Cantor Colburn Year End 2016 Newsletter
Ideas on Intellectual Property Law
Read the Year End Newsletter in Full
When is a sale not a sale?
Federal Circuit narrows on-sale bar to patents
In a recent ruling, the Federal Circuit Court of Appeals provided guidance on what constitutes a sale for purposes of the on-sale bar to patent validity. This article summarizes the case, explaining that the appeals court focused on the first prong — the subject of a commercial offer for sale — of the Supreme Court’s two-prong test. A sidebar notes the court’s rejection of the “supplier exception” in the same case.
The Medicines Co. v. Hospira, Inc., No. 2014-1469, -1504, July 11, 2016 (Fed. Cir.)
Music to Internet service providers’ ears
Appellate court extends DMCA safe harbor
The Second Circuit recently ruled on the hotly debated issue of whether the Digital Millennium Copyright Act’s (DMCA’s) safe harbor provision applies to sound recordings created before 1972. This article explains why the court’s opinion in Capitol Records, LLC v. Vimeo, LLC, is a relief to Internet service providers.
Capitol Records, LLC v. Vimeo, LLC, No. 14-1048, June 16, 2016 (2d Cir.)
Intent to infringe
Verdict goes against medical device maker
When the Supreme Court agreed that a Federal Circuit infringement ruling should be reconsidered, it probably seemed like good news to the medical device maker that had been found liable. However, the new ruling that followed went against the company. As this article describes, the appeals court found the company’s defense position “objectively unreasonable.”
Warsaw Orthopedic, Inc. v. NuVasive, Inc., No. 2013-1576, -1577, June 3, 2016 (Fed. Cir.)
Commil USA, LLC v. Cisco Sys., Inc., No. 13-896, 2015 (U.S.)
Single factor preempts likelihood of trademark confusion claim
When a trademark is challenged, courts generally turn to the DuPont factors to determine whether a likelihood of confusion exists between two marks. But, as in a 2016 Federal Circuit case, courts don’t necessary consider all 13 DuPont factors. This article identifies the single factor considered — similarity of the marks — and how it affected the appeals court’s decision.
Oakville Hills Cellar, Inc. v. Georgallis Holdings, LLC, No. 2016-1103, June 24, 2016 (Fed. Cir.)
