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Accused activities occurring outside the United States found insufficient to support a finding of infringement

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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USA
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March 12 2013

Patent infringement is governed by section 271(a), which applies only to activity "within the United States." Courts often face the question of

Federal Circuit construes claims in first instance to determine issue of infringement

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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USA
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August 27 2009

In Wavetronix v. EIS EIectronic Integrated Systems, Nos. 08-1129, -1160 (Fed. Cir. July 29, 2009), the Federal Circuit affirmed the district court’s finding of noninfringement

Federal Circuit affirms award of attorneys’ fees for litigation misconduct

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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USA
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April 28 2009

In ICU Medical, Inc. v. Alaris Medical Systems, Inc., No. 08-1077 (Fed. Cir. Mar. 13, 2009), the Federal Circuit held that the district court correctly granted SJ of noninfringement and SJ of invalidity, did not commit clear error in awarding attorneys fees, and did not abuse its discretion in granting Rule 11 sanctionsall in favor of Alaris Medical Systems, Inc. (“Alaris”

Zino Davidoff SA v. CVS Corp

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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USA
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August 24 2009

On appeal from the Southern District of New York’s grant of a PI against defendant’s sale of gray-market COOL WATER perfumes with plaintiff’s unique production codes obscured or removed, the Second Circuit affirmed, finding the codes served two legitimate purposes under the Lanham Act

The mere fact that a document is distributed without a legal obligation of confidentiality is not in and of itself sufficient to render the document a “printed publication” under 35 USC 102(b)

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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USA
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April 28 2009

In Cordis Corp. v. Boston Scientific Corp., Nos. 08-1003, -1072 (Fed. Cir. Mar. 31, 2009), the Federal Circuit affirmed the district court’s denial of Boston Scientific Corporation’s (“Boston Scientific”) and Cordis Corporation’s (“Cordis”) motions for JMOL or, in the alternative, a new trial

Factual Findings Supporting Award of Priority Reviewed for Substantial Evidence

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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USA
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April 28 2009

In Henkel Corp. v. Proctor & Gamble Co., No. 08-1447 (Fed. Cir. Mar. 18, 2009), the Federal Circuit affirmed the Board’s award of priority of invention to The Proctor & Gamble Company (“P&G”) because the Board’s underlying factual determinations supporting the award were reasonable

Adding “.com” to a descriptive term does not create distinctiveness to support trademark registration

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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USA
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August 27 2009

In In re Hotels.com, L.P., No. 08-1429 (Fed. Cir. July 23, 2009), the Federal Circuit affirmed the TTAB’s decision to refuse registration of the service mark HOTELS.COM for the services of “providing information for others about temporary lodging; travel agency services,” on the ground that the mark was a generic term for such services

Means-plus-function claim indefinite where cited structure describes outcome rather than means for achieving outcome

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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USA
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August 27 2009

In Blackboard, Inc. v. Desire2Learn Inc., Nos. 08-1368, -1396, -1548 (Fed. Cir. July 27, 2009), the Federal Circuit affirmed the district court’s grant of SJ that certain claims of U.S. Patent No. 6,988,138 (“the ’138 patent”) are indefinite but reversed the district court’s denial of JMOL on three other claims that the Federal Circuit concluded are anticipated as a matter of law

Federal Circuit reverses the TTAB’s strict rule of fraud under Medinol

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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USA
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August 31 2009

On Aug. 31, 2009, the Court of Appeals for the Federal Circuit (“Federal Circuit”), in an important decision for both trademark owners and practitioners, reversed the Trademark Trial and Appeal Board’s (“TTAB” or “Board”) fraud holding in In re Bose Corp

Failure to grant trademarks does not violate applicant’s constitutional or treaty-based rights

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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USA
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August 27 2009

In In re Shinnecock Smoke Shop, No. 09-1100 (Fed. Cir. July 1, 2009), the Federal Circuit concluded that the TTAB did not err in affirming the rejection of the applicant’s trademarks under section 2(a) of the Trademark Act because they falsely suggested a connection to a nonsponsoring Indian nation

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Accused activities occurring outside the United States found insufficient to support a finding of infringement

Federal Circuit construes claims in first instance to determine issue of infringement

Federal Circuit affirms award of attorneys’ fees for litigation misconduct

Zino Davidoff SA v. CVS Corp

The mere fact that a document is distributed without a legal obligation of confidentiality is not in and of itself sufficient to render the document a “printed publication” under 35 USC 102(b)

Factual Findings Supporting Award of Priority Reviewed for Substantial Evidence

Adding “.com” to a descriptive term does not create distinctiveness to support trademark registration

Means-plus-function claim indefinite where cited structure describes outcome rather than means for achieving outcome

Federal Circuit reverses the TTAB’s strict rule of fraud under Medinol

Failure to grant trademarks does not violate applicant’s constitutional or treaty-based rights

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