Update on Apple v. Samsung Downunder

As reported by Bloomberg, Apple has obtained an at least temporary injunction against Samsung sales of the Galaxy Tab 10.1 in Australia.  Samsung has agreed to stop advertising the Galaxy Tab 10.1 and to not sell the device until it obtains court approval or the lawsuit is resolved.  Apple has agreed to pay Samsung unspecified damages should Samsung win the related patent lawsuit in Australia. 

Samsung has agreed to provide Apple with samples of the Australian Galaxy Tab 10.1, which Samsung states is different than the U.S. version, for Apple's review prior to distribution.  A hearing is scheduled for August 29, 2011, in Sydney, Australia.

Bloomberg reports Apple will attempt to prevent Samsung from selling the Galaxy Tab 10.1 in other countries as well.

[Samsung Galaxy Tab 10.1, from]



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USPTO’s Rule 56 “But For-Plus” Proposal

As we previously reported, the Court of Appeals for the Federal Circuit released in May 2011 its long-awaited decision in Therasense, Inc. v. Becton Dickinson and Co., in which it raised the standard for proving inequitable conduct and rendering a patent unenforceable.  The defense of inequitable conduct applies to both utility and design patents.  Last year, we reported on a design patent litigation where this defense was raised.

The Therasense decision redefined the type of information that can potentially support a defense of inequitable conduct if it is withheld, misleading, or incorrect -- i.e., what constitutes “material” information.  Under the new standard, information is material only “if the PTO would not have allowed a claim had it been aware of the undisclosed prior art.”  The Federal Circuit refers to this as the “but for” standard.

Last week, in response to the Therasense decision, the USPTO published proposed changes to the materiality standard of  37 CFR § 1.56, which governs Applicants’ duty of disclosure during the prosecution of a design patent.  The proposed rule, which defines materiality using a so-called “but for-plus” test, is shown below in its entirety.

§1.56 Duty to Disclose Information Material to Patentability


(b) Information is material to patentability if it is material under the standard set forth in Therasense, Inc. v. Becton, Dickinson & Co., ___ F.3d ___(Fed. Cir. 2011). Information is material to patentability under Therasense if:

1) The Office would not allow a claim if it were aware of the information, applying the preponderance of the evidence standard and giving the claim its broadest reasonable construction; or

(2) The applicant engages in affirmative egregious misconduct before the Office as to the information.

Part (b)(1) above is straight forward and corresponds to the “but for” test adopted by the Therasense decision.  Part (b)(2) raises some questions.  It embodies the “plus” aspect of the proposed “but for-plus” materiality standard.  While the Therasense decision provides support for findings of inequitable conduct in cases of affirmative egregious misconduct, the USPTO had historically treated intentional misrepresentations, false and misleading statements under a different rule than Rule 56.  Affirmative egregious misconduct in the form of false statements or misrepresentations, especially in affidavits or declarations were considered to be inherently material. But such materiality was a result of a violation of the duty of candor and good faith. Whereas the duty of disclosure was confined to acts of omission and given separate treatment under Rule 56.  The USPTO is soliciting comments on its proposal on or before September 19, 2011.  We will keep track of this process and report on our blog so as to keep design patent applicants informed.


Vibram asserts minimalist footwear patents

Vibram has filed a complaint against Fila USA Inc. in the District of Massachusetts alleging infringement of Design Patent Nos. D579,181 ("the '181 patent") and D582,134 ("the '134 patent), and U.S. Utility Patent No. 7,805,860.  According to the complaint, Vibram markets the popular FiveFingers footwear products, which fill the need for "footwear ... which allows independent intrinsic movement of the feet, and particularly the toes ... and yet which still provides coverage and protection to the toes... ."

Vibram alleges Fila's skele-toes products infringe the '181 and '134 patents.  A copy of the comparison provided on page 7 of the complaint is reproduced below.

This suit was reported by The Boston Globe on July 18, 2011.  The Globe quoted Fila as stating the allegations in Vibram's complaint are without merit, and quoted Vibram as stating Vibram "pioneered the minimalist footwear category," and "copyists and counterfeiters have come out of the woodwork."

Brian R. Epstein contributed to this post.


Lamborghini takes on Vegas

As reported in the Washington Post (by the Associated Press), Lamborghini has filed a trademark infringment suit against a Las Vegas casino concerning logos used at the entrance of businesses (reportedly the Dal Toro Exotic Car Showroom, Dal Toro Merchandise Gallery and Dal Toro Il Ristorante Italiano) inside the Palazzo Las Vegas Resort are imitations of the Lamborghini’s logos.

Below is the Dal Toro logo, as presented on their Facebook profile page, next to the Lamborghini logo, as presented on their website.