Second Circuit: Statements made in settlement discussions admissible to prove estoppel In a decision yesterday, the Second Circuit affirmed a jury's findings in a trademark infringement case between Polo Ralph Lauren and the U.S. Polo Association. The jury found that one of the USPA's four marks was likely to cause confusion. The two parties had been involved in a previous lawsuit in the early 1980s, and […] Continue Reading →
When DJ and infringement suits both filed, transfer factors determine appropriate forum In a decision Friday, the Federal Circuit decided a case addressing the requirements for a declaratory judgment action post-MedImmune . The court reversed and remanded a district court’s decision that there was no declaratory judgment jurisdiction applying the pre-MedImmunereasonable apprehension of suit standard rejected by the Supreme Court. The Federal Circuit applied the MedImmunerequirement for a […] Continue Reading →
Dependent claim can be construed to be broader than independent claim based on prosecution history 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 […] Continue Reading →
Fifth Circuit affirms injunction against trademark infringement in Saudi Arabia In a recent decision, the Fifth Circuit affirmed a district court's finding of infringement and disgorgement of profits, but increased the amount of profits awarded because the defendant failed to provide evidence of its costs to reduce the award. Interestingly, the infringement took place entirely outside the United States, namely in Saudi Arabia. Even though […] Continue Reading →
Eleventh Circuit: One-satisfaction rule applies to copyright infringement awards In a decision this week, the Eleventh Circuit reversed the decision of a district court, holding the "one-satisfaction rule" does apply to infringement claims under the Copyright Act.This appeal arose out of a jury award to copyright plaintiff of almost $1.6 million against two defendants who infringed the plaintiff's rights in its used boat price […] Continue Reading →
Post-verdict infringement royalty must take into account changed bargaining position of parties 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 […] Continue Reading →
On-sale bar cannot be avoided by experimentation conducted by patentee’s customer In a decision Thursday, the Federal Circuit provided additional guidance on the on-sale bar of § 102(b). In the case, the patentee developed a series of prototypes that were then sold to its customer, who then experimented with the prototypes and requested modifications to the prototypes. The prototypes were also accompanied by offers to sell […] Continue Reading →
Seventh Circuit: Operating agreement permitted license of marks, so no trademark infringement In its second trademark decision Friday, the Seventh Circuit clarified what is required for a party to be authorized to use another entity's trademarks. In this case, the plaintiff—one of four founders of two LLC's designed to manage and control a restaurant in Chicago—alleged trademark infringement against the three other co-founders based on the co-founders' […] Continue Reading →
Seventh Circuit: Sanction of no damages for improper witness contact too severe compared to harm In a decision Friday, the Seventh Circuit affirmed a jury verdict of trademark infringement, but reversed the district court's ruling holding the plaintiff had forfeited damages because of improper conduct towards a prospective witness. The court dealt with whether the burden of proof for the sanction was by clear and convincing evidence or as the […] Continue Reading →
Another preliminary injunction vacated on appeal, this time because of claim construction 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, […] Continue Reading →