IP News

Bourbon Producer Wins Wax Seal Protection at Sixth Circuit

On May 9, 2012, the Sixth Circuit panel of Judges Boyce F. Martin, Jr., Karen Nelson Moore, and Deborah L. Cook affirmed a lower court judgment that bourbon producer Maker's Mark Distillery, Inc. is entitled to injunctive relief in a case against tequila maker Casa Cuervo, S.A. de C.V. for trademark infringement. The Sixth Circuit held that Maker's Mark's red “dripping wax seal” is a valid trademark and that Cuervo had infringed that trademark. Slip Op. at 7. Cuervo argued that the dripping wax was merely functional, acting as a seal on the top of the bottle, and therefore not enforceable as a trademark. Id. at 8. The Sixth Circuit disagreed, holding that “there is more than one way to seal a bottle with wax to make it look appealing” and “red wax is not the only pleasing color of wax ' nor does it put competitors at a significant non-reputation related disadvantage to be prevented from using red dripping wax.” Id. at 9 (internal quotation omitted). The Sixth Circuit agreed with the district court that the mark used by Cuervo ' red dripping wax on the bottle ' was confusingly similar to Maker's Mark's valid trademark.

BPAI Impermissibly Applied Recapture Doctrine

On May 8, 2012, the Federal Circuit panel of judges Alan D. Lourie, Alvin A. Schall, and Sharon Prost delivered its opinion in In re Youman, No. 11-1136, a critical decision in reissue jurisprudence. The Federal Circuit held that the Board of Patent Appeals and Interferences (“BPAI”) had misapplied the recapture analysis. The BPAI had held that the attempt to broaden the scope of the claims in reissue was not proper, as the broadened claims recaptured subject matter that was surrendered during prosecution and weren't merely “overlooked aspects” of the invention. Slip Op. at 7-8.

The Federal Circuit reversed. First, the panel held that the BPAI improperly failed to consider whether the reissued claim was broadened or merely modified. “[I]f the patentee modifies the added limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue.” Id. at 19. Because the BPAI failed to distinguish this case from instances where a limitation is deleted in its entirety, the Federal Circuit vacated and remanded. Second, the Federal Circuit held that the BPAI improperly failed to consider whether the reissued claims were materially narrowed in other respects to prevent triggering the recapture rule. Id. at 20. The BPAI instead simply concluded that the other limitations added during reissue were not directed to an “overlooked aspect” of the invention, which is a “separate inquiry.” Id.

Pair of Federal Circuit Opinions Affirms Legal Malpractice Jurisdiction

The Federal Circuit issued two opinions affirming that jurisdiction in patent malpractice cases resides solely at the Federal Circuit. The first, Landmark Screens, Inc. v. Morgan, Lewis, & Bockius, LLP, No. 2011-1297, arose from Landmark's counsel's alleged errors in filing a divisional application of a prior published application, which led to problems under 35 U.S.C. ' 102(b). Instead of apprising Landmark of this situation, Landmark's counsel allegedly concealed the malpractice until Landmark's officer called for a status report and was informed that the claims of the divisional application were “lost.” Landmark originally filed a malpractice action in California state court, which was dismissed for lack of subject matter jurisdiction. Slip Op. at 6. The state court reasoned that the federal courts have exclusive jurisdiction over malpractice actions when they present a substantial question of patent law. Id.

The same day the state court action was dismissed, Landmark filed an action in the Northern District of California, re-asserting the same claims and adding a cause of action for breach of contract. Such complaint was later amended to add a cause of action for fraud. All of these allegations were dismissed as failing to comply with California's statute of limitations.

The Federal Circuit agreed that federal court was the proper venue for such malpractice claims, as “the underlying question here is whether Landmark would have been able to achieve patent protection absent the alleged malpractice.” Slip Op. at 8. However, the Federal Circuit also held that the district court should have equitably tolled the statute of limitations while the case was pending in state court. Id. at 15.

In a case decided May 4, 2012, Minkus v. Gibbons, P.C., No. 11-1178, the Federal Circuit held that it maintains jurisdiction over patent malpractice actions. The panel of judges Randall R. Rader, Kathleen M. O'Malley, and Jimmie V. Reyna ruled that the presence of the “suit within a suit” in malpractice cases necessarily gives rise to a substantial question of patent law. Slip Op. at 12. Writing in concurrence, Judge O'Malley called for en banc review of whether it is proper for the Federal Circuit to consider state law malpractice claims. Slip Op. at 2 (O'Malley, J., concurring).

ITC Judge Sanctions Apple Counsel

Judge Thomas Pender, one of the newest Administrative Law Judges to preside over ' 337 Investigations at the International Trade Commission, has sanctioned counsel for Apple over misrepresentations he made during oral argument and in a prehearing brief. In Certain Wireless Communication Devices, Portable Music and Data Processing Devices, Computers, and Components Thereof (337-TA-745), Judge Pender issued Order No. 34, sanctioning Apple's counsel for misstating the position of Apple's expert and contradicting arguments in his rebuttal expert report. Order at 2. Apple's counsel had blamed the confusion on a combination of “miscommunication with a law firm associate and the press of litigation before the ITC.” Id. at 4. Judge Pender did not accept this explanation, holding that “partners are responsible for communication with their associates” and that the compressed ITC trial schedule is “known and accepted.” Id. The sanctions that Judge Pender ordered involved costs associated with responding to the faulty argument beginning in the pre-hearing brief, and also costs associated with responding to his show-cause order. Id. at 5.

Lexis and Westlaw Escape Copyright Infringement Claims

In White, et al. v. West Publishing Corporation et al., No. 12-1340, Judge Jed Rakoff of the Southern District of New York dismissed copyright infringement claims that had been brought by attorneys against electronic database companies LexisNexis and Westlaw. The attorneys had alleged that their works, including briefs, motions, and other documents filed in court, had been reposted to the electronic databases without their permission. Judge Rakoff dismissed the claims in a ruling from the bench and did not allow plaintiffs leave to replead, noting that none of the works had been registered with the U.S. Copyright Office.

Apple/Samsung Tablet Wars Rage On

On May 14, 2012, the Federal Circuit issued its opinion ' what is sure to be the first of many ' in Apple, Inc. v. Samsung Electronics Co., Ltd., No. 2012-1105. The Federal Circuit remanded the district court's decision denying preliminary injunctive relief to Apple, holding that the district court erred in concluding that Apple was not likely to succeed on the merits with respect to one of the asserted patents, U.S. Design Patent No. D504,889. Slip Op. at 25. The Federal Circuit held that the district court's analysis of two prior art references was in error, and that the primary prior art reference did not create “the same visual impression as the D'889 patent.” Id. at 28. Additionally, the Federal Circuit held that the secondary reference could not “bridge the gap between [the primary reference] and the D'889 design.” Id. at 30. Further, the secondary reference is “so different” from the primary reference that the two could not be combined. Id. “Rather than looking to the 'general concept' of a tablet, the district court should have focused on the distinctive 'visual appearances' of the reference and the claimed design.” Id. at 31. The portion of the district court's decision related to the D'889 patent was vacated and remanded for further proceedings.

Federal Circuit Affirms BPAI in Refusing to Issue Stroke Treatment Patent

The Federal Circuit panel of Judges Alan D. Lourie, Timothy B. Dyk, and Sharon Prost held on May 8, 2012 in In re Hugh Edward Montgomery, et al., that the BPAI was correct in not issuing U.S. Patent Application No. 11/118,824 because it was anticipated. The application, directed to methods of delivering inhibitors of the renin-angiotensin system (“RAS”), was initially rejected by the USPTO as anticipated by four separate studies which describe the administration of RAS inhibitors to subjects at risk of stroke. Slip Op. at 4. The BPAI affirmed this rejection, explaining that “each reference teaches the administration of ramipril to stroke-prone patients.” Id. at 6. The Federal Circuit also affirmed, disagreeing with the patentee's argument that the claims included an efficacy requirement that was not present in the studies. “[W]e agree with the Board that even if the claim includes an efficacy requirement, efficacy is inherent in carrying out the claim steps.” Id. at 11. The Federal Circuit reiterated its canon that “newly discovered results of known processes directed to the same purpose are not patentable because such results are inherent.” Id. Judge Lourie filed a dissenting opinion, arguing that an unbounded, broad view of inherency “threatens to stymie innovation by withdrawing from the realm of patentability that which has not before been known, used, or benefited from.” Slip Op. at 2 (Lourie, J., dissenting). Judge Lourie stated that “none of the four cited references describes the claimed invention or the practice of a method that inherently, necessarily, carries out the claimed process.” Id. at 3.

Jeffrey S. Ginsberg is a partner and Joseph Mercadante is an associate in the New York office of Kenyon & Kenyon LLP.

Mixed Verdict Reached in Oracle-Google Copyright Trial

A San Francisco jury handed down a mixed verdict in the closely watched case of Oracle America, Inc. v. Google Inc., No. 10-3561 (N.D. Cal.). The jury held that Google infringed some of Oracle's copyrights for its Java software, but deadlocked on whether Google's actions constituted fair use.

Oracle launched the suit on Aug. 12, 2010, alleging that Google's Android operating system infringes seven patents as well as Oracle's copyrights in its Java software. Should the verdict remain untouched, the case would be a victory for Google as it would not have to redesign its Android operating system. The case is proceeding with Oracle's patent infringement claims.

Bourbon Producer Wins Wax Seal Protection at Sixth Circuit

On May 9, 2012, the Sixth Circuit panel of Judges Boyce F. Martin, Jr., Karen Nelson Moore, and Deborah L. Cook affirmed a lower court judgment that bourbon producer Maker's Mark Distillery, Inc. is entitled to injunctive relief in a case against tequila maker Casa Cuervo, S.A. de C.V. for trademark infringement. The Sixth Circuit held that Maker's Mark's red “dripping wax seal” is a valid trademark and that Cuervo had infringed that trademark. Slip Op. at 7. Cuervo argued that the dripping wax was merely functional, acting as a seal on the top of the bottle, and therefore not enforceable as a trademark. Id. at 8. The Sixth Circuit disagreed, holding that “there is more than one way to seal a bottle with wax to make it look appealing” and “red wax is not the only pleasing color of wax ' nor does it put competitors at a significant non-reputation related disadvantage to be prevented from using red dripping wax.” Id. at 9 (internal quotation omitted). The Sixth Circuit agreed with the district court that the mark used by Cuervo ' red dripping wax on the bottle ' was confusingly similar to Maker's Mark's valid trademark.

BPAI Impermissibly Applied Recapture Doctrine

On May 8, 2012, the Federal Circuit panel of judges Alan D. Lourie, Alvin A. Schall, and Sharon Prost delivered its opinion in In re Youman, No. 11-1136, a critical decision in reissue jurisprudence. The Federal Circuit held that the Board of Patent Appeals and Interferences (“BPAI”) had misapplied the recapture analysis. The BPAI had held that the attempt to broaden the scope of the claims in reissue was not proper, as the broadened claims recaptured subject matter that was surrendered during prosecution and weren't merely “overlooked aspects” of the invention. Slip Op. at 7-8.

The Federal Circuit reversed. First, the panel held that the BPAI improperly failed to consider whether the reissued claim was broadened or merely modified. “[I]f the patentee modifies the added limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue.” Id. at 19. Because the BPAI failed to distinguish this case from instances where a limitation is deleted in its entirety, the Federal Circuit vacated and remanded. Second, the Federal Circuit held that the BPAI improperly failed to consider whether the reissued claims were materially narrowed in other respects to prevent triggering the recapture rule. Id. at 20. The BPAI instead simply concluded that the other limitations added during reissue were not directed to an “overlooked aspect” of the invention, which is a “separate inquiry.” Id.

Pair of Federal Circuit Opinions Affirms Legal Malpractice Jurisdiction

The Federal Circuit issued two opinions affirming that jurisdiction in patent malpractice cases resides solely at the Federal Circuit. The first, Landmark Screens, Inc. v. Morgan, Lewis, & Bockius, LLP, No. 2011-1297, arose from Landmark's counsel's alleged errors in filing a divisional application of a prior published application, which led to problems under 35 U.S.C. ' 102(b). Instead of apprising Landmark of this situation, Landmark's counsel allegedly concealed the malpractice until Landmark's officer called for a status report and was informed that the claims of the divisional application were “lost.” Landmark originally filed a malpractice action in California state court, which was dismissed for lack of subject matter jurisdiction. Slip Op. at 6. The state court reasoned that the federal courts have exclusive jurisdiction over malpractice actions when they present a substantial question of patent law. Id.

The same day the state court action was dismissed, Landmark filed an action in the Northern District of California, re-asserting the same claims and adding a cause of action for breach of contract. Such complaint was later amended to add a cause of action for fraud. All of these allegations were dismissed as failing to comply with California's statute of limitations.

The Federal Circuit agreed that federal court was the proper venue for such malpractice claims, as “the underlying question here is whether Landmark would have been able to achieve patent protection absent the alleged malpractice.” Slip Op. at 8. However, the Federal Circuit also held that the district court should have equitably tolled the statute of limitations while the case was pending in state court. Id. at 15.

In a case decided May 4, 2012, Minkus v. Gibbons, P.C., No. 11-1178, the Federal Circuit held that it maintains jurisdiction over patent malpractice actions. The panel of judges Randall R. Rader, Kathleen M. O'Malley, and Jimmie V. Reyna ruled that the presence of the “suit within a suit” in malpractice cases necessarily gives rise to a substantial question of patent law. Slip Op. at 12. Writing in concurrence, Judge O'Malley called for en banc review of whether it is proper for the Federal Circuit to consider state law malpractice claims. Slip Op. at 2 (O'Malley, J., concurring).

ITC Judge Sanctions Apple Counsel

Judge Thomas Pender, one of the newest Administrative Law Judges to preside over ' 337 Investigations at the International Trade Commission, has sanctioned counsel for Apple over misrepresentations he made during oral argument and in a prehearing brief. In Certain Wireless Communication Devices, Portable Music and Data Processing Devices, Computers, and Components Thereof (337-TA-745), Judge Pender issued Order No. 34, sanctioning Apple's counsel for misstating the position of Apple's expert and contradicting arguments in his rebuttal expert report. Order at 2. Apple's counsel had blamed the confusion on a combination of “miscommunication with a law firm associate and the press of litigation before the ITC.” Id. at 4. Judge Pender did not accept this explanation, holding that “partners are responsible for communication with their associates” and that the compressed ITC trial schedule is “known and accepted.” Id. The sanctions that Judge Pender ordered involved costs associated with responding to the faulty argument beginning in the pre-hearing brief, and also costs associated with responding to his show-cause order. Id. at 5.

Lexis and Westlaw Escape Copyright Infringement Claims

In White, et al. v. West Publishing Corporation et al., No. 12-1340, Judge Jed Rakoff of the Southern District of New York dismissed copyright infringement claims that had been brought by attorneys against electronic database companies LexisNexis and Westlaw. The attorneys had alleged that their works, including briefs, motions, and other documents filed in court, had been reposted to the electronic databases without their permission. Judge Rakoff dismissed the claims in a ruling from the bench and did not allow plaintiffs leave to replead, noting that none of the works had been registered with the U.S. Copyright Office.

Apple/Samsung Tablet Wars Rage On

On May 14, 2012, the Federal Circuit issued its opinion ' what is sure to be the first of many ' in Apple, Inc. v. Samsung Electronics Co., Ltd., No. 2012-1105. The Federal Circuit remanded the district court's decision denying preliminary injunctive relief to Apple, holding that the district court erred in concluding that Apple was not likely to succeed on the merits with respect to one of the asserted patents, U.S. Design Patent No. D504,889. Slip Op. at 25. The Federal Circuit held that the district court's analysis of two prior art references was in error, and that the primary prior art reference did not create “the same visual impression as the D'889 patent.” Id. at 28. Additionally, the Federal Circuit held that the secondary reference could not “bridge the gap between [the primary reference] and the D'889 design.” Id. at 30. Further, the secondary reference is “so different” from the primary reference that the two could not be combined. Id. “Rather than looking to the 'general concept' of a tablet, the district court should have focused on the distinctive 'visual appearances' of the reference and the claimed design.” Id. at 31. The portion of the district court's decision related to the D'889 patent was vacated and remanded for further proceedings.

Federal Circuit Affirms BPAI in Refusing to Issue Stroke Treatment Patent

The Federal Circuit panel of Judges Alan D. Lourie, Timothy B. Dyk, and Sharon Prost held on May 8, 2012 in In re Hugh Edward Montgomery, et al., that the BPAI was correct in not issuing U.S. Patent Application No. 11/118,824 because it was anticipated. The application, directed to methods of delivering inhibitors of the renin-angiotensin system (“RAS”), was initially rejected by the USPTO as anticipated by four separate studies which describe the administration of RAS inhibitors to subjects at risk of stroke. Slip Op. at 4. The BPAI affirmed this rejection, explaining that “each reference teaches the administration of ramipril to stroke-prone patients.” Id. at 6. The Federal Circuit also affirmed, disagreeing with the patentee's argument that the claims included an efficacy requirement that was not present in the studies. “[W]e agree with the Board that even if the claim includes an efficacy requirement, efficacy is inherent in carrying out the claim steps.” Id. at 11. The Federal Circuit reiterated its canon that “newly discovered results of known processes directed to the same purpose are not patentable because such results are inherent.” Id. Judge Lourie filed a dissenting opinion, arguing that an unbounded, broad view of inherency “threatens to stymie innovation by withdrawing from the realm of patentability that which has not before been known, used, or benefited from.” Slip Op. at 2 (Lourie, J., dissenting). Judge Lourie stated that “none of the four cited references describes the claimed invention or the practice of a method that inherently, necessarily, carries out the claimed process.” Id. at 3.

Jeffrey S. Ginsberg is a partner and Joseph Mercadante is an associate in the New York office of Kenyon & Kenyon LLP.