Lerner David Defends Clients’ Store Brand Against a Preliminary Injunction Motion
On July 28, 2017, on behalf of our clients Bed Bath & Beyond and Harmon Stores, Lerner David prevailed in having a preliminary injunction motion for trade dress infringement denied. The plaintiff sells “It’s a 10” hair care products. Bed Bath & Beyond and Harmon sell their Harmon Face Values store brand side-by-side on retail shelves. Following a hearing on July 5, 2017, Judge J. Paul Oetken of the Southern District of New York held that there was no likelihood of confusion between the trade dresses of the products. He pointed to the overall dissimilarity between the products’ trade dresses and the prominent display of the Face Values store brand. He also found no evidence that defendants had acted in bad faith. Agreeing with our arguments, Judge Oetken concluded the plaintiff had not raised sufficiently serious questions going to the merits to make them a fair ground for litigation. The decision is reported as It’s a New 10, LLC v. Harmon Stores, Inc. and Bed Bath & Beyond, Case No. 17-cv-4231, 2017 U.S. Dist. LEXIS 11892 (S.D.N.Y. Jul. 28, 2017).
Microwave Vision’s Patent Upheld Over Indefiniteness Defense
In April, 2014, Lerner David clients Microwave Vision, SA and MVG Industries sued ETS Lindgren Inc. for infringement of Microwave’s U.S. Patent No. 7,443,170 covering technology for multi probe array antenna measurement systems. In July, 2015 Lerner David obtained a claim construction Order favorable to Microwave’s patent rights. Microwave Vision, S.A. v. ESCO Techs. Inc., No. 14 CV 1153 SCJ, 2015 WL 11237099 (N.D.Ga. July 5, 2015), reconsideration denied, 2016 WL 4111361 (N.D. Ga. Feb. 2, 2016). During the prosecution of this case, ETS filed an IPR to invalidate the ‘170 Patent. The PTAB denied ETS’s petition, concluding that ETS had failed to identify a structure that performed a function of the means in claim 12. ETS attempted to use the decision by the PTAB offensively in the litigation by filing a motion for summary judgment that the ‘170 Patent was invalid as indefinite. In an Opinion and Order dated September 20, 2016, Judge Steve C. Jones reviewed prior decisions and the decision by the PTAB, and reaffirmed his decision that claim 12 of the ‘170 Patent is not invalid as indefinite. Judge Jones concluded that claim 12 of the patent clearly links its functions with corresponding structure in the ‘170 Patent. The court also granted Microwave summary judgment that the ‘170 Patent was not invalid. The decision is report at Microwave Vision v. ETS Lindgren, No. 14 CV 1153 SCJ, 2016 U.S. Dist. LEXIS 131729 (N.D. Ga. Sep. 20, 2016).
Kennedy and Gilman Contribute Chapter on Intellectual Property to New Jersey Federal Civil Procedure 2016
Partners Charles Kennedy and Keith Gilman have contributed their updated Chapter on Special Considerations in Cases Involving Intellectual Property for the just released New Jersey Federal Civil Procedure (2016). This publication has become a standard reference for litigation in New Jersey Federal district courts, used regularly by both judges and litigators. Kennedy and Gilman have authored the chapter on Intellectual Property since 1999.
Lerner David Wins Transfer of Patent Lawsuit
Lerner David represents MVG, Inc. of Kennesaw, Georgia that sells antenna measurement systems. MVG is a subsidiary of Microwave Vision, a global group of high-tech companies developing technologies for measurement solutions, antennas, advanced positioning systems, absorbing materials and shielding for anechoic chambers. ETS Lindgren, Inc., a competitor with its home base in Austin, Texas, sued MVG in the United States District Court for the Western District of Texas for infringement of U.S. Patent 8,331,869 for an antenna measurement system generically known as a “MIMO” system. Lerner David promptly challenged jurisdiction and moved to have this suit transferred to Atlanta, Georgia where MVG is based. On November 4, 2015, Judge Sam Sparks of the United States District Court for the Western District of Texas in a memorandum opinion granted MVG’s motion, finding no jurisdiction over MVG in the Western District of Texas and transferring the case to the Northern District of Georgia. The decision is reported as ETS Lindgren, Inc. v. MVG, Inc., 2015 U.S. Dist. LEXIS 149906 (W.D. Tex. Nov. 4. 2015).
Lerner David Obtains Injunction and Damages for Renowned Martial Arts Organization
On August 17, 2015, following a four day trademark infringement trial, Lerner David obtained an injunction and money damages for its client United States Soo Bahk Do Moo Do Kwan Federation. Lerner David’s client is the United States organization of the internationally renowned Moo Duk Kwan martial arts organization, founded in Korea in 1945 by Hwang Kee. On April 10, 2012, plaintiff sued Tang Soo Karate School, Inc. and its owners for infringement from use of the marks International Tang Soo Do Moo Duk Kwan Association, Moo Duk Kwan, and the fist and laurel leaves design for studios and tournaments. After a February 2015 trial, U.S. District Judge Robert D. Mariani of the Middle District of Pennsylvania entered a comprehensive memorandum opinion finding in favor of plaintiff on the trademark issues, enjoining infringement of each of plaintiff’s trademarks, dismissing defenses that plaintiff’s trademarks were generic and had been procured by fraud, and granting an injunction against further infringement. In addition, the Court granted plaintiff’s request for damages in the amount of $115,560. This judgment should serve as an important vehicle to enforce the rights to the marks “Moo Duk Kwan” and the fist and laurel leaves design against other rival organization. The decision is reported as United States Soo Bahk Do Moo Duk Kwan Fed’n, Inc. v. Tang Soo Karate Sch., Inc., 2015 U.S. Dist. LEXIS 107955 (M.D. Pa. Aug. 17, 2015).
Sony Wins Knock-out Jury Verdict
Sony Corporation and four of its subsidiaries (Sony Computer Entertainment Inc., Sony Computer Entertainment America LLC, Sony Electronics Inc., and Sony Corporation of America) prevailed on all counts of non-infringement and invalidity in a jury trial in the United States District Court for the Northern District of California against Television Interactive Data Corporation ("TVI"). TVI had alleged that Sony's Blu ray players, DVD players, and PlayStation3 consoles infringed claims in four patents related to autoplay of optical discs (DVDs and Blu-ray discs). The asserted patents are U.S. Patent Nos. 5,597,307; 5,795,156; 6,249,863; and 6,418,532. After a three week jury trial, the nine member jury delivered a verdict finding that Sony did not infringe any claim and that all asserted claims were invalid as anticipated and obvious to one of ordinary skill in the art. TVI had requested damages of $84M plus enhanced damages for alleged willful infringement. The jury delivered a knock-out blow to all of TVI's allegations. As reported in the March 28, 2013 edition of IPLaw360 "We felt very strongly from the beginning that there was no infringement, and that the patents were invalid," said Sony's attorney Greg Gewirtz of Lerner David. During closing arguments, Mr. Gewirtz made clear that Sony fought the battle with TVI "because of true justice, true principle" as Sony created and implemented autoplay in optical disc players well before TVI's patents were filed. The lawsuit was first filed in 2009 when TVI sued about a dozen consumer electronics companies alleging that all DVD and Blu-ray players infringed its patents. Sony was the only remaining defendant in the case and was very pleased to confirm its beliefs that its products did not use TVI's technology and that all asserted patent claims were invalid.
Glatt Air Techniques Obtains Favorable Settlement Of Patent Claims On Eve of Trial
Our client Glatt Air Techniques filed a patent infringement suit in federal court against defendant Freund Vector Corp. asserting its patent covering machines for coating pharmaceuticals. Following the successful defense of Glatt's patent through a decision from the Federal Circuit upholding the patent in suit in reexamination in January 2011, we obtained a favorable claim construction decision from the district court in January 2012. In September 2012, shortly before the scheduled jury trial, Glatt defeated Vector's motions for summary judgment on the merits, and prevailed on cross motions dismissing validity defenses raised by Vector. On September 10, 2012, when the parties were picking a jury for the trial, Glatt was able to obtain a favorable monetary settlement from defendant Freund Vector. The settlement was completed on October 17, 2012.
Glatt Air Techniques Obtains Favorable Claim Construction Decision
Our client Glatt Air Techniques filed a patent infringement suit in federal court against defendant Vector Corp. involving machinery used to coat fine particles. The district court has entered a Memorandum and Order resolving disputes over the construction of the claims of Glatt's patent. The Court's decision favors the position of our client Glatt on the important claim construction issues. Glatt is now moving forward with this patent infringement action against Vector Corp. About Lerner, David, Littenberg, Krumholz & Mentlik, LLP Since its founding in 1969, Lerner David has been devoted exclusively to intellectual property law. The firm has earned a solid reputation for active and effective client representation in the Patent and Trademark Office, in the courts and at the bargaining table — but our role as “counselors” remains paramount. By providing sound, practical advice, Lerner David’s 70+ attorneys help clients make informed, intelligent choices about the benefits and risks associated with intellectual property.
TriGen Laboratories Defeats Preliminary Injunction Motion Against the Marketing of its Prenatal Vitamins
Our client TriGen Laboratories was sued by USPC for alleged false advertising and unfair competition in its marketing of prenatal vitamin products in competition with USPC's products. USPC moved for a preliminary injunction. The United District Court for the Northern District of Georgia heard argument, directed the taking of discovery from organizations that list pharmaceutical products, and considered full submissions from all parties. In a comprehensive opinion issued on January 27, 2011, the Court denied an injunction against TriGen. The Court held that USPC had not established a likelihood of success on its claim that TriGen had falsely advertised or misrepresented its prenatal vitamins. In upholding the labeling of TriGen's products, the Court considered carefully the manner in which these prenatal vitamins are listed with drug databanks and made available to pharmacists for dispensing. This comprehensive decision should be applicable to numerous other such actions which have been filed by companies challenging the marketing of products in competition with prescription drug products or pharmaceuticals.
Glatt Air Techniques Prevails in Patent Reexamination Before Federal Circuit
In response to our client Glatt filing a patent infringement lawsuit in federal district court, the defendant Vector Corp. filed a request to have Glatt's patent on machinery used to coat fine particles (such as pharmaceuticals) reexamined by the U.S. Patent and Trademark Office ("PTO"). In reexamination, the Examiner rejected an important claim of Glatt's patent, and the rejection was upheld by the Board of Patent Appeals and Interferences. Glatt appealed the Board’s decision to the U.S. Court of Appeals for the Federal Circuit. In a precedential, unanimous decision, the Federal Circuit reversed in favor of our client Glatt, finding that the PTO "has failed to make a proper prima facie case of obviousness." The Federal Circuit also held that the PTO improperly rejected objective evidence of nonobviousness submitted by Glatt that included unexpected results, long felt need, and commercial success due to the improvement of the patented invention. As a result of this decision, the PTO has stated its intention to issue Glatt a reexamination certificate. Glatt will now move forward with the district court action for patent infringement against Vector Corp.
Court Grants Howmedica Osteonics' Motion to Stay Further Proceedings Pending Patent Reexam
SYNTHES (U.S.A.) v. STRYKER CORP., Civil Action No. 06-5681-AB (E.D. Pa. Mar. 19, 2009). In this two-year-old patent infringement suit brought by Synthes (U.S.A.) against our client Stryker Corp. and its subsidiary, Howmedica Osteonics Corp., the district court granted our motion to stay further proceedings pending reexamination of Synthes' patent-in-suit, directed to a threaded insert for a bone plate screw hole. Reexamination of Synthes' patent by the United States Patent and Trademark Office was commenced in response to a request for reexamination filed on behalf of Howmedica Osteonics by our firm. In March 2008, the district court had issued a claim construction order broadly construing the patent's claims, which resulted in the request for reexamination. The stay was granted by the district court in the face of arguments by Synthes that the stay motion was a "transparent" attempt to unnecessarily delay the case.
Stryker's Jury Verdict against Synthes is Bolstered by Successful Reexamination of Orthopedic Patent on an External Fracture Fixation Device
In a trial in late 2006, we successfully tried the issues of validity and infringement before a jury in Newark, New Jersey in Stryker v. Synthes. The Stryker patent found infringed by the jury relates to the setting fractures with an external fixation system somewhat reminiscent of an erector set. After fighting off Synthes' post trial motions before the judge on, among other things, the validity of the asserted patent, we were faced with yet another validity challenge, this time the result of Synthes' petition for reexamination before the U.S. Patent and Trademark Office. With the depth of our litigation and prosecution experience, we presented evidence supporting our longstanding and judge and jury-tested position that the asserted patent was valid. In June 2008, the U.S. Patent and Trademark Office rendered a decision that Synthes' attack was not persuasive and that the patent claims held infringed would stand as previously issued and litigated.
Ecce Panis, inc. v. Maple Leaf Foods USA, inc.
Ecce Panis, inc. v. Maple Leaf Foods USA, inc., 2007 U.S. Dist. LEXIS 85780 (D. Ariz. Nov. 7, 2007). Plaintiff Ecce Panis, which markets "artisan" breads, brought an action against our client Maple Leaf Foods alleging trade dress infringement in connection with packaging using a European motif for a competing line of breads. After the plaintiff moved for a preliminary injunction, the court conducted a two-day evidentiary hearing and subsequently issued a decision denying the requested injunction. Noting that the plaintiff's trade dress contained functional elements, the court concluded that the plaintiff had not shown that a likelihood of confusion existed between the two competing products, based upon dissimilarities in the trade dress, the absence of intentional copying, and the failure of the plaintiff's survey to demonstrate actual confusion.
Everett Laboratories v. Vertical Pharmaceuticals
A three-judge panel of the United States Court of Appeals for the Third Circuit, based in Philadelphia, has issued a decision in favor of Vertical Pharmaceuticals, Inc., a distributor of prescription vitamin products sold under the trademark CORVITE. The panel affirmed an earlier decision by a federal judge in Newark, New Jersey, who had denied an injunction requested by Everett Laboratories, Inc., which had been asserting trademark infringement relating to Everett's STROVITE products. In January 2006, U.S. Senior District Judge Dickinson Debevoise had denied Everett's request for a preliminary injunction, holding that Everett had not established a likelihood of success in demonstrating confusing similarity between STROVITE and CORVITE. In a June 13, 2007, opinion by Circuit Judge Marjorie Rendell, the Third Circuit agreed with Judge Debevoise's decision and suggested that Judge Debevoise had not sufficiently appreciated the weakness of Everett's case. The panel's decision expressed the view that Judge Debevoise had "overstated the similarity of the marks," because the common element of the two competing trademarks (STROVITE and CORVITE) was the suffix "-vite," which is a common descriptive term having little independent force or distinctiveness. While the Third Circuit's decision did not result in dismissal of the suit, Charles Kennedy of Lerner, David, Littenberg, Krumholz & Mentlik, LLP of Westfield, New Jersey, lead counsel for Vertical, suggested that the Third Circuit's decision may lead to the suit being dropped. As Kennedy noted, "We think Everett should think long and hard about pursuing this case in the face of a Third Circuit decision that is extremely negative to Everett's position." The case is Everett Laboratories, Inc. v. Vertical Pharmaceuticals, Inc., Appeal No. 06-1661 in the U.S. Court of Appeals for the Third Circuit and may be found at 2007 WL 1700688 (C.A. 3 (N.J.)).