Recently in Intellectual Property Law Category

In a patent case involving nutritional supplements containing a ketoacid and an amino acid to enhance muscle performance or recovery from fatigue, summary judgment holding certain of plaintiff's patent claims invalid as anticipated is affirmed as the Professional Protein advertisement constitutes an anticipatory printed publication under section 102(b) that invalidates the asserted claims of the patent as: 1) the ad discloses each and every claim limitation as a matter of law; and 2) a person of skill in the art, combining his or her knowledge of the art with the advertisement's suggestions, would have considered the advertisements to be enabled.      

Read Iovate Health Sci., Inc. v. Bio-Engineered Supplements & Nutrition, Inc., No. 09-1018

Appellate Information

Appeal from:  United States District Court for the Eastern District of Texas

Decided November 19, 2009

Judges

Before:  Lourie, Mayer, and Prost, Circuit Judges

Opinion by Circuit Judge Lourie

Counsel

For Appellant:   Charles A. Weiss, Kenyon & Kenyon LLP, New York, New York

For Appellee:  Philip D. Segrest, Jr., Husch Blackwell Sanders Welsh & Katz, Chicago, Illinois

Final decision of the United States Patent and Trademark Office Trademark Trial and Appeal Board (Board) refusing registration of the mark "Mattress.com" is affirmed as the Board's decision finding the mark generic in relation to the recited services was supported by substantial evidence.     

Read In re 1800Mattress.com IP., LLC, No. 09-1188

Appellate Information

Appeal from:  United States Patent and Trademark Office, Trademark Trial and Appeal Board

Decided November 6, 2009

Judges

Before:  Lourie, Friedman, and Prost, Circuit Judges

Opinion by Circuit Judge Lourie

Counsel

For Appellant:  Francis J. Duffin, Wiggin and Dana LLP

For Appellee:  Raymond T. Chen, Office of the Solicitor, USPTO.

In trademark cancellation proceedings, the Trademark Trial and Appeal Board's (Board) decision canceling registration of appellant-Cold War Museum's service mark THE COLD WAR MUSEUM, finding that it had not proven acquired distinctiveness of the mark, is reversed where: 1) the Board erred in deciding that it could not consider evidence of acquired distinctiveness because appellant did not resubmit the evidence in the cancellation, as the unambiguous language of 37 C.F.R. section 2.122(b) provides that the entire file of the registration at issue is automatically part of the record, without any action necessary by the parties; and 2) the Board erred as a matter of law in concluding that appellee had established a prima facie case that the mark had not acquired distinctiveness as appellee failed to present any evidence whatsoever relating to the distinctiveness of the mark and failed even to argue that the mark had not acquired distinctiveness in its petition for cancellation. 

Read Cold War Museum, Inc. v. Cold War Air Museum, Inc., No. 09-1172

Appellate Information

Appeal from:  United States Patent and Trademark Office, Trademark Trial and Appeal Board

Decided November 5, 2009

Judges

Before:  Lourie, Linn, and Moore, Circuit Judges

Opinion by Circuit Judge Moore

Counsel

For Appellant:  A. Neal Seth, Mark H. Tidman, Baker & Hostetler LLP, Washington, DC

For Appellee:  W. Thomas Timmons, Dallas, Texas

In plaintiff's case against defendants arising from a patent license agreement dispute, judgment on the pleadings in favor of defendants is reversed and remanded where: 1) the district court erred in finding that plaintiff's subsidiaries are not licensed under the parties' patent licensing Agreement; and 2) the unambiguous Agreement makes clear that the license grant includes subsidiaries of plaintiff and defendant that meet the Agreement's Subsidiary definition.     

Read Imation Corp. v. Koninklijke Philips Elec. N.V., No. 09-1208

Appellate Information

Appeal from:  United States District Court for the District of Minnesota

Decided November 3, 2009

Judges

Before Bryson and Gajarsa, Circuit Judges, and St. Eve, District Judge

Opinion by:  St. Eve, District Judge

Counsel

For Appellant:  Ronald J. Schutz, Robins, Kaplan, Miller & Ciresi LLP; Scott M. Flaherty, David P. Swenson

For Appellee:  Marc De Leeuw, Sullivan & Cromwell LLP; Gerrard R. Beeney, Adam R. Brebner; Albert L. Hogan III; Allan M. Soobert

In a patent case involving claim methods for quantifying HIV in human blood samples, district court's judgment is affirmed in part and vacated and remanded in part where: 1) district court correctly found that Roche's counterclaim for a judgment on its ownership claim was subject to California statutes of limitation; and 2) district court's judgment of invalidity is vacated and remanded with instructions to dismiss Stanford's action as the district court incorrectly declined to consider Roche's affirmative defense based on ownership and as a matter of law Roche possesses an ownership interest in the patents-in-suit that deprives Stanford of standing.     

Read Bd. of Trustees of the Leland Stanford Jr., Univ. v. Roche Molecular Sys. Inc.. No. 08-1509

Appeal from:  United States District Court for the Northern District of California

Decided September 30, 2009

Judges

Before Linn, Prost, and Moore, Circuit Judges

Opinion by Linn, Circuit Judge.   

Counsel

For Appellant:  Ricardo Rodriguez, Cooley Godward Kronish LLP

For Appellee:  Adrian R. Pruetz, Pruetz Law Group LLP 

In a patent infringement case involving a method for detecting fraudulent bank checks, district court's dismissal of certain counts of plaintiff's suit is affirmed as the allegedly infringing activity was for the United States and with its authorization and consent and thus could only be pursued in the Court of Federal Claims under 28 U.S.C. section 1498(a).   

Read Advanced Software Design Corp. v. Fed. Reserve Bank of St. Louis, No. 08-1152

Appeal from:  United States District Court for the Eastern District of Missouri

Decided September 30, 2009

Judges

Before Newman, Prost, and Moore, Circuit Judges

Opinion by Newman, Circuit Judge.   

Counsel

For Appellant:  Keith A. Rabenberg, Senniger Powers LLP

For Appellee:  William H. Levit, Jr., Godfrey & Kahn

In a patent case involving a method for treating Alzheimer's disease and related dementias, district court's conclusion that the claims of the patent '318 were invalid is affirmed as the patent's description of using galantamine to treat the disease does not satisfy the enablement requirement because the patent application did not establish utility.     

Read Janssen Pharm. N.V. v. Teva Pharm. USA, Inc., No. 08-1594

Appeal from:  United States District Court for the District of New Jersey

Decided September 25, 2009

Judges

Before Mayer, Gajarsa, and Dyk, Circuit Judges

Opinion by Dyk, Circuit Judge.   

Counsel

For Appellant:  George F. Pappas, Covington & Burling LLP

For Appellee:  William A. Rakoczy, Rakoczy Molino Mazzochi Siwik LLP; George C. Lombardi, Winston & Strawn LLP

In a patent case involving claims for the antipsychotic drug quetiapine, district court's grant of limited motion for summary judgment of no inequitable conduct in favor of plaintiffs-AstraZeneca, is affirmed as defendants had not presented evidence sufficient for a reasonable jury to find that in the prosecution of the patent application, plaintiff made a misrepresentation of material fact or an omission of material fact, with intent to deceive or mislead the patent examiner into granting the patent.     

Read AstraZeneca Pharm. LP. v. Teva Pharm. USA, Inc., No. 08-1480

Appeal from:  United States District Court for the District of New Jersey

Decided September 25, 2009

Judges

Before Newman, Rader, and Prost, Circuit Judges

Opinion by Newman, Circuit Judge.   

Counsel

For Appellant:  Henry J. Renk, Fitzpatrick Cella, Harper & Scinto

For Appellee:  Ira J. Levy, Goodwin Procter LLP

In a patent infringement and breach of nondisclosure agreement (NDA), involving patents directed toward apparatuses and methods of creating and verifying authenticity of documents such as postage, district court's judgment is vacated in part, reversed in part, and remanded where: 1) the judgment of noninfringement is vacated as the district court erred in construing the claims; and 2) district court's grant of summary judgment on the breach of contract claim is reversed as there are material issues of fact in dispute regarding breach of the NDA due to misuse of the confidential information.     

Read Kara Tech., Inc. v. Stamps.com, Inc., No. 09-1027

Appeal from:  United States District Court for the Central District of California

Decided September 24, 2009

Judges

Before Schall, Plager, and Moore, Circuit Judges

Opinion by Moore, Circuit Judge.   

Counsel

For Appellant:  Eliot D. Williams, Baker Bolts LLP, Of New York, Robert C. Scheinfeld

For Appellee:  Phillip J. Graves, Graves Law Office, PC

Decision of the PTO affirming the examiner's rejection of petitioner's claims of his application involving a manuscript for playing golf is vacated and remanded as the record does not contain sufficient evidence that the prior art reference relied upon by the Board was publicly accessible more than one year prior to the date on which the petitioner filed his patent application.     

Read In re Lister, No. 09-1060

Appeal from:  United States Patent and Trademark Office Board od Patent Appeals and Interferences

Decided September 22, 2009

Judges

Before Gajarsa, Linn, and Prost, Circuit Judges. 
Opinion by Prost, Circuit Judge.   

Counsel

For Appellant:  Peter M. Midgley, Jr., Zarian Midgley & Johnson PLLLC, Rexford A. Johnson

For Appellee:  Joseph G. Piccolo, Associate Solicitor, Office of the Solicitor, United States Patent and Trademark Office, and Raymond T. Chen, Benjamin D.M. Wood