Wealth of Ideas Blog

Update On False Marking

Paul Lerner — Tue, 27 Jul 2010 14:14:55 -0400

A few weeks ago, we wrote of the false marking case of Pequignot v. Solo Cup Co. (See A Vanishing Opportunity?). We noted that the appellate judges seemed to be telegraphing their punch during oral arguments on the appeal. In particular, we referred to the suggestion, by one of the judges, that the false marking statute was criminal in nature, whereby intent must be proved “beyond a reasonable doubt.”

A Big Troll?

Paul Lerner — Tue, 27 Jul 2010 14:10:02 -0400

We have previously commented upon the shabby treatment accorded small, non-practicing entities (NPEs) by the courts. Well, we are now able to report that, in at least one respect, large corporations are being treated in like manner to small ones. A large corporation, seeking to enforce a patent which it does not practice, i.e. a large NPE, gets the same short shrift as a small NPE. (Pitney Bowes Inc. et al. v. Zumbox, Inc.)

Good News, Bad News

Paul Lerner — Tue, 27 Jul 2010 14:05:56 -0400

By this time, the reader really should be aware that joint infringement of a method claim requires that one party – known as the “mastermind” (we are not making this up) – must control the actions of any and all other parties – known as the “chumps” – involved in performing other steps of the claimed method.

Any Volunteers?

Paul Lerner — Tue, 27 Jul 2010 14:00:52 -0400

Use of another party’s trademark, in connection with the sale of your goods, is likely trademark infringement. What about use of another party’s trademark as part of your internet domain name – is that an infringement? Maybe not. (Toyota Motor Sales, USA v. Farzad Tabari and Lisa Tabari d/b/a Fast Imports)

Drink Responsibly

Paul Lerner — Wed, 21 Jul 2010 14:20:04 -0400

Many legal cases present a conflict between right and wrong, between good and evil, or between morality and avarice. Now, we have a case which presents the conflict between whisky and tequila. (Maker’s Mark Distillery, Inc. v. Diageo North America Inc. et al.)

Mystery Solved

Paul Lerner — Wed, 21 Jul 2010 14:12:43 -0400

Copyright registration is a prerequisite to filing suit for copyright infringement. The question is, ‘when is a copyright registered’? Is registration effective upon the filing of an application for registration, or when a registration issues? Surprisingly, this question has remained unanswered – until now. (Cosmetic Ideas, Inc. v. IAC/Interactive Corp., et al.)

Life Imitates Art

Paul Lerner — Wed, 21 Jul 2010 14:08:08 -0400

The ways in which things are used change over time. For example, “orange juice – it isn’t just for breakfast anymore.” Well, now the insanity defense isn’t just for serial killers and child molesters – it’s being used by accused patent infringers. (Karyn McGaughey, et al. v. Bayer Corporation, et al.)

Texas Hold 'Em

Paul Lerner — Wed, 21 Jul 2010 13:43:41 -0400

“You gotta know when to hold ‘em; know when to fold ‘em.”¹ (LaserDynamics, Inc. v. Quanta Computer, Inc.)

LaserDynamics sued Quanta for patent infringement. An East Texas jury found the patent not invalid and infringed. Being an EAST TEXAS jury, they went on to find the infringement willful and awarded actual damages of $52M. The Court entered Final Judgment in accord with the jury’s verdict, adding $5.456M in prejudgment interest, but not adding increased damages in respect of the willfulness.

Of All the Nerve

Paul Lerner — Wed, 21 Jul 2010 13:20:12 -0400

In a previous blog entry, we commented upon the growing disfavor with which the courts now seem to view actions for patent mismarking. Courts now are requiring evidence that the defendant intended to deceive the public.

Fewer Secrets

Paul Lerner — Wed, 07 Jul 2010 13:51:03 -0400

Most people – and this includes lawyers – believe that settlement negotiations are “privileged” (legalspeak for “not subject to being disclosed to the opposing party during litigation”). Well, NOT ALWAYS. (Software Tree LLC v. Red Hot Inc. et al.)

“While the Court recognizes internal settlement strategy may be protected by attorney-client privilege or work-product immunity … the Court permits discovery of negotiations pertaining to agreements and licenses entered into outside the context of litigation …” (emphasis added).