SoCal IP Law Group

The SoCal IP Law Blog

Monthly Archives: December 2010

SoCal IP Institute :: January 3, 2011

Please join us for the SoCal IP Institute meeting, Monday, January 3 at Noon. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to  Amanda Jones by 9 am Monday.

We will be discussing the following:

Prometheus Laboratories, Inc. v. Mayo Collaborative Services, No. 08-1403  (Fed. Cir. Dec. 17, 2010) (case attached)   We will be continuing our previous discussion of statutory subject matter from Research Corp. Technologies, Inc. v. Microsoft Corp., No. 10-1037 (Fed. Cir. Dec. 8, 2010) with this case.  The Federal Circuit issued this opinion reaffirming a holding that Prometheus’ claims regarding a medical treatment procedure were directed to statutory subject matter.  This decision followed a district court decision that the claims were not statutory subject matter, a prior Federal Circuit decision that the claims were directed to statutory subject matter, the Bilski decision and a Supreme Court remand for reconsideration of this case in view of Bilski.  The Federal Circuit reaffirmed that the claimed subject matter was transformative, using a natural phenomenon and, thus, was statutory subject matter under 35 U.S.C. § 101.

Akamai Technologies, Inc. v. Limelight Networks, Inc., No. 09-1372 (Fed. Cir. Dec. 20, 2010) (case attached) Akamai sued Limelight on a number of patents related to hosting techniques for embedded elements of web pages.  Akamai appealed a lower-court entry of JMOL of non-infringement in addition to the claim construction of two terms that resulted in a non-infringement stipulation at the district court.  The JMOL was granted because it was conceded that Limelight did not perform each of the elements of the asserted claims and, thus, there was a split infringement issue.  The district court concluded and the Federal Circuit agreed that Limelight’s customers were not under the direction or control of Limelight.  Notably, the Federal Circuit held that in order for joint infringement to occur, an agency relationship or mutual contractual obligations must exist.  The Federal Circuit affirmed the district court’s claim construction of both terms and, as a result, affirmed the decision of the district court as a whole.

Advertisements

SoCal IP Institute :: December 20, 2010

Please join us for the SoCal IP Institute meeting, Monday, December 20 at Noon. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to  Amanda Jones by 9 am Monday.

We will be discussing the following:

Western Union Co. v. Moneygram Payment Systems, Inc., No. 10-1080  (Fed. Cir. Dec. 7, 2010) (case attached) After a district court decision that several Western Union patents related to so-called “formless” wire transfers were not invalid as obvious and that Moneygram infringed, Moneygram sought review of the infringement, obviousness and claim construction decisions.  The Federal Circuit reversed on the basis that each of the remaining asserted patents were invalid as obvious over prior art before the district court.  The case is interesting as a substantive Federal Circuit discussion of obviousness after KSR.

Research Corp. Technologies, Inc. v. Microsoft Corp., No. 10-1037 (Fed. Cir. Dec. 8, 2010) (case attached) This case relates to digital image halftoning.   After a district court decision that several Research Corp. patents asserted against Microsoft were invalid as failing to claim patent-eligible subject matter and that other patents were not entitled to earlier effective filing dates, the Federal Circuit reversed the statutory subject-matter decision, reversed the decision regarding the effective filing date of one patent and affirmed the effective filing date of one other.  The case is most interesting as a discussion regarding statutory subject matter of process claims.

SoCal IP Institute :: December 13, 2010

On Monday, December 13, 2010, the usual SoCal IP Institute will be replaced with a Red Cross CPR certification class.  We invite you all to attend if you would like to take part.  We will be having a group lunch from noon to 1:00 pm.  At 1:00 pm, the class will begin.  The class is expected to last for approximately 3 to 3 and a half hours.

If you will be joining us, please RSVP to Amanda Jones by 10 am this Friday.

SoCal IP Institute :: December 6, 2010

Please join us for the SoCal IP Institute meeting, Monday, December 6 at Noon. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to  Amanda Jones by 9 am Monday.

We will be discussing the following:

Nightingale Home Healthcare v. Anodyne Therapy, No. 10-2327 (7th Cir. Nov. 23, 2010) (case attached) After an unsuccessful suit for Lanham Act violations, the defendant Anodyne sought an award of attorneys’ fees under 15 U.S.C. § 1117(a) because the case was “exceptional” under the statute.  The district court granted Anodyne attorneys’ fees.  On appeal, the opinion considered the state of the various “exceptional” case standards applied by each of the Circuits.  Then, the opinion by Posner set forth an “abuse of process” standard for use in the 7th Circuit.  The 7th Circuit then affirmed the District Court’s decision to grant attorneys fees to the prevailing defendant.

Ji v. Bose, No. 09-2341  (1st Cir. Nov. 23, 2010) (case attached) A group of appeals arise after alleged improper use of a model’s image to promote products.  Ji raised issues related to damages based upon  an alleged error of the district court in refusing to compel discover and improper instructions to the jury on appeal.  Bose sought reconsideration of the district court’s refusal to grant attorneys’ fees under 15 U.S.C. § 1117(a).  The 1st Circuit confirmed that neither the motion to compel nor the jury instructions were in error.  Finally, the district court’s decision not to grant Bose attorneys’ fees was affirmed because, while Ji’s Lanham Act claim was defeated in summary judgment, it was not “entirely unfounded.”

10-2327 – Nightingale

09-2341P-01A – Ji