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Category: Standing


An IPR Appellant Must Establish an Injury to Have Standing
August 10, 2018
Post by Blog Staff
In JTEKT Corp. v. GKN Auto. Ltd., Appeal No. 2017-1828 (Fed. Cir. Aug. 3, 2018), the United States Court of Appeals for the Federal Circuit (CAFC) dismissed an inter partes review (IPR) appeal due to lack of standing. The requirement for an appellant to establish an injury in fact remains firm. JTEKT petitioned for an IPR on a patent owned by GKN. The Patent Trial and Appeal Board (PTAB) instituted the revie.......
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USPTO Cancels Washington, D.C. NFL Franchise's Trademark Registrations
June 19, 2014
Post by Blog Staff
The United States Patent and Trademark Office issued a decision yesterday cancelling six federal trademark registrations owned by the Washington, D.C. National Football League franchise. The cancellation proceeding was brought by five Native American petitioners on the basis that the marks disparage persons or bring them into contempt or disrepute in violation of 15 U.S.C. § 1052(a). The Trademark Trial and.......
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Who May Bring a Federal False Advertising Suit?
April 02, 2014
Post by Blog Staff
The Supreme Court's recent decision in Lexmark International, Inc. v. Static Control Components, Inc. prescribed the appropriate framework for determining whether a plaintiff has standing in a false advertising action under the 15 U.S.C. 1125(a). Prior to this decision, there were three competing approaches to determining whether a plaintiff has standing to bring suit under the Lanham Act: · .......
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New and Useful - January 23, 2013
January 23, 2013
Post by Blog Staff
· In Wax v. Amazon Techs., the Federal Circuit upheld the TTAB’s denial of registration of the mark AMAZON VENTURES. Applicant filed and intent-to-use application to register the mark for “investment management, raising venture capital for others, . . . and capital investment consultation.” Amazon Technologies, Inc.—online retailer and owner of several AMAZON.COM marks&mdas.......
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After-the-fact Patent Assignment Too Late to Save Jurisdiction
November 24, 2010
Post by Blog Staff
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Explanation of prior art element in dependent claim insufficient to confer inventor status
March 09, 2009
Post by Blog Staff
In a decision Thursday, the Federal Circuit reversed a summary judgment of dismissal for lack of standing by the District Court for the Eastern District of Michigan. The district court held that one of the defendant's employees was a coinventor of the patent-in-suit, and because he had not joined as a plaintiff, the plaintiffs did not have standing to sue. The Federal Circuit reversed, holding the allegedly.......
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Ninth Circuit: Copyright owner's ambiguous reservation of rights clarified with extrinsic evidence
December 08, 2008
Post by Blog Staff
In a recent decision, the Ninth Circuit reversed a district court's grant of summary judgment that a copyright holder did not have standing to sue for copyright, trademark, unfair competition, and related declaratory judgment claims. The case involved the film Gone in 60 Seconds, produced and directed in 1974 by H.B. "Toby" Halicki, and remade in 2000. The key issue was the construction of a 1995 .......
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Federal Circuit affirms district court's decision setting aside $1.5 billion infringement verdict
September 26, 2008
Post by Blog Staff
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 award. The Federal Circuit affirmed. The court agreed with the district court that the ju.......
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Eleventh Circuit: Unsolicited proposals insufficient to show intent to resume use of trademark
June 16, 2008
Post by Blog Staff
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 claims were based on the alleged § 1125 claims. The El.......
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Patent ownership may change by operation of law, including operation of foreign law
March 31, 2008
Post by Blog Staff
In a decision today, the Federal Circuit vacated a district court's dismissal of a case for lack of standing on the basis of insufficient evidence of patent ownership. The inventor of the patent died intestate as the only owner of the patent. While his two daughters executed transfers of ownership to the inventor's widow, the district court held that under 35 U.S.C. § 261, the executor of the estat.......
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Ninth Circuit: "Exclusive" license from only one copyright co-owner really a nonexclusive license
March 05, 2008
Post by Blog Staff
In a decision last week, the Ninth Circuit affirmed a district court's dismissal of a copyright infringement claim for lack of standing, as well as several related claims. The plaintiff obtained an "exclusive" license for one of the exclusive rights from a single co-owner of several copyrighted works. However, because the plaintiff only obtained the license from one co-owner, and not from all co-ow.......
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Discovery needed to determine effect of employment agreement on patent ownership, but no jury trial
February 14, 2008
Post by Blog Staff
In a decision yesterday, the Federal Circuit remanded a case for further discovery, finding that the district court abused its discretion by denying jurisdictional discovery regarding patent ownership due to the "central relevance" of the information. The patent ownership dispute arose from an employment contract between one of the two inventors and his employer that purportedly assigned all inventions.......
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"Exclusive enterprise licensee" does not have standing to sue for infringement without patent owner
October 15, 2007
Post by Blog Staff
In a decision today, the Federal Circuit reversed a decision by a district court declining to dismiss a patent infringement case brought by a party possessing an "exclusive enterprise license" in the patent-in-suit. The trial court certified the question of licensee standing to the court for interlocutory appeal. In reversing the district court's denial of the defendant's motion to dismiss, th.......
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Patentee need not join in appeal for exclusive licensee to retain standing
October 14, 2007
Post by Blog Staff
In a decision Friday, the Federal Circuit affirmed a district court decision that prosecution history estoppel barred application of the doctrine of equivalents, and accordingly affirmed the district court's summary judgment of no infringement.The court also held, as a matter of first impression, that when joinder of the patent owner is required before the district court for an exclusive licensee to have pru.......
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Agreement to assign to employer requires separate assignment; dismissal for lack of standing vacated
October 01, 2007
Post by Blog Staff
In a decision released late Friday, the Federal Circuit vacated and remanded a district court's decision that a plaintiff did not have standing to sue for patent infringement. At issue was whether a joint inventor of the patent had assigned his interest in the patent to a third party, thereby making the third party a necessary party to the case. The court concluded that the employment agreement signed by th.......
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If you just have the right to sue under a patent, don't expect to actually be able to sue anyone
September 20, 2007
Post by Blog Staff
Yesterday, the Federal Circuit clarified the requirements for a party to attain standing to bring a patent infringement suit when the party does not hold all substantial rights in the patent. In defining what constitutes an "injury in fact" under the constitutional standing requirement, the court held that, when a party does not have all substantial rights to a patent, injury in fact would only exist w.......
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Infringement and royalty rate affirmed; dismissal of willful infringement claim reversed
September 06, 2007
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed-in part a district court's grant of summary judgment of infringement of a patent, finding that the claims were properly held to include measuring devices that either directly or indirectly compare two signals to determine the proper measurement. The court reversed-in part the district court's damages award. The district court properly determined the rea.......
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Federal Circuit affirms dismissal of opposition proceeding for lack of standing
July 11, 2007
Post by Blog Staff
In another nonprecediential ruling today, the Federal Circuit affirmed the TTAB's dismissal of an opposition filed against registration of the Dykes on Bikes mark.There are two requirements to have standing to file an opposition with the TTAB. The would-be opposer must have "both a real interest in the proceedings and a reasonable basis for a belief that he would be damaged by its registration." .......
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Federal Circuit again deals with standing
March 02, 2007
Post by Blog Staff
In yet another case, the Federal Circuit has dealt with whether a party asserting a patent infringement claim had title to the patent, and thus standing to bring the claim against the defendant. Here, once the standing issue was raised at the district court, the Plaintiff opted to fix the chain of title, voluntarily dismiss its claim, and refile a new case against the defendant. The court granted the dismissal (.......
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Don't change horses in midstream: Patentee held to claim construction position taken at lower court
February 20, 2007
Post by Blog Staff
The Federal Circuit ruled today that a patentee could not argue a different claim construction than that argued before the district court. Because of this, the court affirmed the lower court's grant of summary judgment of noninfringement against the patent holder. Also, the court held that the patent holder did have standing to bring the case. Issues relating to the chain of title of a patent are .......
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Federal Circuit again dismisses patent case for lack of standing
January 30, 2007
Post by Blog Staff
The Federal Circuit has once again found the plaintiff in a patent infringement lawsuit did not have standing to bring its infringement claim. In order for a single plaintiff to have standing to assert infringement of a patent, that plaintiff must be the owner of the entire interest in the patent. As succinctly stated by the court: "Absent the voluntary joinder of all co-owners of the patent, a co-owner ac.......
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"Bare Licensee" Lacks Standing to Sue for Infringement
January 09, 2007
Post by Blog Staff
In Propat International Corp & David Find and Helene Glasser ("Propat") v. RPsot International Limted, Zafar Khan, Kenneth Barton and Terrance Tomkow ("Rpost"), the Federal Circuit affirmed the district court's decision that Propat lacked standing to sue for infringement and, on the cross-appeal, affirmed the district court's order denying RPost's request for an award of fees and costs. At issue wa.......
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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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