IP HAPPENINGS  – MAY 2017

25.05.2017

By Lawrence Hoffman

On May 22, 2017, the U.S. Supreme Court handed down its decision in TC Heartland LLC v. Kraft Foods Group Brands LLC that’s going to please small manufacturers as well as industrial giants, and greatly displease both the patent trolls and the other assertion entities (PAEs) with somewhat more respectable business practices. It’s also likely to put a big smile on the face of U.S. District Court Judge, J. Rodney Gilstrap, who is handling about 25% of all patent cases currently pending throughout the U.S.

The Heartland decision holds that in patent cases, you can only sue a corporate defendant in the state in which it is incorporated. In the process, the Court overruled questionable Federal Circuit precedent that in my opinion, was based on an unrealistic view of congressional intent.

The decision raises some interesting questions as what its effect will be, as discussed in the article, but it’s way too early to do more than make educated guesses.

In a recent decision in Rembrandt Wireless Technologies, LP v. Samsung Electronics Co., Ltd., et al., the Court of Appeals for the Federal Circuit (CAFC) looked at some implications of the patent marking statute which limits damage a patentee can collect if a product does not contain a notice that it is covered by a patent.

Here, a licensee under a patent in suit did not mark the licensed product. The CAFC ruled that as a result, the patent owner could recover damages only from the time the suit was filed, and not back to when the infringement actually began. Read the article to see how the patent owner  tried to get around this, and how the court reacted to its arguments.

We examine the idea of claim differentiation on connection with the CAFC decision in Core Wireless v. Apple. The idea is simple – if a dependent claim adds a particular limitation to a parent claim, the addition gives rise to a presumption that the limitation in question is not present in the parent claim. In practice, it’s not always easy to apply this concept.

In short,  the court held that that the dependent claim did not add a limitation, but only focused on a limitation already in the parent claim. That, the court said does not meet the requirement for claim differentiation to apply. You can find further discussion in the article itself.

In the world of trademarks, the U.S. Court of Appeals for the Ninth Circuit has held that even though most people search for something on the internet by “googling” it, most people still understand that Google is the trademark for a particular brand of search engine. That’s definitely good news for Google.

The case arose out of a petition to cancel the registration of GOOGLE on the ground that most people use the word “google” as a verb to describe the act of searching the internet.

The court made clear that there’s a big difference between “googling” something (i.e., verb usage) and Google® as the trademark for a  particular search engine. The court looked at Section 14(3) of the Lanham Act, the U.S. trademark statute which provides that:

. . . The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.

The court accepted the petitioner’s argument that “google” is used as a verb but found this not to be relevant in view of the “primary significance requirement”. In the end, the court affirmed the trial court’s dismissal of the petition to cancel.

We also discuss some of the ways different countries deal with trademark squatters, and we conclude with some tidbits about private equity investment in Israel, and a clever merger of 3D imaging technology and artificial intelligence to help buy your new shoes.

 

 

 

About the author: Larry Hoffman has a B.S. in Electrical Engineering and Comp. Sci. from Massachusetts. Institute of Technology and a J.D. from the George Washington University School of Law. He has been a lawyer since 1965 specializing in IP law and product liability defense. He is registered to practice before the U.S. PTO, the U.S. Court of Appeals for the Federal Circuit and the state and federal courts in New York, Maryland, and the District of Columbia. His work has included preparation and prosecution of patents in countries throughout the world, and counseling on IP and product safety matters. He has been involved in the trial of close to 100 lawsuits of various kinds. You can reach him at Lawrence@ipatent.co.il.

 

News & publications:
More Newsletters: