In a decision yesterday, the Federal Circuit affirmed a district court's denial of the defendant's motion to dismiss for lack of subject matter jurisdiction.  The court also denied the defendant's post-verdict motion for judgment as a matter of law.  The defendant contended that because it shipped its allegedly infringing products f.o.b. from its place of business in Canada, it did not sell or import the product in the United States, and thus there was no subject matter jurisdiction over the plaintiff's infringement claims.  Alternatively, the defendant argued these same facts in support of its motion for judgment as a matter of law.

The Federal Circuit noted that the district court had erred in considering the issue of whether allegedly infringing products had been sold or imported in the United States as an issue implicating the court's subject matter jurisdiction.  Instead, this issue was simply an element of the claim to be proven that did not affect the court's ability to hear the case.  On the merits, the Federal Circuit rejected the contention that because legal title to the products changed in Canada that there was not a "sale" in the United States as contemplated by § 271(a), given that the customer was in the United States and the products were shipped there.  As a result, the court affirmed the finding of infringement.

More detail of Litecubes, LLC v. N. Light Prods., Inc. after the jump.

[More]

In a ruling today, the Federal Circuit affirmed in part a decision by the International Trade Commission (ITC) concerning the application of 19 U.S.C. § 1337 and 35 U.S.C. § 271(e)(1) to imported products and products imported produced via a patented process.  

The main issue before the court was whether the safe harbor against infringement provided by § 271(e) applies in proceedings under § 1337 relating to method patents.  The court determined that applying the safe harbor exemption would further congressional policy of removing patent-based barriers to federal regulatory approval of medical products, and therefore the safe harbor applied.

In a partial dissent, Judge Linn agreed that the policies of § 271(e) would be furthered by its application to § 1337 proceedings, but that the plain text of the statute precluded that result.  In his words:

I see no basis for concluding that Congress did not intend what it said.  I do not disagree with the majority's policy judgment that § 1337 and § 271 should be brought into synchrony.  But that is not a decision for a court to make, particularly in light of the legislative history.

The court also determined that jurisdiction was appropriate as the ITC's assignment is to prevent and remedy unfair acts flowing from infringement.  The ITC's jurisdiction under § 1337, according to the court, is broad, and it therefore erred in holding that it lacked jurisdiction absent an actual sale or contract for sale of the imported product.

More detail of Amgen, Inc. v. Int'l Trade Comm'n after the jump,

[More]

In a recent decision, the Second Circuit decided the one outstanding issue from a case it had previously decided in March 2007 (previously blogged here), namely whether the "famous marks" doctrine the court held Congress has not yet incorporated into federal trademark law might support a New York common law claim for unfair competition.  The Second Circuit certified two questions to the New York Court of Appeals before resolving the issue.  With the answers back, the court affirmed the district court grant of summary judgment to the defendants in its entirety.

With the case now fully decided by the Second Circuit, the way is now clear for a possible appeal to the Supreme Court, as this case conflicts with the Ninth Circuit's 2004 decision in Grupo Gigante S.A. de C.V. v. Dallo & Co., which recognized the "famous marks" doctrine rejected by the Second Circuit in this case.

More detail of ITC Ltd. v. Punchgini, Inc. after the jump.

[More]

In a recent decision, the Fifth Circuit affirmed a district court's finding of infringement and disgorgement of profits, but increased the amount of profits awarded because the defendant failed to provide evidence of its costs to reduce the award.  Interestingly, the infringement took place entirely outside the United States, namely in Saudi Arabia.  Even though the products were not sold in the United States, under the Fifth Circuit's decision in American Rice, Inc. v. Arkansas Rice Growers Cooperative Association, enforcement of trademark rights extraterritorially was permitted if it was not an affront to Saudi sovereignty.  Here, there was no such evidence of record (such as a finding by a Saudi court that there was no infringement), so the court determined that jurisdiction was properly exercised.

The court also vacated the district court's award of attorney's fees on the basis that it represented an inconsistent award.  The district court awarded profits, but no attorney fees under the Lanham Act, and attorney's fees, but no other damages under a breach of contract theory.  Because an award of both attorney fees and profits would mean portions of the award would come from different legal theories under Texas law, the court did not permit recovery of both.

More detail of Am. Rice, Inc. v. Producers Rice Mill, Inc. after the jump.

[More]

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.

[More]

In a decision this week, the Federal Circuit vacated the decision of the Court of International Trade (CIT) and remanded with instructions to dismiss the plaintiff's complaint for lack of subject matter jurisdiction.

The case arose out of a civil fine levied against the plaintiff for importation of counterfeit goods.  The plaintiff brought suit in the CIT to contest the fine.  The CIT found that it had subject matter jurisdiction, but dismissed the case on the basis that there was no final agency action under the Administrative Procedure Act.  

The Federal Circuit held that the CIT did not have subject matter jurisdiction in the first instance, as the seizure of counterfeit goods does not constitute an "embargo" pursuant to the relevant statutes.  As a result, the court vacated and remanded the CIT's decision with instructions to dismiss the case.  

More detail of Sakar Int'l, Inc. v. United States after the jump.

[More]

In a decision released today, the highest court in the EU, the European Court of Justice, ruled that under EU law, internet service providers (ISPs) are not required, in the course of a civil lawsuit, to disclose the identity of an individual subscriber associated with a particular IP address. 

The case arose out of an attempt by PROMUSICAE, a trade group representing the music industry in Spain and the rough equivalent the RIAA in the United States, to obtain the names and addresses of subscribers of the Spanish ISP Telefonica SA that were suspected of copyright infringement by sharing copyrighted songs via the peer-to-peer (P2P) network KaZaA.  The issues in this case are similar to those in the lawsuit campaign currently being conducted by the RIAA in the United States.  A Spanish court sought guidance from the Court of Justice on the question of whether various EU directives required Telefonica to disclose its subscribers' identities, even though Spanish law only authorizes such disclosure in criminal proceedings, matters of national defense, or public security.

In the decision, the Court stated:

[T]he answer to the national court's question must be that Directives 2000/31, 2001/29, 2004/48 and 2002/58 do not require the Member States to lay down, in a situation such as that in the main proceedings, an obligation to communicate personal data in order to ensure effective protection of copyright in the context of civil proceedings.

The decision left open the possibility that individual members of the EU could pass legislation permitting or requiring such disclosure, although such action would have to be on a country-by-country basis.  In fact, France is already exploring some alternatives to combat copyright infringement via P2P networks.

Hat tip:  How Appealing.

More media coverage is available from the AP, Reuters, and the BBC.

Update (1/30):  The EFF provides this report, including possible ramifications of the ruling. 

The Fourth Circuit last week addressed a district court's ability to issue subpoenas to foreign witnesses in USPTO administrative proceedings. The court held that a district court may issue a Rule 30(b)(6) subpoena to a foreign corporation who is party to an opposition, even if the party has no officers, directors or managing agents who reside within the jurisdiction.  The decision generated a lengthy dissent that argued that this holding greatly extended the reach of the district court in such interference proceedings and was not supported by the applicable statute and USPTO procedures.

More detail of Rosenruist-Gestao E Servicios LDA v. Virgin Enters., Ltd. after the jump.

[More]

In a recent decision, the Federal Circuit vacated and remanded a limited exclusion order by the International Trade Commission.  The ITC entered an exclusion order that prevented importation of products produced by a method that infringed two patents.

The Federal Circuit vacated the finding of infringement, holding that under the correct claim construction, there was no literal infringement.  The court held that the patentee defined the term in dispute in the specification of the patent, and applied that definition to the claim, even though part of the definition was characterized as exemplary.  The court remanded for the ITC to determine whether there was infringement under the doctrine of equivalents.  Judge Newman dissented, arguing that the panel majority improperly narrowed the scope of the claims in a manner inconsistent with the specification, and that excluded several of the listed examples.

More detail of Sinorgchem Co. v. Int'l Trade Comm'n after the jump.

[More]

There have been two interesting changes in foreign IP practice over the past month. 

Effective October 1, 2007, the UK Trade Marks Office changed its policy such that it will no longer raise objections to applications based on prior existing applications/registrations.  Instead, it will be the policy to write to owners of earlier potentially conflicting marks advising them of the application so that the owners can file Oppositions if desired.

The UK office will write to owners of prior existing UK trademarks, but will only write to the owners of Community Trademarks if the owners have paid to opt into the notification system.  The cost of opting in for a 3 year period will be approximately $250.

In Australia, IP Australia has revised its regulations to eliminate the requirement to disclose searches performed by other patent offices.  This change is effective on October 22, and applies to any application where the last day to comply with the previous duty to inform the office was on October 22 or before.  Previous applications still must comply with the requirement, and the change does not excuse a failure to comply in those applications.

Peter Zura has an interesting post regarding the rulemaking process in Australia regarding this change, and how the views of practitioners and the public were taken into account (in contrast to how the USPTO has promulgated its most recent rules).