obvIPat - Obviously Patentable

The blog for inventors, in-house counsel, & entrepreneurs.

Archive for May, 2010

A View From INTA

by Bruce Jobse

The 132nd Annual Meeting of the International Trademark Association (INTA) kicked off this past weekend in Boston with good weather and plenty of activity.  According to the INTA website, the event is the “Largest and most prestigious gathering of trademark professionals in the world with more than 8,000 attendees from over 130 countries.”  Notwithstanding the size and sophistication of some of the vendor displays and the number of attendees, the entire event seemed to fit nicely into only a portion of the massive Boston Convention Center which could house several Goodyear blimps.  Despite the attendance reports, the foot traffic in the exhibitor’s hall on both Sunday and Monday afternoons never really felt overly busy. There was plenty of food and banter in and around Convention Center and throughout Boston at numerous private receptions hosted by many local and international law firms.  As usual, hotel space for the event was at a premium since graduation season has started for many local colleges. Long cab lines were the norm for most of Boston’s seaport area hotels, especially in the evenings.  Conspicuously absent this year were some of the larger parties hosted by INTA exhibitors in the past, perhaps a sign of the current economy.  We will see if the weather for next year’s INTA Annual Meeting, which will take place in San Francisco, can beat the unusually clear and warm weather Boston is experiencing.

For those of you who did not make it to this year’s event, here are a few photos:

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"I never did a day's work in my life. It was all fun."
Thomas A. Edison

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CAFC Weekly: May 21, 2010

by Orlando Lopez

This week’s only precedential opinion has a non-practicing entity (NPE; previously known as “patent troll”) encountering patent invalidation due to anticipation and a less aggressive view of inequitable conduct.

In Orion IP LLC v. Hyundai Motor America, Hyundai stuck to its guns (or revved its engines) and fought the NPE all the way to the CFAC.  After Hyundai was found to have infringed one of the asserted patents in the Eastern District of Texas District Court, the CAFC found that the patent asserted, a computerized part order system, was invalid because it was anticipated by a part order system available before the patent was filed.  However, this panel of the CAFC found that the patent asserted was not unenforceable due to inequitable conduct.  The inequitable conduct analysis in this case should be contrasted to that of Tal-Tech (CAFC Weekly-May 14).  In Orion IP, Judge Gajarsa wrote the opinion rather than the dissent!

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CAFC Weekly: May 14, 2010

by Orlando Lopez

This week, in what looks like a sequel to the week ending May 7, the CAFC considered another inequitable conduct case and two 35 USC 156 patent term extension cases. A licensing case and a personal jurisdiction case round out the week.

In Tal-Tech Limited v. Esquel Enterprises Limited, another inequitable conduct case, Tal-Tech returns to the CAFC after being there once before for the same inequitable conduct charge and having the CAFC remand back to District Court. Tal-Tech is now appealing an award of attorney’s fees to Esquel based on a finding of inequitable conduct and a finding of misconduct. The supposedly withheld material facts, were first disclosed by the inventor at a deposition during litigation. The patent in suit refers to a thermal adhesive to reduce pucker in garments, such as dress shirts. The inventor answered a question as to what sparked his invention by drawing a raincoat seal. It is this raincoat seal drawing that brought on the inequitable conduct charge. The CAFC, the second time around, upheld the District Court’s inequitable conduct holding. Some of the issues considered in this case are up for en banc review in Therasesnse (see CAFC Weekly-April 30, 2010). The dissent by Judge Gajarsa underscores the need for the en banc review. As Wong the inventor found out, if they bring you back to Court a second time, they can take the shirt patent off your back.

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Chocolate Wars

by Bruce Jobse

Most people will agree that one of life’s better pleasures is chocolate, and that one of the biggest and most successful purveyors of chocolate is Hershey’s. So when Williams-Sonoma Inc. recently introduced a non-stick, cast aluminum baking pan that “creates one large brownie or cake, scored into 12 embossed chocolate-bar shapes,”  Hershey’s lawyers marched into the US District Court, not far from Hershey, PA, seeking an injunction to stop the alleged dilution of their iconic trademark.  According to Hershey Co., the shape of the company’s signature chocolate bar isn’t just an ordinary rectangle made up of 12 smaller rectangles or “bars,” but rather a design that immediately triggers association in consumers’ minds with Hershey products.  This may be true, but there’s more here than the legal analysis.

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