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On March 16, 2013, the United States will become a “first inventor to file” patent system instead of a “first to invent” system. Until now, the U.S. awarded a patent to whoever could demonstrate the earliest completion of an invention rather than whoever won the race to file a patent application. When two inventors claimed the same invention, the Patent Office could use an “interference” proceeding to resolve who actually invented first and was therefore entitled to the patent. With the new law, interferences will eventually go away. The only issue, aside from who filed first, is whether the first filer actually derived the invention from another and is therefore not a true inventor, a rare occurrence.

What do a 370Z® Roadster, a pair of LeBron X’s and a Dream Angels Ruffle Babydoll have in common? In Parallel Networks, LLC, v. Abercrombie & Fitch Co., No. 2012-1227 (Federal Circuit, January 16, 2013), the companies who market them, (Nissan North America, Inc., Nike, Inc., and Victoria’s Secret Direct Brand Management, LLC, respectively), along with seventy-four other defendants, won a patent infringement case at the Federal Circuit involving U.S. Patent No. 6,446,111 of Lowery (“the ‘111 patent”). The case spotlights claim construction, and demonstrates use of the specification in interpreting the claims. In particular, it serves as a reminder of the danger posed by the presence of patent profanity in the specification.

Fluid Catalytic Cracking (FCC) remains a vital unit in refinery operations due to its shear impact on overall refinery profitability. Because of its importance, operation of the FCC must shift to meet changing market demands for particular fuel specifications, or to maximize particular products, such as diesel fuel. Research and development in equipment, catalysts and process are expected to shift to further these goals, with companies who invest research dollars in these areas often seeking to protect such investment by obtaining patent protection.

The Fox Group, Inc. v. Cree, Inc. (Fed. Cir., 2012)

What kind of showing must an infringement defendant make to demonstrate a prior invention under Section 102(g), and what must a patentee do to show that the prior inventor abandoned, suppressed, or concealed? If the prior inventor makes an oral presentation and publishes a paper mentioning the composition but not revealing how to make it, is that enough? In The Fox Group, Inc. v. Cree, Inc., decided November 28, 2012, the Federal Circuit affirmed the U.S. District Court for the Eastern District of Virginia, which granted summary judgment of patent invalidity in favor of Cree. The panel disagreed about whether Fox met its burden of production on the abandon/suppress/conceal issue, but I think dissenting Judge Kathleen O’Malley has the more wily view.

I never promised you any money.

The words could not be plainer: “I never promised you any money.” The meaning is clear and unambiguous, right? Ask six people to read the sentence, however, each in turn emphasizing the first, second, third, fourth, fifth, or sixth word, and you’ll quickly agree that multiple meanings are possible from even this simplest of sentence constructions. “I never promised you any money” (she did, but I didn’t); “I never promised you any money” (your sister, maybe, but not you); “I never promised you any money” (a return favor maybe, but no cash). You get the idea. […]

The confusion of the possessive “its” (no apostrophe) with the contractive “it’s” (with apostrophe) is an unequivocal signal of illiteracy and sets off a simple Pavlovian “kill” response in the average stickler.
-Lynne Truss, Eats, Shoots & Leaves

Earlier this year, I visited Philadelphia’s Wells Fargo Center to watch a struggling 76ers team lose to the New York Knicks. Annoyingly, the crowd was mostly boisterous Knicks fans, many sporting Carmelo Anthony jerseys. Before the game, I stood in line at Campo’s waiting for a hot-off-the-grill cheesesteak. As I watched thin-sliced beef sizzle on the grill, I confess I may have drooled a bit. My $10 sandwich turned out to be cold, however, apparently cooked and wrapped much earlier. Bait-and-switch or just bad luck? With that experience behind me, you’d think that I’d rejoice at the Trademark Trial and Appeal Board’s recent decision to deny Campo’s Deli at Market Inc.’s application to register “Philadelphia’s Cheesesteak.” Actually, however, I think the PTO slid Campo’s a “cold sandwich.” You see, like Lynne Truss, author of Eats, Shoots & Leaves, a remarkable little treatise on punctuation, I believe the apostrophe deserves more respect.

1st Media, LLC v. Electronic Arts, Inc., et al. (Fed. Cir., 2012)

I have a soft spot for karaoke. It’s not that I can sing; my voice is suitable for use only in the shower or on a riding lawn mower. However, I did meet my wife on a blind date at a local restaurant on a Thursday evening that turned out to be Karaoke Night. The good news is that we got married in spite of our exposure to off-key renderings of hits by Neil Diamond, Kool & the Gang, and Madonna.

1st Media, LLC owns U.S. Pat. No. 5,464,946, which relates to an entertainment system for use in purchasing and storing songs, videos, and multimedia karaoke information. 1st Media sued Electronic Arts, Inc. and others in Nevada District Court for patent infringement. […]

Magsil Corporation v. Hitachi Storage Technologies (Fed. Cir., 2012)

Thus we descended into the fourth chasm,
Gaining still farther on the dolesome shore
Which all the woe of the universe insacks.
–The Inferno, Canto VII, Dante Alighieri

Although patent validity is more frequently challenged on the basis of uncited or ill-considered prior art, Section 112 issues, including the requirement of an enabling disclosure, are underutilized as a basis of attack […]

Ethox Chemicals LLC, a small specialty chemical developer based in South Carolina, is suing Coca-Cola Co. over a new additive for polyethylene terephthalate (PET) bottles [1], [2]. Ethox is claiming that the beverage giant misappropriated its molecule bis(2-phenoxyethyl) terephthalate (PEM), an additive designed to enhance the gas barrier properties of plastic containers made from PET. Ethox says PEM can be used to reduce gas permeation which might help extend bottled soda shelf-life and allow beer to be sold in PET bottles.

Dilworth IP is pleased to announce the addition of Joanne Davis to our team of professionals. Joanne’s years of experience in the practice of law have been focused in the corporate sphere with an emphasis on transactions, commercial and joint-venture agreements, and technology licensing. In the past, she has worked in the chemical, financial, health care and industrial business sectors, including 16 years in-house at a publicly traded, multi-national chemical manufacturer […]