Intellectual Property Report: February 2013

02/28/2013 / Intellectual Property Group

 

 

In the February Issue:

 


Already, LLC v. Nike, Inc.: Supreme Court Gives Shoe Trademark Lawsuit the Boot
By John A. Kvinge

Before a federal court can hear a case, the United States Constitution requires the parties to have standing by demonstrating that there is an actual case or controversy. To meet this requirement, the parties to a lawsuit must establish an actual or threatened injury that is capable of being remedied by court action. This requirement continues throughout the lawsuit, such that a party that had standing at the outset of a case could potentially lose it through changed circumstances as the case progresses. The question in this Supreme Court case was whether a plaintiff can eliminate a defendant’s standing to challenge the validity of a trademark by giving the defendant a permanent covenant not to sue – essentially eliminating the chance that the defendant could ever be harmed by the existence of a trademark.

To read more, click here.

 

 


Federal Circuit Declines to Create a Federal Cause of Action for Assignor Estoppel
By Glenna L. Gilbert

On February 13, 2013, in Semiconductor Energy Laboratory Co., Ltd. v. Yujiro Nagata, Appeal No. 2012-1245, the Federal Circuit held that there is no federal cause of action for assignor estoppel.

 

Appellant Semiconductor Energy Laboratory Co., Ltd. (“SEL”) owns U.S. Patent 6,900,463 (the “’463 patent”). The ’463 patent names respondent Dr. Yujiro Nagata (“Dr. Nagata”) as a co-inventor. During prosecution of the patent, Dr. Nagata assigned his rights to applications and patents related to the ’463 patent to SEL’s founder, and signed a substitute Declaration and Assignment (“the 1991 Declarations and Assignments”). In 2009, SEL sued Samsung, Inc. for infringement of a number of patents, including the ’463 patent. SEL contacted Dr. Nagata to assist in the Samsung litigation. Dr. Nagata had already agreed however to assist Samsung in the litigation as a fact witness. Dr. Nagata subsequently gave testimony repudiating his signature on the 1991 Declarations and Assignments. The Samsung case ultimately settled, but SEL maintained that be cause Dr. Nagata’s testimony impugned the enforceability of the ’463 patent, SEL settled for less money than it would have otherwise.



 

20-Year Delay in Asserting Claim for Correction of Inventorship Does Not Result in Laches
By John A. Kvinge

Under U.S. patent law, an individual that believes he or she was incorrectly omitted as a named inventor on a patent can bring a lawsuit under 35 U.S.C. § 256 to request correction of inventorship. However, the equitable doctrine known as “laches” provides a defense to this claim. Laches may result when an allegedly omitted inventor unreasonably delays in filing suit and the delay causes material prejudice to the defendant. Because laches is an affirmative defense, the defendant generally bears the burden of proof. However, laches is somewhat unique in that a presumption of laches applies if there has been more than a six year delay between the time the unnamed inventor knew or should have known that he or she was not named as an inventor in the patent, and the time he or she brings suit under § 256.

To read more, click here.
 

 


Intellectual Property Department Attorneys:

Robert C. Klinger

Email
952-896-1571

 

Ryan C. Smith
Email
952-896-6703 

Email 
952-896-3340
 

John A. Kvinge
Email
952-896-1554
Molly T. Eichten
Email 
952-896-1545 

Craig J. Lervick
Email
952-896-3245

 
Glenna L. Gilbert
Email
952-896-3283

 

 
Jose W. Jimenez
Email 
952-896-3203

 
James P. Quinn
Email
952-896-3309

 

This alert is provided as a service to our clients and firm associates. While the information provided in this publication is believed to be accurate, it is general in nature and should not be construed as legal advice.