SoCal IP Law Group

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Monthly Archives: January 2014

SoCal IP Institute :: January 27, 2014 :: Burden of persuasion of infringement in a declaratory judgment action and Contributory Infringement under the ACPA

Our weekly SoCal IP Institute meeting on Monday, January 27, 2014 will be a discussion of the burden of persuasion of infringement in a declaratory judgment action and contributory infringement under the ACPA . Brief synopses appear below.

Medtronic, Inc. v. Mirowski Family Ventures LLC, Case No. 12-1128 (U.S. SCt. 1/22/2014) (available here). Mirowski owns patents related to implantable heart stimulators. Medtronic entered into a licensing agreement with Mirowski which allowed Medtronic to practice Mirowski’s patents in exchange for royalty payments. Mirowski later informed Medtronic that many of Medtronic’s products infringed Mirowski’s patents. Medtronic then brought a declaratory judgment action against Mirowki. The district court held that Mirowski had the burden of proving infringement, since they were the party asserting infringement. On appeal, the Federal Circuit reversed. The Supreme Court reversed the Federal Circuit’s decision and held that the patentee holds the burden of persuasion to provide infringement.

Petronas v. GoDaddy.com, Case No. 12-15584 (9th Cir. 12/4/2013) (available here). Plaintiff Petronas sued GoDaddy.com alleging that GoDaddy.com engaged in contributory cybersquatting under the ACPA. The district court held that the ACPA did not provide a cause of action for contributory cybersquatting. The 9th Circuit affirmed the district court’s decision.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, January 27, 2014, 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 :: January 20, 2014 :: Inhale Inc. v. Starbuzz Tobacco (9th Cir. 2014) & In re Kent Pederson (TTAB Dec. 30, 2013)

Our weekly SoCal IP Institute meeting on Monday, January 20, 2014 will be a discussion of the following cases:

In INHALE, INC. V. STARBUZZ TOBACCO, INC. (9th Cir. 2014), the 9th Circuit held that a copyright for a  hookah water container could not be enforced because it was a useful article and it did not incorporate sculptural features that could be identified separately from, and were capable of existing independently of, the container’s utilitarian aspects.  The panel also affirmed the award of attorneys  fees to the defendant.  The case can be accessed here.

In IN RE KENT PEDERSON (TTAB Dec. 30, 2013), on an appeal from a final refusal to register the mark “LAKOTA” for Medicinal herb remedies, the Board upheld the refusal based on the examining attorney’s findings that the applied-for mark consists of or includes matter which may falsely suggest a connection with the Native American Lakota people.  The case can be accessed here: Lakota case.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, January 20, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of California MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

Views on the 2014 Consumer Electronics Show in Las Vegas, by Steve Sereboff

The biggest trade show in Las Vegas is the annual Consumer Electronics Show (CES). Since 1978 CES has been a January staple in Las Vegas. I have attended CES from time to time since 1992.

Walking the show floor at CES or any other trade show exposes you to a wealth of market and technical information in a very short period of time. It also allows you to meet business acquaintances without the hassles of scheduling or long meeting time commitments. As an IP attorney, I enjoy learning about new technologies and seeing market trends. I also look for evidence of infringement of my clients’ IP rights, and try to think about how to position my clients’ IP rights to maximize their value. Over the years I have helped clients with competitive intelligence garnered from friendly salespeople. One “no-no” – pitching to the people working a booth. People working a booth are there to sell, and it is bad form to distract them from that and to make them a captive audience to your pitch.

What’s Hot

  • Accessories for smartphones and tablets, especially cases, but also ear buds, head phones and portable speakers. Bluetooth has taken hold in this segment, and seems to be the technology of choice for short range communications.
  • Smart and connected devices, especially in the health and fitness market. I think the “quantified self” enabled by many of these products foreshadows more integrated solutions that not only gather and analyze data, but dynamically change the world around you to enhance your health and reduce dependence on human service providers. I expected to see athletic goods companies like Nike and Reebok at CES, but I was surprised to see mattress companies like Sealy. This shows how electronics have become important even in ordinary consumer goods. Maybe next year we will see clothing companies, too.
  • Telematics – mostly in the form of automotive electronics from big auto companies, but also plenty of products from independent vendors. This was big last year and continued again in 2014. On the other hand, though car audio remains big, it has shrunk a lot.
  • 3D printers, but until somebody finds a killer app for 3D printers (how about custom shaped and colored eyeglasses that accept a standard lens?) the market will remain a niche.
  • China – massive booths from a handful of big Chinese companies, and hordes of small booths from smaller ones.
  • Mobile video, in the form of GoPro type cameras and telepresence devices, which are basically a flat panel display mounted on a Segway-type base. Both seem like niches, but apparently quite lucrative for now.

What’s Not

  • Touting design. In years past, vendors would brag about having great design, like Apple. Now pretty much everyone has good design, and it is expected.
  • Schwag. In the past, you needed an extra suit case to carry all the free t-shirts and other giveaways. In the past, products were judged on technical merit, so schwag introduced some emotion. Now that most products have good design, vendors don’t need schwag for an emotional tug.
  • TVs and flat panels have pretty much compacted into a handful of very big companies, most of whom were bragging about their (yawn) curved and 4k displays. The manufacturers make a ton of money on these products and can afford big trade show displays, but I doubt there will be demand for curved or 4k displays on the same scale of really big displays. 3D displays got very little attention.
  • Personal computer, and accessories and accessories for PCs. The PC business remains strong, but it seems to be heading into a niche, along with printers and personal storage. Microsoft, an old stalwart, is no longer there. Nor was HP. Dell, IBM and Lenovo had meeting rooms but no exhibit space.
  • Home theater and hifi.
  • Solar. CES isn’t the right show for roof-mounted panels, but I was surprised by the absence of solar powered products as in the past.

Some of SoCal IP’s clients exhibiting or having meeting space at CES:

  1. Oculus VR – the Oculus Rift VR goggles are incredible, and I was jazzed to see them prominent in Intel’s massive exhibit area.
  2. Panasonic – one of the biggest exhibit spaces, with incredibly clear, crisp and fast flat panel displays
  3. Epson America – Epson’s Moverio AR glasses are also impressive, and have some very cool uses in medicine and manufacturing.
  4. Logicube – showing their industry leading forensic disk copying systems.
  5. Blue Microphones – Blue Mic is working on a new headphone, and their booth was a teaser
  6. DTS – leveraging its strength in audio codes, DTS was demoing its Headphone X technology to dozens of people at once. With ordinary stereo headphones, Headphone X gives 11 channel surround sound. Super cool.
  7. Interlink Electronics – the leader in force sensors6
  8. iTrax – hi def audio
  9. Performance Designed Products – gaming peripherals

SoCal IP Institute :: January 13, 2014 :: Sherlock Holmes in the Public Domain and “Tacking” of Trademark Rights

Our weekly SoCal IP Institute meeting on Monday, January 13, 2014 will be a discussion of trademark tacking and copyright expiration. Brief synopses appear below.

In Klinger v. Conan Doyle Estate, No. 13 C. 1226 (N. Dist. Ill. Dec. 23, 2013) (available here).  Mr. Klinger sought a declaratory judgment that at least some of the Sherlock Holmes characters and story elements were in the public domain and freely available for use.  The Conan Doyle Estate argued that the characters, at a minimum, were in development throughout the series, and therefore, could not yet be in the public domain.  Because at least the pre-1923 character elements and stories had fallen out of copyright protection, the Northern District of Illinois applied the “increments of expression” rationale and found that the pre-1923 elements were available for use, while post-1923 story elements were not.

Hana Financial v. Hana Bank, No. 11-56678 (9th Cir. 2013) (available here). The Ninth Circuit affirmed the district court’s judgment after trial, that the properly-instructed jury was entitled to make the fact finding that the doctrine of tacking applied to establish the defendant’s priority as the first to use a trademark in the sale of goods or services. The tacking doctrine allows a party to “tack” the date of the user’s first use of a mark onto a subsequent mark to establish trademark priority, and thus ownership, where the two marks are so similar that consumers would generally regard them as being the same.

Regardless, the panel held that, while the evidence could be construed to support the plaintiff’s position, the plaintiff did not make the required showing, as the losing party in a jury trial, that its interpretation of the evidence was the only reasonable one. The panel further held that the jury received an instruction that correctly conveyed the narrowness of the tacking doctrine, and it could have reasonably concluded that the ordinary purchasers of the financial services at issue likely had a consistent, continuous commercial impression of the services the defendant offered and their origin.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, January 13, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of California MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: January 6, 2014 :: Attorneys’ fees in patent infringement cases and a trademark infringement case

Happy New Year!

Our weekly SoCal IP Institute meeting on Monday, January 6, 2014 will be a discussion of trademark infringement and copyrights in space. Brief synopses appear below.

Kilopass Tech. v. Sidense Corp., Case No. 2013-1193 (Fed. Cir. 12/26/2013) (available here). Plaintiff Kilopass and defendant Sidense are competitors in the embedded non-volatile memory (“NVM”) market. Kilopass sued Sidense asserting patent infringement. The district court granted summary judgment of noninfringement in favor or Sidense. Kilopass appealed to the Federal Circuit and the Federal Circuit affirmed the summary judgment ruling. Sidense then filed a motion for attorneys’ fees. The district court denied Sidense’s motion. Sidense then appealed to the Federal Circuit. On appeal, the Federal Circuit vacated the district court’s ruling and remanded it.

Hokto Kinoko Co. v. Concord Farms, Inc., Case No. 11-56461 (9th Cir. 12/24/2013) (available here). Plaintiff Hokto sued defendant Concord Farms for trademark infringement asserting that the defendant wrongly imported mushrooms and used plaintiff’s marks for Certified Organic Mushrooms. Plaintiff asserted that defendant used plaintiff’s marks event though the imported mushrooms were cultivated in Japan under nonorganic standards by the plaintiff’s parent company. The district court granted summary judgment in favor of the plaintiff and also granted a permanent injunction against the defendant. On appeal, the Ninth Circuit affirmed the district court’s rulings. 

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, January 6, 2014 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.