant’s redesigned screws do not meet the limitations of either claim at issue

Espeed, Inc., et al. v. Brokertec USA, L.L.C., et al. (03/20/2007): appeal of final judgment of claim invalidity, patent unenforceability, and final judgment in favor of defendants (affirmed unenforceability due to inequitable conduct); discussion of patent relating to automated methods and systems for trading financial instruments (U.S. Patent No. 6,560,580, “Automated auction protocol processor”), declarations submitted to disclose prior art system as including different rules than those disclosed by the patent, to overturn a discretionary ruling [like patent unenforceability] of a district court, the appellant “must establish that the ruling is [1] based upon clearly erroneous findings of fact or [2] a misapplication or misinterpretation of applicable law or that [3] the ruling evidences a clear error of judgment on the part of the district court,” submitted declaration contains false statements that were inherently material, “[f]alse statements are more likely material when embodied in declarations or affidavits submitted to the PTO,” patentee’s prior art system included new rules as disclosed in patent, intent to deceive determination by district court not highly erroneous, affirmed unenforceability of patent due to inequitable conduct so other issues not addressed

In the wake of 17 oppositions, Wal-Mart Stores, Inc. decided to withdraw its U.S. trademark application for EDLP (“everyday low prices”) from further consideration and review. As discussed in the Progressive Grocer article (link below), Wal-Mart filed for protection of the acronym in July of 2005 and “maintained that its use of the pricing strategy for most of its history entitled it to exclusive control of the acronym.” However, a number organizations, including Safeway, Inc., Publix Super Markets, Inc., and the National Association of Convenience Stores (to name a few) filed oppositions with the U.S. Patent and Trademark Office against the potential registration of the mark. The abandonment was made final on Wednesday after an inter partes decision by the Trademark Trial and Appeal Board (TTAB). I note that Wal-Mart’s website currently uses “Always Low Prices!” in its website title, and that in the product description for the book “The Wal-Mart Way: The Inside Story of the Success of the World's Largest Company” available on the walmart.com website states that “[i]t was more than "Everyday Low Prices" and distribution that catapulted the company to the top.”

Progressive Grocer Article: LINK
U.S. Trademark Application Serial No. 78664208 (Abandoned): LINK
TTAB Summary for U.S. Trademark Application Serial No. 78664208: LINK
“The Wal-Mart Way” Book: LINK

Earlier this week, the USPTO announced that it will no longer send trademark office actions to practitioners via e-mail. A new procedure is being implemented whereby e-mail communications that normally would have included the full text of the office action will be replaced with e-mail communications containing direct links to the office action within the USPTO’s Trademark Document Retrieval (TDR) system. According to the USPTO, “[t]his new approach should benefit both applicants and the USPTO,” and it “will eliminate problems stemming from very large e-mails, when, for example, the Office action includes voluminous evidence.” The TDR system, once this new procedure is implemented, will provide 24/7/365 access to office actions and all attachments related thereto, and will allow the user to view and download each document. Links to the USPTO’s two frequently asked questions (FAQ) web pages pertaining to TDR are provided below.

USPTO Announcement: LINK
USPTO TDR System: LINK
USPTO TDR Content FAQ Webpage: LINK
USPTO TDR General FAQ Webpage: LINK

It was recently announced that Cathedral High School of Indianapolis, Indiana, has agreed to a request made by the University of Notre Dame asking Cathedral to stop using Notre Dame’s leprechaun logo. This logo (shown here as registered with the USPTO) was used by both schools until last week, where upon receipt of the request from the general counsel for Notre Dame, officials at Cathedral decided not to oppose it. According to the South Bend Tribune news article (link below), the request to stop using the logo pertains to items for sale by Cathedral, and does not apply to the use of the logo on the floor of the school gymnasium or the practice football field. A brief USPTO search revealed two trademark registrations for the leprechaun logo (U.S. Trademark Reg. Nos. 1,229,591 and 1,905,508), the earlier one registered in 1983 and claiming a first use of July, 1966. According to Cathedral’s website, Cathedral High School was founded in 1918 by Bishop Joseph Chartrand, and “[b]y a unique arrangement, the Indianapolis Catholic Diocese owned Cathedral, but engaged the Holy Cross Brothers of Notre Dame to serve as faculty.” Priests from Holy Cross, according to the South Bend Tribune article and confirmed by Notre Dame’s website, also founded the University of Notre Dame back in 1842. Cathedral plans to discuss the use of alternative leprechaun logos with Notre Dame.

South Bend Tribune Article: LINK
WTHR (Indianapolis) News Article: LINK
Cathedral High School School History Webpage: LINK
U.S. Trademark Reg. No. 1,229,591: LINK
U.S. Trademark Reg. No. 1,905,508: LINK
University of Notre Dame Founding Information Webpage: LINK

Last Thursday, Carol Burnett filed a lawsuit against the Twentieth Century Fox Film Corporation for alleged copyright infringement relating to her likeness in a “Family Guy” episode. In the suit, filed in the U.S. District Court for the Central District of California in Los Angeles, Burnett alleges violations of her exclusive rights to her name and likeness regarding the depiction of her known cleaning-woman character on “Family Guy,” as well as for the use of an altered version of the theme music to “The Carol Burnett Show.” Specifically, Burnett alleges that her “Charwoman” character was depicted on “Family Guy” as a part-time janitor in a porn shop “in front of a row of blow-up dolls.” In addition, one of the characters on “Family Guy” (Quagmire) was shown to make a “vulgar reference to Ms. Burnett and her father,” referring specifically to her ear tug at the end of each episode of “The Carol Burnett Show.” Burnett is seeking at least $2 million in damages for the alleged copyright infringement and for violations of Section 43 of the Lanham Act, her statutory right of publicity under the California Civil Code (§ 3344), and common law misappropriation of her name and likeness.

Complaint and 32 second Family Guy video clip: LINK
Yahoo! News Article: LINK
California Civil Code § 3344: LINK

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). My goal is to post new cases on a weekly basis. This posting covers the sole patent case that was appealed from the district court level and decided by the Federal Circuit during the 11th calendar week of 2007. All opinions are precedential unless otherwise indicated.

Polypro, Inc. v. Addison, et al. (03/13/2007, non-precedential): appeal of summary judgment of invalidity for two patents (reversed and remanded), discussion of two patents relating to plastic display bags with clip hooks (U.S. Patent Nos. 6,186,934, entitled “Hanger bag,” and 6,428,208, entitled “Internal profile hanger with outwardly projecting tab member with informational indicia thereon”), discussion of two-prong Pfaff test for the application of the on-sale bar to patents at issue, invention conceived and offered for sale prior to critical date but not yet reduced to practice, no evidence that the drawings and prototype components provided at trial “were sufficiently specific to enable a person skilled in the art to practice the invention,” reversed and remanded because a reasonable jury could find for the plaintiffs at trial

The Intellectual Property Law Section of the New York State Bar Association is hosting the "The Copyright Office Comes to New York 2007" CLE event on March 27, 2007. This event, offering 7 MCLE credits in Professional Practice and/or Practice Management for experienced attorneys, will include 9 speakers covering "important aspects of copyright law and practice including significant recent litigation, the copyright registration process, current legislative activity and the intersection of copyright and contemporary art." Five of the speakers come from the Copyright Office, including the Register of Copyrights (Marybeth Peters) and the Associate Register for Policy & International Affairs (David Carson), as well as 4 speakers from the private sector. Links to the Program Brochure and the Program Registration Form are provided below. I am not affiliated with the NYSBA IP Law Section, nor do I endorse any particular CLE program.

NYSBA Event Webpage: LINK
Program Brochure: LINK
Program Registration Form: LINK

Earlier this week, Viacom International and a number of well-known television companies filed suit against YouTube and Google alleging "massive infringement" of copyright based on video clips hosted by YouTube. In the lawsuit, filed in the U.S. District Court for the Southern District of New York, the Plaintiffs’ seek a permanent injunction on future copyright infringement and at least $1B in damages. According to the lawsuit, the Plaintiffs’ allege that over 150,000 video clips on YouTube contain their copyrighted content, and that "YouTube has harnessed technology to willfully infringe copyrights on a huge scale, depriving writers, composers and performers of the rewards they are owed for effort and innovation." Regarding YouTube’s copyright takedown procedures, the Plaintiffs further note that "even if [they] send takedown notices for the video clips they have been able to identify, and even if YouTube responds to the notices by removing those videos, many more infringing videos from [a television series] will still be available for viewing on YouTube." YouTube currently takes a number of measures to curtail copyright infringement, including requiring all users submitting content to affirm, represent, and warrant that they own or have the necessary licenses to the content submitted and that YouTube is authorized by the users to use the content on its website. In addition, YouTube has also expressly provided a takedown procedure in accordance with the Digital Millennium Copyright Act (DMCA) to allow content providers to request the removal of infringing content from the YouTube website.

Yahoo! News Article: LINK
Complaint (PDF Format): LINK
YouTube Website: LINK

In a suit recently filed at the U.S. District Court for the Eastern District of Wisconsin in Milwaukee, Palermo’s Villa, Inc. has accused Trader Joe’s of trademark infringement, unfair competition, and false advertising. The subject of the suit is the use of “Palermo’s” to modify “pizza,” as Palermo’s sells frozen pizza’s under the Palermo’s name, and Trader Joe’s sells “Pizza Palermo” frozen pizzas at its retail stores. According to the ABC-7 (Chicago) article (link below), Trader Joe’s plans to continue selling Pizza Palermo, and an attorney for Trader Joe’s stated that the Palermo name is purely descriptive, does not serve as a source identifier, and noted specifically that Palermo is a city within Sicily that has a distinctive regional style of pepperoni pizza. Palermo’s has two registered trademarks in the United States for “Palermo’s” (U.S. Trademark Reg. Nos. 2,695,589 for the logo and 2,697,721 for the word mark), and also has several pending trademark applications incorporating the word “Palermo’s.” Palermo’s is seeking unspecified damages, an injunction, and profits from Trader Joe’s sales of Pizza Palermo.

U.S. Trademark Reg. No. 2,695,589 (Palermo’s logo): LINK
U.S. Trademark Reg. No. 2,697,721 (Palermo’s word mark): LINK
ABC-7 (Chicago) News Article: LINK
Milwaukee Journal Sentinel News Article: LINK

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). My goal is to post new cases on a weekly basis. This posting covers the two orders issued by the Federal Circuit during the 10th calendar week of 2007. All opinions are precedential unless otherwise indicated.

Baychar, Inc., et al. v. Salomon North America, Inc. (order) (03/08/2007): at the district court level, defendant granted summary judgment on non-infringement and exhaustion/implied license regarding U.S. Patent No. 6,048,810; plaintiff filed notice of appeal 35 days after judgment, defendant moved to dismiss appeal as untimely, over two belated extensions of time by plaintiff; motion to dismiss granted

Recommended Decision on Defendant’s Motions for Summary Judgment Asserting Patent Invalidity and Non-Infringement (U.S. District Court for the District of Maine, July 19, 2006): LINK

Order Affirming the Recommended Decision of the Magistrate Judge (November 6, 2006): LINK

Whirlpool Corp., et al. v. LG Electronics, Inc., et al. (order) (03/08/2007): “judgment” entered after grant of summary judgment of noninfringement of one patent and invalidity of the second patent at issue at the district court level, but LG (defendant) and General Electric did not file motions for summary judgment concerning all issues underlying the declaratory judgment counterclaims after the counterclaims seeking declaratory judgments of noninfringement and invalidity were filed; Whirlpool (plaintiff) argues it can appeal despite the lack of entry of a judgment dismissing or denying the defendant’s counterclaims as the district court’s intent to deny was clear under the circumstances; the Federal Circuit court did not agree with this argument, stating that Whirlpool’s appeal was premature because not all claims for relief were disposed of; defendant’s motion to dismiss plaintiff’s appeal granted because the appeal was premature

On Wednesday, Judge Douglas Woodlock ruled that Google Earth did not infringe a patent owned by Skyline Software Systems Inc. In its lawsuit, filed in the U.S. District Court for the District of Massachusetts in Boston, Skyline alleged that Google Inc.’s product, originally developed by Keyhole Inc. and later acquired by Google, infringed its patent (U.S. Patent No. 6,496,189, “Remote landscape display and pilot training”). In his ruling, Judge Woodlock determined that there was no infringement and granted Google’s summary judgment motion, but according to the Yahoo! News Article (link below), “[t]he judge also denied motions from both parties on whether the patents in question were valid, but left the possibility for either party to reassert these issues if they do so before April 20.” According to the SFGate.com article (link below), “Keyhole's 3-D technology powers mapping software that ranks among Google's biggest successes outside of its search engine,” and that “Google said its Earth software has been downloaded more than 100 million times.” Skyline originally sought an injunction and unspecified damages for the alleged infringement.

Yahoo! News Article: LINK
SFGate.com News Article: LINK
Google Earth: LINK
Skyline Software Systems Website: LINK

It was recently announced that the USPTO will soon start a pilot project whereby the public has the opportunity to comment on patent applications currently under examination. The project will begin with about 250 software patent applications, and will utilize a system similar to Wikipedia to allow comments to be made and rated by the reviewing community. According to the Charleston Daily Mail news article (link below), “[u]ntil now, patent examiners rarely sought outside opinions, instead relying on scientific writings and archived records of previous patents,” and “[f]or security reasons -- in particular, out of concern that examiners could inadvertently reveal proprietary information if their online searches were tracked -- patent officials have at times even been barred from using the Internet for research.” According to David Kappos, vice president and assistant general counsel at IBM (one of the companies agreeing to participate in the pilot program, “[f]or the first time in history, it allows the patent-office examiners to open up their cubicles and get access to a whole world of technical experts.” Specific details on this pilot program have not yet been published on the USPTO website.

Charleston Daily Mail News Article: LINK
Slashdot Article: LINK

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). My goal is to post new cases on a weekly basis. This posting covers the final three patent cases that were appealed from the district court level and decided by the Federal Circuit during the ninth calendar week of 2007. All opinions are precedential unless otherwise indicated.

In re Princo Corporation, et al. (03/01/2007): petition for writ of mandamus to stay the case pursuant to 28 U.S.C. § 1659 and to vacate its order granting the plaintiff’s motion (Philips) for summary judgment on Princo’s patent misuse defense (petition granted), discussion of six patents relating to recordable and rewritable compact disks (U.S. Patent Nos. 4,809,209, 4,962,493, 4,972,401, 4,999,825, 5,023,856, and 5,418,764), discussion of court’s jurisdiction to issue a writ of mandamus (two full pages of citations), decision to exercise mandamus jurisdiction, discussion of whether a district court must continue to stay proceedings under 28 U.S.C. § 1659 after an initial decision by the full U.S. International Trade Commission, § 1659 requires that the stay of district court proceedings continue until ITC proceedings are no longer subject to judicial review, retroactive stay of proceedings issued

Sawgrass Technologies, Inc. v. Texas Original Graphics, Inc., et al. (03/02/2007, non-precedential): appeal regarding transfer of case from one jurisdiction to another (appeal dismissed) discussion of patent relating to methods of printing with sublimation inks using ink jet printers (U.S. Patent No. 5,488,907 (“Permanent heat activated transfer printing process and composition”), discussion of transfers of venue to a more convenient forum, general rule favoring first-to-file (this situation being a declaratory judgment action filed before an infringement action), transfer orders are interlocutory and not ordinarily subject to immediate appeal, no jurisdiction over appeal as the record lacks a final judgment

Walter Kidde Portable Equipment, Inc. v. Universal Security Instruments, Inc. (03/02/2007): appeal of grant of plaintiff’s motion for voluntary dismissal without prejudice (affirmed), discussion of patent relating to smoke detectors with battery back-ups (U.S. Patent No. 4,972,181 (“A.C. Powered Smoke Detector With Back-Up Battery Supervision Circuit”), dismissal of “action” and not just “complaint” includes dismissal of pending counterclaims, court may not dismiss counterclaims on Fed. R. Civ. P. 41 motion if counterclaims filed prior to the filing of the dismissal, dismissal of counterclaims improper but the error was harmless, failure to address standing issue prior to dismissal also harmless error

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). My goal is to post new cases on a weekly basis. This posting covers the first three patent cases that were appealed from the district court level and decided by the Federal Circuit during the ninth calendar week of 2007. All opinions are precedential unless otherwise indicated.

Designing Health, Inc., et al. v. Udo Erasmus, et al. (02/26/2007, non-precedential): appeal of final judgment that decision mandated judgment as a matter of law and precluded a new trial (both affirmed), “a court of appeals, after reversing the denial of a party’s motion for JMOL (then styled “judgment n.o.v.”), may itself order dismissal or direct entry of judgment for that party,” discussion of procedure pertaining to JMOL and the arguments raised by the parties regarding JMOL and denial of motion for a new trial; no discussion of infringement anaylsis in this decision

Aquatex Industries, Inc. v. Techniche Solutions (02/27/2007): appeal of grant of summary judgment of non-infringement and preclusion of infringement under doctrine of equivalents by prosecution history estoppel (affirmed because no evidence of equivalents in opposition to summary judgment motion presented by plaintiff), discussion of patent relating to a method for cooling a person through evaporation by using multi-layered, liquid composite clothing materials (U.S. Patent No. 6,371,977 (“Protective multi-layered liquid retaining composite”)), defendant admission that its product reads on all elements of a claim except for one (leading to equivalents determination), error at district court level for incorrectly reading limitations into a patent, no evidence by plaintiff regarding equivalents on a limitation-by-limitation basis, no genuine issue of material fact presented to preclude summary judgment

Franklin Electric Co., Inc. v. Dover Corp. (doing business as OPW Fueling Components) (03/01/2007, non-precedential): appeal of grant of summary judgment of non-infringement (reversed and remanded), discussion of patent relating to protection against environmental contamination due to sump leakage (U.S. Patent No. 5,085,257 (“Sump Cover Containment Assembly”)), review of the phrase “facilitate positioning” determined during claim construction, patent drawings do not define proportions of items not specified within the specification, “[A]n attribute of the preferred embodiment cannot be read into the claim as a limitation,” fact-specific review of claim construction leading to reversal of non-infringement determination

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). My goal is to post new cases on a weekly basis. This posting covers the patent cases that were appealed from the district court level and decided by the Federal Circuit during the eighth calendar week of 2007. All opinions are precedential unless otherwise indicated.

Mymail, Ltd. v. America Online, Inc., et al. (02/20/2007): appeal of summary judgment of non-infringement and cross-appeal of ruling that plaintiff has standing (both affirmed), discussion of patent relating to a method of providing network customers with access to a network (like the internet) when away from their normal base of operations (U.S. Patent No. 6,571,290 (“Method and apparatus for providing fungible intercourse over network”)), a plaintiff must demonstrate legal title at the beginning of a patent infringement suit, review of claim construction of “NSP” (a coined term without meaning apart from the patent), statements of counsel during Markman hearing to “agree” on claim meaning precludes plaintiff from “now argu[ing] against that claim construction simply because it resulted in an adverse ruling on summary judgment,” question of literal infringement “collapsing” into claim construction, defendants’ systems do not perform the task claimed in the patent (authentication) so summary judgment of non-infringement appropriate

Sevenson Environmental Services, Inc. v. Shaw Environmental, Inc. (02/21/2007): appeal of summary judgment that patent infringement suit against defendant was barred by government contractor immunity under 28 U.S.C. § 1498 (affirmed), discussion of several patents relating to methods for treating hazardous waste (remediation) by applying phosphoric acid (U.S. Patent Nos. 5,527,982, 5,732,367, 5,916,123, 5,994,608, and 6,139,485), government contractor liability for patent infringement, dismissal of suit against contractor as the United States was the appropriate defendant, interpretation of language in government contracts pertaining to use of U.S. patents, use of contract here “for the Government” and “with the authorization and consent of the Government” to provide immunity to the defendant contractor

Windy City Innovations, LLC v. America Online, Inc. (Order) (02/22/2007, non-precedential): grant of limited remand so district court can consider whether or not to grant Fed. R. Civ. P. 60(b) motion but otherwise retain jurisdiction over an appeal, potential total remand of case if motion granted,

Finisar Corp. v. The Directv Group, Inc., et al. (Order) (02/22/2007, non-precedential): motion to require appellants to designate for inclusion in joint appendix demonstrative exhibits previously unfilled (or to “correct the record”), no demonstrative exhibits were previously filed so they should not be included in the joint appendix, no prior showing that the record should be corrected (motion denied)

Hakim v. Cannon Avent Group, PLC, et al. (02/23/2007): appeal of summary judgment of non-infringement and invalidity (affirmed), discussion of two patents relating to drinking cups that prevent liquid from spilling if the cup is tipped over (U.S. Patent Nos. 6,321,931 and 6,357,620 (both “No-spill drinking cup apparatus”)), claim construction relating to a “slit” in flexible material of the valve (original patent) and an “opening” in the flexible material (continuation patent), filing of continuation application to pursue broader claims than the original application permissible, doctrine of prosecution disclaimer, “opening” in continuation construed as a “slit” as originally described in the specification of the parent patent, anticipation of continuation application based on Italian patent reference not before the patent examiner, decision to strike expert declaration not clearly erroneous or contrary to law