Weekly IP Takeaways

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

1.    A recent motion to transfer opinion in a patent case from the District of Delaware rejected the attempt of a parent company to use the regular and established place of business of one of its subsidiaries as a basis to transfer the case as to both defendants out of Delaware.  One key fact here is that the defendants indicated to the court that they wanted to stay in Delaware, or be transferred together.  The court determined that one of the defendants, rejecting the use of its subsidiary’s place of business, could not be transferred to the transferee forum.  The opinion is here.

2.    A recent decision from the Southern District of New York in a case having patent and non-patent claims held that pendent venue was not available to keep the case in New York.  The case had trademark and unfair competition claims under the Lanham Act, as well as patent claims.  New York was an appropriate venue for the Lanham Act claims, but not the patent claims.  The pendent venue argument was rejected as it would improperly expand the scope of the patent-specific venue statute, 28 U.S.C. 1400(b).  As a result, the Court transferred the entire action to the Central District of California. The opinion is here.

3.   Hope Road Merchandising, LLC and 56 Hope Road Music Ltd., companies that control the rights to the late Bob Marley’s music, image/likeness, etc., had a damages award of approximate $2.5 million affirmed in an unpublished opinion by the Ninth Circuit Court of Appeals against a former licensee as it pertained to Marley-branded coffee (Jammin’ Java).  The interesting aspect of the ruling is the Ninth Circuit’s determination that where a trademark plaintiff is using a defendant’s profits as a measure of its own damages, a finding of willful infringement is “not necessary.” The opinion is here.  Recently, the Ninth Circuit also held in Stone Creek, Inc. v. Omnia Italian Design, Inc. that where a trademark plaintiff seeks to disgorge a defendant’s profits, a showing of willfulness is required (see p. 1144 of the opinion).  That opinion is here.  The distinction may be whether the disgorgement is part of a broader remedy or is the measure of plaintiff’s damages.

4.    The U.S. Supreme Court held that the on-sale bar provision of the America Invents Act continues to apply to confidential sales in which the details of the sale are not made public, and the parties to the sale are under an obligation to keep confidential the details of the sale.  The on-sale bar provision is a bar to patentability when a sale of a product is made more than one year before the effective filing date of the application for patent. The opinion is here.  This opinion stresses the importance of early patent filings – certainly less than one year before any sale or public disclosure of the invention.