Cantor Colburn April / May 2016 IP Newsletter
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Defendant damaged: A patent infringement case
Design patent damages can far exceed the reasonable royalties often associated with utility patent infringement because design patentees can recover the infringer’s total profits from the infringing product. That’s what happened in recent Federal Circuit court case Nordock, Inc. v. Systems Inc. This article discusses the facts and opinions of the case, including why the court found the defense expert’s methods of calculating damages “improper.”
Nordock, Inc. v. Systems Inc., No. 14-1762, Sept. 29, 2015 (Fed. Cir.)
Whom are you confusing?
Clear labeling precludes trademark infringement claim
The eight-factor Sleekcraft test typically is used to determine whether a mark accused of trademark infringement gives rise to a likelihood of confusion. But as this article shows, the test isn’t always applicable — especially in the context of Internet search engines. It examines why the Ninth Circuit reversed its own earlier decision and handed the defendant in Multi-Time Machine, Inc. v. Amazon.com, Inc. a victory. A sidebar explains that most trademark infringement cases go to trial.
Multi Time Machine, Inc. v. Amazon.com, Inc., No. 13-55575, Oct. 21, 2015 (9th Cir.)
AMF Inc. v. Sleekcraft Boats, No. 76-1744, June 28, 1979 (9th Cir.)
Thanks for the memory
Clarifying the patent description requirement
Section 112 of the federal Patent Act generally requires that a patent specification include a written description of the invention. However, according to the U.S. Court of Appeals for the Federal Circuit in Inphi Corp. v. Netlist, Inc., the requirement can be satisfied simply by describing alternative features not included in the invention. This article summarizes the case and its ramifications.
Inphi Corp. v. Netlist, Inc., No. 2015-1179, Nov. 13, 2015 (Fed. Cir.)
Santarus, Inc. v. Par Pharm., Inc., No. 10-1360, Sept. 4, 2012 (Fed. Cir.)
Court finds yoga-related copyright claim to be a stretch
This article summarizes Ninth Circuit case Bikram’s Yoga College of India, L.P. v. Evolation Yoga, LLC, in which the plaintiff sought copyright infringement damages for a sequence of yoga poses. However, the court decided against the plaintiff, finding that, while a work itself may be protected, the ideas, systems and similar content it holds are not.
Bikram’s Yoga College of India, L.P. v. Evolation Yoga, LLC, No. 13-55763, Oct. 8, 2015 (9th Cir.)
