SoCal IP Law Group

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Tag Archives: 37 C.F.R. 1.56(b)

SoCal IP Institute :: August 1, 2011

We will be discussing the following two cases in our weekly meeting on Monday, August 1, 2011. Brief synopses of the two cases are presented below.

TrafficSchool.com, Inc. v. EDriver Inc. (9th Cir. 7/28/2011) (attached)

In an action arising from a very close imitation of the state DMV’s website by a private, commercial website and alleging unfair competition and false advertising, judgment of the district court is affirmed in part and reversed in part where the court held that defendants violated section 43(a) of the Lanham Act, 15 U.S.C. section 1125(a), but rejected plaintiff’s state unfair competition claims with an injunction ordering the defendants to publish a disclaimer on its website, while denying plaintiffs’ monetary relief and attorney’s fees.

General Protecht Gp. (Zh. Dongzheng) v. Leviton Mfg. (Fed. Cir. 7/8/2011) (attached)

In a dispute arising from the grant of a preliminary injunction to enforce a forum selection clause in a settlement agreement, judgment of the district court is affirmed where it correctly determined that the forum selection clause applies to the case and did not abuse its discretion in granting the preliminary injunction.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, August 1, 2011 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 Amanda Jones by 9 am Monday morning.

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SoCal IP Institute :: July 25, 2011 :: Exceptional Cases Under 35 U.S.C. 285 and The USPTO’s Proposed Changes to 37 C.F.R. 1.56(b)

We will be discussing one district court case awarding attorney’s fees under 35 U.S.C. 285 in a patent suit and the USPTO’s proposed new rule 1.56(b) after Therasense.  We will discuss the case and proposed rule in our weekly SoCal IP Institute meeting on Monday, July 25, 2011.  Brief synopses are presented below.

Precision Links, Inc. v. USA Product Group, Inc., Case No. 3:08cv576 (W.D.N.C. July 13, 2011) (attached). This is a district court decision from a district court we do not typically follow closely, but the decision implicates patent plaintiff’s potential liability for bringing a patent suit without an adequate pre-filing investigation.  In the case, Precision Links brought suit for infringement of a patent related to a tie-down strap used to hold cargo in place as it is transported.  After the defendants succeeded on a motion for summary judgment of noninfringement, they moved for an award of attorneys’ fees and costs under 35 U.S.C. 285.  The primary basis for the assertion that the case was “exceptional” was that the case was instituted in bad faith and objectively unreasonable.

The court agreed with the defendants who argued that the claim construction for the phrase “dimensioned for the passage therethrough” was completely lacking in support and was, therefore frivolous.  The court also agreed that the opinion of counsel sought by the plaintiff prior to bringing suit failed to follow the canons of claim construction, included no citations to the specification or prosecution history, and provided no analysis as to how the counsel chose to construe the patent claims.  Accordingly, the opinion relied upon by the plaintiff before bringing suit was unreasonable.  As a result, the court concluded that the case was exception under 35 U.S.C. 285 and awarded attorneys’ fees and costs.

Proposed Amendment to 37 C.F.R  1.56(b) (attached).  This is the USPTO’s revision to 37 C.F.R.  1.56(b) in response to the Therasense Federal Circuit inequitable conduct decision.

The proposed amendment, now open for comment, is as follows:

(b) Information is material to patentability if it is material under the standard set forth in Therasense, Inc. v. Becton, Dickinson & Co., ___ F.3d ___ (Fed. Cir. 2011). Information is material to patentability under Therasense if:

  1. The Office would not allow a claim if it were aware of the information, applying the preponderance of the evidence standard and giving the claim its broadest reasonable construction; or
  2. The applicant engages in affirmative egregious misconduct before the Office as to the information.

The proposed change mirrors the language of the Therasense decision.  This change lowers the bar on the duty of disclosure.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, July 25, 2011 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 Amanda Jones by 9 am Monday morning.