• What TC Heartland v. Kraft Food Group Brands Means for Patent Infringement Suits

    Under the Federal Rules of Civil Procedure, a party waives its right to assert a defense of improper venue when it fails to raise the defense in a pleading or with other Rule 12 motions.  Importantly, however, that waiver only takes effect if the defense was “available” to the party at the time of filing either the pleading or motion.  Many circuits, including the Federal Circuit, interpret that requirement by recognizing an intervening law exception to the waiver of a defense, whereby an…

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  • Lessons From South Africa: Protecting Non-Expressive Uses In Copyright Reform

    This week, the South African Parliament began accepting comments on its pending Bill proposing to amend the South African Copyright Act to align it with the digital age. http://infojustice.org/archives/38242 We and other experts and civil society organizations submitted comments praising many of the Bill’s provisions and proposing that it adopt an “open” fair use right. Here we focus on one major reason to adopt an open fair use right – to authorize so-called non-expressive uses of works. We conclude with some reflections on how international law could help in this regard.

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  • Who Owns the Rights to the Word ‘Covfefe’?

    “Filing a trademark application with the goal of claiming a right to a particular term – with nothing more – is a fundamental misunderstanding of our trademark laws,” Alston & Bird partner Jason Rosenberg, explained. “Individuals and corporations rushing to design t-shirts and coffee mugs with phrases like ‘What the covfefe?’ on them aren’t likely to be able to claim ownership of the term, or stop anyone else from using it. You cannot simply hear a word you like, file a trademark…

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  • District Court Invalidates Dietary Supplement Patents On Motion To Dismiss

    The U.S. District Court for the Southern District of California invalidated several dietary supplement product and method patents as being directed to ineligible subject matter, even though they claimed products providing a certain dose or combination of ingredients, or methods using the products. The decisions were rendered in the context of a motion to dismiss…… Continue reading this entry

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  • CAPABLE OF

                            目次はこちら

    CAPABLE OF

    (CAPABLE OF V-ING)
    $$ The heater 30 may be capable of producing a 30-45 kilowatt power output. (USP8038081)

    $$ The apparatus 1 is capable of…

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  • Causal Nexus Requirement for Showing Irreparable Harm in Multi-consumer, Multi-Feature Products Only Requires An infringing Feature to be “A Driver” of Demand

    GENBAND v. METASWITCH: July 10, 2017. Before Lourie, Taranto, and Chen.   Takeaway: In multi-consumer, multi-feature products, the causal nexus requirement for showing irreparable harm can be satisfied by evidence showing that an infringing feature increases a product’s desirability, or evidence showing that the absence of the feature would make …

    The post Causal Nexus Requirement for Showing Irreparable Harm in Multi-consumer, Multi-Feature Products Only Requires An infringing Feature to be “A Driver” of Demand appeared first on CAFC Blog.

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  • Federal Circuit: Causal Nexus for Awarding Injunctions Shouldn’t Be Too Strict

    The case is Genband US LLC v. Metaswitch Networks Corp., available here; the opinion, which is precedential, is authored by Judge Taranto, joined by Judges Lourie and Chen.  The patents in suit relate to voice over Internet protocol (VOIP) services.  Genband sued Metaswitch and prevailed on infringement and validity.  A jury awarded $8,168,400 in damages.  (The Federal Circuit’s opinion doesn’t clearly state whether the damages were a reasonable royalty or lost profits, and a quick look at the district court opinion (211 F. Supp. 3d 858 (E.D. Tex. 2016)) doesn’t clarify this either, but I find Genband’s proposed jury instructions on Lex Machina (Docket Entry No. 451) and it clearly states “Genband seeks a reasonable royalty.”)  Judge Gilstrap nevertheless denied entry of a permanent injunction, and the Federal Circuit now remands for reconsideration.  From the opinion (pp. 3-12, emphases in original):    
    The district court rested its denial entirely on the determination that Genband failed to show that it would suffer irreparable harm from Metaswitch’s continued infringement. The court gave two reasons, without indicating that the second reason independently supported its determination.

    First, the court held that Genband did not demonstrate a causal nexus between the alleged irreparable harm (based on lost sales) and the presence of the infringing features in Metaswitch’s infringing products. Id. at 894–95. In so ruling, the district court stated that “it is Genband’s burden to demonstrate that the patented features drive demand for the product.” . . .

    The court then applied its articulated legal standard as follows:

    During the bench trial, Genband presented the following regarding the causal nexus, which falls into three general categories: (1) a self-generated “win-loss” report; (2) demonstratives purporting to correlate dates of Metaswitch press releases with an alleged decline in Genband’s market share; and (3) statements from Metaswitch marketing materials and opinion testimony from Mr. McCready [a Genband executive].

    Genband’s presentation of evidence does not satisfy its burden to show causal nexus. Accordingly, Genband fails to show that it has suffered irreparable harm as required for a permanent injunction. . . .

    The district court’s second reason for finding no irreparable harm involved Genband’s litigation choices. The court found that, although Genband did not unreasonably delay in suing Metaswitch for infringement, it did delay in suing for several years after analyzing Metaswitch’s products, and the court also observed that Genband did not seek a preliminary injunction. Those facts, the court concluded, weighed against a finding of irreparable harm from Metaswitch’s sales. Id. at 895. The district court denied the requested permanent injunction without addressing other considerations. . . .

    In this case, the sole basis for denial of the requested injunction was the district court’s finding that Genband did not show irreparable injury from the conduct it sought to enjoin, one precondition to issuing the requested injunction. . . . Genband relied on evidence that Metaswitch was making sales in direct competition with it, causing Genband to lose sales and thereby to suffer harms of the type often found irreparable. . . . But the district court held that Genband had not met a requirement that is part of the irreparable-injury component of eBay in cases like this—namely, the requirement of “some causal nexus” between the infringing features of the infringer’s products and the sales lost to the patentee. Apple I, 678 F.3d at 1324; see Apple II, 695 F.3d at 1374–75 (“a sufficiently strong causal nexus [that] relates the alleged harm to the alleged infringement” is “part of the irreparable harm calculus”); Apple III, 735 F.3d at 1364 (“some causal nexus between [defendant’s] infringing conduct and [patentee’s] alleged harm” is required); Apple IV, 809 F.3d at 640 (requiring “a causal nexus linking the harm and the infringing acts” to ensure that “an injunction is not entered on account of ‘irreparable harm caused by otherwise lawful competition’” (quoting Apple III, 735 F.3d at 1361)).

    The district court’s opinion, however, leaves us uncertain whether the court relied on too stringent an interpretation of the causal-nexus requirement. The court declared that Genband had to prove that “the patented features drive demand for the product.” . . . . But we cannot be sure that the district court, in demanding such proof, used the standard for causal nexus now established to be the governing standard. 
    The “drive demand” formulation, on its face, is susceptible to importantly different interpretations, some stricter, some more flexible, at least in situations where the product at issue has multiple purchasers and multiple features that different purchasers might assign different weights in their purchasing decisions. For example, as the district court in Apple III had assumed, the “drive demand” formulation could require that the infringing feature be “the driver” of decisions by consumers treated collectively as a kind of unit, even requiring proof that no or almost no buyers would buy the product but for the infringing feature. Or it could require less, e.g., that the infringing feature be “a driver” of decisions by a substantial number of individual consumer decision-makers considering multiple features. 
    Here, Genband argued for a standard on the less stringent side of the spectrum. The district court described Genband’s argument, but the court did not itself say anything to indicate its adoption of the argument. . . . Yet it has been clear since at least Apple III that a standard of the less demanding variety—as an interpretation of “drive demand,” a standard based on “a driver” as opposed to “the driver,” applied in the multi-consumer, multi-feature context—is the governing one for what suffices to meet the causation component of the requirement of irreparable injury, i.e., that the injury asserted to be irreparable be injury from the defendant’s use of infringing features. . . .
    Where the patentee relies on lost sales to show irreparable injury, it matters what reasons various buyers have for making the purchases lost to the patentee. If all but an insignificant number of purchases from the infringer would have been made even without the infringing feature, the causal connection to the asserted lost-sale-based injury is missing. But this court’s cases have now made clear that, under the causation approach suitable for a multi-feature, multi-purchaser context, the patentee may be able to make the causal connection between infringement and the relevant lost sales through evidence of various kinds, e.g., that the infringing features significantly increased the product’s desirability, that soundly supports an inference of causation of a significant number
    of purchasers’ decisions. . . .

    Of course, the causation requirement does not end the injunction inquiry, even as to the irreparable-injury requirement, let alone as to the other elements of the eBay analysis. But here the only dispositive basis of the district court’s denial of the injunction was the causal nexus requirement. And we cannot be confident that the district court applied the current governing approach to causation rather than an unduly demanding approach. 

    We conclude that a remand is needed. . . . 
    Apart from its causal-nexus determination, the district court deemed the timing of Genband’s suit and Genband’s choice not to seek a preliminary injunction to weigh against a finding of irreparable injury. . . . Genband correctly points out that, when a patent owner postpones suit and forgoes a preliminary injunction, there may well be reasons for the patent owner’s actions independent of any implied concession that the infringement-caused injury is not actually irreparable . . . . But Genband has not justified a per se rule making the patent owner’s choices about when to sue and whether to seek interim relief legally irrelevant.

    In this case, the timing of Genband’s suit and Genband’s decision not to ask for preliminary relief call for an evidentiary judgment—a determination of what weight they have in determining irreparability of the harm at issue (under the governing legal standards) in the context of the evidence as a whole. We are remanding for a redetermination of the causal-nexus issue. That determination,and the findings made in making it, may affect the need for and content of the required evidentiary evaluation of these additional, irreparability considerations. . . .
    As the court’s cites to the Apple-Samsung litigation suggests, causal nexus was a bone of contention in those cases too, and indeed is one of the issues regarding which Samsung has petitioned the U.S. Supreme Court for review
    I’m inclined to agree that the test for causal nexus shouldn’t be overly strict, because injunctions may be desirable even if the plaintiff cannot prove specific lost sales resulting from the infringement.   But I also think that the whole framework for awarding injunctions post-eBay has become too formalistic, and that it would be better to focus more on the economic rationales for granting injunctions (among other things, injunctions can conserve on adjudication and error costs by not requiring a court to calculate an ongoing royalty) and against doing so (injunctions can enable holdup).  I’ve just started work on a paper on injunctions with Norman Siebrasse, where we hope to flesh things out along these lines, though right now we are at a very early stage. 
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  • Circulating with SAIIPL, dotAfrica, ASA and Silverware

    Several years ago the irrepressible Dr Madelein Kleyn revived the South African Institute of Intellectual Property Law’s newsletter – “IP Briefs”. Afro-IP is pleased to announce that it will assist SAIIPL and Dr Kleyn disseminate the news through the blog in a bid to make the information more accessible.

    We start with this month’s newsletter published just recently. In this issue Prof Karjiker provides his perspective on Herbal Zone v Infitech, a triumvirate of talent from CIPC (Sher-Muhammad Kahn, Christiaan Steyn and Warren Rossouw) unpack shape marks in a comprehensive exposé,  Chezanne Haighfrom Kisch IP takes a bite at the Kit Kat four finger decision, Darren Olivier provides tips for franchising, Alessia del Bianco provides an in-house perspective on creative IP management, Darren Margo is relaxed over the latest exchange control amendments, and the editor contributes with a nifty piece on SME’s and IP. You can read them all here.

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    On Friday Afro-Buff stuck his horn in it by recording that the world’s largest lithium battery may have been destined for Jamestown, SA when in fact it is actually Jamestown, SA. Huh? .. well the difference between them is roughly an ocean, one SA being in South Africa and the other in Southern Australia.
    “The post has since been corrected and I hope, unlike the Bell Pottinger apology, largely accepted” said the red faced buffalo on Friday.

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    News on the ASA seems to be getting even better. Those companies supporting them that were listed on the blog on Friday reflected the list of supporters on the ASA website. That page (on their website) lists those supporters that have actually paid. Afro Leo now understands that there are a whole heap more that have pledged but not yet paid! That’s got to be good news. Remember if you want to lend them your support, just send them a note here. C’mon IP firms, a fully functioning ASA is good for you too.
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    For those interested in the dotAfrica domain name space developments, Tuesday, 04 July 2017 was the start of .africa’s General Availability phase where anyone can register .africa domains through Registrars listed here:http://registry.africa/registrars/. You can find more information on that development here.

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    Finally, Afro-IP is pleased to announce that unlike Liverpool (afraid so, Jeremy Speres), they have some silverware in 2017. News just in is that this little community interested in spreading news and views on African intellectual property is ranked in the Top 100  IP blogs in the World. Considering that there are more blogs than impala in mating season these days, that is no mean feat.
    Just remember, if you want to get involved, you can in a number of ways. You can contribute by sending us information to report, by commenting on the blog posts in the comment column, by submitting a guest post (ask for the style guide first), by becoming a regular contributor or by taking up one of the characters. Please just email us here.
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