Weekly IP Takeaways

In IP Blog

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.

1. In one patent case of dozens filed by the same plaintiff(s) concerning the use of the amino acid L-arginine to enhance nitric oxide (NO) production in the body, the Federal Circuit affirmed an exceptional case fee award under 35 U.S.C. Section 285 against the plaintiffs based on an inadequate pre-filing investigation that led to objectively unreasonable infringement contentions, and the plaintiffs’ motivation to extract nuisance-value settlements where possible. The opinion is here. The twist in the case was that the issues of invalidity and infringement were phased, and invalidity was addressed first. In other words, the infringement question was not fully adjudicated. The Federal Circuit, however, noted its prior precedent permitting an exceptional case determination based on weak infringement claims even where the infringement claims are not addressed before the case is disposed of on other issues. The Federal Circuit further fell back on the “wide latitude district courts have” to consider raised, but unlitigated issues that form the basis of a fee award. Translation: if a defendant prevails on invalidity, but the plaintiff’s infringement contentions were sufficiently weak, a fee award can be had for the sufficiently weak infringement contentions even though that issue was not ultimately determined.

2. A Delaware jury ruled in favor of the plaintiff is a design patent and trade dress case over shoe designs largely related to a blue bottom outsole visible from the sides of the shoes. The jury also found that the defendant had benefitted from the plaintiff’s substantial online following of its customers to launch its infringing and competing products. Over $2 million in damages were awarded for loss of goodwill and other compensatory, corrective issues. An additional damages award in the form of the defendant’s profits may also be forthcoming from the Court. Cases such as these emphasize the value of strong branding and strong protection of a company’s unique designs with patents, trademarks, trade dress, copyrights, and the like, where applicable.

3. In what is becoming a significant concern for content-generators and web designers, the Fourth Circuit Court of Appeals (in Virginia) ruled that a film production company’s use of a photograph, that it found on Google Images (and ultimately Flickr) on a website promoting a film and music festival was not a fair use of the image. The opinion is here. Basically, the photographer uploaded the image to Flickr, with a copyright notice associated with it. A representative of the defendant film production company located the image through Google Images on Flickr, believed it to be publicly available, downloaded it, and posted the image on a website promoting a film and music festival. Upon notice, the image was removed from defendant’s website, but no compensation was given to the photographer. The lawsuit followed. Take home lesson, which seems obvious, but apparently it is not – just because an image is on the internet does not mean it is free for the taking.