WDVA Court Denies Motion to Dismiss Trademark Infringement Claim Based on Alleged Fictitious LinkedIn Profile
In a recent decision on a motion to dismiss various claims related to a business competitor’s alleged campaign of marking “false, defamatory, and deceptive claims and statements,” a Western District of Virginia court rejected arguments that a trademark infringement claim based on an alleged fictitious LinkedIn profile failed to satisfy the “use in commerce,” commercial use, and likelihood of confusion requirements of the Lanham Act. AvePoint, Inc. v. Power Tools, Inc., No. 7:13-CV-35, 2013 U.S. Dist. LEXIS 160719 (W.D. Va. Nov. 7, 2013) (Conrad, J.) (available here).
AvePoint involved a dispute between two competing businesses who offer software for Microsoft Sharepoint products and technologies. In its suit, AvePoint alleged that Axceler and its regional vice president mounted a false advertising campaign in an effort to convince customers that (1) AvePoint is a Chinese, rather than American, company; and (2) that AvePoint’s software is not made, developed, or supported in the U.S., but instead in India. AvePoint claimed that Axceler created a LinkedIn account for a fictitious AvePoint representative named “Jim Chung” in order to perpetuate its campaign, and that Axceler’s use of AvePoint’s registered trademark in connection with the LinkedIn account gave rise to a claim for trademark infringement. [Read more →]
November 21, 2013 Comments Off
In a client advisory issued yesterday, our colleagues Heather Morehouse Ettinger Ph.D. and Andrew Regan, Ph.D. discuss a recent district court ruling which relied on the Supreme Court’s Prometheus decision in invalidating molecular diagnostic patent claims. Prometheus held that where a patent ”focuses upon the use of a natural law,” it must ”contain other elements or a combination of elements, sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself.”
To read the full advisory, click here.
November 13, 2013 Comments Off
In a precedential opinion issued last Thursday addressing a number of issues, the Federal Circuit affirmed the district court’s finding after a bench trial that two MeadWestVaco competitors infringed MeadWestVaco’s dispenser patent, but vacated the court’s grant of summary judgment of nonobviousness in favor of MeadWestVaco, necessitating a remand on that issue. MeadWestVaco Corp. v. Rexam Beauty & Closures, Inc., 2013 U.S. App. LEXIS 19657 (Fed. Cir. Sept. 26, 2013). We have previously covered this case here, here, here, and here.
The technology at issue in MeadWestVaco involves custom-made “dispenser assemblies,” that is, spray pumps with an attached dip tube, used for dispensing fragrances. MeadWestVaco (“MWV”), Rexam, and Valois all sell spray pumps to fragrance houses. MWV developed an “invisible” dip tube for perfumes that seems to disappear when immersed in liquid, and was issued two patents related to the technology: one that contained claims specific to fragrance dispensers, and another that contained both claims specific to fragrance dispensers and claims directed to generic dispensers. After a thirteen-day bench trial, Judge Lee found that Rexam and Valois did not infringe any of the perfume-specific patent claims, but did infringe two of the claims directed to generic dispensers. Below are some highlights of the Federal Circuit’s rulings:
September 30, 2013 Comments Off
District Court Holds Inventor Testimony Goes to Weight, Not Admissibility, in Construing Claim Terms
It is well-established that in construing the claims of a patent, courts must first look to the intrinsic record, including the language of the claims themselves, the written description, drawings, and prosecution history. Where the intrinsic record is ambiguous, courts may resort to extrinsic evidence—that is, all evidence outside of the patent and its prosecution history, including testimony from experts and the inventor, dictionaries, and treatises. Regarding inventor testimony, the Federal Circuit has cautioned that “the testimony of an inventor . . . often is a self-serving, after-the-fact attempt to state what should have been a part of his or her patent application.” Bell & Howell Document Mgmt. Prod. Co. v. Altek Sys., 132 F.3d 701, 706 (Fed. Cir. 1997).
In a recent memorandum opinion, Judge Payne addressed the admissibility of inventor testimony when a patent infringement plaintiff submitted a claim construction declaration of the inventor in support of its positions on claim construction. Tax-Right, LLC v. SICPA Prod. Sec. LLC, No. 3:12-CV-657, 2013 U.S. Dist. LEXIS 100746 (E.D. Va. July 18, 2013). [Read more →]
July 25, 2013 Comments Off
In a recent client advisory, our colleagues George Snyder and Daniel Ladow discuss the recent ruling of the Supreme Court holding that human genes are not patentable, but DNA constructs that “are not a product of nature” may be patentable. To read the full advisory, click here.
June 17, 2013 Comments Off
Fourth Circuit Holds Trademark Infringement Defendant Threw in the [Paper] Towel with Respect to Preclusion Defenses
In its second published opinion vacating the judgment of the district court, the Fourth Circuit recently ordered that a jury’s verdict awarding Georgia-Pacific nearly $800,000 in damages for trademark infringement be reinstated. Georgia-Pacific Consumer Prods., LP v. Von Drehle Corp., No. 12-1444 (4th Cir. Mar. 14, 2013). The Fourth Circuit’s decision is the final chapter in a long-running battle centering on the “stuffing” of Georgia-Pacific’s “enMotion®” paper towel dispensers, found in an automated public restroom near you, with von Drehle’s toweling. We’ve previously blogged about the dispute, which has been litigated across three federal circuits, here and here.
March 26, 2013 Comments Off
Plaintiffs Porto Technology Co., Ltd.. and Porto Technology, LLC (collectively, “Porto”), recently learned that their “Exclusive Patent License Agreement” from the patent owner is NOT sufficient to give them standing to pursue patent infringement claims against Cellco Partnership d/b/a Verizon Wireless (“Verizon”). As Judge Henry E. Hudson found in Porto Technology, Co., Ltd. v. Cellco Partnership, Civil Action No. 3:12cv678 (March 19, 2013 E.D. Va.), the “Exclusive License” required Porto to obtain the patent owner’s consent before granting any sublicense and gave the patent owner the right to direct Porto to grant a sublicense to any third party identified by the patent owner. Further, the “Exclusive License” lacked any provision giving Porto the exclusive right to bring suit to enforce the patent, and was silent on Porto’s right to practice the invention under the patent. Judge Hudson ruled that these defects in Porto’s license defeated Porto’s standing to assert the patent against Verizon. Judge Hudson’s opinion can be found here: PortoVerizon
Unfortunately for Verizon, this may only be a temporary setback for Porto — Judge Hudson granted Porto 21 days to join the patent owners as Plaintiffs in the case.
March 21, 2013 Comments Off
For the second year, Troutman Sanders is hosting the first chapter in the Entrepreneurial Trilogy sponsored by i.e.* (of the Greater Richmond Chamber of Commerce), “(Beyond the) Patent Powerhouse” on Tuesday, February 5, 2013, at 5:30 pm. A panel of legal experts, including Troutman Sanders’ Robert Angle (Intellectual Property Partner), Dabney Carr (Intellectual Property Partner) and Nancyellen Keane (Intellectual Property Counsel), and MeadWestvaco’s Devin Jensen (Senior Intellectual Property Counsel), will join the i.e.* 2012 Start-Up Competition winner, Geoff Weathersby of InLieu, to address important intellectual property issues facing entrepreneurs and start-ups. Registration is FREE and can be done here: http://www.ie-rva.org/
And the Entrepreneurial Trilogy continues…
February 4, 2013 Comments Off
On March 16, 2013, the United States will become a “first-to-file” country for determining the rights of different inventors competing for a patent covering the same invention. This is part of the recent “America Invents Act” (AIA). To best preserve your rights, consider filing new applications and continuation applications before this deadline.
Until now, the U.S. has been the only “first-to-invent” country. When two inventors filed patent applications covering the same invention, the patent was given to the inventor who could prove he conceived the invention first. From March 16th and onward, the patent will be granted to the inventor who files a patent application first. This will be a “race to the Patent Office.” Inventors will lose the chance to get patent rights by showing they were the first to invent.
The “first-to-invent” system has advantages over the new “first-to-file” system. It is usually better to have the option of proving earlier inventorship than relying on the date a patent application was filed. To preserve the “first-to-invent” advantages for as long as possible, we recommend filing new and continuation applications for significant inventions in your pipeline before March 16, 2013.
February 2, 2013 Comments Off
On January 9, 2013, the U.S. Supreme Court affirmed a ruling that a broad covenant not to sue a competitor for trademark infringement eliminated any future disputes between the subject companies and divested the courts of subject matter jurisdiction under the case or controversy requirement of Article III of the Constitution. Practically speaking, this decision provides guidance to patent and trademark owners on how to foreclose challenges to the invalidity of their intellectual property assets during litigation.
Nike Inc. (Nike) owns several trademark registrations related to the appearance of its “Air Force 1” sneaker and has issued more than 1,700 color variations of the shoe. In 2009, Nike sued Already L.L.C. d/b/a Yums (Yums) for trademark infringement and related claims, alleging that Yums’ “Sugar” and “Soulja Boy” shoes infringed Nike’s “Air Force 1” sneaker. Yums counterclaimed seeking cancellation of one of Nike’s trademark registrations, as well as declaratory judgment.
January 28, 2013 Comments Off