Seventh Circuit: Several likelihood of confusion factors favored plaintiff, no summary judgment The Seventh Circuit recently reversed a district court's summary judgment for the defendant in a trademark infringement case. The district court held no reasonable fact finder could find the marks likely to be confused.On appeal, the Seventh Circuit reminded us that the test for likelihood of confusion is not simply whether consumers will confuse two […] Continue Reading →
Demonstration of product at trade show didn’t meet all claim limitations; no personal jurisdiction In a decision Tuesday, the Federal Circuit affirmed the dismissal of a patent infringement claim for lack of personal jurisdiction. The alleged infringer showed the allegedly infringing product at a trade show in DC, which led the plaintiff to file suit there. The district court dismissed, holding the defendant had not actually committed an infringing […] Continue Reading →
Prior court decision of no invalidity based on prior art reference doesn’t bar reexamination The Federal Circuit recently construed the scope of the revised reexamination statute, 35 U.S.C. § 303, specifically what is required for a "substantial new question of patentability." In this case, the relevant reference was cited during the initial examination of the application that led to the patent under reexamination, but as a supporting reference. The […] Continue Reading →
Covenant not to sue removes jurisdiction despite lingering Hatch-Waxman exclusivity issues In a recent decision, the Federal Circuit affirmed a district court's decision involving declaratory judgment jurisdiction in the context of abbreviated new drug applications (ANDAs) and a related covenant-not-to-sue involving one patent at issue. The court affirmed a covenant-not-to-sue coupled with a stipulation of validity and enforceability removed any case or controversy required for declaratory […] Continue Reading →
Patent claims not at issue at trial can’t be found invalid, even if mentioned in complaint In a recent decision, the Federal Circuit reversed much of a district court's finding of willful infringement of a plaintiff's patents, tortious interference with the plaintiff's business relationships, and invalidity of the defendant's patents. Regarding the willful infringement, the Federal Circuit determined that the district court had improperly interpreted the claims of the plaintiff's patents-in-suit […] Continue Reading →
Tenth Circuit: District court’s internally inconsistent findings lead to remand In a decision last week, the Tenth Circuit reversed a district court's ruling of no trademark infringement. The district court, applying the Tenth Circuit's six likelihood of confusion factors, initially stated that three factors favored the plaintiffs, two were neutral, and one favored the defendants, but in its conclusion, stated that only one factor favored […] Continue Reading →
Ninth Circuit: First sale doctrine doesn’t apply to goods purchased abroad and imported to US In a decision last week, the Ninth Circuit reversed a district court's grant of summary judgment to a copyright defendant on the basis of the "first sale" doctrine, codified at 17 U.S.C. § 109(a). The defendant obtained the products bearing the copyright from a third party who legally purchased them outside the United States. The […] Continue Reading →
No evidence of intent to deceive, no inequitable conduct In a recent decision, the Federal Circuit reversed a district court's grant of summary judgment of inequitable conduct against the patentee. At issue was whether the patentee's failure to disclose a letter describing an aspect of the prior art constituted inequitable conduct. The court reversed finding that the alleged infringer had failed to provide sufficient […] Continue Reading →
First Circuit: Don’t expect to win on appeal if you admit 7 of 8 likelihood of confusion factors In a decision Friday, the First Circuit affirmed a district court's summary judgment of trademark infringement and an associated award of the defendant's profits and attorney fees to the plaintiff. The defendant used the plaintiff's registered marks in both the metatags of its website as well as in white text on a white background in […] Continue Reading →
Clinical trials necessary to determine invention works for intended purpose In a recent decision, the Federal Circuit affirmed a district court's ruling in favor of AstraZeneca, holding that the generic drug manufacturers Apotex and Impax Laboratories infringed patents for the popular heartburn medication Prilosec® (generic form omeprazole) in filing abbreviated new drug applications (ANDAs). The Federal Circuit previously addressed these patents in the context of […] Continue Reading →