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Failure to consider evidence of good faith leads to reversal of inequitable conduct finding

In a decision last week, the Federal Circuit affirmed a district court's finding of no infringement and invalidity for obviousness, and reversed the district court's finding of unenforceability due to inequitable conduct.The Federal Circuit, citing KSR, noted that an obviousness analysis can take account the inferences and creative steps that a person of ordinary skill […]

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Ninth Circuit: Heirs of “Pink Panther” coauthor do not retain interest in copyright in the films

In a decision last week, the Ninth Circuit affirmed the district court's grant of summary judgment in a copyright case, holding that a coauthor of a story treatment is not necessarily a coauthor of a motion picture produced based on that treatment, and the factors applied to determine coauthorship led to the conclusion that the […]

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First Circuit: District court’s determination that “duck tour” is nongeneric doesn’t hold water

In a lengthy decision last week, the First Circuit held a district court erred in finding the term "duck tour" nongeneric in the context of sightseeing tours on amphibious vehicles. The district court, based largely on the nongenericness of this aspect of the parties' marks, found the plaintiff was likely to succeed in its infringement […]

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Claim construction and finding of noninfringement affirmed

In a decision Wednesday, the Federal Circuit affirmed a district court's claim construction and grant of summary judgment of non-infringement. The patent holder's proposed claim interpretation relied heavily on means-plus-function language and an embodiment in the specification not covered by the claim construction. The Federal Circuit found that the failure to use clear "means-plus-function language" […]

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Tenth Circuit: Digital model of car not separately copyrightable because no originality

In a decision this week, the Tenth Circuit affirmed a district court's grant of summary judgment in favor of the defendants in a copyright case, finding a digital work lacking sufficient originality to warrant copyright protection. The works at issue were three-dimensional computer models of cars for use in advertisements. The court agreed that the […]

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Ninth Circuit: Patent law terms in employment agreement should be given patent law definitions

In a recent decision, the Ninth Circuit held a district court's jury instructions regarding construction of the patent ownership provisions of an employment agreement erred in applying contract law rather than patent law. The court determined that jury instructions defining the terms "conceive," "reduce to practice," and "Work of Dr. Yu" (a possible coinventor) required […]

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Litigation misconduct and inequitable conduct lead to exceptional case, fees for defendant

In a decision yesterday, the Federal Circuit affirmed an award of attorneys' fees for a prevailing defendant in an infringement case. The district court held the case was exceptional under § 285 because the patent holder had engaged in inequitable conduct (a finding previously affirmed), asserted frivolous claims, and engaged in litigation misconduct. The district […]

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Three sentences insufficient to explain why a case is exceptional

In a decision yesterday, the Federal Circuit vacated an award of attorney fees under § 285. The district court only provided a three-sentence explanation as to why the case was exceptional. The Federal Circuit found this insufficient, as there was no explanation of the facts underlying the findings made by the court. As a result, […]

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Eleventh Circuit: Unsolicited proposals insufficient to show intent to resume use of trademark

In a decision Friday, the Eleventh Circuit affirmed a district court's grant of summary judgment in favor of the defendant, finding the plaintiff had abandoned its trademarks. Although the complaint consisted of both federal and state common law claims, the analysis ultimately came down to whether a valid Lanham Act claim existed, as the remaining […]

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Ninth Circuit: No statutory damages for continuing infringement that began before registration

In a decision last week, the Ninth Circuit reversed a district court's award of statutory damages for copyright infringement and affirmed the district court's default judgment award of attorney's fees for trademark infringement. The plaintiff's copyright registration had an effective date of approximately one month after the first act of infringement, and nearly two years […]

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