Federal Circuit: Lack of Bona Fide Intent to Use at the Time of Filing Fatal to Trademark Application

In a recent ruling the Federal Circuit affirmed the decision of the Trademark Trial and Appeal Board (TTAB) sustaining an opposition against a trademark application on the grounds that the applicant failed to prove that it had a “bona fide” intent to use the mark in commerce at the time he filed the application. M.Z. Berger & Co. v. Swatch AG, No. 2014-1219, 2015 U.S. App. LEXIS 9276 (Fed. Cir. 2015). While the TTAB has frequently sustained oppositions based on an applicant’s lack of bona fide intent to use the mark in commerce, this is the first time the Federal Circuit has addressed this issue. Continue reading this entry

Supreme Court on Induced Infringement: Good-Faith Belief of Invalidity Not a Defense and Knowledge of Infringement Required

In a 6-2 decision this week, the United States Supreme Court in Commil USA, LLC v. Cisco Systems, Inc., 575 U.S. ____ (2015) held that an accused infringer’s good-faith belief of patent invalidity is not a defense to a claim of induced infringement and stressed that induced infringement requires knowledge of infringement (as opposed to mere knowledge of a patent). Justice Kennedy wrote the majority opinion. Justice Scalia dissented, joined by Chief Justice Roberts, and Justice Breyer took no part in the decision.

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The Importance of Contracts for Joint Infringement in Patent Cases

It has been about a year since the Supreme Court rendered its decision in Limelight v. Akamai regarding induced infringement for methods performed by two or more actors. At that time, commentators predicted that attention would shift to contract analysis for determining direct, rather than induced, infringement in these multi-actor method situations, known as joint or divided infringement.  The recent decision by the Federal Circuit in Akamai v. Limelight on remand, as well as a search of recent district court cases, shows that those predictions have now come true. In view of the importance of contract analysis for determining joint infringement, practitioners would do well to obtain contracts early in discovery to determine the strength of their positions, and practitioners drafting contracts should be mindful of potential joint infringement implications.

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Deposition Practice Tips: PTAB Guidance for Dealing With Suspected Witness Coaching

Question: What can you do when you suspect that opposing counsel engaged in inappropriate witness coaching during a PTAB deposition?  Answer: Ask the witness about the suspected off-the-record discussions and call the Board from the deposition, if necessary.

In FLIR Systems, Inc. v. Leak Surveys, Inc., IPR2014-00434, Paper 12 (Feb. 10, 2015), in a post-conference call order, the Board addressed a party’s claim that opposing counsel engaged in inappropriate deposition witness coaching during an expert’s deposition.

At the deposition, the witness divulged certain “unexpected” testimony during cross-examination.  Prior to redirect, petitioner’s counsel and the deponent had off-the-record discussions during a half-hour recess.  On redirect, the witness made an attempt to overcome, and possibly explain away, the unexpected testimony.  The patent owner suspected that improper witness coaching occurred during recess given the witness’s ability to address the “unexpected” testimony that arose during cross.  When patent owner’s counsel questioned the witness about the nature of the off-the-record conversations, the witness refused to answer under petitioner’s claim of privilege.

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Federal Circuit Finds Disclaimer Based on “Object of Invention” Language

The Federal Circuit’s recent decision in Pacing Technologies, LLC v. Garmin International, Inc.  (No. 2014-1396) provides patent litigators with a new tool for claim construction arguments and may make patent prosecutors reconsider their drafting techniques. The Federal Circuit held that a patent specification’s characterization of disclosed “objects of the invention”—a phrase commonly used by patent drafters—effected a disclaimer in claim scope.

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