Weekly IP Takeaways

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

1. In an interesting case originally filed in state court in Texas, but removed to the Northern District of Texas, a personal injury law firm sued a lawyer referral website of using the PI firm’s name (i.e., trademarks) to drive traffic to the referral site, and then refer potential clients to other law firms. While this does not appear to be a straight keyword-trademark infringement case, it seems to have those elements, and the Fifth Circuit, and the Northern District of Texas, have made differing pronouncements on the keyword-trademark infringement issue. Notably, the case linked above from the Northern District of Texas was presided over by Judge Fish, who is the same judge over the PI firm’s case. Beyond the keyword issue is the issue that the attorney referral service is pulling potential traffic from the plaintiff and send it to other PI firms, which may well be misleading or deceptive to consumers, and thus, violate the Lanham Act. Interesting case.

2. The Federal Circuit held that a settlement agreement as to all claims and all parties, even if there remain terms to perform, mooted the infringement claims in a patent case. The opinion is here. The parties jointly filed a Notice of Settlement and Motion to Stay in the district court, after summary judgment motions of non-infringement were before the Court. Two days after the parties filed the Notice of Settlement and Motion to Stay, the district court granted summary judgment of non-infringement. The Federal Circuit vacated this ruling and remanded the case to the district court to enforce the settlement agreement.

3. In a troubling denial of petition for rehearing and rehearing en banc, the Federal Circuit left in place a panel decision finding a claim having the transition language “consisting essentially of” indefinite because the properties of the invention, as set forth in the specification (not the claims), were allegedly indefinite. This is troubling because 35 U.S.C. 112 requires the “claims” to be definite. Here, because “consisting essentially of” means that “the composition does not contain, in addition to its enumerated components, materials that materially affect the basic and novel properties of the invention,” the Federal Circuit looked to the specification to consider the basic and novel properties of the invention, and concluded that the description of the basic and novel properties of the invention, in the specification (not the claim), was indefinite. This raises issues, including: (1) Does this violate the general canon of claim construction that matter from the specification is not to be imported into the claims? (2) Do the “basic and novel properties of an invention” now, de facto, become part of the claims? (3) Will this open up a gaping hole in Section 112/indefiniteness jurisprudence by making it possible to rely on language in the specification (as opposed to the claims) to demonstrate indefiniteness? I fully expect a petition for certiorari here, but the odds are long that certiorari will be granted.