We will be discussing two Federal Circuit cases during our weekly SoCal IP Institute meeting on Monday, August 13, 2012. Brief synopses are presented below.
Lens.com, Inc. v. 1-800 Contacts, Inc., Case No. 2011-1258 (Fed. Cir. August 3, 2012) (attached).
The Wesley-Jessen Corporation obtained Trademark Registration No. 2,175,334 for the mark LENS in connection with “computer software featuring programs used for electronic ordering of contact lenses in the field of ophthalmology, optometry and opticianry.” Lens.com, an online retailer of contact lenses applied for the mark LENS in connection with “retail store services featuring contact eyewear products rendered via a global computer network.” The PTO cited the ’334 Registration as a bar based on likelihood of consumer confusion and refused registration of the mark as merely descriptive of services. Lens.com initiated a cancellation proceeding against Wesley-Jessen’s ’334 Registration, but later withdrew its cancellation petition under a settlement agreement and obtained the ’334 Registration for the mark LENS. Then, in 2008, 1-800 Contacts initiated its own cancellation proceeding alleging that Lens.com abandoned or fraudulently obtained the mark LENS because Lens.com never sold or otherwise engaged in the trade of computer software. The Trademark Trial and Appeal Board granted summary judgment of abandonment on the ground that the “software is merely incidental to sale of contact lenses, and is not a ‘good in trade,’ i.e., ‘solicited or purchased in the market for its intrinsic value.’”
The Federal Circuit affirmed, stating that the Board properly determined that the mark LENS is not in “use in commerce” in association with software on the issue of abandonment.
Interdigital Communications, LLC v. Int’l Trade Comm’n, Case No. 2010-1093 (Fed. Cir. August 1, 2012) (attached).
InterDigital owns U.S. Patent Nos. 7,190,966 and 7,286,847, which relate to apparatuses and methods for controlling transmission power during the “handshake” portion of a wireless cellular communication. The ‘847 patent is a continuation of the ‘966 patent. InterDigital filed a complaint with the International Trade Commission alleging that Nokia, Inc. and Nokia Corp. violated the Tariff Act with the importation into the U.S., sale for importation, or sale within the U.S. after importation of certain 3G mobile handsets and components that infringe the patents.
After construing the claim term “code” to mean “a spreading code or a portion of a spreading code” and the claim term “increased power level” to mean that “the power level of a transmission is higher than that of a previous transmission” and “the power level of a code signal increases during transmission,” the ITC found that Nokia did not infringe InterDigital’s patents.
The Federal Circuit reversed the Commission’s findings and remanded for further proceedings. In particular, the Federal Circuit found that the ITC had erred in its construction of the claim terms “code” and “increased power level,” which in turn had led to erroneous determinations of non-infringement. With respect to the claim term “code,” the Federal Circuit found that the ITC had erred in limiting the term to spreading codes. With respect to the claim term “increased power level,” the Federal Circuit found that the ITC should have construed “increased power level” to include both intermittent and continuous increases in power. Accordingly, under the Federal Circuit’s broader constructions, the ITC’s determination that Nokia did not infringe the ‘966 and ‘847 patents needed to be reversed.
All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, August 13, 2012 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Attalla by 9 am Monday morning.