Our weekly SoCal IP Institute meeting on Monday, July 22, 2013 will be a discussion of a 9thCircuit decision regarding the payment of royalties of agreements involving expired patent rights and the standard for pleading fraud in a trademark application before the USPTO . Brief synopses of the cases appear below.
Kimble v. Marvel Enter., Inc., Case No. 11-15605 (9th Cir. July 16, 2013) (available here). The district court held that Kimble was not entitled to continued payments under a license agreement after the patent that formed a portion of the dispute between the parties had expired. Kimble argued that he licensed other technology in addition to the patent. The 9th Circuit, somewhat reluctantly, found, in view of the binding Supreme Court precedent of Brulotte v. Thys Co., 379 U.S. 29 (1964), that a so-called “hybrid” licensing agreement encompassing inseparable patent and non-patent rights is unenforceable beyond the expiration date of the underlying patent, unless the agreement provides a discounted rate for the non-patent rights or some other clear indication that the royalty at issue was in no way subject to patent leverage.” Thus, the district court’s determination was affirmed.
Caymus Vineyards v. Caymus Medical, Inc., Opp. No. 91/204,667 (T.T.A.B. July 12, 2013) (available here). Caymus Vineyards opposed the registration of the mark “CAYMUS MEDICAL” in view of its registration of the mark “CAYMUS”. Caymus Medical filed a cancellation counterclaim on grounds of fraud and geographic descriptiveness. Specifically, Caymus Medical argued that Caymus Vineyards had failed, in response to a request from the Examining Attorney, to point out that the word Caymus is geographically descriptive of a known wine-growing location. The Board agreed that this claim and the supporting information provided was sufficient to meet the heightened fraud pleading standard. However the Board granted opposer’s motion to dismiss applicant’s second counterclaim related to geographic descriptiveness because it was barred by the 5-year statute of limitations embodied in Section 14 of the Trademark Act (the mark had already been renewed once).
All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, July 22, 2013 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 Smith by 9 am Monday morning.