USPTO announces trademark consistency pilot program In a notice today, the USPTO announced a new trademark consistency initiative. Under the new initiative, applicants who believe a substantive or procedural issue has been addressed in a "significantly different manner" in two applications may raise the issue for consistency review. This is subject to four requirements: the request is based on co-pending applications […] Continue Reading →
Third Circuit: False endorsement claims use modified likelihood of confusion analysis In a recent decision, the Third Circuit vacated a district court's grant of summary judgment to the plaintiff in a § 43(a) false endorsement case, but affirmed the plaintiff's summary judgment win as to the state law right of publicity claims. The dispute revolved around the National Football League's use of John Facenda's voice in […] Continue Reading →
Inventor testimony regarding intent during patent prosecution irrelevant to claim construction In a recent decision, the Federal Circuit vacated a stipulated judgment of noninfringement on claim construction grounds. The construction issue dealt with the significance of a limitation that applied to an "at least one" element. Specifically, the relevant claim required "at least one condylar element," where "the condylar element" had certain features. The district court […] Continue Reading →
Second Circuit: MLB collective trademark licensing does not violate Sherman Act In a recent decision, the Second Circuit affirmed a district court's summary judgment to the defendant in an antitrust case regarding trademark licensing. The case involved the collective licensing setup of Major League Baseball Properties ("MLBP"). The plaintiff was a licensee of MLBP. The court held the centralized licensing agent for all Major League Baseball […] Continue Reading →
Federal Circuit affirms district court’s decision setting aside $1.5 billion infringement verdict In a decision yesterday, the Federal Circuit affirmed a district court's grant of judgment as a matter of law based on lack of standing for one patent and non-infringement of a second patent. A jury awarded $1,538,056,702 in damages for infringement, but, as a result of the JMOL, the district court set aside the damages […] Continue Reading →
When factual inquiries underlying obviousness determination disputed, summary judgment improper In a decision Friday, the Federal Circuit affirmed a district court's summary judgment of no anticipation, no invalidity for failure to comply with the written description requirement, and infringement, but reversed the district court's summary judgment of no invalidity based on obviousness. In an unusual procedural move, the parties stipulated that for the issues on […] Continue Reading →
Second Circuit: If you want a court to order the USPTO, ask in your pleadings, not after you win In a recent decision, the Second Circuit affirmed a district court's decision in a trademark case not to enter an order pursuant to 15 U.S.C. § 1119. § 1119 permits a court to enter an order regarding registrability and cancellation of marks at the USPTO. The prevailing defendant asked the district court to order the […] Continue Reading →
Ninth Circuit: Absent evidence of intent to the contrary, custom software purchaser retains license In a recent decision, the Ninth Circuit affirmed a district court's decision that a software developer's delivery of customized software includes a grant of an unlimited, non-exclusive, implied license to use, modify, and retain the source code of the programs in the absence of written agreements to the contrary. The Ninth Circuit also affirmed the […] Continue Reading →
Patent exhaustion does not create a cuse of action; dismissal affirmed In a decision last week, the Federal Circuit affirmed a district court's decision dismissing a case for lack of subject matter jurisdiction. The plaintiff brought suit when it believed the patent holder had fraudulently concealed a second licensee of the same patents. The plaintiff was a licensee of the defendant patent holder and therefore could […] Continue Reading →
Eleventh Circuit: No DJ jurisdiction in copyright case when copyright unregistered In a recent decision, the Eleventh Circuit vacated a district court's grant of summary judgment in a copyright infringement declaratory judgment action. The court determined that the district court was without subject matter jurisdiction to entertain the alleged infringer's declaratory judgment action. This was because the district court would have lacked jurisdiction to hear the […] Continue Reading →