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07/07/2010 07:41:00 AM EST

Top 10 Patent Cases for the Month of May 2010

1. Yip v. Hugs to Go LLC, 2010-1112, UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT, 2010 U.S. App. LEXIS 10932, May 28, 2010, Decided,  THIS DECISION WAS ISSUED AS UNPUBLISHED OR NONPRECEDENTIAL AND MAY NOT BE CITED AS PRECEDENT. PLEASE REFER TO FEDERAL RULES OF APPELLATE PROCEDURE RULE 32.1 GOVERNING THE CITATION TO UNPUBLISHED OPINIONS.

OVERVIEW:  Complaint alleging infringement of patents and copyrights for children's sound-based books was properly dismissed since prior actions alleging same infringement barred claims against book seller and its owner by res judicata and collateral estoppel, and there were no allegations that successor to seller existed at time of alleged infringement.

CORE TERMS:  final judgment, res judicata, pro se, leave to amend, prior suits, patent, struck, present action, notice of appeal, infringing ...

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2. Leviton Mfg. Co. v. Universal Sec. Instruments, Inc., 2009-1421, UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT, 2010 U.S. App. LEXIS 10917, May 28, 2010, Decided

OVERVIEW:  While a patentee's failure to disclose another application during prosecution of a similar patent was material because a reasonable examiner would want to consider both applications, a summary judgment finding of inequitable conduct supporting attorneys' fees under 35 U.S.C.S. § 285 was not proper because facts were in dispute regarding intent.

CORE TERMS:  patent, inequitable conduct, summary judgment, disclosure, examiner, disclose, inventor, inventorship, deceptive, double-patenting ...

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3. Dow Jones & Co. v. Ablaise Ltd., 2009-1524, UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT, 2010 U.S. App. LEXIS 10916, May 28, 2010, Decided

OVERVIEW:  Patent invalidity claim should have been dismissed by the district court for lack of subject matter jurisdiction where the patentee offered a covenant not to sue to the party claiming invalidity because the covenant extinguished any current or future Article III case or controversy between the parties involved in the infringement suits.

CORE TERMS:  web, user, covenant, formatting, patent, format, tag, invalidity, infringement, skill ...

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4. Fujifilm Corp. v. Benun, 2009-1487, UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT, 605 F.3d 1366; 2010 U.S. App. LEXIS 10827, May 27, 2010, Decided

OVERVIEW:  Patents directed to lens-fitted film packages, or single-use cameras, were infringed by refurbishment in a foreign country and re-importation into the U.S. since recent precedent did not eliminate the territoriality requirement for a patent-exhausting first sale, and a reasonable royalty was properly determined in proportion to the royalty base.

CORE TERMS:  royalty, patent, infringing, royalty rate, contempt, infringement, chips, new trial, exhaustion, practicing ...

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5. In re Deutsche Bank Trust Co. Ams., Miscellaneous Docket No. 920, UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT, 605 F.3d 1373; 2010 U.S. App. LEXIS 10837, May 27, 2010, Decided,  As Corrected June 2, 2010.

OVERVIEW:  Where an alleged patent infringer sought a protective order, under Fed. R. Civ. P. 26(c), to bar to patent prosecution by counsel who gained access in litigation to its confidential documents, a district court was required to apply Federal Circuit precedent to determine which attorneys should be covered by the bar.

CORE TERMS:  patent, competitive, protective order, disclosure, inadvertent, interim, inventions, confidential, prosecuting, trial counsel ...

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6. Vizio, Inc. v. ITC, 2009-1386, UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT, 605 F.3d 1330; 2010 U.S. App. LEXIS 10724, May 26, 2010, Decided

OVERVIEW:  International Trade Commission properly found that makers of certain digital television products violated 19 U.S.C.S. § 1337 through importation or sale of digital televisions that infringed claims of a patent. However, products that employed a "work-around" did not infringe because they did not satisfy all of the patent claim limitations.

CORE TERMS:  map, channel, datastream, decoding, infringement, stream, packetized, suitable, invention, packet ...

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7. Honeywell Int'l, Inc. v. United States, 2008-5181, UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT, 2010 U.S. App. LEXIS 10577, May 25, 2010, Decided

OVERVIEW:  Patentee had standing to pursue a claim for just compensation under the Invention Secrecy Act, 35 U.S.C.S. § 183, for the government's pre-issuance use of its night vision goggles invention because the patent at issue resulted from the original patent application, as amended, on which the government issued the secrecy order.

CORE TERMS:  display, color, red, red light, band, filter, perceptible, cockpit, invention, disclose ...

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8. Carter v. ALK Holdings, Inc., 2008-1168, UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT, 605 F.3d 1319; 2010 U.S. App. LEXIS 10456; 94 U.S.P.Q.2D (BNA) 1769, May 24, 2010, Decided

OVERVIEW:  Determination of patent attorney's compliance with Manual of Patent Examination Procedure (MPEP) and Code of Federal Regulations (CFR) was a necessary element of the malpractice claim. Count VIII, which alleged violation of fiduciary duty, involved a substantial question of federal patent law and, as to Fed. R. Civ. P. 11, was not frivolous.

CORE TERMS:  patent, inventor's, frivolous, patent law, practitioner, trademark, invention, fiduciary duty, malpractice, federal law ...

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9. Aspex Eyewear, Inc. v. Clariti Eyewear, Inc., 2009-1147, 2009-1162, UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT, 605 F.3d 1305; 2010 U.S. App. LEXIS 10457; 94 U.S.P.Q.2D (BNA) 1856, May 24, 2010, Decided

OVERVIEW:  Elements of equitable estoppel were established without material factual dispute; thus, district court did not abuse discretion in weighing equities. Court affirmed ruling that patent holder was equitably estopped from suing alleged infringer for infringement. Act of bringing suit did not produce an exceptional case in terms of 35 U.S.C.S. § 285.

CORE TERMS:  patent, infringement, patentee, silence, inequitable conduct, equitable estoppel, misleading, infringer, exceptional, summary judgment ...

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10. Microthin.com, Inc. v. SiliconeZone USA, LLC, 2010-1079, UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT, 2010 U.S. App. LEXIS 10275, May 20, 2010, Decided,  THIS DECISION WAS ISSUED AS UNPUBLISHED OR NONPRECEDENTIAL AND MAY NOT BE CITED AS PRECEDENT. PLEASE REFER TO FEDERAL RULES OF APPELLATE PROCEDURE RULE 32.1 GOVERNING THE CITATION TO UNPUBLISHED OPINIONS.

OVERVIEW:  Where the independent claims of the patent in suit did not limit the description of thin non-slip pads to being not sticky to the touch, the district court had not erred in finding the independent claims to be invalid as anticipated, under 35 U.S.C.S. § 282.

CORE TERMS:  patent, non-slip, surface, invention, specification, discovery, sticky, jacket, summary judgment, mat ...

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