IP Law Alert : Intellectual Property Lawyers & Attorneys : Gibbons Law Firm : Copyrights, Patent Infringement, Unfair Competition

The Gibbons Women’s Initiative is hosting an upcoming program for in-house counsel entitled, “Protecting Your Company - Trademark Basics You Need to Know,” on Thursday, March 8 from 8:30 - 10:15 am at Gibbons Newark Office.

This program will feature Catherine M. Clayton, a Director in the Gibbons Intellectual Property Department, who leads the firm’s trademark practice. Ms. Clayton has a broad range of experience in trademark and copyright law, and her practice encompasses litigation, licensing and prosecution.

Ms. Clayton will discuss trademark and other intellectual property law basics; acquisition, licensing and registration of marks; and policing and enforcement strategies for businesses.

This informative and practical program is eligible for CLE credit. Please click here for additional details and registration information.

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The New York Knicks’ rising superstar point guard, Jeremy Lin, continues to wow fans around the world. Lin’s NBA ascent also has prompted a rush to the Trademark Office.

Over 20 applications for word marks that bear the letters L-I-N already have been filed. These include LIN-SATIONAL; ALL LIN; LINSPIRATION; I’M A LINNER; LINSOMNIA: LINCREDIBLE; and other derivations using the star’s last name. The frenzy began with applications for the seemingly ubiquitous LINSANITY catch phrase, which were filed on February 7 and February 9, as the star’s career took off. Most of the applications to date have been filed on an intent to use basis, that is, the applicant has expressed a bona fide intent to use the mark in interstate commerce.

Two of the applications appear to be made by Mr. Lin himself, and claim the word marks Jeremy Lin and LINSANITY for goods in Classes 18, 21, 25, 28 and 32, relating to, e.g., sports bags; cups and mugs; clothing; action figures and sporting goods; and sports drinks.

Of course, these applications will be scrutinized under federal trademark law, including Section 2(a) of the Lanham Act, which examines whether a mark falsely suggests a connection with another person who is not the applicant; as well as Section 2(c), which bars a mark identifying a living person, unless that person has consented in writing to the mark, 15 U.S.C. § 1052. Both provisions auger well for Mr. Lin’s applications. These trademark developments will be closely watched, as will the young star’s promising career.

Ralph A. Dengler is Counsel to the Gibbons Intellectual Property Department. Todd M. Nosher, an Associate in the Gibbons Intellectual Property Department, co-authored this post.

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The recently announced Kodak bankruptcy has focused much needed attention on the intersection of bankruptcy law with IP rights.

Gibbons P.C., with robust bankruptcy and IP practices, will be participating in a live webinar on Tuesday, February 21, 2012 from 1:00 - 2:30 pm to address the impact of the Bankruptcy Code on IP licenses. The webinar will feature an update on case law developments and practical tips for dealing with IP licenses in a bankruptcy. Participants will be invited to a live Q & A session with the speakers at the end of the panel discussion. CLE credit will be available.

For more information and to register for the webinar, please click here.

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In AstraZeneca Pharms. LP. v. Apotex Corp., the Federal Circuit ruled that an Abbreviated New Drug Application (“ANDA”), filed under § 355(j)(2)(B)(ii) and limited to FDA approved, but unpatented uses of a medication, is not an act of infringement of Orange Book-listed patents covering approved but different uses of the same medication. The Court did find that Plaintiff’s allegation that its listed patents are infringed was sufficient to establish subject matter jurisdiction over the generic Defendants.

As we previously wrote, AstraZeneca and its co-plaintiffs (“AstraZeneca”) had sued ten generic drug companies alleging patent infringement under the Hatch-Waxman Act, relating to methods of treatment using Crestor®. The lower court had dismissed the infringement claims, ruling that it lacked subject matter jurisdiction because AstraZeneca had not presented a valid § 271(e)(2) claim based on the ANDA filings alone. The court also dismissed AstraZeneca’s other 271(e)(2) infringement claims as premature. That claim alleged that because the FDA will require the defendants to amend their ANDAs at some point in the future to include all FDA-approved indications, including those covered by the patents-in-suit, infringement under § 271(e)(2) would occur.

On appeal, the Federal Circuit reversed the subject matter jurisdiction decision, finding that jurisdictional requirements are met once a patent owner alleges that another’s filing of an ANDA infringes its patent under § 271(e)(2). Also, the court held that this threshold determination does not depend on the ultimate merits of the claims.

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2011 was a significant year for the “atomic bomb” of patent defenses, inequitable conduct. Inequitable conduct is a defense to patent infringement that potentially renders a patent, and its family, unenforceable when a patent applicant breaches its duty of candor and good faith to the USPTO. Two traditional hurdles for succeeding on an inequitable conduct defense were showing that withheld information or falsely disclosed information was material and the patent applicant intended to deceive the USPTO.

Prior to 2011, whether the information was considered material was guided by the duty to disclose set forth by the Code of Federal Regulations, 37 C.F.R. §1.56. The courts traditionally applied the “reasonable examiner” standard and considered whether a reasonable examiner would have considered the information important in deciding whether to allow the patent application. The information did not always need to be invalidating.

The intent element required a clear and convincing showing that the applicant made a deliberate decision to withhold a known material reference. While the materiality and intent elements were considered separate, the Federal Circuit had previously adopted a sliding scale approach in which patents could be found unenforceable with a reduced showing of intent and a strong showing of materiality, and vice versa.

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In a recent order, a judge in the United States District Court for the Central District of California held that the defendants were misjoined because even though “some of the products incorporate the same wireless technology [it] does not alter the fact that Plaintiff brings suit against unrelated defendants for independent acts of infringement.” One-E-Way Inc. v. Plantronics Inc. et al, 2:11-cv-06673, at 2 (CD Cal. January 19, 2012).

Plaintiff sued several defendants accusing them of selling and manufacturing various products containing patented digital audio technology. Id. at 1. The Court issued an Order to Show Cause on January 4, 2012 why some or all of the defendants should not be dropped from the case as a result of improper joinder. Id. In response, the Plaintiff argued that the joinder was proper because all the Defendants incorporated allegedly infringing Bluetooth technology. Id. at 2. (It does not appear the Defendants were provided an opportunity to support the Court’s Order to Show Cause.)

The Court first outlined the permissive joinder standard and accompanying cases across various districts under Fed. R. Civ. P. 20(a). In undertaking this analysis, the Court determined that for joinder to be proper, the Defendants must have engaged in related activities or otherwise acted in concert. Id. The facts in this case, however, indicated that the Defendants were being sued for possible independent acts of infringement without any connection between them. Id. As a result, the Court held that the Defendants had been misjoined and thus dropped all--without prejudice--but the first-named defendant. Id.

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On Wednesday, January 18, 2012, thousands of internet companies including Google and Wikipedia protested against the Stop Online Piracy Act (SOPA) proposed by the House and its counterpart in the Senate, the Protect IP Act (PIPA). For example, Wikipedia blacked out its website while Google collected over 7 million signatures for its anti SOPA and PIPA petition. Since the high profile protests, key House and Senate supporters have withdrawn their support, questioning the viability of both bills.

SOPA and PIPA are supported by original content providers such as the movie and music industry. The bills target “rogue” overseas internet sites trafficking copyright material and counterfeit goods. One example is the streaming of movies or television shows for free without the permission of the copyright holder thereby violating the intellectual property held by the music and movie industry. This type of piracy has been ongoing for years since the days of Napster, but avoid U.S. prosecution because the rogue sites are located outside of the country where U.S. laws cannot reach them. The goal of the proposed bills therefore is to starve the rogue sites by barring advertisers, payment facilities, and internet service providers from conducting business with these sites. Harsher criminal penalties are also proposed with a maximum of five years in prison for anyone involved with unauthorized streaming of copyright material.

While both sides agree that rogue sites violating U.S. laws should be stopped, the bills’ detractors argue that SOPA and PIPA also promote censorship and have the unintended consequences of implicating legitimate internet companies within its broad provisions. One particular concern was that user generated websites like YouTube, may be held liable under SOPA and PIPA for the content that its users upload on the site. Other concerns involve implications of an entire website even when only a minor portion link to the infringing content. Critics of SOPA and PIPA also claim that the bills weaken the safe harbor protections available under the DCMA by shifting the burden to the website owner to actively monitor its content for infringing activity.

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