Overpleaded Opposition Supports DJ Motion
March 27, 2007
Can a Notice of Opposition in the U.S. Patent and Trademark Office Trademark Trial and Appeal Board give rise to an actual controversy under the Declaratory Judgment Act to support a trademark Applicant's federal declaratory judgment action against the Opposer? Generally, it can't ' or more accurately, it doesn't. But in <i>Neilmed Products, Inc. v. Med-Systems, Inc.</i>, the Northern District of California found that the Notice of Opposition pleaded detailed factors relevant to liability for trademark infringement and dilution.
Foreign Patent Disputes Are Off-Limits For U.S. Courts
March 27, 2007
The U.S. Court of Appeals for the Federal Circuit recently addressed the jurisdictional reach of U.S. courts to adjudicate patent disputes involving foreign patents. In <i>Voda v. Cordis</i>, a split panel held that even if the district court had the authority to exercise supplemental jurisdiction over the foreign patent claims, the district court abused its discretion by exercising that authority. The court's opinion rests largely on comity and judicial economy considerations.
A Blurry Distinction with a Huge Difference: Commercial vs. Non-Commercial Speech
February 28, 2007
Imagine the following two scenarios, and try to figure out what the real difference is. First, your competitor blatantly lies in its advertising about the effectiveness of its products; second, your competitor blatantly lies to a reporter about the effectiveness of its products, and the reporter publishes the lies in an article or in a magazine. It seems like the same situation, but it is not. With the first, you could sue for false advertising because the advertisement is 'commercial' speech, whereas with the second, you cannot because the magazine article is 'non-commercial' speech. A similar difference is presented if a newspaper uses a picture of a celebrity without the celebrity's consent to highlight a news article, as opposed to a company using the same celebrity picture in a print advertisement, in the same newspaper, to promote the company. A breach of the celebrity's right of publicity claim is not available against the newspaper because the news article is 'non-commercial,' but is available against the company because the print advertisement is 'commercial.' The rationale for both is that while the First Amendment fully protects 'non-commercial' speech, it protects 'commercial' speech in a significantly limited way.
IP News
February 28, 2007
Highlights of the latest intellectual property news from around the country.
Medimmune: New Rules for Patent Licenses?
February 28, 2007
The Supreme Court's <i>Medimmune</i> decision relates directly to the federal courts' jurisdictional requirement of case or controversy, but by overruling the Federal Circuit's <i>Gen-Probe</i> decision it may also have changed the balance of power between patentees and licensees.
LG Electronics, Inc. v. Bizcom Electronics, Inc.: Guidance on Extending a Patent Holder's Rights to Reach Downstream Parties Who Assemble Components into a Patented Combination
February 28, 2007
In <i>LG Electronics, Inc. v. Bizcom Electronics, Inc.</i>, 453 F.3d 1364 (Fed. Cir. 2006), the Federal Circuit held that a license to a patent covering a combination of elements, that authorized the licensee to sell components of the invention, but disclaimed a downstream license or implied license to the licensees' customers to practice the combination, constituted a conditional sale, thus defeating the application of the patent exhaustion doctrine. It further held that a downstream point of sale notice that no implied license was conveyed similarly defeated the first sale doctrine. In addition, it held that no implied license could be found on those facts. As a result, the patent holder was free to assert a claim of patent infringement against parties who were authorized purchasers of components of its invention, when such parties assembled the resulting combination. This decision provides the clearest guidance to date on how a patent holder whose patents cover a combination of components can extend its rights to reach downstream parties who assemble those components into the patented combination. This article discusses this case in the context of pre-existing authority on patent exhaustion and implied license, and highlights some of the considerations associated with drafting agreements to avoid patent exhaustion and implied licenses.
IP News
February 01, 2007
Highlights of the latest intellectual property news from around the country.
Foreign Use of a Mark May Establish Trademark Priority in the U.S.
February 01, 2007
In the recent decision of <i>First Niagara Ins. Brokers, Inc. v. First Niagara Fin. Group, Inc.</i> (Fed. Cir. 2007) (the 'Federal Circuit's decision'), the Federal Circuit overturned a ruling by the Trademark Trial and Appeal Board (the 'Board') dismissing an opposition by First Niagara Insurance Brokers ('FN-Canada'), a Canadian company, to registration of 'First Niagara' and related marks by First Niagara Financial Group ('FN-US'), a U.S. company. In rendering its holding, the Federal Circuit declared that, in some cases, what would seem to be purely foreign trademark activity may establish superior trademark rights in the United States.
