Case Summaries

U.S. 1st Circuit Court of Appeals

Subsalve USA Corp. v. Watson Mfg., Inc. (09/07/06 - No. 05-2645)
An order purporting to both dismiss and transfer a case involving allegations of trademark and copyright violations, cybersquatting and unfair competition is deemed a transfer order based on clear evidence of the district judge's intent, thus immediate appellate review of the underlying findings is unavailable.

http://laws.lp.findlaw.com/1st/052645.html

U.S. Court of Appeals for the Federal Circuit

Alza Corp. v. Mylan Labs., Inc. (09/06/06 - No. 06-1019)
A judgment in favor of defendant of noninfringement and invalidity of certain claims of a patent involving once-a-day incontinence drug formulations is affirmed where the district court properly made a legal conclusion of obviousness, as it correctly held that defendant met its burden of overcoming the presumption of validity that attaches to an issued patent and properly found the patent was not infringed

http://caselaw.lp.findlaw.com/data2/circs/fed/061019p.pdf

U.S. 3rd Circuit Court of Appeals

DirecTV, Inc. v. Leto (11/06/06 - No. 05-3908)
In a suit brought by DirecTV, a satellite cable company, against persons caught pirating its TV transmissions, dismissal of a suit against one individual on statute of limitations grounds is reversed where: 1) the plain language of an order entered in the underlying case against various individuals required the conclusion that it severed, rather than dismissed, the action against individual defendant; and 2) even if the order was instead a dismissal, it would have constituted an abuse of discretion under Federal Rule of Civil Procedure 21 misjoinder analysis.

http://caselaw.lp.findlaw.com/data2/circs/3rd/053908p.pdf

U.S. 4th Circuit Court of Appeals

Synergistic Int'l LLC v. Korman (11/30/06 - No. 05-2295)
Award of summary judgment and damages to plaintiff, in case involving infringement of the trademark "GLASS DOCTOR", is affirmed as to liability, however, award of damages is vacated where the district court abused its discretion in making the damages award.

http://caselaw.lp.findlaw.com/data2/circs/4th/052295p.pdf

U.S. 6th Circuit Court of Appeals

Ross, Brovins & Oehmke, P.C. v. Lexis Nexis Group (09/15/06 - No. 05-1513)
In a copyright dispute regarding software for filling out legal forms, a judgment dismissing copyright claims against defendant-Lexis Nexis is affirmed where: 1) while plaintiff had a valid copyright in the selection and organization of forms in its compilation, the copyrighted work was not substantially similar to the allegedly infringing product; and 2) plaintiff's selection and placement of input items for its form templates involves too little creativity to warrant copyright protection. However, Rule 12(c) dismissal of a contract claim against defendant is reversed where plaintiff stated a claim since the parties' agreement contained a promise not to sell plaintiff's content after the agreement was terminated.

http://caselaw.lp.findlaw.com/data2/circs/6th/051513p.pdf

Red Carpet Studios Div. of Source Advantage, Ltd. v. Sater (10/10/06 - No. 04-4416, 04-4450)
A district court's imposition of reduced sanctions in favor of plaintiff arising from a copyright dispute is affirmed over claims of error, on appeal and cross-appeal, that: 1) the district court did not have jurisdiction to impose sanctions as the underlying litigation had been settled and the case closed; 2) the sanctions award contravened the terms of a settlement agreement; 3) the district court abused its discretion in awarding sanctions; and 4) the district court abused its discretion in reducing the amount of the sanctions.

http://caselaw.lp.findlaw.com/data2/circs/6th/044416p.pdf

Gen. Motors Corp. v. Lanard Toys, Inc. (10/25/06 - No. 05-2085)
In a trademark and trade dress infringement suit filed against a toy company by GMC involving a series of toy vehicles resembling GMC's Hummer, summary judgment for GMC is affirmed where: 1) despite the district court's failure to adequately discuss the Frisch factors, summary judgment was appropriate on the trademark infringement claim due to the weight of the factors in favor of a finding a likelihood of confusion; 2) GMC established that there were no material issues of fact as to any of the three elements of trade dress infringement; and 3) denial of summary judgment on laches and estoppel defenses was proper.

http://caselaw.lp.findlaw.com/data2/circs/6th/052085p.pdf

U.S. Court of Appeals for the Federal Circuit

Go Med. Indus. Pty, Ltd. v. Inmed Corp. (10/27/06 - No. 05-1241, 05-1267, 05-1588)
Orders granting summary judgment, denying prejudgment interest, and reducing a jury's award of damages in a contract, patent, and trademark case involving a type of catheter are affirmed in part, and vacated in part where the district court misapplied the doctrine first set forth by Lear, Inc. v. Adkins, 395 U.S. 653 (1969), in reducing the damages for defendant's breach of contract.

http://caselaw.lp.findlaw.com/data2/circs/fed/051241p.pdf

Audi AG v. D'Amato (11/27/06 - No. 05-2359)
In a case arising from defendant's use of the domain name www.audisport.com to sell goods and merchandise displaying Audi's name and trademarks, summary judgment, injunctive relief, and an award of attorneys' fees to Audi on trademark, trade dress, and AntiCybersquatting Consumer Protection Act (ACPA) claims are affirmed where: 1) there was a likelihood of confusion for purposes of trademark infringement, and defenses to the claim including laches, consent, and fair use, failed; 2) trademark dilution was proven; 3) a finding that defendant violated the ACPA was proper; 4) injunctive relief was warranted; and 5) given his bad faith use of counterfeit marks, the district court did not abuse its discretion in awarding attorneys' fees under 15 U.S.C. section 1117(a).

http://caselaw.lp.findlaw.com/data2/circs/6th/052359p.pdf

U.S. 7th Circuit Court of Appeals

BondPro Corp. v. Siemens Power Generation, Inc. (09/12/06 - No. 05-3077)
Judgment as a matter of law for defendant in a trade secrets suit involving a manufacturing technique is affirmed where the disputed invention did not meet the criteria for a trade secret.

http://caselaw.lp.findlaw.com/data2/circs/7th/053077p.pdf

Automation by Design, Inc. v. Raybestos Prods. Co. (09/15/06 - No. 05-1172)
Summary and declaratory judgment in favor of defendants in a copyright infringement and breach of contract suit is affirmed where: 1) the contract was unambiguous and not terminable at-will; and 2) the alleged violator was free to share design information with its agent and duplicate machines as part of the contracted project.

http://caselaw.lp.findlaw.com/data2/circs/7th/051172p.pdf

Blue Cross & Blue Shield Ass'n v. Am. Express Co. (10/30/06 - No. 05-4004)
Judgment of the district court that a credit card company did not violate the terms of a settlement agreement in a trademark dispute by using the word "blue" on one of its credit cards is vacated and remanded where the use of the word violated the settlement agreement, but the doctrine of laches would bar relief if the card company relied to its detriment on plaintiff's inaction in enforcing the agreement.

http://caselaw.lp.findlaw.com/data2/circs/7th/054004p.pdf

Waterloo Furniture Components, Ltd. v. Haworth, Inc. (10/30/06 - No. 05-4744)
Summary judgment for defendant in a suit concerning patent royalties is affirmed where: 1) the court correctly determined that the license had expired, and the most favored nation provision of the license expired when the license itself expired; 2) a settlement for past infringement entered into after the patent's expiration does not constitute a license; 3) the district court did not err in granting summary judgment prior to discovery; and 4) witness testimony did not violate the Best Evidence Rule since it was based on firsthand knowledge of events.

http://caselaw.lp.findlaw.com/data2/circs/7th/054744p.pdf

U.S. Court of Appeals for the Federal Circuit

Massachusetts Inst. of Tech. v. Abacus Software (09/13/06 - No. 05-1142, 05-1161, 05-1162, 05-1163)
A stipulated final judgment of noninfringement of a patent disclosing a color processing system for producing copies of color originals is vacated where the district court erred in its construction of "aesthetic correction circuitry," and erred in its decision to grant Microsoft's motion to exclude Windows as an accused instrumentality. Further, plaintiff's appeal is dismissed in part as moot, and defendants' cross-appeals are dismissed.

http://caselaw.lp.findlaw.com/data2/circs/fed/051142p.pdf

Wallace v. Int'l Bus. Mach. Corp. (11/09/06 - No. 06-2454)
Dismissal of a suit against corporate contributors to, and distributors of, the Linux operating system under the GNU General Public License (GPL) is affirmed where: 1) the distribution of free software does not constitute predatory pricing since prices would will never reach a monopoly stage; 2) individuals and organizations who accept the GPL are not "conspirators" involved in "restraint of trade"; and 3) the "fixing" of the price for software at zero benefits consumers, and thus survives scrutiny under the Rule of Reason.

http://caselaw.lp.findlaw.com/data2/circs/7th/062454p.pdf

U.S. Court of Appeals for the Federal Circuit

Abbot Labs. v. Baxter Pharm. Prods., Inc. (11/09/06 - No. 06-1021, 06-1022, 06-1034)
A judgment of validity of a patent involving an inhalation anesthetic is reversed where the asserted claims of the patent at issue were anticipated by a disclosure in a previous patent.

http://caselaw.lp.findlaw.com/data2/circs/fed/061021p.pdf

Action Tapes, Inc. v. Mattson (08/30/06 - No. 05-3309, 05-3520)
Summary judgment for defendant in a copyright infringement action, alleging that defendant repeatedly violated the Computer Software Rental Amendments Act by renting plaintiff's memory cards for computer-run sewing machines to customers without permission, is affirmed on the ground that plaintiff failed to prove the Act applied for registration of the computer program copyrights before commencing the infringement suit.

http://caselaw.lp.findlaw.com/data2/circs/8th/053309p.pdf

U.S. Court of Appeals for the Federal Circuit

Ormco Corp. v. Align Tech., Inc. (08/30/06 - No. 05-1426)
Summary judgment finding, inter alia, that claims of defendant's patents for orthodontic devices were infringed by plaintiff's orthodontic product, that those claims were not invalid, and that defendant did not engage in inequitable conduct during prosecution of the patents at issue is reversed as to the finding of validity, because all six claims at issue would have been obvious under 35 U.S.C. section 103(a).

http://caselaw.lp.findlaw.com/data2/circs/fed/051426p.pdf

U.S. Court of Appeals for the Federal Circuit

Aero Prods. Int'l, Inc. v. Intex Recreation Corp. (10/02/06 - No. 05-1283)
Judgment of infringement and non-invalidity in a patent and trademark violation suit is affirmed where the judgment was proper, but reversed and remanded for entry of a consistent final judgment where the award of both patent infringement and trademark infringement damages in favor of plaintiff represented an impermissible double recovery.

http://caselaw.lp.findlaw.com/data2/circs/fed/051283p.pdf

SRAM Corp. v. AD-II Eng'g, Inc. (10/02/06 - No. 05-1365)
Partial summary judgment and judgment of liability for plaintiff in a infringement suit regarding a patent, related to bicycle gear shifting, is reversed and the matter remanded where the district court erred in construing the disputed portion of plaintiff's patent.

http://caselaw.lp.findlaw.com/data2/circs/fed/051365p.pdf

Dystar Textilfarben GMBH & Co. Deutschland KG v. C.H. Patrick, Co. (10/03/06 - No. 06-1088)
Denial of defendants' motion for judgment as a matter of law (JMOL) regarding obviousness in a suit alleging direct, contributory, and induced infringement of plaintiff's dyeing patent is reversed where claims 1-4 of the patent would have been obvious to a practitioner of the correct level of ordinary skill. Because the claims were obvious, claims of anticipation and lack of enablement, as well as a request for a new trial, were not considered.

http://caselaw.lp.findlaw.com/data2/circs/fed/061088p.pdf

Mid-State Aftermarket Body Parts, Inc. v. MQVP, Inc. (10/19/06 - No. 05-3057)
In a trademark infringement dispute, summary judgment dismissing Lanham Act claims of infringement and false advertising is reversed where there were genuine issues of material fact as to whether defendant's, a distributor of aftermarket automobile parts, unauthorized use of plaintiff's service mark was “likely to cause confusion” as to the origin of products or services, 15 U.S.C. section 1125(a)(1)(A), or was false commercial advertising within the meaning of 15 U.S.C. section 1125(a)(1)(B).

http://caselaw.lp.findlaw.com/data2/circs/8th/053057p.pdf

U.S. Court of Appeals for the Federal Circuit

Medrad, Inc. v. Tyco Healthcare Group LP (10/16/06 - No. 06-1082)
Summary judgment for defendants of invalidity of a reissue patent relating to patient infusion systems for use with magnetic resonance imaging systems is reversed and remanded where the defect that formed the basis for the reissue patent was the type of defect that can be corrected under 35 U.S.C. section 251.

http://caselaw.lp.findlaw.com/data2/circs/fed/061082p.pdf

New York Court of Appeals

Prof'l Staff Cong. - City Univ. of N.Y. v. New York State Pub. Employment Relations Bd. (10/17/06 - No. 91)
Annulling of a determination that a union had clearly and unambiguously waived the right to collectively bargain certain subjects, including intellectual property policy, is reversed where the Public Employment Relations Board appropriately exercised its discretion when, in dismissing an improper practice charge, it found that the union's waiver of the right to negotiate certain subjects remained in effect after expiration of the parties' CBA.

http://caselaw.lp.findlaw.com/data/ny/cases/app/91opn06.pdf

U.S. 9th Circuit Court of Appeals

Tillamook Country Smoker, Inc. v. Tillamook County Creamery Ass'n (10/11/06 - No. 04-35843)
In a trademark dispute between the Tillamook cheese maker and a purveyor of smoked meats and jerky, summary judgment for the meat purveyor is affirmed where the district court correctly ruled that the cheese maker's claims were barred by laches considering that the cheese maker had actual knowledge of the smoker's activities for 25 years, but never said a word, and even sold its products in the cheese maker's own gift shop and in its mail-order catalog.

http://caselaw.lp.findlaw.com/data2/circs/9th/0435843p.pdf

U.S. Court of Appeals for the Federal Circuit

Figueroa v. US (10/11/06 - No. 05-5144)
Congress may constitutionally impose patent fees in an amount above what is used to fund the United States Patent and Trademark Office (PTO). Further, the fees imposed by Congress satisfy the rational basis requirement.

http://caselaw.lp.findlaw.com/data2/circs/fed/055144p.pdf

U.S. 11th Circuit Court of Appeals

Corwin v. Walt Disney Co. (11/02/06 - No. 04-16554)
In a copyright infringement suit involving a painting claimed to be the original concept for EPCOT, orders 1) disposing of several evidentiary issues and granting summary judgment for defendant, 2) denying plaintiff's motion for clarification and reconsideration, and 3) adopting the magistrate judge's award of taxable costs to defendant, are affirmed as to summary judgment and reconsideration. However, where the district court awarded costs that it lacked discretion to award, such order is vacated.

http://caselaw.lp.findlaw.com/data2/circs/11th/0416554p.pdf

U.S. District of Columbia Circuit Court of Appeals

Ranbaxy Labs. Ltd. v. Leavitt (11/14/06 - No. 06-5154)
Summary judgment for plaintiffs, on request that the FDA relist patents held by Merck that Merck requested removed from the "Orange Book" after plaintiffs challenged Merck's patents, thereby precluding plaintiffs from obtaining a period of marketing exclusivity of their competing drug, is affirmed where the FDA's requirement that a generic manufacturer's patent challenge give rise to litigation as a condition of retaining exclusivity when a patent is delisted is inconsistent with the Act, which provides that the first generic manufacturer to file an approved application is entitled to exclusivity when it either begins commercially to market its generic drug or is successful in patent litigation.

http://caselaw.lp.findlaw.com/data2/circs/dc/06 5154a.pdf

U.S. Court of Appeals for the Federal Circuit

02 Micro Int'l Ltd. v. Monolithic Power Sys., Inc. (11/15/06 - No. 06-1064)
In a patent case involving a circuit for converting direct current to alternating current, summary judgment of non-infringement for defendant is affirmed where there was no error in the district court's denial of leave to amend plaintiff's infringement contentions, its refusal to allow amendment of an expert report to include evidence on certain theories, or its grant of summary judgment.

http://caselaw.lp.findlaw.com/data2/circs/fed/ 061064p.pdf

Abraxis Bioscience, Inc. v. Mayne Pharma (USA) Inc. (11/15/06 - No. 06-1118)
In an infringement action involving patents for a pharmaceutical composition used to induce and maintain general anesthesia and sedation in patients, a judgment in favor of plaintiff of infringement of the patents, both literally and under the doctrine of equivalents, is reversed in part as to the district court's claim construction of the term "edetate" and its finding of literal infringement, but affirmed as to the finding of infringement under the doctrine of equivalents.

http://caselaw.lp.findlaw.com/data2/circs/fed/ 061118p.pdf

PHG Techs., LLC v. St. John Cos., Inc.(11/17/06 - No. 06-1169)
In a patent case involving design patents for medical label sheets, grant of a preliminary injunction for plaintiff is vacated where defendant raised a substantial question of the validity of the two patents at issue, and thus, the district court abused its discretion by granting plaintiff's motion for a preliminary injunction.

http://caselaw.lp.findlaw.com/data2/circs/fed/ 061169p.pdf

U.S. Court of Appeals for the Federal Circuit

Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.(11/20/06 - No. 05-1311, 05-1335)
In an infringement action involving a patent concerning pedicle screws and receiver members used in spinal surgeries, summary judgment of non-infringement for defendant regarding a particular model is reversed where the district court erred in construing the scope of a particular term of the patent, and the court erred in limiting application of the doctrine of equivalents. The district court's rulings are otherwise affirmed.

http://caselaw.lp.findlaw.com/data2/circs/fed/051311p.pdf

Impax Labs., Inc. v. Aventis Pharm. Inc.(11/20/06 - No. 05-1313)
In a declaratory judgment action regarding a patent involving the use of a chemical compound to treat ALS, a decision finding that plaintiff failed to prove that the patent was unenforceable due to inequitable conduct and that certain claims were invalid as anticipated is vacated in part as to the anticipation issue where the court erred in determining that one of the alleged two items of invalidating prior art did not enable a method of using the compound to treat ALS and, therefore, could not serve as an anticipatory reference under 35 U.S.C. section 102(b).

http://caselaw.lp.findlaw.com/data2/circs/fed/051313p.pdf

Highway Equip. Co., Inc. v. FECO, Ltd.(11/21/06 - No. 05-1547, 05-1578)
In a patent and contract-related dispute between manufacturers and sellers of agricultural equipment, summary judgment for plaintiff on defendant's claim for wrongful termination of dealership and denial of defendant's motion for attorney's fees and expenses, are affirmed in part and vacated in part where the district court: 1) properly entertained defendant's claim for attorney's fees and did not err in denying attorney's fees; and 2) lacked jurisdiction over defendant's wrongful termination of dealership claim.

http://caselaw.lp.findlaw.com/data2/circs/fed/051547p.pdf

U.S. Court of Appeals for the Federal Circuit

Thompson v. Microsoft Corp. (12/08/06 - No. 06-1073)
An appeal from a dismissal of an unjust enrichment claim against Microsoft Corporation, based on its alleged misappropriation of plaintiff's software, is transferred to the Sixth Circuit, as this court lacks jurisdiction over the matter because the district court's jurisdiction did not "arise under" the patent laws as contemplated in 28 U.S.C. section 1338, and Microsoft's defense on preemption grounds did not provide jurisdiction over the appeal.

http://caselaw.lp.findlaw.com/data2/circs/fed/061073p.pdf

Sanofi-Synthelabo v. Apotex, Inc. (12/08/06 - No. 06-1613)
In a patent dispute brought by the maker of Plavix, a heart and stroke medication, arising from the launch of defendants' generic product, grant of a preliminary injunction in favor of plaintiffs is affirmed where there was no abuse of discretion: 1) in rulings with respect to patent validity and enforceability for purposes of a likelihood of success on the merits, in a finding of irreparable harm, in balancing the hardships, or in evaluating the public interests; 2) by precluding defendant from asserting an unclean hands defense; or 3) in setting a bond amount.

http://caselaw.lp.findlaw.com/data2/circs/fed/061613p.pdf

The US patent decision system is slightly different from other patent decision systems in the world. Here in the US, if you disclose your invention you can apply for a patent within 12 months of its disclosure. Most countries do not offer such a grace period.

Most U.S. online patent data bases cover patents issued during the last 20-25 years. The USPTO database contains a list of patents granted from the year 1970 till today for patents issued for an article. So, to check if your idea or invention is ‘novel’ and ‘non-obvious’ it’s best to begin there. Another online free site is Delphion (1974 – Present) Apart from this there are several other paid sites and software’s to decide whether the patent is patentable.

In order to decide on a patent you need to search the existing patents, if the patent decisions are based on older technologies or for patents from 1790 to 1974 you need to use one of the fee based databases or one of the 87 Patent & Trademark Depository Libraries (PTDL). Libraries can answer many of your questions, expose you to the local resources and teach you how to use their patent search system. Also ask if the librarian is trained in search procedures.

In order to learn more about

What is patent search?

Why to conduct a patent search?

What is the process for doing a patent search?

Click here to learn more about patent search

There are several patent search tools that can help you decide on the patents, below is the small description on US Patent search tools

During a search the primary objective is to identify your class and subclass. There are three tools for it- Classification Index, Manual of Classification and Classification Definitions

Classification Index is used primarily to identify your class number. In paper it is about the size of a small town phone book. Look up your topic and you will find a class number. The area you are interested in may have several class numbers (for example marine propulsion and propellers (impellers) are in two different classes).

Manual of Classification to identify the subclass related to your topic (in paper it is a large 3 volume set of ring binders). Turn to or click to the class you are interested in and identify the specific subclass's best relating to your topic. You may need some assistance in understanding the hierarchical listing of subclasses. Many are subclasses of subclasses.

Classification Definitions are used to be on microfiche, but now you can access it online. Look up the specific class and subclass under study. Make sure you are really hunting for items resembling the definition of this class/subclass. Often additional hints are given for other places to look, including classes no longer existing.

Search the complete text and drawing(s) of closely related patents to determine how different they are from the invention that you desire to patent.

Keep cycling through the three tools until you identify the appropriate classes and subclasses in order to decide on the patent.

If you do not have time for all those then here are few tips in order to decide on a patent

1.	Use an attorney, agent or independent research company when quality becomes more important.
2.	Professional searches can come with a formal written opinion or simply be copies of the prior art found in the search. Ask how the search will be done, what databases will be used.
3.	Sign a non-disclosure agreement before hiring a professional. Watch out for invention scams.
4.	Not every reference librarian in each PTDL library will be skilled in patent searching. Ask before you make an appointment.