Ambiguous Prosecution History That Contradicted Specification Did Not Limit Claim Scope of Means Plus Function Claim

Case: Elbex Video, Ltd. v. Sensormatic Elecs. Corp., Fed. Cir. No. 2007-1097 (11/28/07)


Summary: In a suit involving closed circuit television camera control patents, the district court erred in granting summary judgment of noninfringement by construing the term "receiving means" as a monitor in light of ambiguous prosecution history statements.



The Federal Circuit held there was no clear surrender of claim scope. One of skill in the art would recognize the statements in the prosecution history were incorrect because they were not supported by the specification and would render the invention inoperable.

Click here to read more.

Broad Non-Hire Clause Covering All Employees of Temp Agency Was Unenforceable Under California Law

Case: VL Systems, Inc. v. Unisen, Inc., 152 Cal. App. 4th 708 (2007)

Summary: A broad contract preventing an employer from hiring any former employee of the plaintiff temporary agency without paying a fee was an unenforceable non-compete under Business and Professions Code section 16600.




California Court of Appeal Holdings:

• California Business and Professions Code section 16600 which states: “Except as provided in this chapter, every contract by which anyone is restrained from engaging in a lawful profession, trade, or business of any kind is to that extent void” rendered the contract unenforceable.
  


• The court distinguished cases allowing narrower non-compete agreements, and summarized its holding as follows:

  "Again, we take no position on whether a more narrowly drawn and limited no-hire provision would be permissible under California law. Paragraph 6, however, is in no sense narrowly drawn — it is a very broad provision covering not only solicitation by Star Trac, but all hiring, and it applies to all VLS employees, regardless of whether they worked for Star Trac or were even employed at the time. Such a broad provision is not necessary to protect VLS’s interests and is outweighed by the policy favoring freedom of mobility for employees. It is therefore unenforceable."

Click here to read more.

California Adopts Model State Trademark Law

California’s Governor Arnold Schwarzenegger recently signed into law the Model State Trademark Law (MSTL), replacing California’s previous trademark laws in their entirety.

The MSTL:

• adopts the USPTO’s goods and services classification and allows a single application to include multiple classifications;

• expands the information required to be provided with an application for registration of a mark to a drawing of the mark and three specimens of that mark as it is actually used;

• requires that an application include a declaration of accuracy signed by a specified person and would subject that person to a civil penalty of not more than $10,000 for willfully stating as true in the declaration any material fact he or she knows to be false;

• reduces the registration period from 10 years to 5 years, and provides for successive 5-year renewal periods;

• requires the applicant to state whether the applicant previously attempted to register the mark with the USPTO and if such registration was refused, to state the reason for its rejection.

Article 12 of the MSTL states that the intent of the MSTL is “to provide a system of state trademark registration and protection substantially consistent with the federal system of trademark registration and protection . . .To that end, the construction given the federal act should be examined as nonbinding authority for interpreting and construing this chapter.” The MSTL will not affect any legal actions that are pending on January 1, 2008.

Several provisions of California’s previous trademark statutes regarding damages, anticounterfeiting, vicarious infringement and seizures are incorporated into the MSTL.

In adopting the MSTL, California joins more than 30 other states that have adopted some version of this law, which is the most current version of the International Trademark Association’s (INTA) Model State Trademark Law.

Click here to read more.

Ninth Circuit Clarifies Test for Dilution, Finds that “PerfumeBay” Dilutes “eBay.”

Case: Perfumebay.com, Inc. v. eBay, Inc., Case No. 05-56794, Ninth Circuit Court of Appeals (November 5, 2007)

Summary: For trademark dilution, the similarity requirement may be less stringent in circumstances in which the senior mark is highly distinctive and the junior mark is used for a closely related product, as is the case here. Therefore, though PerfumeBay is not “nearly identical” to eBay, it does dilute eBay.

What They Were Fighting About: PerfumeBay’s founder began her business selling perfume on eBay. She later stopped selling on eBay and started her own web-based company, Perfumebay.com, Inc. She purchased keyword advertisements on Google and Yahoo! so that a search for the word “perfume” would pull up a sponsored link to perfumebay.com, whether or not the search also contained other terms, like “ebay.” In February 2004, eBay sued Perfumebay.com for trademark infringement and dilution. The district court found that Perfumebay.com’s use of the conjoined forms of “PerfumeBay,” was likely to cause confusion, but that nonconjoined uses were not. The district court found that neither form of Perfumebay.com caused dilution.

Ninth Circuit Holdings:

• For dilution, the similarity requirement may be less stringent in circumstances in which the senior mark is highly distinctive and the junior mark is used for a closely related product.
• “PerfumeBay” dilutes “eBay” for the following reasons: eBay is highly distinctive and famous, eBay is closely associated with its services, PerfumeBay contains the word “eBay,” and the parties sell the same product, perfume, in the same forum, the internet.
  
• Nonconjoined versions of “PerfumeBay,” for instance if “Perfume” and “Bay” were separated by a space or the image of a starfish, would also dilute “eBay.”
• “PerfumeBay” is likely to be confused with eBay, in part because it contains the entire "eBay" mark.
  
• Nonconjoined versions of PerfumeBay are not likely to cause confusion, in part they do not incorporate the entire “eBay” mark.
• The lower court properly issued an injunction barring the use of the domain names perfumebay.com and perfume-bay.com.
  

Click here to read more.

Fourth Circuit Finds No Dilution in Chewy Vuiton Case

Case: Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, Case No. 06-2267, Fourth Circuit Court of Appeals (November 13, 2007)

The One Sentence Summary: The Fourt Circuit found no dilution by "Chewy Vuiton" of the famous LOUIS VUITTON mark, construing the Trademark Dilution Revision Act of 2006 (TDRA) to hold that parody may be considered in determining whether dilution by blurring has occurred.


What They Were Fighting About: Louis Vuitton Malletier (LVM) brought suit against Haute Diggity Dog (HDD), which manufactures and sells plush dog toys, including one called "Chewy Vuiton." The district court, on cross-motions for summary judgment, ruled in HDD's favor on claims of trademark infringement, trademark dilution, and copyright infringement.

Fourth Circuit Holdings:
The Court agreed with the district court that "Chewy Vuiton" neither infringed LVM's famous mark nor copyright. The Court also rejected LVM's claim for dilution by tarnishment, finding that the possibility that a dog could choke on a "Chewy Vuiton" toy to be insufficient.

The most interesting and important aspect of the Fourth Circuit's ruling, however, is its holding that HDD's use of "Chewy Vuiton" also did not result in dilution by blurring of the famous LOUIS VUITTON mark under the TDRA.

• As the Fourth Circuit observed, the plain language of the TDRA states that "parodying a famous mark is protected by the fair use defense only if the parody is not 'a designation of source for the person's own goods or services.'" (Emphasis in original, citing 15 U.S.C.A. 1125(c)(3)(A)(ii).)
  
• Here, "Chewy Vuiton" is a designation of source and thus does not qualify for protection under the fair use defense. Nonetheless, the Court held that the TDRA "does not require a court to ignore the existence of a parody that is used as a trademark, and it does not preclude a court from considering parody as part of the circumstances to be considered for determining whether the plaintiff has made out a claim for dilution by blurring."
  
• The Court found HDD's use of the mark as a parody to be relevant to the overall question of whether HDD's use is likely to impair the famous LOUIS VUITTON mark's distinctiveness.
  
• Instead of remanding the case to the district court, the Court then applied the TDRA dilution factors to the case to conclude that because HDD's "Chewy Vuiton" mark is a successful parody, it does not blur the distinctiveness of the LOUIS VUITTON mark. As the Court observed, "by making the famous mark an object of the parody, a successful parody might actually enhance the famous mark's distinctiveness by making it an icon."

It will be interesting to see if other circuits agree with the Fourth Circuit's reasoning in future dilution cases.

Click here to read more.

Patent Did Not Adequately Incorporate Ancestor Patent to Avoid Anticipation

Case: Zenon Environmental, Inc. v. US Filter Corp., Fed. Cir. No. 2006-1266, 2006-1267 (11/7/07)

The One Sentence Summary: A water filter patent was invalid and anticipated where it was not entitled to the priority date of an ancestor patent when the intervening patents failed to incorporate by reference the necessary details of the ancestor patent.

Click here to read more.

ICANN Defers Action on WHOIS Database

A controversial proposal to limit access to information about domain name owners was tabled by a committee of the Internet Corporation for Assigned Names and Numbers (ICANN). The committee voted on October 30, 2007 to defer implementing policy changes that could eliminate or otherwise limit access to some or all of the data on domain name owners that is currently available to the public on the WHOIS database. The committee voted instead to continue studying the proposed changes.

Privacy advocates are concerned that the WHOIS database does not adequately protect the privacy of individual registrants, while businesses and other owners of intellectual property argue that limiting the availability of WHOIS data will impair their ability to manage, police and protect their intellectual property rights. Click here for an AP article providing more details on the issues under debate.

Click here to read more.

Doctrine of Equivalents Could Be Used to Expand Concentration Range in Patent Claims

Case: US Philips Corp. v. Iwasaki Elec. Co. Ltd., Fed. Cir. No. 2007-1117 11/2/07)

The One Sentence Summary: The doctrine of equivalents could allow a jury to determine that a concentration of halogens in a lamp was close enough to a concentration range stated in the claims.

Federal Circuit Holdings:

• A licensing demand letter that included a copy of the patent provided adequate notice of the identity of the owner under 35 U.S.C. § 287(a) to start patent damages.
• The district court correctly construed a range between 10 to the minus 6 and ten to minus four micromoles per cubic meter.
• The doctrine of equivalents could have been applied by a jury to determine that a concentration near a stated range was equivalent - this would not vitiate the limitations.
  
  

Click here to read more.

Assertion of Patent with Defective Title Was Not an Exceptional Case for Award of Attorneys' Fees

Case: Digeo, Inc. v. Audible, Inc., Fed. Cir. No. 2007-1133 (11/1/07)


The One Sentence Summary: The district court did not err in refusing to grant an award of attorneys' fees under 35 U.S.C. section 285 where there was not clear and convincing evidence that the plaintiff should have known of the defects in title of the patent that it asserted, and district court did not need to allow discovery into the issue.

Click here to read more.