Recent Case Law
Developments
1. December 8, 2004 Trademark – KP Permanent Make-up, Inc. v. Lasting Impression, Inc. 72 USPQ 2d, 1833
The Supreme Court decided this important case regarding likelihood of confusion and the scope of the fair use defense. The outcome suggests that businesses selecting new marks should be concerned about use of descriptive terms to identify a product or service and must bear the risk that confusion may result. Conversely, those considering descriptive uses of a term another has adopted as its mark should proceed with the mindset that its use of the descriptive term be fair to gain the protection afforded by the fair use defense and not a deliberate attempt to infringe upon the goodwill of the established mark. As with all trademark matters, this issue must be evaluated on a case-by-case basis.
2. JANUARY 16,
2003 WARNER-LAMBERT COMPANY V. APOTEX CORP. ET AL., 65 USPQ 2d
1086
Opinion by Lourie,
joined by Michel and Plager
The Federal Circuit affirmed the decision of the lower court that
the defendant did not induce infringement under 35 U.S.C. § 271(b)
even though they had knowledge of the infringement. The Court
held that while 2% of defendantıs product was proven to be used
for infringing activity, this did not rise to the required standard
that defendant intended to sell its product to induce infringement.
3. June 3, 2002
HOLMES GROUP, INC. V. VORNADO AIRCIRCULATION SYSTEMS, INC., 62
USPQ 2d 1801
The Supreme Court
ruled that the Federal Circuit cannot assert jurisdiction over
a case in which the complaint does not allege a patent-law claim,
but the answer contains a patent-law counterclaim. The well-pleaded-complaint
rule does not allow a counterclaim to serve as the basis for a
district court's "arising under" jurisdiction.
4. May 28, 2002
FESTO CORP. V. SHOKETSU KINZOKU KOGYOKABUSHIKI CO., 62
USPQ 2d 1705
The Supreme Court
decided this case which affects the usage of the doctrine of equivalents
(DOE) in patent litigation. The Federal Circuit, L & D, held
that any changes made to a claim element during prosecution created
a prosecution history estoppel which would bar usage of DOE for
that claim element in patent litigation. In its decision, the
Supreme Court ruled prosecution history estoppel may apply to
any claim amendment but estoppel need not bar suit against every
equivalent to the amended claim element. In situations where the
amendment cannot reasonably be viewed as surrendering a particular
equivalent--e.g., where the equivalent was unforeseeable at the
time of the application or the rationale underlying the amendment
bears but a tangential relation to the equivalent--the patentee
can rebut the presumption that prosecution history estoppel bars
a finding of equivalence by showing that at the time of the amendment
one skilled in the art could not reasonably be expected to have
drafted a claim that would have literally encompassed the alleged
equivalent. For these types of situations, it's clear that expert
witness testimony will take on greater importance.
