The Ninth Circuit Court of Appeals issued an opinion last week that, while not necessarily controversial or new, serves as a good reminder for trademark litigators: There must be actual infringement to prevail in a trademark infringement lawsuit. While this would seem to be obvious, the Ninth Circuit thought it was an important enough reminder to actually publish the decision, and even more surprisingly, issued their unanimous opinion just over a month after oral argument.Continue Reading Disparage At Will, Just Don’t Infringe – The Message From The Ninth Circuit In Freecycle
New U.S. Patent and Trademark Office Rules
The United States Patent and Trademark Office (“PTO”) has revised the patent rules in an attempt to reduce the PTO’s workload, although the stated purpose is to “allow the Office to conduct a better and more thorough and reliable examination of patent applications.” The rule changes were initially proposed in January 2006 and the final rules were published in the Federal Register on August 21, 2007. The changes will take effect on November 1, 2007, although some rules will apply to patent applications filed before November 1, 2007 as well as those filed after November 1, 2007.
Continue Reading New U.S. Patent and Trademark Office Rules
Patent Infringement Willfulness Redefined and Work Product Preserved
This week, in an en banc decision, the Federal Circuit Court of Appeals significantly altered the law of willful patent infringement and resolved a confusing issue concerning the waiver of the attorney-client privilege. In In re Seagate Technology, LLC (August 20, 2007), the court made it harder for a patent owner to prove willful infringement. The court also clarified that the waiver of the attorney-client privilege between the client and patent opinion counsel does not result in a waiver of the privilege and the work product protection between the client and its litigation counsel.
Continue Reading Patent Infringement Willfulness Redefined and Work Product Preserved
Revisiting Brulotte and Royalty Agreements for Patented Inventions
On September 5, 2007, the Ninth Circuit issued its opinion in Zila, Inc. v. Tinnell, in which it considered the issue of a contract for payment of royalties on a patented invention in light of the 1964 U.S. Supreme Court Case, Brulotte v. Thys. In what the Court considered to be an “otherwise unremarkable case,” the Ninth Circuit found it necessary to consider “the impact and bounds of Brulotte” in determining whether Tinnell was entitled to royalty payments on a patented invention he had assigned to Zila, Inc.Continue Reading Revisiting Brulotte and Royalty Agreements for Patented Inventions
Ninth Circuit Holds Modified Terms of Use Unenforceable Where User Not Properly Notified of the Changes
By Scott Hervey
It’s not uncommon for companies to change or modify the terms under which they provide services to consumers. This is true whether the company is a traditional brick and mortar company or Internet based. When traditional companies make a change to service terms they usually send some type of written notice to the consumer. But for some reason this never caught on for Internet based companies. Often the Internet based Company would merely make changes to its terms of use (the contract which governs the consumers’ use of the relevant website and its services) and post the revised terms of use on its website. In most instances, unless the user reviewed the terms of use frequently and compared the current version to the version that was posted at the time the consumer became a user of the site, the user would be unaware of any changes.Continue Reading Ninth Circuit Holds Modified Terms of Use Unenforceable Where User Not Properly Notified of the Changes