We will be discussing two recent Federal Circuit cases during our weekly SoCal IP Institute meeting on Monday, January 30, 2012. Brief synopses are presented below.

Benedict v. Super Bakery, Case No. 2011-1131 (Fed. Cir. Dec. 28, 2011) (attached).  Mr. Benedict, appearing pro se in a cancellation proceeding, appealed the decision of the Trademark Trial and Appeal Board (TTAB), entering judgment against him for failure to comply with discovery orders, and imposing the sanction of cancellation of his trademark registration. On appeal of a prior TTAB ruling, the Federal Circuit vacated the Board’s default judgment and remanded to the Board. On this appeal from the TTAB’s renewed decision upon remand, the Federal Circuit affirmed the judgment and the sanction of cancellation because Mr. Benedict had avoided meaningful participation in the cancellation proceeding for almost two years and, most recently, in an effort to avoid discovery obligations, filed a summary judgment motion hoping to utilize the TTAB’s “suspension” during summary judgment to enable him to still further delay cooperation.  In view of Mr. Benedict’s failure to take part in discovery, the Federal Circuit found that the default judgment and sanction were appropriate.

Abbot Point of Care v. Epocal, Case No. 2011-1024 (Fed. Cir. Jan. 13, 2012 (attached). Abbott filed a complaint against Epocal in the Northern District of Alabama alleging infringement of two patents related to systems and devices for testing blood samples. Abbott and Epocal are competitors in the diagnostic field. Abbot manufactures and sells a variety of healthcare products, including point-of-care systems that enable medical professionals to quickly test blood without sending a sample away to a lab. Epocal is a Canadian corporation founded by Dr. Imants Lauks, the named inventor of the patents-in-suit. Epocal manufactures and sells point-of-care blood testing systems. Both parties claim to own the asserted patents. Both patents name Epocal as the assignee. Abbott claims ownership on the basis of contracts between Lauks and Abbott’s predecessors. Lauks entered into a total of three contracts: two employment agreements and one consulting agreement with Abbott and its predecessors.

Under the terms of the initial contract, Abbott would have been the rightful owner of the patents.  However, Dr. Lauks entered into another agreement in 1999 that did not require him to assign any inventions.  As a result, the patents, filed in 2001, were subject to the later consulting agreement, without any obligation to assign.  Therefore, the Federal Circuit affirmed the lower court finding that Abbott lacked standing to sue Epocal.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, January 30, 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 Amanda Jones by 9 am Monday morning.