A Familiar Riff: Gibson's Trade Dress Application Once Again Asks Whether a Guitar Body Shape Can Indicate Source

In the same way that Rock and Roll will never die (according to Neil Young) it would appear that battles over the protection of trade dress embodied in the shape of guitars will likewise never die. In the latest installment of guitar body trade dress disputes, Gibson Brands, Inc.’s application for trade dress protection for its ES-339 guitar body shape, shown below, has been opposed by 15 guitar manufacturers on the basis that the body shape is generic and has not acquired distinctiveness.

Gibson DrawingGibson’s attempt to obtain registered protection for its ES-339 guitar line goes back to 1993, when its predecessor, Gibson Guitar Corp., applied to register the trade dress protection of the body shape of Gibson’s ES-335 line. According to Gibson’s advertising material, the ES-335 had essentially the same body shape as the ES-339 but was slightly larger and heavier than the ES-339. Continue reading this entry

PTAB Requires Additional Showing for Cross-Examination If Testimony Was Prepared for Another Proceeding

A recent order from the Patent Trial and Appeal Board (“Board”) in an inter partes review illustrates how the Board may handle situations where a party seeks to depose a declarant whose testimony was submitted through a declaration from another proceeding – requiring the party to demonstrate that the deposition is “necessary in the interest of justice.”

Generally, in an IPR, direct testimony is submitted in the form of an affidavit. See, e.g., 37 C.F.R. § 32.23(a). The declarant is then subject to cross-examination by deposition. However, a patent in an IPR may have been the subject of a previous dispute, e.g., district court litigation or reexamination, where testimony, declarations or expert opinion may have addressed matters related to the ongoing IPR. When such materials are submitted as exhibits in an IPR, it is not automatic that the declarant will be subjected to cross-examination by deposition. See, e.g., 37 C.F.R. § 42.51. Continue reading this entry

Attorneys' Fees Awarded to Small Business Patent Owner to Advance Considerations of "Compensation and Deterrence"

A recent case in the District of Connecticut demonstrates that courts may be more willing to award attorneys’ fees to a small plaintiff, encouraging such a plaintiff to protect its patent when it is the plaintiff’s “primary business asset[],” even if potential damages for patent infringement are relatively small and the accused products are only a “minute portion” of the defendant’s business. In Romag Fasteners, Inc. v. Fossil, Inc., No. 3-10-cv-01827 (D. Conn. Aug. 14, 2014), the court granted attorneys’ fees and costs to the plaintiff under 28 U.S.C. § 285 and noted that “this case raises special concerns regarding compensation and deterrence of patent infringement.” The Court interpreted Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749, 1755 (2014), in its analysis, and while many people have viewed Octane Fitness as an opportunity for defendants to more easily obtain fees in weak cases brought by plaintiffs (including “patent trolls” that bring weak cases hoping defendants will settle rather than spend attorneys’ fees defending the case), Romag Fasteners shows that plaintiffs may also now sometimes obtain fees in cases they might not have prior to Octane Fitness. Continue reading this entry

Irreparable Harm No Longer Presumed in the Third Circuit for Lanham Act Plaintiffs

In a recent decision, the Court of Appeals for the Third Circuit eliminated the presumption of irreparable harm for Lanham Act plaintiffs seeking preliminary injunctive relief. In Ferring Pharms., Inc. v. Watson Pharms., Inc., No.13-2290 (Aug. 26, 2014), the Third Circuit extended the Supreme Court’s ruling in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 403 (2006), and Winter v. Natural Resources Defense Council, 555 U.S. 7 (2008), to claims brought under the Lanham Act. Under the Third Circuit’s decision, a plaintiff in a trademark infringement or false advertising lawsuit seeking a preliminary injunction in the Third Circuit now needs to prove that irreparable harm is “likely” to occur. Such harm is no longer presumed from a mere showing of likelihood of success on the merits. Instead, a plaintiff needs to present compelling evidence that its brands, products or services will likely be harmed should an injunction not issue. Continue reading this entry

Are Permanent Injunctions in Patent Cases Back in Style?

Two recent district court decisions out of the District of Delaware have again placed the spotlight on permanent injunctions in patent cases. Prior to 2006, there was a longstanding general rule that courts would issue permanent injunctions against patent infringement absent exceptional circumstances. That all changed with the Supreme Court’s landmark eBay decision, which overruled that general rule and replaced it with a four-factor test providing for equitable discretion. Since that time, permanent injunctions have somewhat fallen out of view in remedy considerations. For example, a number of courts have denied injunctions even when the plaintiff was a direct competitor of the defendant.[1]  The two recent district court decisions are a reminder that courts are willing to award permanent injunctions, especially in circumstances where the plaintiff practices its invention and the defendant is a direct market competitor. Continue reading this entry