In the above case the Federal Circuit held that the relevant time frame for determining whether a product and process are “patentably distinct” is at the filing date of the later-filed application. However, as genuine issues of fact clouded the date of availability of materially distinct processes, as well as the viability of those processes, the Court vacated the district court’s ruling and remanded for further proceeding. In 1975, Takeda Pharmaceutical Company, Ltd. (“Takeda”) filed a primary application claiming priority to a 1974 Japanese patent application, covering certain cephem compounds, which issued as U.S. Patent No. 4,098,888 (“the ’888 patent”). In 1979, Takeda filed a divisional application covering cephem compounds, which issued as U.S. Patent No. 4,298,606 (“the ’606 patent”). In 1990, Takeda filed its secondary application covering the process for making the cephem compounds, which issued as U.S. Patent No. 5,583,216 (“the ’216 patent”), claiming the sole process known and disclosed in the Japanese priority patent application. In 1998, the PTO received two anonymous requests for re-examination of the ’216 patent, asserting that it was invalid for “obviousness-type” double patenting. During re-examination, Takeda relied on the declaration of Dr. Wuest disclosing an alternative process (displacement process) for making the cephem compounds claimed in the ’216 patent. The examiner rejected the ’216 patent claims as patentably indistinct over the ’606 patent claims. Takeda appealed to the Board. The Board rejected the Wuest declaration as speculative. Takeda challenged the Board’s decision in the District Court for the District of Columbia. In those proceedings, Takeda presented new evidence in the form of a declaration of Dr. Duggan, which explained that the process disclosed in two other patents provided a viable alternative, non-infringing process for making the cephem compounds claimed in the ’606 patent. The parties stipulated that the method in the Duggan declaration described a materially distinct alternative process. Ultimately, the Court held that genuine issues of material fact existed with respect to (1) the viability of the displacement process from the Wuest declaration, and (2) the disclosure date of the method described in the Duggan declaration. Accordingly, the Court vacated and remanded for further factual development. ....Click here for full details >>

In the above case the Federal Circuit reversed and remanded the district court’s dismissal of the suit based on lack of personal jurisdiction over G.M. dos Reis Jr. Ind. Com. de Equip. Medico (“GMReis”), holding that under Fed. R. Civ. P. 4(k)(2), GMReis’s contacts within the United States as a whole were sufficient to give a federal district court personal jurisdiction over GMReis. Synthes (U.S.A.) (“Synthes”), a medical device company with its principal place of business in Pennsylvania, served GMReis, a Brazilian company with headquarters in Brazil, with a summons and complaint at a trade show in San Diego, California. The complaint accused GMReis of infringing U.S. Patent No. 7,128,744 (“the ’744 patent”). The ‘744 patent covered certain aspects of devices for securing bone plates to immobilize bones to promote healing of fractures. At the trade show, GMReis displayed samples of five locking bone plates, though they also displayed prominent signs stating that the bone plates were not approved by the FDA and were not for sale in the United States. GMReis also attended seven trade shows in the United States since 2003. GMReis sold one product for veterinary use to a customer in the United States, purchasing some parts and products from the United States for use and sale in Brazil, consulting with two American companies regarding potential purchase and development of components for non-accused products, and receiving inquiries from two U.S. companies after the 2007 trade show asking whether GMReis’s products were available for purchase in the United States, to which GMReis responded they were not. The district court dismissed the suit, holding that under Fed. R. Civ. P. 4(k)(2), GMReis did not have sufficient contacts within the United States to warrant either general personal jurisdiction or specific personal jurisdiction. Synthes appealed. The Federal Circuit held that the district court had personal jurisdiction over GMReis, reversed the district court’s judgement dismissing Synthes’s complaint for lack of personal jurisdiction, and remanded the case to the district court for further proceedings. ....Click here for full details >>

In the above case the Federal Circuit reversed the district court’s finding of infringement and held that the patent-at-issue was obvious under 35 U.S.C. § 103(a). Plaintiffs Steven Ritchie and David Reynard (collectively “Ritchie”) own U.S. Patent No. RE38,924 (“the ’924 patent”), the 2005 reissue of U.S. Patent No. 6,132,366, which is directed to what the parties referred to as a “sex aid.” The ‘924 patent claims a “sexual aid . . . fabricated of a generally lubricious glass-based material containing an appreciable amount of an oxide of boron to render it lubricious and resistant to heat, chemicals, electricity and bacterial absorptions.” Until Ritchie began manufacturing the patented sexual devices, glass sexual devices were made out of soda-lime glass, the most common form of glass. The plaintiffs’ patented sexual devices, however, contain boron oxide and are made from “borosilicate glass,” the glass out of which Pyrex glassware was originally made. The district court found that Topco’s product infringed the ’924 patent and Topco timely appealed. Ritchie, dissatisfied with the amount of relief granted by the district court, cross-appealed. ....Click here for full details >>

In the above case the Federal Circuit affirmed the district court’s grant of Summary Judgement (SJ) of no literal infringement and no infringement under the Doctrine of Equivalents (DOE), holding that the doctrine of prosecution history estoppel precluded a finding of infringement by equivalents. Mark D. Felix owns U.S. Patent No. 6,155,625 (“the ’625 patent”), which relates to a built-in storage compartment for a pick-up truck bed. Felix brought suit against American Honda Finance Corporation, American Honda Motor Company, Inc., Honda of America Manufacturing, Inc., Honda of Canada, Inc., Honda R & D Americas, Inc., and Honda Trading America Corporation (collectively “Honda”), alleging that the In-Bed Trunk of Honda’s Ridgeline truck infringed claim 6 of the ’625 patent. The district court granted SJ of no literal infringement, finding that Honda’s In-Bed Trunk did not contain the asserted claim limitation of a gasket mounted to the flange. The district court also granted SJ of no infringement under the DOE, finding prosecution history estoppel prevented Felix from asserting infringement of the gasket limitation under the DOE. Felix appealed the district court’s claim construction and grants of SJ. ....Click here for full details >>

The publishing of a press release in the English or German language in the USA may constitute an act of unfair competition in Germany and thus entail a liability to cease and desist. The parties of the reported case are major internationally active producers of lithographic printing plates. The respondent, being located in the US, had filed suit in Germany against the applicant for patent infringement. In May 2008, a few days before the opening of an international printing trade fair, the present defendant (being the plaintiff in the parallel patent infringement proceedings) published a press release. The press release had been published correspondingly in German and English with US addresses of origin imprinted on both versions. Right after the publication of the press release, a report concerning the events and showing the content of the press release was published in a German information service for this branch of industry. On request of the applicant, the District Court Düsseldorf issued a preliminary injunction based on section 4 no. 7 German Act of Unfair Competition which the same Court lifted upon objection by the defendant and after reconsideration, now denying to have international jurisdiction over the case. The applicant appealed the latter judgment successfully before the Düsseldorf Court of Appeals. Notably, under German law, there is nearly always a considerable risk that a press release about ongoing litigation violates the German Act on Unfair Competition. Only in very exceptional cases, a justified interest for such broad-scale information to the market is imaginable. In any event, a press release must be reasonably complete and by no means inaccurate with respect to facts. Opinions must be clearly presented as such. In addition, different courts in Germany seem to have differing standards as to the amount of detail with which the information/opinion is allowed to be presented. The Düsseldorf Court of Appeals extended its jurisdiction on acts that occurred in the US having an effect on the German market. With respect to market-related (unfair) competitive acts, the “forum delicti” was held to be the place where the competitive interests of the parties clash with each other. Consequently, the Düsseldorf Court of Appeals found that a press release published in English in a foreign country will not be treated any different than a press release published in the German language in Germany. Nowadays, the English language, particularly when concerning an internationally acting sector of industry, is a common platform for distributing information. Thus, it was assumed that market participants and the media would take notice thereof and that competition could be influenced thereby to the detriment of the applicant in the present case. ....Click here for full details >>

The German Federal Supreme Court ruled that a defendant in a patent infringement suit may successfully raise an anti-trust defense against the issue of an injunction where the asserted patent is standard-essential and the defendant has tried to obtain a license to the patent under reasonable conditions. In the case before the Federal Supreme Court, the asserted patents covered the Orange Book standard for writeable CDs developed by plaintiffs Philips and Sony. The Court said that the plaintiff’s denial to grant a license may be an abuse of market power conferred on him by the standard- essential patent, and unduly discriminate against or obstruct the defendant. In this decision, the Federal Supreme Court confirmed for the first time the existence of the so-called anti-trust defense against the issue of an injunction in a patent infringement case. The court emphasized that the prerequisites for the defense include that the defendant has made a license offer under reasonable conditions and that the plaintiff’s rejection of the offer was unlawful under anti-trust law. The Federal Supreme Court added, as a further prerequisite, that the defendant regularly pay or at least deposit for the plaintiff the royalties due under his reasonable license offer. In this case, defendants Master & More, SK Kassetten and Global Digital Disks had not deposited the 3% royalties which in their opinion were owed, and therefore the court dismissed the appeal without having to decide whether Philips had abused its market power. ....Click here for full details >>

Trademark proprietors are regularly faced with inconsistencies in the decisions of the Trade Marks Offices during the examination process. The Federal Patent Court of Germany referred a series of questions to the European Court of Justice (ECJ) to clarify whether consistency and equality of treatment were inherent obligations in the examination for absolute grounds of refusal. The issues referred to the ECJ by the German Federal Court related to two cases – a) C-39/08 where the marks Volks.Handy, Volks.Camcorder, and Volks.Credit were refused registration even though the applicant's similarly composed marks had been accepted on an earlier occasion; b) the mark SCHWABENPOST was refused although the German Trade Mark Office had previously accepted marks comprising the term 'POST' of other applicants. The ECJ stated that the registrability decisions issued by the Trade Marks Offices does not involve use of discretionary powers and consequently, earlier decisions cannot be binding on the Trade Marks Office in future cases, but may be considered in certain cases. The ECJ rejected the 'equality of treatment' argument stating that this principle has to be harmonious with the principle that legally erroneous earlier decisions cannot be relied on. The decision of the ECJ has been termed as disappointing by those who expected a thorough analysis of the 'legality' of administrative activities of the Trade Marks Offices. ....Click here for full details >>

Commerzbank (claimant) is a German bank that inter alia, trades in warrants. Deutsche Börse AG (defendant), operates the Frankfurt Stock Exchange and provides services in respect of commercial exploitation of indexes and rates. The defendant is the owner of registered proprietor of the trademarks DAX and DivDAX in respect of services falling in class 36. In 2001, the defendant and claimant had entered into a license agreement regarding use of the mark DAX by the claimant in respect of issuing warrants. In 2006, the license agreement was terminated and disputes arose between the parties. In a civil action before the Frankfurt District Court, the claimant stated that it was entitled to freely use the marks DAX and DivDAX. The defendant counter-claimed before the Court for injunctive relief to restrain claimant from using the trademarks and also claimed for payment of unpaid license fees amounting to 1 million Euros. The Court rejected the claimant's complaint and admitted defendant's counter claim. The claimant's appeal before the Frankfurt Appeal Court was successful concerning use of the trademark DAX but not regarding use of the trademark DivDAX. In a further appeal to the Federal Supreme Court, the Court held that the claimant was entitled to using the trademark DAX and its use of DAX was in accordance to the provisions of the German Trademark Act. Consequently, the Court rejected the defendant's counter claim for injunctive relief for the trademark DAX. ....Click here for full details >>

Sunplus Technology Co., Ltd. had filed a Community trade mark application dated 1st April 1996 for a figurative trademark SUNPLUS in respect of class 9 products. Sun Microsystems Inc., filed an opposition to this trademark application based on its Benelux trademark registration SUN dated 21st September 1993, also for class 9 products. The OHIM's (Office for Harmonization in the Internal Market's) Opposition Division upheld Sun's opposition. Sunplus filed an appeal before the OHIM's Fourth Board of Appeal, which was dismissed. Thereafter, Sunplus applied to the Court of First Instance to annul the OHIM Board of Appeal's decision, but failed. The CFI (Court of First Instance) concluded that although the rival marks were visually different, they were conceptually and phonetically highly similar and there was a genuine risk that the public may perceive the products to have the same commercial origin. Sunplus filed an appeal before the European Court of Justice (ECJ) to set aside the CFI's decision. However, the ECJ did not find any contradictions in the CFI's reasoning while arriving at the decision and dismissed the appeal in its entirety and ordered Sunplus to pay costs. ....Click here for full details >>

The TATA group is India's oldest, largest and best known conglomerate, which, since its inception in 1917, has acquired tremendous amount of repute and goodwill for itself. The company is the registered proprietor of the trademark TATA in relation to goods/services under various classes of the International Classification, not only in India but worldwide. The company also holds copyright in an artistic work comprising of a logo entitled “TATA World”. Amongst the various infringers seeking to ride on the popularity of the TATA mark are the present defendants who were selling steel cutlery with the marks TATA and TATA STEEL printed on the accompanying literature. The defendants had also substantially reproduced the “TATA World” logo in which the plaintiffs hold copyright. In the present suit filed by the plaintiffs, the Court was clearly of the view that the adoption of the highly distinctive TATA mark by the defendants was malafide with a view to pass off their goods as those of the plaintiffs. In addition to trademark infringement, the defendants' activities deserved to be permanently restrained in relation to the relief of passing off also. The Court relied on the accepted proposition of law that famous and well known trademarks, especially those that embody an aura of pre-eminent excellence and quality, such as the plaintiffs' trademark TATA, are generally given broad protection even in case of unrelated and dissimilar goods. The TATA trademark also stood protected under the unfair competition laws. Since no rebuttal was filed to the plaintiff's evidence, the Court was pleased to award a sum of Rs. 5 lakh each as compensatory damages and punitive/exemplary damages as well as damages on account of loss of reputation and damage to the goodwill. ....Click here for full details >>

Jemma Francesca Swallow's application for registration of a teapot device in respect of Classes 30 and 43 goods was opposed by R. Seelig & Hille OHG on the basis of their prior Community Trade Marks. The Opponent's allegations were based upon the identity of the marks and the nature and intended purpose of goods covered thereunder as well as the brand dilution of the mark. The UK Intellectual Property Office provides for a “cooling off” period to enable the parties to amicably resolve the trademark dispute. However, here the Opponent chose to opt out of the period. In its Counter Statement, the Applicant averred that no monopoly could be granted over the device of a teapot vis-a-vis goods and services which would be provided in a tea shop. Moreover, the conflicting devices in the instant case were quite distinct visually and structurally. A Preliminary Indication was issued by the IP Office which was sensibly not contested by the Opponent. ....Click here for full details >>

Beltronics USA Inc. was a provider of aftermarket vehicle electronics to its distributors who would then sell the products for a set minimum price. Two of such distributors, in violation of the distributorship agreement, sold the Beltronics radar detectors to Midwest Inventory Distribution LLC. Midwest removed the Beltronics serial numbers allotted to each product before reselling them as “new” on eBay. Additionally, Midwest included an explicit statement that the manufacturer would not honour its warranty for items offered on eBay which allowed it to deny warranty services to purchasers of defective radar detectors. Pursuant to complaints from several such aggrieved customers, Beltronics filed a suit claiming federal and state trademark infringement and other violations of federal and state law. The Kansas District Court granted a preliminary injunction in favour of Beltronics, which was immediately followed by an appeal to the Tenth Circuit by Midwest. Midwest sought protection under the first-sale doctrine by averring that it was selling genuine Beltronics goods which had not undergone substantial alteration insofar as their physical quality, control procedures and differing warranty conditions were concerned. The Court of Appeal held that differences in non-physical characteristics such as warranties or service commitments are to be deemed 'material' if they mislead the consumer and damage the owner's goodwill. As regards the level of confusion in the minds of the consumers, the Court held that warranty inquiries received by Beltronics were sufficient to call into question whether Midwest's disclaimer was adequate to obviate any confusion. In any case, given the identity of the products, and the absence of any persuasive evidence to the contrary, the Court found sufficient cause for confusion. The distribution of burden of proof upon the respective parties was also found to be in order. The Court found Midwest's arguments to be unimpressive and ruled in favour of Beltronics. The application of the first-sale doctrine has thus been made quite clear in the instant case. ....Click here for full details >>