Trademark litigants often submit survey evidence to prove that there is (or is not) a likelihood of consumer confusion between two trademarks. Parties hoping to rely on such surveys should be careful, however, to mimic market conditions as closely as possible—for instance, ensuring that the emulated market conditions include an appropriate context reflecting how purchases actually are made. Parties also should heed professional survey research in constructing survey designs, so that the results are considered trustworthy and directed to the relevant issue. READ MORE
These matters involved issues such as government contractor immunity to patent infringement; the effect of amendments to a patent licensing agreement; the effect of an expired utility patent for a chemical composition on the validity of a related trademark for medical implants; the copyrightability of short phrases and the merger doctrine; the copyrightablity and fair use of religious materials; and multiple oppositions to office actions, and petitions to cancel trademark registrations to the Trademark Trial & Appeal Board.
Daniel has recently co-authored a scholarly article with Warrington S. Parker III entitled, "The Differing Approaches to Preemption Under the Uniform Trade Secrets Act" that was published in Volume 49, Issue 2 of the Tort Trial & Insurance Practice Law Journal. Daniel is also a contributing author to the NorCal IP Blog, which covers notable new intellectual property case filings and verdicts in the Northern District of California. Links to articles Daniel has authored can be found under the "Publications" section of this bio.
Posts by: Daniel Justice
Late last month, we reported on an Order from the Southern District of Texas invalidating identify theft prevention software under Alice as being directed to an abstract idea and lacking a sufficiently inventive concept. There, Magistrate Judge Palermo found that the idea of preventing identity theft was an idea that has “existed since the dawn of civilization” and compared the claimed invention to the age-old practice of signature comparison and the more recent practice of identification cards. In a similarly-reasoned order, Judge Lefkow of the Northern District of Illinois recently invalidated a patent for a biometric identification and verification system by finding that the patent claimed the idea of comparing known information about an individual to a second set of information for the purposes of confirming an individual’s identity—a “well-known concept that humans have always performed.” READ MORE
Litigants continue to use Alice and its progeny as a powerful tool to invalidate business method and software patents. That’s what happened recently in Mantissa Corp. v. Ondot Systems, Inc., et al, when Magistrate Judge Palermo of the Southern District of Texas invalidated fifty-two claims asserted by a software company from two of its patents (U.S. Patent Nos. 7,779,456 and 8,353,027) covering a “method of protecting use of an entity’s identity, the method being executed on electronic computer hardware in combination with software,” i.e., identity protection software for banking cards. In invalidating the claims under § 101, Judge Palermo relied heavily on comparisons to claims invalidated as abstract ideas in previous cases, including Alice, and ultimately found that the patent claims at issue covered merely a computer-implemented method of preventing identity theft—an idea that has “existed since the dawn of civilization.” READ MORE
It is not uncommon for parties to race to file competing patent suits in their preferred districts once negotiations break down and litigation appears necessary. In some cases, recognizing that federal courts generally give priority to cases which are the “first filed” and procedurally further along, a party may attempt to delay service of an opposing party’s complaint. That was the apparent strategy of Japan-based Godo Kaisha IP Bridge 1 (“IPB”) in its patent dispute with San Jose-based Xilinx, Inc. (“Xilinx”). But as IPB discovered, delay tactics do not always work. READ MORE
Order Granting Motion for Default Judgment, Adobe Systems Inc. v. Software Tech, et al., Case No. 5:14-cv-02140-RMW (Judge Ronald M. Whyte)
Everyone in the software field (and probably every computer user) is familiar with Adobe and at least one of its products, including Acrobat and Photoshop. Popular software vendors like Adobe are often the victims of piracy and the unauthorized distribution of their products. As such, many have adopted policing measures like employing investigators to purchase products from third-party distributors to verify authenticity and proper licensing. READ MORE
Order Re: Claim Construction and Invalidity, Altera Corp. v. PACT XPP Tech., AG, Case No. 14-cv-02868-JD (Judge James Donato)
When filing a patent application, make sure to cross your t’s and dot your i’s—and also check for typos and ambiguous antecedents. In a recent order addressing claim construction and a motion for summary judgment on indefiniteness, Judge Donato invalidated a patent claim based on a typographical error, and nearly invalidated a claim for an ambiguous antecedent. READ MORE
Order Re: Discovery Dispute, Finisar Corp. v. Nistica, Inc., Case No. 13-cv-03345-BLF (Magistrate Judge Jacqueline Scott Corley)
One of the more contentious issues in civil litigation involves the question of under what circumstances can the highest ranking officer in a corporation find himself or herself answering questions at a deposition related to the business activities of the company. In a recent order in a patent infringement suit, Magistrate Judge Corley examined this “apex” deposition doctrine and compelled the deposition of the CEO of the plaintiff Finisar Corp., subject to several limitations on how the deposition was to be conducted. READ MORE
Order Directing Entry of Partial Judgment Under FRCP 54(b), Largan Precision Co., Ltd., v. Genius Electronic Optical Co., Ltd., Case No. 13-cv-02502-JD (Judge James Donato)
In a recent order directing entry of partial judgment under Rule 54(b), Judge Donato refused to let the tail wag the proverbial dog, so to speak. He elected not to permit the existence of a few hundred domestic sales of an accused product to otherwise hold up a Rule 54(b) final judgment that concluded millions of extraterritorial sales did not infringe. READ MORE
Order Granting Motion for Summary Judgment, Hewlett Packard Co. v. ServiceNow, Inc., Case No. 14-cv-00570-BLF (Judge Beth Labson Freeman)
Since the Supreme Court decided Alice, district courts have increasingly invalidated patent claims directed to the use of general computers to implement “abstract” ideas. One strategy for patent owners to demonstrate patent-eligible subject matter [i] and thus survive Alice scrutiny is limiting claim constructions to define the implementing computer structure in a specific, concrete and specialized way. This is what Hewlett Packard recently attempted, but failed to do, when defendant ServiceNow, Inc. moved for summary judgment of invalidity on the claims in four asserted patents. READ MORE
Order on Post-Verdict Motions, Digital Reg of Texas, LLC v. Adobe Systems, Inc., No. C 12-1971 CW (Judge Wilken)
It’s easy to forget that in patent litigation, the question of whether a claim is invalid as obvious is not a fact question. Rather, it is a question of law. That is not to say, however, that a jury cannot be asked to address the underlying factual questions related to obviousness, and render an advisory verdict that the claim is, or is not obvious. And, as a recent ruling from Judge Claudia Wilken reflects, the jury’s conclusions frequently can, and will, be adopted by the Court.