Category: Litigation

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St. Regis Mohawk Tribe petition for centiorari denied
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Can the mere registration of company name infringe? In the case of BMW, yes!
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U.S. Supreme Court Decides Two Copyright Cases and Impacts Registration Strategy for Copyright Owners
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US: Helpful Guidance From Judge Bryson Regarding Stays Pending IPR
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K&L Gates releases 2017/18 Patents Year in Review – Second Edition
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New parallel importation laws in Australia
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Worth the fight: IP dispute resolution that won’t break the bank
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US: Estoppel Attaches Even If Dismissed Without Prejudice
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US PTAB Trial Practice Guide Updates
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Frucor given red card over ‘V’ green trade mark

Can the mere registration of company name infringe? In the case of BMW, yes!

On 12 February 2019, car manufacturer (and globally recognised car brand) BMW was granted summary judgment in its claims for passing-off and trade mark infringement against BMW Telecommunications Ltd and Benjamin Michael Whitehouse (the sole director of BMW Telecommunications Ltd). The respondents were a consultancy business providing services for railway signaling and telecommunications.

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U.S. Supreme Court Decides Two Copyright Cases and Impacts Registration Strategy for Copyright Owners

March 4, 2019, marked the first time in over 100 years that the Supreme Court of the United States issued two copyright decisions in the same day[1] – both unanimous and both strict interpretations of statutory language.  In the first of these two decisions, the Supreme Court unanimously held in Fourth Estate Public Benefit Corporation v. Wall-Street.com that copyright owners must obtain a registration from the U.S. Copyright Office prior to filing an infringement action.[2]  The Court, in an opinion authored by Justice Ruth Bader Ginsburg, resolved a long-standing circuit split on whether the “application approach” (merely filing a copyright application) or the “registration approach” (obtaining a copyright registration) is sufficient to file a copyright infringement suit under § 411(a) of the Copyright Act of 1976.  In the second decision, the Court in Rimini Street, Inc. v. Oracle USA, Inc. determined that “full costs” under § 505 of the Copyright Act did not authorize awarding litigation expenses beyond those specified in the general costs statute.

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US: Helpful Guidance From Judge Bryson Regarding Stays Pending IPR

Judge Bryson of the Federal Circuit, sitting by designation in the Eastern District of Texas, issued one of the clearest articulations to date in favor of granting a stay pending inter partes review.[1] Notably, in this case, claim construction had ended, discovery was nearly complete, and trial was set to begin in three months. The defendant, Samsung, had recently joined an instituted IPR covering six of the eleven asserted claims and moved to stay the district court proceeding.

Judge Bryson clearly articulated the three factors that district courts consider when analyzing whether or not to grant a stay:
1) whether the stay will unduly prejudice the non-moving party;
2) whether the proceedings had reached an advance stage, including the stage of discovery and whether a trial date is set; and
3) whether the stay will likely result in simplifying the case before the court.

After noting that the congressional intent of post-grant review before the patent office was to be a “quick and cost effective alternative[] to litigation” to provide a “faster, less costly alternative to civil litigation to challenge patents” and to be “an inexpensive substitute for district court litigation that allows key issues to be addressed by experts in the field” he proceeded to walk through the three factors.

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K&L Gates releases 2017/18 Patents Year in Review – Second Edition

2017/18 was an intriguing 12 months in the Australian patent landscape, with Courts being called upon to deliver decisions in relation to a number of issues that have not previously been judicially considered. The judgments delivered in this period have dealt with the patentability of methods claims deploying genetic information, patent term extensions for “Swiss-style” claims and whether applying to list a product on the Pharmaceutical Benefits Scheme constitutes an act of patent infringement.

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New parallel importation laws in Australia

Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 receives Royal Assent on 24 August 2018

The proposed changes to parallel importation law that we blogged about in January 2018 and May 2018 have become law.

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Worth the fight: IP dispute resolution that won’t break the bank

Small businesses and individual rights holders are set to benefit from the Intellectual Property National Pilot Scheme in the Federal Circuit Court

A specialist IP list in the Federal Circuit Court of Australia (FCC) is open for business, with the goal of achieving quick, cheap and effective dispute resolution of intellectual property matters.

The Intellectual Property National Pilot Scheme commenced on 1 July 2018 and appeals to small and medium-sized enterprises, individual rights holders and young innovators who may have previously avoided the court system even though they had a legitimate right or a good defence, but found that it simply wasn’t worth the fight.

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US: Estoppel Attaches Even If Dismissed Without Prejudice

On August 16, 2018, the U.S. Federal Circuit addressed when the inter partes review (IPR) time bar clock begins to tick.  See Click-to-Call Tech. LP v. Ingenio, Inc., Slip Op. 2015-1242 (Fed. Cir. Aug. 16, 2018).  The en banc Federal Circuit addressed whether the one year estoppel clock begins for a properly served complaint when the complaint is subsequently dismissed without prejudice.  The panel found that the § 315(b) time bar applies.  The filing of such a complaint, though later voluntarily dismissed, has previously formed the basis for declaratory judgment jurisdiction where the initial defendant later brings a validity challenge. See TransWeb, LLC v. 3M Innovative Props. Co., 812 F.3d 1295, 1300 (Fed. Cir. 2016).

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US PTAB Trial Practice Guide Updates

On Monday, August 13, 2018, the U.S. Patent Trial and Appeal Board (PTAB) issued a notice updating the Trial Practice Guide. The update provided revisions to Sections I.G. (Expert Testimony), II.A.3. (Word Count and Page Limits), II.D.2. (Considerations in Instituting a Review), II.I. (Reply to Patent Owner Response and Reply for a Motion to Amend; Sur-Replies), II.K. (Challenging Admissibility; Motions to Exclude; Motions to Strike), II.M. (Oral Hearing), and Appendix A (Sample Scheduling Order).  The update further contemplates additional revisions that will be released on a rolling basis when applicable.

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Frucor given red card over ‘V’ green trade mark

On 2 July 2018 the Federal Court of Australia dismissed Frucor Beverages Ltd’s appeal regarding the registrability of the colour Pantone 376C with respect to the energy drink ‘V’.

The Frucor mark in question, Australian trade mark no. 1496541, was first filed with IP Australia on 5 June 2012. Registration of this mark was opposed by the Coca Cola Company on two grounds. First, Coca Cola alleged that while the trade mark was filed for Pantone 376C, the swatch attached to the application that visually demonstrated the colour was not actually Pantone 376C. Furthermore, it argued that regardless of the colour actually filed, it was not capable of distinguishing Frucor’s goods from other similar goods and services. The Registrar of Trade Marks dismissed the first ground of opposition but supported the second and the registration was denied.

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