SoCal IP Law Group

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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.

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