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 →
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 →
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 →
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 […] 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 →
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 →
Improper revival cannot be raised as grounds for invalidity in an infringement action In a decision yesterday, the Federal Circuit reversed a district court's summary judgment of invalidity. The district court held that the application that led to the patent-in-suit was abandoned, and the USPTO improperly revived it, rendering the patent invalid. The applicant missed the 30-month PCT national phase deadline by one day, but successfully petitioned to […] Continue Reading →
Disclosure of gene from one bacterial source cannot support claims to gene from any bacterial source In a recent decision, the Federal Circuit affirmed a district court's grant of summary judgment of non-infringement and invalidity of various claims of three patents. The district court held no genuine issue of fact existed regarding noninfringement or invalidity under the written description requirement. The patents related to DNA polymerases, and the claims at issue […] Continue Reading →
En banc Federal Circuit scraps point of novelty test for design patent infringement In an en banc decision this morning, the Federal Circuit has unanimously held that the "point of novelty" test for design patent infringement should no longer be applied. As stated by the court: [W]e hold that the "point of novelty" test should no longer be used in the analysis of a claim of design patent […] Continue Reading →
Seventh Circuit reverses trademark damages award in default judgment because wrong standard applied The Seventh Circuit recently reversed the amount of damages in a district court's entry of default judgment in a trademark infringement dispute. At issue was whether the Plaintiff was entitled to additional relief on the grounds that the district court applied the wrong standard to its claim for an accounting of profits. The district court […] Continue Reading →