Inequitable Conduct – SoCal IP Law Institute

SoCal IP Institute :: February 22, 2016 :: Representing competitors at the same time and inequitable conduct during patent prosecution

Our weekly SoCal IP Institute meeting on Monday, February 22, 2016, will be a discussion of the following: Maling v. Finnegan, Henderson, Farabow, Garrett, Dunner, LLP, (Mass. SJC 12/23/15) (available here). An inventor sued the firm prosecuting his patents alleging that the same firm represented his competitor without disclosing the engagement to him. The Massachusetts Superior Court [...]

By SoCal IP|2016-02-19T13:32:39-08:00February 19th, 2016|Prosecution, Inequitable Conduct|0 Comments

SoCal IP Institute :: October 6, 2014 :: Inequitable Conduct and Acquired Distinctiveness in the TTAB

Our weekly SoCal IP Institute meeting on Monday, October 6, 2014 will be a discussion of a recent inequitable conduct case and a TTAB decision on acquired distinctiveness of trade dress. Brief synopses of the cases appear below. American CalCar, Inc. v. Honda, No. 2013-1061 (Fed. Cir. Sept. 26, 2014) (available here). Calcar appealed from [...]

By SoCal IP|2014-10-29T09:51:36-07:00October 4th, 2014|Patent, Trade Dress, Trademark, Inequitable Conduct, Acquired Distinctiveness|0 Comments

SoCal IP Institute :: October 1, 2012 :: Inequitable Conduct and Judgment as a Matter of Law

We will be discussing two Federal Circuit cases during our weekly SoCal IP Institute meeting on Monday, October 1, 2012. Brief synopses are presented below. Outside the Box Innovations, LLC. v. Travel Caddy, Inc., Case No. 2009-1171 (Fed. Cir. September 21, 2012) (attached). Travel Caddy brought suit against Outside the Box Innovations claiming infringement of [...]

By SoCal IP|2012-09-27T23:25:12-07:00September 27th, 2012|Prosecution, Unenforceability, Induced Infringement, Inequitable Conduct, Invalidity, Noninfringement, Obviousness, Patent|0 Comments

SoCal IP Institute :: April 9, 2012 :: Means-Plus-Function and Inequitable Conduct

We will be discussing a Federal Circuit case and a Northern District of California case during our weekly SoCal IP Institute meeting on Monday, April 9, 2012. Brief synopses are presented below: Ergo Licensing, LLC. v. CareFusion 303, Inc., 2011-1229 (C.A.F.C. Mar. 26, 2012) (attached). In a patent infringement case over a patent on an [...]

By SoCal IP|2012-04-05T20:59:57-07:00April 5th, 2012|Claim Construction, Inequitable Conduct, Invalidity, Patent, Written Description|0 Comments

SoCal IP Institute :: November 28, 2011 :: Antitrust & Patent Law and Costs in Patent Litigation

We will be discussing one California antitrust case with patent law implications and one patent case pertaining to costs in litigation during our weekly SoCal IP Institute meeting on Monday, November 28, 2011. Brief synopses are presented below. In re Cipro Cases I & II, D056361 (Cal. App. Oct. 31, 2011) (attached). On appeal, Plaintiffs [...]

By SoCal IP|2011-11-28T03:03:52-08:00November 28th, 2011|ANDA, Inequitable Conduct, Antitrust, Patent|0 Comments

SoCal IP Institute :: August 29, 2011 :: Evidence of Direct Infringement and Reading Out Claim Limitations

We will be discussing one district court case regarding the sufficiency of evidence of direct patent infringement and one Federal Circuit case involving claim construction in our weekly SoCal IP Institute meeting on Monday, August 29, 2011. Brief synopses are presented below. Mirror Worlds, LLC v. Apple, Inc., Case No. 06:08 CV 88 (E.D. Tex. [...]

By SoCal IP|2011-08-26T17:35:03-07:00August 26th, 2011|Unenforceability, Claim Construction, Damages, Inequitable Conduct, Invalidity, Patent|0 Comments

SoCal IP Institute :: August 1, 2011

We will be discussing the following two cases in our weekly meeting on Monday, August 1, 2011. Brief synopses of the two cases are presented below. TrafficSchool.com, Inc. v. EDriver Inc. (9th Cir. 7/28/2011) (attached) In an action arising from a very close imitation of the state DMV's website by a private, commercial website and [...]

By SoCal IP|2011-07-29T19:05:54-07:00July 29th, 2011|Patent, Sanctions, Exceptional Case, Inequitable Conduct|0 Comments

SoCal IP Institute :: July 25, 2011 :: Exceptional Cases Under 35 U.S.C. 285 and The USPTO’s Proposed Changes to 37 C.F.R. 1.56(b)

We will be discussing one district court case awarding attorney's fees under 35 U.S.C. 285 in a patent suit and the USPTO's proposed new rule 1.56(b) after Therasense. We will discuss the case and proposed rule in our weekly SoCal IP Institute meeting on Monday, July 25, 2011. Brief synopses are presented below. Precision Links, [...]

By SoCal IP|2011-07-22T18:10:41-07:00July 22nd, 2011|Patent, Sanctions, Exceptional Case, Inequitable Conduct|0 Comments

SoCal IP Institute :: July 18, 2011 :: Ethics MCLE :: Inequitable Conduct after Therasense and Inducing Gifts from Clients

We will be discussing one ethics-related case and a recent formal opinion of the California Bar committee for professional responsibility. The case is the first post-Therasense case addressing inequitable conduct during patent prosecution. The opinion deals with inducing gifts from clients. We will discuss the case and opinion in our weekly SoCal IP Institute meeting [...]

By SoCal IP|2011-07-15T16:07:03-07:00July 15th, 2011|Ethics, Inequitable Conduct|0 Comments

SoCal IP Law Institute :: June 6, 2011 :: Therasense – Inequitable Conduct

After a week away, we will be discussing the Therasense case and its impact on inequitable conduct in our weekly SoCal IP Institute meeting on Monday, June 6, 2011. A brief synopsis of the case is presented below. Therasense, Inc. v. Becton, Dickinson and Co., 2008-1511, -1512, -1513, -1514, -1595 (Fed. Cir. May 25, 2011) [...]

By SoCal IP|2011-06-03T15:56:26-07:00June 3rd, 2011|Inequitable Conduct|4 Comments