Publications

Bourdeau Bros. Inc. v. International Trade Commission
Importation and sale of trademarked good of domestic manufacture, produced solely for sale abroad and not authorized by owner of trademark for sale in United States, may violate 19 U.S.C. § 1337(a)(1)(c) if imported good is materially different from all or substantially all of those goods bearing same trademark that are authorized for sale in United States, since "gray market" theory should not be limited to goods of foreign manufacture as it is applied in context of Section 1337.

KSR International Co. v. Teleflex Inc.
Teleflex holds the exclusive license to U.S. Patent No. 6,237,565 directed to an adjustable pedal assembly with an electronic throttle control, referred to as the Engelgau patent. Claim 4 of the Engelgau patent describes a mechanism for combining an electronic sensor with an adjustable automobile pedal so that the pedal's position can be transmitted to a computer that controls the throttle in the vehicle's engine. After KSR added an electronic sensor to one of its previously designed adjustable pedals, Teleflex sued KSR for patent infringement. KSR counterclaimed that claim 4 was invalid under 35 U.S.C. § 103.

Zoltek Corp. v. United States
Use of plantiff's method patent by United States does not give rise to Tucker Act claim for taking of private property for public use under Fifth Amendment, since U.S. Supreme Court has ruled that patentee cannot sue federal government for patent infringement as Fifth Amendment taking under Tucker Act, and court's holding has not been overruled, since, in response to that ruling, U.S. Congress provided specific sovereign immunity waiver, under 28 U.S.C. § 1498, allowing patentee to recover for infringement by federal government, and since government's "taking" of license to use patent, unlike regulatory takings and inverse condemnation of real property, therefore creates cause of action under Section 1498, rather than Tucker Act claim, even if it is assume that patent is type of property that comes within protection of Fifth Amendment takings clause.

Breckenridge Pharmaceutical Inc. v Metabolite Laboratories Inc.
In assessing the exercise of personal jurisdiction over an out-of-state defendant in view of the due process requirements, a license agreement between an out-of state licensor and an exclusive licensee headquartered in-state or doing business in-state should be closely examined. Due Process may be satisfied where the agreement contemplates a relationship beyond royalty payment or cross-licensing.

In re Slokevage
Issue of whether trade dress constitutes product design presents question of fact, since it is akin to factual determinations addressing whether trademark is inherently distinctive or whether mark is descriptive, in that examination of product packaging and design involves similar inquiry into consumer's ability to equate product with source, and thus Trademark Trial and Appeal Board's finding on product design issue will be affirmed if supported by substantial evidence; inquiry into whether mark is unitary is also factual determination.

Lava Trading Inc v Sonic Trading Management LLC
1) Knowledge of the accused product provides a "context" for claim interpretation. 2) The term 'a' means 'one or more' when used in a claim, including the preamble. 3) A party is not necessarily blocked from changing a position upon appeal.

Hydril v. Grant Prideco
A plaintiff may bring a Walker Process claim against a patentee based on threatened enforcement of a fraudulently-obtained patent against the plaintiff's customers.

Cross Medical Products, Inc. v. Medtronic Sofamor Danek, Inc.
Patentee did not satisfy the tangential relation criterion for overcoming the Festo presumption because the prosecution history revealed that the alleged equivalent was within the range surrendered by the narrowing amendment, thus reaffirming that the tangential relation criterion is "very narrow."

Planet Bingo v. GameTech International
The doctrine of equivalents does not apply when an accused device contains the antithesis of the claims, and the doctrine does not apply when the subject matter was either foreseeable or deliberately excluded. No infringement was found under the doctrine of equivalents because the term "predetermined" was found to be limiting.

Wilson Sporting Goods Co. v Hillerich & Bradsby Co.
Federal district court erred in construing patent for softball bat without supplying any information about accused infringing devices, since, without description of accused bats, reviewing court lacks full context of infringement action and claim construction component of infringement, and without that additional context, reviewing court cannot fully and confidently review infringement judgment, including its claim construction component; although accused product or process may not be used as form of extrinsic evidence to supply limitations for patent claim language, that rule of claim construction does not forbid awareness of accused product or process to supply parameters and scope of infringement analysis, including its claim construction component.

McKesson Info. Sol'ns v. Bridge Med.
A patentee commits inequitable conduct by failing to cite material prior art discovered by one examiner in a co-pending case before a different examiner, by failing to cite a rejection of a "substantially similar" claim to a different examiner or by failing to cite an allowance of related claims by the same examiner in a continuation application.

Glenayre Electronics v Jackson
After accepting remitted damages award for manufacturer's direct infringement, the patentee was not entitled to sue the manufacturer for indirect infringement based on direct infringement by the manufacturer's customers, as the damage award fully compensated the patentee for direct infringement by the manufacturer, direct infringement by the manufacturer's customers, and indirect infringement by the manufacturer.