The Federal Circuit recently denied a request for rehearing en banc in the matter of Avid Identification Systems, Inc. v Crystal Import Corp.  In the underlying District Court case, it was determined that the president of Avid failed to disclose a demonstration of a "precursor product" at a trade show to the U.S. Patent and Trademark Office during prosecution of the Avid patent, and the Federal Circuit affirmed the District Court's decision that this failure was sufficient to hold the Avid patent unenforceable based on inequitable conduct.

The interesting, and somewhat disturbing, impact of this decision is the fact that the District Court jury found that Avid's trade show demonstration did not constitute invalidating prior art, i.e., Avid's demonstration was not an invalidating disclosure of the invention, nor a sale to offer to sell the patented invention.

Thus, this decision begs the question: When [and how] is non-invalidating prior art material to patentability?

For more, click here to read Judge Newman's Dissent to the En Banc Order.

You may remember the character Dan Tanna from Vega$,

but you may not know that the character's name was based on the name of a West Hollywood, California restaurant owner named Dan Tana (used with his permission), whose restaurant, "Dan Tana's," appears below:

A local author named Cynthia J. Clay recently filed a copyright infringement lawsuit alleging that the motion picture Avatar infringes her novel, entitled Zollocco: A Novel of Another Universe.  The complaint, which was filed in the Southern District of Florida federal court, alleges instances of "strikingly similar" copying of portions of the novel, and claims that the name of the novel, Zollocco, was used as a war chant by principal characters in a critical scene in the movie (allegedly "Zha-lah-coooh"). 

The Defendants in the lawsuit include James Cameron and Twentieth Century Fox.  As with any lawsuit alleging copyright infringement, the issues to be determined will include: (1) the Defendants' access to the novel; and (2) the degree of similarity between the accused work and the copyrighted work ("substantial similarity" if access can be proven, otherwise the alleged infringing work must be "strikingly similar").  

Friday, 28 June 2013 20:01


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As noted previously, the U.S. Supreme Court issued its long-awaited opinion in Bilski v. Kappos today.  Although the Bilksi patent in dispute was drawn to particular business method claims for hedging risk and the application of that concept to energy markets, many in the field of intellectual property have been curious of the possible effects a decision in Bilski could have for other business methods, such as software and medical diagnostic methods.

For now, the intellectual property community will have to continue to wait.  In Bilski, the U.S. Supreme Court limited their decision to the patentability of the particular methods of the patent at issue, and declined to address the patentability of business method claims in general, much less other specific kinds of business methods.  Accordingly, other business methods, such as software and medical diagnostics methods, have not been ruled on, nor have they been ruled out.

Tuesday, 08 June 2010 20:01


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David Kappos, Director of the U.S. Patent and Trademark Office (USPTO), has recently announced the Office is considering a new initiative for the examination of patent applications filed in the USPTO. Referred to as the “Three Track” scheme, the applicant has the option of choosing how quickly or slowly they want their patent application examined. The three options are as follows:

Track I:  accelerated examination (proposed 4 months to first Office Action; 12 months to final disposition)

Track II:  traditional examination as currently applied (default track if one of the other tracks is not designated at filing)

Track III:  delayed examination for up to 30 months (for non-continuing applications first filed in the USPTO)

Wednesday, 26 May 2010 19:58


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On remand from the Federal Circuit, the U.S. District Court for the Southern District of Texas based a damages award for false patent marking on the highest selling price of the falsely marked products.

In Forest Group Inc. v. Bon Tool Co., 2010 U.S. Dist. LEXIS 41291 (S.D. Tex. Apr. 27, 2010), the Court found "the appropriate fine in this case is $180.00 per article, the highest point of the [sales] price range. This will deprive Forest of more than it received for the falsely marked stilts, fulfilling the deterrent goal of §292's fine provision." (emphasis added).
Wednesday, 26 May 2010 19:57


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In a unanimous decision released yesterday afternoon, the U.S. Supreme Court held that the National Football League (NFL) is not immune from antitrust laws and should be considered an umbrella organization consisting of thirty-two separate teams rather than a single entity. The Court's ruling will allow an antitrust lawsuit filed against the NFL by American Needle -- a clothing manufacturer -- to move forward. Writing for the Court, Justice Stevens stated that "[d]ecisions by NFL teams to license their separately owned trademarks . . . to only one vendor are decisions that deprive the marketplace of . . . actual or potential competition."

American Needle filed the suit after it was prohibited from continuing to produce branded clothing for NFL teams following the NFL's execution of a ten-year exclusive licensing agreement with Reebok. Should American Needle ultimately prevail, the structure of NFL license schemes will change dramatically and individual teams will be permitted to negotiate their own license deals.  For this reason, the decision may likego down as one of the landmark sports law and licensing decisions of the past few decades.

For more information click here.

Monday, 24 May 2010 19:56


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On April 6, 2010, the District of Delaware ruled in favor of defendant Bacardi U.S.A., Inc. in a false advertising action brought by Pernod Ricard USA LLC. This was the latest development in a lengthy dispute over the right to use “HAVANA CLUB” on rum, in the United States.
In finding that Bacardi U.S.A.’s rum labels were neither false nor misleading, the Court pointed to two alternative interpretations regarding the scope of “geographical origin” as used in Lanham Act Section 43(a)(1)(B). One interpretation was that “geographical origin” would implicate the place of manufacture. A broader interpretation would take “geographical origin” to encompass the source of a product’s heritage or some aspect of a product’s history. The Court indicated that it reached the same result under both alternatives, due to the prominent display of the actual place of manufacture (Puerto Rico) on the labels as well as a clear demonstration of the product’s Cuban heritage (Bacardi was originally a Cuban company, and the recipe for its Havana Club rum was derived primarily from a historically Cuban recipe).