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Category: Injunctions


Halloween Edition: Copyright for Banana Costume is upheld on A-Peel
October 30, 2019
Post by Brandon W. Clark
The Third Circuit recently held that a banana costume qualified for copyright protection as Rasta Imposta, a retail wholesaler of Halloween costumes, sued Kangaroo Manufacturing, a costume manufacturer, for copyright infringement, trade dress infringement, and unfair competition after Rasta discovered Kangaroo selling a banana costume that resembled one of Rasta’s costumes without a license. The costumes.......
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Impact of eBay on Injunctive Relief
July 20, 2015
Post by Blog Staff
Both preliminary and permanent injunctions can be crucial forms of relief in any patent case. In addition to preventing continuing infringement of a patent, an injunction puts the patent holder in a much better bargaining position for future licensing negotiations. In its eBay decision in 2006, the Supreme Court required lower courts to apply a four-part common law test for granting injunctiv.......
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Geographical Scope of Permanent Injunctions Challenged
June 17, 2015
Post by Blog Staff
  Federal trademark rights are generally enforceable throughout the United States.  However, confusion can arise where contrary decisions have been made by district courts in different geographical regions relating to the same mark. The Fourth Circuit's March decision in Georgia Pacific Consumer Prods. LP v. Von Dreble Corp, an appeal from the Eastern District of North Carol.......
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USPTO Patent Invalidation Precludes Judicial Equitable Remedies and Sanctions
July 31, 2014
Post by Blog Staff
The U.S. Court of Appeals for the Federal Circuit has issued a decision inePlus, Inc. v. Lawson. ePlus sued Lawson asserting infringement of two patents—U.S. Patent Nos. 6,023,683 ("the '683 patent") and 6,505,172 ("the '172 patent"). At trial, the district court held two of ePlus's asserted system claims and three of ePlus's asserted method claims not invalid, and the j.......
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Competing Without Practicing - Preliminary Injunctions for Patent Infringement
April 24, 2014
Post by Blog Staff
InTrebo Manufacturing, Inc., v. Firefly Equipment, LLC, the Federal Circuit held that a plaintiff seeking a preliminary injunction for patent infringement does not need to practice the patent at issue in order to receive an injunction, so long as it sells a competing product. Trebro brought suit alleging that FireFly's sod harvester product infringed its U.S. Patent No. 8,336,638, and seeking a preliminary i.......
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Flawed Evidence Undercuts "Charbucks" Trademark Suit
November 27, 2013
Post by Blog Staff
In Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., the U.S. Court of Appeals for the Second Circuit affirmed a district court’s decision denying injunctive relief in Starbucks’ trademark case against Black Bear Micro Roastery over Black Bear’s use of “Charbucks” for coffee. Starbucks sued Black Bear in 2001, alleging, among other things, trademark dilution in violation of 1.......
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Exhausting Patent Rights Without a "Sale"
November 22, 2013
Post by Blog Staff
InLifeScan Scotland, LTD v. Shasta Technologies, LLC, the Federal Circuit clarified the ability of a patnet holder to enforce patent rights in a product it has given away, but not "sold." Defendant Shasta Technologies appealed from a decision of the United States District Court for the Northern District of California granting LifeScan Scotland a preliminary injunction. The injunction prohibits Shasta f.......
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New and Useful - February 21, 2013
February 21, 2013
Post by Blog Staff
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Another issue headed for en banc review by the Federal Circuit: How to assess redesigned products
May 17, 2010
Post by Blog Staff
In an order Friday, the Federal Circuit granted en banc review of its second case in the past three weeks and its third over the past three months. This time it's a case involving Tivo relating to the contempt proceedings against Echostar relating to Tivo's DVR patents. After Echostar was found to infringe Tivo's patent and was permanently enjoined from infringement, it redesigned its DVR software.......
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Grant of stay while preliminary injunction motion pending abuse of discretion
January 05, 2009
Post by Blog Staff
In a recent decision, the Federal Circuit found that a district court's grant of a stay pending inter partes reexamination without considering the patentee's pending motion for a preliminary injunction was an abuse of discretion. The Federal Circuit held the grant of the stay effectively denied the preliminary injunction motion, thereby making the stay order appealable. The court then held the district c.......
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Existence of other licenses under patent does not preclude finding of irreparable harm
January 05, 2009
Post by Blog Staff
In a decision Tuesday, the Federal Circuit affirmed a district court's grant of a permanent injunction. The district had previously granted a permanent injunction after a jury found willful infringement. In a previous appeal, the Federal Circuit affirmed the finding of willful infringement, but vacated the permanent injunction because the district court did not consider the four-factor test mandated by the S.......
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District court's order dismissing the action with prejudice held to be nonfinal due to counterclaims
December 17, 2008
Post by Blog Staff
In a decision Thursday, the Federal Circuit affirmed a district court's denial of a preliminary injunction, and held it did not have jurisdiction over the remainder of the appeal because there was no final judgment. It was undisputed there was no infringement under the district court's claim construction of the single element at issue. After denying the requested preliminary injunction and granting the .......
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Substantial question regarding validity insufficient to defeat likelihood of success?
December 09, 2008
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed a district court's grant of a preliminary injunction concerning the manufacture of an extended release formulation of an antibiotic. In a lengthy opinion, the Federal Circuit applied the Supreme Court's obvious-to-try logic from KSR to pharmaceutical patents. Notably, the court used the unpredictability of the pharmaceutical arts to find that, despite a.......
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High materiality without explanation for nondisclosure leads to inference of intent to deceive
October 17, 2008
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed a district court's finding of inequitable conduct for one patent but reversed on a second, affirmed a finding of no invalidity of the second patent, but vacated the finding of infringement after modifying the district court's claim construction of a claim term. The court also reversed the finding of indefiniteness of a third patent.The court continued it.......
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Advice of counsel evidence still relevant to intent to induce infringement
October 06, 2008
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed a jury's finding of infringement of two patents and the related injunction, but reversed the district court's claim construction and the concomitant finding of infringement regarding a third patent. The court affirmed the district court's injunction despite the fact that the patentee licensed, rather than manufactured, the claimed inventions. The in.......
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Irreparable harm to exclusive licensee cannot support injunction; willfulness vacated post-Seagate
August 20, 2008
Post by Blog Staff
In a decision Monday, the Federal Circuit addressed a range of issues and ultimately affirmed a district court's denial of injunctive relief and, in light of the intervening Seagate decision, vacated and remanded the case for reconsideration regarding willfulness. The court also affirmed the district court's finding of no invalidity and the infringement of some claims under the doctrine of equivalents. .......
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First Circuit: District court's determination that "duck tour" is nongeneric doesn't hold water
June 24, 2008
Post by Blog Staff
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 claims, and entered a preliminary injunction. The defendant ap.......
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Fifth Circuit passes on eBay's applicability in trademark cases
May 29, 2008
Post by Blog Staff
In a decision last week, the Fifth Circuit affirmed a district court's conclusion it had subject matter jurisdiction over a trademark case, as well as its grant of a preliminary injunction. While the activities giving rise to the claim of trademark infringement took place in Mexico, they had a "substantial effect" on United States commerce, and thus were within the court's subject matter jurisd.......
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Eleventh Circuit: eBay may eliminate presumption of irreparable harm in trademark cases
April 14, 2008
Post by Blog Staff
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 injuncti.......
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Denial of injunction against sending letters asserting infringement affirmed
April 10, 2008
Post by Blog Staff
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 par.......
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Federal Circuit: And can mean or, if it makes the claim make sense
April 08, 2008
Post by Blog Staff
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 construc.......
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Dependent claim can be construed to be broader than independent claim based on prosecution history
March 03, 2008
Post by Blog Staff
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 cla.......
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Post-verdict infringement royalty must take into account changed bargaining position of parties
February 28, 2008
Post by Blog Staff
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 decisio.......
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Another preliminary injunction vacated on appeal, this time because of claim construction
February 22, 2008
Post by Blog Staff
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 detai.......
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Post-KSR obviousness arguments cast sufficient "doubt" on validity to vacate preliminary injunction
February 20, 2008
Post by Blog Staff
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 cou.......
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When market entry fee part of damages for patent infringement, permanent injunction inappropriate
January 21, 2008
Post by Blog Staff
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 th.......
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Eleventh Circuit: Trademark licensee liable for infringement when deviating from license
January 17, 2008
Post by Blog Staff
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 awar.......
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Seventh Circuit: Injunction against use of plaintiff's copyrights and trade secrets too vague
January 14, 2008
Post by Blog Staff
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 defe.......
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Term defined in specification limited even though partially characterized as exemplary
December 28, 2007
Post by Blog Staff
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 .......
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Third Circuit: Some store brand sucralose packaging confusing; injunction denial partially reversed
December 28, 2007
Post by Blog Staff
In a Christmas Eve decision, the Third Circuit partially reversed a district court's denial of a preliminary injunction regarding "store brand" sucralose sweeteners. McNeil Nutritionals, makers of Splenda®, brought suit against a company that produces several different sucralose products that bear the store's name and compete with Splenda®. The district court found McNeil not likely to.......
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Infringement finding and denial of permanent injunction in favor of ongoing royalty affirmed
October 18, 2007
Post by Blog Staff
In a decision today, the Federal Circuit affirmed a jury verdict finding infringement under the doctrine of equivalents of a patent relating to hybrid engines used in motor vehicles. The court also affirmed the district court's denial of a permanent injunction and its award of an ongoing royalty on infringing vehicles, rejecting the argument that the "compulsory license" would prevent the patent ho.......
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Contempt proceedings proper, but filing ANDA not within scope of injunction, so no contempt
October 12, 2007
Post by Blog Staff
In a decision yesterday, the Federal Circuit affirmed a district court's decision to hold a contempt proceeding for a defendant's alleged violation of an injunction "barring it from commercially manufacturing, using, selling, offering to sell, or importing into the United States generic divalproex sodium infringing" two patents. The court also affirmed the district court's decision to enlar.......
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Finding of infringement of two patents affirmed, one reversed, damages award vacated
September 27, 2007
Post by Blog Staff
In a highly anticipated recent decision, the Federal Circuit affirmed the judgment of infringement against Vonage with respect to two Verizon patents, holding that the district court did not err in its construction of the disputed claim terms and that the claims were not obvious. With respect to a third patent, the Federal Circuit held the district court improperly construed a disputed claim term and therefore.......
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Injunction against trademark "disparagement" reversed; no such claim under the Lanham Act
September 27, 2007
Post by Blog Staff
In a decision yesterday, the Ninth Circuit vacated a preliminary injunction preventing an individual from "making any comments that could be construed as to disparage" a possible trademark and logo. The court concluded that the injunction was improperly granted since the plaintiff failed to present a likelihood of success on the merits by failing to show a likelihood of confusion, and that no claim for .......
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Injunction against patentee's assertions of infringement reversed, bad faith standard not met
September 24, 2007
Post by Blog Staff
In a decision last week, the Federal Circuit vacated a preliminary injunction after finding that the district court abused its discretion. The district court enjoined a patent owner from any future correspondence with any existing or potential customers of an alleged infringer (started by former employees of the patent owner), essentially stopping the patentee from sending letters asserting infringement of its p.......
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Tenth Circuit: Post-sale confusion relevant, but denial of injunction still affirmed
September 13, 2007
Post by Blog Staff
In a decision rendered yesterday, the Tenth Circuit affirmed a district court's denial of a preliminary injunction in a trade dress infringement case. The Tenth Circuit did join multiple other circuits in holding that post-sale confusion can be relevant to a claim of trade dress infringement. Evidence of post-sale confusion, however, was still insufficient evidence to justify a preliminary injunction. Asses.......
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Federal Circuit affirms finding of no anticipation or obviousness, no mention of KSR to be found
September 06, 2007
Post by Blog Staff
The Federal Circuit yesterday affirmed a decision by the District Court for the District of Delaware upholding the validity of Reissue Patent 34,712 ("the '712 patent") and the injunction preventing infringement of the '712 patent. Specifically, the court affirmed the district court's decision that the prior art reference relied upon for the defendants' anticipation argument was not ena.......
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Ninth Circuit: No confusion likely between competing energy drinks, preliminary injunction vacated
June 29, 2007
Post by Blog Staff
In a decision today, the Ninth Circuit vacated a preliminary injunction in a lawsuit over the trade dress of two competing energy drinks. The court held the district court's conclusion that success was likely on the merits was clearly erroneous, largely because of the dissimilarity of the two trade dresses.Hansen produces the Monster line of energy drinks. These beverages are sold in "containers bear.......
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Federal Circuit: no jurisdiction over contempt appeal, but dissolution of injunction affirmed
June 14, 2007
Post by Blog Staff
In a decision Wednesday, the Federal Circuit dismissed an appeal of a contempt order for lack of jurisdiction and ruled that the district court did not abuse its discretion in dissolving a preliminary injunction. The defendant was found in contempt of a preliminary injunction, but also found two new pieces of prior art that made out an invalidity case having substantial merit. The plaintiff failed to prove othe.......
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Ninth Circuit: have another look at those two moose - denial of preliminary injunction vacated
May 23, 2007
Post by Blog Staff
In a decision Tuesday, the Ninth Circuit vacated a district court's denial of a preliminary injunction to Abercrombie & Fitch over an alleged infringement of its "Moose" marks by Moose Creek, a competing clothing company. The Ninth Circuit found that the district court had misapplied several of the factors used in the Ninth Circuit to determine likelihood of confusion, called the Sleekcraft f.......
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Willful infringement affirmed; injunction vacated in light of eBay
April 13, 2007
Post by Blog Staff
The Federal Circuit affirmed a finding of willful infringement against a medical device manufacturer, but vacated a permanent injunction entered based on the old injunction standard to be reevaluated by the district court in light of the Supreme Court's decision in eBay v. MercExchange. The infringer obtained opinions of counsel regarding infringement at two different times. Initially.......
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Second Circuit: revisions to Federal Trademark Dilution Statute revive Starbucks claim
February 16, 2007
Post by Blog Staff
The Second Circuit recently ruled that coffee giant Starbucks could proceed with its trademark dilution case against a defendant using the mark "Mr. Charbucks." In 2005, the lower court found after a bench trial that Starbucks had not proven actual dilution of its trademark, the requirement under the earlier version of the statute. The statute was amended on October 6, 2006, while the case was on appeal, and now.......
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Court Applied Four-Factor Test for Preliminary Injunction Relief
December 13, 2006
Post by Blog Staff
In Sanofi v. Apotex (Sanofi-Synthelabo, Sanofi-Synthelabo,Inc., and Bristol-Myers Squibb Sanofi Pharmaceuticals Holding Partnership v. Apotex, Inc. and Apotex Corp.), the Court affirmed the decision granted by the US District Court for the Southern District of New York granting a preliminary injunction in favor of Sanofi. At issue was a patent ("the '265 patent") for an active ingredient "clopidog.......
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Analysis of overall appearance determines whether patented design is dictated by function
November 19, 2006
Post by Blog Staff
In PHG Technologies, LLC v. St. John Companies, Inc., the Federal Circuit vacated the preliminary injunction of the district court finding St. John raised a substantial questions of validity of the two patents-at-issue.At issue were two design patents owned by PHG: the '405 and '197 patents. The '405 and '197 patents depend from a utility patent for patient identification labels.......
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The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

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