SoCal IP Law Group

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Monthly Archives: August 2012

SoCal IP Institute :: August 27, 2012 :: “When Survey Data Strengthens Expert Testimony: An Example from Trademark Litigation”

For our weekly SoCal IP Institute meeting on Monday, August 27, 2012, we are delighted to welcome Dr. Aaron Brough as a guest speaker.  Dr. Brough is an assistant professor of marketing in the Business Administration Division of Seaver College at Pepperdine University where he teaches courses on Marketing Strategy and Principles of Marketing.  Dr. Brough earned his Ph.D. from the Kellogg School of Management at Northwestern University and was a senior consultant at MaPS, a Boston-based strategic marketing research and consulting firm, advising Fortune 500 clients such as American Express, Coca-Cola, Disney, IBM, Microsoft and Novartis.

Dr. Brough’s presentation, entitled “When Survey Data Strengthens Expert Testimony: An Example from Trademark Litigation,” will explore some of the pros and cons of collecting survey data as part of expert testimony in trademark suits, some general tips on how to get it right, and how he applied these tips as an expert witness for the defendant in the federal court case True Religion Apparel, Inc. and Guru Denim, Inc. v. True Apparel Company, Case No. 07-12335-DPW (D. Mass. June 12, 2009).

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, August 27, 2012 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Attalla by 9 am Monday morning.

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SoCal IP Institute :: August 20, 2012 :: Fair Use and Enablement

We will be discussing one Federal Circuit case and one Ninth Circuit case during our weekly SoCal IP Institute meeting on Monday, August 20, 2012. Brief synopses are presented below.

Monge v. Maya Magazines, Inc., Case Nos. 10-56710 and 11-55483 (9th Cir. August 14, 2012) (attached).

Noelia Monge is a pop singer and model in Latin America.  In 2007, she married her manager and music producer Jorge Reynoso in a private, unpublicized wedding in Las Vegas.  Maya Magazines, Inc. and Maya Publishing Group, LLC obtained and publishing previously unpublished photos of the secret wedding in “TVNotas,” a Spanish-language celebrity gossip magazine. The photos were allegedly stolen by a third party.  Monge sued Maya claiming copyright infringement. The district court granted Maya’s summary judgment on the ground that publication of the images was fair use under the Copyright Act of 1976.

On appeal, the Ninth Circuit Court of Appeals reversed and remanded, holding that the balancing of factors must be weighed against defendants’ burden to establish fair use.  The Ninth Circuit determined that not a single factor weighed in favor of the defendants and the defendants’ affirmative defense of fair use failed as a matter of law.

Magsil Corp. v. Hitachi Global Storage Tech., Inc., Case No. 2011-1221 (Fed. Cir. August 14, 2012) (attached).

MIT owns Patent No 5,629,922, which covers read-write sensors for computer hard disk storage systems that use a quantum mechanical effect to pass electric current from one electrode to another.  MIT and the patent’s exclusive licensee Magsil sued Hitachi et al. for infringement of the ’922 patent.  The Federal Circuit upheld the district court’s grant of summary judgment in favor of the defendants, finding the disputed claims invalid for lack of enablement.

The patent claims a device that has a change in resistance of “at least 10%.”  The district court found that the asserted claim coverage includes “resistance changes beyond 120% and up to infinity.”    The defendant was able to prove that the change in resistance levels could not have been achieved at the time of the patent filing without undue experimentation.  The field of art had advanced greatly after the filing of the patent application. The Federal Circuit stated that the specification at the time of filing must teach one of ordinary skill in the art to fully perform the method across the entire scope.  Accordingly, the district court’s finding of invalidity for lack of enablement was upheld.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, August 20, 2012 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Attalla by 9 am Monday morning.

SoCal IP Institute :: August 13, 2012 :: Trademark Abandonment and Claim Construction

We will be discussing two Federal Circuit cases during our weekly SoCal IP Institute meeting on Monday, August 13, 2012. Brief synopses are presented below.

Lens.com, Inc. v. 1-800 Contacts, Inc., Case No. 2011-1258 (Fed. Cir. August 3, 2012) (attached).

The Wesley-Jessen Corporation obtained Trademark Registration No. 2,175,334 for the mark LENS in connection with “computer software featuring programs used for electronic ordering of contact lenses in the field of ophthalmology, optometry and opticianry.”  Lens.com, an online retailer of contact lenses applied for the mark LENS in connection with “retail store services featuring contact eyewear products rendered via a global computer network.”  The PTO cited the ’334 Registration as a bar based on likelihood of consumer confusion and refused registration of the mark as merely descriptive of services.  Lens.com initiated a cancellation proceeding against Wesley-Jessen’s ’334 Registration, but later withdrew its cancellation petition under a settlement agreement and obtained the ’334 Registration for the mark LENS.  Then, in 2008, 1-800 Contacts initiated its own cancellation proceeding alleging that Lens.com abandoned or fraudulently obtained the mark LENS because Lens.com never sold or otherwise engaged in the trade of computer software. The Trademark Trial and Appeal Board granted summary judgment of abandonment on the ground that the “software is merely incidental to sale of contact lenses, and is not a ‘good in trade,’ i.e., ‘solicited or purchased in the market for its intrinsic value.’”

The Federal Circuit affirmed, stating that the Board properly determined that the mark LENS is not in “use in commerce” in association with software on the issue of abandonment.

Interdigital Communications, LLC v. Int’l Trade Comm’n, Case No. 2010-1093 (Fed. Cir. August 1, 2012) (attached).

InterDigital owns U.S. Patent Nos. 7,190,966 and 7,286,847, which relate to apparatuses and methods for controlling transmission power during the “handshake” portion of a wireless cellular communication.  The ‘847 patent is a continuation of the ‘966 patent.  InterDigital filed a complaint with the International Trade Commission alleging that Nokia, Inc. and Nokia Corp. violated the Tariff Act with the importation into the U.S., sale for importation, or sale within the U.S. after importation of certain 3G mobile handsets and components that infringe the patents.

After construing the claim term “code” to mean “a spreading code or a portion of a spreading code” and the claim term “increased power level” to mean that “the power level of a transmission is higher than that of a previous transmission” and “the power level of a code signal increases during transmission,” the ITC found that Nokia did not infringe InterDigital’s patents.

The Federal Circuit reversed the Commission’s findings and remanded for further proceedings.  In particular, the Federal Circuit found that the ITC had erred in its construction of the claim terms “code” and “increased power level,” which in turn had led to erroneous determinations of non-infringement.  With respect to the claim term “code,” the Federal Circuit found that the ITC had erred in limiting the term to spreading codes.  With respect to the claim term “increased power level,” the Federal Circuit found that the ITC should have construed “increased power level” to include both intermittent and continuous increases in power.  Accordingly, under the Federal Circuit’s broader constructions, the ITC’s determination that Nokia did not infringe the ‘966 and ‘847 patents needed to be reversed.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, August 13, 2012 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Attalla by 9 am Monday morning.

SoCal IP Institute :: August 6, 2012 :: Claim Construction

We will be discussing two Federal Circuit cases during our weekly SoCal IP Institute meeting on Monday, August 6, 2012. Brief synopses are presented below.

Grober v. Mako Prod. Inc., Case No. 2010-1519, -1527 (Fed. Cir. July 30, 2012) (attached).

Grober owns patent No. 6,611,662 towards a platform for stabilizing a camera for filming motion pictures from moving vehicles.  In 2004, Grober sued Mako for infringement of the ’662 patent and then Mako filed an inter partesreexamination.  While the reexamination was still pending, the district court held that Mako’s products did not infringe the ’662 patent and dismissed.  The district court looked at the claim term “payload platform” and determined that the term is limited to a horizontal surface, based on Grober’s statements made to the PTO in the pending reexamination.  The PTO eventually confirmed the validity of the asserted claims in the reexamination.

On appeal, the Federal Circuit held that Grober’s reexamination statements were not direct enough to constitute prosecution disclaimer.  Grober’s statements were not an unambiguous disavowal that clearly and unmistakably disclaims claim scope or meaning.  The Federal Circuit looked to the claim language and specification of the’662 patent to more broadly define “payload platform” to mean “a three-dimensional structure upon which the payload (e.g., a camera) is directly mounted upon or affixed to.”   Case remanded for reconsideration.

01 Communique Lab., Inc. v LogMeIn, Inc., Case No. 2011-1403 (Fed. Cir. July 31, 2012) (attached).

01 Communique owns Patent No. 6,928,479, which relates to technology that enables one computer to access another computer remotely via the Internet.  The patent discloses use of a locator server computer as an intermediary between a remote computer and a personal computer. In 2010, 01 Communique sued LogMeIn alleging infringement of the ’479 patent.  The district court entered summary judgment of noninfringement, based on construction of a single claim term “location facility.”  The ’479 patent describes a “location facility” as software on the locator server computer that locates the personal computer.  The district court held that the patent was limited to the location facility being on a single server, while LogMeIn’s software uses multiple servers.

The Federal Circuit vacated the summary judgment of noninfringement, finding the claim construction erroneous.  The Federal Circuit said the patent wasn’t limited to a single server, and ruled instead it could comprise “one or more computers.”

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, August 6, 2012 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Attalla by 9 am Monday morning.