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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 […]

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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 […]

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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 […]

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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 […]

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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 […]

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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 […]

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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 […]

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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 […]

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Assertions of infringment at trade show sufficient to confer personal jurisdiction in DJ action

In a recent decision, the Federal Circuit reversed a district court's order dismissing a case for lack of personal jurisdiction. The plaintiff brought a declaratory judgment action against the defendant patent holder in Washington. After sending a letter accusing the plaintiff of infringing two patents, the patent holder attempted to get the plaintiff's display removed […]

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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 […]

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