SoCal IP Law Group

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Monthly Archives: October 2014

SoCal IP Institute :: October 27, 2014 :: Divided Infringement of System Claims and Pleading Inequitable Conduct

Our weekly SoCal IP Institute meeting on Monday, October 27, 2014 will be a discussion of two older cases. The first is a 2011 Federal Circuit case regarding divided infringement of a system claim and the second is a district court case on the requirements of pleading inequitable conduct after Therasense.

Centillion Data Systems, LLC v. Qwest Corp. Int’l et al., No. 2010-1110, 01131 (Fed. Cir. Jan 20, 2011) (available here).  Here, Centillion appealed a decision finding that there was no direct infringement of a system claim by Qwest.  In particular, Centillion’s claims included “backend” and “frontend” computer components such that the claims relied upon user’s computers to cause the backend components (servers, etc.) to begin to function.

On appeal, while discussing “use” infringement under 271(a), the Federal Circuit held “that to ‘use’ a system for purposes of infringement, a party must put the invention into service, i.e., control the system as a whole and obtain benefit from it.”  Qwest, as a matter of law, cannot use its own system that is reliant upon the personal computers of its users.  However, in this case, Qwest’s customers did use the system and were the direct infringers. However, Qwest did not vicariously infringe because “Qwest in no way directs its customers to perform nor do its customers act as its agents. While Qwest provides software and technical assistance, it is entirely the decision of the customer whether to install and operate this software on its personal computer data processing means.”

Cutsforth v. LEMM Liquidating, 2013 U.S. Dis. LEXIS 79385 (June 6, 2013) (available here).  Here, a defendant answered with a counterclaim of inequitable conduct and the plaintiff filed a motion to strike from the complaint.  The district court here found that LEMM Liquidating had adequately pled inequitable conduct where Cutsforth had previously asserted two patents during the pendency of a third and been presented with invalidity charts identifying several references that allegedly invalidated the patents.  That earlier case was soon thereafter dismissed prior to even an early meeting of counsel in the case.  Cutsforth submitted the references identified by that defendant in the then-pending patent, but did not provide the invalidity charts provided by that defendant to the PTO.  On that basis, the district court here found this withholding of the invalidity charts sufficient to meet the Therasense requirements at least at the pleading stage.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, October 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 :: October 20, 2014 :: Copyrights

Our weekly SoCal IP Institute meeting on Monday, October 20, 2014 will be a discussion of copyrights. Chris Kopitzke will present a summary of the State Bar of California’s, “Copyright Office Comes to California” event. In addition, we will discuss the following two cases (one of which was previously discussed, but is a good refresher).

Metropolitan Regional Information Systems, Inc. v. American Home Realty Network, Inc. (4th Cir. 7/17/2013) (available here).  The plaintiff, MRIS, offers an online multiple listing service for real estate brokers and agents. Subscribers must pay a fee for MRIS’s service, which allows subscribers to upload their real estate listings. Subscribers must agree to assign to MRIS the copyrights in each photograph included in a listing. The defendant, AHRN is a California real estate broker that owns and operates the website NeighborCity.com. Plaintiff sued defendant and requested a preliminary injunction against defendant’s use of plaintiff’s photographs on its website. The district court granted plaintiff a preliminary injunction, and the 9th Circuit affirmed the district court’s preliminary injunction order.

Alaska Stock v. Houghton Mifflin, Docket No. 10-36010 (9th Cir. March 18, 2014) (available here). Reversing the district court’s dismissal of a copyright infringement action, the panel held that copyright registration of a collective work registers the component works within it. The panel held that the Register of Copyrights had authority to prescribe a form and grant certificates extending registration to individual stock photographs within a collection where the names of each of the photographers, and titles for each of the photographs, were not provided on the registration applications. Agreeing with other Circuits, and deferring to the Copyright Office’s interpretation of the Copyright Act, the 9th Circuit panel held that where the photographers had assigned their ownership of their copyrights in their images to the stock agency, and the stock agency had registered the collection, both the collection as a whole and the individual images were registered.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, October 20, 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.

SoCal IP Institute :: October 13, 2014 :: Trade Dress Includes “Look and Feel” of Website; Delaware judge unseals $1.4 million Judgment

Our weekly SoCal IP Institute meeting on Monday, October 13, 2014 will be a discussion of a recent N.D. Cal case discussing trade dress and a decision by a federal judge to unseal an Order to expose an extortionist company:

Ingrid & Isabel, LLC v. Baby Be Mine, LLC et al., No. 13-cv-01806 (N.D. Cal Oct. 1 2014) (available here).  Both parties sell belly bands for pregnant women.  The crux of  the suit was that defendants copied plaintiff’s trade dress — namely, the “look and feel” of its website.   The court concluded that the look and feel of a website could constitute a trade dress protected by federal trademark law.

In Summit Data Systems, LLC v. EMC Corp. et al, No. 10-749-GMS (Sept. 2, 2014) (available here), a federal judge has unsealed his $1.4 million Judgment as means of deterring “reckless and wasteful litigation” whereby Acacia Research subsidiary Summit Data Systems was suing companies for patent infringement primarily to extort nuisance settlements.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, October 13, 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.

SoCal IP Institute :: October 6, 2014 :: Inequitable Conduct and Acquired Distinctiveness in the TTAB

Our weekly SoCal IP Institute meeting on Monday, October 6, 2014 will be a discussion of a recent inequitable conduct case and a TTAB decision on acquired distinctiveness of trade dress. Brief synopses of the cases appear below.

American CalCar, Inc. v. Honda, No. 2013-1061 (Fed. Cir. Sept. 26, 2014) (available here).  Calcar appealed from a decision of the Southern District of California that the asserted three patents, related to in-car navigation systems, were unenforceable for inequitable conduct before the U.S. Patent and Trademark Office.  In short, the inventor, who also prepared the patent applications, failed to disclose that he had seen and photographed a Honda-created navigation system before filing.  Honda alleged that the details that he had seen in the Honda system were exactly those details that he eventually claimed in the asserted patents.  The case proceeded to trial.  After trial, the court found the two otherwise-valid patents unenforceable for inequitable conduct.

During the appeal process, the Therasense case was decided, altering the standard for finding equitable conduct.  The case was remanded for additional briefing on “materiality” and the district court still found that “but for” the withholding of the information, the patent would not have issued and that the inventor had specific intent to deceive the Patent Office.  This case is somewhat strange because the district court found that a particular limitation related to the interface was not disclosed in the Honda prior-art system, but still found the “but for” causation.  That is, the prior art did not expressly disclose one of the limitations, but was still sufficient for a finding of materiality because what it did disclose would “perform the same function” as the claim limitation that was not otherwise shown. As to intent, the inventor disclosed the existence of the earlier system, but did not disclose his photographs and other notes regarding the system.  Thus, he acted with the specific intent required and the district court’s decision finding all three of the asserted patents unenforceable for his inequitable conduct was affirmed.

In re Koninklijke Philips Electronics N.V., Ser. No. 85092079 (Sept. 26, 2014) (available here). Philips sought to register the “base assembly” of its electric toothbrushes on the Principal Register as trade dress.  It has a series of indentations around the base of the head of the toothbrush.  After a refusal to register, the TTAB affirmed finding that 10 years of continuous use, without “look-for” advertising, and in spite of voluminous sales was insufficient to demonstrate that the product had obtained “acquired distinctiveness” such that the consuming public associated the base assembly with the Philips brand.  The examining attorney’s refusal to register was affirmed.

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