As reported in Oblon Spivak’s Patents Post-Grant blog, the Supreme Court of the United States recently reinforced the well established principle that clear and convincing evidence is required to establish invalidity of a U.S. Patent.  Microsoft Corp. v. i4i Ltd. Partnership et al., 564 U.S.___ (June 9, 2011).  See holding here.

This “presumption of validity” is not limited to utility patents, but also extends to design patents.  For example, as noted in Titan Tire Corp. v. Case New Holland Inc., 566 F3d 1372 (Fed. Cir. 2009), a design patent case that related to the design of tractor tires, “an issued patent comes with a statutory presumption of validity under 35 U.S.C. § 282.  Because of this presumption, an alleged infringer who raises invalidity as an affirmative defense has the ultimate burden of persuasion to prove invalidity by clear and convincing evidence, as well as the initial burden of going forward with evidence to support its invalidity allegation.”  Id. at. 1376.


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The Court of Appeals for the Federal Circuit recently released 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 decision makes it more difficult for accused infringers to prove the two elements required for inequitable conduct, namely (i) that the patent applicant withheld “material” information (i.e., important or relevant information) from the patent examiner, or the applicant submitted material information that was false or misleading, and (ii) the applicant intended to deceive the Patent Office by withholding material information or submitting the material information that was false or misleading.

The defense of inequitable conduct also applies to design patents.  Last year, we reported on a design patent litigation where this defense was raised.


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Seeking an injunction, statutory damages, and/or defendant’s profits, The Procter & Gamble Company (P & G) sued Vi-Jon, Inc., a generic-products manufacturing and distribution company on May 27, 2011 in the Southern District of Ohio Western Division for patent and trademark infringement as well as unfair competition.. See Complaint here.

In August of 2009, P & G introduced a new line of mouthwash products under the SCOPE ® OUTLAST ® brand that features a teardrop shape bottle. (U.S. Trademark Application Serial No. 77/685,052 filed March 6, 2009) along with its label.  P & G also asserts U.S. design patents related to the bottle design and labeling for the SCOPE ® OUTLAST ® product.  P & G claims to have spent millions of dollars on advertisement of the mouthwash in its SCOPE OUTLAST Bottle Design and Trade Dress shown below.


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On May 16, 2011, the Trademark Trial and Appeal Board reversed the refusal to register a mark (not precedential), filed by Mars, Inc. (U.S. Trademark Application Serial No. 77/727,119) that “consists of a three-dimensional configuration of packaging for pet food that consists of a round bowl-shaped, inverted and lacquered pet food container.  The top of the container has a center circle with rounded edges tapering to the sides with a wider larger lip at the bottom with various placement lines representing a lacquered finish. The inverted nature of the container and the lacquered finish are claimed as features of the mark.” See Opinion hereThe mark is shown below.




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The Library of Congress announced today that Maria Pallante was appointed as the 12th Register of Copyrights and director of the United States Copyright Office, effective June 1, 2011.  The Librarian of Congress, James Billington, stressed "the increasingly important role of copyright law in the current knowledge economy and the numerous complex issues facing copyright owners as well as users of copyrighted materials. He noted the particular challenges of protecting authors’ intellectual-property interests in the online environment and achieving meaningful exceptions and limitations that serve the public interest in the 21st century."
 
Copyright has its role in protecting designs, even if it can be difficult to meet the requirement of the Copyright Act.  Under the Act, the design of a useful article is protectable "only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” 17 U.S.C. § 101.  The task, however, is not insurmountable.  For example, last year, the U.S. Court of Appeals for the Fourth Circuit affirmed an $11M damage award in a copyright infringement case involving furniture designs.  See opinion (pdf)We will continue to report on new developments in design protection by copyright.  In the meantime, we congratulate Ms. Pallante for her new appointment.  The press release from the Library of Congress can be found here.



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