In a recent decision, the Eleventh Circuit vacated a district court's injunction against the use of a competitor's trademarks in the meta tags of a defendant's website.  The court held that while the plaintiffs had shown likelihood of success on both their trademark infringement and false advertising claims, because the district court relied on a presumption of irreparable harm to support its injunction, the injunction must be vacated.

Specifically, the court noted that the Supreme Court's eBay decision did away with the notion of irreparable harm in patent cases, and that the statutory authorization for injunctions is similar in trademark cases.  While the court noted that eBay applied to the case, it declined to decide its effect, specifically "whether the nature of trademark infringement gives rise to a presumption of irreparable injury," meaning whether presuming irreparable harm in trademark cases would run afoul of eBay.

More detail of N. Am. Med. Corp. v. Axiom Worldwide, Inc. after the jump.

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In a decision Tuesday, the Federal Circuit affirmed the denial of a preliminary injunction seeking to prevent a patentee from representing to the defendant's customers that the defendant's product potentially infringed the plaintiff's patent.  The patent at issue had a lengthy and complicated prosecution history that included an interference proceeding.  In that proceeding, the BPAI ruled another party properly had priority in the invention.  The patentee filed an action pursuant to § 146, and the parties eventually settled, with the party that prevailed at the BPAI conceding priority and receiving a license under the patent.  In another proceeding in which the patentee was not a party, a district court held that the patentee had abandoned, suppressed, or concealed his invention.

The defendant argued that because of the issues relating to priority and abandonment, suppression, and concealment (as well as inequitable conduct issues), the plaintiff's assertions of infringement were in bad faith, and sought an injunction to prevent the plaintiff from representing to the defendant's customers that its products potentially infringed.  The district court rejected this, finding the four-factor test did not warrant an injunction.

The Federal Circuit affirmed, finding the action not objectively unreasonable, as the case was not so clear-cut to make the district court's decision an abuse of discretion.  However, while the court noted the defendant's chances on appeal were "slim," the appeal was not "clearly hopeless," and declined to award the plaintiff its fees for the appeal.

More detail of Judkins v. HT Window Fashion Corp. after the jump.

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In a decision last week, the Federal Circuit affirmed a district court's permanent injunction against a defendant to prevent infringement of a patent.  The district court held the patent not invalid and infringed, based in part on a claim construction that construed the word "and" to mean "or."  Specifically, based on the specification and other claims, the court determined such a construction was consistent with the intrinsic evidence.  The court also rejected each of the defendant's affirmative defenses.

The Federal Circuit affirmed.  Turning first to claim construction, the court held "and" can be interpreted to mean "or" in claim language when the specification warrants that construction.  In this case, interpreting "and" as requiring both elements would have rendered some dependent claims meaningless, as well as excluded the preferred embodiment from the claims.  The court also affirmed the rejection of the affirmative defenses of inequitable conduct, obviousness, enablement.  Notably, in discussing the obviousness issue, the court stated:  "a flexible TSM test remains the primary guarantor against a non-statutory hindsight analysis such as occurred in this case."  It will be interesting to see whether the non-TSM grounds for an obviousness rejection outlined in the USPTO's examination guidelines will survive scrutiny by the Federal Circuit.

More detail of Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc. after the jump.

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In a decision last week, the Federal Circuit held a district court construed 1 of 2 claim terms correctly, and incorrectly concluded that prosecution history estoppel barred application of the doctrine of equivalents to a third claim term because the narrowing amendment was only tangentially related to the equivalent at issue.  As a result, the court affirmed in part, reversed in part, and remanded.

One of the claim construction issues was interesting in that the court held that the prosecution history of the patent overcame the "presumption" of claim differentiation, namely that "dependent claims are presumed to be of narrower scope than the independent claims from which they depend."  This led to the strange result that the scope of some dependent claims was outside the scope of the independent claim from which they depended.  This seems to be contrary to § 112 ¶ 4, which requires a dependent claim "shall be construed to incorporate by reference all the limitations of the claim to which it refers."

Judge Prost dissented from the portion of the ruling regarding prosecution history estoppel, and would have held that the amendment was not tangential to the equivalent in question and therefore that prosecution history estoppel applied.

More detail of Regents of the U. of Cal. v. Dakocytomation Cal., Inc. after the jump.

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In a decision Tuesday, the Federal Circuit addressed the issuance, stay, and subsequent dissolution of a permanent injunction.  Further, the court addressed how damages should be allocated from infringement during a stay.  The district court took the jury's reasonable royalty for pre-verdict infringement and trebled it to determine the applicable post-verdict royalty. 

The Federal Circuit vacated this decision, noting that this calculation did not take "into account the fact that the sales, although authorized under the terms of the district court's stay, were nevertheless infringing and subject to an injunction."  The district court's use of willfulness was not the correct inquiry "when the infringement is permitted by a court-ordered stay," but instead should have taken "into account the change in the parties' bargaining positions, and the resulting change in economic circumstances, resulting from the determination of liability."

The court also remanded the case for a determination of whether the post-verdict damages should be altered in light of the Supreme Court's decision in Microsoft v. AT&T.

More detail of Amado v. Microsoft Corp. after the jump.

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For a second time this week, the Federal Circuit vacated a preliminary injunction entered by a district court.  This time, the court found the district court's claim construction too broad, and under the courts revised, narrower construction, found that the plaintiffs were not likely to succeed on the merits of the case.  As a result, the Federal Circuit vacated the injunction and remanded the case.

More detail of Chamberlain Group, Inc. v. Lear Corp. after the jump.

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In a decision yesterday, the Federal Circuit vacated a preliminary injunction entered in the Northern District of Ohio enjoining the selling and copying of a product used to practice a method claimed in a patent.  In doing so, the Federal Circuit utilized of the traditional four–factor test for preliminary injunctions and specifically analyzed the first factor, likelihood of success on the merits.  The court noted that a defendant need not prove actual invalidity of a patent in order to challenge this factor, only a substantial question of invalidity.  Therefore, it found that there was sufficient evidence of invalidity of the patent such that the factor of  likelihood of success on the merits was not met.  Judge Newman dissented, arguing that the "substantial question of validity" standard was inappropriate.

More details of Erico Int'l Corp.. v. Vutec Corp. after the jump.     

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In a recent decision, the Federal Circuit affirmed a finding of infringement of a patent relating to the detection and classification of Hepatitis C Virus, but remanded the case for a determination of anticipation. 

In arguably the most interesting aspect of the decision, the court vacated the permanent injunction entered against the defendant.  The plaintiff asked for and was awarded damages to compensate for the amount the defendant would have had to pay the plaintiff for a "market entry fee."  As a result, the court reasoned the plaintiff could not assert that it would be irreparably harmed by future sales by the defendant, having already been compensated for the harm caused by the defendant's entry to the market.  The court therefore instructed the district court on remand to determine the amount of royalty due on the defendant's compulsory license under the patent going forward.

The court briefly mentioned the issue of willful infringement after In re Seagate Technology, LLC, but only noted that there was no evidence of objective recklessness by the defendant and therefore the finding of no willful infringement was appropriate.  The court also gave a reminder to parties and lawyers of the potential consequences when being too cavalier toward obligations under the Federal Rules of Civil Procedure.  As explained in the court's footnote 4:

This case aptly demonstrates the pitfalls of playing fast and loose with rules of discovery. Conclusory expert reports, eleventh hour disclosures, and attempts to proffer expert testimony without compliance with Rule 26 violate both the rules and principles of discovery, and the obligations lawyers have to the court. Exclusion and forfeiture are appropriate consequences to avoid repeated occurrences of such manipulation of the litigation process.

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In a decision Tuesday, the Eleventh Circuit affirmed a district court's finding of trademark infringement against a trademark licensee.  The alleged infringer was actually licensed to use the mark owner's trademark, but did not use the mark as described in the license, instead using an abbreviated form.  As a result, the court affirmed the jury's finding of infringement and the associated damages award, reviewing its seven-factor likelihood-of-confusion test and emphasizing the factors of actual confusion and type of mark.  

However, the court vacated the district court's injunction against further infringement.  Because the infringer was actually licensed to use the mark as a whole, an injunction that prevented further use of the truncated mark "or any other similar marks" (language often used in trademark injunctions) was inappropriately broad, as it would prevent the infringer from using the licensed mark.

More detail of Aronowitz v. Heath-Chem Corp. after the jump.

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In a decision last week, the Seventh Circuit vacated and remanded a district court's preliminary injunction in a copyright and trade secret case.  The court addressed the degree of specificity necessary for an injunction against misappropriating trade secrets and infringing copyrights, and vacated the injunction because it failed to detail the substance of the trade secret or confidential information the defendant was enjoined from using.

Interestingly, the court called attention to the fact that most of the information claimed as trade secret could actually be obtained by FOIA requests sent to state authorities.  The parties are modular home manufacturers, and are required to submit specific details of the homes they plan to sell in order to obtain state approval; those details were among the purported trade secrets.  The court said the injunction did not specify whether information obtained through the FOIA requests would violate the injunction.

More detail of Patriot Homes, Inc. v. Forest River Housing, Inc. after the jump.

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