In a recent client advisory, our colleagues George Snyder and Daniel Ladow discuss the recent ruling of the Supreme Court holding that human genes are not patentable, but DNA constructs that “are not a product of nature” may be patentable.  To read the full advisory, click here.

In its second published opinion vacating the judgment of the district court, the Fourth Circuit recently ordered that a jury’s verdict awarding Georgia-Pacific nearly $800,000 in damages for trademark infringement be reinstated. Georgia-Pacific Consumer Prods., LP v. Von Drehle Corp., No. 12-1444 (4th Cir. Mar. 14, 2013). The Fourth Circuit’s decision is the final chapter in a long-running battle centering on the “stuffing” of Georgia-Pacific’s “enMotion®” paper towel dispensers, found in an automated public restroom near you, with von Drehle’s toweling. We’ve previously blogged about the dispute, which has been litigated across three federal circuits, here and here.

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Plaintiffs Porto Technology Co., Ltd.. and Porto Technology, LLC (collectively, “Porto”), recently learned that their “Exclusive Patent License Agreement” from the patent owner is NOT sufficient to give them standing to pursue patent infringement claims against Cellco Partnership d/b/a Verizon Wireless (“Verizon”).  As Judge Henry E. Hudson found in Porto Technology,  Co., Ltd. v. Cellco Partnership, Civil Action No. 3:12cv678 (March 19, 2013 E.D. Va.), the “Exclusive License” required Porto to obtain the patent owner’s consent before granting any sublicense and gave the patent owner the right to direct Porto to grant a sublicense to any third party identified by the patent owner.  Further, the “Exclusive License” lacked any provision giving Porto the exclusive right to bring suit to enforce the patent, and was silent on Porto’s right to practice the invention under the patent.  Judge Hudson ruled that these defects in Porto’s license defeated Porto’s standing to assert the patent against Verizon.  Judge Hudson’s opinion can be found here: PortoVerizon

Unfortunately for Verizon, this may only be a temporary setback for Porto — Judge Hudson granted Porto 21 days to join the patent owners as Plaintiffs in the case.

For the second year, Troutman Sanders is hosting the first chapter in the Entrepreneurial Trilogy sponsored by i.e.* (of the Greater Richmond Chamber of Commerce), “(Beyond the) Patent Powerhouse” on Tuesday, February 5, 2013, at 5:30 pm.   A panel of legal experts, including Troutman Sanders’ Robert Angle (Intellectual Property Partner),  Dabney Carr (Intellectual Property Partner) and Nancyellen Keane (Intellectual Property Counsel), and MeadWestvaco’s Devin Jensen (Senior Intellectual Property Counsel), will join the  i.e.* 2012 Start-Up Competition winner, Geoff Weathersby of InLieu, to address important intellectual property issues facing entrepreneurs and start-ups.  Registration is FREE and can be done here:  http://www.ie-rva.org/

And the Entrepreneurial Trilogy continues…

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On March 16, 2013, the United States will become a “first-to-file” country for determining the rights of different inventors competing for a patent covering the same invention.  This is part of the recent “America Invents Act” (AIA).  To best preserve your rights, consider filing new applications and continuation applications before this deadline.

 Until now, the U.S. has been the only “first-to-invent” country.  When two inventors filed patent applications covering the same invention, the patent was given to the inventor who could prove he conceived the invention first.  From March 16^th and onward, the patent will be granted to the inventor who files a patent application first.  This will be a “race to the Patent Office.” Inventors will lose the chance to get patent rights by showing they were the first to invent.

 The “first-to-invent” system has advantages over the new “first-to-file” system.  It is usually better to have the option of proving earlier inventorship than relying on the date a patent application was filed.  To preserve the “first-to-invent” advantages for as long as possible, we recommend filing new and continuation applications for significant inventions in your pipeline before March 16, 2013.

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 On January 9, 2013, the U.S. Supreme Court affirmed a ruling that a broad covenant not to sue a competitor for trademark infringement eliminated any future disputes between the subject companies and divested the courts of subject matter jurisdiction under the case or controversy requirement of Article III of the Constitution. Practically speaking, this decision provides guidance to patent and trademark owners on how to foreclose challenges to the invalidity of their intellectual property assets during litigation.

Nike Inc. (Nike) owns several trademark registrations related to the appearance of its “Air Force 1” sneaker and has issued more than 1,700 color variations of the shoe. In 2009, Nike sued Already L.L.C. d/b/a Yums (Yums) for trademark infringement and related claims, alleging that Yums’ “Sugar” and “Soulja Boy” shoes infringed Nike’s “Air Force 1” sneaker. Yums counterclaimed seeking cancellation of one of Nike’s trademark registrations, as well as declaratory judgment. 

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Last August, Judge Liam O’Grady of the EDVA denied a motion to dismiss a challenge by Exela Pharma to the standard the PTO uses for reviving abandoned patent applications.  Our post on the decision can be found here.

On December 21, Judge O’Grady gave the PTO and the licensee of the revived patent an early Christmas present, when he granted their motion for reconsideration and dismissed Exela’s claims on statute of limitations grounds.  Exela Pharma Sciences, LLC v. Kappos, Case No. 1:12CV469, 2012 U.S. Dist. LEXIS 181435 (E.D. Va. Dec. 21, 2012), found here. [Read more →]

A December 30 decision by Judge Moon of the Western District of Virginia addresses several unique copyright issues including transfer of copyright ownership, mistakes in copyright registrations and preemption under the Copyright Act, as well as the validity of website terms of use agreements.  Capital Concepts, Inc. v. The Mountain Corporation, Civil Action No. 3:11CV00036, 2012 U.S. Dist. LEXIS 182874 (W.D.Va. December 30, 2012) (found here).

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In a December 14 Memorandum Opinion, Judge Samuel G. Wilson declined to enter a default judgment and dismissed a patent infringement action against a Chinese corporation for lack of personal jurisdiction sua sponte. Freedom Hawk Kayak, LLC v. Ya Tai Elec. Appliances Co., No. 7:12-CV-305, 2012 U.S. Dist. LEXIS 177685 (W.D. Va. Dec. 14, 2012). Freedom Hawk arose out of the parties’ attendance of an industry trade show in Orlando, Florida. Plaintiff Freedom Hawk, the owner of two patents for a fishing kayak with a “deployable fan-tail designed to promote stability while fishing from a standing position,” id. at *2, noticed Defendant Ya Tai’s booth display of a kayak featuring a similar design. Freedom Hawk hand-delivered a cease-and-desist letter to Ya Tai’s representatives at the show, and Ya Tai responded that it would continue promoting its product. Freedom Hawk promptly filed its complaint for patent infringement in the Western District of Virginia the very next day, and served process on Ya Tai’s general manager at the show in Florida. [Read more →]

In a somewhat controversial decision (see Patently-O’s analysis here), the Federal Circuit has affirmed a decision by Judge Rebecca Beach Smith of the Eastern District of Virginia granting summary judgment of invalidity under 35 U.S.C. 102(g)(2).  The Fox Group, Inc. v. Cree, Inc., No. 2011-1576, 2012 U.S. App. LEXIS 24614 (Fed. Cir. Nov. 28, 2012) (found here).  Our earlier discussion of Judge Smith’s decision can be found here.   [Read more →]