SoCal IP Law Group

The SoCal IP Law Blog

Monthly Archives: April 2013

SoCal IP Institute :: April 29, 2013 :: ICANN’s gTLDs

Please join us for our weekly SoCal IP Institute meeting on Monday, April 29, 2013, for a presentation by Christine Kopitzke regarding ICANN’s new gTLDs. The articles listed below will provide some background for Monday’s discussion.

Launch of new generic top level domains – the Trademark Clearinghouse offers two new services to trademark owners to protect their brands” by Latham and Watkins.

What You Really Need to Know About ICANN’s Trademark Clearinghouse” by Doug Isenberg.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, April 29, 2013 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 Smith by 9 am Monday morning.

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SoCal IP Institute :: April 22, 2013 :: Patent interference and patent ownership

Our weekly SoCal IP Institute meeting on Monday, April 22, 2013 will be a discussion of two Federal Circuit cases – one regarding patent ownership and the other regarding a patent interference.

Dawson v. Dawson and Bowman (Fed. Circ. March 25, 2013) (available here).

The Federal Circuit affirmed the BPAI’s decision in a patent interference case finding that UCSF failed to establish sole conception by Dr. Dawson, and that Dr. Dawson did not conceive of the claimed inventions by himself prior to his collaboration with Dr. Bowman.

In re Morsa (Fed. Cir. April 5, 2013) (available here).

The Federal Circuit affirmed in part and vacated and remanded in part a decision from the BPAI. Rejection by the Board of Patent Appeals and Interferences of inventor’s utility patent claims related to a benefit information match mechanism are: 1) affirmed in part, where substantial evidence supports the Board’s factual determinations, and the Board did not err in concluding that claims 181, 184, 188-203, 206, 210-25, 228, 232-47, 250, and 254-68 would have been obvious in light of the prior art; but 2) vacated and remanded in part, where the Board performed an incorrect enablement analysis when it determined that claims 271 and 272 were anticipated.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, April 22, 2013 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 Smith by 9 am Monday morning.

SoCal IP Institute :: April 15, 2013 :: Exceptional case and willful infringement

Our weekly SoCal IP Institute meeting on Monday, April 15, 2013 will be a discussion of two Federal Circuit cases regarding patents.  Brief synopses of the cases appear below.

Checkpoint Systems, Inc. v. All-Tag Security S.A., et. al. (Fed. Cir. March 25, 2013) (available here).

At the district court, the defendant recovered attorney fees and costs after the court held that plaintiff’s electronic anti-shoplifting devices patent was not infringed, was invalid, and was unenforceable. The Federal Circuit reversed the district court’s finding. The Federal Circuit reversed and remanded, where: 1) the infringement charge was not shown to have been made in bad faith or objectively baseless; and 2) the district court’s determination that this was an exceptional case under 35 U.S.C. section 285 is not supported by the record.

Power Integrations, Inc. v. Fairchild Semiconductor International, Inc. (Fed. Cir. March 26, 2013) (available here).

Plaintiff owned patents related to power supplies for electronic devices. The district court held that defendants willfully infringed plaintiff’s patents and awarded damages to the defendant. The Federal Circuit: 1) affirmed the district court’s finding of non-obviousness; 2) affirmed in part and reversed in part the district court’s findings on claim construction; 3) vacated as to the district court’s order of remittitur and its attendant damages award; 4) reversed on the district court’s exclusion of evidence related to pre-notice price erosion and in its refusal to grant plaintiff a post-verdict accounting; and 5) vacated and remanded as to the district court’s finding of willful infringement.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, April 15, 2013 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 Smith by 9 am Monday morning.

 

SoCal IP Institute :: April 8, 2013 :: Trademark Concurrent Use and Design Patents

Our weekly SoCal IP Institute meeting on Monday, April 8, 2013 will be a discussion of one Federal Circuit case regarding design patents and a TTAB concurrent use proceeding decision. Brief synopses of the cases appear below.

In re Owens, Case No. 2010-1426 (Fed. Cir. March 26, 2013) (available here).

The Federal Circuit affirmed the BPAI’s rejection of design patent Application No. 29/253,172 for failure to comply with 35 U.S.C. § 112, ¶ 1. The ‘172 application was a continuation of a prior patented bottle, U.S. Design Pat. No. D531,515. The Federal Circuit affirmed the BPAI’s rejection, where: 1) the Board’s finding that nothing in the parent application’s disclosure suggested anything uniquely patentable about the top portion of the bottle’s front panel is supported by substantial evidence because the parent disclosure does not distinguish the now-claimed top trapezoidal portion of the panel from the rest of the pentagon in any way; and 2) unclaimed boundary lines typically should satisfy the written description requirement only if they make explicit a boundary that already exists, but was unclaimed, in the original disclosure.

America’s Best Franchising, Inc. v. Roger Abbott (TTAB March 20, 2013) (available here).

In this concurrent use proceeding, the Board awarded the applicant America’s Best Franchising (ABF) concurrent use registrations for three marks in the entire United States except for the state of Arizona. Applicant ABF is the junior user and ABF conceded that Abbott uses his mark in the state of Arizona. The Board held that even though Abbott was the first user, his “inaction over a considerable period of time, abandoned [his] right to expand use of the mark… outside of the trading area, and that by virtue of such abandonment, [Abbott’s] prior use of the mark cannot serve to preclude [ABF], a[n] innocent user.”

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, April 8, 2013 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 Smith by 9 am Monday morning.